Exhibit 10.11
ASSIGNMENT OF LICENSE AGREEMENT BETWEEN
ISRAEL AIRCRAFT INDUSTRIES LTD.
AND
BAR-ILAN UNIVERSITY
THIS ASSIGNMENT AGREEMENT, made and entered into this 13th day of
August, 1992, by and between ISRAEL AIRCRAFT INDUSTRIES LTD., a company duly
registered in Israel (hereinafter referred to as the "ASSIGNOR") and MEDIS
ISRAEL LTD., a company duly registered in Israel (hereinafter referred to as the
"ASSIGNEE").
W I T N E S S E T H:
WHEREAS, ASSIGNOR declares that it is a party to a License Agreement
(the "Original License") between ASSIGNOR and BAR-ILAN UNIVERSITY ("Licensor"),
the owner of the LICENSED PRODUCT; and
WHEREAS, ASSIGNOR has invested in certain improvements to the LICENSED
PRODUCT, including the development and fabrication of certain manufacturing
tools and test equipment therefor; and
WHEREAS, ASSIGNEE is desirous of obtaining from ASSIGNOR, and ASSIGNOR
is willing and able to provide to ASSIGNEE, an assignment of all of the rights
and assumption of obligations of the ASSIGNOR under the Original License; and
WHEREAS, in conjunction with the aforesaid assignment, ASSIGNEE is also
desirous of obtaining from ASSIGNOR, and ASSIGNOR is willing and able to provide
to ASSIGNEE, the right and exclusive license to use certain of the know-how and
hardware produced by ASSIGNOR in implementation of the Original License to the
date of this Agreement, all in accordance with the terms and conditions set
forth hereinbelow.
NOW THEREFORE, in consideration of the premises and the mutual
covenants hereinafter contained, the parties hereto agree as follows:
ARTICLE I PREAMBLE AND EXHIBITS
The Preamble to this Agreement and all Exhibits attached hereto shall form an
integral part hereof and are binding upon the parties.
ARTICLE II DEFINITIONS
For the purpose of this Agreement, the words and terminologies set forth
hereinbelow shall have the following meanings:
(A) "Effective Date" shall mean the date upon which this
Agreement shall become effective as
stipulated in Article IX hereof.
(B) "Improvement Data" shall mean all data developed by ASSIGNOR in
the improvement of the LICENSED PRODUCT, or
in the design or fabrication of the Tooling
and Test Equipment, to the date of this
Agreement and shall include all patents and
patent applications with respect thereto.
(C) "Know-How" shall have the same meaning as set forth
under the Original License, and shall also
include Improvement Data.
(D) "Licensed Patent" shall have the same meaning as set forth
under the Original License.
(E) "LICENSED PRODUCT" shall mean the "Cellscan System" as defined
in the Original License.
(F) "Licensor" shall mean Bar-Ilan University.
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(G) "Original License" shall mean the License Agreement between
Israel Aircraft Industries Ltd. and Bar-Ilan
University with respect to the Cellscan
System, dated October 17, 1991, as amended,
a true, correct and complete copy of which
is attached hereto as Exhibit "A".
(H) "Manufacture" and/or shall mean to make or have made.
"Manufactured"
(I) "Royalty Base" shall mean the gross proceeds (including
market value of all consideration received)
from all sales by ASSIGNEE and ASSIGNEE's
sublicensees/assignees of the LICENSED
PRODUCT, derivatives of the LICENSED PRODUCT
and any accessories manufactured by or for
ASSIGNEE or such sublicensees/ assignees, as
well as any other income payable to ASSIGNEE
or such sublicensee/assignee by a third
party for any rights given to such third
party in relation to the LICENSED PRODUCT,
less any refunds or credits to customers.
(J) "Sell" and/or "Selling" and/or shall mean to sell directly or through
"Sale" selling agents, distributors,
teamings/partnerships, and/or any other
business relationship.
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(K) "Support" shall mean to repair, maintain, upgrade, and
otherwise support the LICENSED PRODUCT
directly or by contract with a third
party/ies.
(L) "Tooling" and "Test Equipment" shall mean the tooling and test equipment
for the LICENSED PRODUCT listed on Exhibit
"B" hereto.
ARTICLE III ASSIGNMENT AND ASSUMPTION
(A) Subject to Paragraph (B) below and all of the other terms and
conditions of this Agreement, ASSIGNOR hereby assigns to ASSIGNEE, and
ASSIGNEE hereby accepts such assignment of, ASSIGNOR's entire right,
title and interest under the Original License, including, without
limitation, all ASSIGNOR's rights and licenses with respect to the
LICENSED PRODUCT and the Licensed Patents and Know-How, as well as
ASSIGNOR's entire right, title and interest in and to the name
"Cellscan," including good will;
(B) In consideration of the foregoing assignment, ASSIGNEE, subject to the
terms and conditions of this Agreement, hereby agrees to assume the
following obligations, all of which are listed, either specifically or
generally, in Exhibit III(B):
(1) all of the obligations payable to the Licensor under the
original License, accruing on and after June 1, 1992,
including without limitation all fees and royalties payable
thereunder accruing after such date;
(2) to the extent set forth in Exhibit III(B), the obligations of
ASSIGNOR to repay amounts (including grants/loans/royalties)
payable to the Chief Scientist of the Office of the Ministry
of Trade and Industry; and
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(3) to the extent set forth in Exhibit III(B), all obligations of
ASSIGNOR under the executory contracts and instruments listed
on Exhibit III(B).
(C) Notwithstanding the provisions of Paragraph (B) above, ASSIGNOR shall
be obligated to make all payments to Licensor under the Original
License due on or prior to June 1, 1992, and ASSIGNEE shall be
obligated to make (or reimburse ASSIGNOR for) any payments due to the
Licensor under the original License after June 1, 1992.
ARTICLE IV LICENSE GRANT ON IMPROVEMENT DATA AND
TOOLING AND TEST EQUIPMENT
(A) With respect to the Improvement Data and the Tooling and Test
Equipment, ASSIGNOR hereby grants to ASSIGNEE the following rights and
licenses:
(1) An exclusive worldwide right and license to use the Know-How
and the Tooling and Test Equipment to Manufacture, Sell, and
Support the LICENSED PRODUCT;
(2) A non-exclusive worldwide right and license to use the
Know-How and the Tooling and Test Equipment in the design and
development of improvements to the LICENSED PRODUCT; and
(3) An exclusive worldwide right and license to use the Know-How
and Tooling and Test Equipment to design, Manufacture, Sell
and Support any derivative of the LICENSED PRODUCT which has a
blood-related medical application or use.
(B) All of the rights and licenses granted to ASSIGNOR under Paragraph (A)
above shall be for a period which is coextensive with the rights and
licenses of ASSIGNOR under the Original License, unless earlier
terminated as provided in Article IX hereof.
(C) ASSIGNOR shall not, during the term of this Agreement, engage in the
marketing, promotion or sale of any product which is competitive with
the LICENSED PRODUCT,
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nor otherwise in any way take any action which would be or cause a
breach of the Original License. ASSIGNEE shall not in any way take any
action which would be or cause a breach of the Original License.
(D) ASSIGNEE is entitled to grant sublicense/s in respect of part or all of
the rights granted to it under this Article IV, subject to ASSIGNEE's
continuing direct responsibility to ASSIGNOR for the compliance by said
sub-licensee with all of the provisions of this Agreement as if said
sub-licensee and ASSIGNEE were the same party.
ARTICLE V FURNISHING OF TECHNICAL DATA AND IMPROVEMENT DATA
(A) Upon receipt of the payment referred to in Article VII(A)(1) below,
ASSIGNOR will furnish ASSIGNEE with a complete set of all of the
technical data received by ASSIGNOR under the Original License and a
complete set of all of the Improvement Data.
(B) All data and other written information to be furnished by ASSIGNOR to
ASSIGNEE under this Agreement shall be in the Hebrew or English
language, as ASSIGNEE shall elect. ASSIGNEE shall have the right to
make, and the right to cause to be made, such copies of such technical
data and other written information as furnished hereunder by ASSIGNOR,
in such quantities as may be required by ASSIGNEE to fulfill the scope
of the rights and licenses granted by this Agreement.
ARTICLE VI TECHNICAL ASSISTANCE AND CONSULTATIONS
(A) ASSIGNOR agrees that it will furnish to ASSIGNEE, without cost, such
technical assistance, consultations and advice as may be reasonably
required by ASSIGNEE to implement the Know-How (including corrections
thereto), and to Manufacture and/or Support the LICENSED PRODUCT.
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(B) After completion of the implementation as aforesaid, ASSIGNOR shall, at
the request of ASSIGNEE and upon reasonable terms and conditions to be
agreed upon in each instance, assist ASSIGNEE in respect of ASSIGNEE's
realization of its rights hereunder, such assistance to include
technical and marketing assistance.
ARTICLE VII COMPENSATION
(A) In addition to and without limiting in any way ASSIGNEE's obligations
under Article III(B), ASSIGNEE agrees to pay ASSIGNOR in consideration
of ASSIGNOR's undertakings under this Agreement, the following:
(1) A one-time fee of One Million United States Dollars
(US$1,000,000.00), payable upon the Effective Date of this
Agreement; plus
(2) A royalty of six and one-half percent (6.5%) of the Royalty
Base until such time as ASSIGNOR has been paid an aggregate
royalty amount under this ARTICLE VII(A)(2) (from ASSIGNEE, as
well as any sublicensees and/or assignees of ASSIGNEE) equal
to Ten Million United States Dollars ($10,000,000) ; provided,
however, that payment of such royalties shall also be subject
to the provisions of Section 5(f) of a certain Amended and
Restated Subscription and Shareholders Agreement dated May 26,
1992 among Medis Inc., ASSIGNOR and Cell Diagnostics Inc., a
Delaware corporation ("CDS"). Subject to the foregoing
provisions, the royalty shall be payable to ASSIGNOR by
ASSIGNEE on an annual basis by March 31 of each year for the
amounts due for the previous calendar year.
(B) [INTENTIONALLY OMITTED]
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ARTICLE VIII REPRESENTATIONS, WARRANTIES, PRODUCT LIABILITY, AND DEFECTS
(A) ASSIGNOR hereby represents, warrants and declares that:
(1) Exhibit III(B) hereto contains true, correct and complete
copies of all documents (other than purchase and sale orders)
relating to obligations of more than $5,000 assumed by
ASSIGNEE pursuant to the provisions of Article III(B) hereof;
(2) ASSIGNOR has not assigned, licensed, sublicensed or otherwise
transferred to any party other than ASSIGNEE any of its right,
title or interest under the Original License, including,
without limitation, any right or license with respect to the
LICENSED PRODUCT, Licensed Patents or Know-How, except for the
rights granted pursuant to that certain Distributorship
Agreement, dated as of March 17, 1991, between ASSIGNOR and
Optikon Corporation, a company registered under the laws of
Italy, a true, correct and complete copy of which
Distributorship Agreement has previously been provided by
ASSIGNOR to ASSIGNEE and initialed;
(3) ASSIGNOR has the power to execute, deliver and perform this
Agreement and has taken all necessary action, corporate or
otherwise, to authorize the execution, delivery and
performance of this Agreement, and this Agreement has been
duly executed and delivered by it and is valid, binding and
enforceable against ASSIGNOR;
(4) No consent or approval of any person or entity (including,
without limitation, any stockholder) and no consent, license,
approval, authorization, or declaration of, or filing with,
any governmental authority, bureau or agency, is or will be
required in
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connection with the execution, delivery or performance by
ASSIGNOR, or the validity or enforcement of, this Agreement;
(5) The execution and delivery by ASSIGNOR of this Agreement and
the performance by it hereunder, will not violate any
provision of law and will not conflict with or result in a
breach of any order, writ, injunction, ordinance, resolution,
decree or other similar document or instrument of any court or
governmental authority, bureau or agency, domestic or foreign
to which ASSIGNOR is subject or by which it may be bound or
the certificate of incorporation or bylaws of ASSIGNOR or
create (with or without the giving of notice or lapse of time,
or both) a default under or breach of the Original License;
(6) The Original License is in full force and effect. No claims
have been made or actions or proceedings have been instituted
or threatened against ASSIGNOR or, insofar as ASSIGNOR is
aware, against Licensor, alleging any claim adverse to the
rights represented by the Original License. No breach or
default or event which with or without the giving of notice or
lapse of time, or both, would constitute a default under or
breach of the Original License on account of ASSIGNOR's act or
failure to act has occurred. No claim asserting a breach of
any of the provisions of the Original License has been made by
any party thereto and no claim of infringement has been made
by any third party against ASSIGNOR or, insofar as ASSIGNOR is
aware, Licensor, with respect to the Original License or the
rights licensed thereunder;
(7) There are no outstanding judgments, actions or proceedings
pending before any court or governmental authority, bureau or
agency, or, to the best of
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ASSIGNOR's knowledge, threatened against or affecting ASSIGNOR
relating to any of the transactions contemplated by this
Agreement nor, to the best of ASSIGNOR's knowledge, is there
any reasonable basis for the institution of any such action or
proceeding;
(8) Exhibit VIII(A)(1) attached hereto is a complete and accurate
list of those patents and patent applications, trademarks,
trademark applications, copyrights, copyright applications,
service marks and trade names represented to ASSIGNOR by
Licensor to be licensed to, or owned or used by ASSIGNOR, in
connection with the manufacture, sale, use and operation of
the LICENSED PRODUCT. ASSIGNOR has assigned to ASSIGNEE
hereunder all of ASSIGNOR's licenses or other rights to
manufacture and sell the LICENSED PRODUCT. There are no
asserted or, to the ASSIGNOR's knowledge, unasserted claims of
any third parties against ASSIGNOR or, insofar as ASSIGNOR is
aware, Licensor, challenging the ownership of, or use by,
ASSIGNOR of the Licensed Patents and Know How. There are no
claims against ASSIGNOR or, insofar as ASSIGNOR is aware,
Licensor, claiming invalidity of the Licensed Patents; and
ASSIGNOR is not aware that the Licensed Patents conflict with,
or infringe upon, any rights of any third parties;
(9) To ASSIGNOR's knowledge, no party to the Original License or
the distribution agreement referred to in paragraph (2) above
has violated any of the restrictions contained therein
relating to holding in confidence all proprietary information
and trade secrets relating to the LICENSED PRODUCT;
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(10) There are no outstanding claims against ASSIGNOR based upon
any damage caused by the faulty manufacture or faulty design
of the LICENSED PRODUCT or defective documentation from
ASSIGNOR on the proper operation and maintenance of the
Licensed Product;
(11) ASSIGNOR has not purchased any research and development
services from the University pursuant to the provisions of
paragraph 5.1.1 or 5.2 of the Original License, and the
University understands that such research plans will be
proposed by the Chief Scientist and that purchases will be
made in the amounts of $250,000 for each of 1992 and 1993 in
the amounts of $350,000 in each of 1994 and 1995.
(12) The amount heretofore expended by ASSIGNOR against the total
of $5 million provided for in paragraph 5.4 of the Original
License is $2,252,000.
(13) No royalties were paid or are payable to the University
pursuant to the provisions of paragraph 8 of the original
License.
(14) Exhibit VIII (A)(14) hereto is a true, correct and complete
copy of a consent and estoppel certificate of the Original
Licensor under the Original License, which certificate has
been duly authorized, executed and delivered by the Original
Licensor and has not been revoked, amended or modified.
(B) ASSIGNEE agrees that it shall hold ASSIGNOR harmless from any claim to
the extent such claim is based upon (1) a defect in the material or
workmanship of ASSIGNEE or its subcontractors, sub-licensees, and/or
assignees in the manufacture of the LICENSED PRODUCT, or (2) any action
taken by ASSIGNEE which would be or cause a breach of the Original
License or this Agreement, or (3) ASSIGNEE's sale/support of the
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LICENSED PRODUCT, but in each case excluding incidental or
consequential damages. As of June 1, 1992, no LICENSED PRODUCTS had
been delivered by ASSIGNOR.
(C) ASSIGNEE shall maintain product liability insurance in respect of the
LICENSED PRODUCTS manufactured by or for ASSIGNEE, provided that such
insurance is available on a commercially reasonable basis. ASSIGNEE
shall add ASSIGNOR and the Licensor under the Original License as
additional insureds, with a waiver of a right of subrogation against
ASSIGNOR and Licensor under the Original License, in any product
liability insurance policy in respect of said LICENSED PRODUCTS
obtained pursuant to the preceding sentence.
ARTICLE IX TERM
This Agreement shall be deemed to have come into force and effect on the date
same is signed by the last of the two parties hereto to sign (the "Effective
Date"), and shall continue in effect coextensively with the Original License,
unless earlier terminated pursuant to Section 3(c)(i) of the Subscription and
Shareholders Agreement, dated May 26, 1992, among Medis Inc., ASSIGNOR and CDS.
ARTICLE X NOTICES
(A) Any notice required or permitted to be given under this Agreement shall
be in writing by certified mail or fax (followed by confirmation by
certified mail) and be deemed effective upon receipt by the addressee
at the following address:
To ASSIGNEE: MEDIS ISRAEL LTD.
Yehud Industrial Zone
Israel
Fax: ▇▇▇-▇-▇▇▇▇▇▇▇
Attention: ▇▇. ▇▇▇▇ ▇▇▇▇▇▇
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with a copy to: Rosenman & Colin
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, Esq.
To ASSIGNOR: ISRAEL AIRCRAFT INDUSTRIES LTD.
TAMAM Precision Instrument Plant
Yahud, Israel
Fax: ▇▇-▇▇▇ ▇▇▇▇
Attention: ▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇
Either party hereto may change the address to which any such notices are to be
sent by providing written notice of such changed address to the other party.
ARTICLE XI ASSIGNMENT
(A) ASSIGNEE may, at any time upon the approval of ASSIGNEE's board of
directors, assign this Agreement to a subsidiary of ASSIGNEE (i.e.,
wherein ASSIGNEE or ASSIGNEE's parent company owns at least fifty
percent (50%) of the voting shares of the subsidiary), subject to
ASSIGNEE's continuing direct responsibility to ASSIGNOR for the
compliance by said assignee with all of the provisions of this
Agreement as if said assignee and ASSIGNEE were the same party.
(B) ASSIGNOR may, by written notice to ASSIGNEE, assign or encumber for the
benefit of a third party the payments due ASSIGNOR from ASSIGNEE
hereunder, provided that ASSIGNEE shall not be required in any way to
provide any information or otherwise communicate with such third party
other than to make the payments hereunder when due, and provided
further that ASSIGNOR shall have no claim against ASSIGNEE for making
any payments to such third party if made in good faith in reliance on
the written direction of ASSIGNOR.
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ARTICLE XII APPLICABLE LAW AND DISPUTE RESOLUTION
(A) This Agreement shall be governed, performed, interpreted, construed and
enforced according to the laws of Israel. The rights and remedies set
forth in this Agreement are in addition to any other rights and
remedies provided in law.
(B) The parties hereto shall attempt to use their best efforts to reach an
amicable settlement of any disputes and controversies arising under
this Agreement. All disputes and controversies which cannot be amicably
settled shall be decided by arbitration pursuant to rules of Israel
Arbitration Law and Annexes thereto then in effect, as applied by the
arbitrator in his discretion and conducted in Tel Aviv, Israel in front
of a single arbitrator to be jointly selected by the parties or, if
they cannot agree on a selection within 30 days after any party demands
arbitration, to be appointed by the then President of the Israel Bar
Association. The costs of any arbitration shall be allocated as deemed
appropriate by the arbitrator. The award of the arbitrator shall be
final and binding on the parties.
ARTICLE XIII INDEMNIFICATION
ASSIGNOR shall indemnify ASSIGNEE and CDS and each of their respective
directors, officers, employees, attorneys and agents (collectively, the
"Indemnified Parties") against, and hold each of them harmless from, any loss,
liabilities, damages, claims, costs and expenses (including reasonable
attorneys' fees and disbursements), but excluding incidental or consequential
damages, suffered or incurred by any of them arising out of or resulting from a
breach or alleged breach of any of the representations and warranties set forth
in Article VIII hereof (collectively, the "Representations"), and any losses,
liabilities, damages, claims, costs and expenses (including reasonable
attorneys' fees and disbursements), but excluding incidental or consequential
damages, suffered by any of the Indemnified Parties arising out of or related to
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investigating, preparing for, defending against, or providing evidence,
producing documents or, taking any other action in respect of any commenced or
threatened litigation, administrative proceeding or investigation under any law
or statute of any jurisdiction, or any regulation, which is alleged to arise out
of or is based upon a breach of any of the Representations. The maximum amount
payable by ASSIGNOR to or for the benefit (directly or indirectly) of CDS
pursuant to this indemnity shall be equal to $1,000,000, plus interest thereon
at a rata equal to Chemical Bank's prime rate as announced from time to time
plus 1%, plus reasonable attorneys' fees and disbursements.
ARTICLE XIV CAPTIONS
The captions of the terms and conditions of this Agreement are for the
convenience of reference only and shall not be construed as in any way limiting
or extending the language or provisions to which the captions refer.
ARTICLE XV WAIVE
The failure of the ASSIGNOR or the ASSIGNEE to insist, in any one or more
instances, upon strict performance of any of the terms of this Agreement or to
exercise any rights herein conferred shall not be construed as a waiver or
relinquishment to any extent of ASSIGNOR's or ASSIGNEE's right (as the case may
be) to assert or rely upon any such term or right on any future occasion.
ARTICLE XVI ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between the parties, and
supersedes all previous negotiations, representations, undertakings, and
agreements heretofore made between the Parties in respect to the subject matter
hereof. This Agreement shall not be varied by any oral agreement or
representation, or
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IN WITNESS WHEREOF, the parties hereto have, as of the date first
hereinabove written, caused this Agreement to be executed by their respective
duly authorized representatives in two (2) duplicate originals, one (1) of which
is left with ASSIGNOR and one (1) with ASSIGNEE.
MEDIS ISRAEL LTD. ISRAEL AIRCRAFT INDUSTRIES LTD.
By: By:
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Name: Name:
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Title: Title:
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By:
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Name:
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Title:
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