Exhibit 10.11
[CERTAIN INFORMATION HAS BEEN OMITTED FROM THIS EXHIBIT AND FILED SEPARATELY
WITH THE SEC PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER RULE 24b-2.]
EXECUTION COPY
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CNS-CRONKS
EXCLUSIVE LICENSE AGREEMENT
TABLE OF CONTENTS
Page
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WITNESSETH...................................................................-1-
1 - DEFINITIONS..............................................................-1-
2 - GRANT....................................................................-4-
3 - REPRESENTATIONS AND WARRANTIES OF CRONKS.................................-5-
4 - DILIGENCE................................................................-6-
5 - ROYALTIES................................................................-7-
6 - REPORTS AND RECORDS......................................................-9-
7 - PATENT PROSECUTION......................................................-10-
8 - INFRINGEMENT............................................................-11-
9 - INDEMNIFICATION AND INSURANCE...........................................-13-
10 - ASSIGNMENT.............................................................-14-
11 - DISPUTE RESOLUTION.....................................................-14-
12 - TERMINATION............................................................-15-
13 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS.............................-17-
14 - MISCELLANEOUS PROVISIONS...............................................-18-
APPENDIX A.........................................................-20-
APPENDIX B.........................................................-21-
CNS-CRONKS
EXCLUSIVE LICENSE AGREEMENT
This Agreement is made and entered into as of the last date of
signature hereto (the "EFFECTIVE DATE") by and between Peter and Kristen Cronk
(married) located at 919 McElwee Road, Moorestown, NJ 08057 (hereinafter
referred to as "CRONKS"), and CNS, Inc., a corporation duly organized under the
laws of the State of Delaware and having its principal office at 4400 West 78th
Street, Minneapolis, Minnesota 55435 (hereinafter referred to as "LICENSEE").
WITNESSETH
WHEREAS, CRONKS are the owners of certain PATENT RIGHTS (as later
defined herein) and information and KNOW HOW (as later defined herein) relating
to improvements to nasal dilators, and methods of making and using the same, and
have the right to grant licenses to the said KNOW HOW and PATENT RIGHTS;
WHEREAS, LICENSEE desires to obtain an exclusive license under the
PATENT RIGHTS and KNOW HOW upon the terms and conditions hereinafter set forth;
and
WHEREAS, CRONKS desire to have the PATENT RIGHTS and KNOW HOW developed
and commercialized and are willing to grant an exclusive license thereunder to
LICENSEE.
NOW, THEREFORE, inconsideration of the premises and the mutual
covenants contained herein, the parties hereto agree as follows:
1 - DEFINITIONS
For the purposes of this Agreement, the following words and phrases
shall have the following meanings:
1.1 "LICENSEE" shall mean LICENSEE or any ASSIGNEE (as later defined).
1.2 "PATENT RIGHTS" shall mean all the following CRONKS' intellectual
property:
a. the United States patents listed in Appendix A;
b. the United States patent applications listed in Appendix A,
and divisionals, continuations and claims of
continuation-in-part applications which shall be directed to
subject matter specifically described in this Paragraph b. or
Paragraph a. above;
c. any and all patents resulting from reissues or reexaminations
of the United States patents described in Paragraphs a. and b.
above.
d. the foreign patent applications listed in Appendix A, and
divisionals, continuations and claims of
continuation-in-part-applications which shall be directed to
subject matter specifically described in such foreign patent
applications, and the resulting patents;
e. the foreign patent applications filed after the EFFECTIVE DATE
in the countries listed in Appendix B or elsewhere and
divisionals, continuations and claims of continuation-in-part
applications which shall be directed to subject matter
specifically described in such patent applications, and the
resulting patents;
f. any foreign patents, resulting from equivalent foreign
procedures to United States reissues and reexaminations, of
the foreign patents described in d., e. and f. above; and
g. any and all other future United States and foreign patents and
patent applications covering the PRODUCTS which may be
developed, acquired or controlled by CRONKS during the term of
this Agreement and with respect to which CRONKS shall have the
right to grant the license hereinafter provided.
1.3 "PRODUCTS" shall mean any product or part thereof which is covered
in whole or in part by an issued, unexpired claim or a pending claim contained
in any of the PATENT RIGHTS as well as any and all improvements, modifications
or enhancements thereto, whether now existing or in the future developed, and
any other products, methods or compositions similar in function or purpose
developed by CRONKS or any of their agents, employees or affiliates during the
term of this Agreement.
1.4 "KNOW HOW" shall mean any and all tangible and intangible
information, technology, documents and materials in the possession and control
of CRONKS, necessary or desirable in order to enable LICENSEE to utilize fully
the rights granted by CRONKS to LICENSEE hereunder and shall include, without
limiting the foregoing, the ideas, methods, concepts, confidential information,
trade secrets and techniques, as well as all the materials, documents, manuals,
schematics, blueprints, specifications, compositions, patterns, artwork, bills
of materials and technical specifications and other information of CRONKS
relating to the PRODUCTS.
1.5 "CONTRACT QUARTER" shall mean March 31, June 30, September 30 and
December 31 of each calendar year beginning in the year 2000.
1.6 "NET SALES" shall mean the gross sales price for LICENSED PRODUCTS
from any end-user, sublicensee or other person or entity relating to or arising
from the sale of PRODUCTS after deduction of the following:
a. discounts allowed in amounts customary in the trade for
quantity purchases, cash payments and prompt payments;
b. sales, tariff duties and/or use taxes directly imposed and
with reference to particular sales;
c. outbound transportation or other costs directly related to the
outbound transportation of the PRODUCTS; and
d. amounts allowed or credited on account of rejections or
returns.
No deductions, shown above, shall be made from the sales price shall be
allowed unless all such deductions are shown on an invoice. No deductions shall
be made for commissions paid to individuals whether they be with independent
sales agencies or regularly employed by LICENSEE and on its payroll.
1.7 "MINIMUM ROYALTIES" shall be the amounts set forth in and payable
by LICENSEE in accordance with Paragraph 5.1(c).
1.8 "RUNNING ROYALTIES" shall be the amounts payable by LICENSEE as
determined in accordance with the percentages on account of NET SALES of the
PRODUCTS as set forth in Paragraph 5.1(d).
1.9 "ABATEMENT EFFORTS" shall have the meaning ascribed to the term in
Paragraph 8.2.
1.10 "ASSIGNEE" shall have the meaning ascribed to the term in
Paragraph 10.1.
1.11 "CLAIMS" shall have the meaning ascribed to the term in Paragraph
9.2.
2 - GRANT
2.1 CRONKS each hereby grant to LICENSEE the exclusive, world-wide
right and license to exploit and practice under the PATENT RIGHTS (as well as
any invention disclosed or claimed therein) and under the KNOW HOW and the
exclusive, world-wide right and license to make, have made, use, lease, sell,
offer for sale, import and export the PRODUCTS until the expiration of the last
to expire of the PATENT RIGHTS, unless this Agreement shall be sooner terminated
according to the terms hereof.
2.2 LICENSEE shall have the right to enter into sublicensing agreements
with third parties for the rights, privileges and licenses granted hereunder. In
the event of a sublicense, LICENSEE shall enter into a written agreement with
sublicensee (i) with a term no greater than the term of this Agreement, (ii)
with rights granted to sublicensee which are no greater than the terms of this
Agreement, and (iii) pursuant to which Licensee shall impose upon any such
sublicensees substantially the same obligations as CRONKS have imposed upon
LICENSEE under this Agreement.
2.3 Any material breach of a sublicense under this Agreement with
respect to obligations of such sublicensee to CRONKS shall be treated as a
material breach of this Agreement by LICENSEE and all provisions for notice and
remedies to cure such breach and terminate this Agreement shall apply.
2.4 LICENSEE agrees to forward to CRONKS a copy of any and all
sublicense agreements promptly upon execution by the parties.
2.5 LICENSEE shall not receive from sublicensees consideration that is
material in value in lieu of cash payments in exchange for any sublicense under
this Agreement, without the express prior written permission of CRONKS.
2.6 Nothing in this Agreement shall be construed to confer any rights
upon LICENSEE by implication, estoppel or otherwise as to any technology or
patent rights of CRONKS or any other entity other than the PATENT RIGHTS and
KNOW HOW.
3 - REPRESENTATIONS AND WARRANTIES OF CRONKS
Each of the CRONKS, jointly and severally, represent and warrant to
LICENSEE as follows:
3.1 CRONKS are the sole and exclusive owners of all the PATENTS RIGHTS,
KNOW HOW and other rights granted under this Agreement.
3.2 Claims have been allowed and the issue fee has been paid for the
United States patent(s) as listed on Appendix A covering the PRODUCTS.
Additional United States and foreign patent applications that are directed to
the PRODUCTS are currently pending as set forth on Appendix A. To the best of
their knowledge, CRONKS have disclosed to the United States Patent and Trademark
Office all material evidence relating to the validity or enforceability of the
PATENT RIGHTS.
3.3 CRONKS have good and marketable title to the PATENT RIGHTS and KNOW
HOW, free and clear of any and all liens, pledges, claims, licenses,
assignments, conditional sales contracts, agreements or encumbrances of any kind
that would impair the ability of CRONKS to grant the exclusive licenses under
this Agreement.
3.4 To the best of CRONKS' knowledge, the PATENT RIGHTS, PRODUCTS and
KNOW HOW do not infringe on any patent, copyright, trademark, trade secret,
trade dress or any other intellectual property right of any third party.
3.5 To the best of CRONKS' knowledge, none of the undertakings or
activities of CRONKS in connection with the development of the PRODUCTS involve
the wrongful use of the proprietary rights or assets of any third party.
3.6 CRONKS have not received notice of any claims, actions, suits or
proceedings pending or threatened effecting CRONKS, the PATENT RIGHTS or the
KNOW HOW which, if adversely determined, would have a material adverse effect
upon LICENSEE's ability to manufacture and have manufactured, use or sell the
PRODUCTS or otherwise practice the rights and technology licensed to LICENSEE by
CRONKS under this Agreement.
4 - DILIGENCE
4.1 LICENSEE shall use its best efforts to bring one or more of the
PRODUCTS to market through a thorough, vigorous and diligent program for
exploitation of the PATENT RIGHTS and to continue active, diligent marketing
efforts for one or more PRODUCTS throughout the term of this Agreement.
4.2 In addition, LICENSEE shall adhere to the following milestones:
a. LICENSEE shall, within sixty (60) days of executing this
Agreement, provide to CRONKS, correspondence or other
documentation generally describing how LICENSEE intends to
research, develop, market, distribute and sell the PRODUCTS.
b. LICENSEE shall make a first commercial sale of a PRODUCT on or
before March 31, 2000.
4.3 LICENSEE's failure to perform in accordance with Paragraphs 4.1 and
4.2 above shall be grounds for CRONKS to terminate this Agreement pursuant to
Paragraph 12.3 hereof.
5 - ROYALTIES
5.1 For the rights, privileges and licenses granted hereunder, LICENSEE
shall pay royalties to CRONKS in the manner hereinafter provided to the end of
the term of the PATENT RIGHTS or until this Agreement shall be terminated:
a. Up-Front License Fee: of [CONFIDENTIAL TREATMENT REQUESTED]
Dollars ($[CONFIDENTIAL TREATMENT REQUESTED]), which shall be
non-refundable, and deemed earned and due immediately upon the
EFFECTIVE DATE.
b. Liquidated Expense Fee: of [CONFIDENTIAL TREATMENT REQUESTED]
Dollars ($[CONFIDENTIAL TREATMENT REQUESTED]), which shall be
non-refundable, and due immediately upon the EFFECTIVE DATE.
c. Minimum Royalty Fees:
(i) for the calendar year 2000, [CONFIDENTIAL TREATMENT
REQUESTED] Dollars ($[CONFIDENTIAL TREATMENT REQUESTED]),
payable for each CONTRACT QUARTER in four (4) equal
installments of [CONFIDENTIAL TREATMENT REQUESTED] Dollars
($[CONFIDENTIAL TREATMENT REQUESTED]) each;
(ii) for the calendar year 2001, [CONFIDENTIAL TREATMENT
REQUESTED] Dollars ($[CONFIDENTIAL TREATMENT REQUESTED]),
payable for each CONTRACT QUARTER in four (4) equal
installments of [CONFIDENTIAL TREATMENT REQUESTED] Dollars
($[CONFIDENTIAL TREATMENT REQUESTED]) each; and
(iii) for the calendar year 2002, and each year thereafter
while PATENT RIGHTS are in force in any country, [CONFIDENTIAL
TREATMENT REQUESTED] Dollars ($[CONFIDENTIAL TREATMENT
REQUESTED]), payable for each CONTRACT QUARTER in four (4)
equal installments of [CONFIDENTIAL TREATMENT REQUESTED]
Dollars ($[CONFIDENTIAL TREATMENT REQUESTED]) each;
provided, however, that RUNNING ROYALTIES due on NET SALES for
each said CONTRACT QUARTER, if any, shall be creditable
against any of the MINIMUM ROYALTIES due during the calendar
year. RUNNING ROYALTIES paid in excess of MINIMUM ROYALTIES
shall not be creditable against MINIMUM ROYALTIES for future
calendar years.
d. Running Royalties: shall, subject to setoff, adjustment or
credit in accordance with Paragraph 5.1(c) above, be payable
in an amount equal to:
(i) [CONFIDENTIAL TREATMENT REQUESTED] percent ([CONFIDENTIAL
TREATMENT REQUESTED]%) for the first [CONFIDENTIAL TREATMENT
REQUESTED] Dollars in NET SALES; then
(ii) [CONFIDENTIAL TREATMENT REQUESTED] percent ([CONFIDENTIAL
TREATMENT REQUESTED]%) of the next [CONFIDENTIAL TREATMENT
REQUESTED] Dollars in NET SALES; and then
(iii) [CONFIDENTIAL TREATMENT REQUESTED] percent
([CONFIDENTIAL TREATMENT REQUESTED]%) of NET SALES over
[CONFIDENTIAL TREATMENT REQUESTED] Dollars;
for PRODUCTS manufactured, used, leased or sold by LICENSEE
its sublicensees, or by others on their behalf.
e. In addition to RUNNING ROYALTIES, [CONFIDENTIAL TREATMENT
REQUESTED] percent ([CONFIDENTIAL TREATMENT REQUESTED]%) of
other payments, including, but not limited to, sublicense
issue fees, up-front fees, and milestone fees, received by
LICENSEE from sublicensees in consideration for the right to
utilize the licenses granted hereunder and sell the PRODUCTS.
5.2 All payments due hereunder shall be paid in full, without deduction
of taxes or other fees which may be imposed by any government, except as
otherwise provided in Paragraph 1.6(b).
5.3 No multiple royalties shall be payable because any PRODUCT, its
importation, manufacture, use, lease, offer for sale or sale are or shall be
covered by more than one claim, patent application or patent licensed under this
Agreement.
5.4 Royalty payments shall be paid in United States dollars to CRONKS'
address in Paragraph 13, or at such other place CRONKS may reasonably designate
consistent with the laws and regulations controlling in any foreign country. If
any currency conversion shall be required in connection with the payment of
royalties hereunder, such conversion shall be made by using the exchange rate as
published in the Wall Street Journal on the last business day of the CONTRACT
QUARTER to which such royalty payments relate.
5.5 In the event PATENT RIGHTS are invalidated or declared
unenforceable by a court or patent office of competent jurisdiction in any
country where they existed, LICENSEE shall pay a RUNNING ROYALTY of only
[CONFIDENTIAL TREATMENT REQUESTED] percent ([CONFIDENTIAL TREATMENT REQUESTED]%)
of NET SALES for products sold, made or imported into said jurisdiction, for a
period of two (2) years from the date said decision becomes final, or
unappealable, which products would have been, but for the unfavorable decision,
PRODUCTS. Such payments shall be in consideration of CRONKS' KNOW HOW only.
6 - REPORTS AND RECORDS
6.1 LICENSEE shall keep full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to CRONKS hereunder. Said books of account shall be kept at
LICENSEE's principal place of business or the principal place of business of the
appropriate division of LICENSEE to which this Agreement relates. Said books and
the supporting data shall be open at all reasonable times for three (3) years
following the end of the calendar year to which they pertain to the reasonable
inspection of CRONKS or their agents, which shall in no event be more than twice
in a calendar year, for the purpose of verifying LICENSEE's royalty calculations
or compliance in other respects with this Agreement. Should such inspection lead
to the discovery of a greater than five percent (5%) discrepancy in reporting of
RUNNING ROYALTIES to CRONKS' detriment, LICENSEE agrees to pay the reasonable
cost of the inspection which resulted in the discovery of the discrepancy, plus
interest as required under Paragraph 6.4.
6.2 All royalties due CRONKS from LICENSEE under this Agreement shall
be payable on a CONTRACT QUARTERLY basis. Within forty-five (45) days after the
end of each CONTRACT QUARTER during the term of this Agreement, LICENSEE shall
pay CRONKS the royalties due in accordance with Paragraphs 5.1(c) and 5.1(d).
LICENSEE shall simultaneously deliver with the payment of the royalties due to
CRONKS true and accurate reports, giving such particulars to the business
conducted by LICENSEE and its sublicensees under this Agreement as shall be
pertinent to a royalty accounting hereunder. These reports shall include at
least the following:
a. number of PRODUCTS manufactured and/or sold by or for LICENSEE
and all sublicensees;
b. total invoiced dollar amount for PRODUCTS manufactured and/or
sold by or for LICENSEE and all sublicensees;
c. accounting for NET SALES, noting the deductions applicable as
provided in Paragraph 1.6;
d. RUNNING ROYALTIES less any applicable MINIMUM ROYALTIES
previously paid, due under Paragraph 5.1(c);
e. royalties due on other payments from sublicensees under
Paragraph 5.1(e);
f. total royalties due; and
g. names and addresses of all sublicensees, if any, of LICENSEE.
6.3 If no RUNNING ROYALTIES shall be due under this Agreement, LICENSEE
shall so report.
6.4 Royalty and other payments set forth in Article 5 and amounts due
under Article 7 shall, if overdue, bear interest until payment at a per annum
rate two percent (2%) above the prime rate as published in the Wall Street
Journal on the due date. The payment of such interest shall not foreclose CRONKS
from exercising any other rights they may have as a consequence of the lateness
of any payment.
7 - PATENT PROSECUTION
7.1 CRONKS shall apply for, seek prompt issuance of, and maintain the
PATENT RIGHTS through their choice of law firm during the term of this
Agreement. Appendix B is a list of the foreign countries in which patent
applications corresponding to the United States Patent applications listed in
Appendix A shall be filed. Appendix B may be amended by mutual agreement of both
parties. The filing, prosecution and maintenance of all PATENT RIGHTS
applications and patents shall be the primary responsibility of CRONKS and their
law firm; provided, however, LICENSEE and its counsel shall have reasonable
opportunities to advise CRONKS and shall cooperate with CRONKS in such filing,
prosecution and maintenance. LICENSEE shall have the right to terminate any such
patent counsel retained by CRONKS if LICENSEE has a reasonable basis for not
being satisfied with such counsel's efforts, and in such event CRONKS shall
select a new patent counsel (which counsel is subject to the reasonable consent
of LICENSEE).
7.2 Payment of all fees and costs relating to the filing, prosecution
and maintenance of the PATENT RIGHTS shall be the responsibility of LICENSEE.
LICENSEE shall pay such fees and costs to CRONKS choice of law firm within
thirty (30) days of invoicing from said law firm; late payments shall accrue
interest and shall be subject to Paragraph 6.4.
8 - INFRINGEMENT
8.1 LICENSEE shall inform CRONKS, and CRONKS shall inform LICENSEE
promptly in writing of any alleged infringement of the PATENT RIGHTS or other
intellectual property rights with respect to which LICENSEE is granted a license
hereunder by a third party and of any available evidence thereof.
8.2 Upon reasonable request by CRONKS or in LICENSEE's own discretion,
LICENSEE shall, at its sole expense, initiate and thereafter diligently maintain
reasonable efforts to prevent and abate any infringement of the PATENT RIGHTS or
other intellectual property rights with respect to which LICENSEE is granted a
license hereunder, including, without limitation, the initiation of an
appropriate civil action for infringement and the taking of such other action as
may be necessary or appropriate ("ABATEMENT EFFORTS"). In furtherance thereof,
CRONKS hereby agree that LICENSEE may join CRONKS as a party plaintiff in any
suit, without expense to CRONKS. LICENSEE shall indemnify CRONKS against any
order for costs or legal fees that may be made against CRONKS in such
proceedings. In the event that LICENSEE shall undertake the enforcement and/or
defense of the PATENT RIGHTS or other intellectual property rights licensed
hereunder, LICENSEE shall receive the full benefits of any action it takes
pursuant to this Paragraph, including retaining all sums recovered in any suit
or in settlement thereof after paying CRONKS the RUNNING ROYALTIES which shall
be calculated from the amount of NET SALES, if any, asserted by LICENSEE to
support any award of compensatory damages (as opposed to punitive or any other
damages). In connection with the foregoing, the amount of damages awarded and
received by LICENSEE on account of such infringer's sales shall be added to
LICENSEE's NET SALES and paid in the CONTRACT QUARTER in which such sums are
received by LICENSEE or within forty-five (45) days after the expiration of such
CONTRACT QUARTER.
8.3 A refusal by LICENSEE to undertake ABATEMENT EFFORTS within ninety
(90) days of a reasonable request made by CRONKS in accordance with Paragraph
8.2 above, or to consent to allowing CRONKS to undertake such ABATEMENT EFFORTS,
shall constitute a material breach of this Agreement and be grounds for
termination by CRONKS in accordance with Paragraph 12.3 unless LICENSEE provides
CRONKS with a reasonable business justification for its refusal in writing
within said ninety (90) day period, which justification is acceptable to CRONKS.
Any disagreement regarding this Paragraph 8.3 shall be subject to the dispute
resolution provisions of Article 11.
8.4 In the event that a declaratory judgment action or defense alleging
invalidity of any of the PATENT RIGHTS shall be brought against LICENSEE,
CRONKS, at their option, shall have the right but not the obligation, within
thirty (30) days after commencement of such action, to intervene at their sole
expense.
8.5 In any infringement which may be instituted by LICENSEE to enforce
the PATENT RIGHTS or other intellectual property rights licensed pursuant to
this Agreement, CRONKS shall, at the request and expense of LICENSEE, cooperate
in all respects and testify if requested and make available relevant records,
papers, information, samples, specimens, and the like.
9 - INDEMNIFICATION AND INSURANCE
9.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold CRONKS harmless from and against all
claims, costs, proceedings, demands, judgments and liabilities of any kind
whatsoever, including legal expenses and reasonable attorneys' fees, arising out
of the death of or injury to any person or persons or out of any damage to
property, resulting from the production, manufacture, sale, use lease,
consumption or advertisement of the PRODUCTS.
9.2 CRONKS shall, jointly and severally, at all times during the term
of this Agreement and thereafter, indemnify, defend and hold LICENSEE harmless
from and against all claims, costs, proceedings, demands, judgments and
liabilities of any kind whatsoever, including legal expenses and reasonable
attorneys' fees ("CLAIMS"), arising out of the breach by CRONKS of any of their
representations and warranties under Paragraphs 3.1 and 3.3 of this Agreement.
Except for LICENSEE's remedy at equity for specific performance, CRONKS'
liability under this Paragraph 9.2 for CLAIMS arising out of a breach by CRONKS
of all representations and warranties under this Agreement other than those set
forth in Paragraph 3.1 and 3.3 shall be limited to Ten Thousand Dollars
($10,000). Except as otherwise expressly set forth in this Agreement, CRONKS
make no representations and extend no warranties of any kind, either express or
implied.
9.3 LICENSEE shall obtain and carry in full force and effect
commercial, general liability insurance in amounts which shall protect LICENSEE
and CRONKS with respect to events covered by Paragraph 9.1 above. Such insurance
shall be written by a reputable insurance company and shall list CRONKS as an
additional insured thereunder throughout the term of this Agreement.
10 - ASSIGNMENT
10.1 LICENSEE may assign any and all rights granted hereunder to any
third party ("ASSIGNEE") upon providing CRONKS with at least thirty (30) days
prior written notice.
11 - DISPUTE RESOLUTION
11.1 Except for the right of either party to apply to a court of
competent jurisdiction for a temporary restraining order, a preliminary
injunction, or other equitable relief to preserve the status quo or prevent
irreparable harm, any and all claims, disputes or controversies arising under,
out of, or in connection with the Agreement, including any dispute relating to
patent enforcement, validity or infringement, which the parties shall be unable
to resolve within sixty (60) days shall be mediated in good faith. The party
raising such dispute shall promptly advise the other party of such claim,
dispute or controversy in a writing which describes in reasonable detail the
nature of such dispute. By not later than five (5) business days after the
recipient has received such notice of dispute, each party shall have selected
for itself a representative who shall have the authority to bind such party, and
shall additionally have advised the other party in writing of the name and title
of such representative. By not later than ten (10) business days after such
notice of dispute, the party against whom the dispute shall be raised, shall
select a mediation firm either in the area of their principal residence (in the
case of CRONKS) or in the area of its principal place of business (in the case
of LICENSEE) and such representatives shall schedule a date with such firm for a
mediation hearing. The parties shall enter into good faith mediation and shall
pay their own expenses, and shall share the costs and expenses of the mediator
equally.
11.2 If the representatives of the parties have not been able to
resolve the dispute within fifteen (15) business days after such mediation
hearing, then any and all claims or controversies arising under, out of, or in
connection with this Agreement, including any dispute relating to patent
validity or infringement, shall be resolved by final and binding arbitration to
be held in Philadelphia, Pennsylvania, in the event that the dispute is raised
or initiated by LICENSEE against CRONKS, or held in Minneapolis, Minnesota, in
the event that the dispute is raised or initiated by CRONKS against LICENSEE, in
either case using a single neutral arbitrator, acceptable to both parties, but
otherwise employing the rules of the American Arbitration Association, or the
Patent Arbitration Rules if applicable, then prevailing. The arbitrator shall in
all cases and for all purposes apply the law set forth in Paragraph 14.1 and
have no power to add to, subtract from or modify any of the terms or conditions
of this Agreement, nor to award punitive damages. Any award rendered in such
arbitration may be enforced by either party in all state or federal courts
located in Pennsylvania or in Minnesota to whose jurisdiction and venue for such
purposes CRONKS and LICENSEE each hereby irrevocably consent and submit.
11.3 Notwithstanding the foregoing, nothing in this Article shall be
construed to waive any rights or timely performance of any obligations existing
under this Agreement.
12 - TERMINATION
12.1 If LICENSEE shall cease to carry on its business, or enters into
bankruptcy voluntarily or involuntarily, this Agreement shall terminate upon
written notice by CRONKS.
12.2 Should LICENSEE fail to make any payment whatsoever due and
payable to CRONKS hereunder, CRONKS shall have the right to terminate this
Agreement effective on thirty (30) days' written notice, unless LICENSEE shall
make all such payments to CRONKS within said thirty (30) day period. Upon the
expiration of the thirty (30) day period, if LICENSEE shall not have made all
such payments to CRONKS, the rights, privileges and license granted hereunder
shall automatically terminate.
12.3 Upon any material breach or default of this Agreement by LICENSEE
(including, but not limited to, breach or default under Paragraph 4.3), other
than those occurrences set out in Paragraphs 12.1 and 12.2 hereinabove, which
shall always take precedence in that order over any material breach or default
referred to in this Paragraph 12.3, CRONKS shall have the right to terminate
this Agreement and the rights, privileges and license granted hereunder
effective on ninety (90) days' written notice to LICENSEE. Such termination
shall become automatically effective unless LICENSEE shall have cured any such
material breach or default prior to the expiration of the ninety (90) day
period.
12.4 LICENSEE may in its sole discretion terminate this Agreement at
any time, for any reason, by giving CRONKS at least sixty (60) days prior
written notice in which event such license shall terminated upon the effective
date stated in any such notice; provided, however, that LICENSEE shall, except
as otherwise set forth in and contemplated by Paragraph 12.5 below, do all of
the following:
(a) Cease making, using, selling, offering for sale, and importing
all PRODUCTS;
(b) Cancel and terminate all sublicense agreements between
LICENSEE and all of LICENSEE's sublicensees; and
(c) Render all required payments of fees, and earned royalties,
and MINIMUM ROYALTIES to CRONKS.
12.5 Upon termination of this Agreement by LICENSEE in accordance with
Paragraph 12.4, LICENSEE and any sublicensee thereof may, for a period of one
(1) year after the effective date of such termination, sell all PRODUCTS, and
complete the PRODUCTS in the process of manufacture at the time of such
termination or for which a written contract exists for the purchase of material
or for the sale of the PRODUCTS, and sell the same, provided that LICENSEE shall
make the payments to CRONKS as required by Paragraph 5, 7 or 8 of this Agreement
and shall submit the reports required by Paragraph 6 hereof.
12.6 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination; and Paragraphs 1, 6, 9, 10, 11,
12.5, 12.6 and 14 shall survive any such termination.
12.7 Upon termination of this Agreement for any reason, any sublicensee
not then in default shall have the right to seek a license from CRONKS and
CRONKS agree to negotiate such licenses in good faith under reasonable terms and
conditions.
13 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
13.1 Any payments, notices or other communications pursuant to this
Agreement shall be sufficiently made or given on the date of mailing if sent to
such party by first class mail, addressed to it at its address below, or as it
shall otherwise designate by written notice given to the other party:
In the case of CRONKS:
Peter Cronk
[CONFIDENTIAL TREATMENT REQUESTED]
[CONFIDENTIAL TREATMENT REQUESTED]
In the case of LICENSEE:
Daniel E. Cohen, M.D.
Chairman and Chief Executive Officer
CNS, Inc.
4400 West 78th Street
Minneapolis, Minnesota 55435
With a copy to:
Patrick Delaney, Esq.
Lindquist & Vennum P.L.L.P.
4200 IDS Center
80 South Eighth Street
Minneapolis, Minnesota 55402
14 - MISCELLANEOUS PROVISIONS
14.1 All disputes arising out of or related to this Agreement, or the
performance, enforcement, breach or termination hereof, and any remedies
relating thereto, shall be construed, governed, interpreted and applied in
accordance with the internal laws of the State of Minnesota U.S.A., (without
regard to the laws of conflicts), except that questions affecting the
construction and effect of any patent outside the United States shall be
determined by the law of the country in which the patent shall have been
granted.
14.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument signed by the parties.
14.3 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
14.4 LICENSEE agrees to mark the PRODUCTS sold in the United States
with the applicable United States patent numbers. All PRODUCTS shipped to or
sold in other countries shall be marked in such a manner as to conform with the
patent laws and practice of the country of manufacture or sale.
14.5 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
14.6 Neither party shall be responsible for any delay or failure in the
performance of any obligation hereunder due to strikes, lockouts, fires, floods,
acts of God, embargoes, wars, riots, or act or order of any government or
governmental agency; provided, however, that nothing set forth in this Paragraph
14.6 shall be construed to relieve LICENSEE of the requirement that it pay
MINIMUM ROYALTIES hereunder.
IN WITNESS WHEREOF, the parties have duly executed this Agreement the
day and year set forth below.
for: CRONKS for: CNS, Inc.
By: By
Peter Cronk Daniel E. Cohen, M.D.
Chairman and Chief
Executive Officer
Date: Date:
By:
Kristen Cronk
Date:
APPENDIX A
PATENT RIGHTS on the EFFECTIVE DATE
UNITED STATES PATENT RIGHTS U.S. Patent No. 5,706,800, issued January 13,
1998 and entitled "Medical Nasal Dilator"
U.S. Patent Application Serial No. 08/942,797
filed on October 2, 1997, and entitled "Improved
Medicated Nasal Dilator"
U.S. Patent Application Serial No. 09/099,825
filed on June 18, 1998, and entitled,
"Adhesively Applied External Nasal Strips and
Dilators Containing Medications and Fragrances".
FOREIGN PATENT RIGHTS
Non-PCT
South African Patent Application Serial No. 98/0144, filed on January 8, 1998,
and entitled "Medicated Nasal Dilator".
PCT
PCT Application Serial No. US98/01513, filed on January 28, 1998, and entitled
"Medical Nasal Dilator" (designating Europe, China, Canada, Brazil, Australia,
Japan).
APPENDIX B
PCT DESIGNATED FOREIGN COUNTRIES
Foreign countries in which PATENT RIGHTS shall be filed, prosecuted and
maintained in accordance with Article 7:
1. Europe: Italy, Portugal, United Kingdom, Germany, Spain and France;
2. Canada;
3. Brazil;
4. Australia;
5. China; and
6. Japan.