EXHIBIT 10.37
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AGREEMENT ("Agreement") dated January 1, 1997, between INTERNATIONAL BUSINESS
MACHINES CORPORATION, a New York corporation (hereinafter called IBM), and
LASERSIGHT INCORPORATED, a Delaware corporation (hereinafter called LASERSIGHT).
IBM is the owner of certain patents relating to Ultraviolet Light Ophthalmic
(ULO) products and procedures. IBM is not involved in the business of making or
selling ULO products and does not have the expertise for licensing patents in
such fields. It is IBM's desire to sell such patents to a company that is more
familiar with licensing practices in such business with the intention and
expectation that such patents will be made available for license to other
companies participating in such business on reasonable and nondiscriminatory
terms.
IBM previously granted to LASERSIGHT, a company presently active in such
business, a nonexclusive license under some of such patents. LASERSIGHT now
desires to acquire ownership of such previously licensed patents and some
additional patents relating to ULO products and ULO procedures with the
intention of offering licensing of such patents to others participating in such
fields on reasonable and nondiscriminatory terms.
In consideration of the premises and mutual covenants herein contained, IBM and
LASERSIGHT agree as follows:
Section 1. Definitions
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1.1 "Assigned Patents" shall mean the patents listed in Exhibit A and any
patents reissuing on any of such patents.
1.2 "Assigned Contracts" shall mean the patent license agreement between IBM and
Summit Technology, Inc. dated February 1, 1992 and the patent license agreement
between IBM and VISX, Inc. dated January 1, 1992.
1.3 "Burdensome Condition" shall mean any action taken, or credibly threatened,
by or before any Governmental Authority to challenge the legality of the
transaction contemplated by this Agreement or that would otherwise deprive a
party of a material benefit of any such transaction, including (i) the pendency
of a governmental investigation (formal or informal), (ii) the institution of
any litigation, or the threat thereof, (iii) an order by a Governmental
Authority or competent jurisdiction preventing consummation of the transaction
contemplated by this Agreement or placing any material conditions or limitations
upon such consummation or (iv) the issuance of any subpoena, civil investigative
demand or other request for documents or information relating to such
transaction that is unreasonably burdensome in the reasonable judgment of the
applicable party.
1.4 "Governmental Authority" shall mean any federal, state, local or foreign
court, governmental or administrative agency or commission or other governmental
agency, authority, instrumentality or regulatory body.
1.5 "HSR Act" shall mean the ▇▇▇▇-▇▇▇▇▇-▇▇▇▇▇▇ Antitrust Improvements Act of
1976.
Section 2. Assignment and Reservation
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2.1 Subject to the reservation specified in Section 2.2 below and IBM's receipt
of the payment specified in Section 3, IBM shall assign to LASERSIGHT on July 1,
1997, all of its right, title and interest in and to the Assigned Patents and
the Assigned Contracts. IBM shall be entitled to receive any royalties which
have accrued under the Assigned Contracts prior to January 1, 1997,
notwithstanding that the remittance of such royalties may not take place until
after such date. LASERSIGHT shall be entitled to receive any royalties which
accrue under the Assigned Contracts on or after January 1, 1997.
2.2 LASERSIGHT acknowledges that IBM has previously granted licenses under the
Assigned Patents to the companies listed in Exhibit B and accepts the assignment
granted in Section 2.1 above subject to such prior licenses. Except with respect
to the Assigned Contracts, to the extent that any of such prior licenses
terminate or expire prior to the expiration of the Assigned Patents, IBM
reserves the exclusive right to renew such prior licenses at its sole
discretion, in accordance with the renewal terms set forth in each such prior
license agreement.
2.3 LASERSIGHT shall be solely responsible for the preparation and filing of any
and all papers, documents, instruments, etc. which may be necessary to perfect
its right and title in and to the Assigned Patents. IBM covenants and agrees
that, upon the request of LASERSIGHT after July 1, 1997, IBM will execute and
deliver any and all such papers and do all lawful acts as may be necessary to
perfect LASERSIGHT's right and title in and to the Assigned Patents. LASERSIGHT
shall be responsible for any and all out of pocket costs incurred to perfect its
rights.
2.4 LASERSIGHT covenants to carry on its licensing activities pertaining to the
Assigned Patents on a reasonable and nondiscriminatory basis and in compliance
with all applicable laws, regulations and/or administrative orders of all
governmental bodies and offices, of any jurisdiction in which it conducts
business, having power to regulate or supervise its business activities.
2.5 In the event that LASERSIGHT becomes a party to litigation in which the
validity of any of the Assigned Patents is contested, IBM covenants to give
LASERSIGHT access to all files and records in IBM's possession at such time
pertaining to the conception and reduction to practice of the inventions claimed
in the Assigned Patents and to grant LASERSIGHT access to any inventors who are
employees of IBM at such time. LASERSIGHT shall reimburse IBM for any
out-of-pocket expenses associated with this covenant.
2.5 IBM covenants to maintain all of its records pertaining to the conception
and reduction to practice of the inventions claimed in the Assigned Patents,
which records are in IBM's possession as of the date first written above, and
that prior to destroying any such records, IBM will grant LASERSIGHT the
opportunity to take possession of such records.
Section 3. Consideration
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3.1 LASERSIGHT shall pay to IBM the sum of fourteen million, nine hundred
thousand dollars ($14,900,000) on July 1, 1997.
3.2 LASERSIGHT shall bear and pay all taxes (including, without limitation,
sales and value added taxes) imposed by any national government (including any
political subdivision thereof) to perfect the assignment granted herein.
3.3 (a) In accordance with an escrow agreement to be executed no later than
March 7, 1997, LASERSIGHT shall, by the date to be specified in the escrow
agreement ("Escrow Date"), place in escrow with a mutually agreed upon escrow
agent, the number of common shares of LASERSIGHT which, in the aggregate,
represent the value of one million dollars ($1,000,000) at the closing sales
price for such stock on the day immediately preceding the Escrow Date, as quoted
by the established stock exchange upon which such stock is listed ("Escrowed
Shares").
(b) LASERSIGHT shall take all steps necessary to cause a registration
statement to be filed with the U.S. Securities and Exchange Commission ("SEC")
pursuant to the Securities Act of 1933 by no later than June 1, 1997, with
respect to the Escrowed Shares, which registration statement shall be for an
offering of such Escrowed Shares by IBM on a continuous basis pursuant to Rule
415 under the Securities Act of 1933. LASERSIGHT further agrees that it shall
prepare and file with the SEC such amendments and supplements to such
registration statement and the prospectus forming a part thereof as may be
necessary to keep the registration statement effective until December 31, 1997.
(c) Except if the transaction contemplated by this Agreement is not
consummated pursuant to Section 8.8 or 8.9, or if the parties are unable to
agree to an escrow agreement by March 7, 1997, in the event that LASERSIGHT does
not make the payment specified in Section 3.1 on July 1, 1997, IBM shall be
entitled to receive the Escrowed Shares from the escrow agent and dispose of
them in any manner at its sole discretion, subject to applicable federal and
state securities laws. If the market value of the Escrowed Shares on July 1,
1997 is less than one million dollars ($1,000,000), then LASERSIGHT shall
deposit additional funds in the form of cash or stock, at LASERSIGHT's
discretion, into the escrow account to make up the difference on such date. If
the market value of the Escrowed Shares on July 1, 1997 is more than one million
dollars ($1,000,000), then IBM shall only be entitled to receive one million
dollars ($1,000,000) worth of Escrowed Shares and the balance shall be returned
to LASERSIGHT.
Section 4. Indemnification
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4.1 LASERSIGHT shall indemnify and hold IBM harmless against any claims brought
against IBM which claims arise solely from LASERSIGHT's licensing activities
relating to the Assigned Patents or from LASERSIGHT's administration of the
Assigned Contracts. LASERSIGHT shall pay all of IBM's costs associated with such
claims, including, without limitation, attorneys fees.
4.2 IBM shall indemnify and hold LASERSIGHT harmless against any claims brought
against LASERSIGHT which claims arise solely from IBM's breach of its
obligations under the Assigned Contracts. IBM shall pay all of LASERSIGHT's
costs associated with such claims, including, without limitation, attorneys
fees.
Section 5. Warranty
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5.1 IBM represents and warrants that:
5.1.1 it has the full right and power to grant the assignments set forth in
Section 2;
5.1.2 there are no outstanding agreements, assignments, or encumbrances
inconsistent with the provisions of this Agreement;
5.1.3 it is not in breach of any of its obligations under the Assigned
Contracts;
5.1.4 between the last signature date and July 1, 1997, IBM will take all
necessary administrative steps (i.e. paying maintenance fees) to maintain
the Assigned Patents in force; and
5.1.5 except for situations where public policy considerations in a country may
limit the enforceability of patent claims for medical procedures, it is
not aware of any reason why any of the Assigned Patents are invalid or
unenforceable.
IBM MAKES NO OTHER REPRESENTATIONS OR WARRANTIES, EXPRESS OR IMPLIED.
5.2 LASERSIGHT acknowledges that it has conducted its own "due diligence" with
respect to the validity and enforceability of the Assigned Patents, and in
entering into this Agreement, it is not relying any statements made by IBM with
respect to their validity and enforceability. The Assigned Patents are being
assigned by IBM on an "AS-IS" basis with no warranties of any kind, except as
specifically stated in Section 5.1.
5.3 LASERSIGHT represents and warrants that it:
5.3.1 has all requisite corporate power and authority to execute and deliver
this Agreement and the escrow agreement, to issue and convey the Escrowed
Shares to IBM, if required by Section 3.3 (b) above, to cause the
Escrowed Shares to be registered as required by Section 3.3(a) above, and
to consummate the other transaction contemplated hereby. The execution
and delivery by LASERSIGHT of this Agreement and the escrow agreement and
the consummation by LASERSIGHT of the transactions contemplated thereby
have been duly authorized by all necessary corporate action on the part
of LASERSIGHT and its shareholders. Neither the execution and delivery of
this Agreement or the escrow agreement nor the consummation of the
transactions contemplated hereby or thereby nor compliance by LASERSIGHT
with any of the provisions hereof or thereof will (i) result in any
conflict with, breach of, or default (or give rise to any right of
termination, cancellation or accelerations) under any of the terms,
conditions or provisions of any contract, indebtedness, permit or other
instrument or obligation to which LASERSIGHT (or any subsidiary or
affiliate) is a party or by which LASERSIGHT or such subsidiary or
affiliate or any of the properties or assets of LASERSIGHT or such
subsidiary or affiliate may by bound; (ii) violate any law, injunction or
judgment applicable to LASERSIGHT (or any of its subsidiaries or
affiliates) or any of the properties or assets of LASERSIGHT or its
subsidiaries or affiliates; or (iii) violate any provision of
LASERSIGHT's certificate of articles of incorporation or its bylaws or
regulations. No approval by or filing with any governmental authority, or
any regulatory or self-regulatory body, is required in connection with
the execution and delivery of this Agreement or the escrow agreement or
the consummation by LASERSIGHT of the transactions contemplated hereby or
thereby, except under the HSR Act; and
5.3.2 has good title to the Escrowed Shares free and clear of all liens,
security interests, claims, charges, equities, pledges and encumbrances
of any kind, and IBM shall receive such good title, free of any and all
such encumbrances if IBM is entitled to receive the Escrowed Shares
pursuant to Section 3.3(b), above.
LASERSIGHT MAKES NO OTHER REPRESENTATIONS OR WARRANTIES, EXPRESS OR IMPLIED.
Section 6. Communications
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6.1 Any notice or other communication required or permitted to be made or given
to either party hereto pursuant to this Agreement shall be sent to such party by
facsimile or certified mail, postage prepaid, addressed to it at its address set
forth below, or to such other address as it shall designate by written notice
given to the other party, and shall be deemed to have been made or given on the
date of facsimile transmission or mailing. The addresses are as follows:
6.1.1 For IBM:
Director of Licensing
International Business Machines Corporation
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
6.1.2 For facsimile transmission to IBM:
(▇▇▇) ▇▇▇-▇▇▇▇
6.1.3 For LASERSIGHT:
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, CEO
LaserSight Incorporated
▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇. ▇▇▇▇▇, ▇▇ ▇▇▇▇▇
6.1.4 For facsimile transmission to LASERSIGHT:
(▇▇▇) ▇▇▇-▇▇▇▇
6.2 Payment by LASERSIGHT to IBM shall be made by electronic funds transfer to:
IBM Director of Licensing
The Bank of New York
▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
Credit Account No. ▇▇▇-▇▇▇▇-▇▇▇
ABA No. ▇▇▇▇-▇▇▇▇-▇
Section 7. Prior License Agreement
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7.1 The prior patent license agreement dated April 1, 1992, between the parties
shall remain in effect. Subject to IBM's receipt of the payment specified in
Section 3.1, the license granted to LASERSIGHT shall become fully paid-up.
LASERSIGHT shall, however, continue to be obligated to pay IBM all royalties
which accrued under the prior agreement prior to January 1, 1997, including but
not limited to, any royalties for Preapproval Products (as defined in such prior
agreement) which have been deferred pending approval by the Food and Drug
Administration.
Section 8. Miscellaneous
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8.1 Both parties agree to secure the prior express written approval of the other
party of any press releases or other written announcement made during 1997
regarding this Agreement; provided, however, this Section does not apply to any
disclosures required by applicable law.
8.2 This Agreement shall not be binding upon the parties and shall not obligate
either of the parties, until it has been signed hereinbelow by both parties, in
which event it shall be effective as of the date first written above. If the
parties have not executed an escrow agreement by March 7, 1997, this Agreement
shall be null and void. In the event IBM has not received the payment specified
in Section 3.1 by 5:00 PM, New York time on July 1, 1997, IBM shall have the
right, at its sole discretion, to declare this Agreement null and void, ab
initio, and IBM's sole remedy with respect to LASERSIGHT's failure to make such
payment, whether or not IBM declares this Agreement null and void, shall be as
set forth in Section 3.3.
This Agreement, including its Exhibits, embodies the entire understanding of the
parties with respect to the Assigned Patents and Assigned Contracts and merges
all prior communications (whether oral or written) between them, and neither of
the parties shall be bound by any conditions, definitions, warranties,
understandings or representations with respect to the Assigned Patents and
Assigned Contracts other than as expressly provided in this Agreement.
8.3 No amendment or modification hereof shall be valid or binding upon the
parties unless made in writing and signed by both parties.
8.4 The headings of the several sections are inserted for convenience of
reference only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
8.5 If any section of this Agreement is found by competent authority to be
invalid, illegal or unenforceable in any respect for any reason, the validity,
legality and enforceability of such Section in every other respect and the
remainder of this Agreement shall continue in effect so long as the Agreement
still expresses the intent of the parties. If the intent of the parties cannot
be preserved, this Agreement shall be either renegotiated or terminated.
8.6 This Agreement shall be construed, and the legal relations between the
parties hereto shall be determined, in accordance with the law of the State of
New York, United States of America, as such law applies to contracts signed and
fully performed in such State. Each of the parties waives its right to a jury
trial.
8.7 Nothing in this Agreement shall be construed as creating any agency, joint
venture, partnership or other type of relationship between the parties.
8.8 The obligations of IBM to consummate the transaction contemplated herein is
subject to the following conditions:
8.8.1 the representations and warranties made in this Agreement by LASERSIGHT
shall be true and correct in all material respects as of the date first
written above and on July 1, 1997;
8.8.2 LASERSIGHT shall have performed in all material respects its covenants
and agreements contained herein and in the escrow agreement;
8.8.3 the waiting period under the HSR Act shall have expired or terminated; and
8.8.4 no Burdensome Condition shall exist with respect to IBM in connection
with the transaction contemplated herein.
8.9 The obligations of LASERSIGHT to consummate the transaction contemplated
herein is subject to the following conditions:
8.9.1 the representations and warranties made in this Agreement by IBM shall be
true and correct in all material respects as of the date first written
above and on July 1, 1997;
8.9.2 IBM shall have performed in all material respects its covenants and
agreements contained herein;
8.9.3 the waiting period under the HSR Act shall have expired or terminated; and
8.9.4 no Burdensome Condition shall exist with respect to LASERSIGHT in
connection with the transaction contemplated herein.
8.10 As promptly as possible, each party will file with the Federal Trade
Commission (the "FTC") and the Antitrust Division of the United States
Department of Justice (the "Antitrust Division") a premerger notification in
accordance with the HSR Act with respect to the activities contemplated pursuant
to this Agreement. Each of the parties agrees to furnish promptly to the FTC and
the Antitrust Division any additional information reasonably requested by either
of them pursuant to the HSR Act in connection with such filings and shall
diligently take, or cooperate in the taking of, all steps that are necessary or
reasonably desirable and proper to expedite the termination of the waiting
period under the HSR Act; provided, however, that no party shall be required to
comply with any Burdensome Condition.
8.11 This Agreement may be executed by the parties hereto in one or more
counterparts, each of which shall be an original and all of which shall
constitute one and the same instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly signed.
INTERNATIONAL BUSINESS
MACHINES CORPORATION
Date 2/10/97 By /s/ ▇. ▇. ▇▇▇▇▇▇, Jr.
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▇. ▇. ▇▇▇▇▇▇, Jr.
Vice President
LASERSIGHT INCORPORATED
Date 2/11/97 By /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
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▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Chief Executive Officer
EXHIBIT A
1) TITLE: FAR ULTRAVIOLET SURGICAL AND DENTAL PROCEDURES
COUNTRY PATENT NO. EXPIRATION DATE
------- ---------- ---------------
Australia 570,225 Nov. 24, ▇▇▇▇
▇▇▇▇▇▇▇▇▇ 598,135 Nov. 24, ▇▇▇▇
▇▇▇▇▇▇▇ 28,974 ▇▇▇▇. ▇, ▇▇▇▇
▇▇▇▇▇▇▇ 111,060 Sept. 6, ▇▇▇▇
▇▇▇▇▇▇ PI8306654 Dec. 2, ▇▇▇▇
▇▇▇▇▇▇ 1,238,690 June 28, ▇▇▇▇
▇▇▇▇▇▇ 111,060 ▇▇▇▇. ▇, ▇▇▇▇
▇▇▇▇▇▇▇ 3,373,055 Sept. 6, ▇▇▇▇
▇▇▇▇▇ 111,060 Sept. 6, ▇▇▇▇
▇▇▇▇▇ 1,838,057 Oct. 19, ▇▇▇▇
▇▇▇▇▇ 527,415 ▇▇▇. ▇, ▇▇▇▇
▇▇▇▇▇▇ 111,060 ▇▇▇▇. ▇, ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇ 111,060 ▇▇▇▇. ▇, ▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ 111,060 Sept. 6, ▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ 4,784,135 Nov. 15, 2005
2) TITLE: ENHANCEMENT OF ULTRAVIOLET LIGHT
ABLATION AND ETCHING ORGANIC SOLIDS
COUNTRY PATENT NO. EXPIRATION DATE
------- ---------- ---------------
France 365,754 July 7, ▇▇▇▇
▇▇▇▇▇▇▇ 68919328.9 July 7, ▇▇▇▇
▇▇▇▇▇ 2,502,768 Oct. 9, 2009
United Kingdom 365,754 July 7, ▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ 4,925,523 Oct. 28, 2008
EXHIBIT B
List of companies currently licensed under some or all of the Assigned Patents
to make, use, import and sell ULO products and to practice ULO procedures:
AESCULAP-MEDITEC GMBH A
AUTONOMOUS TECHNOLOGIES CORPORATION A, B
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ GMBH & CO., KG A
LASERSIGHT INCORPORATED A
SUMMIT TECHNOLOGY, INC. A
TRIMEDYNE, INC. A
VISX, INCORPORATED A
A - REFERS TO PATENTS LISTED IN EXHIBIT A, SECTION 1.
B - REFERS TO PATENTS LISTED IN EXHIBIT A, SECTION 2.