{"id":42602,"date":"2015-09-17T11:25:58","date_gmt":"2015-09-17T16:25:58","guid":{"rendered":"https:\/\/content.findlaw-admin.com\/ability-legal\/contracts\/uncategorized\/non-exclusive-license-agreement-visx-inc-and-medjet-inc.html"},"modified":"2015-09-17T11:25:58","modified_gmt":"2015-09-17T16:25:58","slug":"non-exclusive-license-agreement-visx-inc-and-medjet-inc","status":"publish","type":"corporate_contracts","link":"https:\/\/corporate.findlaw.com\/contracts\/operations\/non-exclusive-license-agreement-visx-inc-and-medjet-inc.html","title":{"rendered":"Non-Exclusive License Agreement &#8211; VISX Inc. and Medjet Inc."},"content":{"rendered":"<pre>                        NON-EXCLUSIVE LICENSE AGREEMENT\n\n        THIS NON-EXCLUSIVE LICENSE AGREEMENT (the \"Agreement\") is entered into\nas of August 17, 2001, by and between VISX, Incorporated (\"VISX\"), a Delaware\ncorporation, and Medjet Inc. (\"Medjet\"), a Delaware corporation.\n\n                                   BACKGROUND\n\n        Concurrently with the execution of this Agreement, VISX, Orion\nAcquisition Corp., a Delaware corporation and wholly owned subsidiary of VISX\n(\"Merger Sub\") and Medjet have entered into an Agreement and Plan of Merger and\nReorganization, dated as of August 17, 2001 (as the same may be amended from\ntime to time, the \"Merger Agreement\"), which provides, subject to the\nsatisfaction or waiver of the conditions set forth in the Merger Agreement, for\nthe merger (the \"Merger\") of Merger Sub with and into Medjet.\n\n        NOW, THEREFORE, in consideration of the execution and delivery by VISX\nof the Merger Agreement and the mutual covenants, conditions and agreements\nherein contained, the parties hereto hereby agree as follows, effective as of\nthe Commencement Date (as defined below):\n\n        1. DEFINITIONS.\n\n               1.1 \"Affiliate\" means any corporation or other entity that is\ndirectly or indirectly controlling, controlled by or under the common control\nwith a party hereto for so long as such control exists. For the purpose of this\nAgreement, \"control\" shall mean the direct or indirect ownership of fifty\npercent (50%) or more of the outstanding shares or other voting rights of the\nsubject entity to elect directors, or if not meeting the preceding, any entity\nowned or controlled by or owning or controlling at the maximum control or\nownership right permitted in the country where such entity exists.\n\n               1.2 \"Licensee\" means a third party to whom VISX has granted a\nlicense or sublicense under the Medjet Patents, to make, have made, import, use,\nsell, offer for sale or otherwise exploit a Product. \"Licensee\" includes a third\nparty to whom VISX has granted the right to distribute a Product.\n\n               1.3 \"Medjet Patents\" means (i) all patents owned by Medjet or\nlicensed to Medjet (to the extent Medjet may grant a license or sublicense to\nsuch patent) as of the date hereof with the right to grant sublicenses; and (ii)\nall patents issued to Medjet claiming an invention first reduced to practice\nprior to the expiration of the R&amp;D Period.\n\n               1.4 \"Medjet Technology\" means technological models, algorithms,\nmanufacturing processes, design drawings (whether manual or electronic), design\nprocesses, prototypes, behavioral models, schematics, test vectors, know-how,\ncomputer and electronic data processing and other apparatus programs and\nsoftware, databases and documentation thereof, trade secrets, technical\ninformation, specifications, drawings, records, documentation, works of\nauthorship or other creative works, ideas, knowledge, data or the like that is\nowned by or licensed to Medjet (to the extent Medjet may grant a license or\nsublicense to such intellectual property) as of the date hereof,\n\n\n   2\n\nincluding without limitation information useful to the practice of the\ninventions claimed in the Medjet Patents.\n\n               1.5 \"Net Sales\" means the amounts received by VISX or its\nAffiliates or Licensees for the use or sale of Products to bona fide independent\nthird parties, less (i) normal and customary rebates, and cash, trade and\nquantity discounts; (ii) sales, use and\/or other excise taxes or duties; (iii)\nthe actual cost of any packaging and shipping, including insurance; and (iv)\namounts actually allowed or credited due to defects, returns, rejections,\nwholesale chargebacks or retroactive price reductions.\n\n               1.6 \"Products\" means any equipment, products, processes or\nmethods covered by or that exploit or make use of one or more Valid Claims or\nthat exploit or make use of the Medjet Technology.\n\n               1.7 \"R&amp;D Period\" means the period beginning on the date hereof\nand continuing for one year hereafter.\n\n               1.8 \"Valid Claim\" means a claim of any Medjet patent that has not\nexpired, lapsed, or been held invalid, unpatentable or unenforceable.\n\n        2. LICENSE GRANTS.\n\n               2.1 Medjet Technology. Subject to the provisions of Section 6,\nMedjet hereby grants VISX a non-exclusive, worldwide, perpetual, irrevocable\nlicense, with the right to grant non-exclusive sublicenses, to use, reproduce,\ntranslate, distribute (by any means known or hereafter developed, including\nelectronic distribution), market, make derivative works of and otherwise exploit\nthe Medjet Technology.\n\n               2.2 Medjet Patents. Subject to the provisions of Section 6,\nMedjet hereby grants VISX a non-exclusive, worldwide, perpetual, irrevocable\nlicense, with the right to grant non-exclusive sublicenses, under the Medjet\nPatents, to make, sell, offer for sale, import and use products, and to perform\nprocesses and methods, that embody the inventions described in the Medjet\nPatents.\n\n        3. CONSIDERATION.\n\n               3.1 Royalty on Net Sales. VISX shall pay to Medjet a royalty of\nfive (5%) of Net Sales of Products.\n\n               3.2 Computation of Royalties. All sales of Products between VISX\nand any of its Affiliates (other than for end use with patients or customers)\nwill be disregarded for purposes of computing Net Sales and royalties due Medjet\nunder this Section 3, and in such instances royalties will be payable only upon\nsales or licenses to, or other use by, independent third parties. Nothing herein\nshall obligate VISX to pay Medjet royalties more than once on any unit of a\nProduct.\n\n\n                                      -2-\n   3\n\n        4. PAYMENTS; REPORTS AND RECORDS.\n\n               4.1 Timing of Payments. All amounts due Medjet pursuant to\nSection 3 shall be paid every 3 months (\"Quarterly Period\") within 30 days after\nthe last day of each Quarterly Period.\n\n               4.2 Royalty Reports. VISX shall deliver to Medjet with each\nroyalty payment a report setting forth the total Net Sales of the Products for\nthe Quarterly Period and the computation of the royalty amount. Such reports\nshall be confidential information of VISX.\n\n               4.3 Inspection of Books and Records. Not more than once in any 12\nmonth period, Medjet may have VISX's and its Affiliates' relevant books and\nrecords for the prior 12-month period audited, by an independent certified\npublic accounting firm of Medjet's choosing and reasonably acceptable to VISX,\nto verify the accuracy of VISX's royalty payments. The independent certified\npublic accounting firm must enter into a confidentiality agreement reasonably\nacceptable to VISX and may not disclose any information learned in the course of\nsuch audit other than the existence and amount of underpayment, if any. Such\naudit must be conducted during VISX's normal business hours in a manner that\ndoes not unduly interfere with VISX's normal business activities. If any audit\ndiscloses underpayment of royalties, VISX shall promptly pay Medjet the\nroyalties due plus interest at an annual rate of 6%. Medjet is responsible for\nall expenses it incurs in connection with any audit unless the audit discloses\nan underpayment of royalties in excess of 15%, in which case, VISX shall\npromptly reimburse Medjet for all of such audit expenses.\n\n               4.4 Taxes. All royalty amounts required to be paid to Medjet\npursuant to this Agreement may be paid with deduction for withholding for or on\naccount of any taxes (other than taxes imposed on or measured by net income) or\nsimilar governmental charge (\"Withholding Taxes\"). At Medjet's request, VISX\nshall provide Medjet a certificate evidencing payment of any Withholding Taxes\nhereunder and shall reasonably assist Medjet to obtain the benefit of any\napplicable tax treaty.\n\n        5. TERM. This Agreement shall commence (the date of such commencement\nbeing herein referred to as the \"Commencement Date\") upon termination of the\nMerger Agreement in accordance with the applicable provisions and circumstances\ndescribed in Section 7.3(a) of the Merger Agreement, and will continue in full\nforce and effect until the expiration of the last to expire of the Medjet\nPatents; provided, however, that VISX's license to the Medjet Technology will\nsurvive the expiration (but not the earlier termination) of this Agreement if\nthis Agreement were otherwise in effect on the date of the last of the Medjet\npatents to expire.\n\n        6. BREACH. If VISX shall breach any of its material obligations\nhereunder, which breach shall continue uncured for more than 30 days after\nwritten notice thereof, the licenses granted under Section 2 shall immediately\nterminate. Termination shall not affect VISX's obligations to pay any amounts\ndue or payable to Medjet for Net Sales made prior to the date of termination.\n\n\n                                      -3-\n   4\n\n        7. MISCELLANEOUS PROVISIONS.\n\n               7.1 Governing Law. This Agreement, and any dispute arising from\nthe performance or breach hereof, will be governed by and construed and enforced\nin accordance with the laws of the State of California, without reference to\nconflicts of laws principles. The prevailing party in any legal action to\nenforce or interpret this Agreement shall be entitled to reasonable costs and\nattorneys' fees and expenses in connection therewith.\n\n               7.2 Independent Contractors. The relationship of the parties\nhereto is that of independent contractors. The parties hereto are not deemed to\nbe agents, partners or joint venturers of the others for any purpose as a result\nof this Agreement or the transactions contemplated hereby.\n\n               7.3 Assignment. Neither party may assign this Agreement without\nthe prior written consent of the other party, except that either party may\nassign this Agreement without such consent to an entity that acquires all or\nsubstantially all of the business or assets of such party pertaining to the\nsubject matter hereof, whether by merger, reorganization, acquisition, sale or\notherwise. Any other attempted assignment of this Agreement will be void.\nSubject to the foregoing, this Agreement will be binding upon and inure to the\nbenefit of the parties and their successors, heirs and assigns.\n\n               7.4 Notices. All notices, requests and other communications\nhereunder will be in writing and will be personally delivered or sent by\ntelecopy or other electronic facsimile transmission or by registered or\ncertified mail, return receipt requested, postage prepaid, or overnight courier,\nin each case to the respective address appearing below each party's signature,\nor such other address as may be specified in writing to the other party hereto.\n\n               7.5 Partial Invalidity. If any provision of this Agreement is\nheld to be invalid by a court of competent jurisdiction, then the remaining\nprovisions will remain, nevertheless, in full force and effect. The parties\nagree to renegotiate in good faith any provision held invalid and to be bound by\nthe mutually agreed substitute provision in order to give the most approximate\neffect originally intended by the parties.\n\n               7.6 Severability. In the event that any provisions of this\nAgreement are determined to be invalid or unenforceable by a court of competent\njurisdiction, the remainder of the Agreement will remain in full force and\neffect without said provision. In such event, the parties will in good faith\nnegotiate a substitute clause for any provision declared invalid or\nunenforceable, which will most nearly approximate the intent of the parties in\nentering this Agreement.\n\n               7.7 Waiver. It is agreed that no waiver by either party hereto of\nany breach or default of any of the covenants or agreements herein set forth\nwill be deemed a waiver as to any subsequent and\/or similar breach or default.\n\n               7.8 Complete Agreement. This Agreement (together with the\napplicable provisions of the Merger Agreement) constitutes the entire agreement,\nboth written and oral, between the parties with respect to the subject matter\nhereof, and that all prior agreements respecting\n\n\n                                      -4-\n   5\n\nthe subject matter hereof, either written or oral, expressed or implied, are\nmerged and canceled, and are null and void and of no effect. No amendment or\nchange hereof or addition hereto will be effective or binding on either of the\nparties hereto unless reduced to writing and duly executed on behalf of both\nparties hereto.\n\n               7.9 Headings. The captions to the Sections hereof are not a part\nof this Agreement, but are included merely for convenience of reference only and\nwill not affect its meaning or interpretation.\n\n               7.10 Counterparts. This Agreement may be executed in\ncounterparts, each of which will be deemed an original and which together will\nconstitute one instrument.\n\n               7.11 Expiration. This Agreement shall expire and be of no force\nand effect in the event the Merger Agreement is terminated and the provisions\nset forth in Section 7.3(a) of the Merger Agreement are not applicable.\n\n\n\n\n                [remainder of the page intentionally left blank]\n\n\n\n\n                                      -5-\n   6\n\n        IN WITNESS WHEREOF, the undersigned have executed this Agreement on the\ndate first above written.\n\n\nVISX, INCORPORATED\n\n\n\nBy:____________________________________\n     Name:  Derek A. Bertocci\n     Title: Vice President, Controller\n\nAddress for VISX, Incorporated:                With a copy to:\n\nVISX, Incorporated                             Wilson Sonsini Goodrich &amp; Rosati\n3400 Central Expressway                        650 Page Mill Road\nSanta Clara, CA 95051-0703                     Palo Alto, CA 94304-1050\nFacsimile:  (408) 773-7051                     Facsimile:  (650) 493-6811\nAttention:  Derek A. Bertocci                  Attention:  John V. Roos, Esq.\n\n\n\nMEDJET INC.\n\n\n\nBy:____________________________________\n     Name:  Dr. Eugene I. Gordon\n     Title: Chief Executive Officer\n\nAddress for Medjet Inc.:                       With a copy to:\n\nMedjet Inc.                                    Kelley Drye &amp; Warren LLP\n1090 King George Post Road, Suite 301          101 Park Avenue\nEdison, New Jersey 08837                       New York, New York 10178-0002\nFacsimile:  (732) 738-3984                     Facsimile:  (212) 808-7897\nAttention:  Dr. Eugene A. Gordon               Attention:  Jane E. Jablons, Esq.\n\n\n               [SIGNATURE PAGE TO NON-EXCLUSIVE LICENSE AGREEMENT]\n\n\n\n<\/pre>\n","protected":false},"template":"","meta":{"_acf_changed":false,"_stopmodifiedupdate":true,"_modified_date":"","_cloudinary_featured_overwrite":false},"corporate_contracts_companies":[8178,9266],"corporate_contracts_industries":[9436],"corporate_contracts_types":[9613,9616],"class_list":["post-42602","corporate_contracts","type-corporate_contracts","status-publish","hentry","corporate_contracts_companies-medjet-inc","corporate_contracts_companies-visx-inc","corporate_contracts_industries-health__instruments","corporate_contracts_types-operations","corporate_contracts_types-operations__ip"],"acf":[],"_links":{"self":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts\/42602","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts"}],"about":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/types\/corporate_contracts"}],"wp:attachment":[{"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/media?parent=42602"}],"wp:term":[{"taxonomy":"corporate_contracts_companies","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_companies?post=42602"},{"taxonomy":"corporate_contracts_industries","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_industries?post=42602"},{"taxonomy":"corporate_contracts_types","embeddable":true,"href":"https:\/\/corporate.findlaw.com\/legal-api\/wp-json\/wp\/v2\/corporate_contracts_types?post=42602"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}