Exhibit 10.1
PATENT AND TECHNOLOGY LICENSE AGREEMENT
This AGREEMENT ("AGREEMENT") is made on this 15th day of April, 2004 ("EFFECTIVE
DATE"), by and between Vista Medical Technologies, Inc., a Delaware corporation,
having a principal place of business located at 2101 Faraday Avenue, Carlsbad,
CA 92008 ("LICENSOR"), and Viking Systems, Inc., a Nevada corporation, having a
principal place of business located at 7514 Girard Ave., Suite 1509, La Jolla,
CA
92037 ("LICENSEE").
RECITALS
A.
WHEREAS, pursuant to that certain Asset
Purchase Agreement by and between LICENSOR and LICENSEE dated December 22 (the
"Asset Purchase Agreement"), LICENSEE is acquiring from the LICENSOR, and
LICENSOR is selling to LICENSEE, certain assets ("ASSETS") of the LICENSOR's
medical device and technology business ("BUSINESS"); and
B.
WHEREAS, LICENSOR owns certain
intellectual property rights necessary to make use of such ASSETS, commercialize
LICENSED PRODUCTS and operate the BUSINESS; and
C.
WHEREAS, LICENSEE desires to license
certain intellectual property rights necessary to make use of such ASSETS,
commercialize LICENSED PRODUCTS and operate the BUSINESS and LICENSOR is willing
to grant such an exclusive license to LICENSEE.
NOW, THEREFORE, in consideration of the mutual covenants and promises herein
contained, the parties agree as follows:
I.
DEFINITIONS
All definitions below or elsewhere in this AGREEMENT apply to both their
singular and plural forms, as the context may require.
"Herein," "hereunder,"
and "hereof" and other similar expressions refer to this AGREEMENT.
"Section"
refers to sections in this AGREEMENT.
"Including" means "including without
limitation."
"Days" means "calendar days," unless otherwise stated.
1.1 "AFFILIATE" MEANS ANY BUSINESS ENTITY MORE THAN FIFTY PERCENT (50%) OWNED BY
LICENSEE, ANY BUSINESS ENTITY WHICH OWNS MORE THAN FIFTY PERCENT (50%) OF
LICENSEE, OR ANY BUSINESS ENTITY THAT IS MORE THAN FIFTY PERCENT (50%) OWNED BY
A BUSINESS ENTITY THAT OWNS MORE THAN FIFTY PERCENT (50%) OF LICENSEE.
1.2 "CONFIDENTIAL INFORMATION" MEANS THE PROPRIETARY OR CONFIDENTIAL INFORMATION
OF A PARTY (EACH, A "DISCLOSER") WHICH IS DISCLOSED TO THE OTHER PARTY (EACH, A
"RECIPIENT") BEFORE OR AFTER THE EFFECTIVE DATE AND (I) IS IDENTIFIED AS
"CONFIDENTIAL" BY DISCLOSER IN WRITING PRIOR TO DISCLOSURE AND (II) RELATES TO
PRODUCTS, PLANS, DESIGNS, COSTS, PRICES, FINANCES, MARKETING PLANS, BUSINESS
OPPORTUNITIES, PERSONNEL, RESEARCH, DEVELOPMENT, KNOW-HOW, TRADE SECRETS,
INVENTIONS, BLUEPRINTS, TECHNIQUES, CHEMICAL OR BIOLOGICAL MATERIALS, DRUGS,
DEVICES, SPECIMENS, APPARATUS, PROCESSES, ALGORITHMS, SOFTWARE PROGRAMS,
SCHEMATICS,
DESIGNS, CONTRACTS, CUSTOMER LISTS, PROCEDURES, FORMULAE, PATENT APPLICATIONS
AND OTHER INFORMATION RELATING TO DISCLOSER'S BUSINESS, SERVICES, PROCESSES OR
TECHNOLOGY.
CONFIDENTIAL INFORMATION SHALL NOT INCLUDE INFORMATION THAT
RECIPIENT PROVES:
(I) WAS KNOWN BY RECIPIENT, OR WAS PUBLICLY AVAILABLE, PRIOR
TO DISCLOSURE BY DISCLOSER TO RECIPIENT; (II) BECAME PUBLICLY AVAILABLE AFTER
DISCLOSURE BY DISCLOSER TO RECIPIENT THROUGH NO ACT OF RECIPIENT; (III) IS
HEREAFTER RIGHTFULLY FURNISHED TO RECIPIENT BY A THIRD PARTY WITHOUT
CONFIDENTIALITY RESTRICTION; OR (IV) IS DISCLOSED WITH THE PRIOR WRITTEN CONSENT
OF DISCLOSER OR AS EXPRESSLY AUTHORIZED UNDER THIS AGREEMENT.
1.3 "GROSS REVENUES" MEANS ROYALTIES, UP-FRONT PAYMENTS, MARKETING,
DISTRIBUTION, FRANCHISE, OPTION, LICENSE, OR DOCUMENTATION FEES, BONUS AND
MILESTONE PAYMENTS, EQUITY SECURITIES OR ANY OTHER PAYMENT OR VALUE RECEIVED