Exhibit 6.21
AGREEMENT
THIS AGREEMENT made and entered into as of the 16TH day of OCTOBER, 2000,
by and between BIOFIELD CORP., having an address at 0000 Xxxx Xxxxx Xxxxx, Xxxx
X, Xxxxxxxxxx, Xxxxxxx 00000 (hereinafter called "Licensor") and CARDIO DYNAMICS
INTERNATIONAL CORPORATION, having an address at 0000 Xxxxx Xxxxx Xxxxx, Xxxxx
000, Xxx Xxxxx, Xxxxxxxxxx. 00000 (hereinafter called "Licensee").
RECITALS
Licensor has made certain inventions, modifications and improvements
relating to an electrode interconnect for a biopotential sensing electrode to
interconnect a plurality of electrodes to a multilead cable, including the
inventions set forth in United States Patent Nos. 5,895,298 and 5,600,177 and
corresponding foreign patent applications, and has developed and refined certain
proprietary technical information relating thereto.
Licensee desires to obtain from Licensor a non-exclusive license to use
the foregoing.
In consideration of the mutual promises and conditions set forth herein,
the parties agree as follows:
ARTICLE 1 - DEFINITIONS
As used in this Agreement, the following terms shall have the following
meanings:
1.1 "Licensed Product" shall mean electrode interconnects within an
multilead cable with electrode connectors, manufactured by or for Licensee or
imported by Licensee, which incorporate in any way, in part and/or in whole, the
Licensed Inventions and/or Technical Information.
1.2 "Licensed Inventions" shall mean the inventions set forth in United
States Patent Nos. 5,895,298 and 5,600,177 and corresponding foreign patent
applications, and any corresponding divisionals, continuations,
continuations-in-part, reissues, renewals and extensions thereof and additions
thereto.
1.3 "Licensor's Tooling" shall mean those molds and tooling belonging to
Licensor which are located at, and are being held for Licensor by, Pacific
Plastics, 0000 Xxxxxxxx Xxxx Xxxxx, Xxxxxx, Xxxxxxxxxx.
1.4 "Technical Information" shall mean advice and data, both oral and
written, as to processes, formulae, designs and operation, including operating
techniques, product specifications, plans, drawings and sketches, know-how,
trade secrets and proprietary data, both patentable and unpatentable,
prototypes, models and other materials or information relating to the multilead
cables (each containing unique interconnects) which mate to electrode
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connectors, which is presently possessed by Licensor and which Licensor is free
to disclose to Licensee, to the extent applicable to and needed by Licensee in
order to enable Licensee to engage in the manufacture, use and/or sale of
Licensed Products.
ARTICLE II - GRANTS
2.1 Licensor hereby grants to Licensee, subject to the provisions of and
during the term of this Agreement, a non-exclusive right, in the United States
and worldwide, to use the Technical Information, as well as the inventions, if
any, set forth in the Licensed Inventions(including any further patents issued
as a result of the pending foreign patent applications included in the Licensed
Inventions) in order to manufacture, have manufactured, use, sell, offer for
sale and import Licensed Products. In order to assist Licensee, Licensor hereby
gives permission for Licensee, during the term of this Agreement, to use
Licensor's Tooling, if Licensee so desires, by contracting with the holder
thereof to manufacture parts for Licensee; provided, however, that Licensor
shall have no responsibility for the quality or sufficiency of any items made
therefrom and makes no warranty of any nature with respect to such items,
including that such items will be fit for any particular purpose; and, provided
further, that if any repairs of, or replacements for, Licensor's Tooling are
made by or on behalf of Licensee, such repairs and replacements shall become
part of Licensor's Tooling.
2.2 The licenses and other rights provided to Licensee under this
Agreement are not transferable or (except as otherwise specifically provided
herein) assignable, except as provided under Article IX of this Agreement.
Licensee has no right to offer sublicenses hereunder to others, except to the
limited extent that (a) such sublicensee manufactures Licensed Products solely
for Licensee, (b) such sublicensee agrees to be bound by the provisions of
Article VII of this Agreement, and (c) Licensee assumes the full responsibility
for any breach by such sublicensee of the provisions of such Article VII.
ARTICLE III - PAYMENTS
3.1 In consideration of the rights granted hereunder, Licensee agrees to
pay Licensor as follows:
a.Four dollars and sixty nine cents ($4.69) for each multilead cable
manufactured by or for Licensee which constitutes a Licensed Product.
x.Xxx and one-half cents ($0.015) for each eight connectors or
separately packaged eight electrodes manufactured by or for Licensee
or imported by Licensee which constitute a Licensed Product or which
mate with the electrode interconnect within a multilead cable which
constitutes a Licensed Product.
3.2 In the event that the aggregate fees paid to Licensor under this
Agreement are less than (a) $1,957 with respect to the 2000 calendar year, (b)
$19,770 with respect to the 2001 calendar year, (c) $46,890 with respect to the
2002 calendar year, or (d) $98,465 with respect to the 2003 calendar year then,
and in any such event, Licensor may give notice to Licensee that Licensor shall
terminate Licensee's rights under this Agreement thirty (30) days after such
notice is given unless Licensee remits to Licensor, within such thirty (30) day
period, an amount equal to such deficiency. Such notice, if given by Licensor,
shall be given with respect to any calendar year prior to March 31 of the next
succeeding calendar year.
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ARTICLE IV - RECORDS, REPORTS AND PAYMENTS
4.1 Licensee agrees to keep full, true and accurate records and books of
account in sufficient detail to permit convenient calculations of the payments
payable hereunder by Licensee. Licensee agrees to permit its books and records
to be examined during normal business hours upon reasonable notice by Licensor,
or on its behalf by an auditor, accountant or other agent appointed or employed
by Licensor, to verify the accuracy of the reports provided for in this Article
IV.
4.2 Licensee agrees to report to Licensor, not later than thirty (30)
calendar days following the last day of March, June, September and December in
each calendar year during the term hereof, providing detailed information as to
the Licensed Products manufactured by Licensee during the preceding calendar
quarter.
4.3 In the event of termination or expiration of this Agreement, Licensee,
within thirty (30) calendar days after the date of such termination or
expiration, shall furnish to Licensor a written statement setting forth detailed
information as to the Licensed Products manufactured by Licensee since the end
date of the most previous report submitted pursuant to Section 4.2 of this
Agreement.
4.4 Each report submitted under Sections 4.2 and 4.3 of this Agreement
shall be accompanied by full payment of the royalty accrued with respect to the
period covered by such report.
4.5 In the event that Licensor conducts an audit or examination of
Licensee's book and records to confirm the reports and royalties paid under this
Agreement, the cost thereof shall be borne by Licensor unless accounting or
payment errors aggregating five percent (5%) or more are found, in which case
the cost of such audit shall be reimbursed to Licensor by Licensee within thirty
(30) days after Licensee is notified of the error and the cost of the audit or
examination.
4.6 All payments required to be paid hereunder, which are not paid when
due, shall accrue interest thereon at the greater of (a) twelve percent (12%)
per annum, or (b) the prime rate (as from time to time in effect) plus four
percent (4%), but in no event greater than the maximum amount permitted by law.
ARTICLE V - TECHNOLOGY TRANSFER
5.1 During the term of this Agreement, Licensor shall make available to
Licensee, so far as reasonably possible and in a prompt manner, all Technical
Information reasonably requested by Licensee from time to time.
5.2 Licensor shall use reasonable care in communicating Technical
Information to Licensee, but in no event shall Licensor incur any liability
whatsoever for the inaccuracy or incompleteness of any Technical Information so
long as Licensor shall have acted in good faith.
ARTICLE VI - COMPENSATION, TERMINATION, BANKRUPTCY
6.1 If Licensee shall fail or refuse to timely submit any scheduled
reports or to timely make any payments due to Licensor hereunder, or refuse to
comply with any other provisions of this Agreement, and if any such failure or
refusal shall continue unremedied for ten (10) business days after notice
thereof is given to Licensee, then Licensor, after the expiration of said ten
(10) business days and for so long as such default shall continue unremedied,
may elect at its option to immediately terminate this Agreement by providing
notice thereof to Licensee.
6.2 Licensee shall have an affirmative obligation to provide notice to
Licensor one hundred thirty (130) days prior to any contemplated or anticipated
filing of any bankruptcy proceeding by or against Licensee, the use by Licensee
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of any bankruptcy laws or proceedings to shield itself from financial
obligations, receivership or trusteeship of Licensee or its property, or
execution by Licensee of an assignment for the benefit of creditors. In response
to such notice, Licensor, in its sole discretion, by notice to Licensee, may
terminate this Agreement. If Licensee fails in its duty to provide notice as
provided in this Section 6.2, this Agreement will be deemed to have been
terminated effective as of the date that such notice was due, unless such
termination is waived by notice of Licensor.
6.3 Unless sooner terminated by Licensor as permitted or provided in this
Agreement, this Agreement shall continue in force until December 31, 2003
("Initial Term"), with the right of Licensee to renew this Agreement for an
additional two (2) year period under the terms hereof; provided, however, that
(a) notice of renewal is delivered to Licensor at least six (6) months prior to
the end of the Initial Term, and (b) the parties in good faith and based upon
the number of Licensed Products previously manufactured under this Agreement,
agree to the minimum royalty due during such additional two (2) year period.
6.4 Termination of this Agreement, however effected, shall not affect any
rights accrued prior thereto or obligations incurred prior thereto and shall not
affect Licensee's obligations under Article VII.
ARTICLE VII - PROTECTION OF DATA AND INFORMATION
7.1 The Technical Information and all other information furnished by or on
behalf of Licensor to Licensee is intended for the sole use of Licensee.
Licensee has taken, and will continue to take reasonable steps to assure that
all such information, whether in written, printed, oral or other form, shall not
be disclosed to third parties or used for their benefit, except insofar as such
information (a) is necessarily disclosed solely by its use in the manufacture or
sale of Licensed Products, (b) is made publicly available by Licensor, (c) is
established to be in the public domain, other than as a consequence of a breach
of Licensee of its obligations to Licensor, or (d) was in the lawful possession
of Licensee prior to its receipt from Licensor.
7.2 Promptly upon the termination of this Agreement for any reason, all
written documentation containing or based upon Technical Information, which is
within the possession or control of Licensee, will be returned to Licensor or
destroyed by Licensee (in which event an appropriate certificate of destruction
is to be promptly delivered to Licensor).
7.3 Licensee acknowledges that the Technical Information has been
developed by Licensor with substantial effort and at substantial cost and,
therefore, has value to Licensor; and that breach of any of the provisions of
this Article VII could cause Licensor irreparable injury for which no adequate
remedy at law exists. Accordingly, Licensor shall have the right, in addition to
any other rights it may have (in law or in equity) and by executing this
Agreement Licensee hereby consents, to the entry in any court having
jurisdiction of a temporary or permanent restraining order or injunction
restraining or enjoining Licensee from any violation of this Article VII.
Licensee further agree to waive, and to use its best efforts to cause its
directors, officers, employees, agents and affiliates to waive, any requirement
for the securing or posting of any bond in connection with such remedy.
ARTICLE VIII - PRODUCT LIABILITY
Licensee agrees that it assumes total product liability, and liability for
patent infringement in the manufacture, sale, offer for sale, import and use of
all Licensed Products covered by this Agreement. Licensee agrees to indemnify
and save harmless Licensor from every claim, demand, expense and cost, including
attorneys' fees which may arise by reason of the manufacture, sale, offer for
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sale, import or use of said Licensed Products under this Agreement and any
injury or damage of any kind or nature to any person or property claimed to have
been caused by or resulting from or arising out of a defect in design,
workmanship or material of said Licensed Products covered by this Agreement.
ARTICLE IX - ASSIGNMENT
This Agreement may be assigned by Licensee, after notice of such
assignment is given to Licensor, as part of a sale of the entire business of
Licensee to which this Agreement relates, subject to the conditions that such
assignee shall have, by a writing delivered to Licensor, (a) expressly assumed
all of the obligations and liabilities of Licensee under this Agreement,
including all such obligations and liabilities which arose before the date of
such writing, and (b) agreed to be bound by all of the terms and conditions of
this Agreement. .
ARTICLE X - PATENT MARKINGS
Licensee agrees to xxxx each Licensed Product in a manner to be reasonably
designated by Licensor with the number of any U.S. patent licensed hereunder
which covers such Licensed Product, effective no later than 180 days from the
execution of this agreement.
ARTICLE XI - MISCELLANEOUS
11.1 Neither party shall be obligated to disclose any proprietary
information of a third party without the consent of such third party, nor any
information the furnishing of which would require the payment of consideration
to a third party other than an employee of the party furnishing such
information.
11.2 Licensor makes no warranty or representation, express or implied,
that the manufacture, use or sale of Licensed Products in accordance with the
licenses granted herein is free from infringement of patents of third parties,
although Licensor has no present knowledge of any such infringement.
11.3 If any clause or part of this Agreement should be found to be
invalid for any reason, such shall not affect the effectiveness of the other
clauses or parts hereof.
11.4 Performance of the terms and conditions of this Agreement by either
party is excused whenever such performance is prevented by riot, fire, war,
insurrection, the elements, acts of God or the public enemy, compliance with any
laws, regulation or other governmental order or other causes beyond the control
of the parties; provided, however, that the failure to timely make any payments
required hereunder shall not be excused for any reason.
11.5 Any notice required hereunder shall be in writing, shall be sent to
the address of the party as set forth in this Agreement and shall be deemed to
been properly given upon the earlier of (a) actual receipt, (b) two (2) business
days after being deposited with a bona fide reputable delivery service for
delivery on the next business day, and (c) five (5) business days after sent by
properly addressed certified U.S. mail. Either party may change its address for
notices, but such change shall not be effective until actual receipt.
11.6 The law of the State of California shall govern this Agreement as to
all matters, including, specifically but not exclusively, matters of
interpretation, performance and remedies, insofar as such law is existent or
applicable and can or will be applied in the jurisdiction in which either party
may seek an adjudication of any such matter.
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11.7 This Agreement constitutes the entire understanding between the
parties and conclusively supersedes all prior writings and negotiations between
them. This Agreement shall not be modified unless modification is in writing and
signed by both parties.
11.8 In the event of any controversy or dispute arising out of, or in
connection with, this Agreement, including its interpretation, performance or
termination, the parties first shall endeavor in good faith to work out their
differences. If the parties, despite their good faith, are unable to resolve
their differences within thirty (30) days after written notice by one party to
the other of such controversy or dispute, then such controversy or dispute, at
the request of either party, shall be settled by arbitration in accordance with
the then prevailing rules of the American Arbitration Association (the "AAA"),
as modified by this paragraph; provided, however, that the provisions of this
paragraph shall not prevent either party from applying to a court of appropriate
jurisdiction for a temporary or permanent restraining order if the subject
matter of such controversy or dispute is of the nature which permits immediate
equitable relief. Arbitration shall take place in California before a single
arbitrator, who shall apply California law and who shall be directed to render a
final determination within one (1) year from the date that the AAA is first
notified that the parties desire to arbitrate. The determination of the
arbitrator, if in accordance with the rules of the AAA, shall be binding on the
parties and shall be enforceable in any court of competent jurisdiction. It is
the intention of the parties that the prevailing party, in any ARBITRATION OR
LITIGATION proceedings CONTEMPLATED BY THIS SECTION 11.8, shall have all of its
costs, including legal expenses, incurred in the proceedings paid for by the
non-prevailing party."
IN WITNESS WHEREOF, the parties hereto have executed this Agreement.
CARDIO DYNAMICS INTERNATIONAL CORPORATION BIOFIELD CORP.
By: /s/ X. XXXX 10/16/00 By: /s/ XXXX X. XXXXXXXX 10/16/00
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CHIEF TECHNOLOGY OFFICER CHIEF OPERATING OFFICER
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(Title) (Title)
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