Exhibit 10.2
EXECUTION VERSION
LICENSE AGREEMENT
THIS AGREEMENT (the "Agreement") is made and entered into as of July
11, 2003, by and between:
ENDOLASER ASSOCIATES, L.L.C., a Delaware limited liability company
having its principal place of business at c/o Luis Navarro, M.D. 327 East 65th
Street, New York, New York 10021(hereinafter referred to as the "Licensor"); and
DIOMED, INC., a Delaware corporation having its principal place of
business at One Dundee Park, Andover, Massachusetts (hereinafter together with
its Affiliates referred to as the "Licensee").
WHEREAS, Licensor is the owner of an undivided interest in U.S. Patent
No. 6,398,777 (the "`777 Patent") entitled "Endovascular Laser Device and
Treatment of Varicose Veins," and related patent rights relating to a device and
method for closing veins using a laser, having acquired all right, title and
interest therein from the Endolaser Inventors;
WHEREAS, Licensee has previously acquired exclusive rights from Dr.
Robert J. Min, an owner of an undivided interest in the `777 Patent, and
Licensee desires to acquire an exclusive license under Licensor's undivided
interest in the `777 Patent and counterpart patent applications in order to
secure all remaining rights in those Patents;
NOW, THEREFORE, in consideration of the promises and the covenants set
forth herein, Licensor and Licensee agree as follows:
1. DEFINITIONS
The following definitions shall apply in the interpretation of this
Agreement.
1.1 "Affiliate" of any company means any corporation or individual
which, directly or indirectly, controls or is controlled by, or is under direct
or indirect common control with, such company; and for the purposes of this
definition "control" (including "control by" and "under common control with") as
used with respect to any corporation or company, shall mean the possession,
directly or indirectly, of the power to direct or cause the direction of the
management and policies of such corporation or company, through the ownership of
more than 50% of the voting shares.
1.2 "Calendar Quarter" means any of the respective three-month periods
occurring during the Term of this Agreement ending March 31, June 30, September
30, or December 31 in any year.
1.3 "Effective Date" shall mean the date of the Agreement set forth
above.
1.4 "Endolaser Inventors" shall mean each of Dr. Luis Navarro, Dr.
Nestor Navarro, Dr. Carlos Bone Salat and Dr. Joaquina Fructuoso Gomez, said
individuals being all of the inventors named in the `777 Patent other than Dr.
Robert J. Min.
1.5 "EVLT Kit" shall mean a package of two or more disposable
accessories for use in endovenous laser treatment using the Technology including
but not limited to optical fiber, percutaneous needle, guide wire, introducer
sheath and/or other components; provided, however that a single such component
sold for use in a Licensed Method shall also be deemed an EVLT Kit; and FURTHER
PROVIDED, that sales of optical fibers sold separately shall not be deemed to be
"EVLT Kits".
1.6 "EVLT Laser" shall mean a laser for endovenous laser treatment
using the Technology, including, but not limited to the 15 watt, 810nm Diomed
Diode laser or any equivalent laser developed or substituted for same in the
future for Licensee's endovenous laser treatment (EVLT(TM)) products using the
Technology; PROVIDED, that parts for repairing or services for repairing EVLT
Lasers sold by Licensee shall not be deemed to be "EVLT Lasers."
1.7 "EVLT Optical Fiber" shall mean optical fiber sold for use together
with an EVLT Kit or an EVLT Laser or otherwise for use in a Licensed Method.
1.8 "Fixed Payments" shall mean the payments to be made to Licensor
pursuant to Section 5.1(a) and 5.1(b).
1.9 "Funding Date" shall mean the date on which Licensee has
consummated one or more financings with one or more third parties with gross
proceeds before expenses of at least Eight Million ($8,000,000.00) Dollars.
1.10 "Improvement" shall mean any improvement, modification or
variation, whether or not patentable, in or to the Technology, which is
developed by Licensor or any of the Endolaser Inventors, whether now known to
them or developed after the Effective Date of this Agreement.
1.11 "Interest Rate" shall mean the prime rate, as published in THE
WALL STREET JOURNAL, as the same shall be in effect from time to time, plus 200
basis points, divided by 360.
1.12 "Interest Factor" shall mean, for each Patent Litigation Cost,
Patent Maintenance Cost or Patent Prosecution Cost, and for each Fixed Payment
and royalty payment, the amount of such cost, expense or payment multiplied by
(x) the Interest Rate and (y) the number of days elapsed since the date of
payment of such cost, expense or payment by or on behalf of the Licensee to the
person to whom such amount is due.
1.13 "Licensed Product" shall mean the EVLT Lasers, the EVLT Kits and
any other product or part thereof, including EVLT Optical Fibers, for use in
endovenous laser treatment using the Technology;
1.14 "Licensed Method" shall mean any method of endovenous laser
treatment using the Technology.
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1.15 "Licensed Territory" shall mean all the countries of the world and
their territories and possessions except Spain.
1.16 "Licensee" shall include its Affiliates and their successors and
assigns.
1.17 "Lump Sum" means a fixed amount of money, whether payable in one
or in more than one installments, not tied to sales or other measure of
commercial activity.
1.18 "Net Sales" shall mean the Receipts of Licensee or its Successors
(but not the gross revenues of Sublicensees) from the sale, lease, transfer or
other exploitation of EVLT Lasers, EVLT Kits or EVLT Optical Fibers after the
Funding Date to any person other than an Affiliate of Licensee, Licensor or any
of the Endolaser Inventors or to Dr. Robert Min for his personal professional
use, less, in each case, the following reasonable and customary charges to the
extent actually taken or paid by Licensee for:
(a) transportation and insurance charges;
(b) trade, quantity, case promotional and other
discounts;
(c) brokers' or agents commissions paid to independent
parties in arms-length transactions;
(d) credits or allowances given and on account of
rejects, returns or retroactive price reductions;
(e) taxes or governmental charges on the sale,
transportation, use, or delivery of EVLT Lasers, EVLT
Kits or EVLT Optical Fibers and not recovered from
the purchaser; and
(f) sales commissions to independent and direct sales
representatives arising from the sale of EVLT Lasers,
EVLT Kits or EVLT Optical Fibers.
All sales, transfers and other transactions between Licensee and any of its
Affiliates for purposes of the direct or indirect resale or other further
exploitation of EVLT Lasers, EVLT Kits or EVLT Optical Fibers to or with respect
to a Third Party shall be excluded from the computation of Net Sales, provided
that, Net Sales shall include all Receipts from such resale or other
exploitation to or with respect to Third Parties other than Sublicensees (which
shall be governed by Section 5.7). For the avoidance of doubt, sales or
transfers of EVLT Lasers, EVLT Kits or EVLT Optical Fiber to potential customers
or to independent sales representatives for demonstration purposes shall not be
deemed to generate Net Sales.
1.19 "OEM Sale" shall mean any sale of EVLT Lasers, EVLT Kits or EVLT
Optical Fiber by Licensee to a purchaser under an agreement where the EVLT
Lasers, EVLT Kits or EVLT Optical Fiber are delivered without Licensee's logo
and the purchaser has the right to separately brand the EVLT Lasers, EVLT Kits
or EVLT Optical Fiber with its own name or logo (or a name or logo not
associated with Licensee or its Affiliates) and actually does so.
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1.20 "Patent Litigation Costs" shall mean, without duplication, any and
all costs and expenses actually paid to commence and thereafter to maintain any
legal proceeding before a court, other tribunal or administrative agency having
proper jurisdiction over the assertion of patent claims or rights or arbitration
against an alleged or actual infringer under any of the Patents, including the
defense of any claims of invalidity or misuse of any of the Patents, whether
asserted as a counterclaim in any such action or proceeding or in an independent
action or proceeding. Patent Litigation Costs shall not include Patent
Maintenance Costs or Patent Prosecution Costs.
1.21 "Patent Maintenance Costs" shall mean, without duplication, all
costs and expenses actually paid to maintain any of the Patents, including any
taxes, annuities, working fees, maintenance fees and renewal and extension
charges with respect to any of the Patents. Patent Maintenance Costs shall not
include any Patent Prosecution Costs or Patent Litigation Costs.
1.22 "Patent Prosecution Costs" shall mean, without duplication, all
costs and expenses actually paid to obtain the issuance of any of the Patents
based upon applications or other documents filed by Licensor or Licensee. Patent
Prosecution Costs shall not include Patent Maintenance Costs or Patent
Litigation Costs.
1.23 "Patents" shall mean all patents and patent applications set forth
on ATTACHMENT A, both foreign and domestic, as well as continuations,
continuations-in-part, divisionals, reexaminations, reissues and extensions
thereof.
1.24 "Receipts" shall mean monies or the monetary value of other
consideration to the extent actually received by Licensee.
1.25 "Quarter" shall mean each of the three-month periods occurring
during the Term of this Agreement and ending on March 31, June 30, September 30
and December 31; PROVIDED, that if the Funding Date occurs on a date other than
the first day of a Quarter, the initial Quarter shall be the period commencing
on the Funding Date and ending on the last day of the Quarter in which the
Funding Date occurs.
1.26 "Sublicensee" shall mean any person or entity, other than an
Affiliate of Licensee or a distributor of Licensee, that acquires from Licensee
any license or right to practice any of the Patents.
1.27 "Technology" shall mean any device or method covered by the '777
Patent and any Improvements.
1.28 "Term" shall mean the period commencing on the Effective Date and
ending on the effective date of termination of this Agreement pursuant to
Article 6.
1.29 "Third Party" shall mean any person or entity other than Licensor,
Licensee and Licensor's or Licensee's respective Affiliates.
1.30 "United States" shall mean the United States of America, its
commonwealths and possessions.
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2. GRANT OF LICENSE
2.1 Subject to the terms and conditions of this Agreement, Licensor
hereby grants to Licensee the exclusive right and license to make, have made,
use, lease, sell, import and export Licensed Products and to perform the
Licensed Methods and practice the Technology in the Licensed Territory, and, to
grant sublicenses or rights to practice to do the same. The choice of
Sublicensee(s) and the terms and conditions of sublicense(s) and rights to
practice that Licensee may grant under this Agreement shall be in Licensee's
sole discretion.
2.2 Licensee will provide Licensor with copies of all sublicense and
right to practice agreements within ten (10) business days of their execution by
Licensee and Sublicensee.
2.3 Licensee shall and shall require its Sublicensee(s) to fully comply
with the patent marking provisions of the applicable laws of those countries in
the Licensed Territory in which Licensee or its Sublicensees sell Licensed
Products or perform Licensed Methods.
3. DILIGENCE
3.1 Licensee shall use commercially reasonable efforts to actively
market and sell Licensed Products consistent with the practices of the medical
device industry in the United States and to enforce the Patents.
4. PATENT PROSECUTION AND LITIGATION
4.1 Licensee shall be solely responsible for prosecution, foreign
filing and maintenance of the Patents in the Licensed Territory and shall pay
all costs and expenses associated therewith, subject to recoupment as provided
below in this Agreement. Licensor agrees to perform all such further acts and
execute all such further applications, documents and instruments relating to the
Patents and the prosecution and maintenance thereof, in the Licensed Territory,
as Licensee may from time to time reasonably request in order to file and
prosecute patent applications and to obtain, perfect, provide evidence for or
protect the Patents and Licensee's rights thereunder. In furtherance of the
foregoing, Licensor hereby exclusively appoints Licensee to execute such
applications, documents and instruments in Licensor's name and on its behalf as
its duly authorized agent and attorney-in-fact and, except as provided in
Section 4.3, this appointment shall be deemed to be a power coupled with an
interest and shall be irrevocable during the Term. Licensee shall confirm to
Licensor upon Licensor's request, no less frequently than annually, that
Licensee has duly paid all maintenance fees in connection with the Patents.
4.2 All costs and expenses incurred by Licensee in furtherance of its
activities under Section 4.1, including Patent Maintenance Costs and Patent
Prosecution Costs, shall be promptly paid by Licensee; PROVIDED, that Licensee
shall have the right to recoup Patent Maintenance Costs in accordance with
Section 5.8(a).
4.3 Licensee shall not take any action or omit to take any action that
could result in the abandonment of any Patent without providing Licensor at
least sixty (60) days' prior written notice and sufficient opportunity to take
such steps as may be necessary to avoid abandonment of any such Patent. If
Licensee purports to take any such action or omits to take any such action,
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and Licensor gives Licensee notice of its desire to avoid such abandonment with
respect thereto, the appointment of Licensee as Licensor's duly authorized agent
and attorney-in-fact pursuant to Section 4.1 shall be deemed revoked as to such
Patent from and after the date of such notice by Licensor to Licensee.
4.4 Licensor shall not take any action or omit any action which could
result in the abandonment of any Patent without providing Licensee at least
sixty (60) days' prior written notice and sufficient opportunity to take such
steps as may be necessary to avoid abandonment of any Patent.
4.5 If any action alleging invalidity or non-infringement of any of the
Patents is brought by a third party against Licensor or any Endolaser Inventor,
Licensor shall provide notice thereof to Licensee and Licensee shall have the
right to intervene and take over the sole defense of the action and to assert
claims on behalf of Licensor and Licensee at its own expense, subject to
Licensor's obligation to indemnify under Section 7.5. Licensor shall provide
Licensee written notice of any such claim, proceeding or suit as promptly as
practicable but in no event later than ten (10) days after Licensor's receipt of
notice thereof.
4.6 (a) Licensor will promptly inform Licensee of any act by a Third
Party which it believes is an infringement of a Patent in the Licensed
Territory.
(b) Licensee shall have the sole right to enforce the Patents in
the Licensed Territory and to settle and/or litigate the matter with the Third
Party infringer.
(c) If Licensee chooses to enforce any Patent against a third
party infringer, by commencement and maintenance of an infringement action,
Licensee shall pay all Patent Litigation Costs. Any monetary recovery (whether
by settlement, award or judgment) received by Licensee as a result of an
infringement claim or counterclaim by Licensee against a Third Party shall be
allocated as follows:
First, to Licensee until an amount equal to all
Patent Litigation Costs, together with the applicable Interest
Factors thereon, has been recouped in full; and
Second, as to all amounts of any such monetary
recovery that are allocable on the basis of date of sale or
other transfer to the period of time up to and through the
Funding Date, [*CONFIDENTIAL MATERIAL OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT] of such
amounts shall be retained by Licensee; and
Third, as to all amounts of any such monetary
recovery that are allocable on the basis of date of sale or
other transfer to the period of time after the Funding Date,
such amounts shall be paid to Licensor and Licensee,
respectively, as if any such amount that is a fixed amount
were a Lump Sum payment from a Sublicensee and as if any
future royalties or similar contingent payments constituting
part of the recovery or settlement were royalties from a
Sublicensee, all as provided in Section 5.7.
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(d) Licensor and the Endolaser Inventors consent to being joined
in the action as interested parties, and will perform all acts reasonably
necessary to assist in said enforcement at Licensee's expense. Licensor will
charge Licensee no more than $3,500 per day for the services of Dr. Luis Navarro
plus all his reasonable travel expenses in connection with such action.
Endolaser will charge no more than $1,000 per day for the services of each of
the other Endolaser Inventors plus their reasonable travel expenses in
connection with such action, which travel expenses shall be subject to the prior
written consent of Licensee if they exceed $500.00 in any one instance, not to
be unreasonably withheld. Licensor shall maintain and make available upon
Licensee's or its attorneys request all relevant records, papers, information,
samples, and the like relating to the Patents.
5. PAYMENT PROVISIONS AND REPORTING OBLIGATIONS
As complete consideration in respect of payments for the rights granted
by Licensor to Licensee hereunder, Licensee will make the following payments to
Licensor:
5.1 (a) Licensee shall pay to Licensor One Million Five Hundred
Thousand Dollars ($1,500,000.00) upon the earlier to occur of three (3) days
after (i) the Funding Date, and (ii) September 15, 2003.
(b) Licensee shall make ten quarterly payments to Licensor of Two
Hundred Fifty Thousand Dollars ($250,000) each on the first business day of each
of the ten (10) Quarters following the Quarter in which the Funding Date occurs,
until such quarterly payments total Two Million Five Hundred Thousand Dollars
($2,500,000.00). For the avoidance of doubt, if the Funding Date occurs on or
prior to September 15, 2003, the first quarterly payment referred to in this
Section will be payable on October 1, 2003.
5.2 After satisfaction of the conditions that the Funding Date has
occurred and that the amount payable under Section 5.1(a) has become due and
payable, Licensee's payment obligation under Section 5.1(b) shall be absolute
and irrevocable and the payments set forth in Section 5.1(b) shall be guarantee
payments of Licensee not subject to any abatement, set-off or recoupment and
shall be payable to Licensor irrespective of the abandonment or lapse of any one
or more of the Patents, any determination by a court of competent jurisdiction
that any Patent is invalid or unenforceable and any termination of the Agreement
pursuant to Article 6.
5.3 Subject to Section 5.8, Licensee shall pay Licensor royalties of
[*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT] percent on
Net Sales of EVLT Lasers sold for delivery in the United States after the
Funding Date.
5.4 Subject to Section 5.8, Licensee shall pay Licensor royalties on
Net Sales of EVLT Kits sold for delivery in the United States after the Funding
Date according to the following schedule:
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Cumulative Net Sales of EVLT Kits Sold for
DELIVERY IN THE U.S., PER QUARTER ROYALTY RATE
[*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT]
5.5 (a) Subject to Section 5.8, Licensee shall pay to Licensor
royalties of [*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT] percent on Net Sales of EVLT Lasers sold for delivery outside of the
United States after the Funding Date.
(b) Subject to Section 5.8, Licensee shall pay to Licensor
royalties on Net Sales of EVLT Kits sold for delivery outside of the United
States after the Funding Date according to the following schedule:
Cumulative Net Sales of EVLT Kits Sold for
DELIVERY OUTSIDE THE U.S., PER QUARTER ROYALTY RATE
[*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT]
(c) Subject to Section 5.8, Licensee shall pay to Licensor royalties of
[*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT] percent on
Net Sales of OEM EVLT Lasers after the Funding Date.
(d) Subject to Section 5.8, Licensee shall pay to Licensor royalties on Net
Sales of OEM EVLT kits after the Funding Date according to the following
schedule:
CUMULATIVE NET SALES OF OEM EVLT KITS, PER QUARTER ROYALTY RATE
[*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT]
5.6 Subject to Section 5.8, Licensee shall pay to Licensor
[*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION PURUSANT TO A REQUEST FOR CONFIDENTIAL TREATMENT] percent of
the Net Sales of EVLT Optical Fiber in any Quarter after the Funding Date;
provided, however, that notwithstanding the foregoing, the royalty on EVLT
Optical Fiber sold by Licensee in an OEM Sale shall be at the rates set forth in
Section 5.5(d).
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5.7 Licensee shall pay to Licensor [*CONFIDENTIAL MATERIAL OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT] percent of all payments received in the form
of Lump Sum payments from Sublicensees after the Funding Date and Licensee shall
pay to Licensor [*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT] percent of all royalties received from Sublicensees on Sublicensees'
sales of EVLT Lasers, EVLT Kits and EVLT Optical Fiber made after the Funding
Date.
5.8 The payments provided for in Section 5.3 through 5.7 are subject to
the following:
(a) Licensee may deduct on an ongoing basis from any payments due
under Section 5.3 through 5.7 all Patent Maintenance Costs.
(b) After such time as Licensee has paid to Licensor the
cumulative amount of [*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT] (including all Fixed Payments and all royalties paid under Sections
5.3 through 5.7), the royalties set forth in Sections 5.3 through 5.6 and the
allocation of Sublicensees' Lump Sum payments and royalties under Section 5.7
shall be reduced by [*CONFIDENTIAL MATERIAL OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT], beginning as of the first day of the Quarter in which such amounts
have been cumulatively paid.
(c) In the event that the `777 Patent is held invalid or
unenforceable by a court of competent jurisdiction, which holding has not and
cannot be further appealed, royalties on sales by Licensee or its Sublicensee in
the United States on and after the date of such holding shall cease to accrue.
Royalties accrued before the date of said holding shall remain payable as
provided in this Agreement. Licensor and Licensee agree that for their mutual
convenience all royalties on foreign sales shall continue to accrue,
irrespective of a holding that the `777 Patent is held invalid or unenforceable,
subject to Sections 5.8(d) and 5.8(e). Notwithstanding the foregoing, if at the
date of said holding, no Patents other than the `777 Patent had been issued,
then from and after the date of such holding all royalties on sales after that
date by Licensee or its Sublicensees anywhere in the Licensed Territory shall
cease to accrue or be payable. Royalties accrued before the date of such holding
shall remain payable as provided in this Agreement.
(d) In the event any one or more of the Patents other than the
`777 Patent is held invalid or unenforceable by a court of competent
jurisdiction, which holding has not and cannot be further appealed, royalties on
sales on and after the date of such holding by Licensee or its Sublicensee in
the territories in which such invalidated or unenforceable Patents had been in
effect shall cease to accrue or be payable. Royalties accrued before the date of
said holding in the territories in which such invalidated or unenforceable
Patents had been in effect shall accrue and remain payable as provided in this
Agreement.
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(e) In the event that all of the Patents are held invalid or
unenforceable by a court of competent jurisdiction, which holdings have not and
cannot be further appealed, all royalties on sales by Licensee or its
Sublicensee anywhere in the world on and after the date of the last such holding
shall cease to accrue. Royalties accrued before the date of the last such
holding shall accrue and remain payable as provided in this Agreement.
5.9 (a) Licensee will keep good and accurate books of account
sufficient to permit determination of the royalties due hereunder and will make
such books of account for the then prior three calendar years available for
inspection by an independent certified accountant designated and retained by
Licensor and reasonably acceptable to Licensee. Such inspections shall be
conducted no more frequently than once each calendar year during the term hereof
and once within six months after termination or expiration of this Agreement.
The designated accountant will retain in confidence the information in the books
of account and may report to Licensor the accuracy or inaccuracy of the
royalties paid hereunder. In the event that said accountant reports a deficiency
in the amount of the royalties previously paid, Licensee will remit the overdue
balance and interest as set forth in Section 5.11 within thirty (30) days of
notice thereof and in the event that such deficiency exceeds ten percent (10%)
of the royalties previously paid, Licensee will reimburse Licensor for the costs
of the audit.
(b) Notwithstanding the foregoing, to the extent that any EVLT
Lasers sold are lasers intended both for use in a Licensed Method and for one or
more other uses, then the amount on which royalties shall be determined shall be
the Licensee's or Sublicensee's actual Net Sales of such EVLT Lasers.
5.10 Licensee shall, within forty five (45) days after the end of each
Calendar Quarter, deliver to Licensor true and accurate reports pertaining to
its Net Sales and Receipts from Sublicensees which shall include at least the
following information to permit Licensor to calculate its royalty entitlements:
(i) with respect to Licensee's Net Sales:
First, the identity of each model or part number of EVLT
Lasers and EVLT Kits sold;
Second, the number of units of EVLT Lasers and EVLT Kits (by
model or part number) sold;
Third, Net Sales of EVLT Lasers and EVLT Kits for delivery in
the United States and outside the United States, delineated on a
branded and OEM basis;
Fourth, Net Sales of EVLT Optical Fiber;
Fifth, all deductions from Licensees' Receipts in calculating
Net Sales; and
Sixth, total royalties payable to Licensor from Licensee's or
its Affiliates' Net Sales; and
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(ii) with respect to Licensee's Receipts from Sublicensees:
First, names and addresses of all Sublicensees of Licensee;
Second, Net Sales of EVLT Lasers and EVLT Kits and EVLT
Optical Fiber by all Sublicensees for delivery in the United States and
outside the United States;
Third, Lump Sums received from each Sublicensee;
Fourth, royalties received from each Sublicensee;
Fifth, Licensor's percentage share of Lump Sums; and
Sixth, Licensor's percentage share of royalties.
PROVIDED, that with respect to sales of EVLT Lasers made other than in the
United States to third parties by Sublicensees, distributors and sales agents
where Licensee does not know the intended use of the product sold, Licensee
shall report such sales in the Quarter in which Licensee actually is made aware
of the intended use of the product sold, but in no event later than the Quarter
following the Quarter during which such sale occurs.
5.11 With each report submitted under Section 5.10, Licensee shall pay
to Licensor the royalties and other payments due and payable under this Article
5. If no royalties are due, Licensee shall so report. Payments not made timely
shall be made together with the applicable Interest Factors.
5.12 (a) All payments due Licensor based on sales in countries outside
the United States shall accrue in the currency of the country in which the sales
are invoiced. For purposes of this Agreement, sales in countries outside of the
United States shall mean sales of EVLT Lasers, EVLT Kits or EVLT Optical Fibers
which are shipped to the purchaser for use in a location outside of the United
States, regardless of the place the sale actually occurs or is deemed to have
occurred for any other purpose. Payments to Licensor of royalties for foreign
sales shall be in U.S. dollars calculated on the basis of currency exchange
rates in effect and published by the Wall Street Journal as of the date of
Licensee's actual collection of the underlying proceeds of foreign sales.
Licensee will not be responsible for any loss of exchange value, taxes, or other
expenses incurred in the transfer or conversion of foreign currency into U.S.
Dollars or for any income, remittance or other taxes on royalties that are
required to be withheld at the source. All payments shall be made by check or
wire transfer to one or more bank accounts of Licensor located in the United
States to be designated in writing by Licensor.
(b) Whenever currency regulations of a country in which sales are
made prohibit the deposit or payment of royalties to Licensor or its nominee, no
royalty payment shall be due and payable by Licensee with respect to such sales
for so long as such restrictions prevail.
5.13 Not more than once in any calendar year during the Term of this
Agreement, Licensor may request, in writing, from Licensee a list of all
Licensed Products then being sold by Licensee. Licensee will provide the
requested information within thirty (30) days after receipt of the request.
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6. TERMINATION
6.1 Unless earlier terminated as hereinafter provided, this Agreement
shall remain in full force and effect until the last of the Patent(s) shall have
expired or be held invalid by a court of competent jurisdiction, which holding
is not or cannot be further appealed.
6.2 (a) Licensor may terminate this Agreement upon thirty (30) days'
notice to Licensee if Licensee fails to pay any sum falling due under Sections
5.1 through 5.7 and Licensee fails to cure the default within said notice
period.
(b) Licensor may terminate this Agreement upon sixty (60) days'
notice Licensee if Licensee fails to timely provide the royalty report(s)
specified in Section 5.10 and fails to cure the default within said notice
period.
6.3 (a) Either party may terminate this Agreement forthwith if the
other party files a petition in bankruptcy or is adjudicated a bankrupt or
insolvent, or makes an assignment for the benefit of creditors or an arrangement
pursuant to any bankruptcy law, or if the other party discontinues or dissolves
its business or if a receiver is appointed for the other party or for the other
party's business and such receiver is not discharged within one hundred eighty
(180) days; or if an encumbrance holder takes possession, or a receiver is
appointed, of any of the property or assets of the other party.
(b) Either party may terminate this Agreement effective upon
ninety (90) days' written notice to the other party if the other party commits
any material breach of its obligations under this Agreement, other than in the
cases specified in Section 6.2, and, if the breach is capable of remedy, the
other party has failed to remedy the same within said notice period.
6.4 No relaxation, forbearance, delay or indulgence by either party in
enforcing any of the terms of this Agreement or the granting of time by either
party to the other shall prejudice, affect or restrict the rights and powers of
the former hereunder nor shall any waiver by either party of a breach of this
Agreement be considered as a waiver of any subsequent breach of the same or any
other provision hereof.
6.5 The rights to terminate this Agreement given by this clause shall
not prejudice any other right or remedy of either party in respect of the breach
concerned, if any, or any other breach.
7. REPRESENTATIONS, WARRANTIES AND COVENANTS; INDEMNIFICATION
7.1 (a) As of the Effective Date, Licensor represents that to its
actual knowledge and the actual knowledge of the Endolaser Inventors, (i) the
Technology does not infringe any patent of any person, firm, or company, and
(ii) there is no pending or threatened litigation challenging the validity or
ownership of the Patents.
12
(b) Licensor represents that it is a limited liability company
duly formed and validly existing under the laws of the State of Delaware.
(c) Licensee represents that it is a corporation duly formed and
validly existing under the laws of the State of Delaware.
(d) Each of Licensor and Licensee warrant and represent it has
taken all necessary action to approve this Agreement and to authorize the
respective officers of Licensor and Licensee to execute this Agreement and such
further documents as are necessary and proper to consummate the terms and
provisions of this Agreement. Upon the execution hereof, this Agreement will
constitute the valid and legally binding obligation of Licensor and Licensee,
enforceable in accordance with its terms.
(e) Licensor represents and warrants that there is no undivided
interest in the Patents other than the undivided interest in the Patents that it
owns and such undivided interest as was originally owned by Dr. Robert Min.
Licensor owns its undivided interest in and to the Patents via an assignment
from the Endolaser Inventors, without the right of rescission, free and clear of
all licenses, liens, security interests, charges, encumbrances and other adverse
claims, and has all right and authority to grant to Licensee the licenses set
forth herein. Licensor further represents and warrants that it has accounted for
all payments and pecuniary obligations of any kind owed to any of the Endolaser
Inventors and that none of the Endolaser Inventors has or shall have a claim
against Licensee related to any of the Fixed Payments or royalties payable by
Licensee hereunder. In furtherance of the foregoing, Licensor shall procure from
the Endolaser Inventors and provide to Licensee prior to the Funding Date, as a
condition to Licensee's obligation to make the payment required by Section 5.1,
originally-executed counterparts of the letter of acknowledgment in the form
attached hereto as ATTACHMENT B.
(f) Licensor represents and warrants that the sole business of
Licensor is, and since the date of its formation has been, to hold and exploit
the interests of the Endolaser Inventors in the Patents through licensing
arrangements and that during the Term, Licensor will not enter into any
transactions or business other than as heretofore conducted and will not incur
any indebtedness for borrowed money in excess of $50,000.
(g) Licensee acknowledges that it has, prior to its execution of
this Agreement, reviewed and evaluated the Patents.
7.2 EXCEPT AS EXPRESSLY SET FORTH IN SECTION 7.1, THE PARTIES DISCLAIM
ALL REPRESENTATIONS AND WARRANTIES WHATSOEVER, EXPRESS OR IMPLIED, BY STATUTE,
OPERATION OF LAW OR OTHERWISE, WHETHER WRITTEN OR ORAL, OR ARISING FROM COURSE
OF PERFORMANCE, COURSE OF DEALING OR USAGE OF TRADE, INCLUDING ANY
REPRESENTATIONS OR WARRANTIES AS TO MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
7.3 Except as set forth in Section 7.1, nothing in this Agreement shall
be construed as:
(a) a warranty or representation by Licensor as to the validity,
enforceability or scope of any Patent; or
13
(b) a warranty or representation by Licensor that anything made,
used, sold, or otherwise disposed of pursuant to this Agreement by Licensee is
or will be free from infringement of patents or other intangible rights of Third
Parties; or
(c) an obligation of Licensor to bring or prosecute actions or
suits against Third Parties for infringement of any Patent; or
(d) an obligation of Licensor to furnish any manufacturing or
technical assistance or information.
7.4 Licensor assumes no responsibilities whatever with respect to the
manufacture, use, sale or other disposition by Licensee, its Sublicensee(s) or
their customers of any Licensed Product.
7.5 Licensor shall indemnify, defend and hold harmless Licensee and its
Sublicensees and their respective directors, officers, employees and agents from
and against any and all liabilities, damages, losses, costs and expenses
(including reasonable attorneys fees and professional fees and other expenses of
litigation and/or arbitration) resulting from or arising out a breach by
Licensor of any of its representations or warranties made in Section 7.1.
7.6 Licensee shall indemnify, defend and hold harmless Licensor and its
respective directors, officers, employees and agents the Endolaser Inventors
from and against any and all liabilities, damages, losses, costs and expenses
(including reasonable attorneys fees and professional fees and other expenses of
litigation and/or arbitration) resulting from or arising out a breach by
Licensee of any of its representations or warranties made in Section 7.1.
7.7 Licensee shall indemnify, defend and hold harmless Licensor and its
directors, officers, employees, agents and consultants and the Endolaser
Inventors (each an "Endolaser Indemnitee") from and against any and all
liabilities, damages, losses, costs and expenses (including reasonable
attorneys' and professional fees and other expenses of litigation and/or
arbitration) resulting from or arising out of a claim, suit or proceeding
brought by a third party against an Endolaser Indemnittee for personal injury,
death, product liability or property damage arising out of or relating to the
manufacture, use, sale or other disposition of Licensed Products or practice of
Licensed Methods; PROVIDED, that this Section 7.6 shall not require Licensee to
indemnify, defend or hold harmless Licensor or any of the Endolaser Inventors
with respect to any liabilities, damages, losses, costs or expenses arising out
of the rendering of professional services by the Endolaser Inventors.
8. MISCELLANEOUS
8.1 Nothing in this Agreement shall create, or be deemed to create, a
partnership, joint venture, employment or the relationship of principal and
agent, between the parties.
8.2 Licensee may assign this Agreement to any of its Affiliates or to
any third party taking over substantially all the business of Licensee relating
to the Technology, provided that Licensee shall remain responsible for, and such
assignee shall assume in writing, Licensee's obligations hereunder. Any other
assignment of this Agreement by Licensee shall require
14
Licensor's prior written consent, which shall not be unreasonably withheld;
PROVIDED, that the merger or consolidation of Licensee, a change in control of
Licensee or the sale of all or substantially all of the assets of Licensee shall
not be deemed an assignment of this Agreement and shall not require the
Licensor's consent or approval. Licensee may grant a security interest, lien or
mortgage in this Agreement without Licensor's consent or approval.
8.3 Licensor may assign this Agreement to any Affiliate or to any one
or more of the Endolaser Inventors without the prior consent of Licensee;
PROVIDED, that the Endolaser Inventors shall assume in writing the obligations
of Licensor hereunder. Any other assignment of this Agreement by Licensor shall
require Licensee's prior written consent, which shall not be unreasonably
withheld; PROVIDED, that, subject to the following sentence, the merger or
consolidation of Licensor, a change in control of Licensor or the sale of all or
substantially all of the assets of Licensor shall not be deemed an assignment of
this Agreement and shall not require Licensee's consent or approval.
Notwithstanding the foregoing, however, Licensee shall retain all rights to
consent or to withhold its consent, in its sole discretion, whether reasonably
or unreasonably exercised, to any assignment or transfer, whether direct or
indirect and whether by merger, consolidation, change in control, sale of all or
substantially all of the assets of Licensor or otherwise, as a result of which
any entity that manufactures or markets medical devices anywhere in the world,
or an entity that owns, directly or indirectly, any entity that manufactures or
markets medical devices anywhere in the world, succeeds to any of the rights of
Licensor under this Agreement.
8.4 For the purposes of this Agreement, "Force Majeure" means any
circumstances beyond the reasonable control of either party including, without
limitation, any strike, lock-out, or other form of industrial action. If either
party is affected by Force Majeure, it shall forthwith notify the other party of
the nature and extent thereof. Except with respect to the performance of any
payment obligation hereunder, neither party shall be deemed to be in breach of
this Agreement, or otherwise be liable to the other, by reason of any delay in
performance, or the non-performance, of any of its obligations under this
Agreement, to the extent that such delay or non-performance is due to any Force
Majeure of which it has notified the other party, and the time for performance
of that obligation shall be extended accordingly. If the Force Majeure in
question prevails for a continuous period in excess of six (6) months, the
parties shall enter into bona fide discussions with a view to alleviating its
effects, or to agreeing upon such alternative arrangements as may be fair and
reasonable.
8.5 Any notice required or permitted hereunder shall be given in
writing (unless otherwise specified herein) and shall be deemed effectively
given on the earliest of:
(i) the date delivered, if delivered by personal delivery with
written acknowledgement of receipt, or, by confirmed facsimile transmission;
(ii) the seventh business day after deposit, postage prepaid,
in the United States Postal Service by registered or certified mail; or
(iii) the third business day after mailing by next-day express
courier, with delivery costs and fees prepaid, in each case, addressed to each
of the other parties thereunto
15
entitled at the following addresses (or at such other addresses as such party
may designate by ten (10) days' advance written notice similarly given to each
of the other parties hereto):
LICENSEE: Diomed, Inc.
One Dundee Park
Andover, MA 01810
Attn: President and Chief Executive Officer
Telecopier No.: 978-475-8488
With a copy to:
McGuireWoods LLP
9 West 57th Street, Suite #1620
New York, New York 10019
Attn: William A. Newman
Telecopier No.: 212-548-2150
LICENSOR: Endolaser Associates, L.L.C.
c/o Luis Navarro, M.D.
327 East 65th Street
New York, New York 10021
Telecopier No. 212-517-5630
With a copy to:
Kramer Levin Naftalis & Frankel LLP
919 Third Avenue
New York, New York 10022
Attn: Barry Evans, Esq.
Telecopier No. 212-715-8364
8.6 This Agreement contains the entire and only agreement and
understanding between the parties and supersedes all preexisting agreements
between them respecting its subject matter; provided that, consistent with the
terms of the Term Sheet executed by the parties on June 9, 2003 (i) Licensor
will not discuss the sale or licensing of the Patents with any Third Party
during the Term of this Agreement, and (ii) promptly upon execution of this
Agreement, Licensee will take all reasonable steps to secure financing of at
least $8 million before expenses before September 15, 2003. Any representation,
promise or condition in connection with the subject matter of this Agreement
which is not incorporated in this Agreement shall not be binding on either
party.
8.7 No modification, renewal, extension, waiver, and no termination of
this Agreement or any of its provisions shall be binding upon the party against
whom enforcement of such modification, renewal, extension, waiver or termination
is sought, unless made in writing and signed on behalf of such party by one of
its duly authorized officers. As used herein, the word "termination" includes
any and all means of bringing this Agreement to an end prior to its expiration
by its own terms, or bringing to an end any provisions thereof, whether by
release, discharge, abandonment or otherwise.
16
8.8 This Agreement shall be subject to Section 365(n) of the United
States Bankruptcy Code and Licensee shall be entitled to the benefit of such
provisions. Licensee agrees, in the event it should become a debtor in a
proceeding under Title 11 of the United States Code (the "Bankruptcy Code"),
that: 1) the `777 Patent shall not be considered property of the estate within
the meaning of 11 U.S.C. ss.541; and 2) any license fees that shall become due
and owing for use by Licensee of the `777 Patent subsequent to any order for
relief under 11 U.S.C.ss.ss.301 or 303 shall be allowed and paid as
administrative expenses pursuant to 11 U.S.C. ss.ss.503(b) and 507.
8.9 This Agreement shall be construed, governed, interpreted and
applied in accordance with the laws of the State of New York, U.S.A., except
that questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent was granted. Any legal
action or proceeding relating to this Agreement or any document or instrument
related hereto shall be brought only in the state or federal courts of the State
of New York, and by its execution and delivery of this Agreement, Licensee
hereby accepts for itself and in respect to its property, generally and
unconditionally, the jurisdiction of the aforesaid courts.
8.10 This Agreement may be executed in one or more counterparts and any
party hereto may execute any such counterparts each of which shall be deemed an
original and all of which, taken together, shall constitute but one and the same
document. It shall not be necessary in making proof of this document or any
counterpart hereof to produce or account for any of the other counterparts.
8.11 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity and
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof. In the event the validity or unenforceability
of any provision of this Agreement is brought into question because of the
decision of a court of competent jurisdiction, Licensor, by written notice to
Licensee may revise the provision in question or may delete it entirely so as to
comply with the decision of said court.
8.12 The failure or delay of either party to assert a right hereunder
or to insist upon compliance with any term or condition of this Agreement shall
not constitute a waiver of that right or excuse a similar failure to perform any
such term or condition by the other party.
8.13 Licensee and Licensor recognize the sensitive nature of the
information contained in this Agreement and agree to take necessary precautions
to safeguard and treat the information as confidential and to take appropriate
action by instruction, agreement or notice with their directors, officers,
agents and employees to protect the confidential and proprietary nature of the
information. Licensee and Licensor agree not to disclose, publish or otherwise
reveal any of the information to any other party, other than their respective
attorneys and accountants, except required by financial reporting requirements
of the U.S. Securities and Exchange Commission, the American Stock Exchange or
any other regulatory body to which the Licensee or its securities is subject, or
required by applicable law or by administrative action; PROVIDED, that Licensee
may disclose this Agreement to prospective investors or file a copy of this
Agreement with the U.S. Securities and Exchange Commission.
17
8.14 Notwithstanding anything to the contrary contained in this
Agreement, Licensor and Licensee (and their respective employees,
representatives and other agents) may, upon written request therefor, disclose
at any time to any and all persons, without limitation of any kind, any and all
information relating to, and any facts relevant to understanding, the United
States federal income tax treatment of this Agreement and the transactions
contemplated by this Agreement, and all materials of any kind, including tax
analyses, relating to such tax treatment or the facts relevant to understanding
such tax treatment; PROVIDED, that (i) no person may disclose any confidential
business, financial or other information or term that is not relevant to
understanding the United States federal income tax treatment of the transactions
contemplated by this Agreement, and (ii) the party receiving any request for
disclosure has sent to the other party a copy of the request for disclosure.
18
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed in duplicate as first above written
Endolaser Associates, L.L.C. Diomed, Inc.
By: /s/ Luis Navarro By: /s/ James A. Wylie, Jr.
------------------------------ --------------------------------
Name: Luis Navarro Name: James A. Wylie, Jr.
Title: Authorized Officer Title: President and Chief Executive
Officer
19
ATTACHMENT A TO AGREEMENT EFFECTIVE JULY 11, 2003 BY AND BETWEEN
DIOMED, INC. AND ENDOLASER ASSOCIATES, INC
U.S. PATENTS
U.S. Patent No. 6,398,777
U.S. PATENT APPLICATIONS
None
FOREIGN AND PCT PATENT APPLICATIONS
PCT US0002187 (8/13/99)
EP 00908406 (11/8/00)
CA 2361634 (8/27/01)
20
ATTACHMENT B TO AGREEMENT EFFECTIVE JULY 11, 2003 BY AND BETWEEN
DIOMED, INC. AND ENDOLASER ASSOCIATES, INC
21
[Letterhead of Luis Navarro, M.D.]
[Date]
TO: ENDOLASER ASSOCIATES, L.L.C.
The undersigned hereby acknowledges and agrees, for the undersigned and the
undersigned's heirs, representatives and assigns, that the undersigned has
irrevocably and without right of rescission transferred, conveyed and assigned
to Endolaser Associates, L.L.C. all of the undersigned's right, title and
interest in and to the following patents and patent applications in all
countries of the world, whether in the United States or any other country,
including all continuations, continuations-in-part, divisionals, reexaminations,
reissues and extensions thereof (the "Patents"):
U.S. PATENTS
------------
U.S. Patent No. 6,398,777
U.S. PATENT APPLICATIONS
------------------------
None
FOREIGN AND PCT PATENT APPLICATIONS
-----------------------------------
PCT US0002187 (8/13/99)
EP 00908406 (11/8/00)
CA 2361634 (8/27/01)
, including any and all improvements, modifications or variations, whether or
not patentable, in or to any device or method covered by the Patents
("Improvements") known to him as of the date hereof , and hereby further agrees
to transfer, convey and assign to Endolaser Associates, L.L.C. any Improvements
that are developed or become known to him after the date hereof..
The undersigned further acknowledges and agrees, for the undersigned and the
undersigned's heirs, representatives and assigns, that (1) it has received
payment in full in consideration for its assignment of the Patents to Endolaser
Associates, L.L.C., (2) it has granted no licenses, liens, security interests,
charges or encumbrances against any of the Patents, and (3) it shall not take,
or assist any other person or entity in taking any adverse action or making any
adverse claims in respect of any of the Patents against Endolaser Associates,
L.L.C.
The undersigned further agrees, for the undersigned and the undersigned's heirs,
representatives and assigns, that the undersigned shall provide all assistance
as is reasonably requested by Endolaser Associates, L.L.C. and/or any of its
assignees or licensees, at the expense of Endolaser Associates, L.L.C. or such
assignee or licensee, to prosecute any applications for or extensions or
recordals of any Patent, to protect any Patent from infringement by unauthorized
third parties and to defend against the claims by any third party that any
Patent is invalid.
22
The foregoing acknowledgement and agreement is intended to be for the benefit of
Endolaser Associates, L.L.C. and any third party licensee(s) or assignee(s) of
the Patents (or any of them).
Luis Navarro, M.D.
STATE OF ______________)
ss.:
COUNTY OF ____________)
On the ____ day of ______________, 2003, before me, the undersigned
personally appeared, personally known to me or proved to me on the basis of
satisfactory evidence to be the individual(s) whose name(s) is (are) subscribed
to the within instrument and acknowledged to me that he/she/they executed the
same in his/her/their capacity(ies), and that by his/her/their signature(s) on
the instrument, the individual(s), or the person upon behalf of which the
individual(s) acted, executed the instrument.
- --------------------------------
Notary Public
23
[Letterhead of Nestor Navarro, M.D.]
[Date]
TO: ENDOLASER ASSOCIATES, L.L.C.
The undersigned hereby acknowledges and agrees, for the undersigned and the
undersigned's heirs, representatives and assigns, that the undersigned has
irrevocably and without right of rescission transferred, conveyed and assigned
to Endolaser Associates, L.L.C. all of the undersigned's right, title and
interest in and to the following patents and patent applications in all
countries of the world, whether in the United States or any other country,
including all continuations, continuations-in-part, divisionals, reexaminations,
reissues and extensions thereof (the "Patents"):
U.S. PATENTS
------------
U.S. Patent No. 6,398,777
U.S. PATENT APPLICATIONS
------------------------
None
FOREIGN AND PCT PATENT APPLICATIONS
-----------------------------------
PCT US0002187 (8/13/99)
EP 00908406 (11/8/00)
CA 2361634 (8/27/01)
, including any and all improvements, modifications or variations, whether or
not patentable, in or to any device or method covered by the Patents
("Improvements") known to him as of the date hereof , and hereby further agrees
to transfer, convey and assign to Endolaser Associates, L.L.C. any Improvements
that are developed or become known to him after the date hereof..
The undersigned further acknowledges and agrees, for the undersigned and the
undersigned's heirs, representatives and assigns, that (1) it has received
payment in full in consideration for its assignment of the Patents to Endolaser
Associates, L.L.C., (2) it has granted no licenses, liens, security interests,
charges or encumbrances against any of the Patents, and (3) it shall not take,
or assist any other person or entity in taking any adverse action or making any
adverse claims in respect of any of the Patents against Endolaser Associates,
L.L.C.
The undersigned further agrees, for the undersigned and the undersigned's heirs,
representatives and assigns, that the undersigned shall provide all assistance
as is reasonably requested by Endolaser Associates, L.L.C. and/or any of its
assignees or licensees, at the expense of Endolaser Associates, L.L.C. or such
assignee or licensee, to prosecute any applications for or extensions or
recordals of any Patent, to protect any Patent from infringement by unauthorized
third parties and to defend against the claims by any third party that any
Patent is invalid.
24
The foregoing acknowledgement and agreement is intended to be for the benefit of
Endolaser Associates, L.L.C. and any third party licensee(s) or assignee(s) of
the Patents (or any of them).
- ----------------------------
Nestor Navarro, M.D.
STATE OF ______________)
ss.:
COUNTY OF ____________)
On the ____ day of ______________, 2003, before me, the undersigned
personally appeared, personally known to me or proved to me on the basis of
satisfactory evidence to be the individual(s) whose name(s) is (are) subscribed
to the within instrument and acknowledged to me that he/she/they executed the
same in his/her/their capacity(ies), and that by his/her/their signature(s) on
the instrument, the individual(s), or the person upon behalf of which the
individual(s) acted, executed the instrument.
- --------------------------------
Notary Public
25
[Letterhead of Carlos Bone Salat, M.D.]
[Date]
TO: ENDOLASER ASSOCIATES, L.L.C.
The undersigned hereby acknowledges and agrees, for the undersigned and the
undersigned's heirs, representatives and assigns, that the undersigned has
irrevocably and without right of rescission transferred, conveyed and assigned
to Endolaser Associates, L.L.C. all of the undersigned's right, title and
interest in and to the following patents and patent applications in all
countries of the world, whether in the United States or any other country,
including all continuations, continuations-in-part, divisionals, reexaminations,
reissues and extensions thereof (the "Patents"):
U.S. PATENTS
------------
U.S. Patent No. 6,398,777
U.S. PATENT APPLICATIONS
------------------------
None
FOREIGN AND PCT PATENT APPLICATIONS
-----------------------------------
PCT US0002187 (8/13/99)
EP 00908406 (11/8/00)
CA 2361634 (8/27/01)
, including any and all improvements, modifications or variations, whether or
not patentable, in or to any device or method covered by the Patents
("Improvements") known to him as of the date hereof , and hereby further agrees
to transfer, convey and assign to Endolaser Associates, L.L.C. any Improvements
that are developed or become known to him after the date hereof..
The undersigned further acknowledges and agrees, for the undersigned and the
undersigned's heirs, representatives and assigns, that (1) it has received
payment in full in consideration for its assignment of the Patents to Endolaser
Associates, L.L.C., (2) it has granted no licenses, liens, security interests,
charges or encumbrances against any of the Patents, and (3) it shall not take,
or assist any other person or entity in taking any adverse action or making any
adverse claims in respect of any of the Patents against Endolaser Associates,
L.L.C.
The undersigned further agrees, for the undersigned and the undersigned's heirs,
representatives and assigns, that the undersigned shall provide all assistance
as is reasonably requested by Endolaser Associates, L.L.C. and/or any of its
assignees or licensees, at the expense of Endolaser Associates, L.L.C. or such
assignee or licensee, to prosecute any applications for or extensions or
recordals of any Patent, to protect any Patent from infringement by unauthorized
third parties and to defend against the claims by any third party that any
Patent is invalid.
26
The foregoing acknowledgement and agreement is intended to be for the benefit of
Endolaser Associates, L.L.C. and any third party licensee(s) or assignee(s) of
the Patents (or any of them).
- ---------------------------------
Carlos Bone Salat, M.D.
STATE OF ______________)
ss.:
COUNTY OF ____________)
On the ____ day of ______________, 2003, before me, the undersigned
personally appeared, personally known to me or proved to me on the basis of
satisfactory evidence to be the individual(s) whose name(s) is (are) subscribed
to the within instrument and acknowledged to me that he/she/they executed the
same in his/her/their capacity(ies), and that by his/her/their signature(s) on
the instrument, the individual(s), or the person upon behalf of which the
individual(s) acted, executed the instrument.
- --------------------------------
Notary Public
27
[Letterhead of Joaquina Fructuoso Gomez, M.D.]
[Date]
TO: ENDOLASER ASSOCIATES, L.L.C.
The undersigned hereby acknowledges and agrees, for the undersigned and the
undersigned's heirs, representatives and assigns, that the undersigned has
irrevocably and without right of rescission transferred, conveyed and assigned
to Endolaser Associates, L.L.C. all of the undersigned's right, title and
interest in and to the following patents and patent applications in all
countries of the world, whether in the United States or any other country,
including all continuations, continuations-in-part, divisionals, reexaminations,
reissues and extensions thereof (the "Patents"):
U.S. PATENTS
------------
U.S. Patent No. 6,398,777
U.S. PATENT APPLICATIONS
------------------------
None
FOREIGN AND PCT PATENT APPLICATIONS
-----------------------------------
PCT US0002187 (8/13/99)
EP 00908406 (11/8/00)
CA 2361634 (8/27/01)
, including any and all improvements, modifications or variations, whether or
not patentable, in or to any device or method covered by the Patents
("Improvements") known to him as of the date hereof , and hereby further agrees
to transfer, convey and assign to Endolaser Associates, L.L.C. any Improvements
that are developed or become known to him after the date hereof..
The undersigned further acknowledges and agrees, for the undersigned and the
undersigned's heirs, representatives and assigns, that (1) it has received
payment in full in consideration for its assignment of the Patents to Endolaser
Associates, L.L.C., (2) it has granted no licenses, liens, security interests,
charges or encumbrances against any of the Patents, and (3) it shall not take,
or assist any other person or entity in taking any adverse action or making any
adverse claims in respect of any of the Patents against Endolaser Associates,
L.L.C.
The undersigned further agrees, for the undersigned and the undersigned's heirs,
representatives and assigns, that the undersigned shall provide all assistance
as is reasonably requested by Endolaser Associates, L.L.C. and/or any of its
assignees or licensees, at the expense of Endolaser Associates, L.L.C. or such
assignee or licensee, to prosecute any applications for or extensions or
recordals of any Patent, to protect any Patent from infringement by unauthorized
third parties and to defend against the claims by any third party that any
Patent is invalid.
28
The foregoing acknowledgement and agreement is intended to be for the benefit of
Endolaser Associates, L.L.C. and any third party licensee(s) or assignee(s) of
the Patents (or any of them).
- ---------------------------------
Joaquina Fructuoso Gomez, M.D.
STATE OF ______________)
ss.:
COUNTY OF ____________)
On the ____ day of ______________, 2003, before me, the undersigned
personally appeared, personally known to me or proved to me on the basis of
satisfactory evidence to be the individual(s) whose name(s) is (are) subscribed
to the within instrument and acknowledged to me that he/she/they executed the
same in his/her/their capacity(ies), and that by his/her/their signature(s) on
the instrument, the individual(s), or the person upon behalf of which the
individual(s) acted, executed the instrument.
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Notary Public