EXECUTION
LICENSE AGREEMENT
LICENSE AGREEMENT dated as of August 18, 1997 between
ADVANCED NMR SYSTEMS, INC., a Delaware corporation (the
"Licensor"), and GENERAL ELECTRIC COMPANY, a New York corporation
(the "Licensee").
Terms not otherwise defined herein have the meanings
stated in the Purchase Agreement (as defined below).
RECITALS
A. The Licensor and the Licensee have entered into a
Purchase Agreement dated as of August 18, 1997 (the "Purchase
Agreement") for the purchase and sale of certain assets
referenced therein (the "Purchased Assets").
B. The Licensor desires to grant to the Licensee and to
any present or future Affiliate of Licensee a limited, non-
transferable (except as set forth in Section 9 hereof), paid up,
worldwide and perpetual license under each of the patents listed
on Schedule 1 and all rights of the Company, if any, in patent or
applications of the Company which may claim priority to any of
the patents or applications listed on Schedule 1, and all rights
of the Company, if any, with respect to service marks,
trademarks, copyrights, trade secrets, know-how or inventions
primarily used in the manufacturing, sale or service of the
Purchased Assets (collectively, the "Proprietary Rights") which
shall be exclusive (except as to Licensor and Advanced
Mammography Systems, Inc. ("AMS") and as to customers of ANMR's
with respect to limited software use licenses) for a period of
four years following the date of this Agreement and shall be non-
exclusive thereafter, to make, have made, sell or otherwise
dispose of any product or service, including, without limitation,
magnetic resonance scanners and to use, copy, modify and develop
derivative works of any product or service, and to distribute the
same and shall include the right to access, incorporate and use
in any way associated know-how for the manufacturing and
servicing of any product (the "License") and the Licensee desires
to accept the License under each of the Proprietary Rights.
C. This Agreement is being entered into pursuant to
Section 3.2(b) of the Purchase Agreement.
AGREEMENT
The parties agree as follows:
SECTION 1. LICENSE. The Licensor hereby grants to the
-------
Licensee and to any Affiliate of Licensee, and the Licensee
hereby accepts, a limited, non-transferable (except as set forth
in Section 9 hereof), paid up, worldwide and perpetual License
under each of the Proprietary Rights to make, have made, sell or
otherwise dispose of any product or service, including, without
limitation, magnetic resonance scanners, and to use, copy, modify
and develop derivative works of any product or service, and to
distribute the same and which shall include the associated know-
how for the manufacturing and servicing of any product. The
License shall be exclusive (except as to Licensor and AMS and to
customers of ANMR with respect to limited software use licenses)
for a period of four years following the date of this Agreement
and shall be non-exclusive thereafter.
SECTION 2. OWNERSHIP. The Licensee shall not acquire any
---------
ownership interest in any of the Proprietary Rights by reason of,
or pursuant to, the License or this Agreement.
SECTION 3. REPRESENTATIONS AND WARRANTIES. The Licensor
------------------------------
represents that (a) the License extends to all patents
technology, copyrights (if any) and related trade secrets and
know-how for the manufacturing and servicing of the Purchased
Assets, and (b) no subsidiary of Licensor has any technology,
patents, copyrights (if any), related trade secrets or know-how
useful or necessary for the manufacturing or servicing of
InstaScan or 3T or 4T whole-body magnetic resonance Scanners that
are not included within the License. Aside from these
representations, and the representations in the Purchase
Agreement, THE LICENSOR MAKES NO REPRESENTATIONS OR WARRANTIES,
EXPRESS OR IMPLIED, AS TO ANY MATTER CONCERNING THE VALIDITY OR
OWNERSHIP OF THE PROPRIETARY RIGHTS, THE USE BY ANY OTHER PERSON
OF ANY OF THE PROPRIETARY RIGHTS OR ASSERTIONS BY ANY OTHER
PERSON OF OWNERSHIP OR RIGHTS AS A LICENSEE WITH RESPECT TO ANY
OF THE PROPRIETARY RIGHTS, THE MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE OR ANY OTHER MATTER IN RESPECT OF THE LICENSE
AND THE PROPRIETARY RIGHTS. THE TOTAL LIABILITY OF THE LICENSOR
UNDER OR WITH RESPECT TO THE LICENSE OR THIS AGREEMENT SHALL NOT
EXCEED ONE HUNDRED DOLLARS.
SECTION 4. LIMITATIONS ON LIABILITY. Except as set forth
------------------------
in the Purchase Agreement, the Licensee agrees that the Licensor
has no liability to the Licensee or its successors or assigns for
(1) claims of ownership, infringement or improper use asserted by
any person with respect to any of the Proprietary Rights, (2)
product liability with respect to the Proprietary Rights or the
License, (3) negligence or misrepresentation, in contract or in
tort, at law or in equity, whether heretofore or hereafter
accruing, with respect to the Proprietary Rights or the License
or (4) any penal, incidental or consequential damages such as
lost profit or revenue training, support or other assistance with
respect to the Proprietary Rights or the License.
SECTION 5. TERMINATION. The License will be perpetual.
-----------
SECTION 6. NOTICES. All notices, requests and other
-------
communications to any party or under this Agreement shall be in
writing. Communications may be made by telecopy or similar
writing. Each communication shall be given to such party at its
address stated on the signature pages of this Agreement or at any
other address as such party may from time to time specify in
writing to the other party. Each communication shall be
effective (1) if given by telecopy, when the telecopy is
transmitted to the proper address and the receipt of the
transmission is confirmed, (2) if given by mail, 72 hours after
the communication is deposited in the mails properly addressed
with first class postage prepaid or (3) if given by any other
means, when delivered to the proper address and a written
acknowledgement of delivery is received.
SECTION 7. NO WAIVERS; REMEDIES. No failure or delay by
--------------------
any party in exercising any right, power or privilege under this
Agreement shall operate as a waiver of such right, power or
privilege. A single or partial exercise of any right, power or
privilege shall not preclude any other or further exercise of
such right, power or privilege or the exercise of any other
right, power or privilege. The rights and remedies provided in
this Agreement shall be cumulative and not exclusive of any
rights or remedies available at law or in equity.
SECTION 8. AMENDMENTS, ETC. No amendment, modification,
---------------
termination, or waiver of any provision of this Agreement, and no
consent to any departure by a party from any provision of this
Agreement, shall be effective unless it shall be in writing and
signed and delivered by the other parties to this Agreement, and
then it shall be effective only in the specific instance and for
the specific purpose for which it is given.
SECTION 9. SUCCESSORS AND ASSIGNS. No party may assign
----------------------
its rights or delegate its obligations under this Agreement
without the prior written consent of the other party; provided,
however, the Licensee may assign it rights and transfer the
License to any purchaser or transferee of all or substantially
all of the Purchased Assets; provided that in no event shall the
--------
Licensee sell, assign or sublicense its rights or transfer the
License to Siemens Medical Systems. Any assignment or delegation
in contravention of this Section 9 shall be void ab initio and
-- ------
shall not relieve the delegating party of any of its obligations
under this Agreement. The provisions of this Agreement shall be
binding upon and inure to the benefit of the parties to this
Agreement and their respective permitted successors and assigns.
SECTION 10. GOVERNING LAW. This Agreement shall be
-------------
governed by and construed in accordance with the internal laws of
the State of New York.
SECTION 11. COUNTERPARTS; EFFECTIVENESS. This Agreement
---------------------------
may be signed in any number of counterparts, each of which shall
be an original, with the same effect as if all signatures were on
the same instrument.
SECTION 12. SEVERABILITY OF PROVISIONS. Any provision of
--------------------------
this Agreement that is prohibited or unenforceable in any
jurisdiction shall, as to that jurisdiction, be ineffective to
the extent of the prohibition or unenforceability without
invalidating the remaining provisions of this Agreement or
affecting the validity or enforceability of the provision in any
other jurisdiction.
SECTION 13. HEADINGS AND REFERENCES. Section headings in
-----------------------
this Agreement are included for the convenience of reference only
and do not constitute a part of this Agreement for any other
purpose. References to parties and sections in this Agreement
are references to the parties to or the sections of this
Agreement, as the case may be, unless the context shall require
otherwise.
SECTION 14. ENTIRE AGREEMENT. Except as otherwise
----------------
specifically provided in the Purchase Agreement, this Agreement
embodies the entire agreement and understanding of the parties
and supersedes all prior agreements or understandings with
respect to the subject matters of this Agreement.
SECTION 15. DISPUTE RESOLUTION (a) General Provisions.
------------------ ------------------
(i) Any dispute, controversy or claim arising out of or relating
to this Agreement or any related agreement or the validity,
interpretation, breach or termination thereof (a "Dispute"),
including claims seeking redress or asserting rights under
applicable law, shall be resolved in accordance with the
procedures set forth herein. Until completion of such
procedures, no party may take any action not contemplated herein
to force a resolution of the Dispute by any judicial, arbitral or
similar process, except to the limited extent necessary to (1)
avoid expiration of a claim that might eventually be permitted
hereby or (2) obtain interim relief, including injunctive relief,
to preserve the status quo or prevent irreparable harm.
(ii) All communications between the parties or their
representatives in connection with the attempted resolution of
any Dispute shall be deemed to have been delivered in
furtherance of a Dispute settlement and shall be exempt from
discovery and production, and shall not be admissible in
evidence (whether as an admission or otherwise), in any
arbitral or other proceeding for the resolution of the
Dispute.
(iii) In connection with any Dispute, the
parties expressly waive and forego any right to trial by jury.
(b) Consideration by Senior Executives. If a Dispute cannot be
----------------------------------
resolved at an operational level, either party may, by notice to
the other, request referral to the President and CEO of the
General Electric Medical Services Division and the [President] of
the Company (or comparable officers of any permitted successor or
assignee) for their consideration. Such request shall be
accompanied by a written statement of the Dispute and of each
party's position. Within 30 days after the request, the other
party will either concur in such statement or prepare its own,
and such statement(s) will be delivered to the officers named
above. Such officers will meet in person or by telephone within
30 days thereafter to seek a resolution. If no resolution is
reached by the expiration of 60 days from the referral request,
then either party may submit the Dispute to resolution as further
provided herein by notice to the other party.
(c) Mediation. After completion of any prior procedures
---------
required hereby, either party may submit the Dispute for
resolution by mediation pursuant to the Center for Public
Resources Model Procedure for Mediation of Business Disputes as
then in effect. Mediation will continue for at least 60 days
unless the mediator chooses to withdraw sooner. At the request
of either party at commencement of the mediation, the mediator
will be asked to provide an evaluation of the Dispute and the
parties' relative positions.
(d) Arbitration. (i) After completion of any prior procedures
-----------
required hereby, either party may submit the Dispute for
resolution by arbitration pursuant to the Rules of the Center for
Public Resources ("CPR") for Non-Administered Arbitration of
Business Disputes as in effect at the time of the arbitration.
The parties consent to a single, consolidated arbitration for all
Disputes for which arbitration is permitted.
(ii) The neutral organization for purposes of the
CPR rules will be the CPR. The arbitral tribunal shall be
composed of one arbitrator selected by agreement of the
parties or, in the absence of such agreement within 60 days
after either party first proposes an arbitrator, by the CPR.
The arbitration shall be conducted in New York. Each party
shall be permitted to present its case, witnesses and
evidence, if any, in the presence of the other party. A
written transcript of the proceedings shall be made and
furnished to the parties. The arbitrators shall determine the
Dispute in accordance with the law of the State of New York,
without giving effect to any conflict of law rules or other
rules that might render such law inapplicable or unavailable,
and shall apply this Agreement according to its terms.
(iii) The parties agree to be bound by any award or
order resulting from any arbitration conducted hereunder and
further agree that:
(1) any monetary award shall include pre-award interest,
to the extent appropriate, and shall be made and
payable in U.S. dollars through a bank selected by
the recipient of such award, free of any withholding
tax or other deduction, together with interest
thereon at the prime rate in effect at such bank on
the date of the award, from the date the award is
granted to the date it is paid in full.
(2) in the context of an attempt by either party to
enforce an arbitral award or order, any defenses
relating to the parties' capacity or the validity of
this Agreement or the Transaction Documents under any
law are hereby waived; and
(3) judgement on any award or order resulting from an
arbitration conducted under this Section may be
entered and enforced in any court, in any country,
having jurisdiction thereof or having jurisdiction
over any of the parties or any of their assets.
(iv) Except as expressly permitted by this
Agreement, no party will commence or voluntarily participate
in any court action or proceeding concerning a Dispute,
except (A) for enforcement as contemplated by paragraph
(iii)(3) above, (B) to restrict or vacate an arbitral
decision based on the grounds specified under applicable law
and not waived in paragraph (iii)(2) above, or (C) for
interim relief as provided in paragraph (v) below. For
purposes of the foregoing or enforcement of any undisputed
obligation, the parties hereto submit to the non-exclusive
jurisdiction of the courts of the State of New York.
(v) In addition to the authority otherwise
conferred on the arbitral tribunal, the tribunal shall have
the authority to make such orders for interim relief,
including injunctive relief, as it may deem just and
equitable. If the tribunal shall not have been appointed,
either party may seek interim relief from a court having
jurisdiction if the award to which the applicant may be
entitled may be rendered ineffectual without such interim
relief. Upon appointment of the tribunal following any
grant of interim relief by a court, the tribunal may affirm
or disaffirm such relief, and the parties will seek
modification or rescission of the court action as necessary
to accord with the tribunal's decision.
(vi) The prevailing party in any arbitration
conducted under this Section shall be entitled to recover
from the other party (as part of the arbitral award or
order) its reasonable attorneys' fees and other costs of
arbitration.
SECTION 16. CONFIDENTIALITY. Information disclosed by
---------------
any party or its representatives to any other party or its
representatives, whether before or after the date of this
Agreement, in connection with the License, all matters covered by
the License, or the discussions and negotiations preceding the
execution of this Agreement, shall be kept confidential by the
other party and its representatives and shall not be used by
those persons other than as contemplated by the this Agreement,
except in each case to the extent that (1) the information was
known by the recipient when received or the information is or
hereafter becomes lawfully obtainable from other sources, (2)
disclosure to a Governmental Body having jurisdiction over the
parties is necessary or appropriate, (3) disclosure may otherwise
be required by applicable Regulations or (4) the duty as to
confidentiality is waived in writing by the other party.
IN WITNESS WHEREOF, the parties hereto have executed
and delivered this Agreement as of the date first written above
in New York, New York.
ADVANCED NMR SYSTEMS, INC.
By: /s/ Xxxx Xxxxxx
-------------------------
Name: Xxxx Xxxxxx
Title: Chairman and CEO
Address: Advanced NMR Systems, Inc.
00 Xxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxxxxxxx 00000
Telecopy: (000) 000-0000
GENERAL ELECTRIC COMPANY
By: /s/ Xxxxxxx X. Xxxxxx
------------------------
Name: Xxxxxxx X. Xxxxxx
Title: President of GE Medical
Systems
Address: General Electric Company
Medical Services Division
0000 Xxxxx Xxxxxxxxx Xxxx.
(P.O. Box 414)
Xxxxxxxx, Xxxxxxxxx 00000
Telecopy: (000) 000-0000
