Exhibit 10.6
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Visx (logo)
PATENT LICENSE
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This Patent License (this "License") is entered into by and between VISX,
Incorporated ("VISX") and the Licensee listed below in connection with the use
of the VISX STAR S2(TM) Excimer Laser System Serial Number C3095 _ (the
"System") and is effective as of the date of the later of the parties signatures
set out below.
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The Licensee is: | The Authorized Users are:
Lasik America, Inc. | Stuart Cooper, M.D.
6644 Indian School Rd. NE | Alfred Lovato Jr., M.D.
Albuquerque, NM 87110 | Donald E. Rodgers, M.D.
| Stephen Graham, M.D.
System shall initially be installed at ("Site") | The License Fee is $100.00 per
| Licensed Procedure
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A. WHO MAY USE THE SYSTEM?
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Authorized Users. Licensee and the individuals designated above (the "Authorized
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Users") are the only persons permitted to use the System. Licensee shall permit
only eye care practitioners who have experience in the surgical management and
treatment of the cornea and who are legally qualified, properly licensed and
fully trained and certified by VISX (or its designees) to perform Licensed
Procedures (as defined below) on the System. Licensee will provide VISX at least
10 days prior written notice of any change in the designated Authorized Users.
Licensee represents, warrants and covenants that it is and its Authorized Users
are, and will remain for so long as Licensee is using the System, fully licensed
and legally qualified and certified by VISX to perform the specific Licensed
Procedure to be performed, and that Licensee and its Authorized Users shall
remain trained in the proper techniques for performing that Licensed Procedure
in the most effective and safe manner. Licensee shall notify VISX promptly of
any exception to the foregoing representation, warranty and covenant.
B. INTELLECTUAL PROPERTY RIGHTS
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1. Patents. The System, the VisionKey (R) card, and certain related
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disposables, and their use, are covered by several United States patents
for which VISX has the authority to provide this License. A list of these
patents is set forth in Schedule A (the "Patents"). The Patents cover
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apparatus and methods for performing ophthalmic laser surgery. Use of the
System to perform any procedure covered by the Patents is prohibited unless
such use is authorized by a valid VISX Patent License. The sale, lease or
other transfer of the System by VISX or any other person or entity does not
in any way grant a license under any Patent to use the System to perform
any procedures. Such license may only be granted by the delivery to VISX of
a fully-executed VISX Patent License.
2. Ownership of Intellectual Property Rights. VISX owns all right, title, and
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interest in the VisionKey cards, and in all of VISX's patents, trademarks,
trade names, inventions, copyrights, know-how, and trade secrets relating
to the design, use, manufacture, operation or service of the System and
relating to performance of Licensed Procedures. The use by Licensee of any
of these intellectual property rights is permitted only for the purposes
authorized in this License and only in connection with use of the System,
and upon termination of this License for any reason such authorization
shall cease. Licensee recognizes that performance of the Licensed
Procedures without payment of the License Fee constitutes infringement of
VISX's intellectual property rights.
C. GRANT
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1. License Grant. Subject to Licensee's compliance with the terms of this
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License. VISX continuations, continuations-in-part, divisional patents,
reexaminations, renewals, hereby grants to Licensee the right and license
under the Patents (including any extensions and reissues of such Patents)
to perform, and permit Authorized Users to perform, any ultraviolet laser
corneal surgery procedure using the System and related disposables, which
performance or use is covered by at least one claim of a Patent (a
"Licensed Procedure") at the Site. Upon breach by Licensee of any of its
obligations contained in this License, the license granted hereby shall be
revoked and VISX shall have the right, without notice or demand, to disable
or take possession of the System. This License is limited to the
performance of Licensed Procedures using the System.
2. Consideration. In consideration for the license granted under the Patents
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pursuant to Section C.1, Licensee shall pay the License Fee listed on the
front page of this License each time the System is used to perform a
Licensed Procedure, except that the License Fee shall be $-0- each time the
System is used to perform a phototherapeutic keratectomy (PTK). For
convenience of the parties, payment of the License Fee is due upon shipment
of each VisionKey card and payable on the terms set forth in the Sales or
Lease Agreement. The License Fee does not include the cost of the card.
3. Tampering. Licensee is prohibited from tampering with or attempting to
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reverse engineer the VisionKey card or any device or software installed on
the System for the purpose of monitoring the number of Licensed Procedures
performed. MODIFYING OR ALTERING THE SYSTEM, THE VISIONKEY CARD OR THE CARD
READING MECHANISM IN ANY WAY CONSTITUTES WILLFUL INFRINGEMENT OF THE
INTELLECTUAL PROPERTY LICENSED UNDER THIS LICENSE AND MAY ENDANGER PATIENT
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SAFETY. ANY SUCH MIDIFICATIONOR ALTERATION WILL RENDER THE SYSTEM
ADULTERATED UNDER THE FEDERAL FOOD, DRUG AND COSMETIC ACT AND COULD SUBJECT
THE LICENSEE AND/OR THE AUTHORIZED USERS TO ACTION BY THE FDA RESULTING IN
SEIZURE, INJUNCTION, CIVIL PENALTIES, AND/OR CRIMINAL PROSECUTION.
4. Term and Termination. This License will continue until the expiration of
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the last of the Patents to expire and Licensee's obligation to pay the
License Fee shall terminate for a given procedure on the expiration of the
last of the Patents containing one or more claims which cover use of the
System or performance of such procedure. This License may be terminated at
any time by VISX if (a) Licensee fails to make any payment due under this
License within 30 days of the due date, (b) Licensee has tampered in any
way with the VisionKey card or the card reading mechanism, the software
installed in the System, or any other part of the System, or (c) Licensee
fails to cure any other breach of this License within 30 days after VISX
provides written notice of such breach to Licensee. Upon any early
termination, Licensee and all Authorized Users shall cease all use of the
System. Licensee understands that the security interest in the system
granted to VISX in the Sales or Lease secures performance of Licensee's
obligations under this License. The respective rights and obligations of
VISX and Licensee under the provisions of Sections C.3, C.4, D.2, E.1, E.2,
and E.4 shall survive any termination of this License.
D. LOCATION AND CONDITION OF THE SYSTEM
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1. Initial Installation Site. The System shall initially be installed at the
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Site designated on the first page of this License.
2. Relocation and Transfer. Licensee shall not move the System from the Site
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unless it provides at least 30 days prior written notice of the new site to
VISX. Licensee man not sell or otherwise transfer the System unless the
proposed transferee has entered into the then current form of VISX Patent
License for the System, at which time this License shall terminate and
Licensee's rights under this License shall expire. Licensee may not
transfer or sublicense any of its rights or obligations under this License
without VISX's prior written consent, except as may be implicit in its
granting the Authorized Users the privilege to use the System pursuant to
this License.
3. Use and Maintenance. Licensee and the Authorized Users shall use the System
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only in accordance with the procedures and other requirements set forth in
the user's manuals or other documentation accompanying the System or
otherwise provided to Licensee by VISX. Licensee shall cause the System to
be properly maintained in accordance with VISX's service recommendations
and shall ensure that all Licensed Procedures performed using the System
are performed in a safe and effective manner. Licensee shall not be
obligated by this License to retain VISX or any of its affiliates to
perform maintenance on the System.
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4. Access to System. Licensee shall allow VISX, at VISX's sole expense, from
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time to time to install or to attach to the System, and to modify, adjust
and read, a memory, recording or other device and/or software (including
telephone connections of the devices with VISX) which measures the number
and types of Licensed Procedures performed with the System. Licensee shall
not permit anyone other than an authorized VISX representative to alter or
remove any such devices or software. In addition, Licensee shall permit
VISX, its affiliates and authorized representatives to inspect the System
and/or Licensee's records at least once per month during reasonable
business hours and upon at least 48 hours prior notice for the purpose of
obtaining the information measured by any device or software installed on
the System and to monitor Licensee's compliance with the terms of this
License.
E. LIABILITY, IMMUNITY, AND COMPLIANCE WITH LAWS
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1. Disclaimer of Liability. VISX SHALL NOT BE LIABLE FOR INCIDENTAL,
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CONSEQUENTIAL, INDIRECT OR SPEICAL DAMAGES OF ANY KIND, INCLUDING BUT NOT
LIMITED TO DAMAGTES FOR LOSS OF REVENUE, LOSS OF DATA, LOSS OF BUSINESS OR
BUSINESS OPPORTUNITY OR OTHER FINANCIAL LOSS ARISING OUT OF OR IN
CONNECITON WITH THE SALE, INSTALLATION, PERFOMANCE, FAILURE, USE OR
INTERRUPTED USE OF ITS PRODUCTS, OR THE UNAUTHORIZED USE OF THE PRODUCTS.
VISX'S LIABILITY FOR ANY LOSS OR DAMAGE ARISING OUT OF OR RESULTING FROM
THIS LICENSE OR ITS PERFORMANCE OR BREACH, OR IN CONNECTION WITH THE
PRODUCTS FURNISHED PURSUANT TO THIS LICENSE, WILL IN NO CASE EXCEED THE
PRICE OF THE SPECIFIC PRODUCT WHICH GIVES RISE TO THE CLAIM.
2. Required Insurance. Licensee shall maintain general liability insurance
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covering use of the System. Such insurance shall name VISX as an additional
insured and shall be in minimum amounts of $1,000,000 per occurrence,
$5,000,000 annual aggregate. Licensee shall obtain from each Authorized
User proof of professional liability insurance in minimum amounts of
$1,000,000 per occurrence, $3,000,000 annual aggregate.
3. Immunity and Indemnification. So long as the Licensee and its Authorized
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Users comply in full with this License Agreement. VISX hereby grants
immunity to the Licensee and the Authorized Users from any infringement or
other legal action under the Patents arising from Licensee's use of the
System to perform Licensed Procedures. VISX makes no representation or
warranty regarding the scope or validity of any of the Patents. VISX agrees
to indemnify Licensee and its Authorized Users against liability actually
and reasonably incurred arising from a third party claim that the
possession or use of the System in accordance with VISX's instructions for
us constitutes an infringement of any United States patent or other
intellectual property right of such third party. This indemnification is
subject to the following conditions: (a) Licensee must notify VISX
immediately upon receipt of notice of any such claim, (b) Licensee must
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keep VISX fully informed of any developments in connection with any such
claim, (c) Licensee shall cooperate fully with VISX in the defense of any
such claim, and (d) VISX shall have the right to undertake the defense,
compromise or settlement of any such claim on Licensee's behalf, subject to
Licensee's approval which approval shall not unreasonably be withheld. No
implied licenses are created by this provision.
4. Compliance with Laws. Licensee shall comply with, and shall cause each
--------------------- Authorized User to comply with, all laws, rules and
regulations of any governmental authority applicable to use of the System,
including without limitation the federal Food, Drug and Cosmetic Act and
any labeling requirements of the United States Food and Drug Administration
Licensee shall permit VISX to affix to the System additional notices that
VISX reasonably deems necessary. Licensee shall not remove or tamper with
any notices or labels affixed to the System.
F. GENERAL PROVISIONS
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This License between VISX And Licensee is binding on their respective successors
and permitted assigns and legal representatives. This License is subject to and
interpreted under the laws of the State of California (without regard to
principle of conflict of laws) and cannot be amended, nor can any term be
waived, except in a writing signed by both parties. Any controversy or claim
arising out of or relating to this License, or the breach thereof, shall be
settle by arbitration administered by the American Arbitration Association under
its Commercial Arbitration Rules, and judgment on the award rendered by the
arbitrator(s) may be entered in any court having jurisdiction thereof, provided
however, that neither party shall be precluded from seeking injunctive relief in
a court of law. No waiver or modification in any one instance shall be a waiver
or modification in any other. No third party rights will be created by the
execution or performance of this License. This License together with the Sales
or Lease Agreement, as applicable, contains the entire understanding between
VISX and Licensee with respect to its subject matter and supersedes all other
agreements, discussions, and understandings with respect to the subject matter.
Notices under this License shall be sent by overnight courier to the principal
offices of the subject party. If any provision (or part of any provision) of
this License, or the enforcement thereof, is held to be illegal, invalid, or
unenforceable, then the parties shall renegotiate this License promptly and in
good faith so as to place each of the parties, to the fullest extent legally
possible, in substantially the same economic position as each of them would have
been if such illegality, invalidity, or unenforceability had not occurred.
Section and subsection headings in this License are included for convenience of
reference only and shall not constitute part of this License for any other
purpose or be given any substantive effect. This License may be executed in one
or more counterparts all of which together shall constitute one original
document.
VISX, INCORPORATED LICENSEE
Signature: Signature: /s/ Robert Helmer
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Name: Name: Robert Helmer
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Title: Title: Chief Operating Officer
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Date: Date: 5/11/01
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SCHEDULE A
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United States Patents
Patent Name U.S. Patent No.
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VISX Patents
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Method for Ophthalmological Surgery 4,665,913
Method and Apparatus for Analysis and Correction 4,669,466
Abnormal Refractive Errors of the Eye
Apparatus for Ophthalmological Surgery 4,718,418
Apparatus for Analysis and Correction of Abnormal Refractive 4,721,379
Errors of the Eye
Apparatus for Performing Ophthalmic Laser Surgery 4,729,372
Method for Performing Ophthalmological Surgery 4,732,148
Method of Laser-Sculpture of the Optically Used Portion of 4,773,414
The Cornea
Method of Laser-Sculpture of the Optically Used Portion of 4,798,204
The Cornea
Ultraviolet Radiometer 4,885,471
Topography Measuring Apparatus 4,902,123
Method and Apparatus for Performing A Keratomileusis or the 4,903,695
Like Operation (includes LASIK)
Eye Restraining Device 4,905,711
Sculpture Apparatus for Correcting Curvature of Cornea 4,911,711
Beam Intensity Profilometer 4,916,319
Topography Measuring Apparatus 4,993,826
Topography Measuring Apparatus 4,998,819
Gas Purging, Eye Fixation Hand Piece 5,009,660
Topography Measuring Apparatus 5,106,183
Laser Surgery Method (Includes LASIK) 5,108,388
Photorefractive Keratectomy 5,163,934
Method and Apparatus for Ophthalmologic Surgery 5,188,831
Method and Apparatus for Ophthalmologic Surgery 5,207,668
Apparatus for Performing Ophthalmologic Surgery 5,219,343
Method and Apparatus for Laser Sculpture of the Cornea 5,219,344
Apparatus for Perfoming Ophthalmological Surgery 5,312,320
Rectilinear Photokeratoscope 5,339,121
Ophthalmic Method for Laser Surgery of the Cornea 5,507,741
In Situ Astigmatism Axis Alignment 5,549,597
Method and System for Laser Treatment of Refractive Error 5,556,395
Using an Offset Image of a Rotatable Mask
Method and Apparatus for Temporal and Spatial Beam Integration 5,646,791
Laser Surgery Apparatus and Method 5,711,762
Laser Surgery Apparatus and Method 5,735,843
Method and Apparatus for Temporal and Spatial Beam Integration 5,912,775
IBM Patent
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Far Ultraviolet Surgical and Dental Procedures 4,784,135
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Summit Patents
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Laser Reprofiling Systems and Methods 4,856,513
Surface Erosion Using Lasers 4,941,093
Surgical Apparatus for Modifying the Curvature of the Eye Cornea 4,973,330
Surface Shaping Using Laser 4,994,058
LaserReprofiling system Employing an Erodable Mask 5,019,074
Optical System for Use in a Surgical Apparatus 5,147,352
Laser Reprofiling System Employing a Photodecomposable Mask 5,432,801
Laser Corneal Surgery 5,423,801
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