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EXHIBIT 10.1
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CARDIOTECH INTERNATIONAL, INC.
AMENDED AND RESTATED COMMON STOCK SUBSCRIPTION AGREEMENT
This Amended and Restated Common Stock Subscription Agreement, dated as of
May 9, 1996, is entered into by and between CardioTech International, Inc. a
Massachusetts corporation (the "Company"), and PolyMedica Industries, Inc., a
Massachusetts corporation (the "Purchaser").
1. BACKGROUND. The Company is willing to sell to the Purchaser, and the
Purchaser wishes to purchase from the Company, on the terms and subject to the
conditions herein contained, 973,758 shares (after giving effect to the net
41.95 to 1 stock split effected by the Company on May 9, 1996) of the Company's
Common Stock, $.01 par value per share (the "Common Stock") for an aggregate
purchase price consisting of cash, assets and the forgiveness of certain amounts
owed to the Purchaser with an aggregate value of $6,426,800. The Company and the
Purchaser entered into a Common Stock Subscription Agreement, dated March 19,
1996, and desire to amend and restate such Agreement.
2. CERTAIN DEFINITIONS. For the purposes of this Agreement, the following
terms have the following meanings, respectively:
"Act" means the Securities Act of 1933, as amended from time to time.
"Closing" has the meaning set forth in Section 5.
"Closing Date" has the meaning set forth in Section 5.
"Common Stock" has the meaning set forth in Section 1.
"Company" has the meaning set forth in the introductory paragraph of this
Agreement.
"Purchaser" has the meaning set forth in the introductory paragraph of this
Agreement.
"Knowledge of the Purchaser" means the actual knowledge, without
independent investigation, of Steven J. Lee, Arthur Siciliano and Eric Walters,
but does not include the knowledge of any fact or matter of which Michael
Szycher has actual knowledge.
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"Knowledge of the Company" means the actual knowledge, without independent
investigation, of Michael Szycher, but does not include the knowledge of any
fact or matter of which Steven J. Lee, Arthur Siciliano of Eric Walters has
actual knowledge.
"Material Adverse Effect" means a material adverse effect on the business
or financial condition of the Company.
3. REPRESENTATIONS AND WARRANTIES OF THE COMPANY. The Company represents
and warrants that:
(a) The Company has been duly incorporated and is an existing business
corporation under the General Laws of the Commonwealth of Massachusetts and
has the corporate power and authority to engage in the business and
activities presently conducted by it.
(b) The shares of Common Stock to be issued at Closing pursuant to
this Agreement have been duly authorized and, when issued in accordance
with this Agreement, will be validly issued, fully paid and nonassessable.
(c) To the Knowledge of the Company and except as would not have a
Material Adverse Effect, (i) the Purchaser is the lawful owner of all of
the Equipment and the Patents, free and clear of any lien or similar
encumbrance and (ii) upon the First Closing, the Company will own the
Equipment and the Patents free and clear of any lien or similar
encumbrance.
(d) To the Knowledge of the Company and except as would not have a
Material Adverse Effect, the Purchaser has the right, and no consent or
approval of any other party is required, to pay and transfer the
Consideration to the Company. Except as would not have a Material Adverse
Effect, the execution and delivery of this Agreement does not, and the
consummation of the transactions contemplated hereby and the performance by
the Purchaser of the provisions of this Agreement will not, to the
knowledge of the Company, conflict with or violate (i) any order,
arbitration award judgement or decree specifically naming Purchaser or any
of its subsidiaries and to which the Purchaser or any of its subsidiaries
is bound or (ii) any provision of any agreement or instrument to which the
Purchaser or its subsidiaries is a party or by which the assets of the
Purchaser or its subsidiaries is bound, or result in the loss of any rights
to the Patents.
(e) To the Knowledge of the Company and except as would not have a
Material Adverse Effect, (i) the Patents are not involved in any
interference, opposition or cancellation proceedings and (ii) the Purchaser
is not a licensor or licensee in respect of any of the Patents nor has it
granted any rights thereto or interest therein to any other person.
Amended and Restated Common Stock Subscription Agreement
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4. REPRESENTATIONS AND WARRANTIES OF THE PURCHASER. The Purchaser hereby
represents and warrants that:
(a) The Purchaser has full power and authority to execute, deliver and
perform this Agreement; and
(b) This Agreement has been duly executed and delivered by the
Purchaser and constitutes the valid and binding obligation of the
Purchaser, enforceable against the Purchaser in accordance with its terms,
except as limited by principles of equity and applicable bankruptcy,
insolvency, and other laws of general applicability affecting the
enforcement of creditors' rights.
(c) To the Knowledge of the Purchaser and except as would not have a
Material Adverse Effect, (i) the Purchaser is the lawful owner of all of
the Equipment and the Patents, free and clear of any lien or similar
encumbrance and (ii) upon the First Closing, the Company will own the
Equipment and the Patents free and clear of any lien or similar
encumbrance.
(d) To the Knowledge of the Purchaser and except as would not have a
Material Adverse Effect, the Purchaser has the right, and no consent or
approval of any other party is required, to pay and transfer the
Consideration to the Company. Except as would not have a Material Adverse
Effect, the execution and delivery of this Agreement does not, and the
consummation of the transactions contemplated hereby and the performance by
the Purchaser of the provisions of this Agreement will not, conflict with
or violate (i) any provisions of the Purchaser's Articles of Incorporation
or Bylaws, or (ii) to the Knowledge of Purchaser, (A) any order,
arbitration award judgement or decree specifically naming Purchaser or any
of its subsidiaries and to which the Purchaser or any of its subsidiaries
is bound or (B) any provision of any agreement or instrument to which the
Purchaser or its subsidiaries is a party or by which the assets of the
Purchaser or its subsidiaries is bound, or result in the loss of any rights
to the Patents.
(e) To the Knowledge of the Purchaser and except as would not have a
Material Adverse Effect, (i) the Patents are not involved in any
interference, opposition or cancellation proceedings and (ii) the Purchaser
is not a licensor or licensee in respect of any of the Patents nor has it
granted any rights thereto or interest therein to any other person.
Amended and Restated Common Stock Subscription Agreement
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5. PURCHASE OF COMMON STOCK. Subject to the terms and conditions herein
set forth, the Company will issue and sell to the Purchaser, and the Purchaser
will purchase from the Company, for investment, at the First Closing hereinafter
referred to, 973,758 shares of Common Stock (subject to adjustment pursuant to
Section 6 hereof) in consideration of (i) payment of cash in the amount of
$3,830,000 (the "Cash"), (ii) the transfer by the Purchaser to the Company of
the equipment listed on SCHEDULE I hereto (the "Equipment"), which Equipment has
a fair market value of approximately $147,000, (iii) the forgiveness of net
amounts due to the Purchaser from the Company in the aggregate amount of
approximately $2,449,800 (the "Cancelled Amounts"), and (iv) the assignment by
the Purchaser to the Company of all of the Purchaser's right, title and interest
in each of the patents set forth on EXHIBIT A to the Assignment of Patents
Agreement attached to this Agreement as Exhibit A (the "Patents", together with
the Cash, the Equipment and the Cancelled Amounts, the "Consideration").
The sale and purchase of the shares of Common Stock pursuant to this
Agreement shall take place at two closings (each, a "Closing"), the first such
Closing (the "First Closing") to occur on the date hereof (the "First Closing
Date"), and the second such Closing (the "Second Closing") to occur on the day
after the fifth trading day after the Distribution Date (as defined below). At
the First Closing, the Company will deliver certificates for the shares of
Common Stock being purchased hereunder against delivery of the Consideration. At
the First Closing, the Purchaser and the Company will execute the Assignment of
Patents Agreement attached to this Agreement as EXHIBIT A and the Bill of Sale
attached to this Agreement as EXHIBIT B. At the Second Closing, the Company
shall deliver certificates representing the Additional Shares (as defined
below), and such Additional Shares shall be deemed to have been paid for by
delivery of the consideration at the First Closing. The Company will bear all
expenses in connection with the preparation, issue and delivery of the
certificates for all shares issued under this Agreement.
6. ADJUSTMENT TO NUMBER OF SHARES ISSUED; ISSUANCE OF ADDITIONAL SHARES.
At such time as the Purchaser distributes the Common Stock owned by it to its
stockholders (the "Distribution Date"), in the event that the average closing
price of the Common Stock on its first five trading days after the Distribution
Date (the "Average Trading Price") is less than $4.40 per share (subject to
appropriate adjustment for stock splits, stock dividends, recapitalizations and
the like subsequent to the date hereof), the Company shall issue to the
Purchaser, without any further payment therefor, a number of shares of Common
Stock equal to the difference between (i) the result obtained by dividing
$6,426,800 by the Average Trading Price and (ii) 973,758 (subject to appropriate
adjustment for stock splits, stock dividends, recapitalizations and the like
subsequent to the date
Amended and Restated Common Stock Subscription Agreement
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hereof), up to a maximum of 486,879 additional shares of Common Stock (subject
to appropriate adjustment for stock splits, stock dividends, recapitalizations
and the like subsequent to the date hereof) (the "Additional Shares"). The
Company shall issue the Additional Shares, if any, to the Purchaser promptly
after the fifth trading day after the Distribution Date.
7. AMENDMENT OF LICENSE AGREEMENT. All licenses to technology, whether
written or oral, between the Company and the Purchaser are hereby amended and
restated in their entirety in the form of License Agreement attached hereto as
EXHIBIT C.
8. SURVIVAL OF REPRESENTATIONS. All covenants, agreements, representations
and warranties contained in this Agreement shall survive the execution and
delivery of this Agreement, any investigation at any time made by or on behalf
of a party hereto, and the purchase of shares by the Purchaser under this
Agreement and shall be deemed to have been made again at each Closing.
9. USE OF PROCEEDS. The proceeds received by the Company from the sale of
the shares of Common Stock may be used by the Company for any purposes, without
restriction.
10. REMEDIES; VENUE. In case any one or more of the covenants or
agreements set forth in this Agreement shall have been breached by the party
making the same, the aggrieved party may proceed to protect and enforce its
rights either by suit in equity and/or by action at law, including, but not
limited to, an action for damages as a result of any such breach and where
appropriate an action for specific performance of any such covenant or
agreement. Any court proceedings relating to this agreement or any other
agreement shall be brought exclusively in the courts of the Commonwealth of
Massachusetts or the Federal Courts located therein and each of the Purchaser
and the Company hereby agrees that any legal process issuing from any such court
sent to it by mail in accordance with Section 13 shall be sufficient to subject
it to the personal jurisdiction of such court.
11. SUCCESSORS AND ASSIGNS. This Agreement shall bind and inure to the
benefit of the Company, the Purchaser and their respective legal
representatives, successors and permitted assigns, but shall not be assigned,
delegated, transferred or otherwise disposed of, by operation of law or
otherwise, by either party, which consent shall not be unreasonably withheld,
PROVIDED that either party may sell, assign, transfer, delegate or otherwise
dispose of its rights and obligations hereunder in connection with a merger or
consolidation or the sale of all or substantially all of its assets.
Amended and Restated Common Stock Subscription Agreement
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12. ENTIRE AGREEMENT. This Agreement and any Exhibits hereto or delivered
pursuant hereto which form a part hereof contain the entire agreement among the
parties with respect to the subject matter hereof and supersede all prior and
contemporaneous arrangements or understandings with respect thereto.
13. NOTICES. All notices, requests, demands and other communications under
this Agreement shall be in writing and shall be deemed to have been duly given
(i) on the date of service if served personally on the party to whom notice is
given, (ii) on the day of transmission if sent via facsimile transmission to the
facsimile number given below, provided telephonic confirmation of receipt is
obtained promptly after completion of transmission, (iii) on the business day
after delivery to an overnight courier service or the Express mail service
maintained by the United States Postal Service, provided receipt of delivery has
been confirmed, or (iv) on the fifth day after mailing, if mailed by registered
or certified mail, postage prepaid, properly addressed and return-receipt
requested, in all cases to the parties as follows:
PolyMedica Industries, Inc.
11 State Street
Woburn, MA 01801
Attention: Chief Executive Officer
Telephone: (617) 933-2020
Telecopier: (617) 938-6950
with a copy to:
John K.P. Stone III, Esq.
Hale and Dorr
60 State Street
Boston, MA 02109
Telephone: (617) 526-6000
Telecopier: (617) 526-5000
or to:
CardioTech International, Inc.
11 State Street
Woburn, MA 01801
Attention: Chief Executive Officer
Telephone: (617) 933-4772
Telecopier: [ ]
Amended and Restated Common Stock Subscription Agreement
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with a copy to:
Mintz, Levin, Cohn, Ferris,
Glovsky and Popeo, PC
One Financial Center
41st Floor
Boston, MA 02111-2657
Attention: Jeffrey Wiesen
Telephone: (617) 542-6000
Telecopier: (617) 542-2241
14. COUNTERPARTS. This Agreement may be executed in any number of
counterparts, and each such counterpart hereof shall be deemed to be an original
instrument but all such counterparts together shall constitute but one
agreement.
15. INTERPRETATION. The Article and Section headings contained in this
Agreement are solely for the purpose of reference, are not part of the agreement
of the parties and shall not in any way affect the meaning or interpretation of
this Agreement. As used in this Agreement, the term "person" shall mean and
include an individual, a partnership, a joint venture, a corporation, a trust,
an unincorporated organization and a government or any department or agency
thereof. Whenever any words are used herein in the masculine gender, they shall
be construed as though they were also used in the feminine gender in all cases
where they would so apply.
16. CONSTRUCTION. Each provision of this Agreement shall be interpreted in
a manner to be effective and valid to the fullest extent permissible under
applicable law. The invalidity or unenforceability of any particular provision
of this Agreement shall not affect the other provisions of this Agreement which
shall remain in full force and effect.
17. AMENDMENTS; WAIVERS. This Agreement may be amended or modified only in
writing executed on behalf of PolyMedica and CardioTech. No waiver shall
operated to waive any further or future act and no failure to object of
forbearance shall operate as a waiver.
18. GOVERNING LAW. This Agreement shall be governed by the laws of the
Commonwealth of Massachusetts (excluding the conflicts of laws provisions
thereof).
[THE REMAINDER OF THIS PAGE HAS BEEN INTENTIONALLY LEFT BLANK]
Amended and Restated Common Stock Subscription Agreement
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the date first above written as an instrument under seal.
CARDIOTECH INTERNATIONAL, INC.
By: /s/ Michael D. Szycher
---------------------------------
Name: Michael D. Szycher, Ph.D
Title: Chairman and CEO
POLYMEDICA INDUSTRIES, INC.
By: /s/ Steven J. Lee
---------------------------------
Name: Steven J. Lee
Title: President and CEO
Amended and Restated Common Stock Subscription Agreement
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Exhibit A
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ASSIGNMENT OF PATENT AND RELATED INTELLECTUAL PROPERTY
ASSIGNMENT OF PATENT AND RELATED INTELLECTUAL PROPERTY made this ____ day
of May, 1996 (the "Assignment"), by and between PolyMedica Industries, Inc.,
("Assignor"), a Massachusetts corporation, having offices at 11 State Street,
Woburn, Massachusetts 01801, a Massachusetts corporation, and CardioTech
International, Inc., ("Assignee"), a Massachusetts corporation, having offices
at 11 State Street, Woburn, Massachusetts 01801.
WITNESSETH
WHEREAS, Assignor hereby agrees to convey to Assignee all of Assignor's
right, title, interest and privileges in and to all patents, all patent
applications listed in Exhibit A hereto and made part hereof, and any and all
improvements thereon, and any and all know-how, trade secrets, designs,
formulas, non-patented inventions, processes and technical information relating
to, without limitation, such patents and patent applications and any and all
improvements thereon (collectively, the "Intellectual Property").
NOW, THEREFORE, in consideration of the sum of One Dollar ($1.00) and other
good and valuable consideration, receipt and sufficiency of which is hereby
acknowledged, Assignor and Assignee agree as follows:
1. Assignor hereby assigns, sells and transfers to Assignee all of
Assignor's right, title, interest and privileges in and to the Intellectual
Property.
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2. Assignor agrees to execute all instruments and to perform all acts
which may be reasonably necessary to carry out the purpose of this Assignment
to full effect.
3. Assignee shall indemnify and hold harmless Assignor for all costs not
yet due and liabilities which may hereafter arise relating to the development of
the Intellectual Property, including, without limitation, incentive payments to
become due to inventors upon issuance of any patents for the Intellectual
Property.
4. Assignor represents and warrants that Assignor has the right to enter
into this Assignment and to grant the rights herein granted.
5. This Assignment shall bind Assignor and its successors and assigns to
the extent set forth herein.
6. This Agreement shall be governed by and construed in accordance with
the laws of the Commonwealth of Massachusetts regardless of the laws that might
otherwise govern under applicable principles of conflict of laws thereof.
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IN WITNESS WHEREOF, Assignor and Assignee hereto have caused this
Assignment to be executed and delivered the day and year first above written.
Sworn to before me this
______ day of May, 1996 PolyMedica Industries, Inc.
------------------------ --------------------------
Notary Public By: Steven James Lee
Title: President
Sworn to before me this
________ day of May, 1996 CardioTech International, Inc.
------------------------- ---------------------------
Notary Public By: Michael Szycher
Title: President
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Exhibit A to Assignment
LIST OF PATENTS, TRADEMARKS, SERVICE MARKS,
COPYRIGHTABLE MATERIAL, RIGHTS, TRADE SECRETS AND
OTHER PROPRIETARY RIGHTS
TRADENAMES
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ChronoThane PolyBlend
ChronoPrene PolyWeld
HydroThane
PATENTS
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Patent Publication/
Appln. No./ Filing/
Patent No. Country Title Grant Date
----------- ------- ----- ------------
8946337 Australia Composite Structure Abandoned
9065367 Australia Polymer Products 07/21/94
Abandoned
9100956 Denmark Composite Structure Abandoned
168359 Denmark Arterial Prosthesis 09/26/88
0596926 EPO Vascular Prosthesis 05/18/94
(non-circular tube)
0596905 EPO Vascular Prosthesis 05/18/94
(Access Graft)
495889 EPO Polymer Products 10/16/90
(CABG)
286220 EPO Methods and Apparatus 03/31/93
for Making Polymer
Material
286220 Austria Methods and Apparatus 09/10/93
for Making Polymer
Material
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286220 Belgium Methods and Apparatus 01/27/94
for Making Polymer
Material
286220 France Methods and Apparatus 04/10/94
for Making Polymer
Material
286220 Germany Methods and Apparatus 07/08/93
for Making Polymer
Material
286220 Greece Methods and Apparatus 06/17/93
for Making Polymer
Material
286220 Italy Methods and Apparatus 04/22/93
for Making Polymer
Material
286220 Luxembourg Methods and Apparatus 09/08/94
for Making Polymer
Material
286220 Netherlands Methods and Apparatus 05/11/93
for Making Polymer
Material
286220 Spain Methods and Apparatus 04/15/93
for Making Polymer
Material
286220 Switzerland Methods and Apparatus 09/01/94
for Making Polymer
Material
286220 Sweden Methods and Apparatus 09/05/93
for Making Polymer
Material
286220 U.K. Methods and Apparatus 12/14/94
for Making Polymer
Material
63267 Ireland Arterial Prosthesis 03/16/95
2-514283 Japan Polymer Products 02/25/93
Publ. No. (CABG)
5500912
1813534 Japan Arterial Prosthesis 04/04/93
4503332 Japan Composite Structure Abandoned
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9201471 Norway Polymer Products 07/21/94
Abandoned
911930 Norway Composite Structure Abandoned
88710 Portugal Method and Apparatus 10/10/94
for Making Polymer
Material
5011722.14 Russia Polymer Products 09/28/94
Abandoned
2204873 U.K. Method and Apparatus 08/07/91
for Making Polymer
Material
5,132,066 U.S. Method of Forming a 07/21/92
Bio-Compatible
Vascular Prosthesis
08/182,155 U.S. Vascular Prosthesis
(non-circular tube)
08/182,156 U.S. Vascular Prosthesis
(Access Graft)
08/381,297 U.S. Polymer Produc
(CABG)
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Exhibit B
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BILL OF SALE
This Bill of Sale dated _______, 1996 is executed and delivered by
PolyMedica Industries, Inc., a Massachusetts corporation (the "Seller"), to
CardioTech International, Inc., a Massachusetts corporation (the "Buyer"). All
capitalized words and terms used in this Bill of Sale and not defined herein
shall have the respective meanings ascribed to them in the Amended and Restated
Common Stock Subscription Agreement dated _______, 1996 between the Seller and
the Buyer (the "Agreement").
WHEREAS, pursuant to the Agreement, the Seller has agreed to sell,
transfer, convey, assign and deliver to the Buyer substantially all of the
assets and business of the Seller, and the Buyer has agreed to assume certain of
the liabilities of the Seller;
NOW, THEREFORE, for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Seller hereby agrees as
follows:
1. The Seller hereby sells, transfers, conveys, assigns and delivers to
the Buyer, its successors and assigns, to have and to hold forever, all of the
Equipment and the Patents (together, the "Assets").
2. The Seller hereby covenants and agrees that it will, at the request of
the Buyer and without further consideration, execute and deliver, and will cause
its employees to execute and deliver, such other instruments of sale, transfer,
conveyance and assignment, and take such other action as may reasonably be
necessary to more effectively sell, transfer, convey, assign and deliver to, and
vest in, the Buyer, its successors and assigns, good, clear, record and
marketable title to the Assets hereby sold, transferred, conveyed, assigned and
delivered, or intended so to be, and to put the Buyer in actual possession and
operating control thereof, to assist the Buyer in exercising all rights with
respect thereto and to carry out the purpose and intent of the Agreement.
3. The Seller does hereby irrevocably constitute and appoint the Buyer,
its successors and assigns, its true and lawful attorney, with full power of
substitution, in its name or otherwise, and on behalf of the Seller, or for its
own use, to claim, demand, collect and receive at any time and from time to time
any and all assets, properties, claims, accounts and other rights, tangible or
intangible, hereby sold, transferred, conveyed, assigned and delivered, or
intended so to be, and to prosecute the same at law or in equity and, upon
discharge thereof, to complete, execute and deliver any and all necessary
instruments of satisfaction and release.
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4. The Seller, by its execution of this Bill of Sale, and the Buyer, by
its acceptance of this Bill of Sale, each hereby acknowledges and agrees that
neither the representations and warranties nor the rights and remedies of any
party under the Agreement shall be deemed to be enlarged, modified or altered in
any way by this instrument.
5. EXCEPT AS EXPRESSLY PROVIDED IN THE AGREEMENT, THE ASSETS ARE BEING
SOLD ON AN "AS IS" BASIS WITHOUT WARRANTY OF ANY KIND, AND SELLER DISCLAIMS ALL
WARRANTIES WHETHER EXPRESS OR IMPLIED, WRITTEN OR ORAL, WITH RESPECT TO THE
ASSETS, INCLUDING ALL WARRANTIES OF TITLE AND IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE. IN NO EVENT SHALL SELLER
BE LIABLE FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES, INCLUDING BUT NOT
LIMITED TO, LOSS OR PROFITS, LOSS OF DATA OR LOSS OF USE DAMAGES ARISING UNDER
THE AGREEMENT OR FROM THE SALE OF THE ASSETS.
IN WITNESS WHEREOF, the Seller and the Buyer have caused this instrument to
be duly executed under seal as of and on the date first above written.
SELLER:
POLYMEDICA INDUSTRIES, INC.
By:______________________________
[Corporate Seal] Title:___________________________
ATTEST:
________________________
ACCEPTED:
BUYER:
CARDIOTECH INTERNATIONAL, INC.
By:______________________
Title:___________________
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Exhibit C
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AMENDED AND RESTATED LICENSE AGREEMENT
between
POLYMEDICA INDUSTRIES, INC.
as Licensor
and
CARDIOTECH INTERNATIONAL, INC., as Licensee
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TABLE OF CONTENTS
Article 1 - DEFINITIONS
1.1 Confidential Information 1
1.2 Effective Date 1
1.3 Licensed Technology 1
1.4 New Inventions 2
1.5 Implantable Medical Device Technology 2
1.6 Implantable Medical Devices 2
Article II - GRANT OF LICENSE
2.1 Practice of Licensed Technology 2
2.2 Quality Controls 3
2.3 Transfer of Information 3
2.4 No Rights by Implication 3
2.5 No Warranty 3
2.6 Representations and Warranties 3
Article III - CONFIDENTIAL INFORMATION
3.1 Confidentiality Maintained 5
3.2 Information in Connection with Sale 5
Article IV - PROTECTION OF LICENSED TECHNOLOGY
4.1 Litigation with Third Parties 5
4.2 Use of Name in Suit 6
4.3 Notification of Suit by Licensee 6
4.4 Notification of Suit by Licensor 6
Article V - OWNERSHIP OF PROPRIETARY RIGHTS
5.1 Acknowledgment of Existing Rights 6
5.2 Rights to New Inventions 7
Article VI - TERMINATION AND EXPIRATION
6.1 Expiration; Term of Agreement 8
6.2 Bankruptcy 8
6.3 Material Breach 8
6.4 No Right of Licensor to Terminate 8
6.5 After Termination or Expiration 8
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Article VII - NON-COMPETITION
7.1 Warranty of Non-Competition 9
Article VIII - MISCELLANEOUS
8.1 Assignments 9
8.2 Sublicense 9
8.3 Governing Law 9
8.4 Arbitration 9
8.5 Waiver 10
8.6 No Other Relationship 10
8.7 Notices 10
8.8 Entire Understanding 11
8.9 Invalidity 11
8.10 Amendments 11
8.11 Bard Access Systems, Inc. Agreement 11
8.12 Survival of Contents 11
8.13 Table of Contents and Headings 11
8.14 Exhibit 12
EXHIBIT A List of Patents, Trademarks, 13
Service Marks, Copyrightable Material,
Rights, Trade Secrets and Other
Proprietary Rights
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AMENDED AND RESTATED LICENSE AGREEMENT
THIS AMENDED AND RESTATED LICENSE AGREEMENT is made and entered into as of
____ day of _____, 1996 by and between PolyMedica Industries, Inc. ("Licensor"),
a Massachusetts corporation having offices at 11 State Street, Woburn,
Massachusetts 01801 with Telecopy No. (617) 933-7992 and CardioTech
International, Inc. ("Licensee"), a Massachusetts corporation having offices at
11 State Street, Woburn, Massachusetts 01801 with Telecopy No. (617) 933-4772.
WHEREAS,
Licensor possesses certain intellectual property rights which Licensee is
desirous of using.
Licensor is willing to grant Licensee exclusive rights to use and practice
such intellectual property rights in accordance with the terms and conditions
hereinafter set forth.
Licensor and Licensee have entered into a License Agreement, dated as of
March 19, 1996, and by mutual agreement desire to amend and restate that
Agreement pursuant hereto.
NOW, THEREFORE, in consideration of the premises and mutual promises, terms
and conditions hereinafter set forth, and other good and valuable consideration,
the receipt and sufficiency of which is hereby acknowledged, the parties do
hereby agree as follows:
I. DEFINITIONS
As used herein, the following terms shall have the following definitions:
1.1 CONFIDENTIAL INFORMATION. "Confidential Information" shall mean that
part of the Licensed Technology which is not publicly known.
1.2 EFFECTIVE DATE. "Effective Date" shall mean the date on which Licensor
executes this Agreement.
1.3 LICENSED IMPLANTABLE MEDICAL DEVICE TECHNOLOGY. "Licensed Technology"
shall mean any and all patents, trademarks, service marks, copyrightable
material, trade secrets and other proprietary rights including without
limitation all such rights listed in Exhibit A that relate to Implantable
Medical Device Technology as defined herein. Exhibit A may be amended from time
to time by the mutual consent of the parties hereto. If any additional United
States Letters Patent or foreign patents are issued based on any of the
proprietary rights listed in Exhibit A that relate to Implantable Medical Device
Technology as defined herein, such patents shall be deemed to be included in
Exhibit A
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as of their date of issuance for the same purpose as the other patents listed in
Exhibit A.
1.4 NEW INVENTIONS. "New Inventions" means any and all inventions,
discoveries, concepts, ideas, improvements, original works of authorship,
know-how, modifications to existing copyrightable works of authorship and data
(whether or not patentable or subject to copyright or trade secret protection)
concerning any present or prospective activities of Licensor or Licensee, which
Licensor or Licensee, or their respective employees, agents or representatives
formulate, make, conceive or become acquainted with during the term of this
Agreement that relate to Implantable Medical Device Technology as defined
herein.
1.5 "IMPLANTABLE MEDICAL DEVICE TECHNOLOGY" shall mean Implantable Medical
Devices, the equipment used to fabricate such Implantable Medical Devices,
methods of manufacturing and/or using Implantable Medical Devices, biostable
polyurethane material that is used to fabricate such Implantable Medical
Devices, and biodurable polymer materials (that are sold in bulk) that are used
for medical applications.
1.6 IMPLANTABLE MEDICAL DEVICES. "Implantable Medical Devices" shall mean
(i) invasively implantable medical devices which are designed to be implanted by
a licensed and/or trained medical or health care professional that are wholly or
partially implanted in the body of a human or animal and (ii) any product,
system, component, part, or item which either: (a) embodies any of the
inventions, discoveries, concepts, ideas, improvements, original works of
authorship, know-how or data (whether or not patentable or subject to copyright,
or trade secret protection) included in the Licensed Technology; or (b) is
produced through the use of any of the inventions, discoveries, concepts, ideas,
improvements, original works of authorship, know-how or data (whether or not
patentable or subject to copyright or trade secret protection) included in the
Licensed Technology.
II. GRANT OF LICENSE
Subject to all of the terms and conditions set forth in this Agreement:
2.1 PRACTICE OF LICENSED TECHNOLOGY. Licensor hereby grants to Licensee a
perpetual, irrevocable, worldwide, royalty-free, exclusive right and license,
except as provided in Section 6 even as to the Licensor, to use and practice the
Licensed Technology and to make, use, sell, and import Implantable Medical
Devices, with the unrestricted right to sublicense the Licensed Technology. Such
license shall not be terminable by Licensor or any successor or assign of
Licensor or any party claiming through Licensor under any circumstance or for
any reason, including without limitation any breach of this Agreement or any
other agreement between Licensor and Licensee.
- 2 -
22
2.2 QUALITY CONTROLS. If Licensee, in its sole discretion, uses any
trademarks or service marks included in the Licensed Technology on any
Implantable Medical Device, Licensee agrees that such use shall be in strict
compliance with the provisions of all applicable laws and regulations. Licensee
also agrees to conduct any and all advertising and promotion in which such
trademarks or service marks are used so as to assure the continued validity and
enforceability of those trademarks and service marks. Licensor shall have the
right to inspect Licensee's facilities during normal business hours, without
prior advance notice, to confirm that Licensee's use of such trademarks and
service marks is in compliance with this Section 2.2.
2.3 TRANSFER OF INFORMATION. As soon as practicable after the Effective
Date, but in no event later than sixty (60) days after the Effective Date,
Licensor shall provide to Licensee, at no cost to Licensee, any and all trade
secrets and other proprietary information described in Exhibit A.
2.4 NO RIGHTS BY IMPLICATION. No rights or licenses with respect to
Licensed Technology or the Implantable Medical Devices are granted or deemed
granted hereunder or in connection herewith, other than those rights or licenses
expressly granted in this Agreement.
2.5 NO WARRANTY. EXCEPT AS SET FORTH IN SECTION 2.6, LICENSEE ACKNOWLEDGES
THAT IT RECEIVES THE LICENSED TECHNOLOGY ON AN "AS IS" BASIS. THERE IS NO
WARRANTY OF LICENSOR IN THIS AGREEMENT CONCERNING THE LICENSED TECHNOLOGY OR THE
IMPLANTABLE MEDICAL DEVICES, AND LICENSOR MAKES NO WARRANTY, EITHER EXPRESS OR
IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
2.6 REPRESENTATIONS AND WARRANTIES.
(A) Licensor hereby represents and warrants that:
(1) Licensor has full power and authority to execute, deliver and
perform this Agreement.
(2) This Agreement has been duly executed and delivered by
Licensor and constitutes the valid and binding obligation of Licensor,
enforceable against Licensor in accordance with its terms, except as limited by
principles of equity and applicable bankruptcy, insolvency, and other laws of
general applicability affecting the enforcement of creditors' rights.
(3) Licensor represents and warrants that it is the owner of the
entire right, title, and interest in and to Licensed Technology, except for a
joint ownership interest of Thermedics, Inc., a Massachusetts corporation,
having offices at 470 Wildwood Street, Woburn, MA 01888, with Licensor in and to
U.S. Patent No. 5,254,662 and its related patents and applications in Australia,
Canada, the EPO, and WO, as set forth in Exhibit A
- 3 -
23
hereto as "Joint Patents and Patent Applications." To the best of Licensor's
knowledge and except set forth in this Section 2.6 (c), the Licensed Technology
is free and clear of any lien or similar encumbrance.
(4) The Licensor represents and warrants that it has the right to
grant the exclusive right in Section 2.1, without requiring the consent or
approval of any third party to this Agreement, with regard to Licensor's entire
right, title, and interest in and to the Licensed Technology. In the event that,
as a result of Thermedics, Inc.'s joint ownership in the patents and patent
applications set forth in Exhibit A as "Joint Patents and Patent Applications,"
in the written opinion of patent counsel for Licensee, the consent of
Thermedics, Inc. is required by the law of a foreign country for the grant of
the license set forth herein, Licensor will use its best efforts to obtain such
consent. If such consent is not granted by Thermedics, Inc. in writing within
sixty (60) days after the date of Licensee's request for such consent, then, at
the request of Licensee, Licensor will execute and deliver to Licensee an
assignment, in mutual satisfactory form, conveying to Licensee an undivided
joint interest in and to Licensor's joint ownership of the right, title and
interest in and to the specific patent or patent application of the "Joint
Patents and Patent Applications" in Exhibit A for which Thermedics, Inc. did not
grant its consent. If such an assignment is granted, the result will be that the
specific patent or patent application of the "Joint Patents and Patent
Applications" in Exhibit A will be jointly owned by Licensor, Licensee and
Thermedics, Inc. in the foreign country at issue.
(5) Licensor represents and warrants that the execution and
delivery of this Agreement is not inconsistent with any prior agreements or
instruments regarding Licensed Technology to which the Licensor is bound.
(B) Licensee hereby represents and warrants that:
(1) Licensee has full power and authority to execute, deliver and
perform this Agreement.
(2) This Agreement has been duly executed and delivered by
Licensee and constitutes the valid and binding obligation of Licensee, and its
successors and assigns, enforceable against Licensee, and its successors and
assigns, in accordance with its terms, except as limited by principles of equity
and applicable bankruptcy, insolvency, and other laws of general applicability
affecting the enforcement of creditors' rights.
(3) Licensee represents and warrants that the execution and
delivery of this Agreement is not inconsistent with any prior agreements or
instruments regarding Licensed Technology to which the Licensee is bound.
- 4 -
24
III. CONFIDENTIAL INFORMATION
3.1 CONFIDENTIALITY MAINTAINED. Licensee acknowledges that Licensor will
provide Licensee with Confidential Information in the transfer of information
pursuant to Section 2.3. All disclosures which have utility for purposes other
than Implantable Medical Devices made to Licensee, its agents and employees
shall be held in strict confidence by Licensee, its agents and employees.
Licensee shall disclose all such Confidential Information that relates to
information other than information relating to Implantable Medical Devices only
to those of its agents and employees to whom it is necessary in exercising its
rights and carrying out its duties under this Agreement. Licensee shall not use
the Confidential Information except for the purposes of exercising its rights
and carrying out its duties hereunder, including, without limitation, its right
to grant sublicenses. The provisions of Section 3.1 shall also apply to any
consultants, subcontractors or sublicensees that Licensee may engage in
connection with the exercise of its rights or the carrying out of its duties
under this Agreement.
3.2 INFORMATION IN CONNECTION WITH SALE. Licensor hereby grants to
Licensee the right during the term of this Agreement to sell and distribute in
connection with each sale of an Implantable Medical Device that part of the
Licensed Technology necessary (in the sole and absolute judgement of Licensee)
for such purchaser to use and operate such Implantable Medical Device, even if
such information includes Confidential Information.
IV. PROTECTION OF LICENSED TECHNOLOGY
4.1 LITIGATION WITH THIRD PARTIES.
(a) Licensee shall have the right, but not the obligation, to take any
and all actions in its own name, legal or otherwise, which are necessary to: (i)
terminate infringements of any proprietary right which is part of the Licensed
Technology; or (ii) terminate any attempted passing-off by imitation of any
Implantable Medical Device. Licensee shall bear all the expenses of all actions
which it initiates pursuant to Section 4.1(a). Any recoveries or settlement fees
received from suits or settlements involving an action initiated pursuant to
this section 4.1(a) or agreed to shall be paid to Licensee for its own use and
benefit.
(b) If Licensee does not bring an action, legal or otherwise, which
Licensor, believes, in its reasonable judgment, is necessary to protect
Licensor's rights related to the underlying Licensed Technology, Licensor, at
its sole discretion, may take any and all actions, legal or otherwise, which are
necessary to: (i) terminate infringements of any proprietary right which is part
of the licensed Technology; or (ii) terminate any attempted passing off by
imitation of any Implantable Medical Device. Licensor shall bear all the
expenses of all actions which it initiates pursuant to this Section 4.1(b). Any
recoveries or
- 5 -
25
settlement fees received from suits or settlements involving an action initiated
pursuant to this Section 4.1(b) or agreed to shall be paid to Licensor for its
own use and benefit.
(c) Licensor may agree to any settlement of any such action brought
under Section 4.1(b), at its own discretion, without the prior consent of
Licensee so long as such settlement does not grant any rights relating to
Implantable Medical Devices to Licensed Technology and does not impose any
obligation on Licensee.
(d) Licensor shall have the right to take any and all actions in its
own name, legal or otherwise, which are necessary to protect the exclusive
rights licensed to it by Licensee under Section 5.2(a) relating to Licensee's
New Inventions against infringement through the manufacture, use, sale or import
by third parties of products which are not Implantable Medical Devices.
4.2 USE OF NAME IN SUIT. When, in the reasonable judgment of Licensor, it
is necessary to use Licensee's name to prosecute or defend an action pursuant to
Section 4.1 hereof, Licensee agrees to allow Licensor to so use its name; and
when, in the judgment of Licensee, it is necessary to use Licensor's name to
prosecute or defend an action pursuant to Section 4.1 hereof, Licensor agrees to
allow Licensee to use its name.
4.3 NOTIFICATION OF SUIT BY LICENSEE. Licensee shall notify Licensor in
writing of the initiation of any actions by third parties against the Licensee
or Licensee's initiation of any actions against any third party under Section
4.1(a). Such notice shall be given promptly after Licensee acquires such
knowledge.
4.4 NOTIFICATION OF SUIT BY LICENSOR. Licensor shall notify Licensee in
writing of the initiation of any actions by third parties against the Licensor
or Licensor's initiation of any actions against any third party under Section
4.1(b) and/or relating to the Licensor's exclusive rights licensed to it by
Licensee under Section 5.2(a) relating to Licensee's New Inventions. Such notice
shall be given promptly after Licensor acquires such knowledge.
V. OWNERSHIP OF PROPRIETARY RIGHTS
5.1 ACKNOWLEDGMENT OF EXISTING RIGHTS.
(a) Licensee hereby acknowledges that each and every part of the
Licensed Technology on the Effective Date and any addition to the Licensed
Technology by Licensor during the term of this Agreement is either: (i) the
property of Licensor; or (ii) has been used by Licensee pursuant to a grant of
rights to Licensor by the owner of such rights to use such rights.
(b) Licensee agrees for itself and its successors and assigns, upon
request of Licensor, to at all times do such acts
- 6 -
26
and to execute and deliver promptly to Licensor such papers, instruments and
documents, at Licensor's expense, as from time to time may be necessary or
useful in Licensor's opinion to prove, apply for, secure, maintain, reissue,
extend or defend Licensor's world-wide rights in the rights described in Section
5.1(a) above. Without limiting the foregoing, Licensee shall enter into such
user agreements with Licensor as necessary to secure Licensor's ownership rights
described in Section 5.1(a), in forms mutually agreed upon by Licensor and
Licensee.
(c) Licensee warrants and represents to Licensor that Licensee, and to
Licensee's knowledge the employees, agents, or representatives that it hires or
employs, are not subject to any agreement inconsistent with this Agreement
regarding the rights described in Section 5.1(a) above.
5.2 RIGHTS TO NEW INVENTIONS.
(a) For all New Inventions that relate to Implantable Medical Device
Technology as defined herein and which have utility for products which are not
Implantable Medical Devices that are formulated, made or conceived by Licensee,
its employees, agents and representatives, solely or jointly with others, during
the term of this Agreement, with respect to which Licensee acquires any patents,
trademarks, service marks, copyrightable material, trade secrets or any other
proprietary rights which Licensee has the right to license to others, any and
all such rights of Licensee shall be owned by Licensee and Licensee shall grant
Licensor a perpetual, irrevocable, world-wide, royalty-free, exclusive right and
license, exclusive of Implantable Medical Device Technology as defined herein,
even as to Licensee, during the term of this Agreement, to use and practice such
New Inventions and to make, use and sell products which are not Implantable
Medical Devices with the right to sublicense such New Invention solely for such
purpose. Such exclusive license to Licensor for Licensee's New Inventions is in
consideration of the royalty-free license granted to Licensee pursuant to
Section 2.1 above. Licensee shall take no actions to defeat Licensor's rights
under Section 5.2(a).
(b) Licensee shall inform Licensor fully of each of Licensee's New
Inventions which have utility for products which are not Implantable Medical
Devices by a written report, setting forth in detail the procedures employed and
results achieved. Such report shall be given to Licensor within ninety days
after the formulation, making or conception of such New Inventions. Licensee
shall also provide Licensor with an annual report identifying all such New
Inventions of Licensee formulated, made or conceived during the twelve (12)
month period covered by that report.
(c) For all New Inventions that relate to Implantable Medical Device
Technology as defined herein, that are formulated, made or conceived by
Licensor, its employees, agents and representatives, solely or jointly with
others, during the term of
- 7 -
27
this Agreement with respect to which Licensor acquires any patents, trademarks,
service marks, copyrightable material, trade secrets or any other proprietary
rights, it shall be deemed to be part of the Licensed Technology and Licensee
shall have a right to use such rights, title and interest pursuant to Section
2.1 hereof without paying any royalty or any other consideration to Licensor.
Licensor shall take no actions to defeat Licensee's rights under Section 5.2(c).
(d) Licensor shall inform Licensee fully of each of Licensor's New
Inventions which have utility for products which are Implantable Medical Devices
by a written report, setting forth in detail the procedures employed and results
achieved. Such report shall be given to Licensee within ninety days after the
formulation, making or conception of such New Inventions. Licensor shall also
provide Licensee with an annual report identifying all such New Inventions of
Licensor formulated, made or conceived during the twelve (12) month period
covered by that report.
VI. TERMINATION AND EXPIRATION
6.1 EXPIRATION: TERM OF AGREEMENT. Unless it is terminated by mutual
agreement, this Agreement shall continue in full force and effect perpetually.
The term of this Agreement shall be from the Effective Date to the date of
termination or expiration of this Agreement, as the case may be.
6.2 BANKRUPTCY. If Licensee, voluntarily or involuntary, is subject to
bankruptcy under Chapter 7 of the Bankruptcy code, the purchaser, assignee, or
other entity who obtains in any way any rights of Licensee under this Agreement
shall have no right to bring any action against any third party pursuant to
Section 4.1(a) hereof.
6.3 MATERIAL BREACH. Upon the occurrence of a curable material breach or
default as to any obligation hereunder by Licensee and the failure of Licensee
to promptly pursue (within ninety (90) days after receiving written notice
thereof from Licensor) a reasonable remedy designed to cure (in the reasonable
judgment of Licensor) such curable material breach or default, Licensee agrees
to pay Licensor $1,000.00 per day after the 90 day period has expired until the
curable material breach or default is cured.
6.4 NO RIGHT OF LICENSOR TO TERMINATE. In the event of a material breach
of any of the provisions hereof by Licensee, Licensor may seek to recover
monetary damages against Licensee in accordance with Section 8.4 hereof.
Licensor shall not have the right to unilaterally terminate this Agreement.
Licensor's sole remedy shall be the recovery of monetary damages.
6.5 AFTER TERMINATION OR EXPIRATION. The parties hereto agree that, once
this Agreement is terminated or expires, Licensee shall immediately cease any
use or practice of the Licensed
- 8 -
28
Technology. Licensee shall, at its expense, return to Licensor all Confidential
Information as soon as practicable after the date of such termination or
expiration, including, but not limited to, original documents, drawings,
computer diskettes, models, samples, notes, reports, notebooks, letters,
manuals, prints, memoranda and any copies thereof, which have been received by
Licensee. All such Confidential Information shall be owned by Licensor during
the term of this Agreement and thereafter.
VII. NON-COMPETITION
7.1 WARRANTY OF NON-COMPETITION. Licensee agrees that it will not directly
or knowingly indirectly compete with PMI in the following areas for a period of
five calendar years from the Effective Date of this Agreement:
(1) Prescription or over-the-counter Wound Dressing Business.
(2) Cosmetic Business, including but not limited to, active
ingredients and finished cosmetic products.
VIII. MISCELLANEOUS
8.1 ASSIGNMENTS. This Agreement and any and all of the rights and
obligations of either party hereunder shall not be assigned, delegated, sold,
transferred or otherwise disposed of, by operation of law or otherwise, without
the prior written consent of the other party, which consent shall not be
unreasonably withheld, provided that either party may sell, assign, transfer,
delegate or otherwise dispose of its rights and obligations hereunder in
connection with its merger or consolidation or the sale of all or substantially
all of its assets. This Agreement shall be binding upon, and inure to the
benefit of, Licensor and Licensee and their respective successors and assigns,
to the extent such assignments are in accordance with Section 8.1.
8.2 SUBLICENSE. Licensee shall have the right to sublicense the Licensed
Technology to a third party under this Agreement as long as the third party
agrees to be bound by the terms of this Agreement to the same extent as the
Licensee, and any sublicensing agreement made with such third party by Licensee
shall expressly incorporate by reference the terms of this Agreement.
8.3 GOVERNING LAW. This Agreement shall be governed, interpreted and
construed in accordance with the laws of the Commonwealth of Massachusetts.
8.4 ARBITRATION.
(a) Any dispute, controversy or claim arising out of or relating to
this Agreement or to a breach thereof, including its interpretation or
performance, shall be finally resolved by arbitration. The arbitration shall be
conducted in accordance with
- 9 -
29
the rules of the American Arbitration Association, which shall administer the
arbitration and act as appointing authority. The arbitration, including the
rendering of the award, shall take place in Boston, Massachusetts and shall be
the exclusive forum for resolving such dispute, controversy or claim. For the
purposes of this arbitration, the provisions of this Agreement and all rights
and obligations thereunder shall be governed and construed in accordance with
the laws of the Commonwealth of Massachusetts. The decision of the arbitrators
shall be final and binding upon the parties hereto, and the expense of the
arbitration shall be paid as the arbitrators determine. The decision of the
arbitrators shall be executory, and judgment thereon may be entered by any court
of competent jurisdiction. Notwithstanding this, judgment upon the award of the
arbitration may be entered in any court where the arbitration takes place or any
court having jurisdiction thereof, and application may be made to any court for
a judicial acceptance of the award or order of enforcement.
(b) Notwithstanding anything contained in Section 8.4(a) above to the
contrary, each party shall have the right to institute judicial proceedings
against the other party or anyone acting by, through or under such other party
in order to enforce the instituting party's rights hereunder through reformation
of contract, specific performance, injunction or similar equitable relief.
8.5 WAIVER. A waiver of any breach or any provision of this Agreement
shall not be construed as a continuing waiver of other breaches of the same or
other provisions of this Agreement.
8.6 NO OTHER RELATIONSHIP. Nothing herein contained shall be deemed to
create an agency, joint venture or partnership relationship between the parties
hereto. Neither party shall have any power to enter into any contracts or
commitments in the name of, or on behalf of, the other party, or to bind the
other party in any respect whatsoever except as specified in this Agreement.
8.7 NOTICES. Each notice required or permitted to be sent under this
Agreement shall be given by telecopy transmission or by registered or recorded
delivery letter to the parties at the addresses and telecopy numbers indicated
above. Either party may change its address and/or telecopy number, for purposes
of this Agreement, by giving the other party written notice of its new address
and/or telecopy number. Any notice if given or made by registered or recorded
delivery letter shall be deemed to have been received on the earlier of the date
actually received and the date five (5) days after the same was posted (and in
proving such it shall be sufficient to prove that the envelope containing the
same was properly addressed and posted as aforesaid) and if given or made by
telecopy transmission shall be deemed to have been received at the time of
dispatch, unless such date of deemed receipt is not a day on which banks are
open for business in Boston, Massachusetts in which case the date of deemed
receipt
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30
shall be the next succeeding day on which banks are open in Boston,
Massachusetts.
8.8 ENTIRE UNDERSTANDING. This Agreement embodies the entire understanding
between the parties relating to the subject matter hereof, whether written or
oral, and there are no prior representations, warranties or agreements between
the parties not contained in this Agreement.
8.9 INVALIDITY. If any provision of this Agreement is declared invalid or
unenforceable by a court having competent jurisdiction, it is mutually agreed
that this Agreement shall endure except for the part declared invalid or
unenforceable by order of such court.
8.10 AMENDMENTS. Any amendment or modification of any provision of this
Agreement must be in writing, dated and signed by both parties hereto.
8.11 BARD ACCESS SYSTEMS, INC. AGREEMENT.
(a) Licensor hereby assigns all of its rights, interests, and duties
under the Development, Supply and License Agreement (the "Bard Agreement"),
dated November 11, 1992, between Bard Access Systems, Inc. having offices at
5425 West Amelia Earhart Drive, Salt Lake City, Utah 84116 ("Bard"), and
Licensor to Licensee, and Licensee agrees to assume all of Licensor's rights,
interests, and duties under the Bard Agreement between Bard and Licensor.
(b) Licensor shall be liable for any obligations, claims, or
liabilities relating to, or arising out of, the Bard Agreement and incurred
prior to the Effective Date and hereby agrees to indemnify and hold harmless
Licensee from and against any such obligations, claims, or liabilities. Licensee
shall be liable for any obligations, claims, or liabilities relating to, or
arising out of, the Bard Agreement and incurred on and after the Effective Date
and hereby agrees to indemnify and hold harmless Licensor from and against any
such obligations, claims, or liabilities. Licensor acknowledges that Bard must
consent to the foregoing assignment and that representatives of Licensee will
contact Bard to obtain such consent and negotiate appropriate amendments to the
Bard Agreement to reflect this assignment.
8.12 SURVIVAL OF CONTENTS. Notwithstanding anything else in this Agreement
to the contrary, the parties agree that Sections 2.2, 2.4, 2.5, 2.6, 3.1, 4.1,
4.2, 4.3, 5.1, 6.5, 7.1, 8.1, 8.2, 8.3, 8.5, 8.6, 8.7, 8.8 and 8.10 shall
survive the termination or expiration of this Agreement to the extent required
hereby for the full observation and performance by either or both of the parties
hereto.
8.13 TABLE OF CONTENTS AND HEADINGS. Any table of contents accompanying
this Agreement and any headings contained herein are
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31
for directory purposes only, do not constitute a part of this Agreement, and
shall not be employed in interpreting this Agreement.
8.14 EXHIBIT. The exhibit referred to in this Agreement is attached hereto
and incorporated herein by this reference.
IN WITNESS WHEREOF, the parties hereto have signed this Agreement.
POLYMEDICA INDUSTRIES, INC.,
as Licensor
By___________________________
Name: Steven James Lee
Title: President
Date Licensor Executed
this Agreement:_________________
CARDIOTECH INTERNATIONAL, INC.,
as Licensee
By_____________________________
Name: Michael Szycher
Title: President
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32
Exhibit A to License Agreement
LIST OF PATENTS, TRADEMARKS, SERVICE MARKS,
COPYRIGHTABLE MATERIAL, RIGHTS, TRADE SECRETS AND
OTHER PROPRIETARY RIGHTS
TRADEMARKS
----------
Trademark Intl. Class Registration No.
--------- ----------- ----------------
CHRONOFILM 17 1,691,545
CHRONOFLEX 17 1,762,851
PATENTS
-------
Publication/
Patent Appln. No./ Filing/
Patent No. Country Title Issue Date
---------- ------- ----- ----------
5,118,779 U.S. Hydrophilic
Polyurethane 06/02/92
Elastomers
JOINT PATENTS AND PATENT APPLICATIONS
-------------------------------------
Publication/
Patent Appln. No./ Filing/
Patent No. Country Title Issue Date
9186454 Australia Biostable
Polyurethane 03/30/92
Products
2091564 Canada Biostable
Polyurethane 03/13/92
Products
548256 EPO Biostable
Polyurethane 07/07/93
Products
5,254,662 U.S. Biostable
Polyurethane 10/19/93
Products
- 13 -
33
9204390 WO Biostable
Polyurethane 03/19/92
Products
Together with all divisions, continuations, continuations-in-part,
substitutions, reissues, extensions, reexaminations and foreign equivalents
of the foregoing.
- 14 -
34
Other
-----
All trade secrets, know-how, copyrightable material, or other proprietary rights
that relate to the above-listed patents or patent applications, or generally to
the Licensed Technology, that will be necessary to practice the Licensed
Technology, including the above-listed patents or patent applications.
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35
Schedule I
----------
EQUIPMENT
ASSET NO DESCRIPTION
-------- -----------
00172-00 LABCONCO 4'W/OBLOWER
00174-00 2 DR MANUAL SAFETY CABINET
00197-00 POLAR WINDING MACHINE
00178-00 FREEZER & DRILL PRESS
00177-00 CONVECTION OVEN
00178-00 LAB OVEN
00200-00 PLATFORM SCALE - 1,000 LB.
00181-00 HYDRA LIFT CARRIER
00183-00 BREATH EASY HALF MASK
00184-00 SAHARA ELECTRIC HOT BOX
00202-00 RAMCO GRANULATOR
00203-00 2 BLENDERS
00185-00 MELT INDEXER
00187-00 ELECTRONIC BLENDER METER MIX
00188-00 GUILLOTINE
00225-00 KN200 EXTRUDER
00251-00 HOPPER DRYER T.D.S.
00252-00 UNDER WATER PELLETIZER
00245-00 WIRE NEW EQUIP/PELLLET&EXTRUDR
00266-00 HOMOGENIZER MIXER
00281-00 LAB PRESS
TOTAL FOR WOBURN
36
TEMPORARY PR.07
(UNNUMBERED OFFICE AND OTHER INCIDENTAL EQUIPMENT)
-------------------------------------------------
Literature Stand ex Convatec (12/95)
Wooden 2-door low cabinet
W980-H720-D540 mm ex Convatec (12/95)
S/S Sink ex Convatec
Blue Racking, 6 foot ex Newtec
EPSON LX 1050 Printer ex Newtec
EPSON LQ-550 Printer ex Newtec
Hewlett Packard DeskJet Plus Printer ex Newtec
Star Printer ex Newtec
Olivetti 286 Computer ex Newtec
Zenith Portable 286 Computer ex Newtec
MANUFACTURER
NUMBER DESCRIPTION MODEL NUMBER (DATE ACQUIRED)
------ ----------- ----- ------ ---------------
PGI 00351 Filtromat Organic Scavenger OS1 615 Elga
(including resin column, (11/88)
control panel, control
valves and storage tanks)
PGI 00352 Elgamat Automatic 2 bed Duo Junior 1179 Elga
De-ioniser (including (11/88)
resin columns, control
panel, circulation pump,
filters conductivity
meter and storage tank)
PGI 00353 Water Disinfection Unit Hanovia 3221 Elga
(U.V.) (including U.V. 105 (11/88)
tube and casing, and
indicator panel)
PGI 00354 Solvent Transfer Vessel SM 17532 T 367 Sartorius
(stainless steel) 20 litre (1987) (9/88)
PGI 00355 Polymer Dissolution Vessel - - Icam
(stainless steel) 25 litre (10/88)
- 2 -
37
PGI 00356 Polymer Mix Mixing Vessel - - Icam
(stainless steel) 10 litre (10/88)
PGI 00357 Mixer Model A 14297 Greaves
PGI 00358 Mixer (associated with GM-B M-23262 Greaves
item PGI 00356) (8/88)
PGI 00359 Mixer (associated with ST-C M-23621 Greaves
item PGI 00355) (8/88)
PGI 00360 Vacuum Pump Speedivac 28513 Edwards
2 (9/88)
PGI 00361 Brookfield Viscometer RVID A 11313 BDH/Brookfield
(with small sample adaptor) (10/88)
PGI 00362 Water Bath/Circulator W6/KDTD 118816025 Grant
(11/88)
PGI 00363 Visual Inspection Bench - - J. Barber
Light Box (1/89)
PGI 00364 Wall Thickness Gauge FMT.1.4D 14-007 Hampden ______
Equipment
(1/89)
PGI 00365 Pre-heating Water Tank - - C.L.J.
Fabrication
(12/88)
PGI 00366 Processing Rig (including - - In-house
extrusion tank, secondary
tank, extrusion die drive,
mandrel rotation motor,
mandrel yolk drive,
Jacktuator and control
panel)
PGI 00367 Hot Air Oven A9VC 91K217
PGI 00368 Analytical Balance FR 300 6200898 Salter
PGI 00369 Drying Cabinet SSS 1807 LEEC
(9/88)
PGI 00370 pH Meter SMP 1 - Bibby
(9/88)
PGI 00371 Electronic Balance Ex-8000A 1700642 Salter
(9/88)
- 3 -
38
PGI 00372 Pressure Regulator 230/N10 - Murex
(10/88)
PGI 00373 Nitrogen Gas Filter Nupro - Manchester
Housing (Stainless SS-4TF - valve
Steel) (9/88)
PGI 00374 Desiccant Housing for 304L-HDF4 - Manchester
Nitrogen Gas -150CC Valve
(Stainless Steel) (11/88)
PGI 00375 Measurement Block - - In-house
(3/89)
PGI 00376 Taper Gauge 4.5 mm - In-house
(3/89)
PGI 00377 Desiccator - - Metlab
(9/88)
PGI 00378 De-gassing Vessel - - Butler-Impact
(Stainless Steel) (8/88)
PGI 00379 Air Filter Housing Maxisart - Sartorius
(small) (9/88)
PGI 00380 Clean Room Chair
PGI 00381 Clean Room Chair
PGI 00382 Clean Room Chair
PGI 00383 Clean Room Chair
PGI 00384 Washing Rig. (including - - In-House
Washing Tank, Overflow
Tank, Header Tank,
Re-Circulation Pump
and Control Panel)
PGI 00385 Drying Oven T9V 89C204 Genlab.
(Incubator) (4/89)
PGI 00386 ESCO Mixer (10 litre) ELIO 310 E. Schweizer
with controller Parts & Co.
1 and 2 (7/89)
PGI 00387 U.V. Irradiation Chamber 104 3633 Hanovia
(7/89)
- 4 -
39
PGI 00388 Filter Housing - - Total
Filtration
(7/89)
PGI 00389 Packaging Machine SH 9-13B Nelipak
(8/89)
PGI 00390 Environmental Air System NSA Air E000116164
Cleaners 34391
PGI 00391 Environmental Air System NSA Air E00029807
Cleaners 06591
PGI 00392 Digimatic Caliper 500 - 321 7108194 Mitutoyo
(1/90)
PGI 00393 Bore Gauge Set 154 - 901 - Mitutoyo
(0.125 - 0.5 inch) (1/90)
PGI 00394 Ultrasonic Bath PULS 55 2919 J Kerry
PGI 00395 Vacuum Cleaner Nilfisk 0417506 Nilfisk
(dedicated for Clean GS 80/GST (3/89)
Room use only - fitted
with HEPA exhaust filter)
PGI 00396 Thermometer (0-120 C) STPTC 68965 Metlab
Standard (11/90)
PGI 00397 Heat Sealer HM3000 CD 30CD/1583 Hulme-Marti
(3/91)
PGI 00398 Digital Thermometer TemPen - J. Bibby
(TP150) (4/89)
PGI 00399 Set of Brass Weights - - Salter
(9/88)
PGI 00400 pH and Conductivity AG84000 10346 C.S.I.
Meter (3/91)
PGI 00401 Astra Pac Senator
Pouch Sealer
PGI 00402 N0800 Overhead Projector
PGI 00403 2-drawer brown/cream
filing cabinet
PGI 00404 2-drawer brown/cream
filing cabinet
- 5 -
40
PGI 00405 4-drawer brown/cream
filing cabinet
PGI 00406 4-drawer brown/cream
filing cabinet
PGI 00407 4-drawer brown/cream
filing cabinet
PGI 00408 4-drawer brown/cream
filing cabinet
PGI 00409 4-drawer brown/cream
filing cabinet
PGI 00410 4-drawer brown/cream
filing cabinet
PGI 00411 Brown/cream metal cabinet
1010 x 920 x 460 mm
PGI 00412 Brown/cream metal cabinet
1020 x 920 x 460 mm
PGI 00413 Brown/cream metal cabinet
900 x 600 x 500 mm
PGI 00414 Brown/cream metal cabinet
900 x 600 x 500 mm
PGI 00415 Grey metal cabinet
920 x 700 x 480 mm
PGI 00416 Grey metal cabinet
900 x 700 x 480 mm
PGI 00417 Grey metal cabinet
900 x 700 x 480 mm
PGI 00418 Tall metal cabinet
PGI 00419 Metal Desk/Work Bench
PGI 00420 Exhibition Stand
PGI 00421 Magnifying Lamp
PGI 00422 Flip Chart Holder
PGI 00423 Sieve (250 microns)
PGI 00424 Sieve (250 microns)
- 6 -
41
PGI 00425 Sieve (850 microns)
PGI 00426 1 m/39" Steel Rule
PGI 00427 Graft Inspection Lamp
and Probes
PGI 00428 Pentium/60/540/8 00009034 50990076 ESCOM
PCI Mini Tower (3/95)
PGI 00429 14" Monitor NI MPRII EM1448LR 59A505134-2 ESCOM
BEIGE (03/95)
PGI 00430 Pentium/60/540/8 00009034 50990063 ESCOM
PCI Mini Tower (3/95)
PGI 00431 14" Monitor NI MPRII EM1448LR 95A505086-2 ESCOM
BEIGE (3/95)
PGI 00432 Pentium/60/540/8 00009034 50990068 ESCOM
PCI Mini Tower (3/95)
PGI 00433 14" Monitor NI MPRII EM1448LR 95A407505-3 ESCOM
BEIGE (3/95)
PGI 00434 White Incubator Heraeus ex Convatec (12/95)
PGI 00435 Metal 2-door filing cabinet ex Convatec (12/95)
PGI 00436 Metal 2-door filing cabinet ex Convatec (12/95)
PGI 00437 Yellow Metal Chemical ex Convatec (12/95)
Storage
PGI 00438 Shredder 160 Auto Typewriter
Rexel Exchange
PGI 00439 4-drawer brown/beige ex Convatec (12/95)
filing cabinet
- 7 -