Non-Exclusive License Agreement - VISX Inc. and Medjet Inc.
NON-EXCLUSIVE LICENSE AGREEMENT
THIS NON-EXCLUSIVE LICENSE AGREEMENT (the "Agreement") is entered into
as of August 17, 2001, by and between VISX, Incorporated ("VISX"), a Delaware
corporation, and Medjet Inc. ("Medjet"), a Delaware corporation.
Concurrently with the execution of this Agreement, VISX, Orion
Acquisition Corp., a Delaware corporation and wholly owned subsidiary of VISX
("Merger Sub") and Medjet have entered into an Agreement and Plan of Merger and
Reorganization, dated as of August 17, 2001 (as the same may be amended from
time to time, the "Merger Agreement"), which provides, subject to the
satisfaction or waiver of the conditions set forth in the Merger Agreement, for
the merger (the "Merger") of Merger Sub with and into Medjet.
NOW, THEREFORE, in consideration of the execution and delivery by VISX
of the Merger Agreement and the mutual covenants, conditions and agreements
herein contained, the parties hereto hereby agree as follows, effective as of
the Commencement Date (as defined below):
1.1 "Affiliate" means any corporation or other entity that is
directly or indirectly controlling, controlled by or under the common control
with a party hereto for so long as such control exists. For the purpose of this
Agreement, "control" shall mean the direct or indirect ownership of fifty
percent (50%) or more of the outstanding shares or other voting rights of the
subject entity to elect directors, or if not meeting the preceding, any entity
owned or controlled by or owning or controlling at the maximum control or
ownership right permitted in the country where such entity exists.
1.2 "Licensee" means a third party to whom VISX has granted a
license or sublicense under the Medjet Patents, to make, have made, import, use,
sell, offer for sale or otherwise exploit a Product. "Licensee" includes a third
party to whom VISX has granted the right to distribute a Product.
1.3 "Medjet Patents" means (i) all patents owned by Medjet or
licensed to Medjet (to the extent Medjet may grant a license or sublicense to
such patent) as of the date hereof with the right to grant sublicenses; and (ii)
all patents issued to Medjet claiming an invention first reduced to practice
prior to the expiration of the R&D Period.
1.4 "Medjet Technology" means technological models, algorithms,
manufacturing processes, design drawings (whether manual or electronic), design
processes, prototypes, behavioral models, schematics, test vectors, know-how,
computer and electronic data processing and other apparatus programs and
software, databases and documentation thereof, trade secrets, technical
information, specifications, drawings, records, documentation, works of
authorship or other creative works, ideas, knowledge, data or the like that is
owned by or licensed to Medjet (to the extent Medjet may grant a license or
sublicense to such intellectual property) as of the date hereof,
including without limitation information useful to the practice of the
inventions claimed in the Medjet Patents.
1.5 "Net Sales" means the amounts received by VISX or its
Affiliates or Licensees for the use or sale of Products to bona fide independent
third parties, less (i) normal and customary rebates, and cash, trade and
quantity discounts; (ii) sales, use and/or other excise taxes or duties; (iii)
the actual cost of any packaging and shipping, including insurance; and (iv)
amounts actually allowed or credited due to defects, returns, rejections,
wholesale chargebacks or retroactive price reductions.
1.6 "Products" means any equipment, products, processes or
methods covered by or that exploit or make use of one or more Valid Claims or
that exploit or make use of the Medjet Technology.
1.7 "R&D Period" means the period beginning on the date hereof
and continuing for one year hereafter.
1.8 "Valid Claim" means a claim of any Medjet patent that has not
expired, lapsed, or been held invalid, unpatentable or unenforceable.
2. LICENSE GRANTS.
2.1 Medjet Technology. Subject to the provisions of Section 6,
Medjet hereby grants VISX a non-exclusive, worldwide, perpetual, irrevocable
license, with the right to grant non-exclusive sublicenses, to use, reproduce,
translate, distribute (by any means known or hereafter developed, including
electronic distribution), market, make derivative works of and otherwise exploit
the Medjet Technology.
2.2 Medjet Patents. Subject to the provisions of Section 6,
Medjet hereby grants VISX a non-exclusive, worldwide, perpetual, irrevocable
license, with the right to grant non-exclusive sublicenses, under the Medjet
Patents, to make, sell, offer for sale, import and use products, and to perform
processes and methods, that embody the inventions described in the Medjet
3.1 Royalty on Net Sales. VISX shall pay to Medjet a royalty of
five (5%) of Net Sales of Products.
3.2 Computation of Royalties. All sales of Products between VISX
and any of its Affiliates (other than for end use with patients or customers)
will be disregarded for purposes of computing Net Sales and royalties due Medjet
under this Section 3, and in such instances royalties will be payable only upon
sales or licenses to, or other use by, independent third parties. Nothing herein
shall obligate VISX to pay Medjet royalties more than once on any unit of a
4. PAYMENTS; REPORTS AND RECORDS.
4.1 Timing of Payments. All amounts due Medjet pursuant to
Section 3 shall be paid every 3 months ("Quarterly Period") within 30 days after
the last day of each Quarterly Period.
4.2 Royalty Reports. VISX shall deliver to Medjet with each
royalty payment a report setting forth the total Net Sales of the Products for
the Quarterly Period and the computation of the royalty amount. Such reports
shall be confidential information of VISX.
4.3 Inspection of Books and Records. Not more than once in any 12
month period, Medjet may have VISX's and its Affiliates' relevant books and
records for the prior 12-month period audited, by an independent certified
public accounting firm of Medjet's choosing and reasonably acceptable to VISX,
to verify the accuracy of VISX's royalty payments. The independent certified
public accounting firm must enter into a confidentiality agreement reasonably
acceptable to VISX and may not disclose any information learned in the course of
such audit other than the existence and amount of underpayment, if any. Such
audit must be conducted during VISX's normal business hours in a manner that
does not unduly interfere with VISX's normal business activities. If any audit
discloses underpayment of royalties, VISX shall promptly pay Medjet the
royalties due plus interest at an annual rate of 6%. Medjet is responsible for
all expenses it incurs in connection with any audit unless the audit discloses
an underpayment of royalties in excess of 15%, in which case, VISX shall
promptly reimburse Medjet for all of such audit expenses.
4.4 Taxes. All royalty amounts required to be paid to Medjet
pursuant to this Agreement may be paid with deduction for withholding for or on
account of any taxes (other than taxes imposed on or measured by net income) or
similar governmental charge ("Withholding Taxes"). At Medjet's request, VISX
shall provide Medjet a certificate evidencing payment of any Withholding Taxes
hereunder and shall reasonably assist Medjet to obtain the benefit of any
applicable tax treaty.
5. TERM. This Agreement shall commence (the date of such commencement
being herein referred to as the "Commencement Date") upon termination of the
Merger Agreement in accordance with the applicable provisions and circumstances
described in Section 7.3(a) of the Merger Agreement, and will continue in full
force and effect until the expiration of the last to expire of the Medjet
Patents; provided, however, that VISX's license to the Medjet Technology will
survive the expiration (but not the earlier termination) of this Agreement if
this Agreement were otherwise in effect on the date of the last of the Medjet
patents to expire.
6. BREACH. If VISX shall breach any of its material obligations
hereunder, which breach shall continue uncured for more than 30 days after
written notice thereof, the licenses granted under Section 2 shall immediately
terminate. Termination shall not affect VISX's obligations to pay any amounts
due or payable to Medjet for Net Sales made prior to the date of termination.
7. MISCELLANEOUS PROVISIONS.
7.1 Governing Law. This Agreement, and any dispute arising from
the performance or breach hereof, will be governed by and construed and enforced
in accordance with the laws of the State of California, without reference to
conflicts of laws principles. The prevailing party in any legal action to
enforce or interpret this Agreement shall be entitled to reasonable costs and
attorneys' fees and expenses in connection therewith.
7.2 Independent Contractors. The relationship of the parties
hereto is that of independent contractors. The parties hereto are not deemed to
be agents, partners or joint venturers of the others for any purpose as a result
of this Agreement or the transactions contemplated hereby.
7.3 Assignment. Neither party may assign this Agreement without
the prior written consent of the other party, except that either party may
assign this Agreement without such consent to an entity that acquires all or
substantially all of the business or assets of such party pertaining to the
subject matter hereof, whether by merger, reorganization, acquisition, sale or
otherwise. Any other attempted assignment of this Agreement will be void.
Subject to the foregoing, this Agreement will be binding upon and inure to the
benefit of the parties and their successors, heirs and assigns.
7.4 Notices. All notices, requests and other communications
hereunder will be in writing and will be personally delivered or sent by
telecopy or other electronic facsimile transmission or by registered or
certified mail, return receipt requested, postage prepaid, or overnight courier,
in each case to the respective address appearing below each party's signature,
or such other address as may be specified in writing to the other party hereto.
7.5 Partial Invalidity. If any provision of this Agreement is
held to be invalid by a court of competent jurisdiction, then the remaining
provisions will remain, nevertheless, in full force and effect. The parties
agree to renegotiate in good faith any provision held invalid and to be bound by
the mutually agreed substitute provision in order to give the most approximate
effect originally intended by the parties.
7.6 Severability. In the event that any provisions of this
Agreement are determined to be invalid or unenforceable by a court of competent
jurisdiction, the remainder of the Agreement will remain in full force and
effect without said provision. In such event, the parties will in good faith
negotiate a substitute clause for any provision declared invalid or
unenforceable, which will most nearly approximate the intent of the parties in
entering this Agreement.
7.7 Waiver. It is agreed that no waiver by either party hereto of
any breach or default of any of the covenants or agreements herein set forth
will be deemed a waiver as to any subsequent and/or similar breach or default.
7.8 Complete Agreement. This Agreement (together with the
applicable provisions of the Merger Agreement) constitutes the entire agreement,
both written and oral, between the parties with respect to the subject matter
hereof, and that all prior agreements respecting
the subject matter hereof, either written or oral, expressed or implied, are
merged and canceled, and are null and void and of no effect. No amendment or
change hereof or addition hereto will be effective or binding on either of the
parties hereto unless reduced to writing and duly executed on behalf of both
7.9 Headings. The captions to the Sections hereof are not a part
of this Agreement, but are included merely for convenience of reference only and
will not affect its meaning or interpretation.
7.10 Counterparts. This Agreement may be executed in
counterparts, each of which will be deemed an original and which together will
constitute one instrument.
7.11 Expiration. This Agreement shall expire and be of no force
and effect in the event the Merger Agreement is terminated and the provisions
set forth in Section 7.3(a) of the Merger Agreement are not applicable.
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IN WITNESS WHEREOF, the undersigned have executed this Agreement on the
date first above written.
Name: Derek A. Bertocci
Title: Vice President, Controller
Address for VISX, Incorporated: With a copy to:
VISX, Incorporated Wilson Sonsini Goodrich & Rosati
3400 Central Expressway 650 Page Mill Road
Santa Clara, CA 95051-0703 Palo Alto, CA 94304-1050
Facsimile: (408) 773-7051 Facsimile: (650) 493-6811
Attention: Derek A. Bertocci Attention: John V. Roos, Esq.
Name: Dr. Eugene I. Gordon
Title: Chief Executive Officer
Address for Medjet Inc.: With a copy to:
Medjet Inc. Kelley Drye & Warren LLP
1090 King George Post Road, Suite 301 101 Park Avenue
Edison, New Jersey 08837 New York, New York 10178-0002
Facsimile: (732) 738-3984 Facsimile: (212) 808-7897
Attention: Dr. Eugene A. Gordon Attention: Jane E. Jablons, Esq.
[SIGNATURE PAGE TO NON-EXCLUSIVE LICENSE AGREEMENT]