EXHIBIT 10.30
AMENDED AND RESTATED LICENSE AND DEVELOPMENT AGREEMENT
THIS AMENDED AND RESTATED LICENSE AGREEMENT (the "Amended Agreement")
is made and entered into this ______day of April 2001, between ECHOCATH, INC.
("EchoCath"), a corporation organized and existing under the laws of the State
of New Jersey, and CRITICAL CARE INNOVATIONS, INC. ("CCI"), a corporation
organized and existing under the laws of the Commonwealth of Virginia.
W I T N E S S E T H:
WHEREAS, EchoCath is the owner of technology and patents relating to
enhancing the visualization of biopsy needles or other metallic devices being
guided by ultrasound;
WHEREAS, CCI is involved in the development and distribution of medical
equipment;
WHEREAS, EchoCath and CCI are parties to a License and Development
Agreement dated January 15, 2000 (the "Agreement") which granted to CCI an
exclusive license to use and develop certain EchoCath technology and patents
relating to enhancing the visualization of biopsy needles or other metallic
devices guided by ultrasound;
WHEREAS, EchoCath and CCI desire to amend and restate the Agreement as
more particularly set forth herein,
NOW, THEREFORE, in consideration of the mutual promises contained
herein, the recitals set forth above, which are hereby incorporated by reference
herein, and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties agree as follows:
ARTICLE 1
DEFINITIONS
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1.1 Specific Definitions. As used in this Amended Agreement, the
following terms have the meanings set forth or referenced below:
"Affiliate" The term "Affiliate" as used herein shall mean with respect
to any specified Person, any other Person that directly or indirectly
through one or more intermediaries, controls, or is controlled by, or
is under common control with, the Person specified. For purposes of
this definition, "control" including, with correlative meanings, the
terms "controlled by" and "under common control with" means ownership
directly or indirectly of more than fifty percent (50%) of the equity
capital having the right to vote for election of directors in the case
of a corporation and more than fifty percent (50%) of the beneficial
interest in the case of a business entity other than a corporation.
"Confidential Information" means know-how, trade secrets, and
unpublished information disclosed (whether before or during the term of
this Amended Agreement) by one of the parties (the "disclosing party")
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to the other party (the "receiving party") or generated under this
Amended Agreement, excluding information which:
(a) was already in the possession of receiving party prior to
its receipt from the disclosing party (provided that the receiving
party is able to provide the disclosing party with reasonable
documentary proof thereof);
(b) is or becomes part of the public domain by reason of acts
not attributable to the receiving party;
(c) is or becomes available to receiving party from a source
other than the disclosing party which source, to the best of receiving
party's knowledge, has rightfully obtained such information and has no
obligation of non-disclosure or confidentiality to the disclosing party
with respect thereto;
(d) is made available by the disclosing party to a third party
unaffiliated with the disclosing party on an unrestricted basis;
(e) has been independently developed by the receiving party
without breach of this Amended Agreement or use of any Confidential
Information of the disclosing party; or
(f) has been or must be publicly disclosed by reason of legal,
accounting or regulatory requirements beyond the reasonable control,
and despite the reasonable efforts of the receiving party.
"Effective Date" means the date of the effective date of the Agreement,
January 15, 2000.
"EchoCath" means EchoCath, Inc. and its Affiliates.
"ColorMark(R)" is a trademark of EchoCath and, within this Amended
Agreement, means the technology of EchoCath for enhancing the
visualization of biopsy needles or other metallic devices being guided
by ultrasound, as more particularly described by the U.S. Patents
listed on Exhibit A.
"Field of Use" means all soft tissue needle biopsies and cancer therapy
guidance, including veterinary applications of the same. The Field of
Use specifically excludes the use of the Licensed Technology (i) in the
field of electrophysiology; and (ii) cardiac applications except for
the delivery of localized chemotherapy or other cancer therapies via
catheters, probes or other delivery systems within the vascular system.
"Governmental Regulations" means any and all laws, regulations, etc. of
any federal, state or local governmental authority with jurisdiction
over the distribution of Products.
"Invention" means any invention, discovery, know-how, trade secret,
data, information, technology, process or concept, whether or not
patented or patentable, and whether or not memorialized in writing.
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"Licensed Technology" means the ColorMark(R) technology, and
shall include (a) all EchoCath U.S. and foreign patents and patent
applications, currently existing or existing in the future, related
thereto, including, but not limited to, the patents and patent
applications listed in the attached Exhibit A, referred to herein as
the "EchoCath Patents", and (b) all know-how, trade secrets, trade
names inventions, discoveries, and any and all intellectual property
and technical information, including, but not limited to, information
embodied in drawings, designs, copyrights, copyright applications,
trademarks, trade applications, material specifications, processing
instructions, formulas, equipment specifications, product
specifications, confidential data, computer software, electronic files,
research notebooks, invention disclosures, research and development
reports and the like related thereto.
"CCI" means Critical Care Innovations, Inc. and its Affiliates.
"Option Payments" means any and all amounts paid by CCI to EchoCath
prior to or after the Effective Date in consideration of EchoCath
granting to CCI an option to acquire an exclusive license to the
Licensed Technology, including, but not limited to, payments made by
CCI to EchoCath in accordance with the terms and conditions of a
certain Option Agreement entered into by and between CCI and EchoCath
on April 16, 1999, and any extensions and modifications thereof.
Person. As used herein, the term "Person" shall mean any individual,
corporation, partnership, business trust, business association,
governmental entity, governmental authority or other legal entity.
"Product" means any device which utilizes, incorporates, is based upon
or depends upon the Licensed Technology.
"Quarter" shall mean four (4) equal three (3) month periods in a
calendar year, each such period beginning on January 1, April 1, July
1, and October 1 of a calendar year.
ARTICLE 2
LICENSE TO CRITICAL CARE INNOVATIONS
------------------------------------
2.1 Grant of License. Subject to the terms and conditions of this
Amended Agreement, EchoCath hereby grants to CCI, and CCI hereby accepts from
EchoCath, an exclusive worldwide license to the Licensed Technology to
manufacture, make, have made, promote, market, use, distribute, sell and have
sold Products incorporating or utilizing, and to otherwise commercialize and
exploit, the Licensed Technology in the Field of Use, including the right to
grant sublicenses in the Field of Use and the right of CCI to sue third parties
for alleged infringement and/or misappropriation of the Licensed Technology and
EchoCath's Patents.
2.2 Term of License. Unless otherwise terminated under provisions of
this Amended Agreement, CCI's rights and obligations under this Amended
Agreement shall continue in full force and effect so long as CCI continues to
produce any Product using Licensed Technology until the last of the EchoCath
Patents expire without possibility of renewal.
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2.3 Termination of License.
(a) Notwithstanding anything to the contrary contained herein, CCI
may terminate this Amended Agreement upon six (6) months written notice to
EchoCath. Upon such termination, the parties shall do a complete and final
accounting and upon payment of any outstanding royalties, CCI shall have no
further liability hereunder.
(b) EchoCath shall have the right to terminate this Amended
Agreement upon thirty (30) days notice to CCI in the event of CCI's breach or
violation of any of the terms and conditions of this Agreement. (This thirty
(30) day period shall hereinafter be referred to as the "Notice Period"). The
foregoing notice shall state with particularity the nature of the asserted
breach or violation by CCI. CCI shall have the right to cure the breach or
violation during the Notice Period and for an additional thirty (30) day period
after the expiration of the Notice Period (this thirty (30) day period shall
hereinafter be referred to as the "Cure Period"). In the event that CCI cures
the breach or violation during the Notice Period or the Cure Period, the notice
of violation shall be null and void and this Amended Agreement shall return to
its prior status. In the event that CCI does not cure the breach or violation
prior to the expiration of the Cure Period, this Amended Agreement may be
terminated by Echocath in its sole discretion, by written notice to CCI.
2.4 Regulatory Approvals. CCI shall be solely responsible for obtaining
any and all governmental regulatory approvals which may be required to
distribute the Products anywhere in the world. EchoCath shall provide CCI with
any and all reasonable support to assist CCI in obtaining such governmental
regulatory approvals. Except in those instances where such regulatory approval
is applicable to areas not limited by the Field of use, EchoCath shall transfer
to CCI, as part of the License Agreement, any and all governmental regulatory
approvals which EchoCath has previously obtained for the Products. Where such
regulatory approvals encompass areas greater than the Field of Use, EchoCath
shall take such actions as required under the circumstances to extend and ensure
such regulatory approval to include CCI's ability to distribute Products. CCI
shall cooperate with EchoCath in regards to such actions.
ARTICLE 3
LICENSE ACQUISITION FEES
------------------------
3.1 Consideration. In exchange for the grant of exclusive license
rights of the Licensed Technology in the Field of Use, CCI agrees to pay to
EchoCath a non-refundable license fee of One Million One Hundred Thousand
Dollars ($1,100,000) as enumerated below:
(a) One hundred and Fifteen Thousand Dollars ($115,000) heretofore
paid to EchoCath pursuant to the Agreement;
(b) A payment in the amount of Two Hundred Ten Thousand Dollars
($210,000) upon execution of this Amended Agreement, in return for an assignment
of the EchoCath Patents as more particularly set forth in the Assignment of
Patents , attached hereto and subject to the Escrow Agreement attached hereto;
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(c) Four Hundred Thousand Dollars ($400,000) upon the first
anniversary of the execution of this Amended Agreement; and
(d) Three Hundred Seventy Five Thousand Dollars ($375,000) upon the
second anniversary of the execution of this Amended Agreement.
ARTICLE 4
ROYALTIES AND REPORTS
---------------------
4.1 Royalties. CCI shall pay to EchoCath a royalty in an amount equal
to five and one-half percent (5.5%) of Net Sales of any and all Products which
use EchoCath's licensed technologies manufactured by CCI and sold to third
parties in a given Quarter. CCI shall pay EchoCath one-third (1/3) of any
royalties received by CCI on account of any sublicenses granted hereunder by
CCI. As used herein, "Net Sales" shall mean gross invoice price less expenses
attributable to transportation, insurance or other similar out-of-pocket
expenses paid to third parties in connection with shipment and delivery of the
Products, and, less sales tax, import duties and other taxes not related to the
net income of CCI. In the event that the Products are sold in kit form in
combination with other products, Net Sales of such kitted Products shall be
determined by adding the list prices of all products in the kit and dividing
same by the sales price of the kit. The resulting percentage discount shall be
applied against the average selling price of the Products to determine their Net
Sales price. Royalties paid shall be on only the pro rata share of the kit price
which the product that uses the technologies is part of.
4.2 Reports and Payments. Within thirty (30) days after the end of each
Quarter, CCI shall provide EchoCath with a written report indicating the number
of each type of Product sold during the previous Quarter and the amount of the
royalties due to EchoCath for the previous Quarter. Simultaneously with making
such report and to the extent a payment is due to EchoCath, CCI shall pay the
royalty due to EchoCath as computed pursuant to the terms of this Amended
Agreement.
4.3 Records. CCI agrees to keep accurate written records sufficient in
detail to enable CCI and EchoCath to determine and verify the royalty payment
due to EchoCath pursuant to the terms of this Amended Agreement. CCI shall
retain all records for a given Quarter for a period of not less than three (3)
years following the end of such Quarter.
4.4 Audit of Records. Upon reasonable notice and during regular
business hours, CCI shall from time to time, but no more frequently than
annually, make available the records referred to in Section 4.3 for audit by an
independent party mutually agreed to by the parties for the purpose of verifying
the accuracy of the reports prepared by CCI pursuant to paragraph 4.2 herein.
Such audit shall be performed at EchoCath's sole and exclusive expense. The
parties shall require the independent party to execute a suitable
confidentiality agreement reasonably acceptable to CCI and EchoCath prior to
conducting such audit. Such representatives shall only disclose to EchoCath its
conclusions regarding the accuracy and completeness of CCI's royalty payments
and records related thereto, and shall not disclose to EchoCath CCI's
confidential business information. In the event the audit report of the
independent party concludes that CCI underpaid royalties to EchoCath in an
amount in excess of ten percent (10%), then CCI shall reimburse EchoCath's out
of pocket expenses associated with the audit.
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ARTICLE 5
ANNUAL MINIMUM ROYALTY
----------------------
5.1 Minimum Royalty. In every twelve month period, commencing on the
fourth anniversary of the execution of this Amended Agreement, Critical Care
Innovations shall pay to EchoCath a minimum royalty of $300,000.00; $500,000.00
on the fifth anniversary, and $800,000.00 on the sixth anniversary, and in
succeeding years the minimum annual royalty shall increase by an amount equal to
3% each year. To the extent that in any given fiscal year the actual royalties
paid by CCI do not equal or exceed the then applicable minimum royalty,
simultaneously with CCI's payment of the royalties due for the final quarter of
the applicable fiscal year, CCI shall also pay to EchoCath an amount equal to
the difference between such actual royalty payments and the applicable minimum
royalty. For example, for the fiscal year commencing with the fourth anniversary
of the execution of this agreement, if the actual royalties paid were $280,000,
the minimum royalty payment would be $20,000 ($300,000 - $280,000 = $20,000).
ARTICLE 6
DEVELOPMENT AGREEMENT
---------------------
6.1 Development Agreement. As requested by CCI, EchoCath shall prepare
one or more proposals for certain development work to be specified by CCI. To
the extent that CCI accepts or rejects, at its sole discretion, any such
proposal in writing, each proposal shall, when accompanied by EchoCath's terms
and conditions as agreed upon by both parties, constitute a development
agreement between the parties.
ARTICLE 7
INTELLECTUAL PROPERTY
---------------------
7.1 Pre-existing Intellectual Property. Any intellectual property that
exists as of the execution of this Amended Agreement shall remain the property
of its original owner, whether or not it is shared with or used by the other
party for the purpose of this Amended Agreement.
7.2 Sole Inventions. Any Inventions made individually by a party during
the term of this Amended Agreement shall remain the property of the inventing
party.
7.3 Joint Inventions. Any Inventions made jointly by agents of CCI and
EchoCath ("Joint Inventions") shall be owned jointly by CCI and EchoCath. Each
party shall have joint rights to use and license such Joint Inventions; however,
CCI shall have exclusive rights to license Joint Inventions within the Field of
Use and shall be entitled to 20% of license fees which EchoCath receives from
other licensees relating to the use of the Joint Inventions outside of the Field
of Use. As products are shown to be enhanced by the Joint Invention
technologies, through the implementation and use of these technologies in these
other Fields of Use, CCI will be paid this pro rata share of license fees which
have been received by EchoCath through the use of the Joint Invention
technologies in other Fields of Use. Provided however, that the foregoing
requirement to pay royalties to CCI shall not apply in instances where, due to a
written agreement executed prior to the Effective Date, all of which are set
forth on Exhibit B attached hereto, another licensee of EchoCath has rights to
such inventions without payment of any additional royalties other than the
standard royalties set forth in that licensee's agreement with EchoCath.
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ARTICLE 8
CERTAIN REPRESENTATIONS, WARRANTIES AND INDEMNITIES
---------------------------------------------------
8.1 Representations and Warranties of EchoCath. EchoCath represents and
warrants to CCI as follows:
(a) The execution and delivery by EchoCath of this Amended
Agreement and the performance by EchoCath of its obligations hereunder have been
duly authorized by all requisite corporate action and will not violate any
provision of law, any order of any court or other agency of government, the
Certificate of Incorporation or Bylaws of EchoCath, as amended, or any provision
of any indenture, agreement or other instrument to which EchoCath or any of its
properties or assets is bound, or conflict with, result in a breach of or
constitute (with due notice or lapse of time or both) a default under any such
indenture, agreement or other instrument, or result in the creation or
imposition of any lien, charge, restriction, claim or encumbrance of any nature
whatsoever upon any of the properties or assets of EchoCath.
(b) This Amended Agreement has been duly executed and delivered by
EchoCath and constitutes the legal, valid and binding obligation of EchoCath,
enforceable in accordance with its terms, subject, as to the enforcement of
remedies, to the discretion of the courts in awarding equitable relief and to
applicable bankruptcy, reorganization, insolvency, moratorium and similar laws
affecting the rights of creditors generally.
(c) EchoCath is the owner, or has the right to grant this exclusive
license with the right to grant sublicenses in the Field of Use, of all right,
title and interest in and to the Licensed Technology and the EchoCath Patents
free and clear of any liens, mortgages, charges, security interests, pledges,
encumbrances, assessments, restrictions or other third-party claims of any
nature and has the right to grant to CCI this exclusive license for the Licensed
Technology and the EchoCath Patents;
(d) EchoCath has not granted the rights which it hereunder grants
to CCI to any other party.
(e) To the best of EchoCath's knowledge, CCI's use of the Licensed
Technology in the Field of Use will not infringe, misuse, misappropriate or
conflict with the rights, including patent and other intellectual property
rights or contract rights, of others.
(f) EchoCath is the true and lawful owner of all patents,
copyrights, trademarks, trade names and other intellectual property associated
with the Licensed Technology and the EchoCath Patents.
(g) EchoCath has cancelled any and all agreements of any kind which
it may have previously entered into with any and all third parties, including,
but not limited to Medtronic, Medison, and Bard, relating to the manufacture,
sale or distribution of Products anywhere in the world.
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8.2 Representations and Warranties of CCI. CCI represents and warrants
to EchoCath as follows:
(a) The execution and delivery by CCI of this Amended Agreement and
the performance by CCI of its obligations hereunder have been duly authorized by
all requisite corporate action and will not violate any provision of law, any
order of any court or other agency of government, the Certificate of
Incorporation or Bylaws of CCI, as amended, or any provision of any indenture,
agreement or other instrument to which CCI or any of its properties or assets is
bound, or conflict with, result in a breach of or constitute (with due notice of
lapse of time or both) a default under any such indenture, agreement or other
instrument, or result in the creation or imposition of any lien, charge,
restriction, claim or encumbrance of any nature whatsoever upon any of the
properties or assets of CCI.
(b) This Amended Agreement has been duly executed and delivered by
CCI and constitutes the legal, valid and binding obligation of CCI, enforceable
in accordance with its terms, subject, as to the enforcement of remedies, to the
discretion of the courts in awarding equitable relief and to applicable
bankruptcy, reorganization, insolvency, moratorium and similar laws affecting
the right of creditors generally.
ARTICLE 9
INDEMNIFICATION
---------------
9.1 EchoCath's Liability. EchoCath shall indemnify, defend and hold
harmless CCI and each of its subsidiaries, officers, directors, employees,
shareholders and distributors from and against and in respect of any and all
demands, claims, actions or causes of action, assessments, losses, damages,
liabilities, interest and penalties, costs and expenses (including, without
limitation, reasonable legal fees and disbursements incurred in connection
therewith and in seeking indemnification therefor, and any amounts or expenses
required to be paid or incurred in connection with any action, suit, proceeding,
claim, appeal, demand, assessment or judgment) ("Indemnifiable Losses"), which
in any way arise out of EchoCath's breach of any representation, warranty,
covenant or agreement on the part of EchoCath under this Amended Agreement
(excluding matters for which CCI is responsible under Section 9.2 below).
9.2 CCI's Liability. CCI shall indemnify, defend and hold harmless
EchoCath and each of its subsidiaries, officers, directors, employees,
shareholders and suppliers from and against and in respect of any and all
demands, claims, actions or causes of action, assessments, losses, damages,
liabilities, interest and penalties, costs and expenses (including, without
limitation, reasonable legal fees and disbursements incurred in connection
therewith and in seeking indemnification therefor, and any amounts or expenses
required to be paid or incurred in connection with any action, suit, proceeding,
claim, appeal, demand, assessment or judgment) ("Indemnifiable Losses"), which
in any way arise out of any breach of representation, warranty, covenant or
agreement on the part of CCI under this Amended Agreement and any claim related
to a defect in a Product or claims of strict products liability (excluding
matters for which EchoCath is responsible under Section 9.1 above).
9.3 Third Party Claims. If a claim by a third party is made against any
indemnified party, and if the indemnified party intends to seek indemnity with
respect thereto under this Article, such indemnified party shall promptly notify
the indemnifying party of such claim; provided, however, that failure to give
timely notice shall not affect the rights of the indemnified party so long as
the failure to give timely notice does not materially adversely affect the
indemnifying party's ability to defend such claim against a third party. The
indemnifying party shall be entitled to settle or assume the defense of such
claim, including the employment of counsel satisfactory to the indemnified
party, as provided below. Regardless of which party is controlling the
settlement or defense of any claim, (i) both the indemnified party and
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indemnifying party shall act in good faith, (ii) the indemnifying party shall
not thereby permit to exist any lien, encumbrance or other adverse charge upon
any asset of any indemnified party or of its subsidiaries, (iii) the
indemnifying party shall permit the indemnified party to participate in such
settlement or defense through counsel chosen by the indemnified party, provided
that all fees, costs and expenses of such counsel in an action controlled by the
indemnifying party shall be borne by the indemnified party, unless the
indemnifying party and indemnified party have different available defenses to
such third party claim, in which case such fees, costs and expenses shall be
borne by the indemnifying party, (iv) no entry of judgment or settlement of a
claim may be agreed to without the written consent of both the indemnified party
and the indemnifying party, which consents shall not be unreasonably withheld,
and (v) the indemnifying party shall agree promptly to reimburse the indemnified
party for the full amount of such claim pursuant to this Article. So long as the
indemnifying party is reasonably contesting any such claim in good faith as
permitted herein, the indemnified party shall not pay or settle any such claim.
9.4 Cooperation as to Indemnified Liability. Each party hereto shall
cooperate fully with the other parties with respect to access to books, records,
or other documentation within such party's control, if deemed reasonably
necessary or appropriate by any party in the defense of any claim which may give
rise to indemnification hereunder.
ARTICLE 10
PROSECUTION OF PATENTS AND INFRINGEMENT
---------------------------------------
10.1 Prosecution of Infringement of Licensed Technology by Third Party.
(a) CCI and EchoCath shall promptly notify the other if it knows
or has reason to believe that rights to the Licensed Technology are being
infringed or misappropriated by a third party within the Field of Use or that
such infringement or misappropriation is threatened. CCI shall, after learning
of and investigating such alleged infringement or misappropriation, send notice
to EchoCath electing to do the following: (i) prosecute such alleged
infringement or misappropriation on CCI's own behalf; (ii) offer EchoCath the
choice of participating in such prosecution; or (iii) decline to prosecute such
alleged infringement or misappropriation. In the event CCI declines to prosecute
such alleged infringement or misappropriation due to the magnitude of the
infringement overlapping many Fields of Use, EchoCath may prosecute such alleged
infringement on its own behalf and at its own expense. While such prosecution
may be at EchoCath's expense, nothing herein shall prevent EchoCath from seeking
participation and payment of expenses from other licensees and/or from
requesting CCI's assistance and sharing of expenses.
(b) In the event CCI elects to prosecute such alleged infringement
or misappropriation on its own behalf pursuant to (a)(i) above, CCI shall be
solely responsible for its costs of prosecution and settlement incurred therein
and shall retain any and all proceeds from such prosecution. EchoCath agrees to
join as a party plaintiff to any such proceeding if, in CCI's reasonable
judgment, such joinder is necessary to a successful infringement or
misappropriation action. EchoCath shall cooperate with CCI in connection with
the initiation and prosecution by CCI of any such action.
(c) EchoCath shall be obligated to pay fifty percent (50%) of the
costs and expenses incurred by CCI and EchoCath in such prosecution and shall be
entitled to receive fifty percent (50%) of the proceeds realized from the
prosecution. Should it be shown that such infringement affects other field's of
use other than CCI's Field of Use, then EchoCath may approach its other
licensees of the Licensed Patents to request their contribution to defray the
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expenses incurred in the prosecution of the action; if the other licensees
choose to participate, they will be entitled to share in any recovery awarded in
the action, proportionately to their share of the expenses, up to a maximum of
90% participation.
(d) In the event CCI elects not to prosecute the alleged
infringement or misappropriation pursuant to (a)(iii) above, EchoCath may, at
its option, prosecute such alleged infringement or misappropriation on its own
behalf, in which event EchoCath shall be solely responsible for all costs of
prosecution and of negotiating settlement and shall retain all proceeds from
such prosecution.
ARTICLE 11
MISCELLANEOUS
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11.1 Non-Disclosure. Except as permitted or required for performance by
the party receiving such Confidential Information of its rights or duties
hereunder, for a period of three (3) years after receipt, each party agrees (i)
not to disclose or use any Confidential Information of the other party obtained
in connection with the performance of this Amended Agreement, and (ii) not to
disclose or provide any of such Confidential Information of the other party to
any third party and to take appropriate measures to prevent any such disclosure
by its present and future employees, officers, agents, subsidiaries, or
consultants.
11.2 Relationship. This Amended Agreement does not make either party
the employee, agent or legal representative of the other for any purpose
whatsoever. Neither party is granted any right or authority to assume or to
create any obligation or responsibility, express or implied, on behalf of or in
the name of the other party. In fulfilling its obligations pursuant to this
Amended Agreement, each party shall be acting as an independent contractor.
11.3 Assignment. This Amended Agreement shall be binding upon and inure
to the benefit of the parties hereto and the successors or assigns of the
parties hereto; provided, that (i) the rights and obligations of EchoCath herein
may not be assigned except to any person who succeeds to substantially all of
the assets and business of EchoCath, and (ii) the rights and obligations of CCI
herein may not be assigned except to any person who succeeds to substantially
all of that portion of CCI' business to which this Amended Agreement relates.
11.4 Complete Agreement. The Exhibits to this Amended Agreement shall
be construed as an integral part of this Amended Agreement to the same extent as
if they had been set forth verbatim herein. This Amended Agreement and the
Exhibits hereto constitute the entire agreement between the parties hereto with
respect to the subject matter hereof and supersede all prior agreements,
including the Agreement, whether written or oral relating hereto.
11.5 Survival. All of the representations, warranties, and covenants
made in this Amended Agreement, and all terms and provisions hereof intended to
be observed and performed by the parties after the termination hereof, shall
survive such termination and continue thereafter in full force and effect.
11.6 Waiver, Discharge, Amendment, Etc. The failure of any party hereto
to enforce at any time any of the provisions of this Amended Agreement shall in
no way be construed to be a waiver of any such provision, nor in any way to
affect the validity of this Amended Agreement or any part thereof or the right
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of the party thereafter to enforce each and every such provision. No waiver of
any breach of this Amended Agreement shall be held to be a waiver of any other
or subsequent breach. Any amendment to this Amended Agreement shall be in
writing and signed by the parties hereto.
11.7 Counterparts. This Amended Agreement may be executed in any number
of counterparts, each of which shall be deemed as original and all of which
together shall constitute one instrument.
11.8 Titles and Headings; Construction. The titles and headings to
Sections herein are inserted for the convenience of reference only and are not
intended to be a part of or to affect the meaning or interpretation of this
Amended Agreement. This Amended Agreement shall be construed without regard to
any presumption or other rule requiring construction hereof against the party
causing this Amended Agreement to be drafted.
11.9 Benefit. Nothing in this Amended Agreement, expressed or implied,
is intended to confer on any person other than the parties to this Amended
Agreement or their respective successors or assigns, any rights, remedies,
obligations or liabilities under or by reason of this Amended Agreement.
11.10 Notices. All notices or other communications to a party required
or permitted hereunder shall be deemed given if in writing and delivered
personally or sent by telecopy (with confirmation or transmission) or certified
mail (return receipt requested) to such party at the following addresses (or at
such other addresses as shall be specified by like notice):
if to CCI to: Critical Care Innovations, Inc.
13901 Willard Road
P.O. Box 220630
Attention: CEO/Chairman
Fax #: 703/378-4936
if to EchoCath to: EchoCath, Inc.
4326 Route One, Monmouth Junction
Princeton, New Jersey 08852
Attention: President
FAX (609) 987-1019
CCI or EchoCath may change their respective above-specified recipient and/or
mailing address by notice to the other party given in the manner herein
prescribed. All notices shall be deemed given on the day when actually delivered
as provided above (if delivered personally or by telecopy) or on the day shown
on the return receipt (if delivered by mail).
11.11 Severability. In case any provision of this Amended Agreement
shall be invalid, illegal or unenforceable, the validity, legality and
enforceability of the remaining provisions shall not in any way be affected or
impaired thereby.
11.12 Arbitration. Any controversy or claim arising out of or relating
to this Amended Agreement or the alleged breach, termination or validity hereof,
including any alleged fraud in the inducement hereof, shall be resolved by
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mediation under the auspices of the American Arbitration Association. Any such
claim or controversy which remains unresolved 45 days after appointment of a
mediator, shall be settled by binding arbitration by three (3) arbitrators in
accordance with the AAA Arbitration Rules, and judgment upon the award rendered
by the arbitrators may be entered by any court having jurisdiction thereof.
Notwithstanding the foregoing, either party may seek interim injunctive relief
from any court of competent jurisdiction. The exclusive jurisdiction for any
action or arbitration shall be within the City of Fairfax, State of Virginia.
The arbitrators shall have the right to award reasonable attorney's fees and
costs to the prevailing party.
11.13 Governing Law. This Amended Agreement shall be interpreted in
accordance with the laws of the Commonwealth of Virginia, excluding its rules
regarding conflicts of law. In the event any legal action or arbitration
proceeding is initiated to enforce the terms of this Amended Agreement, the
prevailing party shall be entitled to an award of its reasonable attorneys' fees
incurred therein.
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IN WITNESS WHEREOF, each of the parties has caused this Amended
Agreement to be executed in the manner appropriate to each, as of the date first
above written.
ECHOCATH, INC. CRITICAL CARE INNOVATIONS, Inc.
By: By:
------------------------------ -----------------------------------
Its: Its:
------------------------------ -----------------------------------
EXHIBITS:
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EXHIBIT A
For the Purposes of this Amended Agreement, the "EchoCath Patents" are:
COLORMARK(R)
U.S. Patent: 5,329,927
U.S. Patent: 5,343,865
U.S. Patent: 5,425,370
U.S. Patent: 5,421,336
U.S. Patent: 5,967,991
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EXHIBIT B (Other Licensees with written agreement executed prior to Effective
Date January 15, 2000.)
29