Exhibit 10.23
SETTLEMENT AGREEMENT AND NON-EXCLUSIVE LICENSE
This Settlement and License Agreement ("Agreement") is entered into as of
November __, 2006, (the "Effective Date") between (1) Picis, Inc., a Delaware
company, with an address at 000 Xxxxxxxxxxxx Xxxx Xxxxx 000, Xxxxxxxxx, XX,
00000 (hereinafter "Picis, Inc.") and Picis, S.A., a societe anonyme organized
under the laws of France, having a principal place of business at 00 xxx xx
Xxxxx, Xxxxx, Xxxxxx, 00000 (hereinafter "Picis, S.A."); Picis, Inc. and Picis,
S.A. collectively hereinafter "Picis"); and (2) Surgical Information Systems,
LLC (hereinafter "SIS"), a Georgia limited liability company having a principal
place of business at 0000 Xxxxxxx Xxxx, Xxxxx 000, Xxxxxxxxxx, XX 00000 and (3)
Capsule Technologie, a French corporation, with an address at 00, xxx xx
Xxxxxxxx Xxxxxxxxxxxx, Xxxxx, Xxxxxx 00000 (hereinafter "Capsule"; SIS and
Capsule collectively hereinafter "Companies").
BACKGROUND
A. Picis has filed a legal action against Companies in the United States
District Court for the Northern District of Georgia under Case No. 1-04-CV-1870
("Patent Infringement Suit") alleging that the manufacture, use, offer for sale,
and sale by Companies of the Licensed Products (as defined in Section 1.4 below)
in the absence of a license from Picis constitutes infringement of one or more
claims of the Licensed Patent (as defined in Section 1.1 below) under one or
more of the provisions of 35 U.S.C. ss. 271, including, but not limited to,
xx.xx. 271(a), (b), (c) and/or (g); and SIS has filed a counterclaim in the
Patent Infringement Suit alleging that Picis has committed acts of unfair
competition against SIS;
B. Without admitting infringement or liability, Companies desire to settle
the Patent Infringement Suit and obtain a license under the Licensed Patent in
connection with the manufacture, use, distribution or license by Companies of
the Licensed Products; and without admitting liability, Picis desires to settle
the counterclaim brought by SIS in the Patent Infringement Suit; and
C. This Agreement is for settlement purposes only and does not alter or
reflect the merits of either Picis' or Companies' substantive claims,
counterclaims, or defenses and, if subsequent litigation arising out of or
relating to the same or similar subject matter is brought by either party, the
other party reserves completely all of its arguments and positions.
NOW, THEREFORE, in consideration of the above premises and the mutual
covenants of the parties to be faithfully performed, Picis, SIS, and Capsule,
intending to be legally bound, agree as follows:
1. DEFINITIONS
In addition to the terms defined above and elsewhere in this Agreement, as
used in this Agreement:
1.1 "LICENSED PATENT" shall mean U.S. Patent No. 5,161,222.
1.2 "AFFILIATE" as applied to a first entity shall mean any other entity
controlling or controlled by or under common control with such first
entity where "control" is defined as the ownership of at least fifty
percent (50%) of the equity or beneficial interests of an entity.
1.3 "LICENSED PRODUCTS" shall mean SIS and Capsule's software for medical
device data integration, including components of DataCaptor, and any
other software that has been, is, or will be developed, used,
marketed, licensed and/or sold by Companies and which is covered by
one or more claims of the Licensed Patent.
1.4 "CAPSULE DRIVERS" shall mean software that enables data to be
transferred to and from peripheral devices and Capsule's DataCaptor
software, including Capsule's DataCaptor Device Interfaces (DDIs) and
any related source code.
1.5 "CAPSULE SOFTWARE ENGINE" shall mean the data acquisition and
distribution software engine used in conjunction with "Capsule
Drivers" to collect data from medical devices including Capsule's
DataCaptor product.
1.6 "PICIS PRODUCTS" shall mean Picis' software products, which includes
software that automates the collection of information from multiple
sensors for the Perioperative, ICU, and/or emergency departments
2. LICENSE AND PATENT MARKING
2.1 LICENSE GRANT BY PICIS. Picis hereby grants to Companies, and SIS and
Capsule hereby accept, a royalty-free, nonexclusive, nontransferable,
fully paid-up license under the Licensed Patent for the manufacture,
use, sale, distribution or license of the Licensed Products, for the
term of the Licensed Patent, in the geographic areas covered by the
Licensed Patent. The license granted under this Section 2.1 shall
include the right to grant sublicenses only to the extent necessary
for (i) use of the Licensed Products by customers purchasing the
Licensed Products from Companies or distributors or customers of
Companies, and (ii) resale or license of the Licensed Products by
distributors or customers of Companies where such resale or license of
the Licensed Products may be incorporated with additional software or
services of such customer of Companies.
2.2 LICENSE AND DISTRIBUTION RIGHT GRANT BY CAPSULE. Capsule hereby grants
to Picis, and Picis hereby accepts:
2.2.1 a royalty-free, nonexclusive, nontransferable, fully paid-up
license for the, use, sale, distribution or sub-license of up to
seventy (70) Capsule Drivers ("DDI"). Picis may select the
seventy Capsule Drivers to be licensed hereunder among all DDIs
existing in the DataCaptor library at the time of the request at
any time beginning with the Effective Date and for five (5) years
thereafter by notifying Capsule of its selection. Capsule does
not warrant and makes no representation regarding the
compatibility and/or usefulness of Capsule Drivers with the Picis
Products.
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2.2.2 a nonexclusive, nontransferable, license for the, use, sale,
distribution or sub-license of copies of the Capsule Software
Engine purchased from Capsule pursuant to Section 4.3, for a
period of five (5) years from the Effective Date.
2.2.3 The license granted under Section 2.2.1 and 2.2.2 shall include
the right to grant sublicenses only to the extent necessary for
use of the Capsule products to collect data from medical devices
into the Picis Products that cover Perioperative/ICU or emergency
department systems or their equivalents. The license granted
under Section 2.2.1 and 2.2.2 does not include the right to grant
sublicenses to collect data from medical devices into a
Third-Party system, i.e. into a software product that is not a
Picis Products. Any sublicense granted pursuant to the rights in
this Section 2.2 shall be commensurate in scope with any related
license granted by Picis for the Capsule products.
2.2.4 PATENT MARKING. Capsule shall, during the term of this
Agreement, xxxx its primary Internet website and its primary
brochure distributed with respect to the Licensed Products, with
a notice of the Licensed Patents, as appropriate under statutory
patent provisions, in the following form: "DataCaptor is
protected under Picis U.S. Patent No. 5,161,222".
3. RELEASES
3.1 Except for the obligations set forth in this Agreement, each
party to this Agreement, for itself and its officers, directors,
shareholders, employees, successors, assigns, agents, attorneys,
and representatives, and for distributors and customers of
Licensed Products or the Picis Products, hereby forever and
irrevocably releases, discharges, and acquits every other party
to this Agreement and their officers, directors, shareholders,
employees, successors, assigns, agents, attorneys, and
representatives from any and all claims, counterclaims, actions,
causes of action, demands, rights, damages and costs of
whatsoever kind or nature, whether at law, in equity, or mixed,
known or unknown, whether based on statutory or regulatory
authority, common law, contract, tort or other basis, that any
party to this Agreement may have, may have had, or hereafter may
have, arising from or in any way related to any acts or omissions
occurring prior to the date of this Agreement in connection with
the Licensed Patent or the use, marketing, licensing and/or sale
of the Licensed Products that were or could have been asserted in
the Patent Infringement Suit, including, but not limited to, all
claims asserted in Picis' Complaint filed on June 28, 2004, all
counterclaims asserted by SIS in its Answer filed on April 7,
2005, and any claim related to the involvement of former Picis
employees and/or consultants, including, but not limited to
Xxxxxx Xxxxxxxxx, in the development of the Capsule Drivers or
the Capsule Software Engine.
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4. CONSIDERATION AND TERMINATION OF SUIT
4.1 Picis acknowledges and agrees that Companies shall not be
required to make any payments to Picis for rights granted in this
Agreement under the Licensed Patent.
4.2 Within ten (10) days of the execution of this Agreement, Capsule
shall deliver to Picis a complete set of the currently utilized
Capsule Drivers, on CD-ROMs or DVDs, to the address identified in
the opening paragraph of this Agreement. Picis shall receive the
materials as the property and trade secrets of Capsule, shall
protect the material in the same fashion that Picis protects its
own trade secrets, and shall make no use of such materials
received from Capsule except in accordance with this Agreement.
Capsule further agrees to provide all updates to the Capsule
Drivers to Picis for a period of four (4) years from the date of
this Agreement. Picis acknowledges and agrees that Capsule shall
not be required to make any other deliveries to Picis for rights
granted in this Agreement to the Capsule Drivers. Picis may
within the option period select within the licensed number of
Capsule Drivers, and shall retrieve and return to Capsule all
other Capsule Drivers, including all copies thereof, received
from Capsule, so that no further remnant of such non-selected
Capsule Drivers shall be accessible or available at or to Picis.
4.3 For a period of five (5) years from the date of this agreement,
Capsule agrees to sell the "CAPSULE SOFTWARE ENGINE" and the
maintenance and support program to Picis, for Picis' use and
resale as authorized in Section 2.2 above, and to provide
standard maintenance and support contracts, at a price that is no
more than the "most favored nation" pricing for the "CAPSULE
SOFTWARE ENGINE," i.e. no direct competitor of Picis will have
better pricing than Picis for similar purchased volumes and
commitments. Capsule further agrees to provide all updates to the
"CAPSULE SOFTWARE ENGINE," as long as Picis purchases the
maintenance and support program.
4.4 Picis and Capsule will discuss business relationships, including
a reseller/vendor relationship. Should a reseller agreement be
reached, Capsule agrees that Picis will receive "most favored
nation" pricing for the "CAPSULE SOFTWARE ENGINE," after the
initial five (5) year period described above in Section 4.3, i.e.
no vendor will have better pricing than Picis, provided that
Picis accepts the same terms and conditions as such vendor or
customer.
4.5 Upon signature of this Agreement by Companies, Picis and
Companies shall file within three (3) court days a joint motion
to dismiss, with prejudice, the Patent Infringement Suit, all
claims asserted by Picis against Companies in the Patent
Infringement Suit, and all claims and counterclaims asserted by
Companies against Picis in the Patent Infringement Suit.
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5. REPRESENTATIONS, WARRANTIES AND COVENANTS
5.1 REPRESENTATIONS, WARRANTIES, AND COVENANTS OF COMPANIES. SIS and
Capsule each represent, warrant, and covenant to Picis that: (i)
they have the full legal authority necessary to enter into this
Agreement and perform the duties and obligations outlined in this
Agreement; and (ii) the execution of this Agreement by them and
the performance of their obligations hereunder will not violate
any agreement, whether written or oral, to which SIS or Capsule
is a party. THIS AGREEMENT, AND THE LICENSES OR RIGHTS GRANTED
HEREUNDER, DO NOT AND SHALL NOT BE INTERPRETED OR CONSTRUED TO
INCLUDE: (A) ANY WARRANTY OR REPRESENTATION AS TO THE VALIDITY,
ENFORCEABILITY, OR SCOPE OF THE LICENSED RIGHTS, (B) ANY WARRANTY
OR REPRESENTATION THAT ANY USE OF THE LICENSED RIGHTS WILL NOT
INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK OR OTHER PROPRIETARY
RIGHT OF ANY THIRD PARTY, (C) ANY OBLIGATION TO FURNISH ANY
TECHNICAL OR SUPPORT INFORMATION, (D) ANY LICENSE OR RIGHT BY
IMPLICATION OR ESTOPPEL, OR (E) ANY WARRANTY REGARDING
IMPLEMENTATIONS OF THE LICENSED RIGHTS AND ANY AND ALL IMPLIED OR
EXPRESS WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY
PARTICULAR PURPOSE OR USE ARE DISCLAIMED.
5.2 REPRESENTATIONS, WARRANTIES, AND COVENANTS OF PICIS. Picis
represents and warrants that it (i) owns or has exclusive control
over all rights, title and interest in the Licensed Patent and
has the right to grant licenses, covenants not to xxx, and
releases thereunder, and (ii) has the necessary rights, powers,
and authority to enter into this Agreement. This Agreement does
not and shall not be interpreted or construed to include: (a) any
warranty or representation as to the validity, enforceability, or
scope of the Licensed Patent, (b) any warranty or representation
that any use of the Licensed Patent in connection with the use
and distribution of the Licensed Products will not infringe any
patent, copyright, trademark or other proprietary right of any
third party, (c) any obligation to furnish any technical or
support information, (d) any license or right by implication or
estoppel, or (e) any warranty regarding implementations of the
Licensed Patent with respect to MERCHANTABILITY,
NON-INFRINGEMENT, OR FITNESS FOR ANY PARTICULAR PURPOSE OR USE.
6. CONFIDENTIALITY
6.1 PRESS RELEASE. A press release in the form attached hereto as Exhibit
A may be released by Picis, SIS, and/or Capsule at their discretion,
any time after the joint motion to dismiss of Section 4.5 has been
filed. Picis, SIS, and Capsule agree and undertake that all future
statements by any of them to the public, the media or business
associates shall be entirely consistent with the Press Release as
mutually approved.
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6.2 CONFIDENTIALITY. Except as stated in Section 6.1, all information
provided pursuant to this Agreement, including without
limitation, the terms of this Agreement, shall be regarded as
confidential information ("Confidential Information"). The
parties agree that, other than as required by law (including (i)
applicable securities laws, rules or other regulations or (ii) in
response to a valid discovery request or subpoena in connection
with a legal proceeding and subject to the terms of a non
disclosure agreement, confidentiality agreement, or applicable
protective order), they shall not disclose the terms of this
Agreement and shall use information provided pursuant to this
Agreement only for the purposes set forth herein. Notwithstanding
the foregoing, the parties further agree that they may disclose,
including through disclosures made by their Affiliates, the
existence of this Agreement and the parties thereto.
7. TERM AND TERMINATION
7.1 TERM. This Agreement shall commence upon Picis' countersignature
of this Agreement after being signed by SIS and Capsule, shall be
effective as of the Effective Date, and shall terminate upon the
expiration of the Licensed Patent.
8. MISCELLANEOUS
8.1 ASSIGNMENT. None of the parties shall assign, delegate, sell,
transfer, or otherwise dispose of, voluntarily or involuntarily,
by operation of law or otherwise, any of the rights or
obligations under this Agreement to any other person, business,
or entity. Notwithstanding the foregoing, any party to this
Agreement, may, without any other party's consent, assign, sell,
transfer, or continue this Agreement and its rights hereunder to
a successor to its entire business or the portion of its business
which is engaged in providing Licensed Products or the CareSuite
System, including where any party undergoes a "change-in-control"
such as may result from a public or private offering of
securities or other transaction involving a change in 50% or more
of the voting power or other transfer of rights effecting a
change in operational control, (collectively "Successor"),
provided that such Successor abides by the terms and conditions
of this Agreement. Any attempted assignment in contravention of
this provision shall be deemed void ab initio.
8.2 NON-AGENCY. Nothing in this Agreement is intended or shall be
deemed to constitute a partnership, agency, employer-employee, or
joint venture relationship between Picis and Companies. Neither
Picis nor Companies shall incur any debts or make any commitments
for the other.
8.3 ENTIRE AGREEMENT, AMENDMENTS, AND WAIVERS. This Agreement
constitutes and contains the entire agreement between Picis and
Companies, and supersedes any and all prior negotiations,
conversations, correspondence, understandings, and letters
respecting the subject matter hereof. This Agreement may be
amended or modified, or one or more provisions hereof waived,
only by a written instrument signed by the parties. No delay or
omission by any party in exercising any right
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or power arising from any default by the other party shall be
construed as a waiver of such default, nor shall any single or
partial exercise thereof preclude any further exercise thereof or
the exercise of any other right or power arising from any default
by a party. No waiver of any breach of any covenant or other
condition shall be construed to be a waiver of or consent to any
previous or subsequent breach of the same or of any other
covenant or condition.
8.4 SEVERABILITY AND CAPTIONS. If one or more provisions of this
Agreement are held to be invalid or unenforceable under
applicable law, such provision shall be excluded from this
Agreement and the balance of the Agreement shall be interpreted
as if such provision were so excluded. In the event a part or
provision of this Agreement is held to be invalid or
unenforceable or in conflict with law for any reason, the parties
shall replace any invalid part or provision with a valid
provision which most closely approximates the intent and economic
effect of the invalid provision. The captions to this Agreement
are for convenience only and are to be of no force or effect in
construing and interpreting the provisions of this Agreement.
8.5 GOVERNING LAW AND CONSENT TO JURISDICTION. This Agreement shall
be governed by and construed under applicable federal law and the
laws of the State of Massachusetts, excluding any conflict of
law provisions. Companies and Picis each irrevocably consent to
the exclusive jurisdiction of Massachusetts state or federal
court sitting in the District of Massachusetts, over any
suit, action or proceeding arising out of or relating to this
Agreement.
8.6 NOTICES. Any notice required or permitted under this Agreement
shall be given in writing and shall be sent via overnight carrier
to the addresses indicated in the opening paragraph of this
Agreement above, and by email to the extent the email addresses
of the responsible persons are reasonably available, or at such
other postal or email addresses as the parties may provide.
8.7 THIRD PARTY BENEFICIARIES. Nothing in this Agreement shall be
construed to give rise to any obligation on either party hereto
for the benefit of a third party or to confer any rights on any
party other than Picis or the Companies.
8.8 SURVIVAL. Section 3.1 shall survive the expiration or termination
of this Agreement. In addition, Sections 5.1, 6.1 and 6.2 of this
Agreement shall survive the expiration or termination of this
Agreement.
8.9 EXECUTION. This Agreement may be executed in counterparts. This
Agreement may be executed and delivered by each Party by
facsimile and such a facsimile shall be binding as an original.
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IN WITNESS WHEREOF, the parties have executed this Agreement on the dates
set forth below.
PICIS, INC. AND PICIS, S.A.
By: /s/ Xxxx Xxxxxxx
Print Name: Xxxx Xxxxxxx
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Title: CEO
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Date: November 3, 2006
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SURGICAL INFORMATION SYSTEMS, LLC
By: /s/ Xxxxxx Pazwiniak
Print Name: Xxxxxx Pazwiniak
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Title: Counsel
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Date: November 3, 2006
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CAPSULE TECHNOLOGIE
By: /s/ Xxxxxx Pazwiniak
Print Name: Xxxxxx Pazwiniak
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Title: Counsel
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Date: November 3, 2006
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EXHIBIT A - PRESS RELEASES
PICIS, INC. AND CAPSULE TECHNOLOGIE ENTER A CROSS-LICENSING AGREEMENT RELATING
TO AUTOMATION OF PATIENT XXXXX XXXXX COLLECTION
Picis, Inc. announced today that it has entered into a cross-licensing agreement
with Capsule Technologie ("Capsule Tech"), whereby Picis has agreed to grant
Capsule Tech a nonexclusive license to its patent relating to systems for
automating data communication between external software programs and sensors.
Capsule Tech has agreed to grant Picis nonexclusive rights relating to its
software products. The subject technology generally relates to systems for
automating patient xxxxx xxxxx collection into a Clinical Information System.
The financial terms of the agreement are confidential. The agreement resolves a
patent infringement lawsuit initiated by Picis that was pending in the District
Court for the Northern District of Georgia and related counterclaims.
PICIS, INC. AND CAPSULE TECHNOLOGIE ENTER A CROSS-LICENSING AGREEMENT RELATING
TO AUTOMATION OF PATIENT XXXXX XXXXX COLLECTION
Capsule Technologie ("CapsuleTech") announced today that it has entered into a
cross-licensing agreement with Picis, Inc., whereby Picis has agreed to grant
Capsule Tech a nonexclusive license to its patent relating to systems for
automating data communication between external software programs and sensors.
Capsule Tech has agreed to grant Picis nonexclusive rights relating to its
software products. The subject technology generally relates to systems for
automating patient xxxxx xxxxx collection into a Clinical Information System.
The financial terms of the agreement are confidential. The agreement resolves a
patent infringement lawsuit initiated by Picis that was pending in the District
Court for the Northern District of Georgia and related counterclaims.
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