Exhibit 10.3


 


Assignment Agreement dated June 9,
2005


between Lpath Therapeutics Inc.


and LPL Technologies, Inc.


 





















 


ASSIGNMENT AGREEMENT


 


This
ASSIGNMENT AGREEMENT (the “Agreement”) is entered as of the 9th day of June 2005
by and between Lpath Therapeutics, Inc., a Delaware corporation (“Buyer”),
and LPL Technologies, Inc., a Delaware corporation (“Seller”).


 


WHEREAS,
Seller owns by way of assignment the entire right, title, and interest in and
to the patent rights, as defined on Exhibit A appended hereto (the “Patent
Rights”).


 


WHEREAS,
Buyer wishes to purchase from Seller, and Seller wishes to sell to Buyer,
Seller’s entire right, title, and interest in and to the Patent Rights upon the
following terms and conditions:


 


1.                                       Assignment; Documentation; Exclusion of
Liabilities.


 


1.1                                 Seller hereby assigns to Buyer exclusively
throughout the world all right, title, and interest (choate or inchoate) in the
Patent Rights (the “Assignment”), and Buyer hereby accepts the Assignment.


 


1.2                                 Within twenty-five (25) days after the
Effective Date (as defined below) of this Agreement, Seller shall deliver to
Buyer (or Buyer’s designee) all documentation (whether in written or electronic
form) then in the possession of Seller’s patent counsel, Baker &
Hosteller LLP, related to the Patents Rights (the “Documentation”). Without
limiting the generality of the foregoing, such documentation may include such
items as patent application file wrappers, docket and patent and patent
application status information, invention disclosures, the complete name and
current address of any inventor or applicant listed on any patent or patent
application within the Patent Rights or on any invention disclosure related
thereto, laboratory notebooks, manuscripts and publications, published abstracts,
posters presented at scientific symposia, business and scientific presentations
(whether made in academic or commercial settings), and the like. Upon delivery,
the Documentation shall become the sole and exclusive property of Buyer, and
Buyer shall thereafter have the unrestricted right to make, use, reproduce,
sell, display, create derivatives of, modify, distribute, perform, or otherwise
exploit the Documentation.


 


1.3                                 Seller shall retain no right, license, or
interest whatsoever in or to the Patent Rights or Documentation, or to any
discovery, invention, or work of authorship disclosed or described therein.


 


1.4                                 Buyer shall not assume, shall not take
subject to, and shall not be liable for, any liabilities or obligations of any
kind or nature, whether absolute, contingent, accrued, known, or unknown, of
Seller or any affiliate of Seller as a result of the Assignment or the delivery
of the Documentation.


 


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2.                                       Further Assurances.


 


2.1                                 Seller agrees to execute, acknowledge and
deliver such further instruments and to do all such other acts as may be
necessary or appropriate in order to carry out the express provisions of this
Agreement. If Buyer is unable for any reason whatsoever to secure Seller’s
signature to any document it is entitled to under this Agreement, Seller hereby
irrevocably designates and appoints Buyer and its duly authorized officers and
agents, as its agent and attorney-in-fact with full power of substitution to
act for and on behalf of and instead of Seller, to execute and file any such
document or documents and to do all other lawfully permitted acts to further
the purposes of the foregoing with the same legal force and effect as if
executed by Seller.


 


2.2                                 To the extent allowed by law, the Assignment
includes all rights of paternity, integrity, disclosure and withdrawal and any
other rights that may be known as or referred to as “moral rights” or the like
(collectively, “Moral Rights”). To the extent Seller retains any such Moral Rights
under applicable law, Seller hereby ratifies and consents to, and provides all
necessary ratifications and consents to, any action that may be taken with
respect to such Moral Rights by or authorized by Buyer, and Seller agrees not
to assert any Moral Rights with respect thereto. Seller shall confirm any such
ratifications, consents, and agreements from time to time as requested by Buyer.


 


3.                                       Consideration. Subject to the fulfillment of Seller’s
obligations under this Agreement, as full and complete consideration for the
Assignment, delivery of Documentation, and the other rights conveyed pursuant
to this Agreement, the sufficiency of which Seller hereby acknowledges, Buyer
shall pay to Seller within twenty-five (25) days after the Effective Date:


 


3.1                                 Twelve Thousand Five Hundred Dollars
(US$12,500);


 


3.2                                 Twelve Thousand Five Hundred shares of common
stock of Buyer, as evidenced by Buyer’s issuance of a stock certificate naming
Seller as the owner of such number of shares of Buyer’s common stock; and


 


3.3                                 The total ground shipping charges for
delivery of the Documentation referred to in Section 1.2 hereof.


 


4.                                       Confidential Information. Seller shall not use or disclose anything
assigned to Buyer hereunder or any other technical or business information or
plans of Buyer to any third party. Seller recognizes and agrees that there is
no adequate remedy at law for a breach of this Section 4, that such a
breach would irreparably harm Buyer, and that Buyer is entitled to equitable
relief (including, without limitation, issuance of any injunction) with respect
to any such breach or potential breach in addition to any other remedies.


 


5.                                      Representations and Warranties. Seller represents and warrants to Buyer
that: (i) Seller is the sole owner (other than Buyer) of all rights,
title, and interest in the Patent Rights and Documentation in the countries in
which they have been issued or pending, that Seller holds good and marketable
title to the Documentation and in all of the patents and patent applications within
the Patent Rights, that Seller has the complete and unrestricted power and the
unqualified


 


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right
to sell, assign, and deliver the Patent Rights and Documentation to Buyer, and
that, except for Documentation in the possession of Seller’s outside patent
counsel, Seller does not otherwise possess, control, or have access to
Documentation; (ii) Seller has not assigned, transferred, licensed,
pledged, or otherwise encumbered any patent or patent application within the
Patent Rights or any discovery, invention, or work of authorship disclosed in
the Patent Rights or Documentation, or agreed to do so; (iii) Seller is duly
organized and in good standing in the state of its incorporation; (iv) the
execution, delivery, and performance of this Agreement, nor the consummation of
the transaction contemplated hereby, shall, with or without the passage of time
or the delivery of notice or both, (a) conflict with, violate, or result
in any breach of the terms, conditions, or provisions of the certificate of
incorporation or bylaws of Seller, or (b) conflict with or result in a
violation or breach of, or constitute a default or require consent of any third
party (or give rise to any right of termination, cancellation, or acceleration)
under any of the terms, conditions, or provisions of any contract or other
instrument or obligation to which Seller is a party or by which Seller or any
patent or patent application within the Patent Rights may be bound; (v) Seller
has full power and authority to enter into this Agreement and to make the
Assignment and to deliver the Documentation; (vi) the execution and
delivery of this Agreement by Seller and the performance by Seller of its
obligations hereunder have been duly authorized by all necessary action by the
board of directors, and, if necessary, shareholders, of Seller, and no other
act or proceeding on the part of or on behalf of Seller or its board of
directors or shareholders is necessary to approve the execution and delivery of
this Agreement; (vii) the signatory officer(s) of Seller have the power
and authority to execute and deliver this Agreement and to take all other
actions required to be taken by Seller pursuant to the provisions of this
Agreement; (viii) Seller is not aware of any violation, infringement, or
misappropriation of any third party’s intellectual property rights (or any
claim thereof) by or through the practice of any discovery, invention, or work
of authorship disclosed, claimed, or otherwise provided in the Patent Rights or
Documentation; (ix) Seller is not aware of any questions or challenges
with respect to the validity of any claims of any issued patents or of any
pending patent application within the Patent Rights; (x) this Agreement has
been duly and validly executed and delivered by Seller and constitutes a legal,
valid, and binding agreement, enforceable against Seller in accordance with its
terms; and (xi) following execution of this Agreement, no restriction shall
exist on Buyer’s right to sell, resell, license, sublicense, or transfer in
whole or in part (a) the Documentation or (b) any patent or patent
application within the Patent Rights.


 


6.                                     Fair Consideration; No Fraudulent Conveyance.  The
sale of the Patent Rights and Documentation pursuant to this Agreement is made
in exchange for fair and equivalent consideration. Seller is not now insolvent
and shall not be rendered insolvent by the sale, transfer, and assignment of
the Patent Rights or Documentation pursuant to the terms of this Agreement.
Seller is not entering into this Agreement or any of the other agreements
referenced in this Agreement with the intent to defraud, delay, or hinder its
creditors and the consummation of the transactions contemplated by this
Agreement shall not have any such effect. This Agreement and the Assignment
shall not constitute a fraudulent conveyance or otherwise give rise to any
right of any creditor of Seller to any portion of the Documentation or any
patent or patent application within the Patent Rights after the Effective Date.


 


7.                                     Post-Closing Cooperation. Seller agrees that, if reasonably requested
by Buyer, it shall cooperate with Buyer, at Buyer’s expense, in enforcing the
terms of any agreement between


 


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Seller and any third party involving the Patent Rights or any portion
thereof, including, without limitation, terms relating to confidentiality and
the protection of intellectual property rights. In the event that Buyer is
unable to enforce its intellectual property rights against a third party as a
result of a rule or law barring enforcement of such rights by a transferee
of such rights, Seller agrees to initiate proceedings against such third party
in Seller’s name, provided that Buyer shall be entitled to participate in such
proceedings and provided further that Buyer shall be responsible for the
expenses of such proceedings.


 


8.                                      Taxes. Seller shall be responsible for paying and shall promptly discharge
when due any sales, use, transfer, income, or other tax or other governmental
charge, fee, or obligation payable by Seller arising from or attributable to
the Assignment, delivery of Documentation, or this Agreement.


 


9.                                      Miscellaneous.


 


9.1                                 Any notice, report, approval, or consent
required or permitted hereunder shall be in writing and will be deemed to have
been duly given if delivered personally or mailed by first-class, registered or
certified U.S. mail, postage prepaid to the respective addresses of the parties
as set below (or such other address as a party may designate in writing by ten (10) days
notice).


 


9.2                                 No failure to exercise, and no delay in
exercising, on the part of either party, any privilege, any power or any rights
hereunder shall operate as a waiver thereof, nor shall any single or partial
exercise of any right or power hereunder preclude further exercise of any other
right hereunder. If any provision of this Agreement shall be adjudged by any
court of competent jurisdiction to be unenforceable or invalid, that provision
shall be limited or eliminated to the minimum extent necessary so that this
Agreement shall otherwise remain in full force and effect and enforceable.


 


9.3                                 This Agreement shall be deemed to have been
made in, and shall be construed pursuant to the laws of the State of California
and the United States without regard to conflicts of laws provisions thereof.
Each of the parties to this Agreement consents to the exclusive jurisdiction and
venue of the state and federal courts located in San Diego County, California.
The prevailing party in any action to enforce this Agreement shall be entitled
to recover costs and expenses including, without limitation, attorneys’ fees.


 


9.4                                 The terms of this Agreement are confidential
to Buyer and no press release or other written or oral disclosure of any nature
regarding the compensation terms of this Agreement shall be made by Seller
without Buyer’s prior written approval; provided, however, approval for such disclosure
shall be deemed given to the extent such disclosure is required to comply with applicable
laws or governmental rules and regulations.


 


9.5                                 Any waiver or amendment of this Agreement
shall be effective only if made in writing and signed by a representative of
the respective parties authorized to bind the parties.


 


9.6                                 Both parties agree that this Agreement
(including the first three paragraphs and appended Exhibit A) represents
the complete and exclusive statement of the mutual


 


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understanding of the parties with respect to, and supersedes and
cancels all previous written and oral agreements and communications relating
to, the subject matter of this Agreement.


 


9.7                                This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original and all of which
together shall constitute one instrument.


 


9.8                                Each party acknowledges and represents that,
in executing this Agreement, it has had the opportunity to seek advice as to
its legal rights from legal counsel and that the person signing on its behalf
has read and understood all of the terms and provisions of this Agreement. Each
party shall be responsible for payment of any legal fees it incurs with respect
to the drafting, negotiation, and execution of this Agreement. This Agreement
shall not be construed against any party by reason of the drafting or
preparation thereof.


 


IN WITNESS WHEREOF, the parties have executed this Agreement on the day
and year first indicated above.


 


	
  SELLER – LPL TECHNOLOGIES,
  INC.

  
	
   

  
	
  By:

  	
  /s/ Aarun M. Goldman

  	
   

  
	
   

  	
   

  	
   

  
	
  Name:

  	
  AARUN M. GOLDMAN

  	
   

  
	
   

  	
   

  	
   

  
	
  Title:

  	
  ACTING CFO

  	
   

  
	
   

  	
   

  	
   

  
	
  Address:

  	
  7740 METRIC DRIVE

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  MENTOR, OHIO 44060

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  
	
  BUYER – LPATH
  THERAPEUTICS, INC.

  
	
   

  
	
  By:

  	
  /s/ Scott Pancoast

  	
   

  
	
   

  	
   

  	
   

  
	
  Name:

  	
  SCOTT PANCOAST

  	
   

  
	
   

  	
   

  	
   

  
	
  Title:

  	
  President

  	
   

  
	
   

  	
   

  	
   

  
	
  Address:

  	
  9191 Towne Centre Dr.

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  San Diego, CA 92122

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  



 


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Exhibit A


 


Patent Rights


 


For
purposes of this Agreement, “Patent Rights” shall be defined as the United
States patents scheduled below, together with any United States provisional
and/or non-provisional patent application from which any such patent issued or
claims priority, as well as any divisional, continuation (including any
continuation-in-part), reissue, or reexamination of any such patent or patent
application, and any international or foreign counterpart of any such patent
application or patent.


 


U.S.
patents


 


1.                U.S. patent number 6,248,553


2.                U.S. patent number 6,255,063


3.                U.S. patent number 6,380,177


4.                U.S. patent number 6,448,023


5.                U.S. patent number 6,461,830


6.                U.S. patent number 6,485,922


7.                U.S. patent number 6,500,633


8.                U.S. patent number 6,716,595


 


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