MASTER TECHNOLOGY AGREEMENT
This Master Technology Agreement ("the Agreement") is made and entered into
as of July 28, 1997, by and between Baxter Healthcare Corporation, a corporation
organized under the laws of the State of Delaware ("Baxter") and AccuLase, Inc.,
a corporation organized under the laws of the State of California ("AccuLase").
RECITALS
A. AccuLase is the owner of certain technology, patents and technical
know-how related to an excimer laser and laser delivery system for use in, among
other things, transmyocardial laser revascularization.
B. Simultaneously with the Closing of this Agreement, Baxter and
AccuLase will enter into that certain License Agreement, dated as of the Closing
date (the "License Agreement"), pursuant to which AccuLase shall grant an
exclusive license to Baxter of technology, patents, technical know-how and
products, among other things, related to transmyocardial laser
revascularization.
C. Baxter wishes to license from AccuLase the rights to develop,
manufacture, market and sell AccuLase's laser and laser delivery system for
cardiovascular and vascular applications upon the terms and conditions contained
in the License Agreement and herein.
D. Simultaneously with the Closing of this Agreement, Baxter and
AccuLase will enter into that certain Manufacturing Agreement (the
"Manufacturing Agreement") dated as of the Closing date, pursuant to which
AccuLase shall manufacture those excimer laser products defined therein.
E. Baxter wishes to purchase, and AccuLase desires to manufacture
excimer laser products pursuant to the terms and conditions defined in the
Manufacturing Agreement and herein.
F. Baxter and AccuLase desire to make certain representations,
warranties and other agreements in connection with this Agreement.
G. Baxter and AccuLase acknowledge and agree that the intended use and
value of the technical know-how, intellectual property, patents, and products
acquired, purchased and/or licensed under this Agreement, the License Agreement
and the Manufacturing Agreement are uncertain as a result of the recent and
continuing development of the field of transmyocardial revascularization and the
parties further acknowledge that based on the foregoing, the consideration paid
for the performance of AccuLase's obligations herein, in the License Agreement
and in the Manufacturing Agreement is adequate, sufficient and fair
consideration.
NOW, THEREFORE, in consideration of the covenants and representations set
forth herein, the above recitals and for other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the parties agree
as follows:
ARTICLE I
DEFINITIONS
1.1 DEFINED TERMS. For the purposes of this Agreement, the following
terms shall have the definitions ascribed to them:
"AccuLase Certificate of Incorporation" shall have the meaning given it in
Section 4.1.
"AccuLase Confidential Information" shall have the meaning given it in
Section 4.11 (g).
"AccuLase Financial Statements" shall have the meaning given it in Section
4.4.
"Affiliate" shall mean (i) any Person directly or indirectly
controlling, controlled by, or under common control with AccuLase or (ii) any
Person that owns or controls twenty percent (20%) or more of any class of
equity securities of AccuLase or any of its subsidiaries or Affiliates. For
the purposes of this definition, "control" (including with correlative
meanings, the terms "controlling," "controlled by," and "under common control
with"), as applied to any Person means the possession, directly or indirectly
of the power to direct or cause the direction of the management and policies
of that Person, whether through the ownership of voting securities or by
contract or otherwise.
"Claim" shall have the meaning given it in Section 8.2.
"Closing" shall mean the consummation of the transactions contemplated
hereby at the time, date and place specified in Section 7.1 hereof.
"Confidentiality Agreement" shall mean that certain Confidentiality
Agreement, dated April 25, 1997, between Baxter and AccuLase.
"End User" shall mean any Person that orders a product who is a healthcare
provider or employs or is otherwise affiliated with healthcare providers.
"End User Price" shall mean the actual sales price (exclusive of taxes,
insurance and freight) received by Baxter from an End User of a product.
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"IDE" shall have the meaning given it in Section 2.3.
"Intellectual Property" shall mean, without restriction or limitation, the
list of patents identified in Schedule 4.11, the intellectual property rights
licensed to Baxter by AccuLase pursuant to the terms of the License Agreement
referred to in Section 2.2 and any and all devices, processes (including without
limitation processes of using devices or of manufacturing such devices),
compositions of matter, computer software, chemical formulations, ideas,
developments or inventions, whether patentable or unpatentable, and any and all
written materials or other works which may be subject to copyright, which are
conceived and/or reduced to practice relating to the Intellectual Property.
"Licensed Patent" shall mean the United States or foreign patents and
patent applications (including any continuation, continuation in part,
divisional, reissue or reexamination patent applications thereof and patents
issuing therefrom) listed in Schedule 4.11 hereto.
"Material Adverse Effect" shall mean any event, change or effect that is
materially adverse to the condition (financial or otherwise), properties, assets
(including intangible assets), liabilities, business, operations or results of
operations of such entity.
"New Developments" shall have the meaning given it in Section 2.10.
"Person" means an individual, a corporation, a partnership, an association,
a trust or any other entity or organization.
"Promissory Note" shall mean the promissory note for $100,000 issued by
AccuLase and payable to Baxter, dated as of July 7, 1997, and any advances
Baxter makes to AccuLase subsequent to July 7, 1997.
"Transferred Assets" shall mean the two AccuLase lasers identified by
serial numbers 004 and 005.
ARTICLE II
PROPERTY TRANSFER, LICENSE GRANT, CONSIDERATION,
AND OTHER AGREEMENTS
2.1 TRANSFER OF ASSETS. At the Closing, AccuLase agrees (a) to transfer
all of its right, title and interest in and to the Transferred Assets to Baxter
by executing and delivering the Assignment of Transferred Property in the form
attached as Exhibit A. Baxter shall be responsible for preparing and, as
necessary, filing and/or recording such forms and documents as are reasonably
necessary to transfer the Transferred Assets to Baxter, and shall bear all costs
and expenses in connection therewith.
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2.2 LICENSE OF CARDIOVASCULAR RIGHTS. At the Closing, AccuLase agrees
to license the Intellectual Property for cardiovascular and vascular
applications to Baxter by executing and delivering the form of License Agreement
attached as Exhibit B.
2.3 TRANSFER OF IDE. At the Closing, AccuLase agrees to assign all of
its rights, title and interest in and to its Investigational Device Exemption
for the excimer laser system (the "IDE") to Baxter by executing and delivering
the Assignment of Investigational Device Exemption in the form attached as
Exhibit C. In connection with the clinical studies set forth in the IDE: (a)
Baxter agrees to use reasonable commercial efforts to expediently and
competently complete the clinical studies; and (b) AccuLase agrees, at
AccuLase's expense, to maintain and service the lasers which are currently used
in the IDE until such time as the two new commercial lasers referred to in
Section 2.6 (c) are delivered to Baxter.
2.4 MANUFACTURING AGREEMENT. At the Closing, the parties agree to
execute and deliver the Manufacturing Agreement in the form attached as Exhibit
D and AccuLase agrees to manufacture the Product (as defined in the
Manufacturing Agreement) upon the terms and conditions contained therein.
2.5 SECURITY AGREEMENT; INTERCREDITOR AGREEMENT. At the Closing, and in
order to secure AccuLase's performance of this Agreement, the License Agreement,
the Manufacturing Agreement, and the obligations of AccuLase arising hereunder
and thereunder, AccuLase agrees to execute and deliver to Baxter the form of
Security Agreement attached as Exhibit E. At the Closing, AccuLase agrees to
execute and deliver to Baxter the form of Intercreditor Agreement attached as
Exhibit G.
2.6 CASH CONSIDERATION PAID BY BAXTER. In consideration for the
transactions contemplated by the provisions of this Article II, Baxter agrees to
pay AccuLase $1,550,000, in cash, at the following times:
(a) $700,000 at Closing, provided, however, any and all advances made by
Baxter to AccuLase and due under the Promissory Note shall be credited against
such amount;
(b) $250,000 three (3) months after Closing; and
(c) $600,000 upon delivery of two (2) units of the new commercial excimer
laser referred to in Section 2.7 below which are manufactured in accordance with
the terms and conditions of the Manufacturing Agreement, provided, however,
$250,000 of such funds (or such lesser amount as AccuLase and Mr. Hartman may
thereafter jointly advise Baxter in a written notice) shall be paid jointly to
AccuLase and Mr. Raymond A. Hartman.
2.7 DEVELOPMENT OF NEW LASER. AccuLase agrees to undertake the
development of a new commercial excimer laser for Baxter; AccuLase represents
such new commercial laser is expected to be available within four months of the
Closing. In consideration of the payments by Baxter referred to in Section 2.6,
AccuLase hereby
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grants to Baxter an exclusive license pursuant to the terms of the License
Agreement defined in Section 2.2 covering the use of any and all new technology
so developed, in the making and sale of such new commercial laser. At Baxter's
discretion, Baxter may request AccuLase obtain CE mark designation of the new
commercial laser and, if so requested by Baxter, Baxter agrees to pay AccuLase
$100,000 upon issuance of the CE mark.
2.8 CONFIDENTIALITY. Except as required by law, neither party shall
disclose to third parties or use except as expressly permitted hereunder any
information or items it receives from the other party during the course of this
Agreement or the term of this Agreement. This restriction shall not apply to
information which:
(a) Is already publicly known;
(b) Becomes publicly known without a breach of this Agreement;
(c) Is disclosed to others without restrictions by the party who discloses
the information; or
(d) Is independently developed by employees or consultants of the
receiving party without access to the other parties' confidential information.
2.9 PUBLICITY. Except as required by law, neither party shall issue any
publicity about this Agreement or the parties' performance under this Agreement
without the prior written comment of the other.
2.10 ADDITIONAL OBLIGATIONS OF BAXTER AND ACCULASE. In the event Baxter
determines that new or additional intellectual or other property rights exist or
could exist in the Licensed Technology for cardiovascular and vascular
applications (the "New Developments"), all such rights shall be automatically
encompassed within the license to be granted by AccuLase to Baxter at the
Closing pursuant to the License Agreement. Baxter shall bear all costs and
expenses in connection with preparing, filing, recording and prosecuting all
such intellectual or other property rights for such New Developments and
AccuLase agrees to actively assist Baxter and, as appropriate, cause its
inventors and/or employees to actively assist Baxter by executing or delivering
such documents as are reasonably necessary for Baxter to prepare, file, record
or prosecute all such intellectual or other property rights.
2.11 USE OF CASH RECEIPTS BY ACCULASE. AccuLase agrees that the funds
received by AccuLase pursuant to Section 2.6 (a) hereof shall be used for, and
shall pay in full, all vendors of AccuLase who are current creditors of AccuLase
existing at Closing except for obligations to Affiliates.
2.12 NON-COMPETE. AccuLase agrees that neither it nor any of its
Affiliates shall, for a period equal to the earlier of (a) five (5) years after
Closing or (b) the date on
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which this Agreement terminates pursuant to Section 8.1 hereof, engage in any
business worldwide which develops, manufactures, supplies or distributes laser
products for cardiovascular or vascular applications.
2.13 PERCUTANEOUS DELIVERY SYSTEM. At any time, Baxter may undertake
one or more programs to develop the percutaneous delivery of excimer laser
systems for cardiovascular and vascular applications. AccuLase is hereby
granted the option, but not the obligation, to share twenty-five percent (25%),
but not less than twenty-five percent (25%), of the costs of such development
program(s) at such times and in such manner as Baxter may reasonably determine
from time to time. In the event AccuLase chooses to proceed to co-fund such
percutaneous development program(s) with Baxter, AccuLase shall be entitled to a
royalty equal to ten percent (10%) of the End User Price for each product to
which such development program applies, subject to such other terms and
conditions to which the parties may agree in such development agreement.
2.14 FINANCIAL STATEMENTS. AccuLase will deliver to Baxter, not later
than 45 days after the Closing, AccuLase's financial statements (balance sheet
and profit and loss statement, statement of stockholders' equity and statement
of changes in financial position) at December 31, 1996 and for the fiscal year
then ended and its reviewed financial statements (balance sheet and profit and
loss statement) at and for the six-month period ended June 30, 1997.
ARTICLE III
REPRESENTATIONS AND WARRANTIES OF BAXTER
Baxter represents and warrants to AccuLase as follows:
3.1 ORGANIZATION, STANDING AND POWER. Baxter is a corporation duly
organized, validly existing and in good standing under the laws of Delaware.
3.2 AUTHORITY. Baxter has all requisite corporate power and authority
to enter into this Agreement and to consummate the transactions contemplated
hereby. The execution and delivery of this Agreement and the consummation of
the transactions contemplated hereby have been duly authorized by all necessary
corporate action on the part of Baxter. This Agreement has been duly executed
and delivered by Baxter and constitutes the valid and binding obligation of
Baxter enforceable against Baxter in accordance with its terms.
3.3 BROKERS AND FINDERS' FEES. Baxter has not incurred, nor will it
incur, directly or indirectly, any liability for brokerage or finders' fees or
agents' commissions or investment bankers' fees or any similar charges in
connection with this Agreement or any transaction contemplated hereby.
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ARTICLE IV
REPRESENTATIONS AND WARRANTIES OF ACCULASE
AccuLase represents and warrants to Baxter as follows:
4.1 ORGANIZATION, STANDING AND POWER. AccuLase is a corporation duly
organized, validly existing and in good standing under the laws of California.
AccuLase has the corporate power to own its properties and to carry on its
business as now being conducted. AccuLase has delivered a true and correct copy
of its Certificate of Incorporation as amended (the "AccuLase Certificate of
Incorporation"), and bylaws, as amended or other charter documents, as
applicable, of AccuLase to Baxter. AccuLase is not in violation of any of the
provisions of the AccuLase Certificate of Incorporation or its bylaws or
equivalent organizational documents.
4.2 AUTHORITY. AccuLase has all requisite corporate power and authority
to enter into this Agreement and to consummate the transactions contemplated
hereby. The execution and delivery of this Agreement and the consummation of
the transactions contemplated hereby have been duly authorized by all necessary
corporate action on the part of AccuLase. This Agreement has been duly executed
and delivered by AccuLase and constitutes the valid and binding obligation of
AccuLase enforceable against AccuLase in accordance with its terms. No consent,
approval, order, authorization of, or registration, declaration or filing with
any governmental entity or any court is required by or with respect to AccuLase
in connection with the execution and delivery of this Agreement or the
consummation of the transactions contemplated hereby.
4.3 CAPITAL STRUCTURE. The authorized capital stock of AccuLase
consists of 10,000,000 shares of common stock, no par value, of which there were
issued and outstanding immediately prior to the transactions contemplated hereby
7,085,723 shares. Such shares of AccuLase common stock are owned of record as
set forth in Schedule 4.3. There are no other outstanding shares of capital
stock or voting securities and no outstanding commitments to issue any shares of
capital or voting securities.
4.4 FINANCIAL STATEMENTS. Subject to the provisions of Section 2.14
hereof, AccuLase will have delivered to Baxter AccuLase's financial statements
(balance sheet and profit and loss statement, statement of stockholders equity
and statement of changes in financial position) at December 31, 1996, and for
the fiscal year then ended and its reviewed financial statements of (balance
sheet and profit and loss statement) at and for the six-month period ended June
30, 1997 (collectively the "AccuLase Financial Statements"). To the best
knowledge of AccuLase's officers, the AccuLase Financial Statements are
complete and correct in all material respects.
4.5 ABSENCE OF CERTAIN CHANGES. Since December 31, 1996, AccuLase has
conducted its business in the ordinary course consistent with past practice and
there has not occurred:
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(a) any acquisition, sale, mortgage, pledge or transfer of the Transferred
Assets;
(b) any material change in accounting methods or practices by AccuLase;
(c) any indebtedness incurred by AccuLase except for indebtedness
evidenced by the Promissory Note;
(d) any loan made or agreed to be made by AccuLase, nor has AccuLase
become liable or agreed to become liable as a guarantor with respect to any
loan; or
(e) any negotiation or agreement by AccuLase to do any of the things
described in the preceding clauses (a) through (d) (other than negotiations with
Baxter and its representatives regarding the transactions contemplated by this
Agreement).
4.6 SUBSIDIARIES. AccuLase does not presently own or control, directly
or indirectly, an interest in any other corporation, association or business
entity.
4.7 ABSENCE OF UNDISCLOSED LIABILITIES. Except as set forth in Schedule
4.7, AccuLase has no material obligations or liabilities of any nature (matured
or unmatured, fixed or contingent) other than (a) those set forth or adequately
provided for in the AccuLase Financial Statements and (b) those incurred in
connection with the execution of this Agreement.
4.8 MATERIAL CONTRACTS. Except as set forth in Schedule 4.8, all
contracts, agreements and instruments to which AccuLase is a party which
comprise any part of the Technology are in full force and effect in all material
respects. With respect to any and all such contracts:
(a) AccuLase has no notice that any party to any such contract intends to
cancel, withdraw, modify, or amend such contract; and
(b) AccuLase is not in material default or breach and no event has occurred
or will occur by reason of the transactions contemplated in this Agreement which
would constitute a default or breach, where such default or breach would entitle
another party to this Agreement to accelerate or terminate AccuLase's rights or
otherwise impose a material penalty or forfeiture thereunder (whether with or
without notice, lapse of time or the happening or occurrence of any other
event).
4.9 LITIGATION. Except as set forth in Schedule 4.9, there is no
private or governmental judgment, decree, order, action, suit, proceeding,
claim, arbitration or investigation pending before any agency, court or
tribunal, foreign or domestic or, to the knowledge of AccuLase, threatened
against AccuLase or any of its properties or any of its officers or directors
(in their capacities as such) that, individually or in the aggregate, could
reasonably be expected to have a Material Adverse Effect on AccuLase.
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4.10 RESTRICTIONS ON BUSINESS ACTIVITIES. There is no material
agreement, judgment, injunction, order or decree binding upon AccuLase which has
the effect of prohibiting or materially impairing any current or future ability
of AccuLase to fulfill its obligations under this Agreement or the Manufacturing
Agreement.
4.11 RIGHTS TO TRANSFERRED ASSETS.
(a) AccuLase owns, or is licensed or otherwise possesses legally
enforceable rights to use, all Transferred Assets free and clear of all liens,
encumbrances and rights of third parties.
(b) Schedule 4.11 lists (i) Intellectual Property, including all patents
and patent applications and all registered and unregistered trademarks, trade
names and service marks, registered and unregistered copyrights, and maskworks,
which AccuLase considers to be material to its excimer laser business, including
the jurisdictions in which each such intangible right has been issued or
registered or in which any application for such issuance and registration has
been filed, (ii) all material licenses, sublicenses and other agreements as to
which AccuLase is a party and pursuant to which any person is authorized to use
any of the Transferred Assets, and (iii) all material licenses, sublicenses and
other agreements as to which AccuLase is a party and pursuant to which AccuLase
is authorized to use any third party patents, trademarks or copyrights,
including software which are incorporated in, are, or form a part of any
Transferred Assets.
(c) To the knowledge of AccuLase, there is no material unauthorized use,
disclosure, infringement or misappropriation of any of the Intellectual Property
by any third party, including any employee or former employee of AccuLase.
AccuLase has not entered into any agreement to indemnify any other person
against any charge of infringement of any intellectual property, other than
indemnification provisions contained in purchase orders arising in the ordinary
course of business.
(d) AccuLase is not, nor will it be as a result of the execution and
delivery of this Agreement or the performance of its obligations under this
Agreement, in breach of any license, sublicense or other agreement relating to
the Intellectual Property.
(e) To AccuLase's knowledge, all patents, registered trademarks, service
marks and copyrights held by AccuLase are valid and subsisting. AccuLase (i)
has not been sued in any suit, action or proceeding which involves a claim of
infringement of any patents, trademarks, service marks, copyrights or violation
of any trade secret or other proprietary right of any third party; (ii) has no
knowledge that the manufacturing, marketing, licensing or sale of products using
the Intellectual Property infringes any patent, trademark, service mark,
copyright, trade secret or other proprietary right of any third party, which
such infringement would have a Material Adverse Effect on AccuLase; and (iii)
has not brought any action, suit or proceeding for infringement of the
Intellectual Property or breach of any license or agreement involving the
Intellectual Property against any third party.
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(f) AccuLase has secured valid written assignments from all consultants
and employees who contributed to the creation or development of the Intellectual
Property of the rights to such contributions that AccuLase does not already own
by operation of law.
(g) AccuLase has taken all reasonable and appropriate steps to protect and
preserve the confidentiality of all of the Intellectual Property not otherwise
protected by patents, or patent applications or copyright (the" AccuLase
Confidential Information"). To the knowledge of AccuLase, all use, disclosure
or appropriation of AccuLase Confidential Information by or to a third party has
been pursuant to the terms of a written agreement between AccuLase and such
third party. To the knowledge of AccuLase, all use, disclosure or appropriation
of AccuLase Confidential Information not owned by AccuLase has been pursuant to
the terms of a written agreement between AccuLase and the owner of such AccuLase
Confidential Information, or is otherwise lawful.
4.12 INSURANCE. AccuLase has policies of insurance and bonds of the type
and in amounts customarily carried by persons conducting businesses or owning
assets similar to those of AccuLase as identified in Schedule 4.12. There is no
material claim pending under any of such policies or bonds as to which coverage
has been questioned, denied or disputed by the underwriters of such policies or
bonds.
4.13 BROKERS' AND FINDERS' FEES. AccuLase has not incurred, nor will it
incur, directly or indirectly, any liability for brokerage or finders' fees or
agents' commissions or investment bankers' fees or any similar charges in
connection with this Agreement or any transaction contemplated hereby.
4.14 COMPLETE COPIES OF MATERIALS. AccuLase has delivered or made
available to Baxter true and complete copies of each document evidencing the
Intellectual Property and the Transferred Assets.
4.15 BOARD APPROVAL. The Board of Directors of AccuLase has approved
this Agreement.
ARTICLE V
CONDITIONS PRECEDENT TO BAXTER'S OBLIGATIONS
The performance of Baxter under this Agreement is subject, at the election
of Baxter, to the fulfillment of each of the following conditions by AccuLase on
or before the Closing:
5.1 CONTINUATION AND TRUTH OF REPRESENTATIONS AND WARRANTIES. The
representations and warranties of AccuLase contained in this Agreement or in any
certificate, document or other Agreement delivered to Baxter pursuant hereto
shall be true
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and correct in all material respects on the date hereof and shall be deemed to
have been made again at the Closing and shall then also be true and correct in
all material respects.
5.2 OPINION OF COUNSEL. Baxter shall have been furnished with an
opinion of Donald G. Davis, Esq., counsel for AccuLase, in the form attached
hereto as Exhibit F-1 and the letter from Paul Couchot, Esq. in the form
attached hereto as Exhibit F-2.
5.3 BANKRUPTCY COURT APPROVAL. The United States Bankruptcy Court in
the matter of IN RE HELIONETICS, INC. shall have approved the subordination by
Helionetics of its security interest in AccuLase's assets to a new security
interest to be granted by AccuLase to Baxter as contemplated by this Agreement.
5.4 INTERCREDITOR AGREEMENT. Baxter shall have received the
Intercreditor Agreement, duly executed and delivered by Helionetics, Inc.
ARTICLE VI
CONDITIONS PRECEDENT TO ACCULASE'S OBLIGATIONS
The performance of the obligations of AccuLase under this Agreement is
subject, at the election of AccuLase, to the fulfillment of each of the
following conditions on or before the Closing:
6.1 CONTINUATION AND TRUTH OF REPRESENTATIONS AND WARRANTIES. The
representations and warranties of Baxter contained in this Agreement or in any
certificate, document or other Agreement delivered to AccuLase pursuant hereto
shall be true and correct in all material respects on the date hereof and shall
be deemed to have been made again at the Closing and shall then also be true and
correct in all material respects.
SECTION VII
CLOSING
7.1 TIME AND PLACE OF CLOSING. The Closing of the transactions
contemplated by this Agreement shall be held at Baxter Healthcare Corporation,
17221 Red Hill Avenue, Irvine, California 92614 at 10:00 a.m. on the business
day immediately following the date on which the letter from Paul Couchot, Esq.
(as referred to in Section 5.2 hereof) may be delivered to Baxter, or at such
other place or date as may be fixed by mutual agreement of Baxter and AccuLase.
7.2 DOCUMENTS TO BE DELIVERED BY BAXTER AT THE CLOSING. At the Closing,
Baxter shall deliver to AccuLase the following:
(a) The License Agreement referred to in Section 2.2;
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(b) The Manufacturing Agreement referred to in Section 2.4; and
(c) That portion of the cash consideration due at Closing referred to in
Section 2.6.
7.3 DOCUMENTS TO BE DELIVERED BY ACCULASE AT THE CLOSING. At the
Closing, AccuLase shall deliver to Baxter the following:
(a) The Assignment of Transferred Property referred to in Section 2.1;
(b) The License Agreement referred to in Section 2.2;
(c) The Assignment of Investigational Device Exemption referred to in
Section 2.3;
(d) The Manufacturing Agreement referred to in Section 2.4;
(e) The Security Agreement referred to in Section 2.5; and
(f) The Intercreditor Agreement referred to in Section 2.5.
7.4 FURTHER ASSURANCES. Each party hereto, at the reasonable request of
the other party hereto, shall execute and deliver such other instruments and to
perform such other acts and things as may be reasonably necessary or desirable
for effecting completely the consummation of this Agreement and the transactions
contemplated hereby.
ARTICLE VIII
TERMINATION, INDEMNITY AND OFFSETS
8.1 TERMINATION BY BAXTER. Baxter shall have the right at any time, in
its sole discretion and without payment or penalty of any kind, to terminate
this Agreement, but only provided it concurrently terminates both the License
Agreement and the Manufacturing Agreement, and any obligations hereunder and
thereunder, provided five (5) days prior written notice is given to AccuLase.
8.2 INDEMNITY AND OFFSET.
(a) Subject to the provisions of Section 8.2 (b), AccuLase agrees to
defend and hold Baxter harmless from and against any cost, expense, claim, cause
of action (whether actual or threatened) or any other liability resulting from
the Intellectual Property or Licensed Products (as such term is defined in the
License Agreement) infringing any third party patent or other intellectual
property claim or right relating to lasers (a "Claim"), provided that Baxter
promptly notifies AccuLase of any such Claim of which it is aware,
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reasonably assists AccuLase (at AccuLase's expense) in defending such Claim, and
provides AccuLase with the opportunity to assume sole control over any
litigation and/or settlement relating to such Claim. In any such Claim, Baxter
may retain its own counsel (at Baxter's expense ) to assist in the defense of
any such Claim and to counsel Baxter with respect to its strategy in such Claim.
(b) For the purposes of Sections 8.2 (a) and 8.2 (c) only, and consistent
with the parties' desires that Claims which relate specifically to
transmyocardial laser revascularization shall be borne seventy-five percent
(75%) by Baxter and twenty-five percent (25%) by AccuLase, the parties agree
that (i) a Claim which relates specifically to transmyocardial laser
revascularization shall be borne seventy-five percent (75%) by Baxter and
twenty-five percent (25%) by AccuLase, and (ii) Baxter shall have the
opportunity to assume sole control over any litigation and/or settlement
relating to such Claim notwithstanding any contrary provision in Section 8.2 (a)
hereof.
(c) Baxter may withhold from, reserve against and/or offset against any
and all amounts due or to become due (or estimated to be due or to become due)
to AccuLase whether pursuant to the terms of this Agreement or otherwise, any
and all amounts as may be reasonably necessary or expected to be incurred by
Baxter in connection with the full and final resolution of any Claim.
ARTICLE IX
GENERAL PROVISIONS
9.1 NOTICES. All notices and other communications hereunder shall be in
writing and shall be deemed given if delivered personally or by commercial
delivery service, or mailed by registered or certified mail (return receipt
requested) or sent via facsimile (with confirmation of receipt) to the parties
at the following address (or at such other address for a party as shall be
specified by like notice):
(a) if to Baxter, to:
Baxter Healthcare Corporation
17221 Red Hill Avenue, m/s 98
Irvine, California 92614
Attention: Vice President, Business Development
Facsimile No.: (714) 474-6445
Telephone No.: (714) 474-6424
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(b) if to AccuLase, to:
6865 Flanders Drive, Suite G
San Diego, CA 92121
Attention: Mr. Raymond A. Hartman
President and Chief Executive Officer
Facsimile No.: (619) 455-0946
Telephone No.: (619) 455-7030
with a copy to:
Donald G. Davis, Esq.
833 Via Del Monte, Suite 100
Palos Verdes Estates, CA 90274
Facsimile No.: (310) 373-5410
Telephone No.: (310) 378-8968
9.2 INTERPRETATION. When a reference is made in this Agreement to
Exhibits, such reference shall be to an Exhibit to this Agreement unless
otherwise indicated. The words "include, " "includes" and "including" when used
herein shall be deemed in each case to be followed by the words, "without
limitation." The phrase "made available" in this Agreement shall mean that the
information referred to has been made available if requested by the party to
whom such information is to be made available. The phrases "the date of this
Agreement", "the date hereof", and terms of similar import, unless the context
otherwise requires, shall be deemed to refer to date of Closing. The headings
contained in this Agreement are for reference purposes only and shall not affect
in any way the meaning or interpretation of this Agreement.
9.3 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, all of which shall be considered one and the same Agreement and
shall become effective when one or more counterparts have been signed by each of
the parties and delivered to the other parties, it being understood that all
parties need not sign the same counterpart.
9.4 ENTIRE AGREEMENT; NONASSIGNABILITY; PARTIES IN INTEREST. This
Agreement and the documents and instruments and other Agreements specifically
referred to herein or delivered pursuant hereto, including the Exhibits and the
Schedules:
(a) Constitute the entire agreement among the parties with respect to
the subject matter hereof and supersede all prior agreements and understandings,
both written and oral, among the parties with respect to the subject matter
hereof, except for the Confidentiality Agreement, which shall continue in full
force and effect, and shall survive any termination of this Agreement or the
Closing, in accordance with its terms;
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(b) Are not intended to confer upon any other person any rights or
remedies hereunder, except as set forth in Section 2.6 (c); and
(c) Shall not be assigned by operation of law or otherwise except as
otherwise specifically provided; however, Baxter may assign its rights or
delegate its duties hereunder to its affiliates, or in connection with a
transfer of substantially all of its transmyocardial laser business.
9.5 SEVERABILITY. In the event that any provision of this Agreement, or
the application thereof, becomes or is declared by a court of competent
jurisdiction to be illegal, void or unenforceable, the remainder of this
Agreement will continue in full force and effect and the application of such
provision to other persons or circumstances will be interpreted so as reasonably
to effect the intent of the parties hereto. The parties further agree to
replace such void or unenforceable provision of this Agreement with a valid and
enforceable provision that will achieve, to the extent possible, the economic,
business and other purposes of such void or unenforceable provision.
9.6 AMENDMENT. This Agreement may not be altered or amended except by
writing signed by the parties hereto.
9.7 REMEDIES CUMULATIVE. Except as otherwise provided herein, any and
all remedies herein expressly conferred upon a party will be deemed cumulative
with and not exclusive of any other remedy conferred hereby, or by law or equity
upon such party, and the exercise by a part of any one remedy will not preclude
the exercise of any other remedy.
9.8 GOVERNING LAW. This Agreement shall be governed by and construed in
accordance with the laws of the State of California (without regard to its
principles of conflicts of law).
9.9 RULES OF CONSTRUCTION. The parties hereto agree that they have been
represented by counsel during the negotiation, preparation and execution of this
Agreement and, therefore, waive the application of any law, regulation, holding
or rule of construction providing that ambiguities in an agreement or other
document will be construed against the party drafting such agreement or
document.
9.10 SURVIVAL OF REPRESENTATIONS AND WARRANTIES. The representations and
warranties contained in this Agreement shall survive for three (3) years
following the Closing.
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9.11 EXPENSES. All costs and expenses incurred in connection with this
Agreement and the transactions contemplated by this Agreement will be paid by
the party incurring such expenses.
9.12 ATTORNEYS' FEES. In the event of any dispute arising under the
terms of this Agreement (including the breach thereof), the prevailing party in
such action shall be entitled to recover its attorneys' fees and costs in
addition to such other relief as may be awarded by a court or by an arbitrator.
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IN WITNESS WHEREOF, Baxter and AccuLase have caused this Agreement to be
executed and delivered by their respective officers thereunto duly authorized
all as of the date first written above.
Baxter Healthcare Corporation,
a corporation
By: /s/ John H. Kehl, Jr.
---------------------------------------------
John H. Kehl, Jr.
Vice President, Business Development
AccuLase, Inc., a corporation
By: /s/ Raymond A. Hartman
----------------------------------------------
Raymond A. Hartman
President and Chief Executive Officer
ATTACHMENTS:
Schedule 4.3 Capital Structure of AccuLase
Schedule 4.7 Certain Liabilities
Schedule 4.8 Material Contracts
Schedule 4.9 Litigation
Schedule 4.11 Intellectual Property
Schedule 4.12 Insurance
EXHIBITS:
A - Assignment of Transferred Property
B - License Agreement
C - Assignment of Investigational Device Exemption
D - Manufacturing Agreement
E - Security Agreement
F-1 - AccuLase Legal Opinion
F-2 - Helionetics' Counsel's Letter
G - Intercreditor Agreement
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