EXHIBIT 10.18
SOFTWARE DISTRIBUTION AGREEMENT
by and between
STEREOTAXIS INC., UNITED STATES OF AMERICA
- hereinafter referred to as "Stereotaxis" -
and
SIEMENS AKTIENGESELLSCHAFT, BERLIN AND MUNCHEN,
Federal Republic of Germany
- hereinafter referred to as "Siemens" -
concerning the "3D Pre-Operative Image Navigation" software
CONFIDENTIAL TREATMENT
REQUESTED BY STEROTAXIS, INC.
ARTICLE 1 - DEFINITIONS .................................................... 3
ARTICLE 2 - LICENSE GRANT .................................................. 5
ARTICLE 3 - COPYRIGHT, TRADEMARKS, TITLE ................................... 6
ARTICLE 4 - SUPPLY OF LICENSED SOFTWARE AND SOFTWARE DOCUMENTATION ......... 7
ARTICLE 5 - TIMELINES ...................................................... 8
ARTICLE 6 - WARRANTY ....................................................... 8
ARTICLE 7 - INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES .................. 9
ARTICLE 8 - PRICE, PAYMENT ................................................. 13
ARTICLE 9 - AUDITING RIGHTS ................................................ 14
ARTICLE 10 - MAINTENANCE .................................................... 14
ARTICLE 11 - CONFIDENTIALITY ................................................ 15
ARTICLE 12 - LIMITATION OF LIABILITY ........................................ 18
ARTICLE 13 - FORCE MAJEURE .................................................. 19
ARTICLE 14 - ARBITRATION .................................................... 19
ARTICLE 15 - SUBSTANTIVE LAW ................................................ 20
ARTICLE 16 - TERM OF THE AGREEMENT .......................................... 20
ARTICLE 17 - TERMINATION .................................................... 20
ARTICLE 18 - EXPORT REGULATIONS ............................................. 22
ARTICLE 19 - MISCELLANEOUS .................................................. 22
PREAMBLE
WHEREAS, Siemens and Stereotaxis have entered into an extended collaboration
agreement to improve interventional procedures in the cardiac cathlab by
enabling visualization and navigation with pre-operative anatomical 3D images
(hereinafter referred to as the "Extended Collaboration Agreement");
WHEREAS, Siemens and Stereotaxis do not intend for any provision of this
Agreement to alter or amend the rights or obligations provided under the
Extended Collaboration Agreement;
WHEREAS, Siemens has developed the Siemens "Pre-operative Imaging Component"
software and/or is the owner of or is entitled to dispose of the proprietary
rights of and/or titles to such software product;
WHEREAS, Stereotaxis desires to obtain license and distribution rights in such
software product;
WHEREAS, Siemens is willing to license such software product to Stereotaxis as
consideration for license fees stated herein and on the terms and conditions set
forth in this Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual covenants herein
contained Stereotaxis and Siemens agree as follows:
ARTICLE 1 - DEFINITIONS
Wherever used in this Agreement, unless otherwise indicated expressly in the
context of this Agreement, the following terms shall have the following meanings
ascribed to them:
1.1 "Agreement" shall mean this
software distribution agreement including
all Annexes and any matters specifically incorporated herein by
reference and made a part hereof.
1.2 "End-user" shall mean the customer of Stereotaxis who uses the Licensed
Software as embedded within the Product for its own medical or
scientific purposes.
CONFIDENTIAL TREATMENT
REQUESTED BY
STEREOTAXIS, INC.
1.3 "Licensed Software" shall mean the software program presently known as
3D Pre-Operative Image Navigation V1.00 in Object Code and finally and
conclusively described in ANNEX 1 and all Updates thereto.
1.4 "Software Documentation" shall mean the information needed to draft
End-user manuals and all other information related to the Licensed
Software, as set-out in ANNEX 2 and all Updated Software Documentation
thereto. Siemens will provide this in machine-readable form.
1.5 "Effective Date" shall mean the date on which the last of the Parties
has executed this Agreement.
1.6 "Hardware" shall mean the hardware equipment as described in ANNEX 3.
1.7 "Object Code" shall mean code for the Licensed Software resulting from
translation of source code into machine readable format appropriate for
operation on the Hardware.
1.8 "Product" shall mean the Stereotaxis Navigant system or similar or
extended successor systems.
1.9 "Reference Environment" shall mean a system consisting of the Hardware
and the software described in ANNEX 1 and shall be used for testing the
Licensed Software and for communicating, duplicating and reproducing
errors of the Licensed Software.
1.10 "Updated Software Documentation" shall mean any change in the Software
Documentation that is needed because of an Update or changes of the
Hardware.
1.11 "Update" shall mean a new release of the Licensed Software that
incorporates error corrections; software changes due to vendor-
required Hardware changes, or for migration to higher versions of
Windows software or DICOM networking standard, improved performance
and other minor changes, none of which will delete any functionality.
Improved performance will only be part of Updates, if and to the
extent Siemens is contractually allowed to license such improvement
to Stereotaxis. It is designated by a change in the second digit to
the right of the decimal point in the Licensed Software version
number.
1.12 "Affiliate" shall mean a corporation, company or other entity
(i) more than fifty percent (50%) of whose outstanding shares or
securities representing the right to vote for the election of
the board of directors or a similar managing authority or a
supervisory board are, or
(ii) which does not have outstanding shares or securities, as may
be the case in a partnership, joint venture or unincorporated
association, but more than fifty percent (50%) of the
ownership interest representing the right to make decisions
for such entity is
now or hereafter, owned or controlled directly or indirectly, by
Stereotaxis or its parent companies or Siemens, respectively, but such
corporation, company or other entity shall be deemed to be an Affiliate
only so long as such ownership or control exists.
1.13 "Party" shall mean either Siemens or Stereotaxis.
1.14 "Parties" shall mean both Siemens and Stereotaxis.
ARTICLE 2 - LICENSE GRANT
2.1 Subject to the terms of this Agreement and without limiting the rights
of the parties under the Extended Collaboration Agreement, Siemens
hereby grants to Stereotaxis for the term of this Agreement subject to
the payment of the license fees as set forth in Article 8 a
non-exclusive, non-transferable, worldwide license to use, copy,
distribute to End-users and to sublicense End-users the right to use
the Licensed Software.
2.2 Subject to the terms of this Agreement, Siemens hereby grants to
Stereotaxis for the term of this Agreement, subject to the payment of
the license fees as set forth in Article 8, a non-exclusive,
non-transferable, worldwide license to use, copy, change, translate and
distribute to End-users the Software Documentation as part of an
End-user manual that is handed over to the End-user. There shall be no
reference in End-user manuals as to the origin of the Software
Documentation.
CONFIDENTIAL TREATMENT
REQUESTED BY
STEREOTAXIS, INC.
2.3 Each licensing of Licensed Software to End-users shall be subject to
legally binding, written license agreements the terms and conditions of
which shall contain appropriate terms that are substantially similar to
the terms of Articles 2, 3 and 11 of this Agreement.
2.4 If the Parties agree to incorporate freeware, shareware or open source
software into the Licensed Software, no license fee shall be charged to
Stereotaxis for the use of such freeware, shareware or open source
software. Stereotaxis acknowledges and agrees that Siemens provides no
warranties and shall have no liability whatsoever in respect of
Stereotaxis's possession and/or use of the freeware, shareware or open
source software. Regarding such portions of Licensed Software,
Stereotaxis hereby accepts the specific license conditions either being
part of the Software Documentation or accompanying the Hardware ("Open
Source Conditions"). Upon request of Stereotaxis, Siemens shall provide
a copy of the source code of the open source software, if required by
the Open Source Conditions. To the extent there is a conflict between
this Agreement and the Open Source Conditions, the terms of the Open
Source Conditions shall prevail over the terms and conditions of this
Agreement with regard to the open source software.
ARTICLE 3 -- COPYRIGHT, TRADEMARKS, TITLE
3.1 All rights, title and interest in and to the Licensed Software (and any
part thereof) and the Software Documentation (and any part thereof),
other than those expressly granted herein, shall remain wholly vested
in Siemens or its third party licensors. Stereotaxis acknowledges that
it has no rights whatsoever in respect of the Licensed Software and
Software Documentation save for those expressly granted to it by this
Agreement.
3.2 Nothing in this Agreement entitles either Party to use any trademark of
the other Party or its Affiliates or any other xxxx confusingly similar
thereto, without the express written consent of the other Party.
3.3 Stereotaxis shall in any case use reasonable efforts to safeguard the
Licensed Software and the Software Documentation in its possession and
control the rights therein with the same degree of case as is used with
respect to Stereotaxis's own equally important software, documentation
and rights therein, but at least with
reasonable care.
Other than as permitted hereunder, as contemplated under the Extended
Collaboration Agreement or required by law, Stereotaxis shall not copy,
translate, modify, create derivative works, disassemble, reverse engineer,
decompile, attempt, directly or indirectly, to otherwise obtain or create source
code of the Licensed Software or otherwise use the Licensed Software and
Software Documentation
3.4 Stereotaxis agrees that using, distributing, copying, duplicating or
otherwise reproducing all or any part of the Licensed Software other
than in accordance with this Agreement, and Stereotaxis's failure to
perform its obligations for End-users as set forth in this Agreement,
may be considered a material breach of this Agreement.
3.6 In case of Siemens' knowledge or reasonable assumption that, as a
result of an action or inaction by Stereotaxis a third party is using
or has used the Licensed Software or Software Documentation without
proper authorization, then upon receipt of written request from
Siemens, Stereotaxis shall confirm in writing whether such third party
is an End-user or not. If such third party is an End-user, then Siemens
and Stereotaxis shall mutually decide on the proper course of action to
address the potential infringement. If such third party is not an
End-user, then Stereotaxis shall reasonably assist Siemens in enforcing
its rights (which assistance shall not include preparation for or
participation in litigation) against such third party, and shall
furnish all available information thereto which Stereotaxis is
permitted to disclose.
ARTICLE 4 - SUPPLY OF LICENSED SOFTWARE AND SOFTWARE DOCUMENTATION
4.1 Siemens will supply to Stereotaxis the Object Code of the Licensed
Software and Software Documentation on CD or other electronic form as a
master copy. During the term of this Agreement, Stereotaxis may use,
copy and distribute the Licensed Software and the Software
Documentation. Stereotaxis shall provide to Siemens on a quarterly
basis a list of the number of new End-users. Siemens may audit
Stereotaxis in accordance with Section 9 below.
4.2 Siemens will without undue delay make available to Stereotaxis any new
Update for licensing under the terms and conditions of this Agreement.
CONFIDENTIAL TREATMENT
REQUESTED BY
STEREOTAXIS, INC.
ARTICLE 5 - TIMELINES
Both Parties will use commercially reasonable efforts to meet the
timelines set forth in Annex 1. As part of these efforts, Siemens will
support Stereotaxis, at no cost to Stereotaxis, in Stereotaxis's
integration of the Licensed Software into the Product by providing
assistance with respect to the Licensed Software, including, but not
limited to, providing error corrections on a timely basis for any
errors identified in the Licensed Software, during Stereotaxis's
initial integration testing and subsequent Alpha and Beta testing with
potential End-users.
ARTICLE 6 - WARRANTY
6.1 Siemens warrants that the Licensed Software: 1) is free of viruses
and/or programming devices (e.g. license keys) that are designed to (a)
disrupt the use of the Licensed Software, or any system with which the
Software operates, or (b) destroy or damage data or make data
inaccessible or delayed; and 2) as originally delivered by Siemens to
Stereotaxis, is free from and will remain free from substantial
non-conformities in design, material and workmanship during the
warranty period of twelve months from the date of delivery. The
Licensed Software is considered free from such non-conformities if it
operates in substantial conformance with the Software Documentation. In
the event of a breach of the foregoing warranties, Siemens shall
perform maintenance service as defined in Article 10, below, at no cost
to Stereotaxis or any End-user, during the warranty period of twelve
months from the date of delivery and thereafter on a fee-paid basis as
defined in Article 6.2, below.
6.2 With respect to an End-user, such cost-free maintenance period shall
start at the time such End-user's sublicense of the Licensed Software
commences for such End-user. The maintenance shall be provided without
cost to Stereotaxis or its End-users for twelve (12) months from the
End-user's sublicensing of the Licensed Software, after which Siemens
may charge for its performance of maintenance services as described in
Annex 5.
6.3 UNLESS EXPLICITLY STATED IN THIS AGREEMENT, SIEMENS MAKES NO WARRANTIES
RELATED TO THE LICENSED SOFTWARE OR SOFTWARE DOCUMENTATION EITHER,
EXPRESS, STATUTORY, OR IMPLIED INCLUDING
BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE AND ANY IMPLIED WARRANTIES ARISING
FROM COURSE OF DEALING OR USAGE OF TRADE.
ARTICLE 7 - INTELLECTUAL PROPERTY RIGHTS OF THIRD PARTIES
7.1 (A) Except as set forth below in this Article, and subject to the
conditions and limitations stated below in this Article, Siemens shall
be liable for any claim, suit, action or proceeding brought against
Stereotaxis, or an End-user, by a third party to the extent it is based
on: a) any alleged infringement of patents, trademarks or copyrights of
a third party and protected under the laws of the USA or Germany b) any
alleged unlawful or improper disclosure or use or misappropriation of a
trade secret; or (c) any alleged violation of any other intellectual
property or moral right, in any such case, asserted against Stereotaxis
or an End-user by virtue of Stereotaxis's or an End-user's use,
distribution or possession of the Licensed Software or Software
Documentation or respective updates as provided in this Agreement
(hereinafter collectively referred to as "Claim(s)").
(B) If, as a result of such a Claim, Stereotaxis becomes enjoined or it
is likely, in Siemens' reasonable opinion, that Stereotaxis will become
enjoined from using the Licensed Software, Software Documentation,
Updates and/or Updated Software Documentation, Siemens shall at its
election and its cost - except as set forth below in this Article, and
subject to the conditions and limitations stated below in this Article:
(i) procure for Stereotaxis the right to continue to use the Licensed
Software, Software Documentation, Updates and/or Updated Software
Documentation as provided in this Agreement; (ii) provide Stereotaxis
with a non-infringing replacement product and/or documentation, or
modify the Licensed Software, Software Documentation, Updates and/or
Updated Software Documentation so that it becomes non-infringing,
provided that the replacement/modified Licensed Software and/or Updates
meet substantially the same performance and functional specifications
provided in the Software Documentation or Updated Software
Documentation; or, only if options (i) and (ii) are not possible
despite the exercise of commercially reasonable efforts, (iii) upon
return of the infringing Licensed Software at Siemens request, refund
to Stereotaxis the purchase price actually paid. Except with respect to
the obligations in the following paragraph (C), upon Siemens' execution
of one of the options set out in this Section, Siemens shall be
relieved of any further obligation or liability to Stereotaxis as a
result
CONFIDENTIAL TREATMENT
REQUEST BY
STEREOTAXIS, INC.
of any such infringement and Siemens shall not be obligated to deliver
any replacement Licensed Software if Siemens has met the requirements
to exercise option (iii) above. Any modified or replacement software
and/or documentation provided under this Article 7 shall be subject to
all of the terms and conditions of this Agreement, including without
limitation, the provisions of this Article 7.
(C) Siemens agrees to defend and to the extent a Claim is asserted
against Stereotaxis or an End-user, indemnify and hold the End-user and
Stereotaxis, its officers, directors, shareholders, agents and
employees (collectively, "Stx Indemnified Parties") harmless from and
against any and all loss, cost, damage or liability, including counsel
fees and costs, arising out of or related to any Claim. Siemens shall
control and direct the investigation, defense and settlement of each
such Claim and Stereotaxis agrees, at Siemens' request and expense, to
reasonably cooperate with Siemens in connection with the foregoing and
in Siemens' efforts to mitigate any potential damages, costs and
expenses incurred by Siemens under this provision.
7.2 Stereotaxis, the End-user and the Stx Indemnified Parties shall give
Siemens prompt written notice of any alleged or threatened Claims.
Stereotaxis, the End-user and the Stx Indemnified Parties shall not
consent to any judgment or decree or compromise of any Claim without
first obtaining Seimens' written consent. Siemens shall give prompt,
written notice to Stereotaxis of any actual or threatened Claim against
Siemens or customers of Siemens which Siemens, in its reasonable
discretion, deems to be of importance to Stereotaxis.
7.3 Siemens shall not be liable with respect to any Claim to the extent
arising out of our relating to either:
(i) use or incorporation in any Licensed Software of any design or
technique, furnished or requested by Stereotaxis or an
End-user; or
(ii) the combination with or incorporation of the Licensed Software
into the Product, software, or subassembly not supplied or
specified by Siemens if such infringement would not have
occurred without such combination or use thereof; or
(iii) the modification of Licensed Software by Stereotaxis or an
End-user unless such modification is in accordance with
Siemens' instructions; or
(iv) the use of Licensed Software by Stereotaxis or an End-user
other than as permitted under this Agreement; or
(v) use or distribution by Stereotaxis of other than the most
current Update of the Licensed Software (if such Claim would
have been prevented by the use of such Update) after such
Update has been made available to Stereotaxis at no additional
charge.
7.4 (A) Except as set forth below in this Article, and subject to the
conditions and limitations stated below in this Article, Stereotaxis
shall be liable for any claim, suit, action or proceeding brought
against Siemens by a third party to the extent it is based on: a) any
alleged-infringement of patents, trademarks or copyrights of a third
party and protected under the laws of the USA or Germany b) any alleged
unlawful or improper disclosure or use or misappropriation of a trade
secret; or (c) any alleged violation of any other intellectual property
or moral right; in any such case, asserted against Siemens or one of
the Siemens Indemnified Parties by virtue of Siemens' authorization of
Stereotaxis for the use, incorporation, combination, distribution or
possession of the Licensed Software or Software Documentation or
respective updates as provided in this Agreement (hereinafter referred
to as "Stx Claim(s)").
(B) Stereotaxis agrees to defend and to the extent a Stx Claim is
asserted against Siemens, indemnify and hold Siemens, its officers,
directors, shareholders, agents, and employees ("Siemens Indemnified
Parties") harmless from and against any and all loss, cost, damage or
liability, including counsel fees and costs, arising out of or related
to any Stx Claim. Stereotaxis shall control and direct the
investigation, defense and settlement of each such Stx Claim and
Siemens agrees, at Stereotaxis's request and expense, to reasonably
cooperate with Stereotaxis in connection with the foregoing and in
Stereotaxis's efforts to mitigate any potential damages, costs and
expenses incurred by Stereotaxis under this provision.
7.5 Siemens shall give Stereotaxis prompt written notice of any alleged or
threatened Stx Claims. Siemens shall not consent to any judgment or
decree or compromise of any Stx Claim without first obtaining
Stereotaxis's written consent. Stereotaxis shall give prompt, written
notice to Siemens of any actual or threatened Stx Claim against
Stereotaxis which Stereotaxis, in its reasonable discretion, deems to
be of importance to Siemens.
7.6 Stereotaxis shall not be liable with respect to any Stx Claim to the
extent arising out of or relating to either:
(i) the modification of the Product by any person or entity other
than Stereotaxis or not in accordance with Stereotaxis's
instructions; or
(ii) use or modification in the Product of any design or
technique, furnished or requested by Siemens.
7.7 THE FOREGOING SECTIONS STATE THE ENTIRE LIABILITY OF EACH PARTY AND
THE EXCLUSIVE PERFORMANCE REMEDY OF THE OTHER PARTY WITH RESPECT TO
INFRINGEMENT OF ANY INTELLECTUAL PROPERTY RIGHTS, EITHER STATUTORY OR
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO ANY PATENT RIGHTS,
COPYRIGHTS, UTILITY MODELS, DESIGN PATENTS, MASK WORK RIGHTS, MORAL
RIGHTS, TRADE SECRETS, TRADEMARKS, TRADE NAMES, SERVICE MARKS,
KNOW-HOW AND ANY OTHER SIMILAR RIGHTS OR INTANGIBLE ASSETS RECOGNIZED
UNDER ANY LAWS OR INTERNATIONAL CONVENTIONS, AND IN ANY COUNTRY OR
JURISDICTION IN THE WORLD AS INTELLECTUAL CREATIONS TO WHICH RIGHTS OF
OWNERSHIP ACCRUE, AND ALL REGISTRATIONS, APPLICATIONS, DISCLOSURES,
RENEWALS, EXTENSIONS, CONTINUATIONS OR REISSUES OF THE FOREGOING NOW
OR HEREAFTER IN FORCE. EXCEPT AS EXPRESSLY STATED IN THIS AGREEMENT,
ALL WARRANTIES AGAINST INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS AS
MENTIONED BEFORE ARE HERBY DISCLAIMED TO THE FULLEST EXTENT PERMITTED
BY LAW.
7.8 Article 12 (Limitation of Liability) is applicable to Siemens' and
Stereotaxis's liability under this Article 7. This Article 7 shall
survive any termination or expiration of this Agreement.
ARTICLE 8 - PRICE, PAYMENT
8.1 As compensation for the license rights granted to Stereotaxis under
this Agreement,
Stereotaxis agrees to pay to Siemens for each copy of the Licensed
Software that has been licensed by Stereotaxis to and accepted by an
End-user the license fees as stated in ANNEX 4 under terms and
conditions detailed therein. There will be no license fee due during a
trial period for an End-user, which shall not exceed six (6) months.
8.2 Siemens may issue invoices for fees and other amounts due hereunder
quarterly for Licensed Software, as described in Section 8.1 above, and
maintenance services. Such invoices shall regularly follow the receipt
of the list of End-users provided by Stereotaxis in accordance with
Section 4.1 above. Stereotaxis shall pay to Siemens all undisputed
amounts set forth on each such invoice within thirty (30) days of
Stereotaxis's receipt of such invoice.
8.3 Any payments to be made by Stereotaxis to Siemens under or in
connection with this Agreement, shall be made by Stereotaxis to the
following bank account of Siemens (until the next payment due after
written notice of change is given by Siemens):
[***]
8.4 If Stereotaxis fails to make any payment (other than payments
reasonably disputed by Stereotaxis) in the manner described in this
Article 8, i.e., within thirty (30) days of Stereotaxis's receipt of
the corresponding invoice, then Siemens shall notify Stereotaxis in
writing of the nature of such failure. If Stereotaxis fails to make
such payment within thirty (30) days of Stereotaxis's receipt of such
notice from Siemens that a payment has not been made within thirty (30)
days of Stereotaxis's receipt of the corresponding invoice, then an
interest at a rate of five percent (5%) per year above the 3 Month US $
LIBOR rate shall be paid by Stereotaxis on such payment.
ARTICLE 9 - AUDITING RIGHTS
[*** Indicates portions of this exhibit that have been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment.]
CONFIDENTIAL TREATMENT
REQUESTED BY STEREOTAXIS, I
9.1 Stereotaxis shall keep records of all sublicenses granted to
End-users. Siemens shall have the right to appoint an independent,
certified public accounting firm, provided that such firm regularly
performs audit work for Fortune 500 companies but is not the
predominant accounting firm of Siemens, to audit such Stereotaxis
records, as well as such other documents as may be reasonably required,
solely for the purpose of verifying Stereotaxis's compliance with its
Licensed Software-related payment obligations hereunder. Such audit
shall be conducted upon at least five (5) business days notice, during
Stereotaxis's normal working hours, at the Stereotaxis location where
such records are maintained and in a manner that will not be unduly
disruptive to Stereotaxis's operations. The auditor shall prepare a
report either verifying such compliance or summarizing the total of any
deviations therefrom, which report shall be furnished to each Party but
shall be deemed to be the Confidential Information (as defined in
Article 11 below) of Stereotaxis. Such audit shall be conducted no more
often than once every twelve (12) months and shall be conducted at
Siemens' expense, except in those cases where the auditor detects
deviations that are greater than ten percent (10%) from Stereotaxis's
payment obligations hereunder to the disadvantage of Siemens, in which
latter case the cost of the audit shall be borne by Stereotaxis.
9.2 Any and all reports or records or notes other than the report
mentioned in Section 9.1 above taken by the auditor shall not be
disclosed to Siemens and shall be maintained by the auditor in
confidence as Confidential Information of Stereotaxis, pursuant to a
written agreement with Stereotaxis that is no less protective of
Confidential information than the corresponding terms of this
Agreement.
ARTICLE 10 - MAINTENANCE
10.1 Siemens shall provide software maintenance services as detailed in
Annex 5. The maintenance services for the Licensed Software are subject
to the maintenance fees set out in Annex 5, except as specified
otherwise in Article 6 above.
10.2 Stereotaxis will communicate to Siemens suspected errors in the
Licensed Software along with information reasonably requested by
Siemens in order to reproduce the errors on the Reference Environment.
Siemens agrees to respond and correct such
errors without undue delay.
10.3 The Parties will promptly notify each other of any suspected bugs or
errors in the Licensed Software.
10.4 Notwithstanding any other provision of this Agreement, Siemens shall
have no obligation to provide maintenance services:
- With respect to any non-Siemens computer programs, technology or
hardware not provided by Siemens; or
- With respect to any Licensed Software that is not current within
two (2) prior Updates of the most recent Updates.
10.5 Siemens represents and warrants that the maintenance services shall be
provided in accordance with this Agreement and with reasonable care and
skill.
ARTICLE 11 - CONFIDENTIALITY
11.1 Each Party acknowledges and agrees that it will have access to
information, including, but not limited to, intellectual property,
trade secrets, business, commercial or technical information, ideas,
expressions and the terms of this Agreement, which are represented to
be proprietary to the other Party, irrespective of the medium in which
such information or data is embedded which shall - when disclosed in
tangible form - be marked "Confidential" or with a similar legend by
the disclosing Party or which shall - when disclosed orally or visually
- be identified as such prior to disclosure and summarized in writing
by the disclosing Party and said summary (which shall be marked
"Confidential" or with a similar legend) is given to the receiving
Party within thirty (30) days after such disclosure (hereinafter
referred to as "Confidential Information"). In case of disagreement,
the receiving Party must present its objections to the summary in
writing within thirty (30) days of receipt. Confidential Information
shall include any copies or abstracts made thereof as well as any
apparatus, modules, samples, prototypes or parts thereof.
CONFIDENTIAL TREATMENT
REQUESTED BY
STEREOTAXIS, INC.
11.2 The terms and conditions of this Agreement shall be deemed to be
Confidential Information of both Parties.
11.3 All Confidential Information exchanged between the Parties:
11.3.1 shall be used by the receiving Party exclusively for the purposes of
this Agreement, unless otherwise expressly agreed to in writing by the
disclosing Party;
11.3.2 shall during the term of the Agreement and for a period of 5 years
after its termination or expiration not be distributed or disclosed in
any way or form by the receiving Party to anyone except its employees
or those of an Affiliate, consulting firm, counsel or other
professional advisors who reasonably need to know such Confidential
Information for the purposes of this Agreement and who are bound to
confidentiality either by their employment agreement or otherwise that
is substantially similar to the confidentiality obligations under this
Agreement. Prior to any disclosure to its Affiliates or to its
consulting firms, the receiving Party must have an appropriate
agreement with any such Affiliate or any such consulting firm
sufficient to require the Affiliate or the consulting firm to treat
Confidential Information in accordance with this Agreement. Any
unauthorized disclosure of the disclosing Party's Confidential
Information by the receiving Party, its Affiliates or Affiliates'
employees or by its consultants shall constitute a breach of this
Agreement by the receiving Party;
11.3.3 shall be treated by the receiving Party with the same degree of care as
is used with respect to the receiving Party's own equally important
confidential information of a similar nature to avoid disclosure to any
third party, but at least with reasonable care; and
11.3.4 shall remain the property of the disclosing Party.
11.4 The obligations of Section 11.3 above shall, however, not apply to any
Confidential Information which:
11.4.1 was lawfully in the receiving Party's possession without
confidentiality obligation prior to receipt from the disclosing Party;
11.4.2 is at this time of disclosure already in the public domain or becomes
available to the public through no breach by the receiving Party;
11.4.3 is lawfully obtained by the receiving Party from a third party without
an obligation of confidentiality, provided such third party is not, to
the receiving Party's knowledge, in breach of any confidentiality
obligation relating to such information;
11.4.4 is developed by the receiving Party or its Affiliates independently
from and without reference to such Confidential Information;
11.4.5 was approved for release by written agreement with the disclosing
Party.
11.5 The receiving Party will derive no rights of any kind, in particular no
rights of prior use, from the fact that they as a result of the
Confidential Information may possibly obtain knowledge of patentable
inventions for which the disclosing Party may possibly apply for
intellectual property rights.
11.6 Upon any termination or expiration of this Agreement, unless otherwise
instructed in writing by the disclosing Party, the receiving Party
shall cease using any Confidential Information of the disclosing Party
including such Confidential Information on record-bearing media, as
well as any copies thereof. Upon request of the disclosing Party, made
in writing to the receiving Party within ninety (90) days after
termination of this Agreement the receiving Party shall as per the
notice either return such Confidential Information to the disclosing
Party or destroy it. This shall not apply to routinely made back-up
copies of electronically-exchanged data. In case of a destruction, the
receiving Party shall confirm in writing such destruction to the
disclosing Party within fourteen (14) days after receipt of the
respective request.
11.7 The receiving Party shall not be considered to have breached its
obligations under this Article for disclosing Confidential Information
of the other Party if such disclosure is required by law or regulation,
government authority, duly authorized subpoena or court order or
regulatory request. Promptly upon receiving notice of any such
requirement or request and to the extent that it may legally do so,
such Party shall take reasonable commercial efforts to advise the other
Party of the required disclosure prior to making such disclosure in
order to afford the other Party a reasonable opportunity to take such
action as it deems appropriate to protect such Confidential
Information.
Article 12 - Limitation of Liability
12.1 Each Party will without limit be liable for personal injury for which
such Party can be held responsible. Each Party will be liable for
damages to the other Party's property for which such Party can be held
responsible up to a maximum amount of [***] Euro [***] per damage
event.
12.2 SUBJECT TO THE EXCLUSION OF EACH PARTY'S INDEMNIFICATION OBLIGATIONS
HEREUNDER, NEITHER PARTY SHALL BE LIABLE, WHETHER IN CONTRACT,
WARRANTY, TORT (INCLUDING NEGLIGENCE OR STRICT LIABILITY), OR ANY OTHER
LEGAL OR EQUITABLE THEORY FOR DAMAGE TO OR LOSS OF OTHER PROPERTY OR
EQUIPMENT, BUSINESS INTERRUPTION OR LOST REVENUE, LOSS OF PROFITS OR
SALES, COST OF CAPITAL, FOR ANY LOSS OF USE, FOR ANY LOSS OR CORRUPTION
OF DATA OR FOR ANY SPECIAL, INCIDENTAL, PUNITIVE, INDIRECT OR
CONSEQUENTIAL DAMAGES OR FOR ANY OTHER LOSS, COSTS OR EXPENSES OF A
SIMILAR TYPE, EVEN IF THE PARTY SOUGHT TO BE HELD LIABLE HAS BEEN
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
12.3 THE LIABILITY OF EACH PARTY FOR ANY ACT OR OMISSION, OR WITH RESPECT TO
LICENSED SOFTWARE FURNISHED AS WELL AS SERVICES RENDERED UNDER THIS
AGREEMENT, WHETHER IN CONTRACT, WARRANTY, TORT (INCLUDING NEGLIGENCE OR
STRICT LIABILITY), INDEMNITY, OR ANY OTHER LEGAL OR EQUITABLE THEORY,
WILL IN NO EVENT EXCEED [***] EURO [***] FOR ALL LIABILITY IN THE
AGGREGATE.
12.4 The rights and remedies explicitly contained in this Agreement are
exclusive, not cumulative and the Parties accept these remedies in
lieu of all rights and remedies available at law or otherwise, in
contract (including warranty) or in tort (including negligence), for
any and all claims of any nature arising under this Agreement or any
performance or breach arising out of this Agreement.
12.5 This Article 12 shall survive any termination or expiration of this
Agreement.
[*** Indicates portions of this exhibit that have been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment.]
ARTICLE 13 - FORCE MAJEURE
Neither Party shall be liable to the other for failure or delay in the
performance of any of its obligations under this Agreement for the time
and to the extent such failure or delay is caused by events or
circumstances beyond the Party's reasonable control such as, but not
limited to, riots, civil commotions, wars, strikes, lock-outs,
hostilities between nations, governmental laws, orders or regulations,
actions by the government or any agency thereof, storms, fires,
sabotages, explosions or any other contingencies beyond the reasonable
control of the respective Party and of its sub-contractors (hereinafter
referred to as "Force Majeure"). In such events, the affected Party
shall immediately inform the other Party of such circumstances together
with documents of proof and the performance of obligations hereunder
shall be suspended during, but not longer than, the period of existence
of such cause and the period reasonably required to perform the
obligations in such cases. Unavailability of funds shall not be deemed
Force Majeure. Notwithstanding the foregoing, the non-affected Party
may, in its sole discretion, terminate this Agreement if the period of
delay exceeds six (6) months.
ARTICLE 14 - ARBITRATION
14.1 Any differences or disputes arising from this Agreement or from
agreements regarding its performance shall be settled by an amicable
effort on the part of both parties to the Agreement. An attempt to
arrive at a settlement shall be deemed to have failed as soon as one of
the parties to the Agreement so notifies the other party in writing.
14.2 If an attempt at settlement has failed, the disputes shall be finally
settled under the Rules of Conciliation and Arbitration of the
International Chamber of Commerce in Paris (Rules) by three arbitrators
appointed in accordance with the Rules.
14.3 The place of arbitration shall be Berne, Switzerland. The procedural
law of this place shall apply where the Rules are silent.
14.4 The arbitral award shall be substantiated in writing. The arbitral
tribunal shall decide on the matter of costs of the arbitration.
CONFIDENTIAL TREATMENT
REQUESTED BY
STEREOTAXIS, INC.
ARTICLE 15 -- SUBSTANTIVE LAW
All disputes shall be settled in accordance with the provisions of this
Agreement and all other agreements regarding its performance, otherwise
in accordance with the substantive law in force in the Canton of Berne,
Switzerland, without reference to other laws.
ARTICLE 16 -- TERM OF THE AGREEMENT
16.1 This Agreement shall commence on the Effective Date and remain in
effect for a period of six (6) years thereafter, unless
terminated earlier by either Party as hereinafter provided, and
shall automatically be renewed for consecutive one (1) year
periods unless either Party provides written notice to the other
Party of an intention not to renew at least ninety (90) days
prior to the end of the original six (6) year period or any
subsequent one (1) year renewal periods (the original period
along with any extension periods, the "Term").
16.2 The rights to use paid-up copies of the Licensed Software will
not be affected by the expiration hereof pursuant to Section 16.1
of this Agreement.
ARTICLE 17 -- TERMINATION
17.1 This Agreement may by written notice be forthwith terminated by a
Party having such right as herein provided -- and save of any
other rights such Party may have -- upon the occurrence of either
one or more of the following events stated below:
-- by either Party in the event that the other Party has failed
in the performance of any material obligation under this
Agreement by giving not less than forty-five (45) days
written notice specifying any such breach (hereinafter
referred to as "Notice") unless within the period of such
Notice all breaches specified shall have been remedied or a
plan for remedying such breaches has been proposed by the
other Party and has been accepted by the first Party
mentioned during such forty-five (45) day period, with the
understanding that Notice shall not be required for
any failure in the performance of any material obligation under
this Agreement which cannot be remedied or which relates to
Siemens' warranty or support obligations under this Agreement; or
- by either Party in the event that the other Party voluntarily
files a petition in bankruptcy or has such a petition
involuntarily filed against it (which petition is not discharged
within sixty (60) days after filing), or is placed in an
insolvency proceeding, or if an order is issued appointing a
receiver or trustee or a levy or attachment is made against a
substantial portion of its assets which order shall not be
vacated, or set aside within sixty (60) days from date of
issuance, or if any assignment for the benefit of its creditors
is made, or
- by either Party if there is a change in control of the other
Party which in the reasonable opinion of the terminating Party
adversely affects such Party's position, rights or interests.
17.2 Upon termination or expiration of this Agreement, Stereotaxis shall
promptly pay Siemens any undisputed amounts due to Siemens and cease
any use of the Licensed Software, including copies thereof and Software
Documentation in Stereotaxis's possession. Notwithstanding the
foregoing, Stereotaxis may continue to provide Licensed Software
support (including previously received Updates) to existing End-users
for a period not to exceed six (6) months after such termination or
expiration but may not sublicense the Licensed Software to any new
End-users and Siemens is not obligated to provide any continuing
support. All obligations of either Party accrued prior to termination,
and those obligations relating to confidentiality, protection of the
Software and the Software Documentation and restriction to use shall
survive termination. Any sublicenses granted to End-users prior to the
termination or expiration of this Agreement shall not be affected by
such termination or expiration.
ARTICLE 18 - EXPORT REGULATIONS
Stereotaxis shall comply with all export laws applicable to the
Licensed Software and/or the Software Documentation in effect from time
to time. Without limiting the generality of the foregoing, Stereotaxis
expressly warrants that it will not directly or indirectly
CONFIDENTIAL TREATMENT
REQUESTED BY
STEREOTAXIS, INC.
export, re-export, or tranship the Licensed Software or the Software
Documentation in violation of any export laws, rules or regulations of
Germany or the United States.
Stereotaxis when sublicensing the Licensed Software to End-users shall
also oblige such End-users to adhere to the aforementioned export
provision.
The Licensed Software has no bit encryption.
ARTICLE 19 - MISCELLANEOUS
19.1 Each Party shall name to the other authorized representatives forthwith
after signing of the Agreement who shall bring about any and all
decisions in connection with the performance of this Agreement.
19.2 This Agreement shall not be modified or amended except by a written
agreement dated subsequently to the date of this Agreement and signed
on behalf of Siemens and Stereotaxis by their respective duly
authorized representatives as an amendment hereto. This requirement of
written form can only be waived in writing.
19.3 All Annexes shall be considered as an integral part of this Agreement.
19.4 If Stereotaxis licenses Licensed Software, including Software
Documentation, to the US Government, the following provisions apply: if
Licensed Software is supplied to the Department of Defense ("DOD"),
Licensed Software is subject to "Restricted Rights" including a legend
to be affixed to the Licensed Software, as that term is defined in the
DOD Supplement to the Federal Acquisition Regulations ("DFAR") in
paragraph 252.227-7013(c)(1); if Licensed Software is supplied to any
unit or agency of the US Government other than DOD, the US Government's
rights in the Licensed Software will be as defined in paragraph
52.227-19(c)(2) of the Federal Acquisition Regulations ("FAR"). Any
failure by Siemens to affix a Restricted Rights legend on Licensed
Software shall not be deemed to constitute a waiver of any obligation
of Stereotaxis imposed by this Agreement.
Under no circumstances shall Siemens be obligated to comply with any
requirements imposed by the US Government regarding submission of, or
the request for exemption
from, submission of cost or pricing data or cost accounting
requirements for any distribution or license of Licensed Software that
would require compliance by Siemens with US Governmental requirements
relating to cost or pricing data or cost accounting requirements.
19.5 Nothing contained in this Agreement shall be construed as creating a
joint venture, partnership or employment relationship. Except as
specified herein, neither Party shall have the right, power or implied
authority to create any obligation or duty, express or implied, on
behalf of the other Party hereto.
19.6 Press releases or other information on the conclusion or content of
this Agreement shall only be made available to third parties, in
particular press agencies, with the prior written consent of the other
Party hereto, provided, however, Stereotaxis may disclose this
Agreement to third parties that have a sincere interest in acquiring
Stereotaxis or any share of the company exceeding 5% under an
obligation of confidentiality not less stringent than the provisions
provided for in Article 11 for purposes of legal or financial due
diligence after informing Siemens in detail of such event. Neither
Party will use any of the other Party or its Affiliates' trademarks,
trade names or representations of the other Party or its Affiliates'
products or services, or refer directly or indirectly to the other
Party or its Affiliates', or the products or services of either in
order to make known and/or publicize its relationship with the other
Party or its Affiliates' without, in any case, obtaining the prior
written permission of the other Party and its parent companies, if any.
CONFIDENTIAL TREATMENT
REQUESTED BY
STEREOTAXIS, INC.
19.7 Notices and communications between Stereotaxis and Siemens shall be
given in writing or by e-mail or facsimile in English language to the
following addresses of the Parties or to such other address as the
party concerned may subsequently notify in writing to the other Party:
If to Stereotaxis:
Stereotaxis, Inc.
0000 Xxxxxx Xxxx Xxxxxx
Xx. Xxxxx, XX 00000
Attention: Chief Executive Officer and Sr. Vice President of Research
& Development
Tel. 000-000-0000
Fax 000-000-0000
and, if to Siemens:
Siemens Aktiengesellschaft
Attn.: Xx. Xxxxxxx Xxxxxxxx
XxxxxxxxxxxXx 0
00000 Xxxxxxxxx
Xxxxxxx
Tel. +49 (9191) 18 8979
Fax +49 (9191) 18 8951
E-Mail xxxxxxx.xxxxxxxx@xxxxxxx.xxx
19.8 A waiver of any default by either Party of any of the terms and
conditions of this Agreement shall not be deemed to be a continuing
waiver or a waiver of any other provisions of this Agreement, but shall
apply solely to the instances to which such waiver is granted.
19.9 Should individual provisions of this Agreement be illegal or
unenforceable for legal reasons then, unless the basic intentions of
the Parties under this Agreement are materially altered, the validity
of the remaining provisions of this Agreement shall not be
affected thereby. In such a case the Parties shall come to an agreement
approximating as closely as possible the arrangement originally
envisaged in this Agreement.
19.10 The titles to the Articles of this Agreement are for convenience or
reference only and are not part of this Agreement and shall not in any
way affect the interpretation thereof.
19.11 This Agreement constitutes the entire agreement between the Parties
hereto with respect to the subject matter hereof and supersedes all
previous communications, representations, understanding and agreements,
either oral or written, between the Parties with respect to such
subject matter hereof. Notwithstanding the foregoing, this Agreement
shall not alter or amend the rights or obligations of either party as
set forth in and provided under the Extended Collaboration Agreement.
19.12 Neither the rights nor the obligations of this Agreement may be
assigned or transferred in any manner, except with the prior written
consent of the other Party or except as part of a transfer of all or of
a substantial part of the activities to which the subject matter of
this Agreement pertains whether by sale, merger or consolidation,
provided, however, that either Party may assign any and all of its
rights and obligations without the prior written consent of the other
Party to an Affiliate. In case of such a transfer the respective Party
shall ensure that the transferee, assignee or successor will comply
with the terms of this Agreement.
19.13 Siemens agrees to discuss with Stereotaxis any plans that Siemens may
now or in the future have to create upgrades that are not specified in
Annex 1 of the Licensed Software and to offer Stereotaxis the ability
to negotiate the functionality of any such upgrades on reasonable terms
and conditions to be agreed upon by the Parties.
19.14 By the signature of each of the representatives of the Parties placed
on this Agreement, each such signatory represents and warrants that he
or she is authorized to sign this Agreement on behalf of the Party for
whom he or she is acting.
CONFIDENTIAL TREATMENT
REQUESTED BY
STEREOTAXIS, INC.
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be signed
by their respective duly authorized representatives.
Date: Date: 3-March-2004
Stereotaxis Inc. Siemens Aktiengesellschaft
/s/ Xxxxxxx X. Xxxxxxxx /s/ Xx. Xxxxxxx Xxxxxxxx
------------------------- ----------------------------------
Name: Xxxxxxx X. Xxxxxxxx Name: Xx. Xxxxxxx Xxxxxxxx
Title: COO Med AX PLM-I FC
/s/ Xx. Xxxx Xxxxxx
----------------------------------
Name: Xx. Xxxx Xxxxxx
Med KL AX
ANNEX 1: "LICENSED SOFTWARE"
1. FUNCTIONALITY
The requirements of the Licensed Software are described in the following
document:
Requirement Specification "3D Pre-Operative Image Navigation", V1.0, by Xxxxxx
Xxxxx and Xxx Xxxxx, released 22.05.2003, signed by Siemens AX, Stereotaxis and
Siemens SCR.
0.XXXXXXXX
The Licensed Software will be delivered via CD-ROM. The delivery will include:
- binaries (e.g. executables, libraries, OCXs, lib-files, dll-files)
- include files
- documentation (see Annex 2)
- software containing application examples for using the interfaces of
delivered components
0.XXXXXXXX ENVIRONMENT
The Licensed Software will run under Windows 2000. The Licensed Software is
intended to run as a component (library) of the software of the Product.
CONFIDENTIAL TREATMENT
REQUESTED BY STEREOTAXIS, INC.
ANNEX 2: "SOFTWARE DOCUMENTATION"
Software Documentation will be delivered as follows:
- Detailed description of the programming interface
This description will be delivered in form of header files containing
description of functions and variables.
ANNEX 3: HARDWARE
The Licensed Software will run as part of the Product on the Product hardware
platform, which is as follows:
PC with the following properties (minimal configuration):
- CPU Intel P4 2GHz
- Memory 1 Gb Kingston DDR RAM (2x512)
- XX.XX IDE 12*10*32 (At least)
- Graphics Card OpenGI support of 3d texture rendering required
Confidential Treatment
Requested by Stereotaxis, Inc.
ANNEX 4: LICENSE FEES
Fee for one license: [***]
Invoices will be issued in Euro.
[*** Indicates portions of this exhibit that have been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment.]
ANNEX 5: MAINTENANCE SERVICES AND MAINTENANCE FEES
1. MAINTENANCE SERVICES
Maintenance service covers:
- Error correction
- Migration to higher versions of Windows compatible operating systems
- Migration to higher versions of the DICOM standard in order to
read/import the actual version of single, static, uncompressed cardiac
3D DICOM images (CT, MR)
- Vendor-required hardware changes
2. MAINTENANCE FEES
Maintenance service is free for 12 months after sublicensing, as per Article 6
above.
- Maintenance fee for one license is [***] E per year.
- The above maintenance fees are mandatory for the first three years
after the one-year period of cost-free maintenance as described in
article 6.2.
- Stereotaxis has the option to extend this pricing after the first
mandatory 3 years on yearly basis on unchanged conditions (concerning
maintenance service and maintenance fees) through no less than the end
of the original six (6) year period of the Term.
3. HOURLY SERVICE
- If maintenance service is required due to an event at an End-user site
at which no service and maintenance contract is in effect between
Stereotaxis and Siemens (i.e. if the maintenance contract is not
prolonged after the 3 years of mandatory maintenance), Siemens will
provide this service to Stereotaxis at an hourly rate of [***] E. This
service will be provided by Siemens through any of its Affiliates
deemed to be appropriate by Siemens. This price shall be fixed until
the end of the original six (6) year period of the Term and subject to
renegotiation thereafter.
Invoices will be issued in Euro
[*** Indicates portions of this exhibit that have been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment.]
