Exhibit 4.11
SETTLEMENT AGREEMENT
AGREEMENT, dated as of October 17, 2003 (the "Agreement"), among
COMPETITIVE TECHNOLOGIES, INC., a Delaware corporation formerly known as
University Patents, Inc. ("CTI"), UNILENS CORP. USA, a Delaware corporation
("Unilens USA"), and UNILENS VISION INC., a British Columbia corporation
formerly known as Unilens Optical Corp. ("Unilens Vision" and, together with
Unilens USA, the "Unilens Companies").
W I T N E S S E T H:
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WHEREAS, the parties and University Optical Products Co. are parties to an
Asset Purchase Agreement, dated January 23,1989 (the "Asset Purchase Agreement")
and the parties are parties to a Settlement and Forbearance Agreement, dated
July 15, 1993 (as amended by the Amendment and Modification Agreement dated
September 27, 1993, the "1993 Agreement");
WHEREAS, there have been disputes among the parties with respect to the
Asset Purchase Agreement and the 1993 Agreement (together, the "Prior
Agreements");
WHEREAS, on or about August 22, 2003, CTI commenced an action against the
Unilens Companies in the United States District Court for the Middle District of
Florida entitled Competitive Technologies, Inc. v. Unilens Vision, Inc. and
Unilens Corp., Index No. 8:03 CV 1783-T23EAJ;
WHEREAS, CTI withdrew such federal court action on or about September 3,
2003 and, on or about September 4, 2003, filed an action in the Circuit Court of
the 13th Judicial District (Hillsborough County), Florida Civil Division (the
"Court"), with the same title, Case No. 03-8216 (the "Action"); and
WHEREAS, the parties now wish to settle and dispose of all claims and
disputes among them, provide for the dismissal with prejudice of the Action and
set forth their complete understanding of their remaining respective rights and
obligations;
NOW, THEREFORE, in consideration of the mutual promises and releases set
forth below, the parties agree as follows:
1. Settlement of Claims and Dismissal of the Action.
(a) In consideration of the payments being made and to be made by the
Unilens Companies pursuant to Section 3 and the other agreements set forth in
this Agreement, as of the Effective Date (as defined in Section 3(a)(i)), CTI
shall dismiss with prejudice the Action and settle all Claims (as defined in
Section 5) against the Unilens Companies other than any that may arise under
this Agreement. It is agreed that as used in this Agreement, "Claims" shall be
construed as broadly as possible and shall include, without limitation, all
Claims based on
conduct prior to the Effective Date that have, or could have been, asserted in
the Action and all Claims arising from, or relating in any way to, the Prior
Agreements.
(b) Promptly following the Effective Date, CTI shall arrange for dismissal
of the Action by the filing with the Court a Notice of Voluntary Dismissal with
prejudice and without costs to any party (the "Stipulation") and do whatever
additional things that may be necessary to effect promptly such dismissal and
discontinuance of the Action. The parties shall cooperate and direct their
attorneys to prepare such documents and take such actions as may be necessary to
achieve such dismissal promptly. The failure by CTI to cause the filing of the
Stipulation with the Court shall not affect the releases provided for in this
Agreement or prevent the Unilens Companies from unilaterally submitting this
Agreement as a basis for moving the Court to dismiss the Action.
2. Termination of the Prior Agreements. As of the Effective Date, each
Prior Agreement shall be irrevocably terminated and canceled in its entirety and
no party shall have any further obligation or liability under either Prior
Agreement.
3. Payments.
(a) The Unilens Companies shall make payments to CTI in the aggregate
amount of US$1,250,000.00 (subject to certain adjustments as provided in this
Agreement) as follows:
(i) On the date that this Agreement is executed by each of the Unilens
Companies, they shall pay US$100,000.00 to CTI by wire transfer of US dollars in
good federal funds to the account specified in Section 3(f) (the "First
Payment"). The date that the First Payment is received and retained by CTI is
referred to as the "Effective Date"; and
(ii) Until an aggregate of US$1,150,000.00 has been paid as provided in
this Section 3(a)(ii) without default, on March 31, June 30, September 30 and
December 31 of each year, beginning December 31, 2003, the Unilens Companies
shall pay to CTI by wire transfer of US dollars in good federal funds to the
account designated in or pursuant to Section 3(f), installment payments in
amounts that are each the greater of (i) US$100,000.00 or (ii) an amount equal
to 50% of the royalties received by Unilens USA from Bausch & Lomb Incorporated
during the three calendar months ending on the relevant date of payment,
pursuant to the License Agreement, dated October 25, ▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇
and Bausch & Lomb Incorporated (the "License Agreement").
(b) If any installment payment required to be made pursuant to Section
3(a)(ii) is not made to CTI on or before the second business day after the date
it is due, time being of the essence, such installment shall accrue interest at
the rate of 8% per annum from the original due date for such installment payment
until paid in full and all such accrued interest shall be paid to CTI together
with such installment.
(c) If any installment payment required to be made pursuant to Section
3(a)(ii) is not made to CTI on or before the second business day after the date
it is due, and is not paid in full (together with all interest payable thereon
pursuant to Section 3(b)) to CTI within 45 days following the date of CTI's
written notice of default to the Unilens Companies with respect thereto, then
the Default Amount (as defined below) shall immediately become due and payable
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by the Unilens Companies to CTI without further notice or demand by CTI.
Further, if any two consecutive installment payments required to be made
pursuant to Section 3(a)(ii) are not made on or before the second business day
after the date they are due, time being of the essence, then the Default Amount
(as defined below) shall immediately become due and payable by the Unilens
Companies to CTI without further notice or demand by CTI. In either such event,
the Default Amount shall accrue interest at the rate of 8% per annum until paid
in full and all such accrued interest shall be paid to CTI together with the
Default Amount. For purposes of this Agreement, "Default Amount" means an amount
equal to US$1,150,000.00, less all amounts paid by the Unilens Companies to CTI
pursuant to Section 3(a)(ii) (and excluding any interest amounts paid to CTI
pursuant to Section 3(b)) prior to the date of CTI's notice of default.
(d) The Unilens Companies shall furnish to CTI, together with each
installment payment made pursuant to Section 3(a)(ii), a certification by
Unilens USA's Chief Financial Officer setting forth the total amount of
royalties received by Unilens USA under the License Agreement during the three
calendar months ending on the relevant date of payment and the calculation of
the accompanying payment being made to CTI. The Unilens Companies shall
concurrently furnish to CTI a copy of the related royalty report received from
Bausch & Lomb Incorporated under the License Agreement.
(e) The Unilens Companies shall have the right, at their option and at any
time, to prepay all or any portion of their obligation to CTI under Section
3(a)(ii), without penalty or premium.
(f) All wire transfers made to CTI pursuant to this Section 3 shall be
made in accordance with the following wire transfer instructions (unless and
until CTI notifies the Unilens Companies in writing of different wire
instructions, and then in accordance with such new instructions):
Bank: Fleet Bank
Bank Address: ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
ABA Number: ▇▇▇▇▇▇▇▇▇
For further credit to: Competitive Technologies, Inc.
Account Number: 93698 11621
4. Security.
(a) To secure the full performance of all of the obligations of the
Unilens Companies under this Agreement, including, without limitation, the
payment to CTI of the amounts specified in Section 3 of this Agreement, the
Unilens Companies grant, convey, assign and transfer to CTI a lien on, and
security interest in, all of the Collateral (as defined below). As used in this
Agreement, the term "Collateral" means all of the real property and all of the
personal property and other goods of the Unilens Companies, or either of them,
wherever located, whether now owned or existing or hereafter acquired or
arising, including without limitation all of the Unilens Companies' (or either
company's) now owned or existing or hereafter acquired or arising (i) accounts
receivable, (ii) chattel paper, (iii) contracts, (iv) deposit accounts, (v)
documents, (vi) equipment, (vii) fixtures, (viii) general intangibles, (ix)
instruments, (x) inventory, (xi) investment property, (xii) letter-of-credit
rights, (xiii) supporting obligations, (xiv) money, (xv)
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patents, (xvi) licenses or license agreements, (xvii) additions, accessions and
attachments to any of the foregoing and (xviii) renewals, substitutions,
replacements, rental payments, products and proceeds of any of the foregoing.
(b) Upon CTI's request, the Unilens Companies shall execute, acknowledge,
deliver and/or cause to be filed all such additional and further documents,
agreements and instruments, and shall take such other actions as may be
reasonably necessary or appropriate, to better assure, preserve, protect and
perfect the security interest granted to CTI hereunder and the rights and
remedies created hereby, including, without limitation (i) executing and
delivering to CTI a separate security agreement in a form that is satisfactory
to CTI, (ii) delivering and, where appropriate, filing financing statements and
continuation statements under the Uniform Commercial Code (the "UCC"), (iii)
obtaining governmental and other third party consents and approvals, (iv)
obtaining waivers and consents from mortgagees, warehousemen, landlords, lessees
and licensees and (v) joining with CTI in notifying any person that is in
possession of any Collateral of CTI's security interest therein and obtaining an
acknowledgement from such person that it is holding such Collateral for the
benefit of CTI. To the extent permitted by applicable law, until such time as
the amounts due to CTI as set forth in Section 3 are paid in full, the Unilens
Companies authorize CTI to execute and/or file financing or continuation
statements as required under the UCC or filings with the United States Patent
and Trademark Office or United States Copyright Office (or any successor officer
or any similar office in any other country), in each case without the Unilens
Companies' signature appearing thereon, for the purpose of perfecting,
confirming, continuing, enforcing or protecting CTI's security interest granted
hereunder. The Unilens Companies agree that a carbon, photographic, photostatic
or other reproduction of this Agreement or of a financing statement is
sufficient as a financing statement.
(c) The Unilens Companies represent and warrant that the lien and security
interest granted to CTI as provided in this Agreement is valid and enforceable
and is subordinate only to the security interest granted by the Unilens
Companies in favor of UNIINVEST Holding AG (formerly known as EBC Zurich AG)
which secures an existing debt owed by the Unilens Companies to UNIINVEST
Holding AG in the amount of US$450,000.00, plus interest. CTI agrees that the
security interest granted to CTI hereunder is subordinate to that of UNIINVEST
Holding AG described above. On or prior to the Effective Date, the Unilens
Companies shall deliver to CTI true and complete copies of the documents
evidencing the debt owed by the Unilens Companies to UNIINVEST Holding AG and
the security interest securing such debt, as well as a certification by Unilens
USA's Chief Financial Officer setting forth the current amount of the debt owed
to UNIINVEST Holding AG. From and after the Effective Date the Unilens Companies
shall not, without the prior written consent of CTI, (i) grant or agree to any
lien or security interest in favor of any person or entity other than CTI and
the existing lien and security interest in favor or UNIINVEST Holding AG, except
in connection with the entry by either of the Unilens Companies into equipment
leases having an aggregate value of not more than US$25,000.00 per year, or (ii)
permit the debt (including both principal and interest) owed by the Unilens
Companies to UNIINVEST Holding AG to exceed in total US$500,000.00.
(d) Following payment in full of all of the obligations of the Unilens
Companies under Sections 3 and 11, CTI, on request of the Unilens Companies,
shall execute and deliver to the Unilens Companies such termination statements
or other instruments in proper form under the UCC, the rules and regulations of
the United States Patent and Trademark Office and United
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States Copyright Office and any relevant laws of the Province of British
Columbia as are necessary or desirable to evidence the termination of the
security interest and lien created pursuant to this Section 4.
5. Release of Unilens Companies. Effective on the Effective Date, CTI, on
behalf of itself and its subsidiaries, shareholders and affiliates and its and
their successors and assigns and any other parties who may purport to claim
through them (together, the "CTI Releasors"), releases and forever discharges,
Unilens USA, Unilens Vision and their respective officers, directors, employees,
agents, shareholders, affiliates and attorneys, and their respective successors
and assigns (together, the "Unilens Releasees"), from any and all actions,
causes of action, proceedings, suits, debts, dues, sums of money, accounts,
covenants, controversies, agreements, promises, damages, judgments, executions,
costs, claims, liabilities and demands of any nature whatsoever (together,
"Claims"), in law or equity, which the CTI Releasors ever had, now have or
hereafter can, shall or may have against the Unilens Releasees for, by reason
of, arising out of, or in connection with, any matter, cause or thing whatsoever
from the beginning of the world to the date of this Agreement, including,
without limitation, the Prior Agreements; provided, however, that the foregoing
release shall not apply to the respective obligations of the Unilens Companies
under this Agreement.
6. Release of CTI. Effective on the Effective Date, each of Unilens USA
and Unilens Vision, on behalf of itself and its subsidiaries, shareholders and
affiliates and its and their successors and assigns and any other parties who
may purport to claim through them (together, the "Unilens Releasors"), releases
and forever discharges, CTI and its officers, directors, employees, agents,
shareholders, affiliates and attorneys, and their respective successors and
assigns (together, the "CTI Releasees"), from any and all Claims, in law or
equity, which the Unilens Releasors ever had, now have or hereafter can, shall
or may have against the CTI Releasees for, by reason of, arising out of, or in
connection with, any matter, cause or thing whatsoever from the beginning of the
world to the date of this Agreement, including, without limitation, the Prior
Agreements; provided, however, that the foregoing release shall not apply to
CTI's obligations under this Agreement.
7. Scope of Releases. The releases set forth in Sections 5 and 6 extend
to all Claims based on conduct that occurred prior to the Effective Date,
whether now known or unknown, existing or non-existing, mature or unmatured,
asserted or unasserted. The effect of such releases is without territorial
limitation and applies in all jurisdictions. Following the Effective Date, none
of the parties shall institute or prosecute any action or proceeding based on
any Claim released in Sections 5 or 6. Nothing in this Agreement shall be
construed as an admission of any liability by either party. Further, nothing in
this Agreement shall act as a discharge or release of any claim that may arise
with respect to the provisions of this Agreement or shall prevent any party from
commencing any action or proceeding to enforce any such provision.
8. Intentions of the Parties. It is the intention of the parties that
this Agreement be a full and final accord and satisfaction and mutual, general
release of any Claims that any of the CTI Releasors or the Unilens Releasors
have against any of the Unilens Releasees or the CTI Releasees, respectively. In
order to implement a full release of all Claims, each party acknowledges that
this Agreement is intended to include in its effect any Claim which it does not
know or suspect to exist in its favor that are based on conduct that occurred
prior to the Effective
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Date, that this Agreement contemplates the extinguishing of any such Claim and
that the provisions of Sections 5 and 6 shall remain in effect as full releases
notwithstanding any discovery of any additional or different facts.
9. Confidentiality. The parties agree that the content and existence of
this Agreement and all information and communications pertaining thereto, shall
be held in strict confidence; except (i) as may be required to be disclosed by
any party pursuant to applicable securities laws or the rules and regulations of
any stock exchange, (ii) as may be required by the parties' respective
institutional lenders, auditors, financial consultants and insurance carriers,
(iii) as may be disclosed to a party's counsel for purposes of seeking legal
advice; (iv) as may be appropriate by a party to enforce its rights under this
Agreement or (v) as required by subpoena or an order of a court, tribunal or
governmental authority of competent jurisdiction; provided, however, that at
least five days prior to any such disclosure pursuant to this clause (v) of this
Section 9, the party of whom information is requested notifies the others in
writing, of the specific information, if any, that it proposes to disclose in
order to afford the other parties an opportunity to challenge the disclosure
requirement or seek an appropriate protective order.
10. Representations and Warranties. Each party represents and warrants to
the others that (a) it owns all right, title and interest in and to all Claims
released by it hereunder and has not assigned any such Claim or any interest
therein to any other party, (b) no third party is currently claiming or
threatening to claim any right, title or interest in or to any of the Claims
released by it hereunder (including in the case of CTI, Optical Associates,
Limited Partnership), (c) it has full power and authority, and has taken all
corporate action necessary to authorize it, to enter into, and perform its
obligations under, this Agreement and (d) it has received independent legal
advice from its attorneys with respect to the advisability of making the
settlement, release and waivers provided in this Agreement. Each party shall
indemnify, defend and hold harmless the others from any loss or liability
arising from any breach of any of its representations or warranties set forth in
this Section 10.
11. Payment of Costs. If the Unilens Companies, or either of them, breach
any of their obligations under this Agreement, including, without limitation,
any of their payment obligations set forth in Section 3, CTI shall be entitled
to recover from the Unilens Companies any costs and expenses, including
reasonable attorneys' fees, that CTI incurs in connection with any legal
proceedings or other action that CTI takes to enforce its rights under this
Agreement.
12. Miscellaneous.
(a) Entire Agreement. This Agreement sets forth the entire understanding
of the parties with respect to its subject matter, merges and supersedes any
prior or contemporaneous understandings with respect to its subject matter, and
shall not be modified or terminated except by a written instrument executed by
CTI and each of the Unilens Companies. Failure of any party to enforce any
provision of this Agreement shall not be construed as a waiver of its rights
under such or any other provision.
(b) Successors and Assigns. This Agreement shall be binding on,
enforceable against and inure to the benefit of the parties and their respective
successors and permitted assigns, and nothing herein is intended to confer any
right, remedy or benefit on any other person. No party
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may assign its rights or delegate its obligations hereunder without the written
consent of the others.
(c) Expenses. Each of the parties shall bear and pay, without any right of
reimbursement from any other party, all costs, expenses and fees incurred by it
or on its behalf incident to the preparation, execution and delivery of this
Agreement and the performance of such party's obligations hereunder, including,
without limitation, the fees and disbursements of attorneys retained by such
party in connection with the transactions contemplated in this Agreement, and
shall indemnify and hold harmless the other parties from and against all such
fees, costs and expenses; provided, however, that nothing herein shall in any
way effect CTI's rights under Section 11.
(d) Communications. All notices and other communications given under this
Agreement shall be in writing and shall be deemed to have been duly given (a)
when delivered by hand or by Fedex or a similar overnight courier to, (b) five
days after being deposited in any United States post office enclosed in a
postage prepaid registered or certified envelope addressed to, or (c) when
successfully transmitted by fax (with a confirming copy of such communication to
be sent as provided in (a) or (b) above) to, the party for whom intended, at the
address or fax number for such party set forth below, or to such other address
or fax number as may be furnished by such party by notice in the manner provided
herein; provided, however, that any notice of change of address or fax number
shall be effective only upon receipt.
If to CTI: If to either Unilens Company:
Competitive Technologies, Inc. Unilens Corp. USA.
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: President Attention: ▇▇. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇ Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
with a copy to: with a copy to:
▇▇▇▇▇ ▇. ▇▇▇▇▇, Esq. Salans
▇▇▇▇▇ and Wolf, P.C. ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ Attention: ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇, Esq.
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇ Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
(e) Governing Law. This Agreement shall in all respects be governed by and
construed and enforced in accordance with the laws of the State of Connecticut
applicable to agreements made and fully to be performed in such state, without
giving effect to conflicts of law principles.
(f) Jurisdiction and Venue. The parties agree that any legal action or
proceeding concerning this Agreement or its enforcement shall only be brought in
the Federal or State courts in Connecticut, and accordingly, the parties consent
to the jurisdiction and exclusive venue of such courts with respect to any legal
action or proceeding concerning this Agreement or its enforcement.
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(g) Savings Clause. If any provision of this Agreement is held to be
invalid or unenforceable by any court or tribunal of competent jurisdiction, the
remainder of this Agreement shall not be affected thereby, and such provision
shall be carried out as nearly as possible according to its original terms and
intent to eliminate such invalidity or unenforceability, the parties intending
that any otherwise invalid provision of this Agreement may be judicially
reformed so as to be carried out as nearly as possible according to its original
terms.
(h) Counterparts. This Agreement may be executed in multiple counterparts,
each of which shall be deemed an original, but all of which together shall
constitute one and the same instrument. Signatures transmitted by facsimile
shall have the same force and effect as original signatures.
(i) Construction. Headings contained in this Agreement are for convenience
only and shall not be used in the interpretation of this Agreement. References
herein to Sections are to the sections of this Agreement. As used herein, the
singular includes the plural, and the masculine, feminine and neuter gender each
includes the others where the context so indicates.
IN WITNESS WHEREOF, each of the parties has executed this Agreement as of
the date first set forth above.
COMPETITIVE TECHNOLOGIES, INC. UNILENS CORP USA.
By /s/ ▇▇▇▇ Nano By /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
------------------------------------ ------------------------------------
▇▇▇▇ Nano, President ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President
UNILENS VISION, INC.
By /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
------------------------------------
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President
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ACKNOWLEDGEMENTS
STATE OF CONNECTICUT )
) ss.:
COUNTY OF FAIRFIELD )
The foregoing instrument was acknowledged before me this 17/th/ day of
October 2003, by ▇▇▇▇ Nano, President of Competitive Technologies, Inc., a
Delaware corporation, on behalf of the corporation. ▇▇▇▇ Nano is _____
personally known to me or has _____ produced _________________________ as
identification.
/s/ ▇▇▇▇▇▇▇▇ Frauenhofr
--------------------------------------
Notary Public
STATE OF FLORIDA )
) ss.:
COUNTY OF PALM BEACH )
The foregoing instrument was acknowledged before me this 17/th/ day of
October 2003, by ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President of Unilens Corp. USA, a Delaware
corporation, on behalf of the corporation. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ is _____ personally
known to me or has produced Florida Drivers License as identification.
/s/ April ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
--------------------------------------
Notary Public
STATE OF FLORIDA )
) ss.:
COUNTY OF PALM BEACH )
The foregoing instrument was acknowledged before me this 17/th/ day of
October 2003, by ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President of Unilens Vision, Inc., a British
Columbia corporation, on behalf of the corporation. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ is _____
personally known to me or has produced Florida Drivers License as
identification.
/s/ April ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
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Notary Public
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