EXHIBIT 10.28
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TECHNOLOGY LICENSE AGREEMENT
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This Agreement is between O'Donnell Eye Center, Incorporated, a Missouri
corporation, having a place of business at 709 The Hamptons, Town & Country,
Missouri 63017-5901 ("OECI") and BIOLASE Technology, Inc., a Delaware
corporation having a place of business at 981 Calle Amanecer, San Clemente, CA
92673 ("BIOLASE"), and shall be effective as of July 2, 1998 ("the Effective
Date").
1. GENERAL
1.1. OECI is the owner by assignment of a certain new and useful "Laser
Apparatus and Method for Subsurface Cutaneous Treatment" which is
disclosed and claimed in a pending United States patent application
Serial No. 09/015,993, filed on January 30, 1998, together with the
know-how ancillary thereto ("the KNOW-HOW"), (collectively "the
TECHNOLOGY").
1.2. BIOLASE desires to acquire from OECI the exclusive worldwide rights to
make, use, import, offer for sale, and sell throughout the world
products embodying the TECHNOLOGY ("PRODUCTS") for use solely for laser
treatment in the field of aesthetic "skin rejuvenation" as it now exist
and as it may exist in the future, including but not limited to
wrinkle reduction, reduction of rhytides, increased skin tone,
promotion of new collagen formation, and reduction of striae applicable
to aesthetic skin rejuvenation ("the FIELD OF USE").
1.3. OECI is willing to grant to BIOLASE the exclusive worldwide rights to
make, use, import, offer for sale, and sell PRODUCTS throughout the
world for use solely in the FIELD OF USE, subject to the terms and
conditions stated in this Agreement.
2. GRANT OF LICENSE
2.1. In consideration of the issuance by BIOLASE to OECI of 50,000 shares of
BIOLASE's common stock, $0.001 par value ("the Shares"), OECI hereby
grants to BIOLASE, and BIOLASE accepts, the exclusive right in
perpetuity to make, use, import, offer for sale, and sell PRODUCTS
throughout the LICENSED TERRITORY for use solely in the FIELD OF USE,
under the terms and conditions stated in this Agreement. As used
herein, "LICENSED TERRITORY" means the entire world, encompassing all
its continents and oceans, regardless of whether patent rights exist
and are enforceable at the time of execution of this Agreement, or
shall mature and become enforceable during the term of this Agreement,
in all of the nations in which BIOLASE intends to exercise the rights
granted to it under this Agreement.
2.2. BIOLASE shall have the right to grant sublicenses to third parties for
the manufacture, use, import, export, offer for sale or sale of
PRODUCTS or essential components thereof in the LICENSED TERRITORY for
use solely in the FIELD OF USE according to BIOLASE's best judgment as
to how the licensed products may be made, sold and generally
commercialized most efficiently, provided the sublicensees, if any,
accept and abide by all obligations under this Agreement.
2.3. BIOLASE shall mark all licensed products for sale in the LICENSED
TERRITORY in accordance with the statutes of the United States and/or
the countries where PRODUCTS are sold relating to marking and labeling
of medical devices and to marking patented products. BIOLASE shall also
mark and label PRODUCTS "For use only in laser treatment for the
purpose of wrinkle reduction, reduction of rhytides, increased skin
tone, promotion of new collagen formation, and reduction of striae
applicable to aesthetic skin rejuvenation."
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2.4. BIOLASE may assign its rights and obligations under this Agreement as
part of a transfer of all or substantially all of BIOLASE's entire
business in the PRODUCTS. In all other cases, BIOLASE shall obtain, in
advance, the approval of OECI of an assignment of BIOLASE's rights and
obligations under this Agreement to a third party, which approval shall
not be unreasonably withheld by OECI. BIOLASE shall also obtain the
agreement of an approved assignee to abide by all the terms and
conditions of this Agreement.
2.5. Nothing in this Agreement shall be construed as obligating OECI or any
of its officers, directors or employees to provide consulting services
in connection with the KNOW-HOW to BIOLASE.
3. GRANTS, REPORTS, AND PAYMENTS
3.1. (a) OECI understands that the Shares have been issued to OECI pursuant
to an exemption under the Securities Act of 1933, as amended ("the
Securities Act") and, accordingly, that the Shares are "restricted"
securities as defined in the Securities Act and therefore may not
be sold or otherwise transferred unless registered under the
Securities Act or an exemption from such registration is available.
BIOLASE at its expense will, within forty-five (45) days following
the Effective Date, prepare and file and will thereafter prosecute
diligently to effectiveness a registration statement under the
Securities Act, which registration statement shall provide for the
resale of the Shares. BIOLASE shall also prepare and file such
amendments and supplements to such registration statement and the
prospectus contained therein as may be necessary to maintain the
effectiveness of such registration statement and to make available
a prospectus meeting the requirements of the Securities Act on as
continuous a basis as practicable for two years following the
Effective Date or until such earlier date as counsel for both the
holder of the Shares and BIOLASE concur that all such Shares may be
immediately sold pursuant to Rule 144 issued under the Securities
Act.
(b) OECI and its shareholders shall cooperate fully with BIOLASE in the
preparation of such registration statement and shall respond promptly
and accurately to all reasonable requests from BIOLASE for information
for inclusion in or otherwise related to such registration statement.
(c) In connection with the registration of Shares pursuant to this
Section 3.1, BIOLASE shall indemnify OECI, its affiliates and its
shareholders against all losses, claims, damages, expenses and
liabilities caused by or arising out of any untrue statement or alleged
untrue statement of a material fact contained in any registration
statement or prospectus (as amended or supplemented) relating to such
registration statement, or caused by any omission or alleged omission
to state a material fact required to be stated therein or necessary to
make the statements therein not misleading in light of the
circumstances under which they are made, unless such statement or
omission was made in reliance upon and in conformity with information
furnished to BIOLASE by OECI, specifically for use therein. OECI shall
indemnify BIOLASE and its officers, directors, stockholders and other
persons controlling, controlled by or under common control with BIOLASE
with respect to losses, claims, damages, expenses and liabilities
caused by any untrue statement or alleged untrue statement of a
material fact contained in any registration statement or prospectus (as
amended or supplemented) relating to such registration statement, or
caused by any omission or alleged omission to state a material fact
required to be stated therein or necessary to make the statements
therein not misleading in light of the circumstances under which they
are made to the extent such statement or omission was made in reliance
upon and in conformity with information furnished by OECI to BIOLASE
specifically for use in such registration statement or prospectus.
(d) If the indemnification provided for in this Section 3.1 is
unavailable to an indemnified party in
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respect to any losses, claims, damages, liabilities or expenses referred to
herein, then an indemnifying party, in lieu of indemnifying such
indemnified party, shall contribute to the amount paid or payable by such
indemnified party as a result of such losses, claims, damages, liabilities
or expenses in such proportion as is appropriate to reflect their relative
fault in connection with the statements or omissions that resulted in such
losses, claims, damages, liabilities or expenses. The relative fault shall
be determined by reference to, among other things, who supplied the
information to which the untrue or alleged untrue statement of a material
facts or the omission or alleged omission to state a material fact relates
and the parties' relative intent, knowledge, access to information and
opportunity to correct such statement or omission.
3.2. (a) OECI has filed in the United States such patent applications for the
TECHNOLOGY ("the U.S. Applications") as OECI deems necessary to protect the
TECHNOLOGY in the United States. OECI shall diligently prosecute the U.S.
Applications, using Gregory J. Lavorgna, Esq. of Seidel, Gonda Lavorgna
and Monaco, P.C., 2 Penn Center Plaza, Suite 1800, Philadelphia, PA 19102
("Counsel"). OECI shall cause such Counsel to timely notify BIOLASE in
writing of all costs and fees, including attorneys fees and costs, required
in connection with the U.S. Applications. BIOLASE shall promptly pay
directly to OECI's Counsel, upon demand, all such costs and fees, including
reasonable attorneys fees and costs, in connection with the U.S.
Applications from the Effective Date of this Agreement.
(b) Within fifty (50) days from the Effective Date of this Agreement,
BIOLASE shall provide OECI with a list of countries outside the United
States in which BIOLASE wishes to seek patent coverage ("the BIOLASE
Foreign Applications List"). OECI shall promptly prepare and file patent
applications in each country on the BIOLASE Foreign Applications List ("the
BIOLASE Foreign Applications"). OECI shall diligently prosecute the
BIOLASE Foreign Applications, using OECI's Counsel. OECI shall cause such
Counsel to timely notify BIOLASE in writing of all costs and fees,
including attorney's fees and costs, required in connection with the
BIOLASE Foreign Applications. BIOLASE shall promptly pay directly to
OECI's Counsel, upon demand, all such costs and fees, including reasonable
attorneys fees and costs, incurred by OECI in connection with the BIOLASE
Foreign Applications from the Effective Date of this Agreement.
(c) Upon receipt of the BIOLASE Foreign Applications List, OECI shall
review the same and shall provide to BIOLASE a list of additional
countries, if any, in which OECI wishes to seek patent coverage ("the OECI
Foreign Applications List"). BIOLASE shall, within twenty (20) working
days of receipt of the OECI Foreign Applications List, indicate its
intention to transfer a country listed on the OECI Foreign Applications
List to the BIOLASE Foreign Applications List. For each country
transferred from the OECI Foreign Applications List to the BIOLASE
Applications List, OECI shall promptly prepare and file patent applications
in each such country and shall diligently prosecute such applications,
using OECI's Counsel, and BIOLASE shall promptly upon demand from OECI
reimburse OECI for all costs and fees, including attorneys fees and costs,
incurred by OECI in connection with such applications from the Effective
Date of this Agreement. OECI shall bear all costs and fees, including
reasonable attorneys fees and costs, in connection with the preparation,
filing, and prosecution of patent applications in all countries listed
solely on the OECI Foreign Applications List.
(d) BIOLASE shall have no rights to make, use, import, offer for sale or
sell PRODUCTS embodying the TECHNOLOGY in the countries listed solely on
the OECI Foreign Applications List and in which OECI shall have filed and
prosecuted patent applications. However, OECI shall not have the right to
make, use, import, offer for sale or sell or license a third party to make,
use, import, offer for sale or sell, PRODUCTS embodying the TECHNOLOGY in
the FIELD of USE and BIOLASE shall have the option to obtain rights to the
TECHNOLOGY in a country listed solely on the OECI Foreign Applications List
upon satisfaction of the following conditions:
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BIOLASE shall notify OECI in writing of its intent to exercise
the option and shall pay to OECI an amount equal to one hundred
fifty percent (150%) of all costs and fees, including attorneys
fees and costs, actually incurred by OECI from the Effective Date
of this Agreement in connection with the preparation, filing, and
prosecution of patent applications in such country. In the event
OECI shall have licensed a third party in such country before
BIOLASE shall have exercised its option under this subparagraph
3.2(d), and such third party shall have paid all costs and fees,
including attorneys fees and costs, incurred by OECI in
connection with the preparation, filing, and prosecution of
patent applications in such country, then BIOLASE shall notify
OECI in writing of its intent to exercise the option, but shall
not be required to pay to OECI costs and fees associated with the
patent applications in such country.
Nothing in this Agreement shall preclude BIOLASE from exercising any rights
it may have pursuant to this Agreement in countries listed on neither the
BIOLASE Foreign Applications List nor the OECI Foreign Applications List,
or in which no patents are granted on the TECHNOLOGY.
3.3. In the event that no U.S. patent issues which covers the TECHNOLOGY, or in
the event that a court of competent jurisdiction shall enter a final
judgment that the TECHNOLOGY infringes the valid patent rights of a third
party, from which judgment no appeal has been or can be taken, OECI shall
not have any obligation at any time to return the Shares of BIOLASE stock.
3.4. OECI shall not grant rights in and to the TECHNOLOGY to any third party
which would infringe upon, restrict or otherwise impair the rights granted
to BIOLASE hereunder. However, nothing in this Agreement shall prevent
OECI from using, licensing, or otherwise exploiting the TECHNOLOGY outside
the FIELD OF USE.
4. REGULATORY APPROVAL
4.1. BIOLASE shall bear the sole responsibility and expense for securing
regulatory approval for the sale and use of PRODUCTS in the LICENSED
TERRITORY as may be required by law.
5. REPRESENTATIONS AND WARRANTIES OF OECI; INDEMNITIES BY OECI
5.1. OECI hereby represents and warrants to BIOLASE that OECI is the owner of
the entire right, title and interest in or otherwise has the right to
use the TECHNOLOGY free and clear of all liens and security interests.
5.2. All pending applications pertaining to the TECHNOLOGY ("the
Applications") have been properly made and filed and all annuity,
maintenance, renewal and other fees relating to the Applications are
current.
5.3. Neither Terry A. Fuller nor Francis E. O'Donnell, Jr., is aware of (i)
any reason why the TECHNOLOGY would be deemed to be invalid,
unenforceable, or not in good standing, or (ii) any equitable defenses
to enforcement based on any act or omission of OECI.
5.4. No actions or other judicial or adversary proceedings concerning the
TECHNOLOGY have been threatened and, to OECI's Knowledge (which means
the actual knowledge of Terry A. Fuller and Francis E. O'Donnell, Jr.),
no such action or proceeding is threatened.
5.5. To OECI's Knowledge, (i) OECI has the right to use the TECHNOLOGY in its
business, and (ii)
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such use does not conflict with, infringe upon, or violate any rights of
any other person.
5.6. There are no outstanding disputes or other disagreements with respect to
the TECHNOLOGY, and to OECI's knowledge no such disputes or
disagreements are threatened.
5.7. All of OECI's representations and warranties herein shall expire 24
months after the Effective Date.
5.8 OECI has the corporate power to enter into this Agreement and all
agreements contemplated hereunder, and to carry out its obligations
hereunder and thereunder. The execution and delivery of this Agreement
and the performance of OECI's obligations hereunder have been duly
authorized by the directors of OECI, and no other corporate proceedings
on the part of OECI are necessary to authorize such execution, delivery,
and performance.
5.9 This Agreement has been duly executed by OECI and constitutes a valid
and legally binding obligation of OECI, enforceable against OECI in
accordance with the terms hereof.
5.10 OECI is an "accredited investor", as defined in Rule 501 of Regulation D
because each of its shareholders (Francis O'Donnell and Terry A. Fuller)
is an "accredited investor", and is acquiring the Shares for OECI's own
account and not for the account or benefit of any other person. The
Shares are being acquired by OECI for investment and not with a view to
the distribution or resale thereof, except as permitted by the
Securities Act of 1933 and other applicable securities laws.
By reason of the business and financial experience of OECI, its
affiliates and the persons OECI has retained to advise it with respect
to the transactions contemplated by this Agreement, none of whom are
directly indirectly affiliated with or compensated by BIOLASE, OECI has
such knowledge, sophistication and experience in business and financial
matters to enable OECI to evaluate the merits and risks of the
acquisition of Shares.
OECI has carefully reviewed and considered (i) BIOLASE's Annual Report
on Form 10'K for the year ended December 31, 1997, (ii) BIOLASE's
Quarterly Report on Form 10-Q for the quarter ended March 31, 1998,
(iii) BIOLASE's proxy statement dated April 20, 1998 for its Annual
Meeting of Stockholders held on May 19, 1998 and (iv) BIOLASE's Private
Placement Memorandum dated April 21, 1998, receipt of each of which is
hereby acknowledged, and understands and has evaluated the risks of an
acquisition of Shares, including without limitation the risks set forth
in the Memorandum under "Risk Factors". Except as indicated in the next
sentence, OECI has relied on no information supplied by or on behalf of
BIOLASE other than the information contained in the above-referenced
Reports, proxy statement and the Memorandum. OECI confirms that it has
been given the opportunity to ask questions of BIOLASE and its
management concerning BIOLASE and the Shares, and OECI has received
satisfactory written responses to all such questions, if any.
5.11 From and after the Effective Date, OECI agrees to indemnify and hold
harmless BIOLASE and its officers, directors, and agents from and
against any damages, liabilities, assessments, losses, costs, and
expenses (including but not limited to reasonable attorneys' fees and
other expenses incurred in litigation or otherwise) (collectively
"Losses") suffered or paid, directly or indirectly, as a result of any
and all claims, demands, suits, causes of action, proceedings, or
judgments, assessed, incurred, or sustained by or against BIOLASE or any
of its officers, directors, or agents, arising out of, resulting from,
or related to the transaction between OECI and BIOLASE under this
Agreement, including but not limited to the following:
i. the failure of any representation or warranty made by OECI in this
Agreement to be
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true and correct in all material respects as of the EFFECTIVE DATE
(but not for Losses in excess of the value of the Shares on the date
hereof); and
ii. the breach by or nonperformance of OECI of its obligations under
this Agreement.
5.12 Other than as set forth herein, OECI makes no representations or
warranties of any kind, express or implied, under this Agreement with
regard to the TECHNOLOGY or to the merchantability, fitness, or fitness
for a particular purpose of any products produced pursuant to the
rights and license granted herein. OECI shall have no responsibility
under this Agreement for any loss of profits, or punitive,
consequential, or indirect damages.
6. REPRESENTATIONS AND INDEMNITIES BY BIOLASE; INSURANCE
6.1. BIOLASE has the corporate power to enter into this Agreement and all
agreements contemplated hereunder, and to carry out its obligations
hereunder and thereunder. The execution and delivery of this Agreement
and the performance of BIOLASE's obligations hereunder have been duly
authorized by the directors of BIOLASE, and no other corporate
proceedings on the part of BIOLASE are necessary to authorize such
execution, delivery, and performance.
6.2. This Agreement has been duly executed by BIOLASE and constitutes a
valid and legally binding obligation of BIOLASE, enforceable against
BIOLASE in accordance with the terms hereof.
6.3. From and after the Effective Date, BIOLASE agrees to indemnify and hold
harmless OECI and its officers, directors, and agents from and against
any damages, liabilities, assessments, losses, costs, and expenses
(including but not limited to reasonable attorneys' fees and other
expenses incurred in litigation or otherwise) (collectively "Losses")
suffered or paid, directly or indirectly, as a result of any and all
claims, demands, suits, causes of action, proceedings, or judgments,
assessed, incurred, or sustained by or against OECI or any of its
officers, directors, or agents, arising out of, resulting from, or
related to the transaction between OECI and BIOLASE under this
Agreement, including but not limited to the following:
i. the failure of any representation or warranty made by BIOLASE in
this Agreement to be true and correct in all material respects
as of the EFFECTIVE DATE;
ii. the breach by or nonperformance of BIOLASE of its obligations
under this Agreement;
iii. claims of a third party that any product made, used, sold, or
offered for sale pursuant to this Agreement or any sublicense
hereunder (except for sublicenses by OECI pursuant to Section
3.2(d) hereof) infringes the rights or properties of such third
party, except insofar as such product is limited solely to the
TECHNOLOGY.
6.4. OECI shall provide BIOLASE with written notice of all such claims,
demands, suits, causes of action, proceedings, assessments, or
judgments within thirty (30) days after OECI acquires knowledge
thereof. In the event such notice is not given to BIOLASE, BIOLASE
shall be relieved of its indemnity obligations under this Agreement if
BIOLASE is materially prejudiced by such failure to give such notice.
6.5. BIOLASE shall maintain at its own expense in full force and effect at
all times during which PRODUCTS are being sold, with a responsible
insurance carrier, at least a Three Million Dollar ($3,000,000)
products liability insurance policy with respect to PRODUCTS. This
insurance policy shall name OECI as co-insured.
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7. TERM OF AGREEMENT
7.1. The term of the exclusive rights granted herein shall be for a period
from the EFFECTIVE DATE of this Agreement through the expiration of the
last of the patents covering the TECHNOLOGY. Notwithstanding the
preceding sentence, the term of the rights granted in the KNOW-HOW
shall be in perpetuity.
7.2. Upon termination of the license granted herein prior to the expiration
of the term hereof for any reason, BIOLASE shall not thereafter make,
use, sell, distribute, or offer for sale any products which include any
of the features, designs, technical information, or know-how pertaining
to the TECHNOLOGY.
8. BREACH OR DEFAULT
8.1. In the event of a material breach of any provision of this Agreement,
or default on any obligation imposed on either party by this Agreement,
the non-breaching party shall give written notice of the breach to the
other party within sixty (60) days of the non-breaching party learning
of said breach or default. If the breach or default shall not have been
remedied within thirty (30) days of written notice of the breach, or if
such breach or default cannot be cured within thirty (30) days, or if
the other party shall not have commenced a cure within such thirty (30)
days and thereafter diligently prosecuted such cure to completion, the
non-breaching party shall have the right to terminate this Agreement
immediately by written notice.
8.2. BIOLASE acknowledges that compliance with the provisions of this
Agreement is necessary to protect the business and good will of OECI,
and that any breach of this Agreement will result in irreparable and
continuing damage to OECI, for which money damages will not provide
adequate relief. Consequently, BIOLASE agrees that in the event BIOLASE
breaches or threatens to breach a material provision of this Agreement,
OECI shall have the following rights and remedies, each of which rights
and remedies shall be independent of the others and severally
enforceable, and each of which is in addition to, and not in lieu of,
any other rights and remedies available to OECI under law or in equity:
i. Specific Performance. The right and remedy to have this Agreement
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specifically enforced against BIOLASE by any court of competent
jurisdiction, it being agreed that any breach or threatened breach
of a material provision of this Agreement would cause irreparable
injury to OECI and that money damages would not provide an
adequate remedy to OECI.
ii. Accounting. The right and remedy to require BIOLASE to account for
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and pay over to OECI all profits, moneys, accruals, increments, or
other benefits derived or received by BIOLASE as a result of any
transactions constituting a material breach of the provisions of
this Agreement.
8.3. OECI acknowledges that compliance with the provisions of this Agreement
is necessary to protect the business and good will of BIOLASE, and that
any breach of this Agreement will result in irreparable and continuing
damage to BIOLASE, for which money damages will not provide adequate
relief. Consequently, OECI agrees that in the event OECI breaches or
threatens to breach a material provision of this Agreement, BIOLASE
shall have the following rights and remedies, each of which rights and
remedies shall be independent of the others and severally enforceable,
and each of which is in addition to, and not in lieu of, any other
rights and remedies available to BIOLASE under law or in equity:
i. Specific Performance. The right and remedy to have this Agreement
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specifically enforced against OECI by any court of competent
jurisdiction, it being agreed that any breach or threatened breach
of a material provision of this Agreement would cause
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irreparable injury to BIOLASE and that money damages would not
provide an adequate remedy to BIOLASE.
8.4. BIOLASE and OECI each acknowledges that it has had the assistance of
legal counsel in the review and execution of this Agreement.
8.5. Waiver by either OECI or BIOLASE of any right, or failure to perform or
breach by the other, shall not be deemed to be a waiver of any other
right or obligation provided herein, whether of a similar nature or
otherwise.
9. CONFIDENTIALITY OF INFORMATION
9.1. It is recognized by the parties that in carrying out this Agreement,
knowledge and experience furnished by one party to the other will
contain and incorporate confidential and proprietary information. Each
party agrees that it shall maintain as confidential all such
information, which is not publicly known or is acquired in a manner that
would not constitute a breach of this Agreement, for the term of this
Agreement. Upon termination of this Agreement prior to the term hereof,
the receiving party agrees that it will make no further use of the
confidential information of the disclosing party; and the receiving
party agrees upon such termination to immediately deliver to the
disclosing party such information as it shall possess in tangible or
written form, including all copies thereof.
10. ENFORCEMENT OF INTELLECTUAL PROPERTY RIGHTS
10.1. BIOLASE, as exclusive licensee in the FIELD OF USE, shall have the
right to seek legal remedies for infringement of the patent rights in
the FIELD OF USE, if any, covering the TECHNOLOGY by filing and
prosecuting actions for infringement. Unless to remedy a breach by OECI
of its representations and warranties in this Agreement, any legal
action undertaken by BIOLASE to enforce the licensed patent rights shall
be at BIOLASE's sole cost and expense. Any recovery of damages, costs of
the action, attorney fees, and all other financial damages recovered in
an action for infringement of the patent rights shall belong to BIOLASE.
If BIOLASE determines to settle any such infringement action, BIOLASE
shall first gain approval from OECI, which shall not be unreasonably
withheld. OECI hereby agrees to be named as a plaintiff in any
infringement action that BIOLASE deems it necessary to prosecute,
provided BIOLASE pays all of OECI's costs and expenses incurred in
connection therewith and fully indemnifies OECI against all losses
arising out of, relating to or connected with, any such action. BIOLASE
shall give notice to OECI before filing any infringement lawsuit.
10.2. Nothing in this Agreement, including the provision in the previous
paragraph granting BIOLASE the right to sue and recover damages for
infringement of the patent rights, if any, covering the TECHNOLOGY,
shall be construed to require BIOLASE to sue any infringer or all
infringers. BIOLASE may exercise its business discretion to determine
the necessity or practicality of enforcing the patent rights at all
times during the term of this Agreement. Nothing in this Agreement shall
be construed to prevent OECI from suing an infringer of any of the
patents and retaining all damages recovered by OECI. OECI shall give
notice to BIOLASE before filing an infringement lawsuit on any patent
covering the TECHNOLOGY.
11. OBLIGATIONS TO BENEFIT OECI and BIOLASE
11.1. The obligations of BIOLASE under this Agreement shall be for the
benefit of the successors and assigns of OECI.
11.2. The obligations of LSTI under this Agreement shall be for the benefit
of the successors and assigns of BIOLASE.
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12. NOTICES
12.1. All notices provided for in this Agreement shall be in writing and
shall be considered delivered when they are delivered, in hand or by
mail, certified return receipt or registered with postage prepaid,
or by facsimile transmission and received by the respective parties
at their addresses set forth above.
13. CONFIDENTIALITY OF AGREEMENT
13.1. The parties agree that the terms of this Agreement shall remain
confidential, and that neither party shall publicize or disclose the
terms of this Agreement to any other party, as except as may by
specifically required by law.
14. IMPOSSIBILITY OF PERFORMANCE
14.1. In the event that the performance by any party hereto of its
obligations hereunder shall be interrupted or delayed by any
occurrence not occasioned by the conduct of either party hereto,
whether such occurrence be an act of God or the common enemy or the
result of war, riot, civil commotion or sovereign conduct, then the
party whose performance is so delayed or interrupted shall be
excused from such performance for such period of time as is
reasonably necessary after the occurrence to remedy the effects
thereof.
15. ENFORCEMENT OF AGREEMENT AND APPLICABLE LAW
15.1 The parties submit exclusively to the jurisdiction of the state and
federal courts located in the Commonwealth of Pennsylvania for the
purpose of deciding all questions, disputes, or causes, including
questions of breach of any material provision of this Agreement or
default of any material obligation imposed on either party by this
Agreement, whether the relief sought is injunctive relief or
otherwise, which may arise under this Agreement. In the event BIOLASE
or its successors or assigns is not qualified to do business in
Pennsylvania, the Secretary of the Commonwealth of the Commonwealth
of Pennsylvania is hereby designated as the agent of BIOLASE, its
successors, and assigns, to accept service of process for any actions
commenced under or to enforce this Agreement, provided that a copy of
any such process shall be delivered to BIOLASE, its successors, or
assigns, in accordance with the notice provisions of this Agreement.
15.2. This Agreement shall be construed and enforced according to the law
of the Commonwealth of Pennsylvania.
16. MISCELLANEOUS PROVISIONS
16.1. This instrument contains the entire agreement between the parties
respecting the subject matter herein described, and supersedes all
prior agreements, written or oral, concerning the same subject
matter. Each party acknowledges that it has read this Agreement,
understands it, and agrees to be bound by its terms. Any agreement,
representation, promise or condition in connection with the subject
matter of this Agreement that is not incorporated expressly herein
shall not be binding on either party.
16.2. All modifications to this Agreement are to be in writing and signed
by both parties. No modification of this Agreement nor modification
or waiver any of its provisions shall be binding upon either party
unless it is made in a writing signed by both parties for
incorporation into this Agreement.
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16.3. Nothing in this Agreement shall be deemed to create an agency, joint
venture, or partnership relation between OECI and BIOLASE.
16.4. Both parties hereby expressly agree that it is the intention of
neither party to violate any public policy, or any statutory or
common laws. If any provision of this Agreement is construed to be
unenforceable, illegal, or invalid, such provision shall be
inoperative and the enforceability, legality, or validity of the
other provisions of the Agreement shall not be affected thereby.
16.5. This Agreement has been entered into after negotiation and review of
its terms and conditions by parties under no compulsion to execute
and deliver a disadvantageous agreement. This Agreement incorporates
provisions, comments and suggestions proposed by both parties. No
ambiguity or omission in this Agreement shall be construed or
resolved against any party on the ground that this Agreement or any
of its provisions was drafted or proposed by that party.
IN WITNESS HEREOF, the parties have caused three copies of this
Agreement to be signed and sealed as originals as of the last date indicated
below, by their officers duly authorized to execute instruments on behalf of
BIOLASE and OECI, respectively.
BIOLASE, INC.
BY /s/ Donald LaPoint
--------------------
Donald LaPoint
President & CEO
O'Donnell Eye Centers, Inc
BY /s/ Francis O'Donnell, Jr., M.D.
---------------------------------
Francis O'Donnell, Jr., M.D.
President
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