EXHIBIT 99.2
NON-EXCLUSIVE SUBLICENSE
------------------------
This Agreement is made on February 27, 2001 ("Effective Date"), by and
between LaserSight Technologies, Inc., a Delaware corporation having a place of
business at 0000 Xxxxxxxxxx Xxxxxxxxx, Xxxxx 000, Xxxxxx Xxxx, Xxxxxxx 00000
("LaserSight") and Alcon Laboratories, Inc., a Delaware corporation, having a
place of business at 0000 Xxxxx Xxxxxxx, Xxxx Xxxxx, Xxxxx 00000 ("Alcon").
WITNESSETH:
WHEREAS, LaserSight is the exclusive licensee of U.S. Patent No.
5,630,810, together with all continuations, divisions, continuation-in-part,
reissues, reexaminations, renewals, extensions and foreign counterparts thereof,
pertaining to refractive laser technology (collectively the "'810 Patent"); and
WHEREAS, LaserSight has a right to sublicense the `810 Patent to
unrelated third parties pursuant to Section 5.02 of the Exclusive License
Agreement dated August 20, 1998, between LaserSight and The Laser Center
Patents, Inc. (the "TLC License"); and
WHEREAS, LaserSight has alleged that Alcon is infringing the `810
Patent; and
WHEREAS, Alcon has denied any infringement of the `810 Patent; and
WHEREAS, the parties desire to settle amicably the dispute between them
and enter into other business transactions.
NOW, THEREFORE, in consideration of the following mutual promises and
obligations, the parties agree as follows.
ARTICLE I
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NON-EXCLUSIVE SUBLICENSE
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Section 1.00 Non-Exclusive Sublicense.
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LaserSight, pursuant to Section 5.02 of the TLC License hereby grants
to Alcon and Alcon hereby accepts from LaserSight upon the terms and conditions
specified herein and in the TLC License a non-exclusive, non-royalty bearing,
fully paid up right and license under the `810 Patent to make, use, offer for
sale and sell products worldwide.
Section 1.01 No Right of Alcon to Sublicense.
---------------------------------------------
Except to affiliated companies that are controlled by, control or are
under common control with Alcon, the rights granted to Alcon do not include the
right to grant any sublicenses under the `810 Patent. Any such purported
sublicense to the `810 Patent granted by Alcon shall be null and void. Alcon
shall be deemed to control an affiliated company if Alcon possesses the power,
directly or indirectly, to (i) vote or direct the voting of 80% or more of the
voting rights (e.g., equity securities, partnership interests, member interests
or any other similar interests that posses the right to vote on matters to be
considered by such affiliated company), or (ii) direct or cause the direction of
management of such affiliated company.
Section 1.02 Covenant Not to Xxx.
---------------------------------
LaserSight hereby covenants and agrees that it will not file any action
or suit alleging that Alcon, or any affiliated company that controls, is
controlled by or under common control with Alcon, infringes the `810 Patent.
ARTICLE II
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PAYMENT
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Section 2.00 Licensing Fee.
---------------------------
In full payment for the non-exclusive sublicense granted to Alcon under
this Agreement, Alcon shall pay LaserSight a lump sum of One Dollar ($1.00),
payable immediately upon signing this Agreement.
ARTICLE III
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TERM AND TERMINATION
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Section 3.00 Term.
------------------
This Agreement shall have a term beginning on the Effective Date and
terminating on May 15, 2014.
ARTICLE IV
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NOTICES AND ADDRESSES
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Section 4.00 Notices.
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Any written communication, notice, report or payment shall be addressed
and mailed to the addressed party at the following addresses:
Alcon: Alcon Laboratories, Inc.
Intellectual Property and R&D Counsel, Q-148
0000 Xxxxx Xxxxxxx
Xxxx Xxxxx, Xxxxx 00000-0000
LaserSight: LaserSight Technologies, Inc
0000 Xxxxxxxxxx Xxxxxxxxx
Xxxxx 000
Xxxxxx Xxxx, Xxxxxxx 00000
Attention: CEO
Either party may change its mailing address for the purpose of this
Agreement by giving the other party advance written notice of such change
fifteen (15) days prior to the date upon which the change is to become
effective. All written communications, notices, reports or payments shall be
sent by a nationally recognized express courier service or by first-class mail,
postage prepaid and certified.
ARTICLE V
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PATENT PROSECUTION
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Section 5.00 Prosecution of the `810 Patent.
--------------------------------------------
The responsibility for preparing, prosecuting and maintaining the `810
Patent shall be solely the obligation of LaserSight in accordance with the TLC
License.
ARTICLE VI
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INFRINGEMENT
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Section 6.00 Notices.
---------------------
If either party hereto becomes aware that any person is, or may be,
infringing the `810 Patent, that party shall promptly provide written notice to
the other of the infringement, in writing along with any available evidence of
such infringement.
Section 6.01 Prosecution of Actions.
------------------------------------
Subject to the provisions of the TLC License, LaserSight shall have the
sole and exclusive right, but not the obligation, to initiate and prosecute at
its own expense any action for infringement of the `810 Patent and to collect
damages for past and future infringement.
ARTICLE VII
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CONFIDENTIALITY
---------------
During the term of this Agreement, either party may disclose to the
other party confidential information in the nature of trade secrets.
Accordingly, all information received by either party, directly or indirectly
incident to this Agreement, shall be held in strictest confidence, and the
receiving party shall not either directly or indirectly disclose or use, except
in performance of its obligations under this Agreement, any such information of
any kind or character as may be disclosed or otherwise imparted to the receiving
party or as may be developed during the course of this Agreement, and that all
such information shall be held in the strictest confidence. The foregoing
obligations of confidentiality and non-use shall remain in effect for a period
of ten (10) years from the later of: 1) the date of disclosure; or 2) May 14,
2024, and shall survive the expiration or termination of this Agreement.
The obligations of confidence and non-use assumed by LaserSight and by
Alcon hereunder shall not apply to:
(a) information which at the time of disclosure is in the public
domain; or
(b) information which thereafter lawfully becomes a part of the
public domain other than through disclosure by or through the
receiving party; or
(c) information which is already in the possession of the party
receiving such information as shown by its written record; or
(d) information which is lawfully disclosed to either party by a
third party not under an obligation of confidentiality to the
disclosing party with respect to such information; or
(e) information which is subsequently developed by an employee or
agent of the receiving party without actual knowledge of the
disclosure; or
(f) information which the receiving party is required by law to
disclose, provided that the receiving party gives the
disclosing party reasonable notice of its intent to disclose
such information.
ARTICLE VIII
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MISCELLANEOUS
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Section 8.00 Non-Assignability by Alcon.
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This Agreement, or any of the rights or obligations created herein, may
not be assigned, in whole or in part, by Alcon except to an affiliated company
that controls, is controlled by or under common control with Alcon. Any
purported assignment is null and void. This Agreement is fully assignable by
LaserSight.
Section 8.01 Severability.
--------------------------
If any provision of this Agreement shall for any reason or to any
extent be invalid or unenforceable, the remainder of this Agreement shall not be
affected thereby, but rather shall be enforced to the greatest extent permitted
by law.
Section 8.02 Counterparts.
--------------------------
This Agreement may be executed in multiple counterparts, each of which
shall be deemed an original, but all of which shall be deemed one and the same
instrument.
Section 8.03 Headings.
----------------------
The headings used in this Agreement are used for administrative
purposes only and do not constitute substantive matter to be considered in
construing the terms of this Agreement.
Section 8.04 Entire Agreement.
------------------------------
This Agreement embodies the entire agreement between the parties
relating to the subject matter hereof. All prior arrangements or understandings
are hereby superseded and canceled. No change, modification, or waiver of this
Agreement or any term thereof shall be valid or binding unless it is in writing
and signed by the party intended to be bound.
Section 8.05 Binding Effect.
----------------------------
Except as otherwise provided herein, the terms, obligations, covenants,
provisions, conditions and agreements herein shall bind and inure to the benefit
of the successors, permitted transferees and permitted assigns of Alcon and
LaserSight.
Section 8.06 Use of Name.
-------------------------
Neither party shall use the name of the other party in connection with
the promotion and sale of any product.
Section 8.07 Choice of Law.
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The laws of the State of Delaware shall govern the construction and
performance of this Agreement.
Section 8.08 Attorney Fees.
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If any party to this Agreement institutes legal proceedings against any
other party with respect to this Agreement or other transaction contemplated
hereby, the losing or defaulting party shall pay to the prevailing party
reasonable attorney fees, costs and expenses incurred in connection with the
prosecution or defense of such action.
Section 8.09 Warranty.
----------------------
LaserSight warrants that it is the exclusive licensee of the `810
Patent in accordance with the terms of the TLC License and has the right to
grant the non-exclusive sublicense contained in this Agreement.
Section 8.10 Reservation of Rights.
-----------------------------------
LaserSight retains all of the rights under the `810 Patent granted
pursuant to the TLC License.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement on
the last day indicated below.
ALCON LABORATORIES, INC.
/s/Xxxxxxx X. Xxxxxx, Xx.
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DATE Xxxxxxx Xxxxxx
Senior Vice President
Chief Financial Officer
LASERSIGHT TECHNOLOGIES, INC.
/s/Xxxxxxx X. Xxxxxx
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DATE Xxxxxxx X. Xxxxxx
President and CEO
