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EXHIBIT 10.1
ROYALTY ACCELERATION AGREEMENT
THIS ROYALTY ACCELERATION AGREEMENT (the "AGREEMENT") made as of June 16, 2000
by and between Sunrise Technologies International, Inc., f/k/a Laser Biotech,
Inc., a Delaware corporation, having its principal place of business at 3400
West Warren Avenue, Fremont, California 94538 (hereinafter "SUNRISE") and Bruce
J. Sand, M.D., F.A.C.S. of 638 Lindero Canyon Road, Suite 507, Oak Park,
California 91301 (hereinafter "DR. SAND");
W I T N E S S E T H :
WHEREAS the parties to this Agreement have entered into that certain Amended and
Restated Patent and Technology Assignment Agreement dated June 16, 2000 (the
"AMENDED AND RESTATED PATENT AND TECHNOLOGY ASSIGNMENT AGREEMENT") amending that
certain Patent and Technology Assignment Agreement dated April 3, 1992, as
amended by that certain letter agreement dated November 16, 1994 (collectively,
and together with all other agreements whether oral or written between the
parties existing prior to the date hereof, the "ORIGINAL ASSIGNMENT AGREEMENT")
whereby Dr. Sand licensed to Sunrise certain patents and technologies; and
WHEREAS, Sunrise and Dr. Sand hereby agree to amend and alter all prior
arrangements between the parties regarding Dr. Sand's royalty rights under the
Original Assignment Agreement by hereby accelerating all of Dr. Sand's rights to
such royalties under the Original Assignment Agreement in exchange for warrants
of common stock in Sunrise Technologies International, Inc. to the mutual
benefit of the parties. The accelerated value is the fair market value of the
royalty Dr. Sand will receive in exchange for all of his rights under the
Original Assignment Agreement. Upon signing this Royalty Acceleration Agreement,
Dr. Sand terminates all rights to any royalties under the Original Assignment
Agreement.
NOW THEREFORE, in consideration of the mutual covenants and agreements herein
contained and for other good and valuable consideration (the receipt and
sufficiency of which are hereby acknowledged) the parties hereby covenant and
agree with each other as follows:
ARTICLE I: DEFINITIONS
1.1 "Product" means a laser device for the shrinking of collagen tissue,
comprising: (i) a laser source (including power supply); and (ii) a
device through which the laser beam is delivered to the collagen tissue;
if Sunrise's manufacture or sale of such device would directly or
contributorily infringe or induce infringement of a Valid Claim in the
country for which the device is made or in which the device is sold.
1.2 "Patent Rights" means all worldwide rights of Dr. Sand to any subject
matter described, claimed or covered by any of the patents or patent
applications listed in Exhibit A, including any foreign counterparts,
continuations, continuations-in-part, divisions, and reissues, and
extensions of any of the foregoing.
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1.3 "Related Technology" means all ideas, know-how, trade secrets, data,
inventions, discoveries and any other proprietary rights (excluding the
Patent Rights) related to the Patent Rights developed in whole or in
part by Dr. Sand prior to or during the term of this Agreement.
1.4 "Valid Claim" means a claim of an issued and unexpired patent included
within the Patent Rights that has not been held unenforceable,
unpatentable or invalid by a decision of a court or governmental agency
of competent jurisdiction, and that has not been admitted to be invalid
or unenforceable through reissue disclaimer or otherwise.
ARTICLE 2: ACCELERATION OF ROYALTY
RIGHTS IN EXCHANGE OF WARRANTS
2.1 Subject to the terms of the Royalty Acceleration Agreement, Sunrise and
Dr. Sand hereby agree to terminate the payment of all royalties to Dr.
Sand on sales of Products and Combination Products as provided for in
the Original Assignment Agreement in exchange for a warrant (the
"Warrant") to purchase 750,000 shares of common stock of Sunrise, with
an exercise price of $.01 per share, which shall be substantially in the
form of Exhibit B attached hereto. The receipt of such Warrant is the
agreed present value of the future royalty stream Dr. Sand is entitled
to receive for his transfer of all rights to the patents listed on
Exhibit A. Dr. Sand shall assign the patent titled "Prevention of
Regression in Refractive Keratoplasty" application #09\550,579. In
addition, Edward King shall receive a warrant to purchase 67,500 shares
of common stock of Sunrise, with an exercise price of $.01 per share,
which shall be in the form of Exhibit C attached hereto.
2.2 Dr. Sand hereby agrees (i) to accept the Warrant in exchange for the
termination of all of his royalty rights on the sales of Products and
Combination Products as provided for in the Original Assignment
Agreements and (ii) to assign to Sunrise free of all liens and claims
all the patent and technologies contemplated in the Amended and Restated
Patent and Technology Assignment Agreement including, but not limited
to, the patent titled "Prevention of Regression in Refractive
Keratoplasty" application #09\550,579.
ARTICLE 3: TERM AND TERMINATION
3.1 Unless sooner terminated pursuant to this Article 3, this Agreement
shall commence upon the date hereof and shall automatically expire upon
the later of (a) the expiration of the last-to-expire patent within the
Patent Rights, or (b) the abandonment of the last application within the
Patent Rights.
All of the provisions of this Agreement shall survive expiration of this
Agreement except Article 2, which shall terminate.
3.2 GENERAL. Upon the expiration or termination of this Agreement for any
reason, nothing herein shall be construed to release either party from
any obligation that matured prior to the effective date of such
termination.
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ARTICLE 4: CONFIDENTIALITY
4.1 OBLIGATIONS OF DR. SAND. All scientific and technical information known
or possessed by Dr. Sand concerning the Patent Rights or the Related
Technology shall be deemed "Confidential Information." Dr. Sand shall
not disclose or provide any such Confidential Information to any third
party without the other party's prior written consent.
4.2 OBLIGATIONS OF SUNRISE. Sunrise shall protect the Confidential
Information in a manner consistent with Sunrise's protection of its
other confidential information.
ARTICLE 5: REPRESENTATIONS AND WARRANTIES
5.1 Dr. Sand hereby acknowledges and reaffirms the representations and
warranties set forth in Section 6.1 of Article 6 of the Amended and
Restated Patent and Technology Assignment Agreement and such
representations and warranties are hereby incorporated into this
Agreement by reference.
5.2 Sunrise hereby acknowledges and reaffirms the representations and
warranties set forth in Section 6.2 of Article 6 of the Amended and
Restated Patent and Technology Assignment Agreement and such
representations and warranties are hereby incorporated into this
Agreement by reference.
ARTICLE 6: NOTICE
6.1 NOTICES: Any notice, request, demand or other communication by the terms
hereof required or permitted to be given by one party to another shall
be given in writing by registered mail, postage prepaid, addressed to
such other party or delivered to such other party as follows:
Sunrise: Sunrise Technologies International, Inc.
3400 West Warren Avenue
Fremont, California 94538
Attn: John Hendrick
Senior VP, COO
Phone 510.771.2307
Fax 510.623.9163 (fax)
e-Mail [email protected]
with copy to: Duane, Morris & Heckscher LLP
227 W. Monroe Street
Suite 3400
Chicago, Illinois 60606
Attn: Eric Fogel, Esq.
E-Mail [email protected]
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Dr. Sand: Bruce J. Sand, M.D., F.A.C.S.
638 Lindero Canyon Road
Suite 507
Oak Park, California 91301
Phone 818.991.2374
Fax 818.991.2264
with copy to: Edward Vincent King, Jr.
King & Kelleher LLP
One Embarcadero Center
17th Floor
San Francisco, California 94111
Phone 415.781.2888
Fax 415.781.3011
E-Mail [email protected]
or at such other address as may be given by any one of the parties. Any
notice required or permitted under this Agreement shall be in writing
and shall be deemed to be given upon the date of personal delivery or
within three (3) days of being mailed anywhere in the continental United
States as registered mail postage prepaid and addressed to the addressee
at his last address recorded on the records of Sunrise. Provided
however, that during any postal interruption, the said three (3) day
period shall not be deemed to commence running until after the
termination of such postal interruption.
ARTICLE 7: GENERAL PROVISIONS
7.1 GOVERNING LAW: This Agreement shall be construed, governed, interpreted
and applied in accordance with the laws of the State of California as if
executed and fully performed within California, except that questions
affecting the construction and effect of any patent shall be determined
by the law of the country in which the patent was granted.
7.2 ENTIRE AGREEMENT: The parties hereto acknowledge that this instrument
sets forth the entire agreement and understanding of the parties hereto
as to the subject matter hereof, and shall not be subject to any change
or modification except by the execution of a written instrument
subscribed to by the parties hereto. Without limiting the foregoing, it
is understood that the Original Assignment Agreement and all other
agreements whether oral or written between the parties existing on the
Restatement Effective Date are superseded by this Amended and Restated
Patent and Technology Agreement and shall have no further force or
effect whatsoever.
7.3 SEVERABILITY: The provisions of this Agreement are severable, and in the
event that any provisions of this Agreement are determined to be invalid
or unenforceable under any controlling body of law, such invalidity or
enforceability shall not in any way affect the validity or
enforceability of the remaining provisions hereof.
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7.4 NO WAIVER: The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement
shall not constitute a waiver of that right or excuse a subsequent
failure to perform any such term or condition by the other party.
7.5 NUMBER AND GENDER: All terms and words used in this Agreement regardless
of the number and gender in which they are used shall be deemed and
construed to include any other number, singular or plural, and any other
gender, masculine or feminine or neuter as the context or sense of this
Agreement or any paragraph or clause herein may require, the same as if
such words have been fully and properly written in the appropriate
number and gender.
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IN WITNESS whereof the parties have duly executed this Agreement as of the date
first written above.
SUNRISE TECHNOLOGIES, INC., BRUCE J. SAND, M.D.
F/K/A LASER BIOTECH, INC.
By: /s/ JOHN N. HENDRICK By: /s/ BRUCE J. SAND, M.D.
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Name: John N. Hendrick
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Title: C.O.O.
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EXHIBIT A
Form of Warrant
