EXHIBIT 10.15
C & C VISION, INC.
LICENSE AGREEMENT
This License Agreement (the "Agreement"), effective as of October 12, 1998
(the "Effective Date"), is entered into by and between C & C Vision, Inc., a
Delaware corporation having an address at 00000 Xxxxxx Xxxxx Xxxx, Xxxxxx Xxxxx,
XX 00000 ("Licensee"), and Medevec Supplies Limited, an Irish corporation
("Licensor"). All references to Licensee shall include its Affiliates.
RECITALS
A. Licensor holds certain rights to the Patent Rights and Know-How (as
such terms are defined below), and Licensee wishes to acquire exclusive rights
to the Patent Rights and Know-How as set forth herein; and
B. Licensor is willing to grant such rights to Licensee on the terms and
conditions set forth herein.
NOW, THEREFORE, in consideration of the promises and the mutual covenants
hereinafter recited, the parties agree as follows:
ARTICLE 1 -- DEFINITIONS
In this Agreement, the following terms shall have the meaning set forth in
this Article.
1.1 "Affiliate" means any corporation or other entity which is directly or
indirectly controlling, controlled by or under the common control with
a party hereto; provided, however, that Licensor shall not be considered an
Affiliate of Licensee for the purposes of this Agreement. For the purpose of
this Agreement, "control" shall mean the direct or indirect ownership of at
least fifty percent (50%) of the outstanding shares or other voting rights of
the subject entity to elect directors, or if not meeting the preceding, any
entity owned or controlled by or owning or controlling the maximum control or
ownership right permitted in the country where such entity exists.
1.2 "Confidential Information" shall mean (i) any proprietary or
confidential information or material in tangible form disclosed hereunder that
is marked as "Confidential" at the time it is delivered to the receiving party,
or (ii) proprietary or confidential information disclosed orally hereunder which
is identified as confidential or proprietary when disclosed and such disclosure
of confidential information is confirmed in writing within thirty (30) days by
the disclosing party.
1.3 "Field" means all uses.
1.4 "Know-How" means unpatented and/or unpatentable technical information,
including ideas, concepts, inventions, discoveries, data, designs, formulas,
specifications, procedures for experiments and tests and other protocols, and
results of experimentation and testing, licensed by
Licensor during the term of the Agreement which are necessary for the practice
of the Patent Rights and which Licensor has the right to sublicense. Know-How
shall not include the Patent Rights. All Know-How shall be Confidential
Information of Licensor.
1.5 "Licensed Product" will mean any product within the scope of a Valid
Claim or produced using any method within the scope of a Valid Claim, or which
incorporates or is made using any Know-How.
1.6 "Licensed Technology" means the Patent Rights and Know-How.
1.7 "Net Sales" shall mean revenues derived from sales of Licensed
Products on an accrual basis, in accordance with U.S. generally accepted
accounting principles, as follows: the invoice price of Licensed Products sold
by Licensee to third parties, less, to the extent included in such invoice price
the total of: (1) ordinary and customary trade discounts actually allowed; (2)
credits, rebates and allowances for returns (including, but not limited to,
wholesaler and retailer returns); (3) freight, postage, insurance and duties
paid for and separately identified on the invoice or other documentation
maintained in the ordinary course of business, and (4) excise taxes, other
consumption taxes, customs duties and compulsory payments to governmental
authorities actually paid and separately identified on the invoice or other
documentation maintained in the ordinary course of business. Net Sales shall
also include the fair market value of all other consideration received by
Licensee in respect of sales of Licensed Products, whether such consideration is
in cash, payment in kind, exchange or another form.
1.8 "Patent Rights" shall mean the patent applications and patents listed
on Exhibit A hereto and, and all divisions, continuations,
continuations-in-part, and substitutions thereof; and all U.S. patents issuing
on any of the preceding applications, including extensions, reissues, and
re-examinations. Patents rights shall not include the patent application
identified as "The apparatus and method for corneal keratotomy, docket number
5764" and any resulting patents.
1.9 "Territory" means the United States.
1.10 "Valid Claim" means an issued claim of any unexpired patent or a
claim of any pending patent application within the Patent Rights which has not
been held unenforceable, unpatentable or invalid by a decision of a court or
governmental body of competent jurisdiction, in a ruling that is unappealable or
unappealed within the time allowed for appeal which has not been rendered
unenforceable through disclaimer or otherwise, and which has not been lost
through an interference proceeding. Notwithstanding the foregoing, a claim of a
pending patent application shall cease to be a Valid Claim if no patent has
issued on such claim on or prior to the fourth anniversary of the date of filing
of the corresponding parent patent application, provided that such claim shall
once again become a Valid Claim on the issue date of a patent that subsequently
issues and covers such claim.
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ARTICLE 2 -- LICENSE
Subject to the terms and conditions of this Agreement, Licensor hereby
grants Licensee an exclusive, irrevocable, transferable, royalty-bearing license
under the Licensed Technology, with the right to grant and authorize
sublicenses; to make, have made, import, have imported, use, offer for sale,
sell and otherwise distribute and exploit Licensed Products in the Territory.
ARTICLE 3 -- CONSIDERATION
3.1 Royalties. Licensee shall pay to Licensor a royalty of five percent
(5%) on Net Sales of Licensed Products which are within the scope of a Valid
Claim of an issued patent within the Patent Rights.
3.2 Research Development. No royalties shall be due on Licensed Products
distributed for use in research and/or development, in clinical trials or as
promotional samples.
3.3 Royalty Offset. In the event that Licensee enters into a license
agreement with any third party with respect to intellectual property rights
which are necessary or useful for Licensee's practice of the Patent Rights or
the manufacture, use, import and/or sale of any Licensed Product, Licensee may
offset any payments made in accordance with such license agreements against any
amounts owed Licensors pursuant to Article 3 herein, up to a maximum of fifty
percent (50%) of the amounts due under Article 3.
3.4 One Royalty. No more than one royalty payment shall be due with
respect to a sale of a particular Licensed Product. No multiple royalties shall
be payable because any Licensed Product, or its manufacture, sale or use is
covered by more than one Valid Claim.
3.5 Royalty Term. Royalties due under this Article 3 shall accrue and be
payable on a country-by-country and Licensed Product-by-Licensed Product basis
commencing on the third anniversary of the date of this Agreement and
terminating on the expiration of the last-to-expire issued Valid Claim covering
such Licensed Product in such country, or if no such patent has issued in a
country, until there are no remaining pending Valid Claims covering such
Licensed Product in such country.
3.6 Sublicense Payments.
(a) In addition to the royalties subject to Section 3.2 above,
Licensee shall pay to Licensor a royalty of five percent (5%) on Net Sales
pursuant to any sublicense granted by Licensee of Licensed Products which are
within the scope of a Valid Claim of an issued patent within the Patent Rights.
(b) Notwithstanding the foregoing, the Company shall have no
obligation to pay to Licensor a royalty pursuant to Section 3.6(a) herein on an
aggregate of up to $40 million in Net Sales attributable to the VS2 intraocular
lens and insertion devices or the manufacturing process of
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VS2 intraocular lenses provided that such Net Sales are not attributable in
whole or in part to accommodating lens technology related to either the VS2
intraocular lens and insertion devices or the manufacturing process of the VS2
intraocular lens.
ARTICLE 4 -- PAYMENTS; REPORTS AND RECORDS
4.1 Calculation of Royalties. Royalties shall be payable in U.S. currency
within sixty (60) days after the end of each calendar quarter for the term of
this Agreement, beginning with the calendar quarter in which the first
commercial sale of a Licensed Product occurs. Each payment shall be accompanied
by a statement showing Net Sales for each country in the Territory and
calculation of the Royalties due. All such statements shall be deemed to be
Confidential Information of Licensee. There shall be deducted from all such
payments taxes required to be withheld by any governmental authority and
Licensee shall provide copies of receipts for such taxes to Licensor along with
each royalty payment. Any necessary conversion of currency into United States
dollars shall be at the applicable rate of exchange of Citibank, N.A., in New
York, New York, on the last day of the calendar quarter in which such
transaction occurred. Payments which are delayed beyond the sixty (60) days
after the end of the quarter in which they become due shall bear interest at a
rate equal to the prime rate as reported by Chase Manhattan Bank, New York,
calculated on the number of days such payment is delinquent. If at any time
legal restrictions prevent the prompt remittance of any Royalties owed on Net
Sales in any jurisdiction, Licensee may notify Licensor and make such payments
by depositing the amount thereof in local currency in a bank account or other
depository in such country in the name of Licensor, and Licensee shall have no
further obligations under this Agreement with respect thereto.
4.2 Records. Licensee shall keep, and shall cause its Affiliates and
Sublicensees of either, to keep full and accurate books and records in
sufficient detail so that sums due Licensor hereunder can be properly
calculated. Such books and records shall be maintained for at least three (3)
years after the Royalty reporting period(s) to which they relate. During the
term hereof and for three (3) calendar years thereafter, Licensee shall permit,
and shall cause its Affiliates to permit, and use reasonable efforts to have its
Sublicensees permit certified independent accountants designated by Licensor, to
whom Licensee has no reasonable objection, to examine its books and records
solely for the purpose of verifying the accuracy of the written statements
submitted by Licensee and sums paid or payable. Licensor may conduct such
examination no more than once in any calendar year and conduct no more than one
audit of any period. After completion of any such examination, Licensor shall
promptly notify Licensee in writing of any proposed modification to Licensee's
statement of sums due and payable. If Licensee accepts such modification, or if
the parties agree on other modifications, one party shall promptly pay or credit
the other in accordance with such resolution. Such examination shall be made at
the expense of Licensor, except that if such examination discloses a discrepancy
of fifteen percent (15%) or more in the amount of Royalties and other payments
due Licensor, then Licensee shall reimburse Licensor for the cost of such
examination.
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ARTICLE 5 -- CONFIDENTIALITY
5.1 Confidential Information. Except as expressly provided herein, the
parties agree that, for the term of this Agreement and for ten (10) years
thereafter, the receiving party shall keep completely confidential and shall not
publish or otherwise disclose and shall not use for any purpose except for the
purposes contemplated by this Agreement any Confidential Information furnished
to it by the disclosing party hereto, except that to the extent that it can be
established by the receiving party by written proof that such Confidential
Information:
(i) was already known to the receiving party, other than under an
obligation of confidentiality, at the time of disclosure;
(ii) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving party;
(iii) became generally available to the public or otherwise part of
the public domain after its disclosure and other than through any act or
omission of the receiving party in breach of this Agreement; or
(iv) was subsequently lawfully disclosed to the receiving party by a
person other than a party hereto.
5.2 Permitted Use and Disclosures. Each party hereto may use or disclose
information disclosed to it by the other party to the extent such use or
disclosure is reasonably necessary in complying with applicable law or
governmental regulations, conducting clinical trials, or exercising its rights
hereunder to develop or commercialize Licensed Products, provided that if a
party is required to make any such disclosure of another party's confidential
information, other than pursuant to a confidentiality agreement, it will give
reasonable advance notice to the latter party of such disclosure and will use
its best efforts to secure confidential treatment of such information prior to
its disclosure (whether through protective orders or otherwise).
5.3 Publications. Licensee shall provide to Licensor copies of any
proposed publication or abstract relating to the Licensed Technology prior to
submission of such documents. Licensor shall have fifteen (15) days after
receipt of such proposed publications to review them. After such review,
Licensee will delay the submission of such documents for up to sixty (60) days
to allow for the filing of patent applications.
5.4 Confidential Terms. Except as expressly provided herein, each party
agrees not to disclose any terms of this Agreement to any third party without
the consent of the other party; provided, disclosures may be made as required by
securities or other applicable laws, or to actual or prospective corporate
partners, or to a party's accountants, attorneys and other professional
advisors.
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ARTICLE 6 -- REPRESENTATIONS AND WARRANTIES
6.1 Licensor. Licensor represents and warrants that: (i) it is the sole
and exclusive licensee of all right, title and interest in the Licensed
Technology; (ii) it has the right to grant the rights and licenses granted
herein; (iii) it has not previously granted any right, license or interest in
and to the Licensed Technology inconsistent with the license granted to Licensee
herein; and (iv) as of the Effective Date, there are no threatened or pending
actions, suits, investigations, claims or proceedings in any way relating to the
Licensed Technology.
6.2 Licensee. Licensee represents and warrants that: (i) it is a
corporation duly organized, validly existing and in good standing under the laws
of the state of Delaware; and (ii) the execution, delivery and performance of
this Agreement have been duly authorized by the Licensee.
ARTICLE 7 -- INDEMNIFICATION
Licensee agrees to indemnify, defend and hold Licensor and its directors,
officers, employees and agents harmless from and against any and all
liabilities, claims, demands, expenses (including, without limitation, attorneys
and professional fees and other costs of litigation), losses or causes of action
(each, a "Liability") arising out of or relating in any way to (i) the
possession, manufacture, use, sale or other disposition of Licensed Products,
whether based on breach of warranty, negligence, product liability or otherwise,
(ii) the exercise of any right granted to Licensee pursuant to this Agreement,
or (iii) any breach of this Agreement by Licensee, except to the extent, in each
case, that such Liability is caused by the negligence or willful misconduct by
Licensor as determined by a court of competent jurisdiction.
ARTICLE 8 -- TERM AND TERMINATION
8.1 Term. The term of this Agreement will commence on the Effective Date
of this Agreement and remain in full force and effect until the expiration of
the last patent within the Patent Rights, unless earlier terminated earlier in
accordance with this Article 8.
8.2 Termination Upon Mutual Consent. This Agreement may be terminated at
any time upon the written consent of both parties hereto.
8.3 Effect of Termination.
(a) Accrued Rights and Obligations. Termination of this Agreement
for any reason shall not release any party hereto from any liability which, at
the time of such termination, has already accrued to the other party or which is
attributable to a period prior to such termination nor preclude either party
from pursuing any rights and remedies it may have hereunder or at law or in
equity with respect to any breach of this Agreement. It is understood and agreed
that monetary damages may not be a sufficient remedy for any breach of this
Agreement and that the non-breaching
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party may be entitled to injunctive relief as a remedy for any such breach. Such
remedy shall not be deemed to be the exclusive remedy for any such breach of
this Agreement, but shall be in addition to all other remedies available at law
or in equity.
(b) Return of Confidential Information. Upon any termination of this
Agreement, Licensee and Licensor shall promptly return to the other party all
Confidential Information, including without limitation, any Know-How received
from the other party (except Licensor may retain copies of any reports or
records subject to Article 4).
(c) Stock on Hand. In the event this Agreement is terminated for any
reason, Licensee shall have the right to sell or otherwise dispose of the stock
of any Licensed Product then on hand until six (6) months after such
termination, subject to Articles 3 and 4 and the other applicable terms of this
Agreement.
(d) Licenses. All licenses granted hereunder shall terminate upon
the termination of this Agreement.
8.4 Survival. Sections 9.4 and 9.5, and Articles 4, 6, 7, 8 and 10 of this
Agreement shall survive the expiration or termination of this Agreement for any
reason.
ARTICLE 9 -- PROSECUTION AND ENFORCEMENT
9.1 Licensee's Responsibilities. Licensee shall have the sole right to
control the preparation, filing, prosecution and maintenance of the Patent
Rights, and any interference or opposition proceeding relating thereto, using
patent counsel of its choice.
9.2 Licensor's Responsibilities. Licensor agree to cooperate and agree to
cause its Affiliates to cooperate with Licensee in the preparation, filing,
prosecution and maintenance of the Licensed Patents by disclosing such
information as may be necessary for the same and by promptly executing such
documents as Licensee may reasonably request in connection therewith. Licensor
and its Affiliates shall bear their own costs in connection with their
cooperation with Licensee under this Paragraph.
9.3 Reimbursement of Patent Expenses. During the term of the Agreement,
Licensee shall be responsible for reasonable expenses incurred with respect to
the Patent Rights in connection with the activities set forth in Section 9.1
above. Licensee may credit such amounts against royalties due Licensor pursuant
to Article 3.
9.4 Enforcement. If either party hereto becomes aware that any Patent
Rights are being or have been infringed by any third party, such party shall
promptly notify the other party hereto in writing describing the facts relating
thereto in reasonable detail. Licensee shall have the initial right, but not the
obligation, to institute, prosecute and control any action, suit or proceeding
(an "Action") with respect to such infringement, including any declaratory
judgment action, at Licensor's expense,
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using counsel of its choice. Any amounts recovered from third parties in any
such Action shall be used first to reimburse Licensor and Licensee for their
costs and expenses associated with such Action (including attorneys' and expert
fees) and any remainder treated as Net Sales of Licensed Products pursuant to
Section 3.4, such that Licensor shall receive five percent (5%) of such
remainder. In the event Licensee fails to initiate or defend any Action
involving the Patent Rights within one (1) year of receiving notice of any
commercially significant infringement, Licensor shall have the right, but not
the obligation, to initiate and control such an Action, and Licensee shall
cooperate reasonably with Licensor, at Licensor's request, in connection with
any such Action. Any amounts recovered in such Action shall be used first to
reimburse Licensee and Licensor for the expenses incurred in connection with
such Action, and any remainder shared by the parties, with Licensor receiving
seventy-five percent (75%) thereof, and Licensee receiving twenty-five percent
(25%) thereof.
9.5 Infringement Claims. If the practice by Licensee of the license
granted herein results in any allegation or claim of infringement of an
intellectual property right of a third party against Licensee, Licensee shall
have the exclusive right to defend any such claim, suit or proceeding, at
Licensor's expense, by counsel of its own choice and shall have the sole right
and authority to settle any such suit; provided, however, Licensor shall
cooperate with Licensee, at Licensee's reasonable request, in connection with
the defense of such claim. Licensee shall be entitled to offset any costs and
expenses (including attorneys' and professional fees) incurred in connection
with any such proceeding against any amounts it would otherwise owe Licensor
under Article 3.
ARTICLE 10 -- MISCELLANEOUS PROVISIONS
10.1 Governing Law; Venue. This Agreement and any dispute, including
without limitation any arbitration, arising from the performance or breach
hereof shall be governed by and construed and enforced in accordance with the
laws of the state of California, without reference to conflicts of laws
principles. The exclusive venue of any dispute arising out of or in connection
with the performance or breach of this Agreement shall be the California state
courts or U.S. district court located in San Francisco, California, and the
parties hereby consent to the personal jurisdiction of such courts.
10.2 Assignment. Licensee may transfer or assign this Agreement or any of
Licensee's rights hereunder without the written consent of Licensor. Licensor
may assign this Agreement or its rights hereunder only with the written consent
of Licensee. This Agreement shall be binding upon and inure to the benefit of
the parties and their permitted successors and assigns.
10.3 Waiver. No waiver of any rights, shall be effective unless consented
to in writing by the party to be charged and the waiver of any breach of default
shall not constitute a waiver of any other right hereunder or any subsequent
breach or default.
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10.4 Severability. In the event that any provisions of this Agreement are
determined to be invalid or unenforceable by a court of competent jurisdiction,
the remainder of the Agreement shall remain in full force and effect without
said provision.
10.5 Notices. All notices, requests and other communications hereunder
shall be in writing and shall be personally delivered or sent by telecopy or
other electronic facsimile transmission or by registered or certified mail,
return receipt requested, postage prepaid, in each case to the respective
address specified below, or such other address as may be specified in writing to
the other parties hereto:
LICENSEE: Medevec Supplies Ltd.
00, Xxxxx Xxxxxx Xxxxxx
Xxxxxx 0, Xxxxxxx
Attn: Xxxxx Xxxxxxxxxxxxx
LICENSOR: C & C Vision, Inc.
00000 Xxxxxx Xxxxx Xxxx
Xxxxxx Xxxxx, XX 00000
Attn: J. Xxxx Xxxxxx
10.6 Independent Contractors. Both parties are independent contractors
under this Agreement. Nothing contained in this Agreement is intended nor is to
be construed so as to constitute Licensor or Licensee as partners or joint
venturers with respect to this Agreement. Neither party shall have any express
or implied right or authority to assume or create any obligations on behalf of
or in the name of the other party or to bind the other party to any other
contract, agreement, or undertaking with any third party.
10.7 Patent Marking. Licensee agrees to xxxx all Licensed Products sold
pursuant to this Agreement in accordance with the applicable statute or
regulations relating to patent marking in the country or countries of
manufacture and sale thereof.
10.8 Compliance with Laws. In exercising their rights under this license,
the parties shall fully comply in all material respects with the requirements of
any and all applicable laws, regulations, rules and orders of any governmental
body having jurisdiction over the exercise of rights under this Agreement.
10.9 Use of Name. Neither party shall use the name or trademarks of the
other party without the prior written consent of such other party.
10.10 Entire Agreement; Amendment. This Agreement constitutes the entire
and exclusive Agreement between the parties with respect to the subject matter
hereof and supersedes and cancels all previous discussions, agreements,
commitments and writings in respect thereof. No amendment or addition to this
Agreement shall be effective unless reduced to writing and executed by the
authorized representatives of the parties.
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IN WITNESS WHEREOF, Licensor and Licensee have executed this Agreement by
duly authorized officers.
C & C VISION, INC. MEDEVEC SUPPLIES LIMITED
By: /s/ J. Xxxx Xxxxxx By: /s/ Xxxx Xxxx Devo
-------------------------- ----------------------
Print Name: J. Xxxx Xxxxxx Print Name: Xxxx Xxxx Devo
Title: President Title: Director
Exhibit A: Patent Rights (1.9)
C & C VISION, INC.
LICENSE AGREEMENT
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EXHIBIT A
PATENT RIGHTS
C & C VISION, INC.
LICENSE AGREEMENT
C & C VISION, INC.
FIRST AMENDMENT TO LICENSE AGREEMENT
This First Amendment to License Agreement (the "Amendment"),effectiv as of
May 31, 2000 (the "Effective Date"), is entered into by and between C & C
Vision Inc., a Delaware corporation having an address at 0 Xxxxxxx, Xxxxx 000,
Xxxxx Xxxxx, Xxxxxxxxxx 00000 ("Licensee"), and Medevec Supplies Limited, an
Irish corporation ("Licensor"). All references to Licensee shall include its
Affiliates.
RECITALS
A. Licensor and Licensee have entered into a License Agreement date as of
October 12, 1998 (the "License Agreement").
B. Licensor and Licensee desire to amend License Agreement solely to the
extent set forth herein.
NOW, THEREFORE, in consideration of the promises and the mutual covenants
hereinafter recited, the parties agree as follows:
1. Amendment License Agreement. Licensee and Licensor hereby acknowledge
and agree that the License Agreement shall be amended as follows:
a. Section 1.4 of the License Agreement shall be restated in its
entirety to read as follows (with the changes indicated in bold):
1.4 "Know-How" means unpatented and/or unpatentable technical
information, including ideas, concepts, inventions, discoveries, data,
designs, formulas, specifications, procedures for experiments and
tests and other protocols, and results of experimentation and
testing, licensed by Licensor during the term of the Agreement which
are necessary or USEFUL for the practice, FILING, PREPARATION,
REGISTRATION, PRESENTATION AND MAINTENANCE of the Patent Rights and
which Licensor has the right to sublicense. Know-How shall not include
the Patent Rights. All Know-How shall be Confidential Information of
Licensor.
b. Section 1.7 of the License Agreement shall be restated in its
entirety to read as follows (with the changes indicated in bold):
1.7 "Net Sales" shall mean THE GROSS AMOUNTS RECEIVED BY LICENSEE
from sales of Licensed Products, in accordance with U.S. generally
accepted accounting principles, as follows: the invoice price of
Licensed Products sold by
Licensee to third parties, less, to the extent included in such
invoice price the total of: (1) ordinary and customary trade,
QUANTITY OR CASH discounts actually allowed; (2) credits,
UNCOLLECTIBLE AMOUNTS, rebates and allowances for returns (including,
but not limited to, wholesaler and retailer returns); (3) freight,
postage, insurance and duties paid for and separately identified on
the invoice or other documentation maintained in the ordinary course
of business, and (4) excise taxes, other consumption taxes, customs
duties and compulsory payments to governmental authorities actually
paid and separately identified on the invoice or other documentation
maintained in the ordinary course of business. Net Sales shall also
include the fair market value of all other consideration received by
Licensee in respect of sales of Licensed Products, whether such
consideration is in cash, payment in kind, exchange or another form.
c. Section 1.10 of the License Agreement shall be restated in its
entirety to read as follows (with the changes indicated in bold):
1.10 "Valid Claim" means an issued claim of any unexpired patent
or a claim of any pending OR FUTURE patent application within the
Patent Rights which has not been held unenforceable, unpatentable or
invalid by a decision of a court or governmental body of competent
jurisdiction, in a ruling that is unappealable or unappealed within
the time allowed for appeal which has not been rendered unenforceable
through disclaimer or otherwise, and which has not been lost through
an interference proceeding. Notwithstanding the foregoing, a claim of
a pending or FUTURE patent application shall cease to be a Valid Claim
if no patent has issued on such claim on or prior to the fourth
anniversary of the date of filing of the corresponding parent patent
application, provided that such claim shall once again become a Valid
Claim on the issue date of a patent that subsequently issues and
covers such claim.
d. Section 3.4 of the License Agreement shall be restated in its
entirety to read as follows (with the changes indicated in bold):
3.4 One Royalty. No more than one royalty payment shall be due
with respect to a sale of a particular Licensed Product BY LICENSEE OR
BY ANY SUBLICENSEE. No multiple royalties shall be payable because any
Licensed Product, or its manufacture, sale or use is covered by more
than one Valid Claim.
e. Section 4.1 of the License Agreement shall be restated in its
entirety to read as follows (with the changes indicated in bold):
4.1 Calculation of Royalties. Royalties shall be payable in U.S.
currency within NINETY (90) days after the end of each calendar
quarter for the term of this Agreement, beginning with the calendar
quarter in which the first commercial sale of
a Licensed Product occurs. Each payment shall be accompanied by a
statement showing Net Sales for each country in the Territory and
calculation of the Royalties due. All such statements shall be deemed
to be Confidential Information of Licensee. There shall be deducted
from all such payments taxes required to be withheld by any
governmental authority and Licensee shall provide copies of receipts
for such taxes to Licensor along with each royalty payment. Any
necessary conversion of currency into United States dollars shall be
at the applicable rate of exchange of Citibank, N.A., in New York, New
York, on the last day of the calendar quarter in which such
transaction occurred. Payments which are delayed beyond the NINETY
(90) days after the end of the quarter in which they become due shall
bear interest at a rate equal to the prime rate as reported by Chase
Manhattan Bank, New York, calculated on the number of days such
payment is delinquent. If at any time legal restrictions prevent the
prompt remittance of any Royalties owed on Net Sales in any
jurisdiction, Licensee may notify Licensor and make such payments by
depositing the amount thereof in local currency in a bank account or
other depository in such country in the name of Licensor, and Licensee
shall have no further obligations under this Agreement with respect
thereto.
f. Article 5 (Confidentiality) of the License Agreement shall be
deleted in its entirety and shall be replaced with the words "Intentionally
Omitted."
g. Section 8.1 of the License Agreement shall be restated in its
entirety to read as follows (with the changes indicated in bold):
8.1 Term. The term of this Agreement will commence on the
Effective Date of this Agreement and remain in full force and effect
until the expiration of the last patent within the Patent Rights,
unless earlier terminated earlier in accordance with this Article 8.
AFTER TERMINATION BECAUSE OF EXPIRATION OF THE LAST PATENT WITHIN THE
PATENT RIGHTS, LICENSEE MAY CONTINUE TO USE THE LICENSED TECHNOLOGY
WITHOUT ANY OBLIGATION TO PAY ROYALTIES.
h. Section 8.3(b) of the License Agreement shall be deleted in its
entirety and shall be replaced with the words "Intentionally Omitted".
i. Section 8.3(c) of the License Agreement shall be restated in its
entirety to read as follows (with the changes indicated in bold):
8 .3(c) Stock on Hand. In the event this Agreement is terminated
for any reason, OTHER THAN BECAUSE OF THE EXPIRATION OF THE LAST
PATENT WITHIN THE PATENT RIGHTS, Licensee shall have the right to sell
or otherwise dispose of the stock of any Licensed Product then on hand
until six (6) months after such termination, subject to Articles 3 and
4 and the other applicable terms of this Agreement.
j. Section 8.3(d) of the License Agreement shall be restated in its
entirety to read as follows (with the changes indicated in bold):
8.3(d) Licenses. All licenses granted hereunder shall terminate
upon the termination of this Agreement, OTHER THAN BECAUSE OF THE
EXPIRATION OF THE LAST PATENT WITHIN THE PATENT RIGHTS.
1. Exhibit A to the License Agreement shall be amended as follows:
(i) The column labeled "J. Xxxxxx Xxxxxxx'x Patents" shall be
labeled "Patents."
(ii) The following patents shall be added under the column
labeled "Patents":
Methods of Fabricating Intraocular Lenses and Lens Molds, No.
5,837,156, issued on 11/17/98
Intraocular Lenses with Fixated Haptics, No. 6,051,024, issued on
4/18/00.
k. Except as expressly amended hereby, the License Agreement shall
remain in full force and effect.
2. Counterparts. This Amendment may be executed in two counterparts, each
of which shall be deemed an original and which together shall constitute one
instrument.
IN WITNESS WHERE OF Licensor and Licensee have excuted this Amendment by
duly authorised officers.
C & C VISION, INC.
By: /s/ J. Xxxx Xxxxxx
---------------------
Print Name: J. Xxxx Xxxxxx
Title: CEO
MEDEVEC SUPPLIES LIMITED
By: /s/ Xxxxx Xxxxxx
---------------------
Print Name: Xxxxx Xxxxxx
Title: Director
CONSENT TO ASSIGNMENT AND
SECOND AMENDMENT OF EYEONICS LICENSE AGREEMENT
This Consent to Assignment and Second Amendment of Eyeonics License Agreement
(this "EYEONICS CONSENT"), effective as of Dec. 31, 2006 (the "EFFECTIVE DATE"),
is made by and among C&C Vision International Limited, an Irish corporation and
formerly Medevec Supplies, Ltd. ("LICENSOR"), eyeonics, inc., a Delaware
corporation and formerly C & C Vision, Inc. ("LICENSEE"), Xxxxx Xxxxxxx and
Xxxxx Xxxxxxx Xxxxx, Trustees of the Nice Trust (the "NICE TRUST"), and The Law
Trust Trustees as Trustee of the Poskitt Discretionary Trust (the "POSKITT
TRUST").
BACKGROUND
WHEREAS, Licensor licensed certain patent registrations and applications (the
"PATENTS") from Eppington Corporation NV, a Netherlands Antilles corporation
("NV"), Medevec Licensing BV, a Netherlands corporation pursuant to the terms of
a License Agreement dated October 12, 1998, as amended pursuant to the Medevec
Supplies, Ltd. First Amendment to License Agreement dated May 31, 2000 (as
amended, the "C&C INTERNATIONAL LICENSE AGREEMENT"), by and among BV, NV,
Assignor, and J. Xxxxxx Xxxxxxx ("JSC");
WHEREAS, Licensor licensed the Patents for use in the United States of America
to Licensee pursuant to a License Agreement dated October 12, 1998, as amended
pursuant to the C & C Vision, Inc. First Amendment to License Agreement dated
May 31, 2000 (as amended but excluding the Annual Amendments (as defined below),
the "EYEONICS LICENSE AGREEMENT") by and between Licensor and Licensee;
WHEREAS, Licensor has entered into amendments to the Eyeonics License Agreement
in each January of 1999, 2000, 2001, 2002, 2003, and 2004 whereby the definition
of "Territory" was redefined to mean "worldwide" for a period of only one (1)
year following execution of such amendment (such amendments, the "ANNUAL
AMENDMENTS"), and, notwithstanding anything to the contrary herein, the Annual
Amendments are not included in the definition of "Eyeonics License Agreement" in
this Eyeonics Consent;
WHEREAS, BV and NV have assigned and transferred all of their right, title,
interest, obligations and liabilities to the Patents and in and under the C&C
International License Agreement to the Nice Trust pursuant to that certain
Assignment and Assumption Agreement dated as of even date herewith (the "BV/NV
ASSIGNMENT");
WHEREAS, Licensor consented to the BV/NV Assignment pursuant to that certain
Consent to Assignment and Second Amendment of C&C International License
Agreement dated as of even date herewith (the "C&C INTERNATIONAL CONSENT");
WHEREAS, pursuant to the terms of the Eyeonics License Agreement, the rights and
obligations of the Licensor under the Eyeonics License Agreement may not be
assigned without the written consent of the Licensee;
WHEREAS, the Licensor desires to assign all of Licensor's rights and obligations
under the Eyeonics License Agreement to the Nice Trust pursuant to that certain
C&C International Assignment and Assumption Agreement dated as of even date
herewith (the "C&C INTERNATIONAL ASSIGNMENT") by and between Licensor and the
Nice Trust, and
WHEREAS, the Nice Trust then desires to assign all of its rights and obligations
under the Eyeonics License Agreement to the Poskitt Trust pursuant to that
certain Nice Trust Assignment and Assumption Agreement dated as of even date
herewith (the "NICE TRUST ASSIGNMENT", together with the C&C International
Assignment the "US RIGHTS ASSIGNMENTS").
NOW, THEREFORE, in consideration of the covenants and promises set forth herein
and for other good and valuable consideration, the receipt and sufficiency of
which are hereby expressly acknowledged by all of the parties, each of the
undersigned covenant and agree as follows:
1. The Nice Trust and the Poskitt Trust hereby jointly and severally represent
and warrant to Licensee that:
(a) all action on the part of each of the Nice Trust and the Poskitt Trust
necessary for the authorization and consummation of the US Rights
Assignments have been taken and that the US Rights Assignments will not be
violation, breach or default with respect to any instrument, judgment,
order, writ, decree, law, statute, rule, regulation or contract to which
either of JSC, BV, NV, the Nice Trust, or the Poskitt Trust is bound; and
(b) Licensee will, after the Effective Date, be able to exercise all
rights and benefits of the Licensee enjoyed under the Eyeonics License
Agreement prior to the Effective Date.
2. Licensee hereby consents to the assignment by the Licensor of all of
Licensor's right, title and interest in the Eyeonics License Agreement to the
Nice Trust and then to the Poskitt Trust and to the US Rights Assignments
subject to the terms and conditions of this Eyeonics Consent. Upon: (i) receipt
by Licensor and Licensee of a fully executed Eyeonics Consent, (ii) receipt by
Licensor and Licensee of executed copies of the US Rights Assignments, and (iii)
receipt by Licensor and Licensee of a fully executed C&C International Consent,
Licensee shall recognize the Poskitt Trust as having all of the rights and
interests in and obligations under the Eyeonics License Agreement heretofore
attributed to the Licensor.
3. Each of the Nice Trust and the Poskitt Trust acknowledges that it has
reviewed the Eyeonics License Agreement and fully understands the obligations
set forth therein on its part to be performed thereunder.
4. The Poskitt Trust hereby agrees to be responsible for and assume all duties,
liabilities and obligations of the Licensor under the Eyeonics License Agreement
prior to, on, or following the date of the Assignment; provided, however that
the Nice Trust and the Poskett Trust shall be jointly and severally liable for
all liabilities arising on or prior
to the date of the Assignment. The Poskitt Trust shall be obligated to the terms
of the License Agreement and any agreement contained therein as if it were an
original party thereto.
5. Notwithstanding anything to the contrary in this Eyeonics Consent or the Nice
Trust Assignment, each of the Nice Trust and the Poskitt Trust hereby covenants
to Licensor and Licensee that if, at any time and under any circumstances, the
Poskitt Trust is unable to fulfill any of its obligations or liabilities in or
under the Eyeonics License Agreement, the Nice Trust will immediately fulfill
such obligations or liabilities.
6. The Nice Trust and the Poskitt Trust hereby agree to jointly and severally
indemnify, defend and hold harmless Licensor and Licensee and their respective
directors, officers, employees, agents, and affiliates (each an "INDEMNITEE")
from and against any and all claims, liabilities, damages, losses, costs or
expenses (including attorneys' and professional fees and other expenses of
litigation and/or arbitration) (a "LIABILITY") resulting from any claim, suit or
proceeding brought by a third party against an Indemnitee, arising out of or in
connection with the Assignment and the transactions contemplated thereby and
hereby or out of any breach of this Eyeonics Consent by the Nice Trust or the
Poskitt Trust. In the event that any Indemnitee intends to claim indemnification
under this Paragraph 5, it shall promptly notify the other party in writing of
such alleged Liability. The indemnifying party shall have the right to control
the defense thereof. The affected Indemnitees shall cooperate fully with the
indemnifying party and its legal representatives in the investigation and
conduct of any Liability covered by this Paragraph 5. The Indemnitee shall not,
except at its own cost, voluntarily make any payment or incur any expense with
respect to any claim, suit or Liability, or make any admission of liability or
attempt to settle any claim without the prior written consent of the
indemnifying party, which consent shall not be unreasonably withheld.
7. Section 10.5 of the License Agreement is hereby amended and restated in its
entirety to read as follows:
"10.5 Notices and Bank Account.
Any notice or other document to be presented to the parties hereto, shall
be served by facsimile and e-mail, which must be confirmed by registered
letter sent to the address given below or to such other address as such
party may have notified to the other party for the purposes hereof. Any
notice sent by facsimile shall be deemed delivered on the first working day
in the country of recipient following its dispatch. All payments made by
Licensee shall be made to the bank account set forth below:
For Licensor: The Poskitt Trust
[address]
Bank account details [ ]
For Licensee: eyeonics, inc.
0 Xxxxxxx, Xxxxx 000
Xxxxx Xxxxx, XX 00000
8. This Eyeonics Consent shall be binding on the parties hereto and upon their
respective successors and assigns. Licensee may transfer or assign this Eyeonics
Consent or any of Licensee=s rights hereunder without the written consent of
Licensors or JSC. Neither the Nice Trust nor the Poskitt Trust may assign or
delegate to a successor any of its rights and obligations hereunder without the
express prior written consent of Licensee.
9. All of the covenants and agreements contained herein shall be binding upon
and shall inure to the benefit of the parties hereto and their respective
representatives, successors and assigns.
11. This Eyeonics Consent may be executed in counterparts, all of which, when
taken together, shall constitute one and the same Eyeonics Consent.
12. This Eyeonics Consent and any dispute, including without limitation any
arbitration, arising from the performance or breach hereof shall be governed by
and construed and enforced in accordance with the laws of the state of
California, without reference to conflicts of laws principles. The exclusive
venue of any dispute arising out of or in connection with the performance or
breach of this Agreement shall be the California state courts or U.S. district
court located in San Francisco, California, and the parties hereby consent to
the personal jurisdiction of such courts.
13. If any provision of this Eyeonics Consent is held to be illegal or
unenforceable, that provision will be limited or eliminated to the minimum
extent necessary so that this Eyeonics Consent will otherwise remain in full
force and effect and enforceable so as to give effect to the intent of the
parties hereunder.
14. This Eyeonics Consent shall become effective pursuant to the terms set forth
in Section 2 hereof and only if and when the US Rights Assignments are
consummated, in which case this Eyeonics Consent shall become effective upon the
closing date of the Nice Trust Assignment; provided, however, that if the
closing of each of the US Rights Assignments has not occurred by the Effective
Date, then Licensee shall not give its consent to any assignment of Licensor's
rights and obligations under this Eyeonics Consent and this Eyeonics Consent
shall be null and void.
[remainder of this page intentionally left blank]
IN WITNESS WHEREOF, the parties hereto have each duly executed this Consent
to Assignment and Second Amendment of Eyeonics License Agreement effective as of
the Effective Date. Each party warrants and represents that its respective
signatories whose signatures appear below have been and are, on the date of
signature, authorized to execute this Eyeonics Consent.
C & C VISION INTERNATIONAL LIMITED
By: /s/ Xxxxxx X. Xxxxx
--------------------------------------
Name: Xxxxxx X. Xxxxx
Title: Chairman
EYEONICS, INC.
By: /s/ J. Xxxx Xxxxxx
--------------------------------------
Name: J. Xxxx Xxxxxx
Title: CEO
XXXXX XXXXXXX AND XXXXX XXXXXXX XXXXX
AS TRUSTEES OF THE NICE TRUST
By: /s/ Xxxxx Xxxxxxx, Xxxxx Xxxxxxx Xxxxx
--------------------------------------
Name: Xxxxx Xxxxxxx, Xxxxx Xxxxxxx Xxxxx
Title: Trustee
THE LAW TRUST LIMITED
AS TRUSTEE OF THE POSKITT
DISCRETIONARY TRUST
By: /s/ Xxxxx Xxxxxxx, Xxxxx Xxxxxxx Xxxxx
--------------------------------------
Name: Xxxxx Xxxxxxx, Xxxxx Xxxxxxx Xxxxx
Title: Director
THIRD AMENDMENT TO THE EYEONICS LICENSE AGREEMENT
This Third Amendment to the Eyeonics License Agreement (this "AMENDMENT #3"),
effective as of January 1, 2007 (the "EFFECTIVE DATE"), is made by and between
eyeonics, inc., a Delaware corporation and formerly C & C Vision, Inc.
("LICENSEE") and the Law Trust Limited as Trustee of the Poskitt Discretionary
Trust (the "POSKITT TRUST"). Licensee and the Poskitt Trust may be referred to
herein by name or as a "PARTY," or collectively as the "PARTIES."
BACKGROUND
WHEREAS, Licensee entered into that certain license agreement with C&C Vision
International Limited, an Irish corporation and formerly Medevec Supplies, Ltd
("C&C VISION INTERNATIONAL") dated October 12,1998, as amended May 31, 2000 and
December 31, 2006 under which C&C Vision International granted certain rights
and licenses to Licensee and both parties undertook certain obligations to each
other (such license agreement, the "EYEONICS LICENSE AGREEMENT").
WHEREAS, the Poskitt Trust has been assigned all rights and obligations as
"Licensor" under the Eyeonics License Agreement, and has assumed all such rights
and obligations, pursuant to that certain C&C International Assignment and
Assumption Agreement between C&C Vision International and Xxxxx Xxxxxxx and
Xxxxx Xxxxxxx Xxxxx as Trustees of the Nice Trust dated December 31, 2006 and
that certain Nice Trust Assignment and Assumption Agreement between Xxxxx
Xxxxxxx and Xxxxx Xxxxxxx Xxxxx as Trustees of the Nice Trust and the Poskitt
Trust dated December 31, 2006.
WHEREAS, the Poskitt Trust wishes to amend the Eyeonics License Agreement to
provide for a reduction in the royalty payable by Licensee to the Poskitt Trust
in order to provide for a royalty to be paid by Licensee to J. Xxxx Xxxxxx,
currently the Chief Executive Officer of Licensee, whom the Poskitt Trust
acknowledges has increased sales of Licensed Products and the growth of Licensee
to the economic benefit of the Poskitt Trust.
NOW, THEREFORE, in consideration of the covenants and promises set forth herein
and for other good and valuable consideration, the receipt and sufficiency of
which are hereby expressly acknowledged by the Parties, each of the undersigned
covenants and agrees as follows:
1. A new Section 3.7 is hereby added to the Eyeonics License Agreement, and
reads as follows:
"3.7 Notwithstanding anything to the contrary in this Agreement
(including, without limitation, the terms of Sections 3.1, 3.6(a) or
9.4 hereof), after all applicable reductions and off-sets
(including, without limitation, those set forth in Sections 3.3,
3.4, 3.5, 4.1, 9.3 and 9.5) have been applied against the amounts
owed by Licensee to Licensor under this Agreement, the amounts owed
by Licensee to Licensor hereunder (net of such reductions and
off-sets) shall be reduced by a further twenty percent (20%), such
that the actual amounts payable
by Licensee to Licensor under this Agreement shall be eighty percent
(80%) of what their value would have been calculated to be prior to
reduction pursuant to this Section 3.7."
2. Notwithstanding anything to the contrary in this Amendment #3 or the
Eyeonics License Agreement, no royalty shall be due to the Poskitt Trust
under the Eyeonics License Agreement on the Net Sales of Licensed Products
by Licensee or any of its sublicensees under either Section 3.1 or Section
3.6(a) of the Eyeonics License Agreement (i.e. the royalty rate under such
sections shall be zero percent (0%)) until Licensee has paid a total
royalty of four-hundred thousand dollars ($400,000) to J. Xxxx Xxxxxx
pursuant to that certain letter agreement between Licensee and J. Xxxx
Xxxxxx dated January 1, 2007.
3. Licensee shall be entitled to deduct and withhold from any payment made
under the Eyeonics License Agreement any amounts required to be deducted
and withheld under the Internal Revenue Code (including, without
limitation, income and payroll taxes), or any provision of state, local or
foreign tax law, with respect to the making of such payment. To the extent
that amounts are so withheld, such withheld amounts shall be treated for
all purposes of the Eyeonics License Agreement as having been paid.
4. Each Party represents and warrants that: (i) it has full power and
authority to enter into and perform this Amendment #3; (ii) its entering
into of this Amendment #3 will not violate any right of or breach any
obligation to any third party under any agreement or arrangement between
such Party and such third party; and (iii) its execution, delivery and
performance of this Agreement has been duly authorized by such Party. The
Poskitt Trust further represents and warrants that it is a Discretionary
Trust established under the laws of the Isle of Man, and Licensee further
represents and warrants that it is a corporation established under the
laws of the State of Delaware, United States.
5. All of the covenants and agreements contained herein shall be binding upon
and shall inure to the benefit of the Parties and their respective
representatives, successors and assigns.
6. This Amendment #3 and any dispute, including without limitation any
arbitration, arising from the performance or breach hereof shall be
governed by and construed and enforced in accordance with the laws of the
State of California, without reference to conflicts of laws principles,
and the 1980 U.N. Convention on Contracts for the International Sale of
Goods shall not apply to this Amendment #3, the Eyeonics License Agreement
or the rights or obligations of the Parties therein. The exclusive venue
of any dispute arising out of or in connection with the performance or
breach of this Amendment #3 shall be the California state courts or U.S.
district court located in San Francisco, California, and the Parties
hereby consent to the personal jurisdiction of such courts.
7. Capitalized terms undefined herein shall have the meanings ascribed to
them in the Eyeonics License Agreement.
8. This Amendment #3 may be executed in counterparts, all of which, when
taken together, shall constitute one and the same Amendment #3.
[remainder of this page intentionally left blank]
IN WITNESS WHEREOF, the Parties hereto have each duly executed this
Amendment #3 effective as of the Effective Date. Each Party warrants and
represents that its respective signatories whose signatures appear below have
been and are, on the date of signature, authorized to execute this Amendment #3.
EYEONICS, INC.
By: /s/ XXXXXX X. XXXXX
------------------
Name: XXXXXX X. XXXXX
Title: CFO
THE LAW TRUST LIMITED AS
TRUSTEE OF THE POSKITT
DISCRETIONARY TRUST
By: /s/ XXXXX XXXXXXX, XXXXX X. XXXXX
-------------------
Name: XXXXX XXXXXXX, XXXXX X. XXXXX
Title: DIRECTOR
