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EXHIBIT 10.2
AMENDED AND RESTATED PATENT AND TECHNOLOGY
ASSIGNMENT AGREEMENT
THE PATENT AND TECHNOLOGY ASSIGNMENT AGREEMENT, dated as of April 3,
1992, as amended by that certain letter agreement dated November 16, 1994, and
amended and restated as effective this 16th day of June, 2000 (the "RESTATEMENT
EFFECTIVE DATE"), is made by and between Sunrise Technologies International,
Inc., f/k/a Laser Biotech, Inc., a Delaware corporation, having its principal
place of business at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
(hereinafter, "SUNRISE") and ▇▇▇▇▇ ▇. Sand, M.D., F.A.C.S. of ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter, "DR. SAND").
W I T N E S S E T H :
WHEREAS, Sunrise and Dr. Sand are parties to a Patent and Technology Assignment
Agreement dated as of April 3, 1992, as amended by that certain letter agreement
dated November 16, 1994 (and together with all other agreements whether oral or
written between the parties existing prior to the date hereof, the "ORIGINAL
ASSIGNMENT AGREEMENT");
WHEREAS, the parties hereto wish to amend and restate the Original Assignment
Agreement in the form of this Amended and Restated Patent and Technology
Assignment Agreement (the "AMENDED AND RESTATED PATENT AND TECHNOLOGY ASSIGNMENT
AGREEMENT");
WHEREAS, this Amended and Restated Patent and Technology Assignment Agreement is
given in amendment to, restatement of and substitution for the Original
Assignment Agreement;
WHEREAS, the parties to this Amended and Restated Patent and Technology
Assignment Agreement shall simultaneously enter into that certain Royalty
Acceleration Agreement dated June 16, 2000 (the "ROYALTY ACCELERATION
AGREEMENT") whereby Sunrise and Dr. Sand agree to amend and alter all prior
arrangements between the parties regarding Dr. Sand's royalty rights under the
Original Assignment Agreement by hereby liquidating and terminating Dr. Sand's
rights to such royalties under the Original Assignment Agreement in exchange for
warrants of common stock in Sunrise Technologies International, Inc. to the
mutual benefit of the parties; and
NOW THEREFORE, in consideration of the foregoing and the mutual covenants
contained herein, the parties hereto agree that the Original Assignment
Agreement shall be and is hereby amended and restated in its entirety as
follows:
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ARTICLE 1
DEFINITIONS
1.1 "Affiliates" means any corporations or other entities that control, are
controlled by, or are under common control with a particular entity.
"Control" means the ownership directly or indirectly of fifty percent
(50%) or more of the shares entitled to vote for the election of
directors (or other managing authority) of the subject entity, so long
as that control exists.
1.2 "Combination Products" means products that comprise (i) a Product, and
(ii) at least one other product or component that is sold together with
the Product as a single unit.
1.3 "Products" means a laser device for the shrinking of collagen tissue,
comprising: (i) a laser source (including power supply); and (ii) a
device through which the laser beam is delivered to the collagen tissue;
if Sunrise's manufacture or sale of such device would directly or
contributorily infringe or induce infringement of a Valid Claim in the
country for which the device is made or in which the device is sold.
1.4 "Patent Rights" means all worldwide rights of Dr. Sand to any subject
matter described, claimed or covered by any of the patents or patent
applications listed in Exhibit A, including any foreign counterparts,
continuations, continuations-in-part, divisions, and reissues, and
extensions of any of the foregoing.
1.5 "Related Technology" means all ideas, know-how, trade secrets, data,
inventions, discoveries and any other proprietary rights (excluding the
Patent Rights) related to the Patent Rights developed in whole or in
part by Dr. Sand prior to or during the term of this Agreement.
1.6 "Valid Claim" means a claim of an issued and unexpired patent included
within the Patent Rights that has not been held unenforceable,
unpatentable or invalid by a decision of a court or governmental agency
of competent jurisdiction, and that has not been admitted to be invalid
or unenforceable through reissue, disclaimer or otherwise.
ARTICLE 2
ASSIGNMENT
2.1 Assignment. Dr. Sand hereby irrevocably assigns exclusively to Sunrise
all worldwide rights in and to the Patent Rights and Related Technology,
including, without limitation, all of the patents or patent applications
listed in Exhibit A, and all foreign counterparts, continuations,
continuations-in-part, divisions, and reissues and extensions of any of
the foregoing and the exclusive right to exclude
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others from making, using and selling any products, and to practice any
process, procedure or method covered by and otherwise exploit the Patent
Rights and Related Technology and the exclusive right to maintain and
defend actions with respect to all of the foregoing.
2.2 Delivery of Technical Information. Promptly after signing this Agreement
and continuously during the term hereof, Dr. Sand shall convey to
Sunrise all data, documentation and other physical embodiments of the
Related Technology required by Sunrise for its complete understanding
and effective use of the Related Technology.
ARTICLE 3
PAYMENT
3.1 Subject to the terms of the Royalty Acceleration Agreement, Sunrise and
Dr. Sand hereby agree to terminate the payment of all royalties to Dr.
Sand on sales of Products and Combination Products as provided for in
the Original Assignment Agreement in exchange for a warrant (the
"Warrant") to purchase 750,000 shares of common stock of Sunrise at an
exercise price of $.01 per share, which shall be substantially in the
form of Exhibit B attached hereto. Dr. Sand shall assign the patent
titled "Prevention of Regression in Refractive Keratoplasty" application
#09\550,579. On the date hereof, Sunrise shall no longer make royalty
payments to Dr. Sand, and no royalties shall be paid to Dr. Sand under
any agreement or arrangement with Sunrise.
3.2 Subject to the terms of the Royalty Acceleration Agreement, Dr. Sand
hereby agrees (i) to accept the Warrant in exchange for the termination
of all of his royalty rights on the sales of Products and Combination
Products as provided for in the Original Assignment Agreement and (ii)
to assign to Sunrise free of all liens and claims all the patents and
technologies contemplated in the Amended and Restated Patent and
Technology Assignment Agreement as more specifically described in
Exhibit A hereto as well as assign the patent titled "Prevention of
Regression in Refractive Keratoplasty" application #09\550,579.
ARTICLE 4
TERM AND TERMINATION
4.1 Unless sooner terminated pursuant to this Article 4, this Agreement
shall commence upon the Restatement Effective Date and shall
automatically expire upon the later of (a) the expiration of the
last-to-expire patent within the Patent Rights, or (b) the abandonment
of the last application within the Patent Rights.
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All of the provisions of this Agreement shall survive expiration of this
Agreement except Article 7, which shall terminate.
4.2 Termination for Breach. Either party shall have the right to terminate
this Agreement by written notice if the other party materially breaches
this Agreement and has failed to cure such breach within sixty (60) days
of receipt of written notice from the nonbreaching party describing such
default and its intention to terminate this Agreement.
4.3 General. Upon the expiration or termination of this Agreement for any
reason, nothing herein shall be construed to release either party from
any obligation that matured prior to the effective date of such
termination.
ARTICLE 5
CONFIDENTIALITY
5.1 Obligations of Dr. Sand. All scientific and technical information known
or possessed by Dr. Sand concerning the Patent Rights or the Related
Technology shall be deemed "Confidential Information." Dr. Sand shall
not disclose or provide any such Confidential Information to any third
party without the other party's prior written consent.
5.2 Obligations of Sunrise. Sunrise shall protect the Confidential
Information in a manner consistent with Sunrise's protection of its
other confidential information.
ARTICLE 6
REPRESENTATIONS AND WARRANTIES
6.1 By Dr. Sand. Dr. Sand represents and warrants to Sunrise that:
(A) Dr. Sand is the sole owner of the Patent Rights and, to the best
of his knowledge, of the Related Technology, and has the full
right and authority to enter into this Agreement and grant the
licenses granted herein;
(B) Dr. Sand has not previously granted and will not grant during
the term of this Agreement any rights in the Patent Rights or
Related Technology (except for the grant included in the
Original Assignment Agreement and the Restated Agreement, both
of which are superseded by this Agreement and have no further
force or effect);
(C) Dr. Sand is not aware of any claims that would invalidate any
patent(s) or patent applications listed in Exhibit A;
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(D) Exhibit A includes all patents and patent applications owned by
Dr. Sand, or claiming inventions made in whole or in part by Dr.
Sand, prior to the Effective Date. Dr. Sand owns no rights, and
to the best of his knowledge, no other person or entity owns any
rights in any patent or patent application the claims of which
would dominate the claims of a patent or application within the
Patent Rights or necessarily be infringed by Sunrise's
manufacturing, sale or use of the Products; and
(E) This Agreement constitutes Dr. Sand's legal, valid and binding
agreement. Dr. Sand's execution, delivery and performance of
this Agreement will not constitute a violation or breach of any
agreement or contract to which Dr. Sand is a party or by which
Dr. Sand is bound, or the terms of any judicial or
administrative decree to which Dr. Sand is subject.
6.2 By Sunrise. Sunrise represents and warrants to Dr. Sand that:
(A) Sunrise's Board of Directors has approved Sunrise's entering
into and performing this Agreement; and
(B) This Agreement constitutes Sunrise's legal, valid and binding
agreement. Sunrise's execution, delivery and performance of this
Agreement will not constitute a violation or breach of any
agreement or contract to which Sunrise is a party or by which
Sunrise is bound, or the terms of any judicial or administrative
decree to which the Sunrise is subject.
ARTICLE 7
PROCESS DESIGNATION
Sunrise and Dr. Sand agree to designate as "the Sand Process" the method
of shrinking collagen comprising the step of irradiating tissue with energy
having a wavelength in the range of about 1.80 to 2.55 microns to permit that
dissemination so as to create public association of the designation with the
method in and, wherever reasonably possible to promote that designation so as to
create public association of the designation with the method. In particular,
Sunrise agrees to identify the "Sand Process" in all Sunrise financial or
earnings public releases, all Sunrise press releases, all sales materials used
to solicit customers, including, but not limited to, videos, CD's, and websites,
and on all exhibit booths at trade shows.
ARTICLE 8
PATENT PROSECUTION AND MAINTENANCE
Sunrise shall have the right, at its expense and in its sole discretion
to maintain and apply for, seek prompt issuance of, and maintain any patents
within the Patent
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Rights. Sunrise shall keep Dr. Sand reasonably informed of all material
developments in connection with the prosecution and maintenance of the Patent
Rights.
ARTICLE 9
INFRINGEMENT
9.1 Notification. Sunrise and Dr. Sand shall promptly inform the other in
writing of any alleged infringement of which it shall have notice by a
third party of any patents within the Patent Rights and provide the
other party with any available evidence of infringement.
9.2 Enforcement. Sunrise shall have the exclusive right, but shall not be
obligated, to prosecute at its own expense, any such infringements of
the Patent Rights and/or Related Technology and, in furtherance of such
right, Dr. Sand hereby agrees that during the term of this Agreement,
Sunrise may join Dr. Sand as a party plaintiff in any such suit or
proceeding, without expense to Dr. Sand. The total cost of any such
infringement action commenced by Sunrise shall be borne by Sunrise.
9.3 Infringement of Others' Rights. If Sunrise receives a claim by a third
party that practice of the Patent Rights or Related Technology by
Sunrise infringes proprietary rights of any third party, Sunrise shall
defend any action or proceeding against Dr. Sand and may, at its option,
defend any action or proceeding against Sunrise with respect to such
claim. Dr. Sand shall give Sunrise prompt notice of the commencement of
any such action or proceeding or of any claim of infringement, shall
furnish to Sunrise a copy of each communication relating to the alleged
infringement and shall give Sunrise all authority, including the right
to exclusive control of the defense and settlement of any such action or
proceeding, and shall render all information and assistance necessary to
such defense or settlement.
Sunrise shall pay any expenses, including attorney's fees, incurred by
either party in connection with any such action or proceeding, any
damages and costs finally awarded against the infringing party and the
amount of any settlement approved by Sunrise with respect to any such
action or proceeding.
9.4 Cooperation. In any infringement suit Sunrise may institute to enforce
or defend the Patent Rights and Related Technology pursuant to this
Agreement, Dr. Sand shall, at the request of Sunrise, cooperate in all
respects and, shall testify when requested and make available relevant
records, papers and information.
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ARTICLE 10
ASSIGNMENT
Dr. Sand agrees that his rights and obligations under this Agreement may
not be assigned without the prior written consent of Sunrise. Dr. Sand may
assign his right to receive Warrants under this Agreement provided he gives
written notice of the assignment to Sunrise. Sunrise may assign or otherwise
transfer this Agreement and the rights granted hereunder (i) to any entity to
which Sunrise has assigned, sold, leased, transferred or otherwise disposed of
all or substantially all of the assets of Sunrise; or (ii) to any successor
corporation resulting from any merger or consolidation of Sunrise with or into
another corporation; or (iii) to one of its Affiliates, provided that any
permitted assignee or transferee shall agree in writing to comply with all the
terms and conditions applicable to Sunrise under this Agreement.
ARTICLE 11
NOTICE
11.1 Notices. Any notice, request, demand or other communication by the terms
hereof required or permitted to be given by one party to another shall
be given in writing by registered mail, postage prepaid, addressed to
such other party or delivered to such other party as follows:
Sunrise: Sunrise Technologies International, Inc.
▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇ ▇▇▇▇▇▇▇▇
Senior VP, COO
Phone ▇▇▇.▇▇▇.▇▇▇▇
Fax ▇▇▇.▇▇▇.▇▇▇▇ (fax)
e-Mail ▇▇▇▇▇▇▇▇▇@▇▇▇▇▇▇▇-▇▇▇▇.▇▇▇
with copy to: Duane, Morris & Heckscher LLP
▇▇▇ ▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇ ▇▇▇▇▇, Esq.
e-Mail ▇▇▇▇▇▇▇@▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
Dr. Sand: ▇▇▇▇▇ ▇. Sand, M.D., F.A.C.S.
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇ ▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Phone ▇▇▇.▇▇▇.▇▇▇▇
Fax ▇▇▇.▇▇▇.▇▇▇▇
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with copy to: ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇.
King & ▇▇▇▇▇▇▇▇ LLP
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Phone ▇▇▇.▇▇▇.▇▇▇▇
Fax ▇▇▇.▇▇▇.▇▇▇▇
E-Mail ▇▇▇▇▇▇@▇▇▇▇▇▇▇▇▇▇▇▇▇▇▇.▇▇▇
or at such other address as may be given by any one of the parties. Any notice
required or permitted under this Agreement shall be in writing and shall be
deemed to be given upon the date of personal delivery or within three (3) days
of being mailed anywhere in the continental United States as registered mail
postage prepaid and addressed to the addressee at his last address recorded on
the records of Sunrise. Provided however, that during any postal interruption,
the said three (3) day period shall not be deemed to commence running until
after the termination of such postal interruption.
ARTICLE 12
MISCELLANEOUS PROVISIONS
12.1 Governing Law. This Agreement shall be construed, governed, interpreted
and applied in accordance with the laws of the State of California as if
executed and fully performed within California, 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.
12.2 Jurisdiction, Venue. All disputes arising out of this Agreement shall be
subject to binding arbitration in accordance with the Commercial
Arbitration Rules of the American Arbitration Association. The exclusive
venue of the arbitration shall be in Santa ▇▇▇▇▇ County, California and
the parties consent to the personal and exclusive jurisdiction and venue
of such arbitration. A judgment may be entered upon any arbitration
award by a court of competent jurisdiction.
12.3 Marketing. Sunrise intends to use commercially reasonable efforts to
bring one or more Products to market and to meet the market demand
therefor. However, nothing in this Agreement shall be deemed to require
Sunrise to exploit the Patent Rights or the Related Technology nor
prevent Sunrise from commercializing products similar to or competitive
with Products, in addition to or in lieu of the Products.
12.4 Entire Agreement. The parties hereto acknowledge that this Amended and
Restated Patent and Technology Agreement, along with the Consultant
Agreement, the Non-Disclosure Agreement, and the Royalty Acceleration
Agreement, all of which are dated the date hereof, set forth the entire
agreement
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and understanding of the parties hereto as to the subject matter hereof,
and shall not be subject to any change or modification except by the
execution of a written instrument subscribed to by the parties hereto.
Without limiting the foregoing, it is understood that the Original
Assignment Agreement and all other agreements whether oral or written
between the parties existing on the Restatement Effective Date are
superseded by this Amended and Restated Patent and Technology Agreement
and shall have no further force or effect whatsoever.
12.5 Severability. The provisions of this Agreement are severable, and in the
event that any provisions of this Agreement are determined to be invalid
or unenforceable under any controlling body of law, such invalidity or
enforceability shall not in any way affect the validity or
enforceability of the remaining provisions hereof.
12.6 No Waiver. The failure 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 subsequent
failure to perform any such term or condition by the other party.
12.7 LIMITATION OF LIABILITY. EXCEPT FOR DAMAGES FROM BREACH OF ARTICLE 5,
NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR ANY SPECIAL,
INDIRECT, CONSEQUENTIAL OR INCIDENTAL DAMAGES ARISING OUT OF THIS
AGREEMENT.
12.8 Product Liability. Sunrise shall defend, indemnify and hold Dr. Sand
harmless from and against all claims and expenses, including reasonable
attorneys' fees, arising out of the death of or bodily injury to any
person or persons or out of any damage to property resulting from
Sunrise's production, manufacture, sale, use or lease of the Products;
provided that (i) Dr. Sand provides to Sunrise prompt notice of any such
claim or expense, (ii) Sunrise shall not be obligated to indemnify Dr.
Sand for any claim or expense in connection with any settlement unless
Sunrise consents in writing to such settlement, and (iii) Sunrise shall
have the exclusive right to defend any such claim.
12.9 No Partnership or Agency. Nothing in this Agreement shall constitute or
be deemed to constitute a partnership or agency between the parties
hereto.
12.10 Release of Claims. Except as otherwise set forth in this Amended and
Restated Patent and Technology Assignment Agreement, Dr. Sand hereby
releases, acquits and forever discharges Sunrise, its officers,
directors, agents, attorneys, servants, employees, shareholders,
successors, assigns and affiliates, of and from any and all claims,
liabilities, demands, causes of action, costs, expenses, attorney's
fees, damages, indemnities and obligations of every kind and nature, in
law, equity or otherwise, known and unknown, suspected and unsuspected,
disclosed and undisclosed, arising out of or in any way related to the
following: all negotiations, understandings, agreements, oral and
written, relating to (i) the
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acquisition of Laser Biotech Inc., (ii) all royalty and payment
agreements involving Dr. Sand, Laser Biotech Inc., and/or Sunrise, (iii)
any and all claims of mismanagement or improper conduct that in any way
relates to the foregoing or relates to or arises out of the claims set
forth in the Arbitration Demand, the Consultant Agreement and the
Original Assignment Agreement. Notwithstanding the foregoing, nothing in
this Agreement shall constitute a waiver of Dr. Sand's rights arising
under the indemnification provisions provided herein.
12.11 Section 1542 Waiver. Dr. Sand acknowledges that he has read and
understands Section 1542 of the Civil Code of the State of California
which reads as follows:
A general release does not extend to claims which the creditor
does not know or suspect to exist in his favor at the time of
executing the release, which if known by him must have
materially affected his settlement with the debtor.
Dr. Sand hereby expressly waives and relinquishes all rights and benefits under
that section and any law or legal principle of similar effect in any
jurisdiction with respect to the release granted herein.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first above written.
SUNRISE TECHNOLOGIES ▇▇▇▇▇ ▇. SAND, M.D.
INTERNATIONAL, INC.,
F/K/A LASER BIOTECH, INC.
By: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇. SAND, M.D.
---------------------------- ----------------------------
▇▇▇▇▇ ▇. Sand, M.D.
Name: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
--------------------------
Title: C.O.O.
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EXHIBIT A
LIST OF PATENTS AND TECHNOLOGIES
Grant/
Patent No. Country Issue/Date Title
---------- ------- ---------- -----
#4,979,709 USA 6/30/89 "Method for Collagen Shrinkage"
#5,137,530 USA 6/29/90 " " "
#5,304,169 USA 8/17/92 "Method and Apparatus for Collagen Shrinkage"
#5,374,265 USA 8/6/92 " " "
#5,484,432 USA 1/16/96 " " "
#5,591,157 USA 1/7/97 " " "
#5,618,284 USA 4/8/97 " " "
EPO #0480995 International 10/19/94 " " "
(see attachments)
#60/145,069 USA July 20, 1999 "Antifibrotic Therapy in Ocular Pathology"
#60/161,147 USA Oct. 22, 1999 "Remedial Cross-linking to Restore Lamellar
Stability Following Thermal Refractive Keratoplasty"
#60/152,773 USA Sept. 3, 1999 "Photothermal Refractive Keratoplasty"
#60/147,123 USA Aug. 4, 1999 "Inhibition of the Biological Response to Injury
from Wavefront-Guided Corneal Modification"
#60/137,459 USA June 4, 1999 "Molecular and Cellular Biology of Wound Repair
Following Refractive Keratoplasty"
#60/153,589 USA Sept. 13, 1999 "Thermal Refractive Keratoplasty"
#09/550,579 USA April 17, 2000 "Prevention of Regression in Refractive Keratoplasty"
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EXHIBIT B
FORM OF WARRANT