EXHIBIT 10.67
AGREEMENT I
BETWEEN
BIOJECT, INC.
AND
ANGIOSENSE, INC.
DATED SEPTEMBER 21, 1999
*** Confidential portions have been omitted pursuant to an application for
confidential treatment under Rule 24b-2 under the Securities Exchange Act
of 1934, as amended. Omitted portions have been separately filed with the
Securities and Exchange Commission.
TABLE OF CONTENTS
Page
ARTICLE 1 DEFINITIONS.................................................................................................1
1.1 "Affiliate".........................................................................................1
1.2 "B2000 Product".....................................................................................1
1.3 "Change of Control".................................................................................2
1.4 "Combination Product"...............................................................................2
1.5 "Control"...........................................................................................2
1.6 "Extended Field"....................................................................................2
1.7 "Facility"..........................................................................................2
1.8 "Field".............................................................................................2
1.9 "Improvements"......................................................................................2
1.10 "Licensed Patents"..................................................................................2
1.11 "Licensed Technology"...............................................................................2
1.12 "Net Sales".........................................................................................3
1.13 "Product"...........................................................................................3
1.14 "Specifications"....................................................................................3
1.15 "Sublicensee".......................................................................................3
1.16 "Technical Information".............................................................................3
1.17 "Valid Claim"......................................................................................3
1.18 "Vitajet Product"...................................................................................3
ARTICLE 2 GRANT OF RIGHTS.............................................................................................4
2.1 License Grant.......................................................................................4
2.2 Right of First Refusal in the Extended Field........................................................4
2.3 Disclosure of Licensed Technologies.................................................................4
2.4 Diligence...........................................................................................4
2.5 Prohibition on Reverse Engineering..................................................................4
ARTICLE 3 EQUIPMENT...................................................................................................4
3.1 Use of Equipment....................................................................................4
3.2 Repair and Maintenance..............................................................................5
3.3 Insurance...........................................................................................5
3.4 Replacement.........................................................................................5
3.5 Ownership...........................................................................................5
3.6 Location............................................................................................5
3.7 Documents...........................................................................................6
3.8 Right of First Refusal..............................................................................6
ARTICLE 4 EQUITY 6
4.1 Equity..............................................................................................6
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TABLE OF CONTENTS
(continued)
ARTICLE 5 SUPPLY OF PRODUCT...........................................................................................6
5.1 Terms and Conditions................................................................................6
5.2 Product Supply......................................................................................6
5.3 Forecasts...........................................................................................6
5.4 Orders..............................................................................................7
5.5 Delivery............................................................................................7
5.6 Invoicing...........................................................................................8
5.7 Shipping............................................................................................8
5.8 Product Acceptance..................................................................................8
5.9 Return of Product...................................................................................8
ARTICLE 6 TRANSFER PRICE; ROYALTIES; PAYMENTS; BOOKS AND RECORDS.....................................................8
6.1 Transfer Price......................................................................................8
6.2 Inventory...........................................................................................8
6.3 Royalties...........................................................................................9
6.4 Sublicense Fees.....................................................................................9
6.5 Payments............................................................................................9
6.6 Third Party Royalties..............................................................................10
6.7 Records; Inspection................................................................................10
ARTICLE 7 COMMERCIALIZATION..........................................................................................10
7.1 Technical Literature...............................................................................10
7.2 Product Packaging and Labeling.....................................................................11
ARTICLE 8 PRODUCT WARRANTY...........................................................................................11
8.1 Product Warranty...................................................................................11
ARTICLE 9 INTELLECTUAL PROPERTY......................................................................................11
9.2 Patent Prosecution.................................................................................12
9.3 Defense of Third Party Infringement Claims.........................................................13
9.4 Enforcement........................................................................................13
ARTICLE 10 REPRESENTATIONS AND WARRANTIES............................................................................14
10.1 Bioject Warranties.................................................................................14
10.2 AngioSense Warranties..............................................................................14
ARTICLE 11 CONFIDENTIALITY...........................................................................................14
11.1 Confidential Information...........................................................................14
11.2 Permitted Disclosures..............................................................................14
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TABLE OF CONTENTS
(continued)
ARTICLE 12 INDEMNIFICATION...........................................................................................15
12.1 Indemnification of Bioject.........................................................................15
12.2 Indemnification of AngioSense......................................................................15
12.3 Procedure..........................................................................................15
ARTICLE 13 TERM AND TERMINATION......................................................................................16
13.1 Term...............................................................................................16
13.2 Termination for Cause..............................................................................16
13.3 Bankruptcy Proceedings.............................................................................16
13.4 Effect of Expiration and Termination...............................................................16
13.5 Survival...........................................................................................17
ARTICLE 14 LIMITATION OF LIABILITY...................................................................................17
ARTICLE 15 MISCELLANEOUS.............................................................................................17
15.1 Governing Law......................................................................................17
15.2 Disputes...........................................................................................17
15.3 Force Majeure......................................................................................18
15.4 No Implied Waivers; Rights Cumulative..............................................................18
15.5 Independent Contractors............................................................................18
15.6 Notices............................................................................................18
15.8 Visiting Personnel.................................................................................19
15.9 Modification.......................................................................................19
15.10 Severability.......................................................................................19
15.11 Publicity..........................................................................................19
15.12 Headings...........................................................................................20
15.13 No Implied Licenses................................................................................20
15.14 Entire Agreement...................................................................................20
15.15 Counterparts.......................................................................................20
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AGREEMENT I
THIS EXCLUSIVE LICENSE AGREEMENT ("Agreement") is made and entered into
this 21st day of September , 1999 (the "Effective Date"), by and between
ANGIOSENSE, INC., a Delaware corporation ("AngioSense"), and BIOJECT, INC., an
Oregon corporation ("Bioject").
BACKGROUND
A. Bioject has developed several technologies and products related to
needle-free drug injection systems; and
B. AngioSense has developed certain intellectual property relating to the
surgical and percutaneous delivery of drugs; and
C. AngioSense desires to obtain an exclusive license under all patents and
patent applications relating to such technologies from Bioject, together with
all associated know-how, to use and sell products and combination products in
accordance with the terms and conditions contained herein and, under certain
conditions as specified herein to make and have made products; and
D. Bioject is willing to grant such an exclusive license to AngioSense in
accordance with the terms and conditions contained herein;
NOW, THEREFORE, for and in consideration of the covenants, conditions, and
undertakings hereinafter set forth, it is agreed by and between the parties as
follows:
ARTICLE 1
DEFINITIONS
1.1 "Affiliate" shall mean any entity which controls, is controlled by or
is under common control with AngioSense or Bioject. An entity shall be regarded
as in control of another entity for purposes of this Section 1.1 if it owns or
controls more than fifty percent (50%) of the shares of the subject entity
entitled to vote in the election of directors (or, in the case of an entity that
is not a corporation, for the election of the corresponding managing authority).
1.2 "B2000 Product" shall mean the Bioject CO2 powered, needle-free
injection device utilizing the Licensed Technology
1.3 "Change of Control" shall mean, with respect to any entity, (1) any
transaction or series of related transactions, other than a registered public
offering unrelated to any acquisition, as a result of which the persons owning
the outstanding voting securities of Bioject, Inc., immediately prior to such
transaction or series of related transactions, cease to own a majority of the
outstanding voting securities of the entity thereafter; (2) the consolidation or
merger of the entity with or into another person or entity, whether or not the
entity is the surviving entity of such transaction, unless immediately after
such consolidation or merger, the persons owning the outstanding voting
securities the entity prior to the transaction own a majority of the outstanding
voting securities of such new or surviving entity; or (3) the sale, assignment
or other transfer of all or substantially all of the business or assets of the
entity to a third party in a single transaction or series of related
transactions.
1.4 "Combination Product" shall mean any product that is developed and sold
by AngioSense and is comprised in part of one or more Products and of one or
more other products or services or parts which could be sold separately.
1.5 "Control" shall mean with respect to a particular intellectual property
right or other subject matter, possession of the ability to grant a license or
sublicense under such rights as provided for herein without violating the terms
of any agreement or other arrangements with any third party.
1.6 "Extended Field" shall mean the use of the cardiovascular system as a
delivery pathway for the treatment or diagnosis of a non-cardiovascular system
or environment, excluding injection through or within the skin.
1.7 "Facility" shall mean Bioject's facility located at 7620 S.W.
Bridgeport Road, Portland Oregon 97224.
1.8 "Field" shall mean all cardiovascular procedures to treat or diagnose
cardiac or cardiovascular diseases, including, without limitation percutaneous
and surgical procedures.
1.9 "Improvements" shall mean those rights and other subject matter, made,
conceived or reduced to practice by Bioject, alone or jointly with AngioSense or
a third party subcontractor comprised of improvements to the Licensed
Technology.
1.10 "Licensed Patents" means (a) the patents and patent applications
listed on Exhibit A attached hereto, (b) any and all related foreign patents and
patent applications, whether now existing or hereafter filed, (c) any
provisionals, substitutions, divisionals, reissues, renewals, continuations,
continuations-in-part, substitute applications and inventors' certificates
arising from, or based upon, any of the foregoing patents or patent
applications, and (d) any patents issuing from any of the foregoing patent
applications.
1.11 "Licensed Technology" means the Licensed Patents and Technical
Information.
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1.12 "Net Sales" shall mean the total amount charged to third parties by
AngioSense, its Affiliates or Sublicensees, upon the sales of Products, less the
following reasonable and customary deductions to the extent applicable to such
allowed to the buyer against such charged amounts: (i) trade, quantity and cash
discounts; (ii) rebates and chargebacks to the buyer; (iii) reasonable amounts
for actual uncollectible accounts determined in accordance with generally
acceptable accounting practices (GAAP) consistently applied to all products of
the selling party; (iv) sales and value-added taxes imposed upon the in-country
sale of a Product; (v) transportation charges, including shipping insurance, and
(vi) uncollectible amounts. For the removal of doubt, Net Sales shall not
include sales by AngioSense to its Affiliates or Sublicensees for resale,
provided that if AngioSense sells a Product to an Affiliate or Sublicensee for
resale, Net Sales shall include the amounts charged by such Affiliate or
Sublicensee to third parties on the resale of such Product. With respect to any
Combination Product, Net Sales shall be determined by multiplying the amounts
received by AngioSense attributable to Combination Products by a fraction, the
numerator of which is the fair market value of the Product included in the
Combination Product, and the denominator of which is the sum of the fair market
value of such Product and the fair market value of the products or parts which
are not Product. Whenever possible, the fair market value of the Product
included in the Combination Product will be the market price at which such
Product is sold on a stand-alone basis; provided that fair market value shall be
determined reasonably and in good faith by AngioSense and Bioject in the event
that no market price is available.
1.13 "Product" means any product, including the B2000 Product and Vitajet
Product, and the syringes related to such products, sold by AngioSense, its
Affiliates or Sublicensees, which is covered by a Valid Claim of the Licensed
Patent in the country of sale of such product.
1.14 "Specifications" shall mean the design, manufacturing, quality,
sterilization, labeling, packaging and supply requirements for a Product to be
defined and agreed upon by the parties in writing.
1.15 "Sublicensee" shall mean, with respect to a particular Product, a
third party who has obtained through AngioSense, a sublicense to the rights
granted to AngioSense hereunder.
1.16 "Technical Information" means all know-how, data, trade secrets,
processes, procedures, devices, methods, formulas, materials, compositions of
matter, protocols, information or other subject matter within the knowledge and
possession of Bioject, which is useful to or contributes in whole or in part to
the practice of the Licensed Patents in the Field.
1.17 "Valid Claim" shall mean a claim of an issued and unexpired patent,
which claim has not lapsed, been canceled, or become abandoned and which claim
has not been declared invalid by a court of competent jurisdiction, and which
has not been admitted to be invalid or unenforceable through reissue or
disclaimer.
1.18 "Vitajet Product" shall mean the Bioject spring-powered, needle-free
injection device utilizing the Licensed Technology.
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ARTICLE 2
GRANT OF RIGHTS
2.1 License Grant. Bioject hereby grants to AngioSense, an exclusive,
royalty-bearing, worldwide license, with the right to grant sublicenses, under
the Licensed Technology and Bioject's interest in Improvements to develop, make
and have made, as set forth in Section 5.5.2, use, distribute, sell and import
Products in the Field.
2.2 Right of First Refusal in the Extended Field. Bioject hereby grants to
AngioSense a right of first refusal to obtain an exclusive license, with the
right to grant sublicenses, under the Licensed Technology and Bioject's interest
in Improvements to develop, make or have made subject to Section 5.5.2, use,
distribute, sell and import products in the Extended Field. Upon receipt of
Bioject's notice of intent to negotiate a license for the Licensed Technology in
the Extended Field, the parties shall negotiate in good faith the terms of such
license within sixty (60) days. In the event the parties are unable to agree on
such terms, Bioject shall be free to enter into an agreement with a third party
on the same terms as offered to AngioSense.
2.3 Disclosure of Licensed Technologies. Upon the request of AngioSense,
Bioject shall provided AngioSense with access to Technical Information as
reasonably necessary for AngioSense to exploit the licenses granted in the
Agreement.
2.4 Diligence. AngioSense shall use all commercially reasonable efforts to
commercialize the Product as soon as reasonably possible. Within ninety (90)
days after the Effective Date, AngioSense shall submit to Bioject a plan
describing AngioSense's efforts to achieve commercialization of the Product.
Such schedule shall be updated and revised as reasonably acceptable to both
parties each six (6) months thereafter . In the event the parties are unable to
agree on such plan, or progress under such plan, the provisions of Section
15.2.1 shall apply.
2.5 Prohibition on Reverse Engineering. AngioSense shall not reverse
engineer the Products.
ARTICLE 3
EQUIPMENT
3.1 Use of Equipment. AngioSense shall acquire, at its own expense, and
install or have installed at the Bioject's Facility, the equipment to be listed
in Exhibit B, attached hereto, created and amended as needed throughout the term
of this Agreement ("Equipment"). Additions or changes to Exhibit B shall be
approved in writing by both parties. Bioject may utilize the Equipment for any
use other than for the manufacture of Product for AngioSense with the prior
written consent of AngioSense on terms to be negotiated in good faith by the
parties. Equipment shall also include but shall not be limited to (1) all future
purchased manufacturing equipment (e.g., tools, molds, etc.) and
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(2) all product components supplied by AngioSense to Bioject. The Equipment
shall, at all times, remain the sole and exclusive property of AngioSense.
3.2 Repair and Maintenance. Bioject, at its expense, shall make all
necessary site preparations and cause the Equipment to be operated in accordance
with any applicable operating manuals and manufacturer's instructions. Bioject
shall effect and bear the expense of all necessary repair, maintenance,
operation and replacements required to be made to maintain the Equipment in good
condition, reasonable wear and tear excepted, and to comply with all applicable
laws to which the use and operation of the Equipment may be or become subject.
All replacement Equipment and parts furnished in connection with such
maintenance or repair shall immediately become the property of AngioSense and
part of the Equipment for all purposes hereof. All such maintenance, repair and
replacement services shall be immediately paid for and discharged by Bioject
with the result that no lien under any applicable laws will attach to the
Equipment as a result of the performance of such services or the provision of
any such material.
3.3 Insurance. Bioject shall obtain and maintain for the term of this
Agreement, at its own expense, (a) "all risk" insurance against loss or damage
to the Equipment, (b) commercial general liability insurance (including
contractual liability, products liability and completed operations coverage)
reasonably satisfactory to AngioSense, and (c) such other insurance against such
other risks of loss and with such terms, as shall in each case be reasonably
satisfactory to or reasonably required by AngioSense (as to carriers, amounts
and otherwise). The amount of the "all risk" insurance shall be equal to the
replacement value of all Equipment and must otherwise be reasonably satisfactory
to AngioSense as of each anniversary date of this Agreement.
3.4 Replacement. If any items of Equipment shall become lost, stolen,
destroyed, or damaged beyond repair for any reason, or in the event of
condemnation, confiscation, seizure or requisition of title to or use of such
items (collectively, an "Event of Loss"), Bioject shall promptly pay to
AngioSense the fair market value of the Equipment subject to the Event of Loss
as determined by an objective third party evaluator agreeable to both parties.
Upon payment of such amount by Bioject, AngioSense will transfer to Bioject, "AS
IS, WHERE IS, WITHOUT RECOURSE, REPRESENTATION OR WARRANTY," all of AngioSense's
right, title and interest, if any, in such items of Equipment.
3.5 Ownership. AngioSense and Bioject confirm their intent that title to
the Equipment shall remain in AngioSense (or its successors and assigns)
exclusively. If requested by AngioSense, Bioject will affix plates or markings
on the Equipment and on any operating manuals and manufacturer's instructions
indicating the interests of AngioSense and its assigns therein, and Bioject will
not allow any other indicia of ownership or other interest in the Equipment to
be placed on the Equipment. Bioject shall not sell, assign, grant a security
interest in, sublet, pledge, hypothecate or otherwise encumber or suffer a lien
upon or against the Equipment.
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3.6 Location. Bioject may move such Equipment from the Bioject's Facility
only if Bioject gives at least thirty (30) days prior written notice of the
relocation or provides such other documentation as AngioSense reasonably
requests to protect its interest in the Equipment.
3.7 Documents. Bioject shall keep copies of all operating manuals and
manufacturer's instructions with respect to the Equipment in good condition at
the Facility.
3.8 Right of First Refusal. In the event AngioSense should decide to sell
or otherwise dispose of any or all of the Equipment, Bioject shall have the
right of first refusal to purchase such Equipment at AngioSense's good faith
determination of the Equipment's fair market value. If Bioject elects not to
purchase the Equipment under this Section 3.8, Bioject shall, at AngioSense's
expense, return the Equipment to AngioSense in the same condition as delivered,
normal wear and tear expected, at such location as AngioSense shall designate.
ARTICLE 4
EQUITY
4.1 Equity. AngioSense shall issue to Bioject 277,222 shares of AngioSense
Common Stock upon completion of the milestones set forth on the Milestone and
Stock Payment Schedule set forth on Exhibit C and upon execution of the Stock
Purchase Agreement attached as Exhibit D.
ARTICLE 5
SUPPLY OF PRODUCT
5.1 Terms and Conditions. All supply of Product by Bioject and all
purchases of Product by AngioSense hereunder shall be subject to the terms and
conditions of this Article 5.
5.2 Product Supply. Subject to the terms and conditions of this Article 5
and, except as set forth in Section 5.5.2, Bioject shall supply AngioSense with
AngioSense's commercial requirements for Product in accordance with applicable
Good Manufacturing Practices (GMP) as established by the FDA. Except as set
forth in Section 5.5.2, AngioSense shall purchase all of its commercial
requirements for Product from Bioject. AngioSense will notify Bioject promptly
upon receipt of FDA approval to market the Product for any drug or non-drug for
any indication in the Field. At such time, Bioject and AngioSense will negotiate
in good faith, reasonable quarterly minimum purchase requirements by AngioSense.
In the event the parties are unable to agree, the provisions of Section 15.2.1
shall apply.
5.3 Forecasts. During the term of this Agreement, at least thirty (30) days
prior to the start of any calendar month, AngioSense shall provide Bioject with
a rolling written forecast of the quantities of Product (on a Product-by-Product
basis) estimated to be required on a month-by-month basis for twelve (12)
consecutive months ("M1" to "M12", respectively). Each forecast prior to the
launch of a particular Product shall also identify an anticipated launch date
for such Product. Except
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as set forth in Section 5.4 below, AngioSense will provide such forecasts as a
means of production planning only and shall not constitute a binding obligation
upon Bioject or AngioSense.
5.4 Orders.
5.4.1 Orders. Together with each forecast provided under Section 5.3
above, AngioSense shall place its firm order with Bioject for delivery of
Product for the following three (3) month period.
5.4.2 Form of Order. AngioSense's orders shall be made pursuant to a
written purchase order which is in a form mutually acceptable to the parties,
and shall provide for shipment in accordance with reasonable delivery schedules
as may be agreed upon from time to time by Bioject and AngioSense.
5.5 Delivery. Bioject shall ship forecasted quantities of Product in
accordance with orders submitted and accepted in accordance with Section 5.4
above.
5.5.1 Allocation. In the event that Bioject is unable to supply
both worldwide requirements of Product (on a Product-by-Product basis) and
quantities ordered by AngioSense under Section 5.4 above due to force majeure or
otherwise, Bioject shall allocate the quantities of Product that Bioject has in
inventory, and that Bioject is able to produce, so that AngioSense receives at
least its proportional share of available supplies as determined based on
reasonable forecasts (taking into consideration past usage and usage performance
against forecast) of AngioSense, Bioject and Bioject's other distributors.
5.5.2 Right to Manufacture. If for three (3) consecutive months
Bioject fails to adequately supply AngioSense's requirements of a particular
Product, and provided that such failure will or does result in a substantial
interruption of supply of one or more Products to the commercial market and is
not due to action or inaction of AngioSense, then AngioSense may manufacture (or
have manufactured) pursuant to this Section 5.5.2 such Product. A failure to
"adequately supply AngioSense's requirements" shall mean a failure to supply
AngioSense ninety percent (90%) of the quantities of a Product subject to a firm
order in accordance with this Agreement, in any three (3) consecutive months.
5.5.2.1 License to Manufacture. Subject to all other terms
and conditions of this Agreement, Bioject hereby grants to AngioSense, and
AngioSense hereby accepts a license (the "Bioject License") under the Licensed
Technology, with right of sublicense, to make and have made the Product (which
Bioject has failed to adequately supply as set forth above) for incorporation in
Products hereunder.
5.5.2.2 Exercise of the Bioject License. AngioSense agrees
not to exercise any of its rights under the Bioject License except to the extent
expressly permitted in this Section 5.5.2 above. In such event, Bioject shall
provide to AngioSense copies of all documentation
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within Bioject's control that are reasonably necessary for AngioSense to
manufacture (or have manufactured) Product, and shall reasonably cooperate with
AngioSense to establish alternative supply, including sources of materials.
AngioSense may exercise its right to have Product manufactured in accordance
with this Section 5.5.2 through a third party contract manufacturer.
5.5.2.3 Return of Equipment. Immediately upon AngioSense's
exercise of the Bioject License pursuant to Section 5.5.2.2, Bioject shall
immediately allow AngioSense, at AngioSense's expense, to pack and ship all
Equipment to a designation specified by AngioSense. In such event, the transfer
price of Product shall be reduced to zero.
5.6 Invoicing. Bioject shall submit an invoice to AngioSense upon shipment
of Product ordered by AngioSense. All invoices shall be sent to AngioSense's
address for notices hereunder, and each such invoice shall state AngioSense's
aggregate and Transfer Price (as defined in Section 6.1 below) for Product in a
given shipment, plus any insurance, taxes or other costs incident to the
purchase or shipment initially paid by Bioject but to be borne by AngioSense
hereunder.
5.7 Shipping. All Product delivered pursuant to the terms of this Agreement
shall be suitably packed for shipment by Bioject, marked for shipment to the
destination point indicated in AngioSense's purchase order. All Product will be
delivered FCA (Incoterms 1990) the United States shipping point designated by
Bioject. The carrier shall be selected AngioSense. All shipping and insurance
costs, as well as any special packaging expenses, shall be paid by AngioSense.
5.8 Product Acceptance. All shipments and all shipping and other charges
shall be deemed correct unless Bioject receives from AngioSense, no later than
thirty (30) days after after the shipment date, written notice specifying the
shipment, the purchase order number, and the nature of the discrepancy between
the order and the shipment or the exact nature of the discrepancy in the
shipping or other charges, as applicable. Each shipment of Product hereunder
shall be accompanied by certified quality control protocol such and other
information as may be reasonably requested by AngioSense from time to time for
each lot of Product therein as well as such customs and other documentation as
is necessary or appropriate.
5.9 Return of Product. All returns of Product shall be in accordance with a
mutually agreeable product return protocol.
ARTICLE 6
TRANSFER PRICE; ROYALTIES; PAYMENTS; BOOKS AND RECORDS
6.1 Transfer Price. Subject to the provisions of Section 5.5.2.3, the
transfer price of such a Product supplied to AngioSense hereunder shall be as
set forth in Exhibit E (the "Transfer Price"). Notwithstanding the foregoing,
the Transfer Price shall be subject to an annual increase not to exceed the
greater of *** percent (***%) or the increase in the *** for the immediately
preceding year. Bioject will give AngioSense thirty (30) days' prior written
notice
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of such increase. With respect to amount due to Bioject for Products supplied to
AngioSense hereunder, AngioSense shall pay Bioject within thirty (30) days of
invoice or date of shipment of such Product, whichever is later.
6.2 Inventory. AngioSense shall maintain a quantity of each Product at all
times during the term of this Agreement I as AngioSense deems appropriate, in
its sole discretion, necessary in order to meet the demand and service level
requirements of AngioSense's customers and potential customers.
6.3 Royalties. AngioSense agrees to pay Bioject as follows during the term
of this Agreement:
(a) a royalty equal to *** percent (***%) of *** on Vitajet Products
sold, leased, distributed or transferred in exchange for payment by AngioSense,
its Affiliates or Sublicensees covered by a Valid Claim of a Licensed Patent, or
any patent which claims Joint Inventions, in the country in which such Vitajet
Products are sold;
(b) a royalty equal to *** percent (***%) of *** on B2000 Products
sold, leased, distributed or transferred in exchange for payment by AngioSense,
its Affiliates or Sublicensees covered by a Valid Claim of Licensed Patent, or
any patent which claims Joint Inventions, in the country in which such B2000
Products are sold.
Payments shall be made under only one of (a) or (b) above, as applicable,
and on no more than one sale transaction for each Product. No multiple royalties
shall be payable regardless of the fact that the manufacture, use or sale of a
Product may be covered by more than one Valid Claim licensed hereunder. For the
removal of doubt, the royalties payable under this Section 6.3 shall continue to
apply after the manufacturing license in Section 5.5.2 becomes effective. Such
royalties shall not in any way apply to syringes sold with or to be used with
the B2000 Product and/or the Vitajet Product.
6.4 Sublicense Fees. AngioSense shall pay to Bioject *** percent (***%) of
revenue received from sublicensees for upfront license fees and milestone fees,
excluding revenue received for *** and for ***.
6.5 Payments. With respect to royalties due on sales of Product hereunder,
AngioSense shall provide to Bioject a quarterly royalty report as follows: After
the first sale of a Product hereunder, within forty-five (45) days after the end
of each calendar quarter, AngioSense shall deliver to Bioject a true and
accurate report, giving such particulars of the business conducted by
AngioSense, its Affiliates and Sublicensees, if any, during such calendar
quarter as are pertinent to account for royalties due under Sections 6.3 and 6.4
above, except upon AngioSense's exercise of the rights granted under Section
5.5.2, in which case AngioSense will make such reports and payments to Bioject
within forty-five (45) days after the end of the AngioSense's fiscal year. Such
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report shall include at least (i) the total of Net Sales of Product during such
quarter; (ii) the calculation of royalties; and (iii) the total royalties so
calculated and due Bioject. Simultaneously with the delivery of each such
report, AngioSense shall pay to Bioject the total royalties, if any, due to
Bioject for the period of such report. AngioSense shall make all payments to
Bioject under this Agreement by wire transfer in United States dollars in
immediately available funds to a bank designated by Bioject.
6.6 Third Party Royalties. If AngioSense licenses or otherwise acquires
rights from a third party necessary to use the Bioject Technology in connection
with the sale or use of any Product within the Field in the Territory, then
AngioSense shall have the right to deduct the amounts actually paid by
AngioSense to the third party against royalties payable under Section 6.3 above,
unless such technology is protected by a patent owned by AngioSense or its
Affiliates. Notwithstanding the foregoing, in no event shall the royalties due
Bioject be reduced to less than one-third of the royalties payable before the
deduction described in this Section 6.6
6.7 Records; Inspection. AngioSense shall keep, and require its Affiliates
and Sublicensees to keep, complete, true and accurate books of accounts and
records for the purpose of determining the amounts payable under this Article 6.
Such books and records shall be kept for at least three (3) years following the
end of the calendar quarter to which they pertain. Such records will be open for
inspection during such three (3) year period by an independent auditor chosen by
Bioject and reasonably acceptable to AngioSense for the purpose of verifying the
amounts payable by AngioSense under this Article 6. Such inspections may be made
no more than once each calendar year, at reasonable times and on reasonable
notice. The independent auditor shall be obligated to execute a reasonable
confidentiality agreement prior to commencing any such inspection. Inspections
conducted under this Section 6.6 shall be at the expense of Bioject, unless a
variation or error producing an underpayment in amounts payable exceeding five
percent (5%) of the amount paid for any period covered by the inspection is
established in the course of any such inspection, whereupon all costs relating
to the inspection for such period and any unpaid amounts that are discovered
shall be paid by AngioSense, together with interest on such unpaid amounts equal
to the lesser of the prime rate as reported in The Wall Street Journal (U.S.,
Eastern edition) on the last day of the calendar quarter which such unpaid
amounts applied plus one percent (1%) per month or the maximum rate permitted by
applicable law, calculated on the number of days overdue. The parties will
endeavor to minimize disruption of AngioSense's normal business activities to
the extent reasonably practicable.
ARTICLE 7
COMMERCIALIZATION
7.1 Technical Literature. Bioject shall provide to AngioSense appropriate
technical literature relating to the Products developed by Bioject hereunder
from time to time during the term of this Agreement to assist AngioSense in
developing appropriate technical literature and marketing materials to support
its sales force for the Product.
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7.2 Product Packaging and Labeling. The trade dress, style of packaging and
the like with respect to each Product will be determined by AngioSense so as to
be consistent with AngioSense's standard trade dress and style. AngioSense shall
be responsible for any increase in packaging and labeling costs over Bioject's
current standard costs.
ARTICLE 8
PRODUCT WARRANTY
8.1 Product Warranty. Bioject warrants to AngioSense that at the time of
delivery to AngioSense the Products purchased by AngioSense shall (i) have been
manufactured in compliance with Good Manufacturing Practices (GMP) as
established by the FDA and (ii) conform to the Specifications for the Products.
Bioject makes no warranty (express, implied, or statutory) for Products that are
modified or subjected to accident, misuse, neglect or improper storage. If any
Product supplied hereunder fails to conform to the applicable Specifications,
AngioSense shall notify Bioject no later than thirty (30) days after its
discovery of the nonconformity (but in no event later than one hundred and
eighty-five (185) days after delivery) and AngioSense shall present reasonable
evidence to Bioject of such nonconformity. Bioject agrees to replace, at no
additional expense to AngioSense, such nonconforming Product with a new Product
which conforms to the applicable Specifications within thirty (30) days after
receipt of AngioSense's notification under this Section 8.1. Bioject may analyze
any Product rejected by AngioSense for nonconformity and if it is objectively
established that the Product was conforming, then AngioSense shall be
responsible for payment of such Product. All returns shall be as set forth in
Section 5.9 above. Bioject's sole obligation under the warranty stated above
shall be to repair or replace at Bioject's option any nonconforming Products.
OTHER THAN AS EXPRESSLY SET FORTH HEREIN, BIOJECT MAKES NO OTHER WARRANTIES,
INCLUDING, BUT NOT LIMITED TO, ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE 9
INTELLECTUAL PROPERTY
9.1 Ownership of Inventions. Subject to the rights and licenses granted
herein, all right, title and interest in and to all inventions and other
intellectual property made solely by personnel of a party hereto in connection
with the performance of such party's obligations hereunder shall be owned solely
by such party (a "Sole Invention"). Likewise, subject to the rights and licenses
granted herein, all right, title and interest in and to all inventions and other
intellectual property made jointly by personnel of AngioSense and Bioject (a
"Joint Invention") shall be assigned to AngioSense; provided, however, that
AngioSense hereby grants to Bioject a royalty-free exclusive worldwide license
(with the right to sublicense) under such Joint Invention to develop, make, have
made, use, import, distribute, and sell products in all areas outside the Field
and outside the licensed portions of the Extended Field. Each
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party shall promptly notify the other party in writing of any Joint Inventions.
Bioject shall ensure all employees and consultants of Bioject, assist AngioSense
in accomplishing the foregoing assignment.
For any patent application covering an AngioSense Sole Invention having
claims that include or reference to technology covered by any Bioject patent
(now existing or issued during the term of this Agreement) related to jet
injection, AngioSense will (a) advise Bioject of the filing of such patent
application, and (b) if and when such patent application issues as a patent and
that patent is licensed to a third party, or the claimed subject matter thereof
is otherwise commercialized, AngioSense will advise Bioject of the licensing or
commercialization opportunity and negotiate with Bioject in good faith an
arrangement to share revenues derived from such licensing or commercialization
opportunity, based upon the relative contribution of the Bioject technology, as
defined in the claims of such AngioSense Sole Invention patent, to the revenue
opportunity.
For any patent application covering a Bioject Sole Invention having claims
that include or reference to technology covered by any AngioSense patent (now
existing or issued during the term of this Agreement) related to the delivery of
a drug or biologic agent to the cardiac or cardiovascular system via (i) a
catheter or (ii) a non-catheter based delivery method, Bioject will (a) advise
AngioSense of the filing of such patent application, and (b) if and when such
patent application issues as a patent and that patent is licensed to a third
party, or the claimed subject matter thereof is otherwise commercialized,
Bioject will advise AngioSense of the licensing or commercialization opportunity
and negotiate with AngioSense in good faith an arrangement to share revenues
derived from such licensing or commercialization opportunity, based upon the
relative contribution of the AngioSense technology, as defined in the claims of
such Bioject Sole Invention patent, to the revenue opportunity.
9.2 Patent Prosecution.
9.2.1 Sole Inventions. Each party shall, at its expense, control the
preparing, filing, prosecuting and maintaining the patent applications developed
solely by its employees during the course of this Agreement.
9.2.2 Joint Inventions. AngioSense shall have the first right to
prepare, file, prosecute and maintain patent applications and patents which
claim Joint Inventions. Without limiting the foregoing, AngioSense agrees to
first consult with Bioject as to the preparation, filing, prosecution and
maintenance of such patents and patent applications and shall furnish to Bioject
copies of documents relevant to any such preparation, filing, prosecution and
maintenance and AngioSense further agrees to incorporate all of Bioject's
reasonable comments with respect thereto. In the event that AngioSense elects
not to pay any costs and fees with respect to a particular patent or patent
application covering a Joint Invention then AngioSense shall give Bioject at
least thirty (30) days prior written notice thereof and shall assign to Bioject
all of its right, title and interest therein.
9.2.3 Cooperation. Bioject shall cooperate with AngioSense in
connection with such activities, at AngioSense's request and expense.
-12-
9.3 Defense of Third Party Infringement Claims. If the sale or use of any
Product within the Field in the Territory pursuant to this Agreement results in
a claim, suit or proceeding brought by a third party against AngioSense or
Bioject alleging infringement of such third party's patents ("Action"), such
party shall promptly notify the other party hereto in writing. The party subject
to such Action shall have the exclusive right to defend and control the defense
of any such Action using counsel of its own choice, and the Action shall be at
such party's own expense; provided, however, that the other party may
participate in the defense and/or settlement thereof at its own expense with
counsel of its choice. The party subject to the Action agrees to keep the other
party hereto reasonably informed of all material developments in connection with
any such Action.
9.4 Enforcement. If either party determines or has a reason to believe that
any Licensed Patents or any patent covering Joint Inventions necessary for the
manufacture, use or sale of a Product are being infringed by a third party or
are subject to a declaratory judgment action arising from such infringement, in
each case with respect to the manufacture, sale or use of a product in the
Territory within the Field that competes directly with any Products (an
"Infringement"), such party shall promptly notify the other party hereto.
9.4.1 By Bioject. Bioject shall have the first right (itself or
through others), at its sole option and expense, to bring suit to enforce the
intellectual property rights within such Licensed Technology and/or to defend
any declaratory judgment action with respect thereto, in each case with respect
to an Infringement (each, for purposes of this Section 9.4, an "Enforcement
Action").
9.4.2 By AngioSense. In the event Bioject elects not to initiate an
Enforcement Action against a commercially significant Infringement, within three
(3) months of a request by AngioSense to do so, AngioSense may initiate such
Enforcement Action at its expense with Bioject's prior written consent, as the
parties mutually agree. Bioject shall have the right to participate in any such
action with counsel of its own choice at its own expense.
9.4.3 Recoveries. All recoveries from an Enforcement Action shall be
first applied to reimburse the controlling party's and then the non-controlling
party's unreimbursed expenses, including without limitation, reasonable
attorney's fees and court costs. Any remainder shall, to the extent the same
relates to the Infringement, be treated as Net Sales.
9.4.4 Cooperation. In addition, with regard to any Enforcement Action
the non-controlling party shall cooperate with the controlling party, including
without limitation, by joining as a party plaintiff, executing documents and
making available all relevant personnel, records, papers, information, samples,
specimen and other similar materials in the non-controlling party's possession,
in each case as the controlling party may reasonably request.
-13-
ARTICLE 10
REPRESENTATIONS AND WARRANTIES
10.1 Bioject Warranties. Bioject warrants and represents to AngioSense that
(i) it has the full right and authority to enter into this Agreement and grant
the rights granted herein; (ii) it has not previously granted and will not grant
any rights in conflict with the rights granted herein; (iii) to Bioject's
knowledge and belief, there are no threatened or pending actions, suits or
claims against it with respect to its right to enter into and perform its
obligations under this Agreement; and (iv) Bioject's obligations hereunder and
AngioSense's rights shall not be encumbered or in any way diminished by a Change
in Control of Bioject.
10.2 AngioSense Warranties. AngioSense warrants and represents to Bioject
that (i) AngioSense has the full right and authority to enter into this
Agreement and grant the rights granted herein; (ii) AngioSense has not
previously granted and will not grant any rights in conflict with the rights
granted herein; (iii) to AngioSense's knowledge and belief, there are no
existing or threatened actions, suits or claims pending against it with respect
to its right to enter into and perform its obligations under this Agreement and
(iv) AngioSense's obligations and Bioject's rights hereunder shall not be
encumbered or in any way diminished by a Change in Control of AngioSense.
ARTICLE 11
CONFIDENTIALITY
11.1 Confidential Information. Except as expressly provided herein, the
parties agree that, for the term of this Agreement and thereafter, the receiving
party shall not publish or otherwise disclose and shall not use for any purpose
any information furnished to it by the other party hereto pursuant to this
Agreement which if disclosed in tangible form is marked "Confidential" or with
other similar designation to indicate its confidential or proprietary nature, or
if disclosed orally is confirmed as confidential or proprietary by the party
disclosing such information at the time of such disclosure ("Confidential
Information"). Notwithstanding the foregoing, it is understood and agreed that
Confidential Information shall not include information that, in each case as
demonstrated by written documentation: (a) was already known to the receiving
party, other than under an obligation of confidentiality, at the time of
disclosure; (b) was generally available to the public or otherwise part of the
public domain at the time of its disclosure to the receiving party; (c) 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 (d) was subsequently lawfully disclosed to the
receiving party by a person other than a party hereto or developed by the
receiving party without reference to any information or materials disclosed by
the disclosing party.
11.2 Permitted Disclosures. Notwithstanding the provisions of Section 11.1
above, each party hereto may disclose the other's Confidential Information to
the extent such disclosure is reasonably necessary, in filing or prosecuting
patent applications, prosecuting or defending litigation,
-14-
complying with applicable governmental regulations, submitting information to
tax or other governmental authorities, or conducting clinical trials or in
exercising its rights hereunder (including granting any permitted sublicenses),
provided that if a party is legally required to make any such disclosure of
another party's Confidential Information, to the extent it may legally do so, it
will give reasonable advance written notice to the latter party of such
disclosure and, save to the extent inappropriate in the case of patent
applications, will use its reasonable efforts to secure confidential treatment
of such Confidential Information prior to its disclosure (whether through
protective orders or otherwise).
ARTICLE 12
INDEMNIFICATION
12.1 Indemnification of Bioject. AngioSense shall indemnify each of Bioject
and its directors, officers, and employees and the licensors, successors and
assigns of any of the foregoing (the "Bioject Indemnitees"), and hold each
Bioject Indemnitee harmless from and against any and all liabilities, damages,
settlements, claims, actions, suits, penalties, fines, costs or expenses
(including, without limitation, reasonable attorneys' fees and other expenses of
litigation) (a "Claim") incurred by any Bioject Indemnitee, arising from or
occurring as a result of product liability claim except in which such claim is
due to a breach of Bioject's warranties under Sec. 8.1.
12.2 Indemnification of AngioSense. Bioject shall indemnify each of
AngioSense and its directors, officers, and employees and the successors and
assigns of any of the foregoing (the "AngioSense Indemnitees"), and hold each
AngioSense Indemnitee harmless from and against any and all liabilities,
damages, settlements, claims, actions, suits, penalties, fines, costs or
expenses (including, without limitation, reasonable attorneys' fees and other
expenses of litigation) (a "Claim") incurred by any AngioSense Indemnitee,
arising from or occurring as a result of breach of Bioject's warranties under
Section 8.1.
12.3 Procedure. A party (the "Indemnitee") that intends to claim
indemnification under this Article 12 shall promptly notify the other party (the
"Indemnitor") in writing of any loss, claim, damage, liability or action in
respect of which the Indemnitee or any of its directors, officers, employees,
licensors, successors or assigns intends to claim such indemnification, and the
Indemnitor shall have sole control of the defense and/or settlement thereof. The
indemnity agreement in this Article 12 shall not apply to amounts paid in
settlement of any Claim if such settlement is effected without the consent of
the Indemnitor, which consent shall not be withheld unreasonably. The failure to
deliver written notice to the Indemnitor within a reasonable time after the
commencement of any such action, if prejudicial to its ability to defend such
action, shall relieve such Indemnitor of any liability to the Indemnitee under
this Article 12 but the omissions so to deliver written notice to the Indemnitor
shall not relieve the Indemnitor of any liability that it may have to any
Indemnitee otherwise than under this Article 12. The Indemnitee under this
Article 12 and its employees, shall cooperate fully with the Indemnitor and its
legal representatives and provide full information in the investigation of any
Claim covered by this indemnification.
-15-
ARTICLE 13
TERM AND TERMINATION
13.1 Term. This Agreement shall become effective as of the Effective Date
and, unless earlier terminated pursuant to the other provisions of this Article
13, shall continue in full force and effect for the longer of (i) fifteen (15)
years after the Effective Date or (ii) expiration, revocation or invalidation of
the last patent or abandonment of the last patent application within the
Licensed Patents.
13.2 Termination for Cause Either Bioject or AngioSense may terminate this
Agreement by written notice stating each party's intent to terminate in the
event the other shall have materially breached or defaulted in the performance
of any of its material obligations hereunder, and such default shall have
continued for sixty (60) days after written notice thereof was provided to the
breaching party by the nonbreaching party.
13.3 Bankruptcy Proceedings Either party hereto may terminate this
Agreement by notice to the other party, if (i) such other party shall make an
assignment of substantially all of its assets for the benefit of creditors, file
a petition in bankruptcy, petition or apply to any tribunal for the appointment
of a custodian, receiver or any trustee for such party or substantially all of
such party's assets, or shall commence any proceeding under any dissolution or
liquidation law or statute of any jurisdiction (provided that no entity succeeds
to the business of such party following such dissolution or liquidation) whether
now or hereafter in effect which is not dismissed within sixty (60) days; or
(ii) there shall have been filed any such petition or application against such
other party, or any such proceeding shall have been commenced against such
party, in which an order for relief is entered or which remains undismissed for
a period of ninety (90) days or more; or (iii) such other party by an act or
knowing failure to act shall indicate such party's consent to, approval of or
acquiescence in, any such petition, application or proceeding or order for
relief or the appointment of a custodian, receiver or any trustee for such
party, or any substantial part of any of such party's properties, or shall
suffer any such custodianship, receivership or trusteeship to continue
undischarged for a period of ninety (90) days or more.
13.4 Effect of Expiration and Termination.
13.4.1 Accrued 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 all rights and remedies it may have hereunder or at law or in
equity with respect to any breach of this Agreement.
13.4.2 Products in Inventory. AngioSense shall purchase all Product
ordered pursuant to Section 5.4.1 as of the date of termination. AngioSense and
its Affiliates and Sublicensees shall have the right to distribute Products in
their inventories or otherwise in their
-16-
control as of the termination of this Agreement for a period not to exceed six
(6) months from such termination, in all cases subject to the payments under
Article 6 above.
13.4.3 No Renewal, Extension or Waiver. Acceptance by Bioject of any
order for any Product from AngioSense after the effective date of termination of
this Agreement shall not be construed as a renewal or extension hereof, or as a
waiver of termination of this Agreement.
13.4.4 Return of Equipment. Immediately upon termination or expiration
of this Agreement, Bioject shall return to AngioSense all Equipment provided to
it under this Agreement at the location specified by AngioSense.
13.5 Survival. Articles 1, 8, 9, 10, 11, 12, 14 and 15; Sections 3.5, 6.7
and 13.4 shall survive expiration or termination of this Agreement for any
reason.
ARTICLE 14
LIMITATION OF LIABILITY
EXCEPT WITH RESPECT TO ANY CLAIM UNDER ARTICLE 12, IN NO EVENT SHALL EITHER
PARTY BE LIABLE TO THE OTHER OR ANY THIRD PARTY FOR COSTS OF PROCUREMENT OF
SUBSTITUTE GOODS, LOST PROFITS, OR ANY OTHER SPECIAL, CONSEQUENTIAL, OR
INCIDENTAL DAMAGES, HOWEVER CAUSED AND UNDER ANY THEORY OF LIABILITY ARISING OUT
OF THIS AGREEMENT WHETHER BASED IN CONTRACT, TORT (INCLUDING NEGLIGENCE), OR
OTHERWISE. THESE LIMITATIONS SHALL APPLY WHETHER OR NOT A PARTY HAS BEEN ADVISED
OF THE POSSIBILITY OF SUCH DAMAGES AND NOTWITHSTANDING ANY FAILURE OF ESSENTIAL
PURPOSE OF ANY LIMITED REMEDY PROVIDED HEREIN.
ARTICLE 15
MISCELLANEOUS
15.1 Governing Law. This Agreement and any dispute 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.
15.2 Disputes.
15.2.1 Resolution. Except with respect to either party's actions to
seek injunctive relief, in the event that Bioject and AngioSense, are unable to
resolve any dispute between them, either Bioject or AngioSense may, by written
notice to the other, have such dispute referred to the Chief Executive Officers
(or equivalent) of Bioject and AngioSense, for attempted resolution by good
faith negotiations within twenty-one (21) days after such notice is received.
Unless otherwise mutually agreed, the negotiations between the designated
officers shall be conducted by telephone,
-17-
within three (3) days and at times within the period stated above offered by the
designated officers of AngioSense to the designated officer of Bioject for
consideration.
15.2.2 Arbitration. AngioSense and Bioject agree that any dispute or
controversy arising out of, in relation to, or in connection with this
Agreement, or the validity, enforceability, construction, performance or breach
hereof, shall be settled by binding arbitration as set forth in Exhibit F.
15.3 Force Majeure. Nonperformance of any party (except for payment
obligations) shall be excused to the extent that performance is rendered
impossible by strike, fire, earthquake, flood, governmental acts or orders or
restrictions, delay or failure of suppliers, or any other reason where failure
to perform is beyond the reasonable control and not caused by the gross
negligence or willful misconduct of the nonperforming party.
15.4 No Implied Waivers; Rights Cumulative. No failure on the part of
Bioject or AngioSense to exercise and no delay in exercising any right under
this Agreement, or provided by statute or at law or in equity or otherwise,
shall impair, prejudice or constitute a waiver of any such right, nor shall any
partial exercise of any such right preclude any other or further exercise
thereof or the exercise of any other right.
15.5 Independent Contractors. Nothing contained in this Agreement is
intended implicitly, or is to be construed, to constitute Bioject or AngioSense
as partners in the legal sense. No party hereto shall have any express or
implied right or authority to assume or create any obligations on behalf of or
in the name of any other party or to bind any other party to any contract,
agreement or undertaking with any third party.
15.6 Notices. All notices, requests and other communications hereunder
shall be in writing and shall be personally delivered or sent 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:
AngioSense: AngioSense, Inc
2611 Knollwood Drive
Cameron Park, California 95682
Attn: Robert C. Glines
with a copy to: Wilson Sonsini Goodrich & Rosati
Professional Corporation
650 Page Mill Road
Palo Alto, California 94304-1050
Attn: Casey McGlynn, Esq.
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Bioject: Bioject, Inc.
7620 S.W. Bridgeport Road
Portland, Oregon 97224
Attn: Chief Financial Officer
with a copy to: Stoel Rivers LLP
900 S.W. 5th Avenue, Suite 2600
Portland, Oregon 92204
Attn: Annette Mulee, Esq.
15.7 Assignment. This Agreement shall not be assignable by either party to
any third party without the written consent of the other party hereto. Any
attempted assignment in violation of this Section 15.7 shall be null and void.
Notwithstanding the foregoing, AngioSense may assign this Agreement without
Bioject's consent to an entity that acquires all or substantially all of its
business or assets whether by merger, acquisition, or otherwise; provided that
such entity does not generate ten percent (10%) or more of its revenue from the
development, manufacture distribution of jet injection technology (Jet Injection
Entity). Assignment to any Jet Injection Entity is subject to the first sentence
of this Section 15.7.
15.8 Visiting Personnel. Certain activities of the parties hereunder may
include certain one party's personnel including without limitation senior
scientists visiting and/or being stationed at the other party's facilities for
some period of time; in such case such the visiting personnel shall be bound by
all rules and regulations pertaining to such facilities during the time at the
facilities and each party shall be responsible for and assume all risk of injury
or damage done or suffered by its personnel when such personnel are at the other
party's facilities, except for injury or damage caused by the negligence or
misconduct of the other party.
15.9 Modification. No amendment or modification of any provision of this
Agreement shall be effective unless in writing signed by all parties hereto. No
provision of this Agreement shall be varied, contradicted or explained by any
oral agreement, course of dealing or performance or any other matter not set
forth in an agreement in writing and signed by all parties.
15.10 Severability. If any provision hereof should be held invalid, illegal
or unenforceable in any jurisdiction, all other provisions hereof shall remain
in full force and effect in such jurisdiction and shall be liberally construed
in order to carry out the intentions of the parties hereto as nearly as may be
possible. Such invalidity, illegality or unenforceability shall not affect the
validity, legality or enforceability of such provision in any other
jurisdiction.
15.11 Publicity. Each of the parties hereto agrees not to disclose to any
third party the terms and conditions of this Agreement without the prior written
consent of the other party hereto, except to advisors, investors and others on a
need-to-know basis under circumstances that reasonably ensure the
confidentiality thereof, or to the extent required by law.
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15.12 Headings. Headings used herein are for convenience only and shall not
in any way affect the construction of or be taken into consideration in
interpreting this Agreement.
15.13 No Implied Licenses. Except as expressly provided herein, no party
hereto grants to any other party hereto any rights or licenses under such
party's patent rights, trade secrets or other intellectual property rights.
15.14 Entire Agreement. This Agreement, including the Exhibits attached
hereto, constitutes the entire agreement with respect to the subject matter
hereof, and supersedes all prior or contemporaneous understandings or
agreements, whether written or oral, between Bioject and AngioSense with respect
to such subject matter.
15.15 Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, and all of which
together, shall constitute one and the same instrument.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed and delivered effective as of the Effective Date.
Bioject, Inc. AngioSense, Inc.
("Bioject") ("AngioSense")
By: ------------------------------- By: -------------------------------
Name: ---------------------------- Name: -----------------------------
Title: ---------------------------- Title: ----------------------------
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Exhibit A
BIOJECT PATENTS
Docket
Date Patent Number Number Country Description Area of Protection
- -----------------------------------------------------------------------------------------------------------------------------------
May 12,1981 4,266,541 USA Omnijet Hydraulic powered device
Jun 3, 1986 4,592,742 USA Vitajet 1,2 Spring powered device and syringe
June 24, 1986 4,596,556 USA Syringe & Injector
Dec. 13, 1988 4,790,824 USA Syringe & Injector
Jul. 10, 1990 4,940,460 USA Syringe & Injector
Jul. 17, 1990 4,941,880 187/087 USA Syringe & Injector 15 Claims - first generation technology
Oct. 25, 1990 662850 189/230 Australia Syringe 7 Claims - syringe tip, foreign version of
U.S. 5,312,335
Oct 30, 1990 4,966,581 USA Vitajet Corp. Prefill Plastic prefill cartidge
Nov. 1, 1990 EPO427457 189/230 Belgium Syringe 6 Claims - syringe tip, foreign version of
U.S. 5,312,335
Nov. 1, 1990 EPO427457 189/230 France Syringe 6 Claims - syringe tip, foreign version of
U.S. 5,312,335
Nov. 1, 1990 DE69017356 189/230 Germany Syringe 6 Claims - syringe tip, foreign version of
U.S. 5,312,335
Nov. 1, 1990 EPO427457 189/230 G. Britain Syringe 6 Claims - syringe tip, foreign version of
U.S. 5,312,335
Nov. 1, 1990 EPO427457 189/230 Italy Syringe 6 Claims - syringe tip, foreign version of
U.S. 5,312,335
Nov. 1, 1990 EPO427457 189/230 Spain Syringe 6 Claims - syringe tip, foreign version of
U.S. 5,312,335
Nov. 1, 1990 EPO427457 189/230 Switz/Liech Syringe 6 Claims - syringe tip, foreign version of
U.S. 5,312,335
Nov. 12, 1991 5,064,413 186/182 USA Syringe & Injector 30 Claims - pilot valve technology
Jul. 24, 1992 2028524 199/031 G. Britain B2000 Design Ornamentation aspects of the B2000
Jan. 20, 1993 M9300555.5 199/031 Germany B2000 Design Ornamentation aspects of the B2000
Jan. 22, 1993 929398 199/031 Japan B2000 Design Ornamentation aspects of the B2000
May 17, 1994 5,312,577 196/184 USA Syringe Mfg. Method 5 Claims - Method of molding orifice
May. 17, 1994 5,312,335 194/174 USA Syringe 11 Claims - Luer and shroud
Aug. 23,1994 Des. 349,958 199/031 USA B2000 Design Ornamentation aspects of the B2000.
Jan. 24, 1995 5,383,851 195/089 USA B2000 Apparatus 23 Claims - Injector and syringe
Mar. 21, 1995 5,399,163 202/206 USA B2000 Method 29 Claims - Parameters for injection
Apr. 2, 1996 5,503,627 206/107 USA Syringe 18 Claims - Luer and shroud
May 28, 1996 5,520,639 211/208 USA B2000 Apparatus 9 Claims - Additional B2000 claims
July 10, 1997 676490 202/206 Australia B2000 Method 29 Claims - Parameters for injection
May 5, 1998 5,746,714 USA Medivax Air powered device (low pressure)
Jul 21, 1998 5,782,802 USA Vitajet 3 Spring powered device and syringe
BIOJECT PATENT APPLICATIONS
Date Docket Number Country Description Area of Protection
- -------------------------------------------------------------------------------------------------------------------
*** *** *** *** ***
*** *** *** *** ***
*** *** *** *** ***
*** *** *** *** ***
EXHIBIT B
EQUIPMENT
None
EXHIBIT C
Milestone and Stock Payment Schedules for Bioject stock equity payment (1999)
VitaJet
In the event that each of the following four (4) milestones (each, a
"Vitajet Milestone") is achieved by or before the due date listed across from
such Milestone (each such date, a "Vitajet Milestone Due Date"), AngioSense
shall issue to Bioject 138,611 shares of Common Stock pursuant to the terms of
the Stock Purchase Agreement by and between Bioject and AngioSense and of even
date herewith (the "Stock Purchase Agreement"), which Stock Purchase Agreement
is attached as Exhibit D to the Agreement. If any one or more of the Vitajet
Milestones is not achieved by the applicable Vitajet Milestone Due Date, then
the condition precedent to AngioSense's obligation to issue shares to Bioject
pursuant to Section 4 of the Stock Purchase Agreement in connection with the
Vitajet Product will not be met and AngioSense shall have no obligation to issue
any such shares pursuant to such Section 4.
Vitajet Milestones Due Date
- -------------------------------------------------------------------------------------------------------------------
1. Provide AngioSense with prototype intraoperative device for use in animal) ***
2. Use commercially reasonable efforts to assist AngioSense, as reasonably requested, ***
prior to the Due Date in submitting 1st regulatory filing for
intraoperative device, whether or not AngioSense submits any such filing by
the Due Date. If such assistance is not requested prior to the Due Date,
this milestone will be deemed met as of the Due Date.
3. Provide necessary information and documentation to AngioSense, as ***
reasonably requested prior to the Due Date, for filing U.S. patent
application for intraoperative device, whether or not AngioSense submits
any such filing by the Due Date. If such information or documentation is
not requested prior to the Due Date this milestone will be deemed met as of
the Due Date.
4. Have Equipment, personnel, and protocols in place in preparation for volume ***
manufacture of intraoperative devices
B2000
In the event that each of the following five (5) milestones (each, a "B2000
Milestone") is achieved by or before the due date listed across from such B2000
Milestone (each such date, a "B2000 Milestone Due Date"), AngioSense shall issue
to Bioject 138,611 shares of Common Stock pursuant to the terms of the Stock
Purchase Agreement. If any one or more of the B2000 Milestones is not achieved
by the applicable B2000 Milestone Due Date, then the condition precedent to
AngioSense's obligation to issue shares to Bioject pursuant to Section 5 of the
Stock Purchase
Agreement in connection with the B2000 Product will not be met and AngioSense
shall have no obligation to issue any such shares pursuant to such Section 5.
B2000 Milestones Due Date
- -------------------------------------------------------------------------------------------------------------------
1. Provide AngioSense with three devices for use with catheter systems to be tested in ***
animals
2. Use commercially reasonable efforts to assist AngioSense, as reasonably ***
requested prior to the Due Date, in submitting 1st regulatory filing for
catheter system, whether or not AngioSense submits any such filing by the
Due Date. If such assistance is not requested prior to the Due Date, this
milestone will be deemed met as of the Due Date.
3. Provide necessary information and documentation to AngioSense, as ***
reasonably requested prior to the Due Date, for filing of U.S. patent
application for catheter-based system and percutaneous application, whether
or not AngioSense submits any such filing by the Due Date. If such
information or documentation is not requested prior to the Due Date this
milestone will be deemed met as of the Due Date.
4. Provide AngioSense with device for testing of catheter system in humans ***
5. Have Equipment, personnel, and protocols in place in preparation for volume ***
manufacture of B2000
EXHIBIT D
STOCK PURCHASE AGREEMENT
EXHIBIT E
Transfer Pricing Schedule
Annual Unit Purchases
Device 5,000 10,000 20,000 50,000 75,000 100,000
- ------------------------------------ ------------ ------------- ------------- ------------- ------------- ------------
B-2000 *** *** *** *** *** ***
Vitajet 3 *** *** *** *** *** ***
Disposable Syringes *** *** *** *** *** ***
* ***
EXHIBIT F
ARBITRATION
(a) Initiation of Arbitration. A party ("Complaining Party") which intends
to begin an arbitration to resolve a Dispute as contemplated by Section of the
Agreement ("Arbitration") shall initiate the Arbitration by providing written
notice ("Arbitration Request") of such intent by certified or registered mail or
properly documented overnight delivery to the other party ("Responding Party").
The Arbitration Request shall include a copy of the Description of Dispute, set
forth a proposed solution to the Dispute, and include a suggested time frame
within which the parties must act to effect such solution. Contemporaneously
with sending the Arbitration Request, the Complaining Party shall submit a copy
of the Arbitration Request to the American Arbitration Association in the city
in which the Arbitration is to be conducted as provided in Paragraph (d) below.
(b) Selection of Arbitration. Any and all Disputes to be resolved pursuant
to Arbitration shall be submitted to a neutral arbitrator ("Arbitrator"). The
parties shall select the Arbitrator by mutual agreement but if the parties are
unable to agree, then the Arbitrator shall be selected in accordance with the
procedures of the American Arbitration Association. The Arbitrator shall be a
former judge of a state or federal court who shall not be a current or former
employee, director or shareholder of, or otherwise have any current or previous
relationship with, either party or its respective affiliates.
(c) American Arbitration Association Rules. The Arbitration shall be
conducted in accordance with the rules of the American Arbitration Association
then in effect, subject to the time periods and other provisions of this Exhibit
or as otherwise set forth in the Agreement.
(d) Hearing. Consistent with the time schedule established pursuant to this
paragraph (d) and Paragraph (e) below, the Arbitrator shall hold a hearing
("Hearing") to resolve each of the issues identified in the Description of
Dispute. To the extent practicable taking into account the nature of the Dispute
and the availability of the Arbitrator, the Hearing shall be conducted over a
period not to exceed two (2) consecutive business days, with each party entitled
to approximately half of the allotted time unless otherwise ordered by the
Arbitrator. The Hearing shall be conducted in a location to be mutually agreed
by the parties.
(e) Discovery. Within ten (10) days of receipt by the Responding Party of
the Arbitration Request the parties shall negotiate in good faith the scope and
schedule of discovery, including depositions, document production and other
discovery devices, taking into account the nature of the Dispute submitted for
resolution. If the parties are unable to reach agreement as to the scope and
schedule of discovery, the Arbitrator may order such discovery as he or she
deems necessary. In either case, such discovery shall be completed within sixty
(60) days from the date of the selection of the Arbitrator. At the hearing,
which shall commence within twenty (20) days after the completion of discovery
unless the Arbitrator otherwise orders, the parties may present testimony
(either live witness or deposition), subject to cross-examination, and
documentary evidence.
(f) Hearing Submission. At least twenty (20) business days prior to the
date set for the Hearing, each party shall submit to each other and the
Arbitrator a list of all documents on which such party intends to rely in any
oral or written presentation at the Hearing, a list of all witnesses, if any,
such party intends to call at the Hearing and a brief summary of each witness'
testimony. At least five (5) business days prior to the Hearing, each party must
submit to the Arbitrator and serve on each other party proposed findings of fact
and conclusions of law on each issue to be resolved. Within five (5) days
following the close of the Hearing, each party shall each submit such
post-Hearing briefs to the Arbitrator addressing the evidence and issues to be
resolved as may be required or permitted by the Arbitrator.
(g) Arbitrator's Duties and Authority. The Arbitrator shall preside over
and resolve any disputes between the parties in connection with the Arbitration.
The Arbitrator shall have sole discretion with regard to the admissibility of
any evidence and all other matters relating to the conduct of the Hearing. The
Arbitrator shall, in rendering its decision, apply the substantive law of the
State of California. The decision of the Arbitrator shall be final and not
appealable, except in the case of fraud or bad faith on the part of the
Arbitrator in connection with the conduct of such proceedings.
(h) Decision and Award. The Arbitrator shall render a decision and award as
expeditiously as possible but in no event more than thirty (30) days after the
close of the hearing. In making the award the Arbitrator shall rule on each
disputed issue. Nothing contained herein shall be construed to permit the
Arbitrator or any court or any other forum to award punitive, exemplary or any
similar damages. By entering into the Agreement and exercising their rights to
arbitrate, the parties expressly waive any claim for punitive, exemplary or any
similar damages. The only damages recoverable under this Agreement are
compensatory damages.
(i) Costs and Expenses. Each party shall pay its own costs (including,
without limitation, reasonable attorneys' fees) and expenses in connection with
the Arbitration; provided, however, that if the Arbitrator determines that the
action of any party was arbitrary, frivolous or in bad faith, the Arbitrator may
award such costs and expenses to the prevailing party.
(j) Confidentiality. The Arbitration shall be confidential and, except as
required by law, neither party shall make (or instruct the Arbitrator to make)
any public announcement with respect to the proceedings or decision of the
Arbitrator without the prior written consent of the other party. The existence
of any Dispute, and the award of the Arbitrator, shall be kept in confidence by
the parties and the Arbitrator, except as required in connection with the
enforcement of such award or as otherwise required by applicable law.
(k) Jurisdiction to Enforce Award. For the purposes of these arbitration
provisions, the decision may be entered in any court of competent jurisdiction.
(l) Exclusive Procedures. The procedures specified herein shall be the sole
and exclusive procedures for the resolution of Disputes between the parties
which are expressly identified for resolution in accordance with these
arbitration provisions.
EXHIBIT D
ANGIOSENSE, INC.
STOCK PURCHASE AGREEMENT
THIS AGREEMENT ("Agreement") is made this 21st day of September, 1999,
between AngioSense, Inc., a Delaware corporation (the "Company") and Bioject,
Inc., an Oregon corporation ("Bioject").
The parties agree as follows:
1. Issuance of Stock. Upon (i) the satisfaction of certain conditions
precedent set out in Sections 3 and 4 below, or (ii) the occurrence of an event
contemplated by Section 5 hereof, the Company hereby agrees to issue to Bioject
up to an aggregate maximum of 277,222 shares of the Company's Common Stock (the
"Shares").
2. Consideration. The Shares shall be issued in consideration for the
rights granted and performance rendered under that certain Exclusive License
Agreement between the Company and Bioject of even date herewith ("Agreement I").
3. Issuance of Shares upon Vitajet Milestone Achievement. Upon execution of
this Agreement and Agreement I, and the achievement of all of the Vitajet
Milestones (as such term is defined in Exhibit C of Agreement I) by the
applicable Vitajet Milestone Due Dates (as such term is defined in Exhibit C of
Agreement I), the Company shall issue to Bioject 138,611 of the Shares and shall
issue a duly executed certificate evidencing such shares in the name of Bioject.
4. Issuance of Shares upon B2000 Milestone Achievement. Upon execution of
this Agreement and Agreement I, and the achievement of all of the B2000
Milestones (as such term is defined in Exhibit C of Agreement I) by the
applicable B2000 Milestone Due Dates (as such term is defined in Exhibit C of
Agreement I), the Company shall issue to Bioject 138,611 of the Shares and shall
issue a duly executed certificate evidencing such shares in the name of Bioject.
5. Issuance of Shares upon Change in Control. In the event of, and
immediately prior to the closing (the "Closing") of, the merger or consolidation
of the Company with or into another corporation, entity or person or the sale of
all or substantially all of the Company's assets to another corporation, entity
or person, the Company shall issue to Bioject (A) the number of the Shares that
would be issuable pursuant to Section 3 hereof if all conditions precedent to
such issuance under Section 3 were satisfied, provided that (x) the Closing date
is no later than the latest Vitajet Milestone Due Date and (y) none of the
Shares issuable pursuant to Section 3 have been issued pursuant to Section 3 as
of the Closing date and (B) the number of the Shares that would be issuable
pursuant to Section 4 hereof if all conditions precedent to such issuance under
Section 4 were satisfied, provided
-1-
that (x) the Closing date is no later than the latest B2000 Milestone Due Date
and (y) none of the Shares issuable pursuant to Section 4 have been issued
pursuant to Section 4 as of the Closing date, all provided, however, that the
Company shall not be obligated to issue any shares pursuant to this Section 5 if
immediately after such merger, consolidation or sale of assets, more than 50% of
the capital stock or equity interests in such other corporation, entity or
person are owned by persons who owned in the aggregate more than 50% of the
capital stock of the corporation immediately before such merger, consolidation
or sale of assets.
6. Rights Agreement. Bioject and the Company shall enter into a Rights
Agreement, a form of which is attached hereto as Exhibit A, concurrently with
the execution of this Agreement.
7. Representations and Warranties of the Company. The Company represents
and warrants to Bioject that as of the date of this Agreement, except as
otherwise set forth on the Schedule of Exceptions attached hereto as Exhibit B
setting forth the exceptions which correspond to the numbered sections contained
in this Section 7.
7.1. Organization and Standing; Certificate and Bylaws. The Company is
a corporation duly organized, validly existing, and in good standing under the
laws of the State of Delaware. The Company has all requisite corporate power and
authority to own and operate its properties and assets and to carry on its
business as presently conducted and as proposed to be conducted. The Company is
qualified to do business as a foreign corporation in each jurisdiction in which
such qualification is required and where failure to be so qualified would not
have a material adverse effect on the Company's business as now conducted or as
proposed to be conducted.
7.2. Corporate Power. The Company has all requisite legal and
corporate power to execute and deliver this Agreement, to sell and issue the
Shares hereunder and to carry out and perform its obligations under the terms of
this Agreement.
7.3. Capitalization. The authorized capital stock of the Company
consists of 20,000,000 shares of Common Stock, $0.001 par value and 2,750,000
shares of Preferred Stock, 750,000 of which are designated Series A Preferred
Stock with a par value of $0.001 per share and 2,000,000 of which are designated
Series B Preferred Stock with a par value of $0.001 per share. The outstanding
capital stock of the Company as of the date of this Agreement is as set forth in
Section 7.3 of the Schedule of Exceptions. All issued and outstanding shares of
the Company's capital stock have been duly authorized and validly issued, are
fully paid and nonassessable, and were issued in compliance with applicable
federal and state securities laws. Except as set forth in Section 7.3 of the
Schedule of Exceptions, there are no other outstanding shares of capital stock
or outstanding rights of first refusal, preemptive rights or other rights,
options, warrants, conversion rights, or other agreements either directly or
indirectly for the purchase or acquisition from the Company of any shares of its
capital stock.
7.4. Subsidiaries. The Company has no subsidiaries or affiliated
companies and does not otherwise own or control, directly or indirectly, any
equity interest in any corporation, association or business entity.
-2-
7.5. Authorization. All corporate action on the part of the Company,
its officers, directors and stockholders necessary for the authorization,
execution, delivery and performance by the Company of this Agreement, the
authorization, issuance, sale and delivery of the Shares, and the performance of
all of the Company's obligations hereunder has been taken or will be taken prior
to the execution of this Agreement. This Agreement, when executed and delivered
by the Company, shall constitute a valid and legally binding obligation of the
Company enforceable in accordance with its respective terms, subject to laws of
general application relating to bankruptcy, insolvency and the relief of debtors
and rules of law governing specific performance, injunctive relief or other
equitable remedies. The Shares, when issued in compliance with the provisions of
this Agreement, will be validly issued, fully paid and nonassessable, and the
Shares will be free of any liens or encumbrances created by the Company,
provided, however, that the Shares may be subject to restrictions on transfer
under applicable securities laws as set forth herein.
7.6. Title to Properties and Assets. The Company has good and
marketable title to its tangible properties and assets, and has good title to
all its leasehold interests, in each case subject to no mortgage, pledge, lien,
lease, loan, encumbrance or charge, except (i) the lien of current taxes not yet
due and payable, and (ii) possible minor liens and encumbrances which do not in
any case materially detract from the value of the property subject thereto or
materially impair the Company's operations, and which have not arisen otherwise
than in the ordinary course of business. With respect to property it leases, the
Company is in compliance with such leases in all material respects.
7.7. Compliance with Other Instruments. The Company is not in
violation of any term of its Certificate of Incorporation or Bylaws. The Company
is not in violation of, or in default in any material respect under, the terms
of any mortgage, indenture, contract, agreement, instrument, judgment or decree
applicable to it or to which it is a party, the violation of which would have a
material adverse effect on the Company as a whole, and the Company is not in
violation of any order, statute, rule or regulation applicable to the Company,
the violation of which would have a material adverse effect on the Company.
7.8. Litigation. There is no action, proceeding or investigation
pending, or to Company's knowledge threatened, against the Company or its
officers, directors or stockholders, or, to the Company's knowledge, against
employees or consultants of the Company which might result, either individually
or in the aggregate, in any material adverse change in the business, prospects,
conditions, affairs or operations of the Company. The Company is not a party to
or subject to the provisions of any order, writ, injunction, judgment or decree
of any court or government agency or instrumentality. There is no action, suit,
proceeding or investigation by the Company currently pending or which the
Company currently intends to initiate.
7.9. Governmental Consents. No consent, approval or authorization of
or designation, declaration or filing with any governmental authority on the
part of the Company is required in connection with the valid execution and
delivery of this Agreement, or the offer, sale or issuance of the Shares except
qualification (or taking such action as may be necessary to secure an exemption
from qualification, if available) of the offer and sale of the Shares under
applicable Blue Sky laws, which filings and qualifications, if required, will be
accomplished in a timely manner.
-3-
7.10. Brokers or Finders. The Company has not incurred, and will not
incur, directly or indirectly, as a result of any action taken by or on behalf
of the Company, any liability for brokerage or finders' fees or agents'
commissions or any similar charges in connection with this Agreement.
7.11. Financial Statements. The Company has furnished Bioject with
copies of all financial statements of the Company available to the Company, and
the current version of the Company's business plan, as of June 21, 1999.
8. Investment Representations; Restriction on Transfer.
(a) In connection with the purchase of the Shares, Bioject represents
to the Company the following:
(i) Bioject is aware of the Company's business affairs and financial
condition and has acquired sufficient information about the Company to reach an
informed and knowledgeable decision to acquire the securities. Bioject is
purchasing these securities for investment for its own account only and not with
a view to, or for resale in connection with, any "distribution" thereof within
the meaning of the Securities Act of 1933 (the "Securities Act").
(ii) Bioject is an Accredited Investor, as that term is defined in
Regulation D of the Securities Act.
(iii) Bioject understands that the securities have not been registered
under the Securities Act by reason of a specific exemption therefrom, which
exemption depends upon, among other things, the bona fide nature of Bioject's
investment intent as expressed herein. In this connection, Bioject understands
that, in view of the Securities and Exchange Commission ("Commission"), the
statutory basis for such exemption may not be present if Bioject's
representations meant that its present intention was to hold these securities
for a minimum capital gains period under the tax statutes, for a deferred sale,
for a market rise, for a sale if the market does not rise, or for a year or any
other fixed period in the future.
(iv) Bioject further acknowledges and understands that the securities
must be held indefinitely unless they are subsequently registered under the
Securities Act or an exemption from such registration is available. Bioject
further acknowledges and understands that the Company is under no obligation to
register the securities. Bioject understands that the certificate evidencing the
securities will be imprinted with a legend which prohibits the transfer of the
securities unless they are registered or such registration is not required in
the opinion of counsel for the Company.
(v) Bioject is aware of the adoption of Rule 144 by the Commission,
promulgated under the Securities Act, which permits limited public resale of
securities acquired in a non-public offering subject to the satisfaction of
certain conditions.
(vi) Bioject further acknowledges that in the event all of the
requirements of Rule 144 are not met, compliance with Regulation A or some other
registration exemption will be required, and that although Rule 144 is not
exclusive, the staff of the Commission has expressed its opinion that persons
proposing to sell private placement securities other than in a registered
offering and other than pursuant to Rule 144 will have a substantial burden of
proof in establishing that an
-4-
exemption from registration is available for such offers or sales and that such
persons and the brokers who participate in the transactions do so at their own
risk.
(b) Bioject agrees, provided that the officers and directors of the Company
agree to be bound by terms substantially identical to those contained in this
subsection 8(b), in connection with the Company's initial public offering of the
Company's securities, upon request of the Company or the underwriters managing
any underwritten offering of the Company's Securities, (i) not to sell, make any
short sale of, loan, grant any option for the purchase of, or otherwise dispose
of any shares of Common Stock of the Company held by Bioject (other than those
shares included in the registration) without the prior written consent of the
Company or such underwriters, as the case may be, for such period of time (not
to exceed one hundred eighty (180) days) from the effective date of such
registration as may be requested by the underwriters and (ii) further agrees to
execute any agreement reflecting (i) above as may be requested by the
underwriters at the time of the public offering.
9. Legends. The share certificate evidencing the Shares issued hereunder
shall be endorsed with the following legends:
(a) THE SHARES REPRESENTED BY THIS CERTIFICATE HAVE BEEN ACQUIRED FOR
INVESTMENT AND HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933. SUCH
SHARES MAY NOT BE SOLD OR TRANSFERRED IN THE ABSENCE OF SUCH REGISTRATION UNLESS
THE TRANSFER IS IN ACCORDANCE WITH RULE 144 OR SIMILAR RULE OR UNLESS THE
COMPANY RECEIVES AN OPINION OF COUNSEL REASONABLY ACCEPTABLE TO IT STATING THAT
SUCH SALE OR TRANSFER IS EXEMPT FROM THE REGISTRATION AND PROSPECTUS DELIVERY
REQUIREMENTS OF SAID ACT. COPIES OF THE AGREEMENT COVERING THE PURCHASE OF THESE
SHARES AND RESTRICTING THEIR TRANSFER MAY BE OBTAINED AT NO COST BY WRITTEN
REQUEST MADE BY THE HOLDER OF RECORD OF THIS CERTIFICATE TO THE SECRETARY OF THE
CORPORATION AT THE PRINCIPAL EXECUTIVE OFFICES OF THE CORPORATION.
(b) Any legend required to be placed thereon by the California
Commissioner of Corporations or any other applicable state securities laws.
10. Adjustment for Stock Split. All references to the number of Shares and
the purchase price of the Shares in this Agreement shall be appropriately
adjusted to reflect any stock split, stock dividend or other change in the
Shares which may be made by the Company after the date of this Agreement.
11. General Provisions.
(a) This Agreement shall be governed by the internal laws of the State
of California. This Agreement represents the entire agreement between the
parties with respect to the purchase of Common Stock by Bioject and supersedes
any prior agreement written or oral with respect to the purchase of Common Stock
by Bioject and satisfies all of the Company's obligations to Bioject with regard
to the issuance or sale of securities. This Agreement may only be modified or
amended in writing signed by both parties.
-5-
(b) Any notice, demand or request required or permitted to be given by
either the Company or Bioject pursuant to the terms of this Agreement shall be
in writing and shall be deemed given when delivered personally or deposited in
the U.S. mail, First Class with postage prepaid, and addressed to the parties at
the addresses of the parties set forth at the end of this Agreement or such
other address as a party may request by notifying the other in writing.
(c) The rights and benefits of the Company under this Agreement shall
be transferable to any one or more persons or entities, and all covenants and
agreements hereunder shall inure to the benefit of, and be enforceable by the
Company's successors and assigns. The rights and obligations of Bioject under
this Agreement may only be assigned with the prior written consent of the
Company.
(d) Either party's failure to enforce any provision or provisions of
this Agreement shall not in any way be construed as a waiver of any such
provision or provisions, nor prevent that party thereafter from enforcing each
and every other provision of this Agreement. The rights granted both parties
herein are cumulative and shall not constitute a waiver of either party's right
to assert all other legal remedies available to it under the circumstances.
(e) Bioject agrees upon request to execute any further documents or
instruments necessary or desirable to carry out the purposes or intent of this
Agreement.
(f) Bioject understands that it (and not the Company) shall be
responsible for its own federal, state, local or foreign tax liability and any
of its other tax consequences that may arise as a result of the transactions
contemplated by this Agreement. Bioject shall rely solely on the determinations
of its tax advisors or its own determinations, and not on any statements or
representations by the Company or any of its agents, with regard to all such tax
matters.
(g) This Agreement may be executed in any number of counterparts, each
of which shall be deemed an original and all of which together shall constitute
one and the same instrument.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
-6-
IN WITNESS WHEREOF, the parties have duly executed this Agreement as of the day
and year first set forth above.
ANGIOSENSE, INC. BIOJECT, INC.
a Delaware corporation an Oregon corporation
By: ------------------------------- By: -------------------------------
Title: ---------------------------- Title: -------------------------------
- ----------------------------------- -----------------------------------
(Address) (Address)
- ----------------------------------- -----------------------------------
EXHIBIT A
RIGHTS AGREEMENT
This Rights Agreement ("Agreement") is entered into as of September 21st,
1999 by and between AngioSense, Inc., a Delaware corporation (the "Company") and
Bioject, Inc., an Oregon corporation ("Bioject").
WHEREAS, Bioject and the Company are entering into (i) an Exclusive License
Agreement (referred to as "Agreement I") and, (ii) a Development and Supply
Agreement (referred to as "Agreement II"), both of even date herewith (such
agreements together, the "IP Agreements");
WHEREAS, Bioject and the Company are entering into a total of two (2) stock
purchase agreements of even date with this Agreement (the "Purchase Agreements")
in connection with and concurrently with the execution of the IP Agreements; and
WHEREAS, to induce Bioject to enter into the IP Agreements and the Purchase
Agreements, the Company and Bioject have agreed to enter into this Agreement to
provide for certain rights, privileges and preferences in favor of Bioject.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
promises and covenants contained herein, the parties agree as follows:
1. Certain Definitions. All terms not otherwise defined in this Agreement
shall have the meaning defined in the Stock Purchase Agreements. As used in this
Agreement, the following terms shall have the following respective meanings:
1.1 "Commission" shall mean the Securities and Exchange Commission or
any other federal agency at the time administering the Securities Act.
1.2 "Holder" shall mean Bioject and any person holding Shares to whom
the rights under this Agreement have been transferred in accordance with Section
3.7 hereof.
1.3 "Registrable Securities" means Common Stock of the Company issued
pursuant to the Purchase Agreements or other securities convertible into or
exercisable for Common Stock upon any stock split, stock dividend,
recapitalization, or similar event, provided, however, that shares of Common
Stock or other securities shall only be treated as Registrable Securities for
the purposes of this Agreement (A) if and so long as they have not been sold to
or through a broker or dealer or underwriter in a public distribution or a
public securities transaction, or (B) prior to the date such securities have
been sold or are all available for immediate sale in the opinion of counsel to
the Company in a transaction exempt from the prospectus delivery requirements of
the Securities Act so that all transfer restrictions and legends with respect
thereto are removed upon the consummation of such sale. 1.4
1.4 The terms "register," "registered" and "registration" refer to a
registration effected by preparing and filing a registration statement in
compliance with the Securities Act, and the declaration or ordering of the
effectiveness of such registration statement.
1.5 "Registration Expenses" shall mean all expenses, except as
otherwise stated below, incurred by the Company in complying with Section 3.1
hereof, including, without limitation, all registration, qualification and
filing fees, printing expenses, escrow fees, fees and disbursements of counsel
for the Company, blue sky fees and expenses, the expense of any special audits
incident to or required by any such registration (but excluding the compensation
of regular employees of the Company which shall be paid in any event by the
Company).
1.6 "Restricted Securities" shall mean the securities of the Company
required to bear the legend set forth in Section 2.2 hereof.
1.7 "Securities Act" shall mean the Securities Act of 1933, as
amended, or any similar federal statute and the rules and regulations of the
Commission thereunder, all as the same shall be in effect at the time.
1.8 "Selling Expenses" shall mean all underwriting discounts, selling
commissions and stock transfer taxes and costs of special counsel to the
Holders, if any, applicable to the securities registered by the Holders.
2. Transferability.
2.1 Restrictions on Transferability. The Shares shall not be sold,
assigned, transferred or pledged except upon the conditions specified in this
Section 2, which conditions are intended to ensure compliance with the
provisions of the Securities Act. Bioject will cause any proposed purchaser,
assignee, transferee, or pledgee of the Shares held by Bioject to agree to take
and hold such securities subject to the provisions and upon the conditions
specified in this Section 2.
2.2 Restrictive Legend. Each certificate representing (i) the Shares
and (ii) any other securities issued in respect of the Shares upon any stock
split, stock dividend, recapitalization, merger, consolidation or similar event,
shall (unless otherwise permitted by the provisions of Section 2.3 below) be
stamped or otherwise imprinted with a legend in the following form (in addition
to any legend required under applicable state securities laws):
THE SHARES REPRESENTED BY THIS CERTIFICATE HAVE BEEN ACQUIRED FOR
INVESTMENT AND HAVE NOT BEEN REGISTERED UNDER THE SECURITIES ACT OF 1933. SUCH
SHARES MAY NOT BE SOLD OR TRANSFERRED IN THE ABSENCE OF SUCH REGISTRATION UNLESS
THE TRANSFER IS IN ACCORDANCE WITH RULE 144 OR SIMILAR RULE OR UNLESS THE
COMPANY RECEIVES AN OPINION OF COUNSEL REASONABLY ACCEPTABLE TO IT STATING THAT
SUCH SALE OR TRANSFER IS EXEMPT FROM THE REGISTRATION AND PROSPECTUS DELIVERY
REQUIREMENTS OF SAID ACT. COPIES OF THE AGREEMENT COVERING THE PURCHASE OF THESE
SHARES AND RESTRICTING THEIR TRANSFER MAY BE OBTAINED AT NO COST BY WRITTEN
REQUEST MADE BY THE HOLDER OF RECORD OF THIS CERTIFICATE TO
-2-
THE SECRETARY OF THE CORPORATION AT THE PRINCIPAL EXECUTIVE OFFICES OF THE
CORPORATION.
Bioject consents to the Company making a notation on its records and giving
instructions to any transfer agent of the Shares in order to implement the
restrictions on transfer established in this Section 2.
2.3 Notice of Proposed Transfers. The holder of each certificate
representing Restricted Securities by acceptance thereof agrees to comply in all
respects with the provisions of this Section 2.3. Prior to any proposed sale,
assignment, transfer or pledge of any Restricted Securities (other than (i) a
transfer not involving a change in beneficial ownership, or (ii) a transfer to
an affiliated fund, partnership or company, which is not a competitor of the
Company, subject to compliance with applicable securities laws, or (iii)
transfers in compliance with Rule 144, so long as the Company is furnished with
satisfactory evidence of compliance with such Rule), unless there is in effect a
registration statement under the Securities Act covering the proposed transfer,
the holder thereof shall give written notice to the Company of such holder's
intention to effect such transfer, sale, assignment or pledge. Each such notice
shall describe the manner and circumstances of the proposed transfer, sale,
assignment or pledge in sufficient detail, and shall be accompanied, at such
holder's expense by either (i) an unqualified written opinion of legal counsel
who shall, and whose legal opinion shall, be reasonably satisfactory to the
Company, which opinion shall be addressed to the Company and which opinion shall
be to the effect that the proposed transfer of the Restricted Securities may be
effected without registration under the Securities Act, or (ii) a "no action"
letter from the Commission to the effect that the transfer of such securities
without registration will not result in a recommendation by the staff of the
Commission that action be taken with respect thereto, whereupon the holder of
such Restricted Securities shall be entitled to transfer such Restricted
Securities in accordance with the terms of the notice delivered by the holder to
the Company. Each certificate evidencing the Restricted Securities transferred
as above provided shall bear, except if such transfer is made pursuant to Rule
144, the appropriate restrictive legend set forth in Section 2.2 above, except
that such certificate shall not bear such restrictive legend if in the opinion
of counsel for such holder and in the reasonable opinion of the Company such
legend is not required in order to establish compliance with any provision of
the Securities Act.
2.4 Removal of Restrictions on Transfer of Securities. Any legend
referred to in Section 2.2 hereof stamped on a certificate evidencing (i) the
Shares, (ii) any other securities issued in respect of the Shares upon any stock
split, stock dividend, recapitalization, merger, consolidation or similar event
and the stock transfer instructions and record notations with respect to such
security shall be removed and the Company shall issue a certificate without such
legend to the holder of such security if such security is registered under the
Securities Act, or if such holder provides the Company with an opinion of
counsel (which may be counsel for the Company) reasonably acceptable to the
Company to the effect that a public sale or transfer of such security may be
made without registration under the Securities Act or (iii) such holder provides
the Company with reasonable assurances, which may, at the option of the Company,
include an opinion of counsel satisfactory to the Company, that such security
can be sold pursuant to Section (k) of Rule 144 under the Securities Act.
-3-
3. Registration Rights.
3.1 Company Registration.
(a) Notice of Registration. If at any time or from time to time
the Company shall determine to register any of its securities, either for its
own account or the account of a security holder or holders, other than (i) a
registration relating solely to employee benefit plans, (ii) a registration
relating solely to a Commission Rule 145 transaction or (iii) a registration
relating to the initial underwritten public offering of the Company's securities
pursuant to a registration statement filed under the Securities Act:
(i) promptly give to each Holder written notice thereof; and
(ii) include in such registration (and any related
qualification under blue sky laws or other compliance), and in any underwriting
involved therein, all the Registrable Securities specified in a written request
or requests, made within 10 days after receipt of such written notice from the
Company, by any Holder.
(b) Underwriting. If the registration of which the Company gives
notice is for a registered public offering involving an underwriting, the
Company shall so advise the Holders as a part of the written notice given
pursuant to Section 3.1(a)(i). In such event the right of any Holder to
registration pursuant to this Section 3.1 shall be conditioned upon such
Holder's participation in such underwriting and the inclusion of Registrable
Securities in the underwriting to the extent provided herein. All Holders
proposing to distribute their securities through such underwriting shall
(together with the Company) enter into an underwriting agreement in customary
form with the managing underwriter selected for such underwriting by the
Company. Notwithstanding any other provision of this Section 3.1, if the
managing underwriter determines that marketing factors require a limitation of
the number of shares to be underwritten, the managing underwriter may limit the
Registrable Securities and other securities to be distributed through such
underwriting to (i) in the case of the first underwritten public offering of the
securities of the Company, any amount or no amount, as the managing underwriter
may determine, or (ii) in the case of any registration subsequent to the first
underwritten public offering of the securities of the Company, to not less than
thirty three percent (33%) of the total securities covered by the registration.
The Company shall so advise all Holders distributing their securities through
such underwriting of such limitation and the number of shares of Registrable
Securities that may be included in the registration and underwriting shall be
allocated among all Holders in proportion, as nearly as practicable, to the
respective amounts of Registrable Securities held by such Holders at the time of
filing the registration statement. To facilitate the allocation of shares in
accordance with the above provisions, the Company may round the number of shares
allocated to any Holder or holder to the nearest 100 shares. If any Holder or
holder disapproves of the terms of any such underwriting, such Holder or holder
may elect to withdraw therefrom by written notice to the Company and the
managing underwriter. Any securities excluded or withdrawn from such
underwriting shall be withdrawn from such registration, and shall not be
transferred in a public distribution prior to 90 days after the effective date
of the registration statement relating thereto, or such other shorter period of
time as the underwriters may require.
-4-
(c) Right to Terminate Registration. The Company shall have the
right to terminate or withdraw any registration initiated by it under this
Section 3.1 prior to the effectiveness of such registration whether or not any
Holder has elected to include securities in such registration. The Registration
Expenses of such withdrawn registration shall be borne by the Company in
accordance with Section 3.2 hereof.
3.2 Expenses of Registration. All Registration Expenses incurred in
connection with registrations pursuant to Section 3.1 shall be borne by the
Company. All Selling Expenses relating to securities registered on behalf of the
Holders shall be borne by the holders of securities included in such
registration pro rata with the Company and among each other on the basis of the
number of shares so registered.
3.3 Registration Procedures. In the case of each registration,
qualification or compliance effected by the Company pursuant to this Section 3,
the Company will keep each Holder advised in writing as to the initiation of
each registration, qualification and compliance and as to the completion
thereof. At its expense the Company will:
(a) Prepare and file with the Commission a registration statement
with respect to such securities and use its best efforts to cause such
registration statement to become and remain effective for the lesser of (i) one
hundred eighty (180) days and (ii) the time required to complete the
distribution described in the registration statement;
(b) Prepare and file with the Commission such amendments and
supplements to such registration statement and the prospectus used in connection
with such registration statement as may be necessary to comply with the
provisions of the Securities Act with respect to the disposition of all
securities covered by such registration statement.
(c) Furnish to the Holders participating in such registration and
to the underwriters of the securities being registered such reasonable number of
copies of the registration statement, preliminary prospectus, final prospectus
and such other documents as such underwriters may reasonably request in order to
facilitate the public offering of such securities.
(d) Furnish, at the request of any Holder requesting registration
of Registrable Securities that are delivered to the underwriters for sale in
connection with a registration pursuant to this Section 3.3, (i) an opinion,
dated such date, of the counsel representing the Company for the purposes of
such registration, in form and substance as is customarily given to underwriters
in an underwritten public offering, addressed to the underwriters, if any, and
to the Holders requesting registration of Registrable Securities and (ii) a
letter dated such date, from the independent accountants of the Company, in form
and substance as is customarily given by independent accountants to underwriters
in an underwritten public offering, addressed to the underwriters, if any, and
to the Holders requesting registration of Registrable Securities.
3.4 Indemnification.
(a) The Company will indemnify each Holder, each of its officers,
directors, partners and legal counsel, and each person controlling such Holder
within the meaning of
-5-
Section 15 of the Securities Act, with respect to which registration,
qualification or compliance has been effected pursuant to this Section 3, and
each underwriter, if any, and each person who controls any underwriter within
the meaning of Section 15 of the Securities Act, against all expenses, claims,
losses, damages or liabilities (or actions in respect thereof), including any of
the foregoing incurred in settlement of any litigation, commenced or threatened,
arising out of or based on any untrue statement (or alleged untrue statement) of
a material fact contained in any registration statement, prospectus, offering
circular or other document, or any amendment or supplement thereto, incident to
any such registration, qualification or compliance, or based on any omission (or
alleged omission) to state therein a material fact required to be stated therein
or necessary to make the statements therein, in light of the circumstances in
which they were made, not misleading, or any violation by the Company of the
Securities Act or any rule or regulation promulgated under the Securities Act
applicable to the Company in connection with any such registration,
qualification or compliance, and the Company will reimburse each such Holder,
each of its officers, directors, partners, and legal counsel and each person
controlling such Holder, each such underwriter and each person who controls any
such underwriter, for any legal and any other expenses reasonably incurred in
connection with investigating, preparing or defending any such claim, loss,
damage, liability or action, provided that the Company will not be liable in any
such case to the extent that any such claim, loss, damage, liability or expense
arises out of or is based on any untrue statement or omission or alleged untrue
statement or omission, made in reliance upon and in conformity with written
information furnished to the Company by an instrument duly executed by such
Holder, controlling person or underwriter and stated to be specifically for use
therein.
(b) Each Holder will, if Registrable Securities held by such
Holder are included in the securities as to which such registration,
qualification or compliance is being effected, indemnify the Company, each of
its directors, officers, and legal counsel, each underwriter, if any, of the
Company's securities covered by such a registration statement, each person who
controls the Company or such underwriter within the meaning of Section 15 of the
Securities Act, and each other Holder, each of its officers, directors, partners
and legal counsel and each person controlling such Holder within the meaning of
Section 15 of the Securities Act, against all claims, losses, damages and
liabilities (or actions in respect thereof) arising out of or based on any
untrue statement (or alleged untrue statement) of a material fact contained in
any such registration statement, prospectus, offering circular or other
document, or any omission (or alleged omission) to state therein a material fact
required to be stated therein or necessary to make the statements therein not
misleading, and will reimburse the Company, such Holders, such directors,
officers, persons, underwriters or control persons for any legal or any other
expenses reasonably incurred in connection with investigating or defending any
such claim, loss, damage, liability or action, in each case to the extent, but
only to the extent, that such untrue statement (or alleged untrue statement) or
omission (or alleged omission) is made in such registration statement,
prospectus, offering circular or other document in reliance upon and in
conformity with written information furnished to the Company by an instrument
duly executed by such Holder and stated to be specifically for use therein.
Notwithstanding the foregoing, the liability of each Holder under this
subsection (b) shall be limited in an amount equal to the proceeds to each such
Holder of Registrable Securities sold as contemplated herein, unless such
liability resulted from willful misconduct by such Holder. A Holder will not be
required to enter into any agreement or undertaking in connection with any
registration under this Section 3 providing for
-6-
any indemnification or contribution on the part of such Holder greater than the
Holder's obligations under this Section 3.4(b).
(c) Each party entitled to indemnification under this Section 3.4
(the "Indemnified Party") shall give notice to the party required to provide
indemnification (the "Indemnifying Party") promptly after such Indemnified Party
has actual knowledge of any claim as to which indemnity may be sought, and shall
permit the Indemnifying Party to assume the defense of any such claim or any
litigation resulting therefrom, provided that counsel for the Indemnifying
Party, who shall conduct the defense of such claim or litigation, shall be
approved by the Indemnified Party (whose approval shall not unreasonably be
withheld), and the Indemnified Party may participate in such defense at such
party's expense, and provided further that the failure of any Indemnified Party
to give notice as provided herein shall not relieve the Indemnifying Party of
its obligations under this Section 3 unless the failure to give such notice is
materially prejudicial to an Indemnifying Party's ability to defend such action
and provided further, that the Indemnifying Party shall not assume the defense
for matters as to which there is a conflict of interest or separate and
different defenses but shall bear the expense of such defense nevertheless. No
Indemnifying Party, in the defense of any such claim or litigation, shall,
except with the consent of each Indemnified Party, consent to entry of any
judgment or enter into any settlement which does not include as an unconditional
term thereof the giving by the claimant or plaintiff to such Indemnified Party
of a release from all liability in respect to such claim or litigation.
3.5 Information by Holder. The Holder or Holders of Registrable
Securities included in any registration shall furnish to the Company such
information regarding such Holder or Holders, the Registrable Securities held by
them and the distribution proposed by such Holder or Holders as the Company may
request in writing and as shall be required in connection with any registration,
qualification or compliance referred to in this Section 3.
3.6 Rule 144 Reporting. With a view to making available the benefits
of certain rules and regulations of the Commission which may at any time permit
the sale of the Restricted Securities to the public without registration, after
such time as a public market exists for the Common Stock of the Company, the
Company agrees to use its best efforts to:
(a) Make and keep public information available, as those terms
are understood and defined in Rule 144 under the Securities Act, at all times
after the effective date that the Company becomes subject to the reporting
requirements of the Securities Act or the Securities Exchange Act of 1934, as
amended.
(b) Use its best efforts to file with the Commission in a timely
manner all reports and other documents required of the Company under the
Securities Act and the Securities Exchange Act of 1934, as amended (at any time
after it has become subject to such reporting requirements);
(c) So long as a Purchaser owns any Restricted Securities to
furnish to the Purchaser forthwith upon request a written statement by the
Company as to its compliance with the reporting requirements of said Rule 144
(at any time after 90 days after the effective date of the first registration
statement filed by the Company for an offering of its securities to the general
public),
-7-
and of the Securities Act and the Securities Exchange Act of 1934 (at any time
after it has become subject to such reporting requirements), a copy of the most
recent annual or quarterly report of the Company, and such other reports and
documents of the Company and other information in the possession of or
reasonably obtainable by the Company as a Purchaser may reasonably request in
availing itself of any rule or regulation of the Commission allowing a Purchaser
to sell any such securities without registration.
3.7 Transfer of Registration Rights. The rights to cause the Company
to register securities granted Holders under Section 3.1 may be assigned to a
transferee or assignee in connection with any transfer or assignment of
Registrable Securities by a Holder of not less than 138,611 shares of
Registrable Securities, or to any transferee or assignee who is a constituent
partner of a Holder or the estate of such constituent partner, provided that
such transfer may otherwise be effected in accordance with applicable securities
laws.
3.8 Standoff Agreement. Each Holder agrees, provided that the officers
and directors of the Company agree to be bound by terms substantially identical
to those contained in this Section 3.8, in connection with the Company's initial
public offering of the Company's securities, upon request of the Company or the
underwriters managing any underwritten offering of the Company's securities, (i)
not to sell, make any short sale of, loan, grant any option for the purchase of,
or otherwise dispose of any Registrable Securities (other than those included in
the registration) without the prior written consent of the Company or such
underwriters, as the case may be, for such period of time (not to exceed one
hundred eighty (180) days) from the effective date of such registration as may
be requested by the underwriters and (ii) further agrees to execute any
agreement reflecting (i) above as may be requested by the underwriters at the
time of the public offering.
3.9 Termination of Registration Rights. The rights granted under this
Section 3 shall terminate on the third anniversary of the consummation of the
initial underwritten public offering of the Company's securities pursuant to a
registration statement filed under the Securities Act.
4. Bioject's Right of First Refusal.
4.1 Right of First Refusal Upon Issuances of Securities by the
Company.
(a) The Company hereby grants, on the terms set forth in this
Section 4.1, to Bioject the right of first refusal to purchase all or any part
of Bioject's pro rata share of the New Securities (as defined in Section 4.1(b))
which the Company may, from time to time, propose to sell and issue. Bioject may
purchase said New Securities on the same terms and at the same price at which
the Company proposes to sell the New Securities. The pro rata share of Bioject
("Bioject's Pro Rata Share"), for purposes of this right of first refusal, is
(except as set forth in paragraph 4.1(e) below) the ratio of the total number of
shares of Common Stock held by Bioject, to the total number of shares of Common
Stock outstanding immediately prior to the issuance of the New Securities
(including any shares of Common Stock into which any outstanding shares of
Preferred Stock are convertible).
-8-
(b) "New Securities" shall mean any capital stock of the Company,
whether now authorized or not, and any rights, options or warrants to purchase
said capital stock, and securities of any type whatsoever that are, or may
become, convertible into said capital stock; provided that "New Securities" does
not include (i) currently outstanding securities, (ii) securities issuable upon
conversion or exercise of or with respect to outstanding options or convertible
securities, (iii) securities offered pursuant to a registration statement filed
under the Securities Act, (iv) securities issued pursuant to the acquisition of
another corporation by the Company by merger, purchase of substantially all of
the assets or other reorganization, (v) all shares of Common Stock or other
securities hereafter issued or issuable to officers, directors, employees,
scientific advisors or consultants of the Company pursuant to any employee or
consultant stock offering, plan, arrangement or agreement approved by the Board
of Directors of the Company, (vi) all shares of Common Stock or other securities
hereafter approved for issuance by the Company's board of directors and issued
at fair market value (as determined in good faith by the Company's board of
directors) in connection with or as consideration for acquisition or licensing
of technology, (vii) all shares of Common Stock or other securities approved for
issuance by the Company's board of directors and issued at fair market value (as
determined in good faith by the Company's board of directors) in connection with
equipment leasing or equipment financing arrangements, (viii) up to 2,000,000
shares of Series B Preferred Stock which may be issued from time to time by the
Company.
(c) In the event the Company proposes to undertake an issuance of
New Securities, it shall give to Bioject written notice (the "Notice") of its
intention, describing the type of New Securities, the price, the terms upon
which the Company proposes to issue the same, and a statement as to the number
of days from receipt of such Notice within which Bioject must respond to such
Notice. Bioject shall have thirty (30) days from the date of receipt of the
Notice to purchase any or all of Bioject's Pro Rata Share of the New Securities
for the price and upon the terms specified in the Notice by giving written
notice to the Company and stating therein the quantity of New Securities to be
purchased and forwarding payment for such New Securities to the Company if
immediate payment is required by such terms, or in any event no later than
thirty (30) days after the date of receipt of the Notice.
(d) In the event Bioject fails to exercise in full the right of
first refusal within said thirty (30) day period, the Company shall have ninety
(90) days thereafter to sell or enter into an agreement (pursuant to which the
sale of New Securities covered thereby shall be closed, if at all, within thirty
(30) days from date of said agreement) to sell the New Securities and any
portion of Bioject's Pro Rata Share of New Securities respecting which Bioject's
rights were not exercised, at a price and upon general terms no more favorable
to the investors thereof than specified in the Notice. In the event the Company
has not sold the New Securities within said ninety (90) day period (or sold and
issued New Securities in accordance with the foregoing within thirty (30) days
from the date of said agreement), the Company shall not thereafter issue or sell
any New Securities without first offering such securities to Bioject in the
manner provided above.
(e) The right of first refusal granted under this Section 4.1
shall expire upon:
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(i) The date upon which a registration statement filed by
the Company under the Securities Act (other than a registration of securities in
a Rule 145 transaction or with respect to an employee benefit plan) in
connection with an underwritten public offering of its securities first becomes
effective and the securities registered thereunder are sold.
(ii) The date on which Bioject no longer holds a minimum of
138,611 Shares.
(f) The right of first refusal granted under this Section 4.1 is
not assignable with respect to blocks of less than 138,611 shares.
5. General Provisions.
5.1 Amendment and Waiver. Any term of this Agreement may be amended
and the observance of any term of this Agreement may be waived (either generally
or in a particular instance and either retroactively or prospectively), only
with the written consent of the Company and the holders of a majority of the
Shares. Any amendment or waiver effected in accordance with this Section 5.1
shall be binding upon each holder of any Shares at the time outstanding, each
future holder of all such securities and the Company.
5.2 Governing Law. This Agreement shall be governed by and construed
under the laws of the State of California.
5.3 Successors and Assigns. Except as otherwise expressly provided,
the provisions of this Agreement shall inure to the benefit of, and be binding
upon, the successors, assigns, heirs, executors, and administrators of the
parties.
5.4 Severability. In case any provision of this Agreement becomes or
is declared by a court of competent jurisdiction to be unenforceable, this
Agreement shall continue in full force and effect without said provision;
provided, however, that no such severability shall be effective if it materially
changes the economic benefit of this Agreement to any party.
5.5 Notices. All notices and other communications required or
permitted hereunder shall be in writing and shall be deemed effectively given
upon personal delivery or upon deposit with the United States Post Office, by
first class mail, postage prepaid, addressed: (a) if to Bioject, at its current
address or at such other address as Bioject shall have furnished to the Company
in writing, or (b) if to the Company, at its current address or at such other
address as the Company shall have furnished to Bioject in writing.
5.6 Counterparts. This Agreement may be executed in any number of
counterparts, each of which is an original, and all of which together shall
constitute one instrument.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, this Agreement has been executed as of the date
first above written.
ANGIOSENSE, INC. BIOJECT, INC.
a Delaware corporation an Oregon corporation
By: ------------------------------- By: -------------------------------
Title: ---------------------------- Title: -------------------------------
- ----------------------------------- -----------------------------------
(Address) (Address)
- ----------------------------------- -----------------------------------
EXHIBIT B
SCHEDULE OF EXCEPTIONS
This Schedule of Exceptions is made and given pursuant to Section 7 of the
AngioSense, Inc. Stock Purchase Agreement dated September 21st, 1999 (the
"Agreement") by and between AngioSense, Inc., a Delaware corporation (the
"Company") and Bioject, Inc., an Oregon corporation ("Bioject"). The paragraph
numbers in this Schedule of Exceptions correspond to the paragraph numbers in
the Agreement which are modified by the disclosures made herein; however, any
information disclosed herein under any paragraph number shall be deemed to be
disclosed and incorporated into any other paragraph number under the Agreement
where such disclosure would be appropriate. Any terms used herein which are
defined in the Agreement shall have the meanings described in the Agreement
unless the context otherwise requires.
7.3 Capitalization.
As of the date of and immediately prior to the execution of the Agreement,
the number of authorized and outstanding shares of each class and series of the
Company's capital stock is as follows:
Authorized Outstanding
---------- -----------
Common Stock 20,000,000 2,990,000
Series A Preferred Stock 750,000 750,000
Series B Preferred Stock 2,000,000 107,500
The Company has adopted a 1999 Stock Plan (the "Plan") and has reserved an
aggregate of 1,000,000 shares of its Common Stock for issuance under the Plan to
employees, directors and consultants. No options or other rights to purchase
shares under the Plan are currently outstanding and all 1,000,000 shares are
available for grant under the Plan.