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EXHIBIT 10.33
LICENSE AGREEMENT
THIS AGREEMENT is made and entered into as of December 29, 2000, by and
between ACCUMED INTERNATIONAL, INC., a Delaware corporation, with a business
address at 920 North Franklin Street, Suite 402, Chicago, IL 60610 ("AccuMed"),
MONOGEN, INC., a Nevada corporation, with a business address at 6 Taft Court,
Suite 150, Rockville, MD 20850 ("MonoGen"), and AMPERSAND MEDICAL CORP., a
Delaware corporation, with a business address at 414 North Orleans Street, Suite
510, Chicago, IL 60610 ("Ampersand").
RECITALS
A. AccuMed has developed a portfolio of intellectual property in the area
of (1) computer-aided microscopy, (2) quantitative microscopy systems, (3)
automated cytometry, and (4) disease detection, screening, diagnosis, prognosis,
and therapeutic monitoring using cytometric instruments and methods.
B. MonoGen is engaged in the research and development as well as the
commercialization of medical devices, products, and services.
C. MonoGen wishes to license from AccuMed, and AccuMed wishes to license to
MonoGen, all such intellectual property, limited to the Field of Use (as defined
herein), on the terms and conditions set forth in this Agreement.
AGREEMENTS
NOW, THEREFORE, in consideration of the foregoing recitals, the terms and
conditions set forth below, and other valuable consideration, the receipt and
sufficiency of which the parties acknowledge, the parties agree as follows:
1. Definitions. In this Agreement, the following terms shall have the
following meanings:
"AccuMed Intellectual Property Rights" shall mean any and all
intellectual property rights, patent rights, copyrights, trademarks, trade
secrets, information, and know-how, now or hereafter owned by, licensed to, or
controlled by AccuMed or any Affiliate thereof, including without limitation
AccuMed Patent Rights, AccuMed Technical Information, and AccuMed Trademarks.
"AccuMed Patent Rights" shall mean: the U.S. and other patents
listed in Exhibit A hereto; the U.S. and other patents that issue from the U.S.
and other patent applications listed in Exhibit A hereto; all other patents and
patent applications owned by, licensed to, or controlled by AccuMed or any
Affiliate thereof, on the date hereof; all patents that issue from applications
claiming the priority of any of the foregoing patents or patent applications;
all continuations,
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continuations-in-part, divisionals, re-examinations, reissues and extensions of
any of the foregoing; and all counterparts of any of the foregoing.
"AccuMed Technical Information" shall mean any and all trade secrets,
information, and know-how, now or hereafter owned by, licensed to, or controlled
by AccuMed or any Affiliate thereof, including without limitation any and all
software, tools, modules, products, and documentation relating to and updates to
the foregoing (all in both object and source code form), compositions, ideas,
formulas, inventions (whether patentable or not, and whether or not reduced to
practice), methods, processes, products, techniques, clinical data and reports,
technical data and know-how, testing data and specifications, invention records,
research records and reports, development reports, experimental and engineering
reports, pilot and other product designs, models, prototypes and specifications,
production designs and specifications, raw material specifications, quality
control reports and specifications, drawings, blueprints and photographs,
models, tools and parts, manufacturing and production processes and techniques,
and marketing data, reports and studies.
"AccuMed Trademarks" shall mean the trademarks, trade names, marks,
and other similar items listed in Exhibit B hereto.
"Affiliate" shall mean any corporation, limited liability company,
partnership, or other business entity controlled by, controlling, or under
common control with, the recited entity. "Control" shall mean direct or indirect
ownership of fifty percent (50%) or more of the voting power of, or fifty
percent (50%) or more of the equity interest in, such business entity.
Notwithstanding the foregoing, "Affiliate" shall exclude Oncometrics Imaging
Corp., a corporation continuing in the Yukon Territory, Canada.
"Excluded Field of Use" shall mean the use of the AccuMed Intellectual
Property Rights for: [***]1
"Exclusive Field of Use" shall mean, within the Nonexclusive Field of
Use, the use of AccuMed Intellectual Property Rights for [***]2 "Exclusive Field
of Use" shall exclude the Excluded Field of Use.
"Field of Use" shall mean Exclusive Field of Use and the Nonexclusive
Field of Use.
"Nonexclusive Field of Use" shall mean the use of AccuMed Intellectual
Property
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1[***] Confidential treatment has been requested for the bracketed
portion. The confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
2 [***] Confidential treatment has been requested for the bracketed
portion. The confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
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Rights [***]3 "Nonexclusive Field of Use" shall exclude the Excluded Field of
Use.
"Product" shall mean any component, device, equipment, kit,
instrument, method, product, or system, the making, having made, using, offering
to sell, selling, exporting, and importing of which, in absence of the license
granted hereunder, would infringe or misappropriate any AccuMed Intellectual
Property. The parties acknowledge that "Product" shall include, without
limitation, [***]4.
"Proposed Transaction" shall mean the transaction proposed, as of the
date hereof, by and between AccuMed and Ampersand, by which AccuMed and
Ampersand are to engage in an acquisition, merger, consolidation, or other
business combination.
2. Grant.
2.1. General. Subject to the terms and conditions of this Agreement,
AccuMed hereby grants to MonoGen, and MonoGen hereby accepts from AccuMed, an
irrevocable, worldwide, fully paid-up, and perpetual license to make, have made,
use, offer to sell, sell, export, and import Products in the Field of Use, under
and with respect to AccuMed Intellectual Property Rights.
2.2. Exclusivity. The license granted by Section 2.1 hereof shall be
exclusive in the Exclusive Field of Use and nonexclusive in the Nonexclusive
Field of Use. If MonoGen fails to generate any revenues from the sale of
Products in the Field of Use on or before the fifth anniversary of this
Agreement, such license shall become, as of such fifth anniversary, nonexclusive
also in the Exclusive Field of Use.
2.3. License Fee. In consideration of the license granted hereunder,
MonoGen shall pay to AccuMed a license fee of [***]5 of which shall be paid
immediately following the
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3 [***] Confidential treatment has been requested for the bracketed
portion. The confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
4 [***] Confidential treatment has been requested for the bracketed
portion. The confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
5 [***] Confidential treatment has been requested for the bracketed
portion. The confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
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execution of this Agreement, [***]6 on or before [***]7 before [***]8 before
[***]9 as set forth in a Promissory Note signed by MonoGen for the benefit of
AccuMed (the "Note"). MonoGen shall make the foregoing payments pursuant to
written wiring instructions received from AccuMed.
3. Term and Termination.
3.1. Term. The term of this Agreement and the license granted
hereunder shall commence on the date hereof and, unless terminated earlier
pursuant to this Section 3, shall continue in perpetuity.
3.2. Termination Upon Default. AccuMed and MonoGen each may terminate
this Agreement upon the breach by the other party of a material obligation
hereunder, which breach is not cured by the defaulting party within thirty (30)
days of written notice by the nondefaulting party. Notwithstanding the
foregoing, if AccuMed declares, in accordance with the Note, that the entire
unpaid balance of the Note is immediately due and payable, and if MonoGen fails
to pay such balance within five (5) business days of MonoGen's receipt of
Accumed's written notice declaring such balance immediately due and payable,
AccuMed may terminate this Agreement by prior written notice to MonoGen of three
(3) business days.
3.3. Termination by MonoGen. MonoGen may terminate this Agreement as
to any country or countries by prior written notice to AccuMed of thirty (30)
days, provided, however, that MonoGen shall not be relieved of its obligations
under Section 2.3 hereof.
3.4. Effect of AccuMed's Bankruptcy. In the event that AccuMed shall
declare or be declared bankrupt, MonoGen may terminate this Agreement. All
rights and licenses granted under or pursuant to this Agreement by MonoGen or
AccuMed are, and otherwise shall be deemed to be, for purposes of Section 365(n)
of the U.S. Bankruptcy Code, licenses of rights to "intellectual property" as
defined under Section 101 of the U.S. Bankruptcy Code. The parties agree that
MonoGen shall retain and may exercise fully all of its rights and elections
under the U.S. Bankruptcy Code. The parties further agree that, in the event of
the commencement of a bankruptcy proceeding by or against AccuMed under the U.S.
Bankruptcy Code, MonoGen shall be entitled to a complete duplicate of (or
complete access to, as appropriate) any intellectual property and all
embodiments of such intellectual property, and the same, if not already in
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6 [***] Confidential treatment has been requested for the bracketed
portion. The confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
7 [***] Confidential treatment has been requested for the bracketed
portion. The confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
8 [***] Confidential treatment has been requested for the bracketed
portion. The confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
9 [***] Confidential treatment has been requested for the bracketed
portion. The confidential redacted portion has been omitted and filed separately
with the Securities and Exchange Commission.
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MonoGen's possession, promptly shall be delivered to MonoGen (a) upon any such
commencement of a bankruptcy proceeding, upon MonoGen's written request
therefore, unless AccuMed (or a trustee on behalf of AccuMed) elects to continue
to perform all of its obligations under this Agreement or (b) if not delivered
under (a) above, upon the rejection of this Agreement by or on behalf of
AccuMed, upon written request therefore by MonoGen. In the event that MonoGen
elects to terminate this Agreement pursuant to this Section 3.4, all rights and
obligations hereunder shall terminate, provided however, MonoGen shall retain
all licenses granted hereunder to AccuMed Intellectual Property Rights.
4. AccuMed Intellectual Property Rights.
4.1. Intellectual Property Records. On or before January 31, 2001,,
AccuMed shall provide MonoGen with copies of all documents and materials
pertaining to AccuMed Intellectual Property Rights then existing. Thereafter,
AccuMed promptly shall provide MonoGen with copies of all documents and
materials pertaining to AccuMed Intellectual Property Rights acquired or
obtained by AccuMed during the term of this Agreement. Notwithstanding the
foregoing, AccuMed shall not be required to provide MonoGen with copies of
opinions of counsel pertaining to AccuMed Intellectual Property Rights
4.2. Patent Prosecution. At its expense and direction, AccuMed shall
prepare, file, prosecute, maintain, and/or defend the AccuMed Patent Rights.
AccuMed shall provide MonoGen with a reasonable opportunity to review and
comment on, and to propose claim language for, any papers pertaining to proposed
applications, responses, interferences, and oppositions before the filing
thereof by AccuMed with any national, regional, or international patent office.
With respect to the foregoing, if MonoGen concludes, in good faith, that taking
any specific action(s) or failing to take any specific action(s) likely would
have a material adverse effect on MonoGen's ability to commercialize the AccuMed
Patent Rights or to commercialize a particular Product hereunder, and if MonoGen
timely provides AccuMed written notice thereof, AccuMed shall not either take
such specific action(s) or fail to take such specific action(s) without
MonoGen's prior written consent (which consent shall not be unreasonably
withheld), provided, however, that AccuMed shall remain able to fulfill its
obligations to third parties under licenses existing on the date hereof. AccuMed
shall retain outside counsel mutually acceptable to MonoGen to fulfill AccuMed's
obligations under this Section 4.2. AccuMed and MonoGen acknowledge that, as of
the date hereof, the law firm of McDonnell Boehnen Hulbert & Berghoff
constitutes mutually acceptable counsel.
4.3. Abandonment of Patents or Applications. AccuMed shall be free, at
any time, to elect not to proceed with and/or to abandon the preparation,
filing, prosecution, maintenance or defense of any patent application or patent
within the AccuMed Patent Rights, provided that AccuMed shall provide MonoGen
written notice of such intention at least thirty (30) days before a final due
date which would result in the abandonment or bar of patentability of such
patent or patent application. In such case, MonoGen, at its option, and upon
written notice to AccuMed, may continue prosecution or maintenance, at its own
expense, of such patent or patent application, and AccuMed promptly shall assign
and transfer to MonoGen all of its right, title, and
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interest in and to such patent or patent application.
4.4. Infringement. If AccuMed or MonoGen learns, at any time, of any
infringement or misappropriation or threatened infringement or misappropriation
of any AccuMed Intellectual Property Right, such party promptly shall give
written notice to the other party of any such infringement or misappropriation.
Determination of the course of action then to be taken shall be based upon
consultation between the parties. If any such infringement or misappropriation
occurs on a commercial scale in the United States, Canada, European Union,
Japan, China, or Australia, then, subject to any legal advice to the contrary,
the parties agree that steps will be taken to end such infringement or
misappropriation, including the initiation of legal proceedings.
If AccuMed and MonoGen wish to institute a legal action or
proceeding against an infringer or misappropriator, then the parties shall do so
jointly and shall share equally the costs of any such action or proceeding and
any damages awarded as a result of any such action or proceeding.
If either AccuMed or MonoGen (but not the other party) wishes to
institute a legal action or proceeding, the party so wishing to commence an
action or proceeding can do so upon supplying to the other party a document
setting out its obligations to pay all costs of and incidental to such action or
proceeding, and to indemnify the other party against all such costs and all
liabilities which might be incurred as a result of any such action or
proceeding. The other party agrees to lend its name to the action or proceeding
and to render all reasonable assistance on technical matters relating to such
action or proceeding.
Notwithstanding the foregoing, if the validity of any AccuMed
Patent Right is placed in issue in any such action or proceeding, AccuMed, at
its expense, shall defend such issue.
4.5. Notices. MonoGen shall cause an appropriate trademark notice to
be affixed to or imprinted adjacent to each use of an AccuMed Trademark. AccuMed
agrees that MonoGen may use its own trademark, trade name, or mark in connection
with the sale of Products. MonoGen also shall cause an appropriate copyright
notice in the name of AccuMed to appear on all copyrighted materials licensed to
MonoGen hereunder.
4.6. Escrow. On or before January 31, 2001, AccuMed, at its own
expense, shall deposit, into escrow, with a nonaffiliated third party, and in a
form, reasonably acceptable to MonoGen, copies of all documentation and
material, in whatever format or medium, evidencing AccuMed Intellectual Property
Rights. AccuMed shall place in escrow at least the documentation and material
listed in Exhibit C hereto. AccuMed shall provide MonoGen with a list of all
documentation and material placed in escrow. The terms of the escrow, which
shall be subject to MonoGen's approval, shall provide that, in the event of the
commencement of a bankruptcy proceeding by or against AccuMed under the U.S.
Bankruptcy Code, or of similar dissolution, insolvency, reorganization, or other
proceeding involving the rights of creditors, MonoGen shall be entitled to
receive promptly all such documentation and material placed in escrow. The
parties
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acknowledge (I) that AccuMed may open the escrow jointly in its name and in the
name of its wholly owned subsidiary Oncometrics Imaging Corp., and (II) that
both AccuMed and the latter company may deposit, into such escrow, documentation
and material.
5. Covenants.
5.1. Nonsolicitation. Without AccuMed's prior written consent, neither
MonoGen nor any Affiliate thereof, for two (2) years from the date hereof, shall
hire, offer to hire, or solicit for employment any person who, on the date
hereof, was employed by AccuMed, until such person has been separated from
employment by AccuMed for at least 270 days. AccuMed and Ampersand hereby
consent to the employment by MonoGen of.Norman Pressman, William Mayer, Marc
Friedman, and Joseph Plandowski. AccuMed hereby acknowledges and agrees that
none of the foregoing individuals are subject to any limitations or restrictions
on employment (such as a covenant not to compete) that would interfere with
their employment by MonoGen. The parties acknowledge that, while employed by
MonoGen, Mr. William Mayer, for two (2) years, may devote up to fifty percent
(50%) of his working time to the provision of services to AccuMed, in exchange
for the payment by AccuMed to MonoGen of a reasonable consulting fee equal to
MonoGen's costs for Mr. Mayer. Without MonoGen's prior written consent, for two
(2) years from the date hereof, neither AccuMed, Ampersand, nor any Affiliate
thereof shall hire, offer to hire, or solicit for employment any person who is
employed by MonoGen, until such person has been separated from employment by
MonoGen for at least 270 days.
5.2. Confidentiality. No party hereto or any Affiliate thereof shall
use for any purpose inconsistent with this Agreement, disclose to any person
(other than to its attorneys and accountants as required by them to perform
customary services to such party), or keep or make copies of any documents,
tapes, discs, or programs containing any confidential and proprietary
information of any other party hereto or any Affiliate thereof. Each party
hereto and any Affiliate thereof shall keep such information in strictest
confidence. The parties acknowledge that, subject to Section 10.1 hereof, this
Agreement, along with the name of the parties hereto, the license fee required
hereby, the scope of the license granted hereby (such as the definition of Field
of Use), and the patents and patent applications included within the definition
of Licensed Patents, constitute confidential and proprietary information of
AccuMed and MonoGen and may not be used for any purpose inconsistent with this
Agreement or disclosed to any person without the other's prior written consent
(which consent shall not be unreasonably withheld or delayed).
5.3. Joint Venture. In the event that the Proposed Transaction is
consummated on or before June 30, 2001, MonoGen and Ampersand agree to
negotiate, in good faith, a product development agreement by which [***]10
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10 Confidential treatment has been requested for the bracketed portion.
The confidential redacted portion has been omitted and filed separately with the
Securities and Exchange Commission.
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5.4. Contract Research and Development. AccuMed and MonoGen
acknowledge that, on or before June 30, 2001, and subject to their agreement,
they may enter into a contractual relationship by which MonoGen provides
research and development services to AccuMed, in complementary, or at least
non-competitive, areas.
6. Representations and Warranties.
6.1. General. Each party hereto makes the following representations
and warranties to any other party hereto, each of which is true and correct on
the date hereof, and shall be unaffected by any investigation heretofore or
hereafter made by the other party or by any knowledge of the other party other
than as disclosed specifically in an exhibit to this Agreement.
a. Corporate. It is a corporation duly organized, validly
existing, and in good standing under the laws of the jurisdiction of its
incorporation. It is duly licensed or qualified to do business as a foreign
corporation, and is in good standing, in each jurisdiction in which the failure
to become licensed or qualified would have a material adverse affect on it or
its business as conducted now. It has all requisite corporate power and
authority to own, operate, and lease its properties, to carry on its business as
and where such business is being conducted now, to enter into this Agreement and
the other documents and instruments to be executed and delivered pursuant
hereto, and to perform in full the obligations contemplated hereby and thereby.
b. Authority. The execution and delivery of this Agreement and
the other documents and instruments to be executed and delivered by it pursuant
hereto and the performance by it of the obligations contemplated hereby and
thereby have been duly approved and authorized by it. No other or further
corporate act or proceeding on its part is necessary to approve or authorize
this Agreement or such other documents and instruments or the performance of
such obligations. This Agreement constitutes, and when executed and delivered
such other documents and instruments will constitute, valid binding agreements
on its part, enforceable generally in accordance with their respective terms and
conditions.
c. No Violation. Neither the execution and delivery of this
Agreement or the other documents and instruments to be executed and delivered by
it pursuant hereto, nor the performance by it of the obligations contemplated
hereby and thereby (I) will violate any applicable statute, law, ordinance,
rule, or regulation, or any order, writ, injunction, judgment, plan, or decree
of any governmental body, (II) will require any authorization, consent,
approval, exemption, or other action by or notice to any governmental body, or
(III) will violate or conflict with, or constitute a default (or an event which,
with notice or lapse of time, or both, would constitute a default) under, or
will result in the termination of, or accelerate the performance required by, or
result in the creation of any lien, security interest, claim, pledge, license,
assessment, covenant, restriction, charge, or other encumbrance of any nature
whatsoever upon any of its assets or properties under, any term or condition of
its charter or bylaws or of any contract, commitment, understanding,
arrangement, or restriction of any kind or character to which it or any
Affiliate is a party or by which it or any Affiliate or any of its assets or
properties may be bound or affected.
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6.2. Intellectual Property. AccuMed makes the following
representations and warranties to MonoGen, each of which is true and correct on
the date hereof, and shall be unaffected by any investigation heretofore or
hereafter made by MonoGen or by any knowledge of MonoGen other than as disclosed
specifically in an exhibit to this Agreement.
a. Title. AccuMed has good and marketable title to the AccuMed
Intellectual Property Rights, free and clear of all liens, security interests,
claims, pledges, licenses, assessments, covenants, restrictions, charges, or
other encumbrances of any nature whatsoever. AccuMed is the owner of all
interest, right, and title in and to the AccuMed Intellectual Property Rights.
None of the AccuMed Intellectual Property Rights to be licensed hereunder is
subject to any restriction with respect to the assignability, licensability, and
transferability thereof, and AccuMed has complete and unrestricted power and
right to grant the license granted hereunder. Neither AccuMed nor any Affiliate
thereof has any interest, right, or title in, to, or under any patent or patent
application (other than the AccuMed Patent Rights) in the Field of Use.
b. Compliance. The AccuMed Patent Rights currently are in
material compliance with all legal requirements in the United States, including
the payment of filing, examination, and maintenance fees. No AccuMed Patent
Right has been or is now involved in any interference, reissue, reexamination,
or opposition proceeding, and no such proceeding has been threatened in writing.
To the knowledge of AccuMed or any Affiliate, there is no patent, patent
application, printed publication, or other prior art of any person that
conflicts in any material respect with any AccuMed Patent Right.
c. Controversies. No litigation is now pending or was pending
during the last two (2) years, and, to the knowledge of AccuMed or any
Affiliate, no litigation has been threatened in writing during the last two (2)
years (I), except as described in Exhibit D hereto, alleging that AccuMed or any
Affiliate has engaged in any activity or conduct that infringes upon,
misappropriates, violates, or constitutes the unauthorized use of any
intellectual property rights of a third party, or (II) challenging the
ownership, use, validity, or enforceability of any AccuMed Intellectual Property
Right. Except as described in Exhibit D hereto, to the knowledge of AccuMed, no
third party is infringing, misappropriating, violating, or using without
authorization any AccuMed Intellectual Property Right, and no claims of the
foregoing has been brought against any third party.
7. Indemnification.
7.1. General. Each party shall indemnify, defend, and hold harmless
the other party against and from any claim, suit, action, damages, costs,
losses, and expenses (including without limitation court costs and reasonable
professional fees and disbursements) that, at any time, the other party may
suffer by reason of the breach by the indemnifying party of any covenant,
representation, warranty, or obligation in this Agreement.
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7.2. Procedures. Any indemnified party hereunder shall provide the
indemnifying party hereunder with prompt written notice of any action,
proceeding, or claim subject to indemnification hereunder by the indemnifying
party. The indemnifying party shall have the right to defend and settle, at its
or his sole discretion and expense, any such action, suit, proceeding, or claim,
provided, however, that the indemnifying party shall keep the indemnified party
informed fully of any material developments in such action.
8. Resolution of Disputes.
8.1. General. Any dispute, controversy, or claim arising out of or
relating to this Agreement or the license granted hereunder, the negotiations
hereof, the entry hereunto, or the performance by the parties of their
obligations hereunder shall be settled by binding arbitration conducted in
English, in Chicago, Illinois, in accordance with the then Commercial
Arbitration Rules of the American Arbitration Association, except as
specifically provided otherwise in this Section. This Section shall be construed
in accordance with the Federal Arbitration Act, notwithstanding any other choice
of law provision in this Agreement.
8.2. Arbitrators. If the matter in controversy (exclusive of
professional fees and disbursements) shall appear, as at the time of the demand
for arbitration, to exceed U.S. $500,000, then the panel to be appointed shall
consist of three (3) neutral arbitrators. Otherwise, the panel shall consist of
one (1) neutral arbitrator.
8.3. Authority. The arbitrator(s) shall have authority to award relief
under legal or equitable principles, including interim or preliminary relief,
and to allocate responsibility for the costs of the arbitration and to award
recovery of attorneys fees and disbursements in such manner as is determined to
be appropriate by the arbitrator(s).
8.4. Entry of Judgment. Judgment upon the award rendered by the
arbitrator(s) may be entered in any court having in personam and subject matter
jurisdiction. Judgment rendered by the arbitrator(s) shall be final and
non-appealable.
8.5. Confidentiality. All proceedings under this Section, and all
evidence given or discovered pursuant thereto, shall be maintained in confidence
by all parties and by the arbitrator(s).
8.6. Tolling. All applicable statutes of limitation with respect to
the matters specifically being arbitrated shall be tolled while the procedures
in this Section are pending. The parties shall take such action, if any,
required to effectuate such tolling.
8.7. Equitable Relief. Notwithstanding anything else to the contrary
in this Section 8, the parties acknowledge and agree that any breach of the
obligations set forth in Sections 4.6, 5.1, and 5.2 shall result in irreparable
injury to the affected party for which a remedy at law would be inadequate and
that, in addition to any other relief at law which may be
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available for such breach, the affected party shall be entitled to injunctive
and other equitable relief as a court may grant.
9. Notice. All notices, requests, demands, and other communications
permitted or required under this Agreement shall be given in writing and shall
be (a) delivered personally, (b) sent by registered or certified mail, return
receipt requested, postage prepaid, or (c) sent by a private courier service
that provides written confirmations of receipt. If delivered personally, such
communication shall be deemed given upon actual receipt. If sent by registered
or certified mail, such communication shall be deemed given as of the date of
delivery indicated on the return receipt. If sent by a private courier service,
such communication shall be deemed given as of the date of delivery indicated on
the written confirmation of receipt issued by the courier service. If the
intended recipient fails or refuses to accept delivery, such communication shall
be deemed given as of the date of such failure or refusal. Unless a party
furnishes in writing to the other party a new address, the respective addresses
of the parties to be used for any such communication are set forth at the
beginning of this Agreement.
10. Miscellaneous.
10.1. Announcements. Both the timing and the content of all
disclosures to third parties and all public announcements by any party hereto
concerning this Agreement, the terms and conditions set forth herein, and the
transactions contemplated hereby shall be subject to the prior written consent
of the other parties hereto (which consent shall not be unreasonably withheld or
delayed) in all essential respects, provided (I) that MonoGen's prior written
consent shall not be required as to any statements and other information which
AccuMed is required to submit to the Securities and Exchange Commission ("SEC")
or to NASDAQ, and (II) that the prior written consent of the other parties shall
not be required as to any statements and other information which the disclosing
party is required by law to disclose. Notwithstanding anything else to the
contrary in this Section 10.1, AccuMed shall use reasonable efforts, consistent
with applicable law, to avoid disclosing to the SEC, to NASDAQ, or otherwise as
required by law the name of Licensee, the license fee required hereby, the
specific scope of the license granted hereby (such as the definition of Field of
Use), and the patents and patent applications included within the definition of
Licensed Patents; and AccuMed shall provide MonoGen with prior written notice
before disclosing any of the foregoing information.
10.2. Entire Agreement. This Agreement and the exhibits hereto
constitute the entire agreement between the parties hereto with respect to the
subject matter hereof and supersede any prior understandings and agreements
between the parties with respect to such subject matter, including the document
entitled "Term Sheet: Patent and Technology License" signed by the parties.
10.3. Waiver. The failure of any party hereto at any time to require
performance by any other party hereto of any provision of this Agreement shall
not affect the right of such party to require in the future performance of that
or any other provision. To be effective, any
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waiver of any provision of this Agreement must be in writing, signed by the
party to be bound thereby. Unless otherwise provided expressly in writing, a
waiver by any party hereto of any breach of any provision of this Agreement
shall not be construed as a waiver of any continuing or succeeding breach of
such provision, waiver of the provision itself, or a waiver of any right under
this Agreement.
10.4. Severability. Should any part of provision of this Agreement be
held unenforceable or in conflict with the applicable laws or regulations of any
jurisdiction, the invalid or unenforceable part of provision shall be replaced
with a provision which accomplishes, to the extent possible, the original
business purpose of such part or provision in a valid and enforceable manner,
and the remainder of this Agreement shall remain binding upon the parties
hereto.
10.5. Assignment. Without the prior written consent of the other party
(which consent shall not be withheld or delayed unreasonably), no party to this
Agreement may assign, transfer, or encumber its rights hereunder or delegate its
obligations hereunder to any other party, whether by act or deed, voluntarily or
involuntarily, or by operation of law. Notwithstanding the foregoing, upon prior
written notice to the other party, each party hereto may assign this Agreement
to any Affiliate thereof or to any business entity purchasing all or
substantially all of its assets, any business entity surviving in a merger
involving such party hereto as a party thereto, or itself upon a change in
control, provided that such Affiliate or other assignee becomes bound by the
terms and conditions of this Agreement to the same extent as if it were named
originally as a party hereto.
The parties acknowledge that, as of the date hereof, AccuMed and
Ampersand and its wholly owned acquisition subsidiary are contemplating the
Proposed Transaction. MonoGen consents to the foregoing transaction, provided
that it is consummated on or before June 30, 2001. Ampersand agrees that, if the
Proposed Transaction is consummated, Ampersand and its wholly owned acquisition
subsidiary shall become bound also by the obligations of AccuMed hereunder.
10.6. Binding Effect. This Agreement shall inure to the benefit of,
and shall be binding upon, each party to this Agreement, its Affiliates, and
their respective permitted assigns and successors.
10.7. Governing Law. This Agreement shall be governed by and construed
in accordance with the laws of the State of Illinois other than its choice of
law principles, except that any question arising out of this Agreement as to the
validity, construction, or effect of any AccuMed Patent Rights shall be decided
in accordance with the patent laws of the applicable jurisdiction.
10.8. Venue. Subject to Section 8 hereof, any action or controversy by
and between the parties with respect to or relating to this Agreement shall be
brought in Federal District Court in Chicago, Illinois or in the Illinois state
courts of general jurisdiction in Chicago,
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Illinois. The parties hereby submit to the jurisdiction of such courts.
10.9. Expenses. Each party shall bear its own legal costs and expenses
arising out of the negotiation, execution and delivery of this Agreement and the
agreements contemplated hereby.
10.10. Relationship of Parties. Nothing in this Agreement is intended
or shall be deemed to constitute a partnership, agency, distributorship,
employer-employee, or joint venture relationship between the parties. No party
shall incur any debts or make any commitments for any other party hereto except
to the extent, if at all, specifically provided herein.
10.11. Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
10.12. Authority to Sign. Each individual signing this Agreement on
behalf of a party to this Agreement represents and warrants to the parties that
he or she is duly authorized to sign this Agreement on behalf of such party.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized officers.
ACCUMED MONOGEN, INC.
INTERNATIONAL, INC.
By: /s/ PAUL F. LAVALLEE By: /s/ ANDRE DENIS
---------------------------- ---------------------
Paul F. Lavallee Andre Denis
Chairman & CEO Chairman
AMPERSAND MEDICAL CORP.
By: /s/ PETER P. GOMBRICH
---------------------------
Peter P. Gombrich
Chairman & CEO
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