<PAGE>
AS FILED WITH THE SECURITIES AND EXCHANGE COMMISSION ON AUGUST 13, 1996
REGISTRATION NO. 333-09103
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
------------------------
AMENDMENT NO. 1
TO
FORM SB-2
REGISTRATION STATEMENT UNDER THE SECURITIES ACT OF 1933
------------------------
IMAGE GUIDED TECHNOLOGIES, INC.
(Name of small business issuer in its charter)
<TABLE>
<S> <C> <C>
COLORADO 3829 84-1139082
(State or jurisdiction of (Primary Standard Industrial (I.R.S. Employer
incorporation or organization) Classification Code Number) Identification
Number)
</TABLE>
------------------------
5710-B FLATIRON PARKWAY
BOULDER, COLORADO 80301
(303) 447-0248
(Address, including zip code, and telephone number, including area code, of
business and principal executive offices)
------------------------------
PAUL L. RAY, CHIEF EXECUTIVE OFFICER
IMAGE GUIDED TECHNOLOGIES, INC.
5710-B FLATIRON PARKWAY
BOULDER, COLORADO 80301
(303) 447-0248
(Name, address, including zip code, and telephone number, including area code,
of agent for service)
COPIES TO:
<TABLE>
<S> <C>
WILLIAM E. TANIS, ESQ. ROBERT S. BROWN, ESQ.
IRELAND, STAPLETON, PRYOR & PASCOE, BROCK, FENSTERSTOCK, SILVERSTEIN,
P.C. MCAULIFFE & WADE, LLC
1675 BROADWAY, 26TH FLOOR ONE CITICORP CENTER, 56TH FLOOR
DENVER, COLORADO 80202 NEW YORK, NEW YORK 10022-4614
(303) 623-2700 (212) 371-2000
</TABLE>
------------------------
APPROXIMATE DATE OF PROPOSED SALE TO PUBLIC: As soon as practicable after
the effective date of this Registration Statement.
If any of the securities being registered on this Form are to be offered on
a delayed or continuous basis pursuant to Rule 415 under the Securities Act of
1933, check the following box. /X/
If this Form is filed to register additional securities for an offering
pursuant to Rule 462(b) under the Securities Act, check the following box and
list the Securities Act registration number of the earlier effective
registration statement for the same offering. / /
If this Form is a post-effective amendment filed pursuant to Rule 462(c)
under the Securities Act, check the following box and list the Securities Act
registration statement number of the earlier effective registration statement
for the same offering. / /
If delivery of the prospectus is expected to be made pursuant to Rule 434,
please check the following box. / /
------------------------
THE REGISTRANT HEREBY AMENDS THIS REGISTRATION STATEMENT ON SUCH DATE OR
DATES AS MAY BE NECESSARY TO DELAY ITS EFFECTIVE DATE UNTIL THE REGISTRANT SHALL
FILE A FURTHER AMENDMENT WHICH SPECIFICALLY STATES THAT THIS REGISTRATION
STATEMENT SHALL THEREAFTER BECOME EFFECTIVE IN ACCORDANCE WITH SECTION 8(A) OF
THE SECURITIES ACT OF 1933 OR UNTIL THE REGISTRATION STATEMENT SHALL BECOME
EFFECTIVE ON SUCH DATE AS THE COMMISSION, ACTING PURSUANT TO SAID SECTION 8(A),
MAY DETERMINE.
- --------------------------------------------------------------------------------
- --------------------------------------------------------------------------------
<PAGE>
PART II
INFORMATION NOT REQUIRED IN PROSPECTUS
ITEM 24. INDEMNIFICATION OF DIRECTORS AND OFFICERS.
Sections 7-109-102 and 7-109-107 of the Colorado Business Corporation Act
(the "CBCA") permit indemnification of directors, officers, employees,
fiduciaries and agents of corporations under certain conditions and subject to
certain limitations. The Registrant's Bylaws include provisions which require
the Registrant to indemnify its directors and officers to the fullest extent
permitted by the CBCA, including circumstances in which indemnification is
otherwise discretionary. The Registrant's Bylaws include a provision which
permits, but does not require, the Registrant to indemnify its employees and
agents under certain prescribed circumstances within certain prescribed
limitations. In addition, the Registrant maintains directors' and officers'
liability coverage to insure its indemnification of its directors and officers.
Section 8 of the Underwriting Agreement filed as Exhibit 1.1 hereto provides
for the indemnification by the Underwriters of the Registrant and its directors
and officers, and by the Registrant of the Underwriters, for certain liabilities
arising under the Securities Act of 1933, as amended (the "Securities Act"), or
otherwise.
ITEM 25. OTHER EXPENSES OF ISSUANCE AND DISTRIBUTION.
The following are the estimated expenses (other than underwriting discounts
and commissions) of the issuance and distribution of the securities being
registered, all of which will be paid by the Registrant.
<TABLE>
<S> <C>
SEC registration fee............................................. $ 3,128
NASD filing fee.................................................. *
Nasdaq listing Fee............................................... *
Blue Sky filing fees and expenses................................ *
Printing and engraving expenses.................................. *
Legal fees and expenses.......................................... *
Accounting fees and expenses..................................... *
Transfer agent and registrar fees................................ *
Premium on directors and officers liability insurance............ 58,000
Underwriter's non-accountable expense allowance**................ 180,000
Miscellaneous.................................................... *
---------
Total........................................................ $ 600,000
---------
---------
</TABLE>
- ------------------------
* To be supplied by amendment.
** Will increase to $207,000 if the Underwriter's over-allotment option is
exercised in full.
ITEM 26. RECENT SALES OF UNREGISTERED SECURITIES.
During the past three years, the Registrant has issued unregistered
securities in the transactions described below. Securities issued in such
transactions were offered and sold in reliance upon the exemption from
registration under Section 4(2) of the Securities Act, relating to sales by an
issuer not involving any public offering, Regulation D promulgated pursuant to
the Securities Act and/or Rule 701 promulgated under the Securities Act. The
sales of securities were made without the use of an underwriter and the
certificates evidencing the shares bear a restrictive legend permitting the
transfer thereof only upon registration of the shares or an exemption under the
Securities Act.
(1) On July 1, 1993 and April 5, 1994, the Registrant issued an aggregate of
1,804 shares of Common Stock (7,216 after the Registrant's December, 1994 four
for one stock split) to a director of the Registrant upon conversion of a note
payable by the Registrant to the director at a conversion price of $5.33 per
share for a total consideration of $9,615.32.
II-1
<PAGE>
(2) On March 25, 1994, the Registrant issued 6,000 shares of Common Stock
(24,000 after the Registrant's December, 1994 four for one stock split) to a
director of the Registrant upon exercise of a warrant at an exercise price of
$.40 per share for a total consideration of $2,400.
(3) On March 18, 1994, the Registrant issued 15,465 shares of Common Stock
(61,860 after the Registrant's December, 1994 four for one stock split) to 10
existing shareholders of the Registrant at a price of $5.33 per share for an
aggregate consideration of $82,428.45.
(4) On March 18, 1994, the Registrant issued an aggregate of 8,448 shares of
Common Stock (33,792 after the Registrant's December, 1994 four for one stock
split) to two directors of the Registrant, a partnership affiliated with one of
such directors, and an employee of the Registrant. Such issuances were made upon
the conversion of notes payable by the Registrant to said parties at a
conversion price of $5.33 per share for a total consideration of $45,006.52.
(5) Between March 18, 1994 and June 23, 1995, the Registrant issued an
aggregate of 36,395 shares of Common Stock (145,580 after the Registrant's
December, 1994 four for one stock split) to various employees, directors and a
consultant of the Registrant, in addition to a limited liability company
affiliated with one of such directors, at a price of $.01 per share for
aggregate consideration of $363.95, pursuant to the exercise of options
previously granted to such parties by the Registrant.
(6) On July 6, 1994, the Registrant issued 46,904 shares of Common Stock
(187,616 after the Registrant's December, 1994 four for one stock split) to a
director of the Company at a price of $5.33 per share in exchange for the
director's payment of a note payable by the Registrant to Vectra Bank in the
amount of $250,000.
(7) In July and August, 1994, the Registrant issued an aggregate of 101,024
shares of Common Stock and an aggregate of 83,332 shares of Series A Preferred
Stock pursuant to a private placement of such stock to six sophisticated
investors (404,096 and 333,328 shares, respectively, after the Registrant's
December, 1994 four for one stock split). The purchase price was $2.97 per share
for Common Stock and $12.00 per share for Series A Preferred Stock for an
aggregate purchase price of $1,300,000. One of the investors received his shares
in lieu of payment of a $300,000 note payable by the Registrant to such
investor.
(8) In May and June, 1996, the Registrant issued 337,500 shares of Common
Stock to five holders of outstanding notes payable by the Registrant upon the
exercise of warrants issued by the Registrant to such parties in connection with
their loans to the Registrant. The warrants were exercised at a price of $1.00
per share for an aggregate consideration of $337,500.
ITEM 27. EXHIBITS.
(a) Exhibits
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION
- ----------- ------------------------------------------------------------------------------------------------
<C> <S> <C>
1.1 -- Form of Underwriting Agreement.+
3.1 -- Amended and Restated Articles of Incorporation of the Company and Articles of Amendment and
Certificate of Correction thereto.+
3.2 -- Bylaws of the Company.+
4.1 -- Specimen Common Stock Certificate.*
5.1 -- Opinion of Ireland, Stapleton, Pryor & Pascoe, P.C.*
10.1 -- 1994 Stock Option Plan of the Company, as amended, and after the Company's December 1994 four
for one stock split.+
10.2 -- Form of Stock Option Agreement under the Company's 1994 Stock Option Plan.+
10.3 -- Registration Rights Agreement dated as of July 8, 1994, among the Company and holders of the
Company's Series A Preferred Stock.+
</TABLE>
II-2
<PAGE>
<TABLE>
<CAPTION>
EXHIBIT
NUMBER DESCRIPTION
- ----------- ------------------------------------------------------------------------------------------------
<C> <S> <C>
10.4 -- Form of Consultant Non-Disclosure Agreement used between the Company and consultants.+
10.5 -- Form of Employee Non-Disclosure and Inventions Agreement used between the Company and its
employees.+
10.6 -- Form of Promissory Notes payable by the Company to each of the Company's Lenders and form of
Extension Agreements thereto.+
10.7 -- Form of Security Agreement between the Company and each of the Company's Lenders.+
10.8 -- Form of Stock Purchase Warrants issued by the Company to each of the Company's Lenders.+
10.9 -- OEM Agreement dated as of April 25, 1996, between the Company and DeeMed International.**
10.10 -- Strategic Alliance Agreement dated as of February 27, 1995 between the Company and Surgical
Navigation Technologies, Inc. and letters regarding termination of such agreement.+
10.11 -- Equipment Lease Agreement between the Company and Machinery Systems, Inc., for a refurbished
Zeiss Coordinate Measuring Machine.+
10.12 -- Commercial Industrial Lease dated January 11, 1996, between the Company and Life Investors
Company of America.+
10.13 -- Domestic Sales Representation Agreement dated December 21, 1993, between the Company and Sandab,
Inc.+
10.14 -- Terms and Conditions of Sale between the Company and Carl Zeiss, Inc.**
10.15 -- Employment Agreement between the Company and Paul L. Ray and Amendment thereto.+
10.16 -- Employment Agreement between the Company and Robert E. Silligman.+
10.17 -- Employment Agreement between the Company and Waldean A. Schulz.+
10.18 -- Employment Agreement between the Company and Jeffrey J. Hiller.+
10.19 -- Lease between the Company and Raycon Properties.+
10.20 -- Form of Representative's Warrants.+
10.21 -- Letter Agreement dated June 24, 1992, between the Company and Giken Shoji Company, Ltd. and
notice of termination thereof.+
10.22 -- License Agreement dated as of August 1, 1996, between the Company and Vexcel Corporation.**
11.1 -- Statement re computation of earnings per share.+
16.1 -- Letter from Ernst & Young to the Commission.+
23.1 -- Consent of Independent Accountants.+
23.2 -- Consent of Ireland, Stapleton, Pryor & Pascoe, P.C. (included in Exhibit 5.1).*
23.3 -- Consent of Nikaido, Marmelstein, Murray & Oram.+
24.1 -- Power of Attorney (included in signature pages).+
27.1 -- Financial Data Schedule.+
</TABLE>
- ------------------------
* To be filed by amendment.
+ Previously filed.
** The Company has applied for confidential treatment with respect to portions
of this exhibit.
II-3
<PAGE>
ITEM 28. UNDERTAKINGS.
The undersigned Registrant hereby undertakes to provide to the Underwriters
at the closing specified in the Underwriting Agreement certificates in such
denominations and registered in such names as required by the Underwriters to
permit prompt delivery to each purchaser.
Insofar as indemnification for liabilities arising under the Securities Act
of 1933 may be permitted to directors, officers and controlling persons of the
Registrant pursuant to the foregoing provisions, or otherwise, the Registrant
has been advised that in the opinion of the Securities and Exchange Commission
such indemnification is against public policy as expressed in the Securities Act
and is, therefore, unenforceable. In the event that a claim for indemnification
against such liabilities (other than the payment by the Registrant of expenses
incurred or paid by a director, officer or controlling person of the Registrant
in the successful defense of any action, suit or proceeding) is asserted by such
director, officer or controlling person in connection with the securities being
registered, the Registrant will, unless in the opinion of its counsel the matter
has been settled by controlling precedent, submit to a court of appropriate
jurisdiction the question whether such indemnification by it is against public
policy as expressed in the Securities Act and will be governed by the final
adjudication of such issue.
The undersigned Registrant hereby undertakes that:
(1) For purposes of determining any liability under the Securities Act of
1933, the information omitted from the form of prospectus filed as part of this
Registration Statement in reliance upon Rule 430A and contained in a form of
prospectus filed by the Registrant pursuant to Rule 424(b)(1) or (4) or 497(h)
under the Securities Act shall be deemed to be part of this Registration
Statement as of the time it was declared effective.
(2) For the purpose of determining any liability under the Securities Act,
each post-effective amendment that contains a form of prospectus shall be deemed
to be a new Registration Statement relating to the securities offered therein,
and the offering of such securities at that time shall be deemed to be the
initial bona fide offering thereof.
(3) It will:
(a) File, during any period in which it offers or sells securities, a
post-effective amendment to this Registration Statement to:
(i) Include any prospectus required by section 10(a)(3) of the
Securities Act;
(ii) Reflect in the prospectus any facts or events which,
individually or together, represent a fundamental change in the
information in the Registration Statement; and notwithstanding the
foregoing, any increase or decrease in volume of securities offered (if
the total dollar value of securities offered would not exceed that which
was registered) and any deviation from the low or high end of the
estimated maximum offering range may be reflected in the form of
prospectus filed with the Commission pursuant to Rule 424(b) if, in the
aggregate, the changes in the volume and price represent no more than a
20% change in the maximum aggregate offering price set forth in the
"Calculation of Registration Fee" table in the effective Registration
Statement.
(iii) Include any additional or changed material information on the
plan of distribution.
(b) For determining liability under the Securities Act, treat each
post-effective amendment as a new Registration Statement of the securities
offered, and the offering of the securities at that time to be the initial
bona fide offering.
(c) File a post-effective amendment to remove from registration any of
the securities that remain unsold at the end of the offering.
II-4
<PAGE>
SIGNATURES
In accordance with the requirements of the Securities Act of 1933, the
Registrant certifies that it has reasonable grounds to believe that it meets all
the requirements of filing on Form SB-2 and authorized this Amendment No. 1 to
the Registration Statement to be signed on its behalf by the undersigned, in
Boulder, Colorado, on this 13th day of August, 1996.
IMAGE GUIDED TECHNOLOGIES, INC.
By: /s/ PAUL L. RAY
-----------------------------------
Paul L. Ray, Chief Executive
Officer
IN ACCORDANCE WITH THE REQUIREMENTS OF THE SECURITIES ACT OF 1933, THIS
AMENDMENT NO. 1 TO THE REGISTRATION STATEMENT WAS SIGNED BY THE FOLLOWING
PERSONS IN THE CAPACITIES AND ON THE DATES STATED.
SIGNATURES TITLE DATE
- ----------------------------------- ------------------------- ----------------
/s/ PAUL L. RAY
- ----------------------------------- Principal Executive August 13, 1996
Paul L. Ray Officer and Director
*
- ----------------------------------- President August 13, 1996
Robert E. Silligman
* Principal Financial
- ----------------------------------- Officer and Principal August 13, 1996
Jeffrey J. Hiller Accounting Officer
*
- ----------------------------------- Vice President, August 13, 1996
Waldean A. Schulz Technology and Director
*
- ----------------------------------- Director August 13, 1996
Ray L. Hauser
*
- ----------------------------------- Director August 13, 1996
Clifford F. Frith
*
- ----------------------------------- Director August 13, 1996
Derace Schaffer
*
- ----------------------------------- Director August 13, 1996
Robert Hamilton
*
- ----------------------------------- Director August 13, 1996
David G. Sengpiel
*By /s/ PAUL L.
RAY
- -----------------------------------
Paul L. Ray
ATTORNEY-IN-FACT
II-5
<PAGE>
EXHIBIT 10.9
The brackets ("[ ]") which appear in various places in the following exhibit
indicate areas where confidential information has been redacted by the Company.
Such redacted information is the subject of a request for confidential treatment
and is therefore being filed separately with the Commission.
<PAGE>
OEM AGREEMENT
BETWEEN DEEMED INTERNATIONAL AND IMAGE GUIDED TECHNOLOGIES, INC.
OEM AGREEMENT, entered into as of April 25, 1996 (the "Effective Date"), between
IMAGE GUIDED TECHNOLOGIES, INC. ("IGT"), a Colorado corporation with offices at
5710-B Flatiron Parkway, Boulder, CO 80301, and DEEMED INTERNATIONAL, with
registered offices at 16, rue de Choiseul, 75002 Paris, France, the original
equipment manufacturer ("OEM").
1. DEFINITIONS.
As used herein, the following words and phrases shall have the following
meanings:
1.1. Confidential Information" means that information which relates to IGT's -
or OEM's according to the context - businesses, customers, products and
plans which had been created by or for IGT - or OEM according to the
context and that is not generally known to the public.
1.2. "Confidential Technology" means those portions of the processes, know-how,
technologies, and trade secrets embodied or included in the IGT Software
and/or IGT Hardware that have been developed by or for or acquired by IGT
and that are not generally known to competitors of IGT.
1.3. "Derivative" means any modification, derivative, translation, revision,
abridgement or adaptation of the IGT Product, the IGT Software or any
portion thereof.
1.4. "Distribution" means OEM's shipment of OEM's Products to OEM's customers
or OEM's use of OEM's Products within OEM's organization.
1.5. "Effective Date" means the date set forth on the first page hereof which
establishes the date on which the parties become legally bound by the terms
of this Agreement.
1.6. "End User" means a third party that is a customer, lessee, or distributee
of OEM to whom OEM sells OEM's Products or grants a sublicense to use IGT
Software as a part or portion of OEM's Products.
1.7. "Escrow Agreement" means the escrow agreement referred to in paragraph 10.5
of this
Page 1
OEM Agreement
<PAGE>
Agreement.
1.8. "OEM" means the OEM named on the first page of this Agreement.
1.9. "OEM's Products" means the systems that are being developed, by OEM
which incorporate, or will incorporate, the IGT Product.
1.10. "OEM's Specifications" means the specifications issued by OEM prior to
and/or during and after the execution of this Agreement for functional
requirements on real time tracking devices, including systems based on
infrared technologies.
1.11. "Object Code" means the binary computer language program prepared by an
assembler or a compiler after acting on programmer-written source code.
1.12. "IGT Accessories" means all of the accessories identified as IGT
Accessories in Schedule A of this Agreement as of the Effective Date of
this Agreement, as such may be expanded from time to time with mutual
agreement of both parties.
1.13. "IGT Product" means the IGT Hardware and IGT Accessories offered for
sale hereunder and the IGT Software offered for license hereunder.
1.14. "IGT Software" means all of the computer software identified or
described as IGT Software in Schedule A of this Agreement and all
documentation used to describe, maintain or use such software.
1.15. "IGT Hardware" means all of the equipment identified or described as
IGT Hardware in Schedule A of this Agreement as of the Effective Date
of this Agreement.
1.16. "Source Code" means a software computer program in the source language
in which it was written by the programmer.
1.17. "Term" means the time period defined by paragraph 10.1 of this
Agreement, during which time period the parties are legally bound by
the terms and provisions of this Agreement.
1.18. "Territory" means non-exclusive worldwide.
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OEM Agreement
<PAGE>
2. OWNERSHIP AND GRANT OF LICENSE.
2.1. Ownership of Proprietary Rights.
OEM acknowledges that IGT owns all proprietary rights in the IGT Software,
Confidential Technology and Confidential Information, including, but not
limited to, copyrights, trade secrets, and know-how. OEM also
acknowledges, understands, and agrees that (i) this Agreement does not
transfer or provide to OEM any title or rights of ownership or use in the
IGT Software, Confidential Technology, Confidential Information or in any
of IGT's trade secrets, know-how, copyrights, or other proprietary rights,
except for the license to use the IGT Software as provided in this
Agreement, and (ii) OEM may not sell, sublicense, transfer or make
available to others the IGT Software, Confidential Technology, Confidential
Information or IGT's trade secrets, know-how, copyrights or other
proprietary rights, except for the right to grant sublicenses of the IGT
Software as provided in this Agreement.
2.2. License Grant.
Subject to the terms and conditions of this Agreement, IGT hereby grants
to OEM, and OEM hereby accepts, a worldwide, nonexclusive, revocable,
personal, and non-transferable license to use the IGT Software, in Object
Code only, for OEM's own use on that IGT Hardware on which the IGT Software
runs.
3. LICENSE AND OTHER LIMITATIONS.
3.1. Limitations.
3.1.1. Except as set forth in paragraph 3.4. of this Agreement, the IGT
Software may only be used on the IGT Hardware on which the IGT
Software runs.
3.1.2. OEM may only sell, lease and distribute the IGT Hardware in
conjunction with and as part of OEM's Products.
3.2. Sublicense.
OEM may grant sublicenses of the IGT Software to End Users for use on that
IGT Hardware on which it runs, provided such sublicenses comply with
paragraph 5.2 of this Agreement. No other sublicense by OEM and no further
sublicense by an End User shall be permitted.
3.3. Form of Software Delivery.
The IGT Software will be delivered and made available to OEM in Object Code
form only as incorporated in the IGT Product only, along with any
documentation necessary to enable OEM to use the IGT Software for the
purposes of this Agreement. OEM is not entitled to receive
Page 3
OEM Agreement
<PAGE>
or have access to any of the Source Code of the IGT Software other than as
stated in paragraph 10.5 of this Agreement.
3.4. Use of IGT Software.
OEM shall use the IGT Software received from IGT solely for the purpose of
incorporating the IGT Software and IGT Product into OEM's Products. Once
the IGT Software becomes a part or portion of OEM's Products, it may be
installed and operated as a part of OEM's Products according to the terms
and conditions of this Agreement.
3.5. Control of Copies.
OEM may make copies of the Object Code of the IGT Software and only for
archival purposes and for the purposes of this license as provided
elsewhere in this Agreement. OEM shall not make any copies of the
documentation to the IGT Software other than for purposes of this license
and all copies of the IGT Software and the documentation are the sole
property of IGT. OEM shall inform End User of the restrictions against
copying the IGT Software, as per paragraph 5.2.
3.6. No Reverse Engineering.
OEM understands and acknowledges that the IGT Software and the Confidential
Technology, trade secrets, know-how, and other proprietary information
embodied therein and in the IGT Product are proprietary to IGT. Therefore,
OEM shall not reverse engineer, reverse compile or reverse assemble or do
any other operation or analysis with or of (i) the IGT Software that would
reveal any of the Confidential Technology, Source Code, trade secrets, or
other proprietary rights in the IGT Software, or (ii) the IGT Product that
would reveal any of the Confidential Technology, trade secrets or other
proprietary rights in the IGT Product. In addition, OEM shall not remove
or modify any confidentiality, trade secret or copyright notices or
trademarks encoded in the IGT Software or IGT Product or displayed on any
documentation. OEM shall also not allow any of its employees to do any of
the things that are prohibited under this paragraph. Notwithstanding
anything in this Agreement to the contrary, the OEM's Specifications shall
remain property of OEM.
3.7. Joint Development Projects.
(a) If OEM and IGT agree at any time jointly to attempt to improve the IGT
Product, such agreement shall be referred to herein as a "Joint Development
Project." Any agreement for a Joint Development Project shall be in
writing. Any improvement to the IGT Product resulting from a Joint
Development Project shall be referred to in this paragraph 3.7 as a "Joint
Improvement."
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OEM Agreement
<PAGE>
(b) Joint Improvements shall be owned jointly by OEM and IGT, and shall
be made available to OEM pursuant to the terms of this Agreement,
including the discount schedule but with the price to be negotiated.
Neither party shall have the right to use a Joint Improvement except with
the other's product for a period of eighteen (18) months after the later
of the compliance of the Joint Improvement with FDA regulations applicable
to medical devices and the commercialization of the Joint Improvement,
i.e., IGT may not sell a product incorporating the Joint Improvement to any
third party and OEM may not use the Joint Improvement except in connection
with a product incorporating the IGT Product for a period of eighteen (18)
months from the later of the compliance of the Joint Improvement with FDA
regulations applicable to medical devices and the commercialization of that
Joint Improvement. After eighteen (18) months either party shall be
entitled to use the Joint Improvement without restriction, except as
provided in paragraph 3.7(e) below.
(c) IGT and OEM agree to cooperate in order to make any required filings
necessary to protect the intellectual property rights relating to any Joint
Improvements, provided no such filing shall be made if either party objects
thereto. Any filing made as contemplated above will reflect the
co-ownership rights of IGT and OEM with respect to the Joint Improvement
and each party will pay one-half of the costs.
(d) If either IGT or OEM determines not to extend a filing for a patent in
any country or countries, or otherwise wishes to refrain from or cease any
effort to maintain a patent in any country or countries, the other party
shall have the right to substitute itself for the first party in order to
assure, at the second party's cost and in its name, the filing or other
action necessary in order to maintain such patent in the Joint Improvement
which shall thereupon become its exclusive property in such country or
countries. The party which has waived its right to such patent shall
inform the other party of any such decision and shall cooperate with the
other party in order to give any required signatures or execute such
required documents or take such other action as may be necessary or
desirable in order to effectuate the foregoing.
(e) If IGT wishes to incorporate the Joint Improvement in any IGT Product
(or any other products developed by it) for sale to any third party, IGT
shall pay to OEM a royalty designed to recoup any filing cost incurred by
OEM pursuant to paragraphs 3.7(c) and 3.7(d) above (such royalty shall
cease on recoupment).
3.8. No Derivatives.
OEM shall not create any Derivatives of the IGT Product or IGT Software
without the prior written permission of IGT. Any Derivatives to the IGT
Product or IGT Software that are made after such consent is given will
continue to be subject to the terms and conditions of this Agreement,
unless agreed otherwise by the parties in writing. All Derivatives will
belong to
Page 5
OEM Agreement
<PAGE>
IGT and OEM agrees to execute and deliver to IGT any assignments IGT may
request in connection therewith. Nevertheless, any products developed or
specified by OEM which are used in conjunction with the IGT Product but
which are not Derivatives according to paragraph 1.3 of this Agreement are
exempt from the terms of this paragraph.
3.9. OEM Compliance.
OEM warrants that it will obey all laws and regulations of the country in
which it distributes the OEM Products. OEM shall indemnify IGT for any
losses, costs, and damages incurred by IGT as a result of a failure by OEM
to comply with the necessary government formalities in any country.
3.10. OEM Exports.
OEM understands that IGT is subject to regulation by agencies of the
United States Government, including the United States Department of
Commerce, and, provided IGT promptly informs OEM of any restriction
applicable to any such country, OEM warrants that it shall not knowingly
sell IGT Product contained within the OEM's Products or OEM's Products to
any country not approved under applicable United States laws and
regulations. OEM shall hold harmless and indemnify IGT from and against
any damages from breach hereof.
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OEM Agreement
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4. IGT PRODUCTS.
4.1. Prices - Discount - Taxes - Payment.
4.1.1. Prices. Prices to be paid by OEM for the IGT Product will be as
specified in IGT's price list in effect on the date a purchase order is
received by IGT. IGT's current price list is set forth on Schedule A to
this Agreement. Schedule A is to be revised annually and agreed by IGT and
OEM in writing on or one month before the anniversary of the Effective Date
of this Agreement for the next twelve-month period. It is understood that
the parties shall negotiate diligently and in good faith until they reach
agreement, neither party shall have a right to submit a pricing
disagreement to arbitration.
4.1.2. Discount. IGT shall give OEM a volume discount on orders of IGT
Product, such volume discounts to be set forth on Schedule A.
4.1.3. Taxes. OEM shall pay any and all sales, use, value-added and other
taxes of any nature assessed upon or with respect to payments hereunder by
any federal, state or local governmental entity and any nation or any
political subdivisions of any nation, exclusive, however, of taxes based
on IGT's net income. In the event IGT is required to pay any such taxes,
OEM shall promptly reimburse IGT for the same. IGT confirms that, to the
best of its knowledge at the date hereof, no such U.S. taxes are applicable
to such payments.
4.1.4. Payment. Shipment of IGT Product shall be Ex-Works IGT's plant in
Boulder (Colorado, U.S.A.), referred hereunder as EXW-Boulder, and title
and risk of loss or damage to IGT Product shall pass to OEM at such
Ex-Works point, or DDP OEM's plant in Gieres (Isere-France), referred
hereunder as DDP-Gieres, and title and risk of loss or damage to IGT
products shall pass to OEM at such DDP point. Terms of payment shall be
net 30 days subject to document and credit approval by IGT. Interest
shall be assessed on past due amounts and shall accrue at the lesser of
the rate of 1.5% per month or the maximum rate permitted by applicable law.
In addition to the interest assessed, IGT may, at its option, suspend all
services and shipments to OEM (including stoppage in transit) until all
delinquent amounts are paid to IGT. In the event IGT is required to
commence any legal action to collect any amount due from OEM hereunder, IGT
shall be entitled to recover its cost of suit, including reasonable
attorneys' fees, in addition to any damage.
4.2. Quarterly Forecasts.
Beginning with the Effective Date, OEM shall issue a rolling quarterly
forecast of its anticipated approximate order volume for IGT Product for
the subsequent six (6) months. Such quarterly forecast shall not be
binding upon OEM, but shall be prepared with diligence and care.
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OEM Agreement
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4.3. Availability of IGT Product.
Subject to the terms and conditions of this Agreement, IGT agrees to make
the IGT Product on Schedule A of this Agreement available for sale during
the term of this Agreement, or, with OEM's prior consent, to make
available a replacement product or products with similar functional
specifications and similar regulatory approvals.
4.4. Spare Parts and Service.
IGT agrees to provide, at its published parts and service list price (less
OEM discount), which IGT shall provide no later than three (3) months after
the Effective date of this Agreement as an addendum to Schedule A ( and to
be modified as provided herein), spare parts and service for the IGT
Product for a minimum of the earlier of twenty four (24) months after the
discontinuance of the sale of the IGT Product (or any one thereof) to
customers other than OEM or three years after the termination of this
Agreement.
4.5. Force Majeure. IGT shall be relieved of its obligation under any purchase
order accepted by it pursuant to this Agreement, to the extent necessary,
for failure to provide the ordered IGT Product due to causes beyond IGT's
reasonable control, including without limitation, acts of God, war,
hostilities, civil unrest, sabotage, fires, floods, strikes or other labor
troubles, supply shortages, embargoes or other transportation delays, or
inability to utilize or obtain necessary labor, materials or facilities due
to such causes.
4.7. Orders; Acknowledgements.
OEM shall order at its sole choice IGT Product under EXW-Boulder or
DDP-Gieres - conditions. IGT shall acknowledge receipt of purchase orders
for IGT Products by written fax notification within two (2) weeks after
IGT's receipt of the purchase order and, with such acknowledgment, shall
identify any limitations, corrections or conditions related to acceptance
of the order. OEM shall have two (2) weeks to withdraw any such purchase
orders if it does not accept such limitations, corrections or conditions.
Preprinted terms and conditions on OEM's purchase orders are superseded by
this agreement and are of no force or effect.
4.8. Delivery Dates.
Shipments are subject to IGT's availability schedule. IGT will make
every reasonable effort to meet any delivery dates acknowledged; however,
IGT shall incur no liability for failure to meet such delivery dates,
except that failure to meet timely delivery shall be a material default
for purposes of Section 10.2(a) hereof. In any case, delivery dates shall
not be later than 45 (forty-five) days after acknowledgment of the order
by IGT.
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OEM Agreement
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5. OEM'S DUTIES.
5.1. General Duties.
OEM shall use its best efforts to create, develop, and market OEM's
Products and to keep IGT informed of the progress of its development and
marketing efforts. All marketing, advertising, promotional, distribution,
training and support activities of OEM shall be at the sole judgment and
expense of OEM unless otherwise agreed in writing by IGT.
5.2. Sublicensing.
5.2.1. Before Distribution of any OEM Products with the IGT Software,
OEM shall take adequate steps to ensure that the End User only
receives a customary sublicense for the IGT Software satisfactory
to IGT. A provision substantially in the form of Schedule C
attached hereto included in OEM's Software license shall satisfy
this requirement. OEM shall provide a copy of its software
license agreement to IGT upon request.
5.2.2. OEM shall promptly report any unlicensed use of the IGT Software
or other activities which infringe or may infringe the
Confidential Technology or the copyrights, trade secrets,
know-how, trademarks, patents, or other proprietary rights of IGT
of which it has knowledge.
5.2.3. If OEM becomes aware of a breach by the End User of the above
sublicense, OEM shall promptly demand that the End User take
prompt corrective action to remedy the breach and shall, in
addition, notify IGT of the breach and the corrective action
taken. OEM shall assign to IGT, at IGT's sole option, any rights
OEM has against its sublicensees for breach of this sublicense.
OEM agrees to cooperate with IGT, as IGT may reasonably request,
in any proceeding against any third party alleging breach of this
sublicense. OEM shall not be liable to IGT for any breach of the
terms of this sublicense by a third party unless OEM has
willfully or negligently contributed to or cooperated in the
breach.
5.3. Notices and Legends.
The IGT Software, the IGT Product and any IGT documentation delivered to
OEM will contain IGT's copyright notice, trademarks and other proprietary
legends. Any copies or modifications permitted to be made under this
Agreement shall contain such copyright notice, trademarks, and other
proprietary legends. OEM shall not remove or obscure any such notices or
marks attached or affixed to IGT Product.
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OEM Agreement
<PAGE>
5.4. OEM's Precautions with Employees.
OEM agrees to take precautions and implement whatever procedures it
deems necessary to ensure that the License and other limitations set
forth in Article 3 of this Agreement are not exceeded by OEM or by any
of its employees.
5.5. Customer Service and Support.
OEM shall be solely responsible for all installation, use, support, and
support questions of the End Users of OEM's Products. During the
warranty period, IGT shall cooperate at no cost with OEM as needed to
respond to End User questions and complaints regarding the IGT part of
OEM's Products.
5.6. Customer Information.
OEM shall promptly bring to IGT's attention any complaints, causes of
dissatisfaction, or requests for corrections, revisions, or enhancements
relating to the IGT Software or IGT Product.
5.7. Protection of Trade Secrets, Confidential Technology and Confidential
Information.
OEM acknowledges that the IGT Software and IGT Product contain
Confidential Information and Confidential Technology, being trade
secrets, know-how and other proprietary information and that those and
other trade secrets, know-how and proprietary information belonging to
IGT may be communicated or otherwise made available to OEM in connection
with this Agreement. OEM agrees to keep all such Confidential
Technology and Confidential Information confidential, not to publish or
disclose such Confidential Technology and Confidential information to
others, and to handle, maintain and protect all such Confidential
Technology and Confidential Information with at least the same degree of
care used by OEM to safeguard and protect and maintain OEM's own trade
secrets and confidential or proprietary information. Such safeguards
shall include at least the precautions of restricting access to only
those persons in OEM's employ who have a need to know, instructing those
employees of their obligations to maintain the confidentiality and
secret nature of the information and having executed agreements in place
with such employees pursuant to which they agree to those obligations,
providing reasonable security precautions for areas and computers where
the IGT Software and other trade secrets or proprietary information is
used and stored, and completely erasing or deleting all IGT Software
from any disk, tape or other media being discarded, disposed or
converted to different uses. OEM agrees to allow IGT to review all copy
for sales and marketing brochures related to the IGT Product, either
before or at the time of release. If IGT detects missing or improperly
presented trademarks or other
OEM Agreement Page 10
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trade insignia, it may request correction of such within fifteen (15)
days after receipt of the said brochures, and OEM agrees to make
necessary corrections in a timely manner.
6.IGT'S DUTIES.
6.1. General Duties.
Representatives of IGT will periodically provide OEM with updated
information relating to IGT's technology as compared to competitive
digitizing technologies and will respond promptly to OEM's requests in
providing such information.
6.2. Regulatory Compliance.
For countries considered as developed countries according to the
standards defined by OCDE or for countries with more that 80 (eighty)
million inhabitants, IGT shall, at its own expense, promptly take the
necessary and reasonable steps to comply with all requirements placed
upon IGT products used or sold by OEM by the regulatory agency in
existence in such countries. For other countries, IGT shall, on an
equal cost sharing basis with OEM, promptly take reasonable steps to
comply with all requirements placed upon IGT products used or sold by
OEM by the regulatory agency in existence in such countries.
6.3. Audits of Facilities and Quality System.
IGT agrees to allow OEM and qualified representatives of regulatory
agencies to inspect IGT's facilities and quality system for the sole
purpose of verifying IGT's compliance with quality and regulatory
standards as is necessary for OEM to sell IGT's Products. When
possible, OEM agrees to give IGT at least thirty (30) days advance
notice of such inspections. All such inspections are at the sole
expense of OEM (except for IGT's internal costs) unless otherwise agreed
in writing.
6.4. IGT's Precautions with Employees.
IGT agrees to take precautions and implement whatever procedures it
deems necessary to ensure that the provisions set forth in Article 3 of
this Agreement applicable to IGT are not exceeded by IGT or by any of
its employees.
6.5. Protection of OEM's Trade Secrets and Confidential Information.
IGT acknowledges that the OEM Specifications contain Confidential
Information, being trade secrets, know-how and other proprietary
information and that those and other trade secrets, know-how and
proprietary information belonging to OEM may be communicated or
otherwise
OEM Agreement Page 11
<PAGE>
made available to IGT in connection with this Agreement. IGT agrees to
keep all such Confidential Information confidential, not to publish or
disclose such Confidential Information to others, and to handle,
maintain and protect all such Confidential Information with at least the
same degree of care used by IGT to safeguard and protect and maintain
IGT's own trade secrets and confidential or proprietary information.
Such safeguards shall include at least the precautions of restricting
access to only those persons in IGT's employ who have a need to know,
instructing those employees of their obligations to maintain the
confidentiality and secret nature of the information and having executed
agreements in place with such employees pursuant to which they agree to
those obligations, providing reasonable security precautions for areas
and computers where the OEM trade secrets and proprietary information is
used and stored, and completely erasing or deleting all OEM
Specifications from any disk, tape or other media being discarded,
disposed or converted to different uses.
7.STATUS OF PARTIES
7.1. Independent Contractor.
OEM shall perform its duties under this Agreement as an independent
contractor and not as an agent of IGT. The relationship between the
parties shall remain that of independent contractors and nothing herein
shall imply any joint venture.
7.2. No Contrary Representations.
OEM shall not in any way by oral or written statements or other conduct
represent itself as being other than an independent contractor without
any power to bind IGT.
OEM Agreement Page 12
<PAGE>
8. RIGHTS RESERVED BY IGT
Anything in this Agreement to the contrary notwithstanding, IGT reserves
all rights not expressly granted to OEM herein.
8.1. Hardware Changes and Software Updates.
8.1.1. Hardware Changes.
Notwithstanding any other term of this Agreement, IGT shall not
make any change to the mechanical, electronic or other interfaces
(or any design element including external colors) of the IGT
Hardware being sold hereunder without the prior written consent of
OEM.
8.1.2. Software Updates.
IGT shall provide updates and enhancements to the Software to OEM
at no cost during the warranty period; updates and enhancements to
the Software after the warranty period shall be provided to OEM at
IGT's standard discounted license fee. Nevertheless, it is
understood that IGT shall provide updates correcting Software
errors to OEM at no cost during the lifetime of the Agreement. The
term "Software" as used to this license includes all updates and
enhancements provided hereunder. IGT shall provide OEM with ninety
(90) days advance notice prior to making any changes to the form or
function or interfaces, including but not limited to input/output
formats, of the IGT Software being licensed hereunder, and, at
OEM's request, shall provide OEM with the original pre-change
Software during the lifetime of this Agreement.
8.2. Other Licenses.
IGT may grant licenses to use the IGT Software and may sell the IGT
Product to others. There are no exclusive rights granted to OEM under
this Agreement.
8.3. Enforcement of Proprietary Rights.
IGT retains the sole and exclusive right, but not the obligation, to
utilize legal and judicial proceedings to protect and enforce IGT's
patent, copyright, trademark, trade secret, and other proprietary
rights. This reserved right includes, but is not limited to, the right
of IGT to sue OEM or any End User for infringement arising from uses by
OEM or any End User of IGT's patent, copyright, trademark, trade secret,
or other proprietary rights in a manner not authorized by this
Agreement. IGT agrees to notify OEM of IGT's intent to sue OEM or End
OEM Agreement Page 13
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User under the terms of this paragraph at least sixty (60) days prior to
taking such legal action.
Notwithstanding the foregoing, if OEM has reason to believe that there
exists a bona fide claim against a third party for infringement of any
IGT patent, trade secret or other proprietary right (excluding
copyright) and trademarks) that covers any IGT Product sold to OEM
under this Agreement and, in the event that IGT does not agree to
prosecute such infringement claim within sixty (60) days after notice
from OEM, then OEM shall have the right to prosecute such claim in IGT's
name if necessary, subject to consultation with IGT and any decision to
settle or abandon the prosecution shall be made only upon consent of
both IGT and OEM, which consent shall not be unreasonably withheld.
9. REPRESENTATIONS, WARRANTIES, AND INDEMNIFICATIONS
9.1. Power to Enter Agreement.
Each party represents and warrants to the other that it has the power,
right, and authority to enter into this Agreement, and to grant the
rights and undertake the obligations set forth in this Agreement. IGT
represents and warrants to OEM that it is the owner of the rights
licensed to OEM hereunder.
9.2. Warranty.
IGT warrants the IGT Hardware and IGT Software as set forth on Schedule
B, the IGT Product Warranty.
9.3. Indemnification.
9.3.1. IGT Indemnification.
IGT shall defend any suit or proceeding brought against OEM to
the extent it is based on a claim that the IGT Product directly
infringes a patent or copyright issued by the United States;
provided IGT is notified promptly in writing and given authority,
information and assistance (at IGT's expense) for the defense of
the suit or proceeding. IGT shall pay all damages and costs
awarded against OEM in such suit or proceeding or settlement, if
IGT has been given full control of the defense and the
negotiations for settlement, if any, of the suit or proceeding
(any settlement shall require the consent of OEM which shall not
be unreasonably withheld). If any IGT Product is held in such
suit or proceeding directly to infringe a patent or copyright of
the United States or is, in IGT's opinion, likely to be held
directly to infringe such a patent or copyright, IGT may, at its
option and expense, either (a) procure for OEM the
OEM Agreement Page 14
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right to continue using the IGT Product, (b) replace the IGT
Product with non-infringing product, (c) modify the IGT Product
so that it becomes a non-infringing product, or (d) require
return of the IGT Product and refund the purchase price for the
IGT Product. IGT shall have no liability to OEM if the
infringement or claim thereof is based upon (a) the use of the
IGT Product in combination with other products, devices or
software which are not furnished to OEM by IGT, (b) modification
of the IGT Product by other than IGT, or (c) use of the IGT
Product as part of any infringing process, apparatus or product.
THIS SECTION STATES THE ENTIRE LIABILITY OF IGT FOR PATENT OR
COPYRIGHT INFRINGEMENT. Notwithstanding anything to the contrary
herein, IGT's liability under the foregoing shall not exceed the
total amounts received by IGT pursuant to the terms of this
Agreement.
9.3.2. OEM's Infringement.
Except as set forth in paragraph 9.3.1 above, OEM shall defend
any suit or proceeding brought against IGT to the extent it is
based on a claim that the making, selling or using of OEM's
product infringes a patent or copyright; provided that OEM is
notified promptly in writing and given authority, information and
assistance (at OEM's expense) for the defense of the suit or
proceeding. Except to the extent provided in Section 9.3.1
above, OEM shall pay all damages and costs awarded against IGT in
such suit or proceeding or settlement, if OEM has been given full
control of the defense and of the negotiations for the
settlement, if any, of the suit or proceeding (any settlement
shall require the consent of IGT which shall not be unreasonably
withheld). Notwithstanding anything to the contrary herein,
OEM's liability to IGT under the foregoing shall not exceed the
total amounts received by IGT pursuant to the terms of this
Agreement.
10. DURATION AND TERMINATION OF AGREEMENT
10.1. Term.
This Agreement and the License shall have a term of three (3) years
from the Effective Date, except this Agreement shall be extended for an
additional two (2) year term if OEM has purchased during the three-year
term at least [ ] Flashpoint Model 5000/D Systems or any successor
systems from IGT.
OEM Agreement Page 15
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10.2. Termination.
Either party may terminate this Agreement (a) on thirty (30) days
notice in the event of a material default by the other party of any of
its obligations hereunder, provided (i) the defaulting party receives
notice of termination containing a reasonably complete description of
the default and (ii) the defaulting party fails to cure such default
within thirty (30) days of receiving such notice or (b) immediately and
without notice in the event the other party becomes bankrupt or
insolvent, suffers a receiver to be appointed or makes an assignment
for the benefit of its creditors.
10.3. After Termination.
Upon expiration or termination of this Agreement pursuant to Section
10.2, OEM shall forthwith cease marketing of all OEM's Products with
the IGT Software or IGT Product and shall forthwith cease all display,
advertising and use of all such names, trademarks, logos and
designations of IGT and shall not thereafter use, advertise or display
any name, trademark, designation or logos which is, or any part of
which is, similar or confusingly similar to any such designation
associated with IGT or with any product of IGT. Upon termination of
this Agreement as a result of a material breach by IGT, IGT agrees that
OEM shall be entitled to develop or cause to be developed substitute
product for IGT's Products provided OEM does not breach its obligations
under this Agreement. Notwithstanding anything provided in this Section
10.3, OEM will be permitted to sell OEM's Products with IGT Product,
and to do so, be permitted to undertake marketing efforts, until the
exhaustion of IGT Product in OEM's inventory for which OEM has already
paid IGT at the time of the expiration or earlier termination.
10.4. Return of Materials by OEM.
Upon the expiration or termination of this Agreement pursuant to
Section 10.2, all materials (including Confidential Information) in the
possession or under the control of OEM which were received at no charge
from IGT shall be returned to IGT upon IGT's request, forwarding
charges prepaid, and OEM shall not retain any copies of such materials
except for the support of its existing customers. OEM shall not be
required to return IGT Product in OEM's inventory for which OEM has
already paid IGT. All sublicenses to End Users, properly granted by OEM
pursuant to this Agreement, shall survive expiration or any other
termination of this Agreement except to the extent any sublicensee has
infringed or is infringing IGT's proprietary rights or has made any
unauthorized disclosure or use of any of IGT's trade secrets or is
otherwise in breach of its obligations under such sublicense.
OEM Agreement Page 16
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10.5. Escrow.
An escrow arrangement for IGT's source code, source code documentation,
design drawings of the entire hardware and calibration procedures is
being entered into simultaneously with this Agreement. The escrow agent
has been chosen in agreement by the parties.
10.6. Survival of Certain Obligations.
OEM's obligations under Articles 2,3 and 9 and paragraphs 4.1, 5.2,
5.3, 5.4, 5.7, 7.1, 7.2, 10.3, 10.4 and 11.5 shall survive any
expiration or termination of this Agreement pursuant to Section 10.2
for a duration of two (2) years. IGT's obligations under Articles 2
and 9, and paragraphs 3.7, 4.4, 6.3, 6.4, 6.5 and 10.5, and Schedule B
shall survive any expiration or termination of this Agreement for a
duration of two (2) years.
10.7. Waiver of Damages Upon Termination.
OEM understands and agrees that IGT has not represented to OEM that OEM
can or should expect to obtain any anticipated amount of revenues or
profits by virtue of this Agreement. Upon expiration or termination of
this Agreement, IGT shall not be liable to OEM for damages of any kind
including incidental, direct, indirect or consequential damages on
account of the expiration or termination of this Agreement whether such
expiration or termination was for any reason or for no reason except as
otherwise specifically provided in this Agreement.
OEM Agreement Page 17
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11.GENERAL PROVISIONS.
11.1. Notices.
All notices and reports in connection with this Agreement shall be sent
to the addresses given below or to such other addresses as the parties
may hereafter specify in person, by first-class mail or by telecopier.
Such notices shall be deemed to be given (i) when delivered to a party,
(ii) five days after deposit with a three-day or less internationally
recognized courier service, or (iii) upon receipt of facsimile
transmission.
If to IGT If to OEM
Mr. Paul L. RAY Dr. Philippe F. GENOUX
Chairman and Chief Executive Officer President Directeur General
IMAGE GUIDED TECHNOLOGIES, INC. DEEMED INTERNATIONAL
5710-B Flatiron Parkway 2, Avenue de Vignate
BOULDER, CO 80301 Centre Equation
U.S.A. 38610 GIERES
FRANCE
11.2. Assignment.
IGT may assign its rights and obligations hereunder. Except as
expressly provided herein, OEM may not assign this Agreement nor any of
OEM's rights or obligations hereunder without the prior written consent
of IGT.
11.3. Limitation of Actions.
No arbitration or other action, regardless of form, arising from the
transactions under this Agreement, may be brought by either party more
than two (2) years after the cause of action has occurred.
11.4. Trademarks and Trade Names.
OEM concedes and recognizes the right of IGT to, and shall have no
right or license in, the trademarks and trade names used with or
affixed on any IGT Product. OEM shall conduct its business solely in
OEM's name.
OEM Agreement Page 18
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11.5. Disputes.
Any controversy or claim arising out of or relating to this Agreement,
or the breach thereof, shall be settled by arbitration administered by
the American Arbitration Association under its Commercial Arbitration
Rules, and judgment on the award rendered by the arbitrator(s) may be
entered in any court having jurisdiction thereof. The arbitration
shall take place in New York City, New York. The obligations of the
parties provided in this paragraph shall survive the termination of
this Agreement. However, nothing in this paragraph shall prohibit
either party from seeking temporary and/or permanent equitable remedies
in court as appropriate to enjoin patent, copyright, trademark, or
trade secret infringement or to enjoin unauthorized use or
dissemination of its trade secrets, including, but not limited to, such
equitable relief pending the outcome of arbitration proceedings, but no
such application shall stay or otherwise impede the progress of the
arbitration proceeding. OEM agrees and consents to personal
jurisdiction and venue in the federal and state courts in Colorado for
purposes of the preceding sentence. IGT agrees and consents to
personal jurisdiction and venue in the federal and state courts in New
York City, New York, for purposes of the preceding sentence.
11.6. Severability.
The provisions of this Agreement are severable and in the event that
one or more of such provisions shall be illegal, invalid or
unenforceable, the remaining provisions shall remain in full force and
effect.
11.7. Governing Law and Jurisdiction.
This Agreement shall be governed and construed in accordance with the
laws of the State of Colorado.
11.8. Entire Agreement; Amendments.
Each party acknowledges that it has read this Agreement, understands
it, and agrees to be bound by its terms, and further agrees that this
is the complete and exclusive statement of the agreement between the
parties, which supersedes and merges all prior proposals,
understandings and all other agreements, oral and written, between the
parties relating to this Agreement. This Agreement may not be modified
or altered except by a written instrument duly executed by both parties.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the
Effective Date.
IMAGE GUIDED TECHNOLOGIES, INC. DEEMED INTERNATIONAL
By: Paul L. RAY By: Philippe F. GENOUX
Title: Chairman and Chief Title: Chairman and Chief
Executive Officer Executive Officer
Date: April 25, 1996 Date: April 25, 1996
OEM Agreement Page 20
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Schedule A
PRODUCT PRICE LIST AND OEM DISCOUNT SCHEDULE
- ----------------------------------------------------------------------------
Part Number Product Description EXW Boulder DDP Gieres
- ----------------------------------------------------------------------------
IGT Hardware:
TBD FlashPoint-Registered Trademark-
Model 5000/D System - 115 VAC [ ] *
TBD FlashPoint Model 5000/D System -
230 VAC [ ] *
TBD FlashPoint Model 5000/D Control
Unit - 115 VAC [ ] *
TBD FlashPoint Model 5000/D Control
Unit - 230 VAC [ ] *
TBD FlashPoint Model 5000/D Optical
Sensor Assembly [ ] *
TBD Instrument Breakout Box [ ] *
IGT Accessories:
111981 110 mm Medical Probe [ ] *
112372 135 mm Medical Probe [ ] *
115106 Dynamic Reference
Frame-Registered Trademark- [ ] *
110238 Footswitch, isolated [ ] *
117922 LEDs, 10 Pack-3 Lead,
Isolated, Autoclavable [ ] *
116155 Tetra-etched LED sockets,
10 Pack [ ] *
- ----------------------------------------------------------------------------
* DDP-Gieres price is EXW-Boulder price plus all actual costs for shipping,
export fees and documents, and import duties reinvoiced on at-cost basis.
OEM Agreement Schedule A Page 1
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IGT Software:
FlashPoint Software license supplied with IGT Hardware, includes all software
pre-loaded in the data storage devices of any IGT Hardware Product by IGT as
well as all of the files included on the following diskettes:
--------------------------------------------------------------------
Part Number Product Description
--------------------------------------------------------------------
IGT Software:
TBD FlashPoint Model 5000/D Installation Disk
TBD FlashPoint Model 5000/D Installation Disk
TBD FlashPoint Model 5000/D Installation Disk
TBD FlashPoint Model 5000/D Installation Disk
TBD FlashPoint Model 5000/D Installation Disk
TBD Diskette, Calibration File for FlashPoint
Sensor Assembly
--------------------------------------------------------------------
Notice: This list is not all-inclusive. Any IGT Software, whether released
or prototypal, which is transferred or made available to Licensee during the
term of the Agreement shall be deemed licensed pursuant to the terms and
conditions of this Agreement. Price of the IGT Software is embedded in the
Hardware Price.
OEM Quantity Discount Schedule:
System Quantity Percentage Discount
[ ] [ ]
[ ] [ ]
[ ] [ ]
[ ] [ ]
more than [ ] [ ]
Notice: OEM may receive a one-time [ ] discount on one unit upon signing this
OEM Agreement. Discounts are based on system quantities ordered under a
single OEM purchase order and shipped by IGT and accepted by OEM within
twelve (12) months of the order date.
OEM Agreement Schedule A Page 2
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SCHEDULE B
Product Warranty
1. GT Product Warranty.
IGT warrants that the IGT Product will be free from defects in materials,
parts and workmanship for a period of the earlier of one (1) year from
delivery to the End User or eighteen (18) months to OEM, and conform to
IGT's specifications (OEM's specifications for purposes of the product
warranty being agreed to by OEM in writing) applicable to such IGT Product
(at the time of OEM's purchase thereof) for a period of the earlier of one
(1) year from delivery to End User or eighteen (18) months to OEM.
NOTWITHSTANDING THE FOREGOING, IGT MAKES NO WARRANTIES AS TO THE IGT
ACCESSORIES, SUCH IGT ACCESSORIES BEING SOLD "AS IS." THIS WARRANTY IS
IN LIEU OF ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING THOSE OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
2. Warranty Repair Misuse.
IGT's sole obligation under the foregoing warranty shall be to repair or
replace or, where applicable, recalibrate, at IGT's option, at IGT's
plant, without charge, all defective IGT Products returned for inspection
within the applicable warranty period and which have been mutually
determined by IGT and OEM to be defective. All transportation charges for
the defective IGT Product shall be paid by IGT (provided the method of
shipment is pre-approved by IGT). IGT shall not be responsible for any
modifications or changes to the IGT Product (and OEM shall pay IGT for any
services necessitated by any such modifications or changes) nor shall IGT
be liable for any defects arising out of misuse, neglect, failure of
electric power, cause other than ordinary use or other causes beyond IGT's
control.
3. Limitation of IGT Liability.
IN NO EVENT SHALL IGT'S LIABILITY UNDER THIS AGREEMENT INCLUDE ANY SPECIAL,
INDIRECT, INCIDENTAL OR CONSEQUENTIAL DAMAGES OR CLAIMS FOR LOSS OF
BUSINESS OR PROFITS, EVEN IF IGT SHALL HAVE BEEN ADVISED OF THE POSSIBILITY
OF SUCH POTENTIAL LOSS OR DAMAGE. NOTWITHSTANDING ANY FAILURE OF THE
CENTRAL PURPOSE OF ANY LIMITED REMEDY, IGT'S LIABILITY FOR BREACH OF
WARRANTY SHALL NOT EXCEED THE PURCHASE PRICE FOR SUCH PRODUCT.
4. No Warranties by IGT to End Users.
IGT is not making, and this Agreement does not extend, any warranties of
the IGT Product to End Users, provided that the sale, lease or other use
of the IGT Products by the End Users shall not limit IGT's liability
hereunder. OEM may, in its discretion, extend warranties to End Users
of OEM's Product. However, it is understood and agreed that IGT is not a
party to and does not bear any
<PAGE>
responsibility or liability for, such warranties by OEM to End Users,
provided that the sale, lease or other use of the IGT Products by the End
Users shall not limit IGT's liability hereinabove.
5. Service of Warranties to End Users.
OEM has the sole responsibility and obligation to provide service and
support on OEM's Product to End Users under warranties or otherwise.
OEM Agreement Schedule B Page 2
<PAGE>
SCHEDULE C
Provision for the License of Use of Software
Computer software provided with the Product remains the property of DEEMED
INTERNATIONAL or DEEMED INTERNATIONAL's licensors. DEEMED INTERNATIONAL
hereby grants customer a personal non-transferable, non-exclusive license and
a sublicense duly authorized by its licensors to use such software solely for
customer's own use and only with the Product, or part thereof, with which
such software is provided. The software may not be copied, modified, reverse
engineered or disassembled in whole or in part by customer. Customer may not
sublicense, transfer or otherwise make available the software in whole or in
part to any third party. This license and sublicense shall terminate when
customer discontinues use of the software or the Product with which such
software is provided, and upon such termination all software media and
materials shall be returned to DEEMED INTERNATIONAL by customer without any
delay.
OEM Agreement Schedule C
<PAGE>
ESCROW AGREEMENT
IN RELATION WITH THE OEM AGREEMENT
BETWEEN DEEMED INTERNATIONAL AND IMAGE GUIDED TECHNOLOGIES INC.
THIS ESCROW AGREEMENT, is entered into and effective as of the date of the
OEM Agreement hereinafter referred to, by and between IMAGE GUIDED
TECHNOLOGIES, INC., a Colorado company located at 5710-B Flatiron Parkway,
Boulder, CO 80301, the owner of certain hardware and software ("Owner"), and
DEEMED INTERNATIONAL, with registered offices at 16, rue de Choiseul, 75002
Paris (FRANCE) ("Licensee"), and NORWEST BANK, Corporate Trust Department,
located at 1740 Broadway, Denver, CO 80274-8693, USA ("Escrow Agent"), with
reference to the following:
A. Owner and Licensee desire to enter into an Escrow Agreement pursuant to
the terms and conditions of the OEM Agreement between Owner and Licensee
(the "OEM Agreement").
B. Owner desires to provide for the availability of the source code on a
3-1/2 inch floppy disk for all IGT Software and the availability of the
entire IGT Hardware electrical and mechanical design drawings and
specifications pertinent to the FlashPoint 5000/D Model or successor system
(as defined in the OEM Agreement; such disk, hardware electrical and
mechanical design drawings and specifications, and the calibration
procedures being referred to hereinafter as the "Escrowed Material"), to
Licensee under certain conditions as set forth below.
C. Escrow Agent desires to hold the Escrowed Material and deliver it to
Licensee or Owner, as appropriate, in accordance with the provisions set
forth in this Escrow Agreement.
<PAGE>
NOW, THEREFORE, based upon the premises and respective promises and
obligations contained herein, the parties agree as follows:
1. Delivery of Escrowed Material.
Upon signing this Escrow Agreement, owner shall deposit within 15 days
with Escrow Agent, and from time to time shall deposit upgrades to, the
Escrowed Material. Within seven (7) days after any deposit of additional
Escrowed Material with Escrow Agent subsequent to the original deposit of
the Escrowed Material, the Escrow Agent shall give written notice of
receipt to Owner and Licensee. All costs associated with the preparation
and delivery of the Escrowed Material shall be borne by Licensee; such
costs not to exceed U.S. $ 750.00 per deposit.
2. Termination.
This Escrow Agreement shall remain in effect until the first of the
following events occur: (a) the Escrowed Material is delivered to Owner or
Licensee in accordance with Section 3 of this Escrow Agreement; (b)
Licensee fails to pay Escrow Agent's fees after thirty (30) days' notice,
as described in Paragraph 6, in which case Escrow Agent shall deliver all
Escrowed Material to Owner; or (c) ten (10) days after Owner and Licensee
deliver to Escrow Agent written notice of their mutual intent to terminate
the Escrow Agreement, in which case Escrow Agent shall deliver all Escrowed
Material as provided in such written notice. Owner and Licensee agree to
terminate this Escrow Agreement in accordance with subparagraph (c) above
(i) if, at the date of the first anniversary of the OEM Agreement, other
than for a reason of force majeure applicable to Owner or Licensee, the
number of FlashPoint Model 5000 systems purchased by the Licensee during
the year preceding the said anniversary is less than [ ] units; or (ii) if,
at the date of each subsequent anniversary of the OEM Agreement, other than
for a reason of force majeure applicable to Owner or Licensee, the number
of FlashPoint Model 5000 systems purchased by the Licensee during the year
preceding the said anniversary is less than [ ] units; provided that the
foregoing agreement to terminate shall not apply if the failure to make
such purchases in any year results solely or primarily from Owner's
inability or failure to supply the Owner's products in accordance with the
OEM Agreement.
Escrow Agreement Page 2
<PAGE>
3. Access to Escrowed Materials.
(a) Upon termination of all of Owner's obligations under the OEM Agreement
or this Escrow Agreement, the Escrowed Material shall be returned to
Owner upon ten (10) business days notification given jointly by Owner
and Licensee to Escrow Agent.
(b) If Escrow Agent is notified in writing by Licensee of the occurrence
of a Release Condition (as defined in Paragraph (e), below), the
Escrow Agent shall so notify Owner in writing within ten (10) business
days of receipt of notice from Licensee, and shall include in such
notice to Owner a copy of the notice from Licensee. Unless a written
opposition stating the reason for the opposition to the release of the
Escrowed Material is received by the Escrow Agent from Owner within
twenty (20) business days of the receipt by Owner of the Escrow
Agent's notice, Escrow Agent shall deliver the Escrowed Material
immediately to Licensee, and Licensee shall exercise its license to
use the Escrowed Material only to the extent permitted by Section 5
hereunder.
(c) If a written opposition is timely delivered by Owner to Escrow Agent
as provided in Paragraph (b), above, Escrow Agent shall (i)
immediately deliver to Licensee a copy of such opposition, and (ii)
not release the Escrowed Material until otherwise jointly directed by
Licensee and Owner or until resolution of the dispute as to the
occurrence of a Release Condition has been settled as provided in
Paragraph (d), below.
(d) The parties hereto agree that the unavailability of the Escrowed
Material to Licensee, on the one hand, and the release of such
Escrowed Material to Licensee and subsequent loss of confidentiality
thereof for Owner, on the other hand, could in each case cause
Licensee or the Owner, respectively, to suffer irreparable and
continuing injury. Therefore, any dispute between Licensee and Owner
as to the occurrence of a Release Condition and any other dispute
between them hereunder shall be submitted by the parties (including
Escrow Agent) to binding arbitration in accordance with Section 11.5
of the OEM Agreement. The party (but not the Escrow Agent) against
whom a decision is made shall pay all fees and expenses of the other
party and the Escrow Agent, including reasonable attorneys' fees and
expenses.
Escrow Agreement Page 3
<PAGE>
(e) A "Release Condition" shall mean:
(i) If Owner files a petition in bankruptcy under Chapter 7 of the
U.S. Bankruptcy Code or any similar law or regulation pursuant
to which Owner intends to liquidate its business; or
(ii) If any other event or circumstance occurs which demonstrates
with reasonable certainty the inability or unwillingness of Owner
to fulfill its obligations to Licensee under the OEM Agreement;
provided, however, that in the event of a Release Condition, Owner shall
retain the right to transfer its obligations under OEM Agreement, and its
rights and obligations under this Escrow Agreement to any other person with
the consent of Licensee, which consent shall not be unreasonably withheld.
Licensee reserves the right to determine whether or not the proposed
transferee is credit worthy, competent to perform the work, and able to
satisfy the obligations of Owner hereunder in a timely manner.
4. Obligations of Escrow Agent.
(a) The Escrowed Material shall be placed and maintained in an appropriate
air conditioned vault at Escrow Agent; provided, however, Escrow Agent
cannot ensure that the storage media will not be harmed due to
inappropriate temperature and humidity, and the Escrow Agent is not
required to take any unusual precautions to control the environment in
which the storage media will be stored but will maintain same as it
does its own offices.
(b) Control over entrance to the Escrowed Material shall rest with the
Escrow Agent.
(c) The Escrow Agent shall make delivery of the Escrowed Material to Owner
and/or Licensee in accordance with the provisions of this Escrow
Agreement.
(d) Except as provided in this Escrow Agreement, Escrow Agent agrees that
it shall protect the confidentiality of the Escrowed Material and
shall not disclose or otherwise make available to any third party,
make any use of, or copy the Escrowed Material or any portion thereof
without Owner's prior written consent.
(e) Escrow Agent shall have the right to take such other actions,
including engaging the services of
Escrow Agreement Page 4
<PAGE>
legal counsel, and incur such costs as may be reasonably required
to carry out its duties hereunder.
5. Escrowed Material.
In all events, Owner or its successors or assigns, remains the owner of the
Escrowed Material. Licensee's right to and interest in the Escrowed
Material in the event the Escrowed Material is delivered to Licensee
following a Release Condition shall be a non-transferable, non-exclusive,
royalty-free, perpetual and limited license to use the Escrowed Material
for the sole purpose of maintaining and supporting the installed base of
Licensee customers that utilize Owner's products; [ ].
6. Compensation of the Escrow Agent.
(a) Upon execution of this Escrow Agreement, Licensee shall pay Escrow
Agent reasonable compensation for its escrow service in accordance
with the fee schedule then in effect, which fees shall be
non-refundable. The current fee is US $ 750.00 per year, and is due
and payable at the initial set-up of the Escrow Agreement. The Escrow
Agent reserves the right to charge whatever its prevailing standard
fee schedule is on the annual renewal dates.
(b) Thereafter, an annual fee shall be payable by Licensee on the
anniversary date of each succeeding year for which this Escrow
Agreement is still in effect. In the event of non-payment of Escrow
Agent's fees by Licensee, Escrow Agent shall give Licensee and Owner
thirty (30) days' notice thereof. If the thirty (30) day notice period
elapses without Escrow Agent having received payment from Licensee,
Escrow Agent shall terminate this Escrow Agreement and deliver to
Owner all Escrowed Material.
(c) Licensee shall reimburse Escrow Agent for all reasonable expenses
it incurs in performing its duties hereunder, said reimbursement to
occur within thirty (30) days after such expense has
Escrow Agreement Page 5
<PAGE>
been incurred and an invoice has been received therefore, provided
that Escrow Agent has supplied Licensee with all information
reasonably required to determine if such expenses are reasonable.
7. Indemnification of Escrow Agent.
The Escrow Agent shall not, by reason of its execution of this Agreement,
assume any responsibility or liability for any transactions between Owner and
Licensee other than for the performances of Escrow Agent's obligations with
respect to the Escrowed Material held by it in accordance with this Escrow
Agreement. Except as otherwise provided by Section 3(d), above, the party on
whose behalf, or pursuant to whose directions the Escrow Agent acts, shall
indemnify and hold harmless the Escrow Agent from any and all liability,
damages, costs, or expenses including reasonable attorneys' fees, which may be
sustained or incurred by the Escrow Agent as a result of the taking of such
action.
8. Limitation of Liability.
In no event shall Escrow Agent be liable to Owner or Licensee for any
indirect, special or consequential damages or lost profits, arising out of
or related to this Escrow Agreement, even if Escrow Agent has been advised
of the possibility thereof.
9. Cessation of Business by Escrow Agent.
In the event that the Escrow Agent ceases to do business, written notice
thereof will be provided to Owner and Licensee, and Escrow Agent will give
permission to Owner to enter and remove the Escrowed Material upon terms
and conditions mutually agreeable to Owner and Licensee.
Escrow Agreement Page 6
<PAGE>
10. Notices.
All notices required by this Escrow Agreement shall be sufficiently given
by (a) mailing the same by certified or registered U.S. mail, return
receipt requested, (b) hand delivery or express courier delivery, or (c)
by telecopy, to the parties at their respective addresses and fax numbers,
as follows:
Owner: Image Guided Technologies, Inc.
Attn: Paul L. Ray, Chief Executive Officer
5710B Flatiron Parkway
Boulder, CO 80301
USA
Fax No.: (303) 447-3905
Licensee: DEEMED INTERNATIONAL
Attn: Philippe F. GENOUX
2, Avenue de Vignate
Centre Equation
38610 GIERES
FRANCE
Fax No. (33) 76 51 80 33
Escrow Agent: Norwest Bank
Attn: Mr. Lee Lutz
1740 Broadway
Denver, CO 80274-8693
USA
Fax No.: (303) 863-6450
A party may change its address or fax number by giving notice to the other
parties as required by this Section 10. Notice by mail, hand delivery,
express courier delivery or fax shall be deemed given upon actual receipt.
Escrow Agreement Page 7
<PAGE>
11. Succession; Assignment.
The rights and obligations hereunder shall inure to the benefit of and
become the responsibility of the permitted successors and/or assigns of
the parties hereto. This Agreement may not be assigned by any party without
the prior written consent of the other parties; provided, however, that a
successor in interest by operation of law, merger, assignment, purchase or
otherwise of all or substantially all of Owner's business, may be assigned
the interest of said party in this Agreement.
12. Entire Agreement.
This Escrow Agreement constitutes the entire understanding of the parties.
This Escrow Agreement may be amended or altered only by an instrument in
writing signed by all parties hereto.
13. Governing Law.
This Escrow Agreement shall be deemed made in the State of Colorado and
shall be interpreted in accordance with the laws thereof.
Escrow Agreement Page 8
<PAGE>
IN WITNESS WHEREOF, the parties hereto have caused this Escrow Agreement to
be executed by their duly authorized representatives and to become effective
as of the date first above written.
OWNER: IMAGE GUIDED TECHNOLOGIES, INC.
By: Paul L. RAY
Title: Chairman and Chief Executive Officer
Date: April 25, 1996
LICENSEE: DEEMED INTERNATIONAL
By: Philippe F. GENOUX
Title: Chairman and Chief Executive Officer
Date: April 25, 1996
ESCROW AGENT: NORWEST BANK
By:
Title:
Date:
Escrow Agent Page 9
<PAGE>
DISCOUNT SCHEDULE
Attachment to Sales Agreement between
Carl Zeiss, Inc. and Image Guided Technologies
November 1, 1995
Discount Schedule based on purchase of [ ] systems over the lifetime of this
Agreement:
# OF UNITS DISCOUNT DISCOUNT PRICE PER UNIT
---------- -------- -----------------------
[ ] [ ] [ ]
DISCOUNT SCHEDULE ONLY FOR PURPOSES OF RECALCULATING PRICE FOR PURCHASE OF
LESS THAN [ ] UNITS OVER THE LIFETIME OF THIS AGREEMENT:
# OF UNITS DISCOUNT DISCOUNT PRICE PER UNIT
---------- -------- -----------------------
[ ] [ ] [ ]
[ ] [ ] [ ]
[ ] [ ] [ ]
[ ] [ ] [ ]
[ ] [ ] [ ]
<PAGE>
The brackets ("[ ]") which appear in various places in the
following exhibit indicate areas where confidential
information has been redacted by the Company. Such redacted
information is the subject of a request for confidential
treatment and is therefore being filed separately with the
Commission.
<PAGE>
TERMS AND CONDITIONS OF SALE
BETWEEN IGT AND ZEISS
Carl Zeiss, Inc. ("Zeiss") has ordered [ ] optical
digitizers (see IGT Quotation #1-305 and referred to herein as
"Digitizers") from Image Guided Technologies, Inc. ("IGT") to be
shipped over the next 12 months on the following terms and
conditions:
1. PRICES; DISCOUNT; TAXES; PAYMENT.
a. The total price for the [ ] Digitizer units
is [ ] and will be paid as follows: [ ] upon signing of a pur-
chase agreement, and the balance payable at the rate of [ ] per
delivered unit within ten (10) business days of delivery to Zeiss
at Thornwood, New York, by wire transfer to IGT. IGT agrees that
Digitizer units shall be delivered in accordance with the
following schedule:
DELIVERY MONTH UNITS
Already Delivered [ ]
November 1995 [ ]
December 1995 [ ]
January 1996 [ ]
February through October 1996 [ ] per month
If Zeiss requests delay in delivery or cancellation of any units
(other than by reason of the commencement of a patent
infringement action as discussed below) and IGT agrees to such
request, the price of delivered units is subject to recalculation
in accordance with discount schedules attached hereto. In con-
sideration of Zeiss' advance payment on account of this Agree-
ment, IGT agrees that Zeiss shall have first priority in delivery
of Digitizer units until monthly delivery quotas to Zeiss have
been satisfied by IGT. It is understood that Zeiss shall have no
obligation to accept delivery of any undelivered units, or to
refund any "unearned" discount, in the event of the commencement
of any action claiming infringement of any third-party patent as
a result of the marketing or sale of the Digitizer, and/or its
use, by Zeiss or any of its customers, whether such action al-
leges infringement by reason of the sale or use of the Digitizer
alone or in conjunction with other equipment manufactured by
Zeiss. It is understood that, in the event of the commencement
of any such action, Zeiss shall be entitled to the immediate
refund of any portion of the advance payment of [ ] which is not
attributable to the discounted purchase price of units delivered
prior to the commencement of such action. It is further
understood that, in the event of delivery arrears by IGT in
<PAGE>
excess of thirty (30) days, Zeiss shall have the option to
immediately cancel this Agreement and to the immediate refund of
all unearned portions of the advanced payment.
b. Zeiss shall pay all sales, use, value added
and similar taxes assessed upon the Digitizers or the payments to
be made hereunder by any governmental entity.
c. Shipment of Digitizers shall be F.O.B. IGT's
plant in Boulder, Colorado and title and risk of loss or damage
to the Digitizers shall pass to Zeiss at such F.O.B. point.
2. SOFTWARE LICENSE. The software included with the
Digitizer is licensed to Zeiss on the terms and conditions set
forth on Schedule A, to which Zeiss hereby agrees.
3. WARRANTY. IGT warrants the Digitizer as set forth
on Schedule B. THIS WARRANTY IS IN LIEU OF ALL OTHER WARRANTIES,
EXPRESS OR IMPLIED, INCLUDING THOSE OF MERCHANTABILITY OR FITNESS
FOR A PARTICULAR PURPOSE.
4. PATENT AND COPYRIGHT INDEMNIFICATION.
a. IGT shall defend any suit or proceeding
brought against Zeiss to the extent it is based on a claim that
the Digitizer directly infringes a patent or copyright issued by
the United States; provided IGT is notified promptly in writing
and given authority, information and assistance (at IGT's
expense) for the defense of the suit or proceeding. IGT shall
pay all damages and costs awarded against Zeiss in such suit or
proceeding or settlement, if IGT has been given full control of
the defense and the negotiations for settlement, if any, of the
suit or proceeding (any settlement shall require the consent of
Zeiss which shall not be unreasonably withheld). If any
Digitizer is held in such suit or proceeding directly to infringe
a patent or copyright of the United States and the use of the
Digitizer enjoined, or is, in IGT's opinion, likely to be held
directly to infringe such a patent or copyright, IGT may, at its
option and expense, either (a) procure for Zeiss the right to
continue using the Digitizer, (b) replace the Digitizer with
non-infringing product, (c) modify the Digitizer so that it becomes a
non-infringing product, or (d) require return of the Digitizer
and refund the purchase price for the Digitizer (less a deduction
for depreciation equal to one and two-thirds percent (1.67%) of
the purchase price for each full month since the date of delivery
of the Digitizer). IGT shall have no liability to Zeiss if the
infringement or claim thereof is based upon (a) the use of the
Digitizer in combination with other products, devices or software
which are not furnished to Zeiss by IGT, (b) modification of the
Digitizer by other than IGT or (c) use of the Digitizer as part
of any infringing process, apparatus or product. THIS SECTION
-2-
<PAGE>
STATES THE ENTIRE LIABILITY OF IGT FOR PATENT OR COPYRIGHT
INFRINGEMENT.
b. Zeiss shall defend any suit or proceeding
brought against IGT to the extent it is based on a claim that the
making, selling or using of Zeiss' product infringes a patent or
copyright; provided that Zeiss is notified promptly in writing
and given authority, information and assistance (at Zeiss'
expense) for the defense of the suit or proceeding. Zeiss shall
pay all damages and costs awarded against IGT in such suit or
proceeding or settlement, if Zeiss has been given full control of
the defense and of the negotiations for the settlement, if any,
of the suit or proceeding (any settlement shall require the
consent of IGT which shall not be unreasonably withheld).
5. TERM. This Agreement may be terminated at any
time by either party by giving at least 180 days prior written
notice of termination to the other.
6. MISCELLANEOUS. This Agreement shall be governed
by and construed in accordance with the laws of the State of
Colorado.
CARL ZEISS, INC. IMAGE GUIDED TECHNOLOGIES, INC.
By: /s/ SIGNATURE By: /s/ PAUL L. RAY
------------------------- ------------------------
Paul L. Ray
-3-
<PAGE>
SCHEDULE A
ZEISS OEM SOFTWARE LICENSE
The software ("Software") included with the digitizer
("Digitizer") being sold by Image Guided Technologies, Inc.
("IGT") to Purchaser ("OEM") is licensed to OEM upon the follow-
ing terms and conditions:
1. LICENSE. IGT hereby grants to OEM a non-exclu-
sive, personal and non-transferable license to use the Software
solely for OEM's own use and solely with the Digitizer. OEM may
not sell, sublicense, transfer or otherwise make available to
others all or any part of the Software, except for the right to
grant sublicenses to its customers as specifically provided
herein. OEM shall not reverse engineer, reverse compile or
reverse assemble the Software in whole or in part.
2. OWNERSHIP. IGT owns all rights, title and inter-
est in and to the Software, including, without limitation,
patents, copyrights, trade secrets, and know-how. Except for the
purpose of incorporating the Software into OEM's own product, OEM
shall not modify or revise the Software in whole or in part.
3. COPIES. OEM may make copies of the Software for
archival purposes only. All copies of the Software (including
permissible modifications and revisions hereunder) and IGT's
documentation are the sole property of IGT and shall contain
IGT's copyright notices. OEM shall not remove or modify any
copyright notices encoded on the Software or displayed on any
documentation.
4. SUBLICENSE TO CUSTOMERS. Before delivery to any
of its customers of any product which includes the Digitizer (or
the software included therein), OEM shall take adequate steps to
ensure that the customer only receives a customary sublicense
which shall include provisions that provide (i) the Software
remains the property of IGT, (ii) the customer only receives a
personal, nonexclusive, nontransferable sublicense to use the
Software for customer's own use with the Digitizer, (iii) the
Software may not be copied, modified, reverse engineered or
dissembled in whole or in part by customer, (iv) the customer may
not sell, sublicense, transfer or otherwise make available the
Software to any third party, and (v) the sublicense shall expire
when the customer discontinues use of the Software or the
Digitizer and upon expiration all Software media and materials
shall be returned to OEM by customer. Any such sublicense shall
survive expiration of the license granted to OEM hereby.
<PAGE>
5. CUSTOMER SERVICE AND SUPPORT; UPGRADES. OEM shall
be solely responsible for all installation, use, support and
support questions of its customers. IGT shall provide upgrades
and enhancements to the Software to OEM at no cost during the
warranty period; upgrades and enhancements to the Software after
the warranty period shall be provided to OEM at IGT's standard
discounted license fee. The term "Software" as used in this
license includes all upgrades and enhancements provided
hereunder.
6. CONFIDENTIALITY. The Software contains trade
secrets, know-how and other proprietary information belonging to
IGT. OEM shall keep all such information confidential, shall not
publish or disclose such information to others, and shall handle,
maintain, and protect all such information with at least the same
degree of care used by OEM to protect and safeguard its own trade
secrets, know-how and proprietary information.
7. COPYRIGHT. The Software and its related documen-
tation are copyrighted. IGT retains the sole and exclusive
right, but not the obligation, to utilize legal and judicial
proceedings to protect and enforce its copyright, trade secret
and other proprietary rights. OEM shall cooperate with IGT in
any proceeding brought by IGT against any third party in con-
nection with the foregoing (including, without limitation, on
IGT's request assigning any rights under its sublicense with its
customer).
8. EXPIRATION. The license herein granted shall
expire in the event that OEM fails to comply with any term or
condition of this license or in the event that OEM permanently
discontinues the sale of the Digitizer on which the Software is
licensed for use, whereupon OEM shall, promptly upon IGT's
request, return to IGT all Software and related documentation in
its possession (except for one archive copy), provided, however,
that this provision shall not affect the continuing validity of
any sublicense granted with respect to the Software by OEM to any
of its customers pursuant to paragraph 4 above.
9. OEM COMPLIANCE. This license is subject to all
laws, regulations, orders and other restrictions on the export
from the United States of computer software which may be imposed
from time to time by the government of the United States. OEM
shall not export or transfer the Software to any country for
which the United States government or any agency thereof requires
an export license or other governmental approval without first
obtaining (i) the consent of IGT, and (ii) such license or
approval.
10. WARRANTY. IGT warrants the Software as set forth
on the warranty enclosed herewith. THIS WARRANTY IS IN LIEU OF
-2-
<PAGE>
ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING THOSE OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
11. ESCROW. IGT agrees to enter into a customary
escrow arrangement for its source code and source code documen-
tation. The escrow agent shall be chosen by IGT and the escrow
agent fee split between IGT and OEM.
12. MISCELLANEOUS. The validity and performance of
this license shall be governed by Colorado law, except as to
copyright matters which are governed by United States laws and
international treaties. This license is deemed entered into in
Boulder, Colorado. OEM may not assign this license or any of its
rights or obligations hereunder. This license shall inure to the
benefit, and be binding upon, IGT and its successors and assigns.
Should you have any questions concerning this license,
please contact in writing: Image Guided Technologies, Inc.,
Customer Sales and Service, 5680-B Central Avenue, Boulder, CO
80301.
-3-
<PAGE>
SCHEDULE B
ZEISS WARRANTY
1. IGT'S PRODUCT WARRANTY. Image Guided Technolo-
gies, Inc. ("IGT") warrants that the IGT product will be free
from defects in materials, parts and workmanship for a period of
the earlier of one (1) year from delivery to the end user or
eighteen (18) months to purchaser ("OEM"), and conform to IGT's
specifications applicable to such IGT product (at the time of
OEM's purchase thereof) for a period of the earlier of one (1)
year from delivery to end user or eighteen (18) months to OEM.
NOTWITHSTANDING THE FOREGOING, IGT MAKES NO WARRANTIES AS TO
ACCESSORIES MANUFACTURED BY THIRD PARTIES OR DISPOSABLE OR
STERILIZABLE ITEMS, SUCH ITEMS BEING SOLD "AS IS." THIS WARRANTY
IS IN LIEU OF ALL OTHER WARRANTIES, EXPRESS OR IMPLIED, INCLUDING
THOSE OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
2. WARRANTY REPAIR; MISUSE. IGT's sole obligation
under the foregoing warranty shall be to repair or replace, at
IGT's option, at IGT's plant, without charge, all defective IGT
products returned for inspection within the applicable warranty
period, and which have been determined by IGT to be defective.
Transportation charges for shipment from IGT's plant after the
repair or replacement of the defective IGT product shall be paid
for by OEM. IGT shall not be responsible for any modifications
or changes to the IGT product (and OEM shall pay IGT for any
services necessitated by any such modifications or changes) nor
shall IGT be liable for any defects arising out of misuse,
neglect, failure of electric power, cause other than ordinary use
or other causes beyond IGT's control.
3. LIMITATION OF IGT LIABILITY. IN NO EVENT SHALL
IGT'S LIABILITY INCLUDE ANY SPECIAL, INDIRECT, INCIDENTAL OR
CONSEQUENTIAL DAMAGES OR CLAIMS FOR LOSS OF BUSINESS OR PROFITS,
EVEN IF IGT SHALL HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH
POTENTIAL LOSS OR DAMAGE. NOTWITHSTANDING ANY FAILURE OF THE
CENTRAL PURPOSE OF ANY LIMITED REMEDY, IGT'S LIABILITY FOR BREACH
OF WARRANTY SHALL NOT EXCEED THE PURCHASE PRICE FOR SUCH PRODUCT.
4. NO WARRANTIES BY IGT TO END USERS. IGT is not
making any warranties of the IGT product to end users. OEM may,
in its discretion, extend warranties to end users of OEM's
product. However, it is understood and agreed that IGT is not a
party to, and does not bear any responsibility or liability for,
such warranties by OEM to end users.
5. SERVICE OF WARRANTIES TO END USERS. OEM has the
sole responsibility and obligation to provide service and support
on OEM's product to end users under warranties or otherwise.<PAGE>
<PAGE>
The brackets ("[ ]") which appear in various places in the
following exhibit indicate areas where confidential
information has been redacted by the Company. Such redacted
information is the subject of a request for confidential
treatment and is therefore being filed separately with the
Commission.
<PAGE>
LICENSE AGREEMENT
This Agreement is entered into as of August 1, 1996, by and between
VEXCEL CORPORATION, a Colorado corporation having its principal place of
business in Boulder, Colorado, hereinafter referred to as "Licensor," and
IMAGE GUIDED TECHNOLOGIES, INC., a Colorado corporation having its principal
place of business in Boulder, Colorado, hereinafter referred to as "Licensee."
RECITALS
WHEREAS, Licensor owns United States Patent No. 4,836,778
(Mandibular Motion Monitoring System).
WHEREAS, Licensee is desirous of acquiring a non-exclusive,
world-wide right and license, to make, have made, use and sell, in medical
applications, the subject matter covered by the claims of said patent and
Licensor is willing to grant such a license upon the terms and conditions
hereinafter set forth.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
covenants, terms and conditions hereinafter expressed, the parties hereto
hereby agree as follows:
I. DEFINITIONS
As used herein, the following terms shall have the meanings set forth
below:
1.1 PATENT OR PATENTS means United States Patent No. 4,836,778, along
with all foreign counterparts, divisions, continuations and reissues thereof.
<PAGE>
1.2 LICENSED PRODUCTS means any and all products or systems which are
covered by, or are produced using a process or utilize a method covered by,
or constitute a method of use covered by, the claims of the PATENT.
1.3 COMMENCEMENT DATE shall be the date first above written.
1.4 FIELD OF USE means any use that is involved with, related to, or
otherwise connected with the practice of medicine or dentistry, the
maintenance of health, the prevention, alleviation or cure of disease or the
treatment of disease, injury or deformity by medical, dental or instrumental
operations.
1.5 FISCAL YEAR means the period beginning on August 1 and ending on
July 31 of the next year.
1.6 NET SELLING PRICE means the invoiced price, F.O.B. or Ex-Works
Licensee's factory, after deduction of discounts, packaging, freight, duties
and taxes, but before deduction of any other items.
II. LICENSE GRANT
2.1 Licensor hereby grants to Licensee the non-exclusive, world-wide
right and license to make, have made, use and sell LICENSED PRODUCTS in the
FIELD OF USE. Licensee may sublicense such right and license to Licensee's
customers and to users of Licensee's and its customer's products; provided
Licensee remains responsible for payment of the royalty due under the first
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<PAGE>
sentence of Section 3.2 below. Licensee shall not be deemed to have granted
a sublicense unless the same is in writing and references this Agreement.
III. ROYALTIES
3.1 Within 30 days after execution hereof, Licensee will pay Licensor
[ ] in cash.
3.2 In addition to the payment described in Section 3.1 above, Licensee
agrees to pay Licensor during the term of this Agreement a royalty for each
LICENSED PRODUCT sold or used by Licensee or its sublicensees (but not more
than one royalty for each LICENSED PRODUCT) of the greater of [ ] or [ ] of
the NET SELLING PRICE of Licensee's localizer system included in the LICENSED
PRODUCT. Licensee agrees that the minimum amount of royalty payable under
this Section 3.2 for each FISCAL YEAR beginning with the FISCAL YEAR starting
August 1, 1996, shall be [ ].
3.3 For the purpose of this Article III, a LICENSED PRODUCT will be
considered sold or used when Licensee has billed the purchaser therefor.
Royalties paid on LICENSED PRODUCTS which are not accepted or are returned by
the customer within ninety (90) days of delivery shall be credited to
Licensee.
3.4 Licensee's obligation to pay royalties hereunder shall cease upon
the earlier of (i) the expiration of the PATENT or (ii) the termination of
this Agreement. The PATENT shall be deemed to have expired upon the
non-payment of the maintenance
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<PAGE>
fee, upon the judgment of invalidity or unpatentability by a court or
administrative agency of competent jurisdiction from which no appeal is taken
or can be taken or upon expiration of the term of the PATENT.
3.5 At the time Licensee delivers the accounting statement required by
Section 8.1 below, Licensee shall simultaneously pay to Licensor a sum equal
to the aggregate payment due based on the information contained in such
accounting statement and consistent with this Agreement.
IV. INFRINGEMENT CLAIMS
4.1 Licensor shall, at its election and expense, have the right, but
not the obligation, to prosecute any and all claims against third parties for
infringement of the PATENT. Licensor shall also have the right, but not the
obligation, to defend any and all claims against the validity of the PATENT
by third parties. If Licensor finds it necessary or desirable, it may join
the Licensee as a party in any suit or proceeding against third parties
alleging infringement of the PATENT. Should Licensor elect not to prosecute
or defend or not to continue to prosecute or defend any claim, action or
proceeding described above, it shall promptly give notice thereof to the
Licensee and the Licensee shall have the right, at its own expense, to
prosecute or defend or continue the prosecution or defense of such claim,
action or proceeding.
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<PAGE>
V. REPRESENTATIONS, WARRANTIES AND COVENANTS OF LICENSOR
5.1 Licensor represents and warrants to Licensee that Licensor is the
sole owner of the PATENT, free and clear of all liens and encumbrances, and
has the full power and authority to grant the license provided for in this
Agreement.
5.2 Licensor represents and warrants that the license granted to
Licensee hereunder does not and will not conflict with or violate the terms
of any agreement between Licensor and any third party.
5.3 To the knowledge of Licensor, the PATENT does not conflict with or
infringe upon the property rights of any other person, and no person has
asserted any such conflict or infringement.
5.4 Nothing contained in this Agreement shall be construed as a
representation or warranty by Licensor as to the validity or scope of the
PATENT.
VI. TERM
6.1 The term of this Agreement shall commence on the COMMENCEMENT DATE
and shall end on the expiration date of the PATENT, unless terminated sooner
pursuant to Article VII below.
VII. DEFAULT AND TERMINATION
7.1 Licensee will be deemed to be in default hereunder if (i) Licensee
fails to pay any sum due and payable hereunder within thirty (30) days after
notice from Licensor that the same has become due and payable, (ii) Licensee
breaches any material
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<PAGE>
covenant made by it hereunder and fails to remedy such breach within thirty
(30) days after notice thereof from Licensor, or (iii) Licensee fails to
render an accounting statement and payment for all royalties due within
ninety (90) days of the end of the FISCAL YEAR (which failure is not cured
within thirty (30) days after notice of such failure from Licensor). In the
event of Licensee's default hereunder, Licensor may terminate this Agreement
by giving Licensee written notice of termination. In the event that Licensee
is in default hereunder or termination of this Agreement occurs pursuant to
this Section 7.1 or for any other reason, the sole and exclusive remedy which
Licensor shall have will be the termination of this Agreement and the right
to recover unpaid royalties (including any accrued unpaid minimum royalties).
7.2 At any time on or prior to June 30 of each year, Licensee shall
have the right to terminate this Agreement for the next FISCAL YEAR by giving
written notice of termination to Licensor and paying Licensor any unpaid
royalty accrued prior to such termination pursuant to Section 3.2 above.
VIII. ACCOUNTING
8.1 Licensee agrees to keep regular books of account and to render a
statement within ninety (90) days after the end of each FISCAL YEAR setting
forth the number of LICENSED PRODUCTS sold, and the royalty due thereon, and
shall accompany each such state-ment with a remittance covering the royalty
due. Such books of
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<PAGE>
account shall be open at reasonable business hours for inspection by Licensor
or its duly authorized representative.
8.2 The accountants then regularly employed by the Company shall audit
the number of LICENSED PRODUCTS sold, which audit shall be delivered to
Licensor together with the Licensee's written statement. The parties agree
that for purposes of the audit the accountants shall only count the number of
sublicenses granted in writing by Licensee pursuant to this Agreement.
IX. INDEMNITY
9.1 Licensee agrees to indemnify and hold harmless the Licensor from
and against any product liability and patent infringement claims that may be
asserted against Licensor based upon or arising out of Licensee's manufacture
or sale of LICENSED PRODUCTS.
X. RIGHT OF ASSIGNMENT
10.1 Licensee may assign its rights and duties under this Agreement to
any purchaser of all or substantially all its business to which this license
pertains, to any corporation, joint venture or other entity in which Licensee
has an interest or to any successor to Licensee by way of merger or
consolidation. Subject to the foregoing, this Agreement shall be binding
upon and inure to the benefit of the parties hereto and their successors and
assigns.
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<PAGE>
XI. MISCELLANEOUS
11.1 This Agreement constitutes the entire understanding between the
parties with respect to the subject matter hereof. This Agreement may not be
amended or modified except by a written instrument executed by all parties.
11.2 This Agreement shall be governed by, and construed in accordance
with, the laws of the State of Colorado applicable to contracts entered into
and to be wholly performed within that state.
11.3 All notices hereunder shall be in writing and shall be given (and
shall be deemed to have been duly given upon receipt) by delivery in person,
or by registered or certified mail (postage prepaid, return receipt
requested) to the respective parties at the following addresses (or to such
other address for a party as shall be specified by like notice):
If to Licensee: Image Guided Technologies, Inc.
5710-B Flatiron Parkway
Boulder, CO 80301
ATTN: Paul L. Ray, Chairman of the
Board
If to Licensor: Vexcel Corporation
2477 55th Street
Boulder, CO 80301
ATTN: Dr. John C. Curlander,
President
11.4 If any provision of this Agreement is held by a court of competent
jurisdiction to be invalid, void, or unenforceable, the remainder of the
provisions shall remain in full force and effect and shall in no way be
effected, impaired or invalidated.
-8-
<PAGE>
11.5 This Agreement may be executed in counterparts, each of which shall
be deemed an original, but all of which together shall constitute one and the
same instrument.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement
as of the date first above written.
VEXCEL CORPORATION
By: /s/ John C. Curlander
-------------------------------
President
IMAGE GUIDED TECHNOLOGIES, INC.
By: /s/ Robert E. Silligman
-------------------------------
President
