SALE OF INTELLECTUAL PROPERTY AGREEMENT
EXHIBIT
10.7
This
Sale
of Intellectual Property Agreement (“Agreement”) is made this fifth day of
April, 2002 (“Effective Date”), between the University of Rochester, an
educational institution chartered by the State of New York with offices at
▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇.▇. ▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (“Rochester”), and
VirtualScopics, LLC, a for-profit New York limited liability company with
offices at ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
(“VirtualScopics”).
Rochester
and VirtualScopics are parties to a certain License Agreement, dated December
13, 2000 and amended on May 18, 2001 (“License Agreement”), pursuant to which
Rochester licensed certain intellectual property to VirtualScopics. In return
for a portion of the equity position in VirtualScopics held by the Research
Foundation of the University of Rochester, Rochester waived any up-front
license
fees from VirtualScopics for the license rights granted in the License
Agreement.
In
connection with a proposed investment in VirtualScopics by Pfizer Corporation
(“Pfizer”), VirtualScopics has requested that Rochester sell the IP (defined
below) to VirtualScopics in accordance with the terms of this Agreement,
and
Rochester is willing to do so.
Therefore,
in consideration of the premises and promises in this Agreement, the parties
agree as follows:
1. Definitions
Capitalized
terms not defined elsewhere herein or in the License Agreement will have
the
meanings set forth below.
1.1 “Domain
Names”
means
“▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇” and “▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇.”
1.2 “Exhibit”
means
an Exhibit further identified by a Section number (e.g., Exhibit 1.6 for
the
Patent Rights; Exhibit 2.2 for the form of Patent Assignment, Exhibit 2.3
for
the form of Domain Name Assignment, etc.) which is attached to this Agreement
and is hereby incorporated by reference.
1.3 "Governmental
Authority"
means
any government, court, regulatory or administrative agency or commission,
or
other governmental authority, agency or instrumentality, whether federal,
state
or local (domestic or foreign), including, without limitation, the U.S. Patent
and Trademark Office (the "PTO").
1.4 “IP”
means
the Patent Rights and Domain Names.
1.5 “Operating
Agreement”
means
the Second Amended and Restated Operating Agreement of VirtualScopics, LLC,
which will be dated and executed on or before the closing of the Pfizer
Transaction.
1.6 “Patent
Rights”
means
all issued patents, United States provisional patent applications, United
States
patent applications, and Patent Cooperation Treaty patent applications listed
in
Exhibit 1.6 and inventions disclosed therein and any divisions,
continuations, continuations-in-part (to the extent directed to subject matter
specifically described in their respective parent applications), reissues,
reexaminations, renewals and substitutions thereof (including, without
limitation, remedies against infringements thereof and rights of protection
of
all interest therein under the law of all jurisdictions); and any and all
foreign patents and patent applications that claim priority from any of the
foregoing.
1.7 “Pfizer
Transaction”
means
the execution of the Securities Purchase Agreement, dated on or before 14
days
after the Effective Date, between VirtualScopics and Pfizer or an affiliate
of
Pfizer, which, among other things, provides for the payment by Pfizer of
$2.5
Million to VirtualScopics for Series B Preferred Units of
VirtualScopics.
In
this
Agreement, including any Exhibit, any reference to “including” means “including
but not limited to,” and any reference to “and” means “and/or” unless the
context clearly means otherwise.
2. Sale
of IP
2.1 In
accordance with the terms of, and subject to the conditions in, this Agreement,
Rochester hereby sells, transfers, and assigns all of its right, title and
interest in the IP to VirtualScopics, free and clear of all liens and
encumbrances.
2.2 Rochester
will execute a Patent Assignment with respect to the Patent Rights in
substantially the form of Exhibit 2.2, which VirtualScopics may record
in
the United States Patent and Trademark Office, and Rochester will, at
VirtualScopics’ expense, execute all such further documents and perform all such
other acts as may be reasonably requested by VirtualScopics to effect the
transfer of ownership in the Patent Rights to VirtualScopics free and clear
of
all liens and encumbrances.
2.3 Rochester
will execute a Domain Name Assignment with respect to the Domain Names in
substantially the form of Exhibit 2.3, and Rochester will, at
VirtualScopics’ expense, execute all such further documents and perform all such
other acts as may be reasonably requested by VirtualScopics to effect the
transfer of ownership in the Domain Names to VirtualScopics free and clear
of
all liens and encumbrances. Rochester will not register any domain names
including the ▇▇▇▇ “VirtualScopic” and, to the extent it has or will register
such domain names, hereby agrees to the transfer of such registrations to
VirtualScopics.
2.4 The
sale
of the IP is contingent upon VirtualScopics entering into a Securities Purchase
Agreement with Pfizer for the payment of $2.5 Million to VirtualScopics for
Series B Preferred Units of VirtualScopics within fourteen (14) days
of the
Effective Date; (b) agreement by the parties on the form of the Security
Agreement required under Section 4.7 below within fourteen (14) days of the
Effective Date; and (c) amendment and restatement of the Operating Agreement
to
incorporate all rights of Rochester under this Agreement to the satisfaction
of
Rochester within thirty (30) days of the Effective Date. VirtualScopics may
not
file the Patent Assignment described in Section 2.2 above until Rochester
provides written notice to VirtualScopics that Rochester is satisfied that
the
conditions of this Section 2.4 have been met.
2.5 Upon
fulfillment of the conditions set forth in Section 2.4 above, and execution
and
delivery of (a) this Agreement and (b) the Assignment attached hereto as
Exhibit
2.2, the Leased Employee Agreements among ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, M.D. and ▇▇▇▇▇
▇▇▇▇▇▇, Ph.D. on the one hand and VirtualScopics and Rochester on the other
hand
effective as of December 12, 2000 will terminate and be of no further force
and
effect, except for the provisions of Section 2 of such Leased Employee
Agreements with respect to the calculation and payment of any remaining costs
incurred by Rochester prior to the termination of such Leased Employee
Agreements and not yet paid by VirtualScopics.
2.6 Upon
fulfillment of the condition set forth in Section 2.4 above, and execution
and
delivery of (a) this Agreement, (b) the Assignment attached hereto as Exhibit
2.2, (c) the Domain Name Assignment attached hereto as Exhibit 2.3, (d) the
Security Agreement attached hereto as Exhibit 4.7, and (e) the Warrant to
Purchase attached hereto as Exhibit 4.8, the License Agreement will terminate
and be of no further force or effect except for costs incurred pursuant to
Section 5.2 of the License Agreement, if any.
-
2
-
3. License
of Patent Rights; End of License Agreement; License Back
3.1 VirtualScopics
hereby grants to Rochester, subject to any rights the United States Government
may possess under 37 C.F.R. §401, a limited non-exclusive, perpetual,
irrevocable, royalty-free right and license to use the Patent Rights solely
for
the purposes of research and education.
3.2 (a) If
at any
time VirtualScopics elects to phase-out its use of, or not commercialize,
the IP
or any part thereof that can be reasonably separated therefrom, VirtualScopics
will promptly notify Rochester. Upon request of Rochester, VirtualScopics
will
negotiate with Rochester in good faith for Rochester’s repurchase or license of
any or all of such separable but non-commercialized and/or phased out IP
on
reasonable terms.
(b) Rochester
acknowledges that upon payment in full of the Preferred Amount by VirtualScopics
or any of its affiliates, members, shareholders or employees, Rochester shall
have no rights to the IP except for the limited, non-exclusive license set
forth
in Section 3.1 above.
4. Financial
and Related Considerations
4.1 (a) VirtualScopics
will pay Rochester a liquidating preferred amount of $1,500,000 ("Preferred
Amount").
(b) VirtualScopics
will pay Rochester two and one-quarter percent (02.25%) of VirtualScopics’ gross
sales revenues (including from any licenses) actually received from any source
after the Effective Date until Rochester has received the Preferred Amount
pursuant to such formula.
(c) In
addition to amounts due under Section 4.1(b), if VirtualScopics licenses
any of
the IP to a third party, VirtualScopics will pay Rochester 25% of the amount
of
any “License Fee(s)” actually received from such third party(ies) by
VirtualScopics until Rochester has been paid the Preferred Amount, except
that
the 25% payment will not apply to image-analysis software or software tools
sold
or licensed by VirtualScopics as is to its customers without granting them
the
right to make modifications thereto. For purposes of this Section 4.1(c),
a
“License Fee” means any payment(s), e.g., upfront or installment payments, from
any such third party licensee(s) which is not based on revenues or sales
and is
not due on at least a quarterly basis.
4.2 Installments
of the Preferred Amount due pursuant to Sections 4.1(b) and (c) will be due
at
the end of each calendar quarter and will be paid within 30 days after the
end
of each such quarter to an account identified by Rochester. Each such
installment payment will be accompanied by a report setting forth in reasonable
detail and in accordance with generally accepted accounting principles, as
applicable (i) the amount of VirtualScopics’ gross sales revenues for the
preceding quarter and/or the basis of the calculation of any License Fees,
and
the sources of any such revenues or License Fees, and (ii) the calculation
of
the installment amount due. The report due by January 30th
of each
year will also show an annual history of the previous four quarters.
4.3 If
substantially all of the assets of or ownership interests in VirtualScopics
are
sold, or if VirtualScopics sells the IP, in whole or in part, the Preferred
Amount will immediately become due and payable to the extent VirtualScopics
or
its owners receive any consideration for such sale.
4.4 VirtualScopics
may prepay the Preferred Amount at any time without prepayment
penalty.
-
3
-
4.5 The
Preferred Amount due Rochester will be preferred to all other amounts paid
by or
disbursed from VirtualScopics except taxes, and the Operating Agreement will
be
amended to provide that the Preferred Amount is prior and preferred to any
other
distribution or payment (except taxes) from VirtualScopics, including the
dividend rights of Preferred Units described in Article X of the Operating
Agreement.
4.6 Provided
Rochester first executes a reasonable Non-Disclosure Agreement, Rochester
will
have the right to have its representative annually audit all books and records
of VirtualScopics (and to make copies thereof) during normal business hours
and
upon reasonable notice to verify the amounts due Rochester. To the extent
Rochester receives or learns of such accounting information pursuant to this
Agreement, Rochester will treat such information as confidential information
of
VirtualScopics and use it solely to verify and, if necessary, to enforce
its
right to receive the Preferred Amount. If any amount is not paid when due,
it
will be subject to a late charge equal to one percent (1%) per month until
paid.
The presence or payment of any late charge will not prevent Rochester from
exercising any other rights it may be entitled to as a result of any late
payment, all of which rights are cumulative. Furthermore, if any audit reveals
an underpayment (excluding any late payment charges) of more than ten percent
(10%) of the amount otherwise due, in addition to any late payment charge,
VirtualScopics will also pay Rochester’s reasonable costs incurred in connection
with the audit.
4.7 VirtualScopics
will grant Rochester a security interest, substantially in the form of the
Security Agreement that shall be attached to this Agreement as Exhibit 4.7,
within fourteen (14) calendar days of execution of this Agreement, in the
Patent
Rights for the payment of the Preferred Amount. Upon payment of the Preferred
Amount, Rochester's security interest shall terminate.
4.8 VirtualScopics
will also grant Rochester a warrant to purchase 375,000 of the Common Units
of
VirtualScopics. The warrant will be substantially in the form of Exhibit
4.8.
The exercise price for the Units will be $0.70 per Unit, subject to such
adjustments of such price or other terms of the warrant as may be set forth
in
the warrant; provided, however (a) the warrant will be effective as
of the
Effective Date and will terminate ten years thereafter; and (b) the
warrant
may be assigned by Rochester to any corporation or other legal entity of
which
Rochester is the sole shareholder or sole member.
5. Rochester's
Representations and Warranties
5.1 Rochester
represents and warrants to VirtualScopics the following:
(a) that
before the closing of the sale of the IP hereunder Rochester is the sole
owner
of the IP, particularly including the Patent Rights, but excluding those
inventions not included within the scope of valid claims ultimately issued
on
the Patent Rights;
(b) that
to
the best of Rochester’s knowledge, no third party has any rights to the IP
except those of VirtualScopics as set forth in the License Agreement and
those
of the inventors of the applicable IP who were employees of Rochester at
the
time of such inventions, provided, however, that all such rights shall terminate
upon the sale of the IP to VirtualScopics hereunder;
(c) that
this
Agreement, the Patent Assignment and the Domain Name Assignment (together
with
all other documents executed and delivered herewith and therewith) are within
Rochester’s legal powers, have been duly executed and delivered and constitute
the valid and binding agreements of Rochester;
-
4
-
(d) that
the
execution, delivery and performance by Rochester of this Agreement, the Patent
Assignment, Domain Name Assignment (together with all other documents executed
and delivered herewith and therewith) do not require any notice to, action
or
consent by or in respect of, or filing with, any Governmental Authority (other
than the filing of the Patent Assignments with the PTO and any other applicable
Governmental Authority, and the filing of the Domain Name Assignment with
Network Solutions, Inc.);
(e) that
there is no action, suit, investigation or proceeding (or any basis thereof),
of
which Rochester has received written notice, pending or, to the knowledge
of
Rochester, threatened, before any Governmental Authority or arbitrator that
has
or could materially affect the IP; Rochester has not received written notice
of
any claims made by any person or entity with respect to, or any actions,
suits
or other proceedings relating to, the IP which would have a material adverse
effect on the proposed or intended use of the IP;
(f) that
except for the License Agreement and the Leased Employee Agreements referenced
in Section 2.5 above, Rochester has not granted any licenses, sublicenses
or
other rights relating to the IP, and that, prior to the date of this Agreement,
Rochester has not granted any license or covenant not to ▇▇▇ with respect
to the
IP to any third party; and
(g) that
to
its knowledge Rochester and each inventor listed in any patent or patent
application and the attorneys of record thereto have complied with the PTO
duty
of candor and good faith in dealing with the PTO, including the duty to disclose
to the PTO all information known to be material to the patentability of each
of
the patent applications.
In
Sections 5.1(b), 5.1(e), and 5.1(g) of this Agreement and Section 1.3 of
Exhibit
2.3 to this Agreement only, for the purposes of Rochester’s
“knowledge,”“Rochester” shall mean the University of Rochester Office of
Technology Transfer and Office of Counsel to the Medical Center, University
of
Rochester and Strong Health.
The
representation and warranty set forth in Section 5.1(a) shall survive the
closing of the sale of IP.
5.2 EXCEPT
AS
SET FORTH IN SECTION 5.1 ABOVE, ROCHESTER MAKES NO REPRESENTATION OR WARRANTY,
EXPRESS, IMPLIED, OR STATUTORY WITH RESPECT TO THE IP, INCLUDING WARRANTIES
OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND THE VALIDITY OF ANY
PART
OF THE IP, INCLUDING BUT NOT LIMITED TO ISSUED OR PENDING CLAIMS OF THE PATENT
RIGHTS AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERED
OR
DISCOVERABLE. NOTHING IN THIS AGREEMENT OR ANY OTHER AGREEMENT TO WHICH
ROCHESTER AND VIRTUALSCOPICS ARE PARTIES WILL BE CONSTRUED AS A REPRESENTATION
OR WARRANTY THAT THE PRACTICE OF THE PATENT RIGHTS OR ANY OTHER USE OF THE
IP
WILL NOT INFRINGE UPON AN INTELLECTUAL PROPERTY RIGHT OF ANY OTHER
PERSON.
6. Rochester's
Covenants
6.1 Confidentiality.
Rochester will hold, and will use reasonable commercial efforts to cause
its
officers, directors, employees, accountants, counsel, consultants, advisors
and
agents to hold, in confidence, all confidential documents and information
concerning the IP, and such information which is identified in writing as
confidential or, if delivered orally, if confirmed in writing as confidential
within 30 days after oral delivery. Such obligation of confidentiality shall
not
apply to information that (a) is publicly known as of the date of the
disclosure; (b) becomes publicly known after the date of disclosure through
no
fault of Rochester or any person or entity to whom Rochester has disclosed
the
information pursuant to the terms of this Section 6.1; (c) is received after
the
date of this Agreement, from a third party who is not known to Rochester
to have
any obligation of confidentiality to VirtualScopics; (d) is disclosed by
Rochester in accordance with and subject to any limitations set forth in
any
written consent granted by VirtualScopics; or (e) is requested to be disclosed
by Rochester pursuant to a judicial or administrative process, provided that
Rochester shall use its best efforts to minimize such disclosure, and provided
further that Rochester shall notify VirtualScopics of the disclosure request
or
order and cooperate with VirtualScopics in obtaining a protective order if
VirtualScopics opts to seek one, which efforts shall be communicated to
Rochester prior to the date the disclosure is due and shall be at
VirtualScopics’ sole expense.
-
5
-
6.2 Patent
Documentation.
Upon
request of VirtualScopics, Rochester shall promptly advise its patent counsel
of
the existence of this Agreement and request that patent counsel transfer
the
ownership of its files concerning the IP from Rochester to VirtualScopics
and,
to the extent it has the authority to do so, will provide VirtualScopics
or its
representative Power to Inspect any pending U.S. or foreign patent application
as set forth in the Patent Rights.
7. Indemnity;
Limitation of Liability
7.1 VirtualScopics
will at all times defend, indemnify and hold harmless Rochester, its trustees,
directors, officers, employees, and affiliates from and against all claims,
proceedings, demands, losses, expenses (including attorney fees and expenses,
whether incurred as the result of a third party claim or a claim to enforce
this
Agreement), liabilities, and damages (collectively, “Claim”) to the extent
arising out of the exercise of VirtualScopics’ rights hereunder with respect to
VirtualScopics’ intellectual property, including the IP, or any part thereof,
including a Claim associated with injury or death to any person(s), damage
to
property, and the research, production, manufacture, testing, sale, use,
marketing, consumption, and advertising related to the exercise and exploitation
of VirtualScopics’ intellectual property in any form. Rochester shall promptly
notify VirtualScopics of any Claim of which it becomes aware and, at
VirtualScopics’ expense, will cooperate in the defense and settlement thereof.
Failure to provide such notice will not absolve VirtualScopics from its
indemnity obligation except to the extent of actual prejudice and additional
expenses caused by such failure. Except at its own cost, Rochester will not
compromise or settle any Claim without the prior written consent of
VirtualScopics, which will not be unreasonably withheld or delayed.
7.2 Rochester
will at all times defend, indemnify and hold harmless VirtualScopics, its
trustees, directors, officers, employees and affiliates from and against
all
claims, proceedings, demands, losses, expenses (including attorneys' fees
and
expenses, whether incurred as a result of a third-party claim or a claim
to
enforce this Agreement), liabilities and damages (collectively, "Claim")
to the
extent arising out of a breach of a representation, warranty or covenant
by
Rochester hereunder or as a result of Rochester's use or exploitation of
the IP.
VirtualScopics will endeavor to properly notify Rochester of any Claim of
which
it becomes aware and, at Rochester's expense, will cooperate in defense and
settlement thereof. Failure to provide such notice will absolve Rochester
from
its indemnity obligation to the extent of actual prejudice and additional
expense caused by such failure. Except at its own cost, VirtualScopics will
not
compromise or settle any Claim without the prior written consent of Rochester,
which will not be unreasonably delayed or withheld.
7.3 Rochester’s
sole liability, monetary or otherwise, to VirtualScopics or anyone claiming
under or through VirtualScopics hereunder shall in no event exceed the amounts
actually paid to Rochester pursuant to Section 4.1(a). VirtualScopics
shall
have no right to claim any such amount except solely as a result of a successful
Claim by VirtualScopics pursuant to Rochester’s indemnity obligation under
Section 7.2 above. These limitations shall apply regardless whether such
Claim
is based in contract, warranty, tort (including negligence), strict liability,
or any other legal theory, and, for the purposes of this Section, all Claims
will be aggregated. Furthermore, in no event will Rochester be liable for
incidental, indirect, consequential, special, economic, or punitive damages,
even if Rochester has been advised, or has other reason to know, of their
possibility.
-
6
-
8. Default
8.1 If
VirtualScopics defaults in any obligation hereunder, including failure to
pay
any amount due under Section 4.1(a), and such default continues more
than
30 days after Rochester has given notice to VirtualScopics of such breach,
Rochester will have to right, at its election, to terminate this Agreement
and
to pursue any other remedy available to it.
8.2 Without
limiting the foregoing, upon VirtualScopics’ breach of this Agreement Rochester
will have the right, but not the obligation, to repossess the IP as set forth
in
the Security Agreement. No other amount will be due VirtualScopics in such
event, other than amounts due pursuant to the Security Agreement.
9. Miscellaneous
9.1 This
Agreement will be construed in accordance with the laws of the United States
of
America and the State of New York, without reference to its conflict of law
provisions. All actions or proceedings arising in connection with this Agreement
will be tried and litigated exclusively in the courts located in Monroe County,
New York. The parties consent to the exclusive personal jurisdiction of such
venue, which choice of venue is intended by the parties to be mandatory and
not
permissive and to preclude the possibility of litigation between the parties
arising out of this Agreement in any jurisdiction other than that specified
in
this Section. Each party waives any right it may have to assert the doctrine
of
forum non-conveniens or similar doctrine or to object to venue with respect
to
any proceeding brought in accordance with this Section.
9.2 This
Agreement may be executed in one or more counterparts, each of which will
be
deemed an original, and will become effective and binding upon the parties
as of
the execution date at such time as all the signatories hereto have signed
a
counterpart of this Agreement.
9.3 This
Agreement is the entire agreement between the parties with respect to its
subject matter, and it supersedes all other prior and contemporary agreements
and understandings, written or oral, between them with respect thereto. This
Agreement may be modified only by a written instrument signed by both
parties.
9.4 This
Agreement is binding on and will inure to the benefit of the respective
successors and permitted assigns of the parties.
9.5 All
rights and remedies available at law or in equity available to a party are
will
be considered to be cumulative and not limited by this Agreement.
9.6 All
notices to a party hereunder will be in writing and will be delivered
personally, by certified or registered mail (return receipt requested), or
by a
nationally recognized courier service with a tracking system to verify receipt.
Notices will be effective upon receipt and delivered to the addresses set
forth
below or to such other address as may be changed by notice.
-
7
-
|
Notices
to Rochester will be sent to:
|
Director,
Office of Technology Transfer
|
|
University
of Rochester
|
|
|
▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇▇▇
|
|
|
▇.▇.
▇▇▇ ▇▇▇▇▇▇
|
|
|
▇▇▇▇▇▇▇▇▇,
▇▇▇ ▇▇▇▇ ▇▇▇▇▇
|
|
|
Tel.:
▇▇▇.▇▇▇.▇▇▇▇
|
|
|
With
a copy to: ▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, Esq.
|
|
|
Office
of Counsel
|
|
|
University
of Rochester
|
|
|
Box
308
|
|
|
▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇
|
|
|
▇▇▇▇▇▇▇▇▇,
▇▇▇ ▇▇▇▇ ▇▇▇▇▇
|
|
|
Tel.:
▇▇▇.▇▇▇.▇▇▇▇
|
|
|
Notices
to VirtualScopics will be sent to:
|
Dr.
▇▇▇▇▇ ▇▇▇▇▇▇, President
|
|
VirtualScopics,
LLC
|
|
|
▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇
|
|
|
▇▇▇▇▇▇▇▇▇,
▇▇▇ ▇▇▇▇ ▇▇▇▇▇
|
|
|
Tel:
▇▇▇.▇▇▇.▇▇▇▇
|
In
witness whereof, the parties have executed and delivered this Agreement as
of
the Effective Date:
| UNIVERSITY OF ROCHESTER | VIRTUALSCOPICS, LLC | |||
| By: | /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ | By: | /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ | |
|
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ |
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ |
|||
| Its: | ▇▇▇▇▇▇▇ | Its: | COO | |
| Date: | April 5, 2002 | Date: | April 5, 2002 | |
-
8
-
Exhibit
1.6
-
Patents and Patent Applications
|
UR
tech.
ref.
|
Law
firm
ref.
|
Number
|
Title
|
Status
|
|
*765
|
000687.0025
|
6,169,817
(09/185,514)
|
System
and Method For 4D Reconstruction and Visualization
|
US
issued 01/02/2001
(filed
11/04/1999)
|
|
*765
|
000687.0123
|
PCT/US99/25704
WO
00/26852
|
System
and Method For 4D Reconstruction and Visualization
|
PCT
filed 11/03/1999
WIPO
published 05/11/2000
|
|
*765
|
000687.0176
|
99958737.1
|
System
and Method For 4D Reconstruction and Visualization
|
Europe
filed 11/03/1999
|
|
*765
|
000687.0173
|
7005694/01
|
System
and Method For 4D Reconstruction and Visualization
|
Korea
filed 05/04/2001
|
|
*765
|
000687.0174
|
580158/00
|
System
and Method For 4D Reconstruction and Visualization
|
Japan
filed 05/07/2001
|
|
*765
|
000687.0175
|
142972
|
System
and Method For 4D Reconstruction and Visualization
|
Israel
filed 05/04/2001
|
|
*765
|
000687.0177
|
2350017
|
System
and Method For 4D Reconstruction and Visualization
|
Canada
filed 05/04/2001
|
|
*765
|
000687.0178
|
16034/00
|
System
and Method For 4D Reconstruction and Visualization
|
Australia
filed 05/22/2001
|
|
*765-01
|
000687.0138
|
09/540,524
|
Magnetic
Resonance Imaging with Resolution and Contrast Enhancement
|
US
filed 03/31/2000
|
|
*765-01
|
000687.0168
|
PCT/US01/10308
WO
01/75483
|
Magnetic
Resonance Imaging with Resolution and Contrast Enhancement
|
PCT
filed 04/02/2001
|
|
*765-01
|
000687.0169
|
90107831
|
Magnetic
Resonance Imaging with Resolution and Contrast Enhancement
|
Taiwan
filed 05/28/2001 **
|
|
*985
|
000687.0180
|
09/908,492
|
System
and Method for Reducing or Eliminating Streak Artifacts and Illumination
Inhomogeneity in CT Imaging
|
US
filed 07/19/2001
|
|
*1047
|
000687.0183
|
60/306,166
|
System
and Method for Quantifying Tissue Structures and their Change over
Time
|
Provisional
filed 07/19/2001
|
|
*1047
|
000687.
0182
|
Not
yet filed
|
System
and Method for Quantifying Tissue Structures and their Change over
Time
|
Draft
application prepared, but not filed.
|
|
*1048
|
000687.0186
|
60/307,869
|
System
and Method for Quantitative Assessment of Joint Diseases and the
Change
over Time of Joint Diseases
|
Provisional
filed 07/27/2001
|
|
*1048
|
000687.
0198
|
Not
yet filed
|
System
and Method for Quantitative Assessment of Joint Diseases and the
Change
over Time of Joint Diseases
|
Draft
application prepared, but not filed.
|
|
*1059
|
000687.0191
|
60/316,965
|
System
and Method for Quantitative Assessment of Neurological Diseases
and the
Change over Time of Neurological Diseases
|
Provisional
filed 09/05/2001
|
|
*1059
|
000687.
0199
|
Not
yet filed
|
System
and Method for Quantitative Assessment of Neurological Diseases
and the
Change over Time of Neurological Diseases
|
Draft
application prepared, but not filed.
|
|
*1060
|
000687.0192
|
60/322,427
|
System
and Method for Quantitative Assessment of Cancers and their Change
over
Time
|
Provisional
filed 09/17/2001
|
|
*1060
|
000687.
0200
|
Not
yet filed
|
System
and Method for Quantitative Assessment of Cancers and their Change
over
Time
|
Draft
application prepared, but not
filed.
|
|
Notes:
|
University
of Rochester Technology Reference Number preface is 2-11144-
* in all
cases.
|
|
Law
firm reference number is that of the firm, Blank Rome ▇▇▇▇▇▇▇
&
▇▇▇▇▇▇▇▇, LLP, Washington, D.C.
|
|
|
**
With a change in Taiwanese law, a filing date of 04/02/2001 was
recently
accorded.
|
-
9
-
Exhibit
2.2
ASSIGNMENT
The
University of Rochester (“Assignor”),
an educational institution chartered by the State of New York with offices
at
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ is the owner of the United
States
and foreign Letters Patents and patent applications identified and set forth
on
Exhibit 1.6 attached hereto and incorporated herein and made a part hereof
(“Patents and Patent Applications”) and desires to assign its entire right,
title and interest in and to the Patents and Patent Applications to Assignee
(defined below).
VirtualScopics,
LLC, a for-profit New York limited liability company with offices at ▇▇▇
▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (“VirtualScopics”), desires to acquire all
right, title and interest in and to the Patents and Patent
Applications.
Therefore,
for good and valuable consideration, the receipt and sufficiency of which
is
hereby acknowledged, Assignor, intending to be legally bound, does hereby
sell,
assign, and transfer to VirtualScopics and its successors, legal
representatives, and assigns (collectively, “Assignee”) all right, title, and
interest throughout the world in and to the Patents and Patent Applications
and
all divisions, renewals, continuations, reissues and extensions thereof,
and all
Letters Patent of the United States and elsewhere which may be granted thereon,
and all rights of priority under International Conventions and applications
for
Letters Patent which may hereafter be filed on any of the foregoing in the
United States or elsewhere. Assignor hereby authorizes and requests the
Commissioner of Patents of the United States, and any Official of any country
or
countries foreign to the United States, whose duty it is to issue patents
on
applications, to issue all Letters Patent with respect to the Patents and
Patent
Applications to Assignee in accordance with the terms of this
instrument.
The
assignment herein is made pursuant to terms as set forth in that certain
Sale of
Intellectual Property Agreement of even date hereof.
At
Assignee’s expense, Assignor will (or will cause its representatives or agents
to) testify in any legal proceeding, sign all lawful papers, execute all
divisional, continuing and reissue applications, make all rightful oaths
and
generally do everything commercially reasonable to aid Assignee to obtain
and
enforce proper patent protection for the Patents and Patent Applications
in all
countries.
IN
WITNESS WHEREOF, Assignor’s duly authorized officer signed this instrument this
fifth day of April, 2002.
UNIVERSITY
OF ROCHESTER
By:
_______________________________
▇▇▇▇▇▇▇
▇. ▇▇▇▇▇▇
Title:
▇▇▇▇▇▇▇
-
10
-
Exhibit
2.3
DOMAIN
NAME ASSIGNMENT
This
Domain Name Assignment (“Agreement”) is effective as of April 5, 2002
(“Effective Date”), and is between the University of Rochester, an educational
institution chartered by the State of New York with offices at ▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (“Rochester”), and VirtualScopics, LLC, a
for-profit New York limited liability company with offices at ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇ (“VirtualScopics”).
In
connection with the Sale Of Intellectual Property Agreement between the parties
effective as of the Effective Date (“IP Agreement”), Rochester has sold and
VirtualScopics has purchased, the following domain names “▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇”
and “▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇” (the “Domain Names”), subject to the conditions of this
Agreement. Therefore, the parties agree as follows:
1. DOMAIN
NAME ASSIGNMENT.
1.1 Assignment
of Domain Name. For good and valuable consideration, Rochester hereby transfers
and assigns to VirtualScopics all of Rochester’s right, title and interest in
and to the two Domain Names, “▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇” and “▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇”, and
the registrations thereof. The transfer and the assignment will take effect
upon
execution of this Agreement and the IP Agreement.
1.2 Cooperation
in Transferring Domain Name. Rochester will cooperate with VirtualScopics
and
will follow VirtualScopics’ reasonable instructions to effect the transfer of
the Domain Names and their registrations in a timely manner. Specifically,
Rochester will complete, execute and transmit the necessary Network Solutions,
Inc. ("NSI") or such other entity Registrant Name Change Agreements and/or
to
correspond with NSI (or such other entity) to authorize transfer of the Domain
Names.
1.3 Warranty.
In addition to the representations and warranties made by Rochester in the
IP
Agreement with respect to the Domain Names, Rochester warrants and represents
that, to the best of its knowledge, it has unencumbered rights in the Domain
Names, that Rochester properly registered the Domain Names with NSI without
committing fraud or misrepresentation, that Rochester has the authority to
transfer the Domain Names, and that the Domain Names do not infringe the
rights
of any third party.
2. MISCELLANEOUS.
2.1 Choice
of
Law; Venue. This Agreement will be construed in accordance with the laws
of the
State of New York, without reference to its conflict of law provisions. All
actions or proceedings arising in connection with this Agreement will be
tried
and litigated exclusively in the courts located in Monroe County, New York.
The
parties consent to the exclusive personal jurisdiction of such venue, which
choice of venue is intended by the parties to be mandatory and not permissive
and to preclude the possibility of litigation between the parties arising
out of
this Agreement in any jurisdiction other than that specified in this Section.
Each party waives any right it may have to assert the doctrine of forum
non-conveniens or similar doctrine or to object to venue with respect to
any
proceeding brought in accordance with this Section.
2.2 Counterparts.
This Agreement may be executed in one or more counterparts, each of which
will
be deemed an original, and will become effective and binding upon the parties
as
of the execution date at such time as all the signatories hereto have signed
a
counterpart of this Agreement.
-
11
-
2.3 Entire
Agreement. This Agreement together with the IP Agreement contains the entire
agreement between the parties with respect to its subject matter, and it
supersedes all other prior and contemporary agreements and understandings,
written or oral, between them with respect thereto.
2.4 Successors
and Assigns. This Agreement is binding on and will inure to the benefit of
the
respective successors and assigns of the parties.
In
witness whereof, the parties have executed and delivered this Agreement as
of
the Effective Date:
| UNIVERSITY OF ROCHESTER | VIRTUALSCOPICS, LLC | |||
| By: | By: | |||
|
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ |
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ |
|||
| Its: | ▇▇▇▇▇▇▇ | Its: | COO | |
| Date: | April 5, 2002 | Date: | April 5, 2002 | |
-
12
-
Exhibit
4.7
Security
Agreement
need
-
13
-
Exhibit
4.8
THIS
WARRANT AND THE SECURITIES ISSUED UPON THE EXERCISE HEREOF HAVE BEEN OR WILL
BE
ACQUIRED FOR INVESTMENT AND HAVE NOT BEEN REGISTERED UNDER THE SECURITIES
ACT OF
1933, AS AMENDED (THE “ACT’). SUCH SECURITIES MAY NOT BE OFFERED OR SOLD OR
TRANSFERRED IN THE UNITED STATES OR TO U.S. PERSONS IN THE ABSENCE OF SUCH
REGISTRATION OR AN EXEMPTION THEREFROM UNDER THE ACT WHICH, EXCEPT IN THE
CASE
OF AN EXEMPTION PURSUANT TO RULE 144 UNDER THE ACT, IS CONFIRMED IN
A LEGAL
OPINION SATISFACTORY TO THE COMPANY. IN ADDITION, THESE SECURITIES ARE SUBJECT
TO RESTRICTIONS ON TRANSFER CONTAINED IN THE THEN CURRENT VIRTUALSCOPICS
OPERATING AGREEMENT (“OPERATING AGREEMENT”) A CURRENT COPY OF WHICH MAY BE
OBTAINED FROM THE COMPANY, THE ISSUER OF THESE SECURITIES.
Warrant
to Purchase
Common
Units of VirtualScopics, LLC
|
Issue
Date: April 5, 2002
|
Warrant
No. 2
|
This
Warrant to Purchase Common Units of VirtualScopics, LLC (“Warrant”)
certifies that, for value received the person named below (“Investor”),
is
entitled, upon the terms and subject to the conditions hereinafter set forth,
at
any time after April 5, 2002 (“Exercise
Date”)
and
prior to April 5, 2012 (“Termination
Date”)
to
subscribe for and purchase from VirtualScopics, LLC, a New York limited
liability company (“Company”),
375,000 Common Units (“Warrant
Units”);
provided, however, the Initial Exercise Date will accelerate to the date
of an
“Accelerating
Event”
defined
below. The purchase price per unit for the Warrant Units will equal $0.70
(“Exercise
Price”).
The
Exercise Price and the number of Common Units for which the Warrant is
exercisable will be subject to adjustment as provided herein. This Warrant
is
being issued in connection with the Sale of Intellectual Property Agreement
(“IP
Agreement”),
dated
as of April 5, 2002, between Company and Investor, and is subject to its
terms.
Capitalized terms not otherwise defined herein will have that meaning as
set
forth in the IP Agreement or in the Operating Agreement. If there is any
conflict between the terms of this Warrant and the IP Agreement, the IP
Agreement will control. For purposes of this Agreement, an Accelerating Event
will mean the date of a sale of all or substantially all of Company’s
assets.
1. Title
of Warrant.
This
Warrant will be issued in the name of Investor. Investor may transfer or
assign
this Warrant to any corporation or other legal entity of which Rochester
is the
sole shareholder or sole member.
2. Authorization
of Common Units.
Company
covenants that all Common Units which may be issued upon the exercise of
rights
represented by this Warrant will, upon exercise of the rights represented
by
this Warrant and payment of the Exercise Price, be duly authorized, validly
issued, fully paid and non-assessable and free from all taxes, liens and
charges
in respect of the issue thereof (other than taxes in respect of any transfer
occurring contemporaneously with such issue).
3. Exercise
of Warrant.
Exercise of the purchase rights represented by this Warrant may be made at
any
time or times after the Issue Date, in whole or in part, before the close
of
business on the Termination Date, or such earlier date on which this Warrant
may
terminate as provided in Section 9 below, by the surrender of this
Warrant
and the Notice of Exercise annexed hereto as Exhibit A duly executed, at
the
office of Company (or such other office or agency of Company as it may designate
by notice in writing to Investor at the address of Investor appearing on
the
books of Company), upon payment of the Exercise Price for the Warrant Units
thereby purchased and the execution of joinder agreements, if necessary,
satisfactory to Company for Investor to become a party to the Operating
Agreement and the Agreement with respect to the Warrant Units being acquired
unless Investor is already a party to such agreements; whereupon Investor
will
be entitled to receive a certificate and/or have its ownership of the Warrant
Units being acquired recorded in Company’s member ledger as set forth under
Section 6 below. Payment of the Exercise Price may be paid by Acceptable
Currency to an account designated by Company in an amount equal to the Exercise
Price multiplied by the number of Warrant Units being purchased.
-
14
-
4. Expenses.
Issuance of certificates for Common Units upon the exercise of this Warrant
will
be made without charge to Investor for any incidental expense in respect
of the
issuance of such certificate, all of which will be paid by Company, and such
certificates will be issued in the name of Investor.
5. Restrictions
on Transfer of Warrant Units.
(a) Warrant
Units may not be sold, transferred, pledged, hypothecated or otherwise disposed
of except in accordance with applicable federal and state securities laws
and,
if applicable, the terms and conditions of the IP Agreement and the Operating
Agreement.
(b) Unless
the Warrant Units have been registered under the Act, or are exempt from
registration, upon exercise of the Warrant or any portion thereof and the
issuance of any Warrant Units, all certificates representing Warrant Units,
if
any are issued, will bear on the face thereof substantially the following
legend:
THESE
SECURITIES HAVE BEEN ACQUIRED FOR INVESTMENT AND HAVE NOT BEEN REGISTERED
UNDER
THE SECURITIES ACT OF 1933, AS AMENDED (THE “ACT”).
SUCH
SECURITIES MAY NOT BE OFFERED OR SOLD OR TRANSFERRED IN THE UNITED STATES
OR TO
U.S. PERSONS IN THE ABSENCE OF SUCH REGISTRATION OR AN EXEMPTION THEREFROM
UNDER
THE ACT WHICH, EXCEPT IN THE CASE OF AN EXEMPTION PURSUANT TO RULE 144
UNDER THE ACT, IS CONFIRMED IN A LEGAL OPINION SATISFACTORY TO THE COMPANY.
IN
ADDITION, THESE SECURITIES ARE SUBJECT TO RESTRICTIONS ON TRANSFER AND OTHER
RESTRICTIONS CONTAINED IN THE THEN CURRENT VIRTUALSCOPICS, LLC OPERATING
AGREEMENT AND THE IP AGREEMENT, WHICH MAY BE OBTAINED FROM THE ISSUER OF
THESE
SECURITIES.
Investor
agrees and acknowledges that this Warrant is being purchased for its own
account, for investment purposes only, and not for the account of any other
person, and not with a view to distribution, assignment, pledge or resale
to
others or to fractionalization in whole or in part. Investor further represents,
warrants and agrees as follows: no other person has or will have a direct
or
indirect beneficial interest in this Warrant and Investor will not sell,
hypothecate or otherwise transfer the Warrant except in accordance with the
Act
and applicable state securities laws or unless, in the opinion of counsel
for
Investor acceptable to Company, an exemption from the registration requirements
of the Act and such laws is available and except in accordance with the
Operating Agreement.
6. No
Rights as Member Under This Warrant until Exercise.
This
Warrant does not entitle Investor to any rights to allocations or profits
or
losses, distributions or to vote or other rights as a member of Company prior
to
the due exercise thereof. If, however, at the time of the surrender of this
Warrant and purchase of Warrant Units Investor will be entitled to exercise
this
Warrant, the Common Units so purchased will be and be deemed to be issued
to
Investor as the record owner of such Units as of the close of business on
the
date on which this Warrant will have been exercised.
-
15
-
7. Loss,
Theft, Destruction or Mutilation of Warrant.
Company
represents and warrants that upon receipt by Company of evidence reasonably
satisfactory to it of the loss, theft, destruction or mutilation of any Warrant,
and in case of loss, theft or destruction, of indemnity or security reasonably
satisfactory to it, and upon reimbursement to Company of all reasonable expenses
incidental thereto, and upon surrender and cancellation of such Warrant,
if
mutilated, Company will make and deliver a new Warrant of like tenor and
dated
as of such cancellation, in lieu of this Warrant.
8. Saturdays,
Sundays, Holidays, etc.
If the
last or appointed day for the taking of any action or the expiration of any
right required or granted herein is a Saturday, Sunday or a legal holiday,
then
such action may be taken or such right may be exercised on the next succeeding
day not a Saturday, Sunday or legal holiday.
9. Effect
of Certain Events.
(a) If
at any
time Company proposes to sell or otherwise convey all or substantially all
of
its assets, a sale in which the consideration to be received by Company or
its
members consists solely of cash, Company will give Investor thirty (30) days’
notice of the proposed effective date of the transaction specifying that
the
Warrant will terminate if the Warrant has not been exercised by the effective
date of the transaction. If Investor exercises its option under this section,
the option will be net exercisable.
(b) If
Company will at any time effect any merger, consolidation, exchange of Units,
recapitalization, reorganization, or other similar event, as a result of
which
Common Units will be changed into the same or a different number of Units
of the
same or another class or classes of Units or securities of Company or another
entity, or other property, Investor will have the right thereafter to purchase,
by exercise of this Warrant and payment of the aggregate Exercise Price for
the
Warrant Units being purchased, the kind and amount of securities and property
which it would have owned or have been entitled to receive after the happening
of such transaction had this Warrant been exercised immediately prior
thereto.
10. Adjustments
of Exercise Price and Number of Warrant Units.
The
number and kind of securities purchasable upon the exercise of this Warrant
and
the Exercise Price will be subject to adjustment from time to time if Company
(i) declares or pays a dividend in Units or makes a distribution in
Units
to holders of its outstanding Common Units, (ii) subdivides its outstanding
Common Units, (iii) combines its outstanding Common Units into a smaller
number of Common Units or (iv) issues any Common Units in a
reclassification of Units. In such event, the number of Common Units purchasable
upon exercise of this Warrant immediately prior thereto and the corresponding
Exercise Price will be equitably and proportionately adjusted so that Investor
will be entitled to receive the kind and number of Units or other securities
of
Company which it would have owned or had been entitled to receive at an
equitably and proportionately adjusted Exercise Price had such Warrant been
exercised immediately prior to such event, as determined in good faith by
Company’s Board of Directors. An adjustment made pursuant to this
Section 10 will become effective immediately after the effective date
of
such event retroactive to the record date, if any, for such event.
11 Voluntary
Adjustment by Company.
Company
may at its sole discretion, at any time during the term of this, Warrant,
reduce
the then current Exercise Price to any amount and for any period of time
deemed
appropriate by Company’s Board of Directors.
-
16
-
12. Notice
of Adjustment.
Whenever the number of Warrant Units or number or kind of securities or other
property purchasable upon the exercise of this Warrant or the Exercise Price
is
adjusted, as herein provided, Company will promptly mail to Investor by
registered or certified mail, return receipt requested, notice of such
adjustment or adjustments setting forth the number of Warrant Units (and
other
securities or property) purchasable upon the exercise of this Warrant and
the
Exercise Price of such Warrant Units after such adjustment, setting forth
a
brief statement of the facts requiring such adjustment and setting forth
computation by which such adjustment was made. Such notice, in absence of
manifest error, will be conclusive evidence of the correctness of such
adjustment.
13. Miscellaneous.
(a) Issue
Date; Jurisdiction.
The
provisions of this Warrant will be construed and will be given effect in
all
respects as if it had been issued and delivered by Company on the date hereof.
This Warrant will be binding upon any successors or assigns of the parties
hereto. This Warrant will constitute a contract under the laws and jurisdiction
of New York and for all purposes will be construed in accordance with and
governed by the laws of such State without regard to its conflict of laws
principles or rules.
(b) Restrictions.
Investor acknowledges that the Common Units acquired upon the exercise of
this
Warrant, if not registered, may have restrictions upon their resale imposed
by
state and federal securities laws and under the Operating
Agreement.
(c) Modification
and Waiver.
This
Warrant and any provisions hereof may be changed, waived, discharged or
terminated only by an instrument in writing signed by the party against which
enforcement of the same is sought.
(d) Notices.
Any
notice, request or other document required or permitted to be given or delivered
to Investor or Company will be delivered or sent by certified or registered
mail, postage prepaid, to Investor at its address as shown on the books of
Company or to Company at the address set forth in the IP Agreement.
(e) Investor’s
Representations, Warranties and Covenants.
All of
the representations, warranties and covenants made by Investor in the Agreement
are incorporated herein and made a part hereof and are restated upon exercise
of
the Warrant.
(f) Execution
of Operating Agreement.
As a
condition of exercising the Warrant and receiving Common Units, Investor
(or
Investor’s permitted assignee) shall execute the then current VirtualScopics
Operating Agreement if requested to do so by Company.
IN
WITNESS WHEREOF, Company
has caused this Warrant to be executed by its officers thereunto duly
authorized.
| Dated as of: April 5, 2002 | VirtualScopics, LLC | |
| |
|
|
| By: | ||
|
Name: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ |
||
| Title: Chief Operating Officer | ||
INVESTOR:
-
17
-
Exhibit
A
NOTICE
OF EXERCISE
To: VirtualScopics,
LLC
(1) The
undersigned hereby elects to purchase _____________ Common Units of
VirtualScopics, LLC, a New York limited liability company (“Company”),
pursuant to the terms of the attached Warrant, and tenders herewith payment
of
the purchase price in full as set forth in the Warrant and in the
Agreement.
(2) Please
issue a certificate or certificates representing the Common Units (if Company
has issued certificates to any other holders of Common Units) in the name
of the
undersigned or if no certificates are issued, please indicate on Company’s
member ledger that the undersigned is the holder of such Common
Units.
By:______________________________
Name:____________________________
Dated:____________________________
NOTE:
Signature must conform in all respects to holder’s name as specified on the face
of the attached Warrant.
-
18
-
FIRST
AMENDMENT TO THE
THIS
FIRST AMENDMENT is
made
this 24 day of May, 2002, between VIRTUALSCOPICS,
LLC
("VirtualScopics")
with a
principal office located at ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
and
UNIVERSITY
OF ROCHESTER
("Rochester")
with a
principal office located at ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇.▇. ▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇
▇▇▇▇ ▇▇▇▇▇.
RECITALS:
A. On
April
5, 2002, Rochester and VirtualScopics executed and delivered a certain Sale
of
Intellectual Property Agreement ("IP
Agreement").
All
capitalized terms used but not defined in this Amendment shall have the meanings
ascribed to them in the IP Agreement.
B. Pursuant
to Section 2 of the IP Agreement, Rochester has agreed to sell all of its
right,
title and interest in the IP (as defined in the IP Agreement) to VirtualScopics
free of all liens and encumbrances.
C. Pursuant
to Section 4 of the IP Agreement and in consideration for the transfer of
the
IP, VirtualScopics is required to pay Rochester $1,500,000 (the "Preferred
Amount")
and to
deliver Rochester warrants to purchase VirtualScopics' Membership Units (as
more
particularly defined in the IP Agreement).
D. To
secure
payment of the Preferred Amount only, Section 4.7 of the IP Agreement provides
that: "VirtualScopics will grant Rochester a security interest, substantially
in
the form of the Security Agreement that shall be attached to this Agreement
as
Exhibit 4.7, within fourteen (14) calendar days of execution of this Agreement,
in the Patent Rights for the payment of the Preferred Amount. Upon payment
of
the Preferred Amount, Rochester's security interest shall terminate."
E. Pursuant
to Section 8 of the IP Purchase Agreement, upon the occurrence of a default
by
VirtualScopics including payment defaults of the Preferred Amount, Rochester
will have the right to terminate this Agreement and foreclose on its security
interest in the IP pursuant to the Security Agreement.
F. As
a
result of VirtualScopics' intention to pay the Preferred Amount upon
consummation of the Pfizer Transaction, the parties desire to amend the IP
Agreement to more accurately reflect the purchase and sale of the IP pursuant
thereto.
PROVISIONS:
NOW,
THEREFORE,
in
consideration of the mutual promises set forth herein, the parties agree
as
follows:
-
19
-
1. Amendment
to the IP Agreement.
(a) Section
2.4 shall be revised to remove Section 2.4(b) and the last sentence of Section
2.4 from the IP Agreement in its entirety.
(b) Section
2.6 shall be revised to remove Section 2.6(d) from the IP Agreement in its
entirety.
(c) Sections
4.1(a), (b), and (c) shall be deleted in their entirety and a new Section
4.1
shall be added as follows:
"4.1
VirtualScopics shall pay Rochester $1,500,000 concurrently with the occurrence
of the Pfizer Transaction."
(d) Section
4
shall be revised to remove Sections 4.2, 4.3, 4.4, 4.5, 4.6, and 4.7 from
the IP
Agreement in their entirety.
(e) Exhibit
4.7 is removed from the IP Agreement in its entirety.
(f) Section
4.8 shall be renumbered to Section 4.2 and Exhibit 4.8 shall be renumbered
to
Exhibit 4.2.
(g) Section
8
shall be revised in its entirety to read as follows:
"8.1 If
VirtualScopics defaults in any obligation hereunder, Rochester will have
the
right to pursue any and all remedies available to it in law and in
equity."
(h) Section
8.2 shall be removed from the IP Agreement in its entirety.
2. Satisfaction
of Conditions.
The
parties agree that upon execution and delivery of this Agreement and the
payment
of the amount due pursuant to revised Section 4.1 of the IP Agreement,
VirtualScopics will have satisfied all conditions precedent set forth in
Sections 2.4, 2.5 and 2.6 of the IP Agreement.
3. No
Other Changes.
Except
as amended hereby and to the extent the dates for satisfaction of the
contingencies set forth in Section 2.4 of the IP Agreement were extended
by
letters executed by Rochester on April 19, 2002 and May 2, 2002, the terms
and
conditions of the IP Agreement shall remain in full force and effect as agreed
to on the 5th
day of
April, 2002.
IN
WITNESS WHEREOF,
the
parties have executed and delivered this Agreement as of the date first above
written.
| VIRTUALSCOPICS, LLC | ||
| |
|
|
| By: | /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ | |
|
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ |
||
| Its: Chief Operating Officer | ||
| UNIVERSITY OF ROCHESTER | ||
| |
|
|
| By: | /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ | |
|
|
||
| Its: Chief Operating Officer | ||
-
20
-