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EXHIBIT 10.22
DISEASE PROGRESSION EXPLORER
DEVELOPMENT AND LICENSE AGREEMENT
This Disease Progression Explorer Development and License Agreement
(this "Agreement") is entered into and made effective as of this 1st day of
August, 1997 (the "Effective Date") by and between Medical Science Systems, Inc.
("MSS") and Digisphere, LLC ("Digisphere").
RECITALS
A. MSS and Xxxxxx Communications, Inc. are members of Digisphere, which
was formed, among other things, to develop and market customized versions of a
computer program of MSS known as the "Disease Progression Explorer."
B. The parties desire that MSS develop such customized versions and
grant a license to Digisphere to make and license copies of such customized
versions to clients of Digisphere.
C. The parties desire to enter into this Agreement to set forth the
terms and conditions upon which MSS will develop customized versions of its
Disease Progression Explorer for clients of Digisphere, and will grant to
Digisphere a license to grant sublicenses to its clients to use customized
versions of the Disease Progression Explorer.
NOW, THEREFORE, in consideration of the foregoing premises and of the
terms and conditions of this Agreement, the parties agree as follows:
1. DEFINITIONS
1.1 "Client" means a client of Digisphere that has entered into a Client
Contract with Digisphere for the development and license of a Client Version.
1.2 "Client Contract" means a written agreement between a Client and
Digisphere, approved by MSS, containing the Specifications for a Client Version
of the Disease Progression Explorer to be developed by MSS, the Schedule upon
which such Client Version will be developed, and the terms and conditions upon
which such Client Version will be licensed to the Client.
1.3 "Client Version" means a customized version of the Disease
Progression Explorer, targeted toward a particular disease and associated
clinical data supplied by the Client, created by MSS for a Client pursuant to
the provisions of Section 2 below.
1.4 "Demonstration Version" means a demonstration version of the Disease
Progression Explorer developed by MSS that Digisphere may use under the terms
and conditions of this Agreement to demonstrate the capabilities and potential
benefits of the Disease Progression Explorer to potential Clients, including any
Enhancements thereto that MSS may make.
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* Confidential treatment has been requested with respect to portions of this
document. Omitted portions have been filed separately with the Securities and
Exchange Commission.
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1.5 "Disease Progression Explorer" means MSS' computer software system
that allows entry of data about a specific patient to project how a given
disease will progress, in terms of key clinical signs and/or symptoms, over a
specified period of time, including any Enhancements thereto that MSS may make.
The Disease Progression Explorer is further described in Exhibit A hereto.
1.6 "Effective Date" means the date identified in the first paragraph of
this Agreement.
1.7 "Enhancements" means modifications, improvements, and updates to the
Disease Progression Explorer and/or to a Client Version that enhance or improve
its functionality, capabilities, and/or ease of use.
1.8 "Error Correction" means a bug fix or other modification that
corrects a malfunction or defect in a Client Version that causes it not to
conform to its Specifications.
1.9 "Intellectual Property Rights" means all forms of intellectual
property rights and protections that may be obtained for, or may pertain to, the
Disease Progression Explorer, the Demonstration Version, and Client Versions,
including but not limited to:
(a) all right, title and interest in and to all patents and all
filed, pending or potential applications for patents, including any reissues,
reexaminations, divisions, continuations or continuations-in-part applications
throughout the world now or hereafter filed;
(b) all right, title and interest in and to all trade secrets,
and all trade secret rights and equivalent rights arising under the common law,
state law, federal law, treaties and laws of foreign countries;
(c) all right, title and interest in and to all copyrights and
other literary property or authors' rights, whether or not protected by
copyright, under common law, state law, federal law, treaties, and laws of
foreign countries; and
(d) all right, title and interest in and to all proprietary
indicia, trademarks, tradenames, symbols, logos and/or brand names under common
law, state law, federal law, treaties, and laws of foreign countries.
1.10 "Inventions" means any concepts, ideas, formulas, algorithms, know
how, technology, methods, processes, data, discoveries, plans, specifications,
techniques, user interfaces, trade secrets and other innovations embodied in or
related to the Disease Progression Explorer, the Demonstration Version and
Client Versions.
1.11 "LLC Agreement" means the Operating Agreement of Digisphere, LLC
dated August 1, 1997 between MSS and Xxxxxx Communications, Inc.
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1.12 "Maintenance Agreement" means a written agreement, approved by MSS,
between Digisphere and a Client, pursuant to which the Client will be entitled
to receive Error Corrections and/or Enhancements to the Client Version after the
Warranty Period.
1.13 "Marks" means all proprietary indicia, trademarks, tradenames,
symbols, logos and/or brand names adopted or used from time to time by MSS to
identify the Disease Progression Explorer and/or Client Versions, including but
not limited to "Disease Progression Explorer."
1.14 "Schedule" means, with respect to a particular Client Version, a
schedule contained in the corresponding Client Contract setting forth a
timeline, milestones and/or deliverables for the development of the Client
Version.
1.15 "Specifications" means, with respect to a particular Client
Version, the specifications set forth in the corresponding Client Contract to
which the Client Version to be developed by MSS will conform.
1.16 "Trademarks" means all right, title and interest under common law,
state law, federal law, treaties, and laws of foreign countries in and to all
proprietary indicia, trademarks, tradenames, symbols, logos and/or brand names
used on or in conjunction with the Disease Progression Explorer, the
Demonstration Version, and the Client Versions.
1.17 "Warranty Period" means the ninety (90) day period after first
delivery to a Client by Digisphere of a Client Version.
2. DEVELOPMENT AND TRAINING OBLIGATIONS
2.1 Delivery of Demonstration Version; Development of Enhancements. As
of the Effective Date, development of the Demonstration Version by MSS is
substantially complete. Promptly upon execution of this Agreement, MSS will
deliver an executable copy of the Demonstration Version to Digisphere. MSS may
from time to time in its discretion, but shall have no obligation to, create
Enhancements to the Disease Progression Explorer and the Demonstration Version
that MSS considers desirable or that Digisphere may suggest.
2.2 Development of Client Versions. MSS agrees to develop Client
Versions in accordance with the applicable Specifications and Schedules set
forth in the corresponding Client Contracts, subject to the following
conditions:
(a) Digisphere will consult with MSS to create the Specifications
and Schedule for each Client Version that a Client desires to have developed and
to sublicense from Digisphere pursuant to a Client Contract. Digisphere will not
enter into a Client Contract until it has received approval from MSS with
respect to the Specifications and Schedule contained therein, with respect to
any training obligations for the Client set forth therein, and with respect to
any sublicense rights to be granted to the Client with respect to the Client
Version to be developed
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for the Client. As provided in Section 3.2 below, MSS reserves the right to
require Digisphere to use form sublicense provisions developed by MSS'
intellectual property counsel in granting such sublicenses to its Clients.
(b) The Client Contract will require that the Client provide the
following for the development and testing of the Client Version:
(i) The selected disease area of interest and the goals
and objectives for the development of the Client Version;
(ii) Data on the clinical progression of the disease over
time as it is affected by the various risk factors and patient attributes;
(iii) One or more experts to interpret the data on
clinical progression and to convert that data into disease progression profiles
of clinical symptoms over time, which must be done for each risk factor to be
considered, both independent and dependent factors; these experts must also
support the validation and verification of the system; and
(iv) One or more targeted end users of the Client Version
to support initial system design as well as interim and final system review.
2.3 Training by MSS. MSS will perform any Client training obligations
with respect to a Client Version to which MSS has agreed per the provisions of
Section 2.2(a) above.
2.4 Development of Additional Medical Educational Software Tools. The
parties recognize that it may be desirable in the future to have MSS develop and
license to Digisphere additional medical educational software tools other than
the Disease Progression Explorer. If the parties mutually agree to do so, the
terms and conditions upon which such development will take place, and the scope
and nature of Digisphere's license rights with respect thereto, shall be set
forth in one or more separate written agreements between the parties.
2.5 Reimbursement of Certain Costs. In accordance with the provisions of
the LLC Agreement, MSS shall be entitled to be reimbursed by Digisphere for its
actual, direct costs incurred in performing its obligations under this Section 2
with respect to Client Contracts, including salaries and benefits of employees
performing such obligations, costs of hardware and software purchased or
licensed for or on behalf of a Client, payments made to consultants or experts
assisting MSS in performing its obligations, and reasonable costs for travel,
lodging and meals incurred in the course of performing such obligations. Such
cost reimbursements shall be paid to MSS in accordance with the payment
procedures set forth in Section 6 below.
2.6 Source Code. All copies of the Demonstration Version and the Client
Versions will be supplied to Digisphere by MSS in executable form only. However,
should a Client of Digisphere require that the source code of a Client Version
be placed into escrow, MSS agrees to place such source code into a commercial
source code escrow subject to a written escrow agreement containing terms
governing the escrow which are acceptable to MSS, including but not limited to
the conditions under which the source code may be released from the escrow, the
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scope of the license rights that the recipient of the source code will have to
use such source code, and the obligations of the recipient to protect the
confidentiality and MSS's rights in such source code. Digisphere and/or its
Clients will bear all costs of such escrow, including setup fees, annual
maintenance fees and other administrative fees charged by the escrow agent, and
direct costs incurred by MSS with respect to such escrow.
3. GRANT OF LICENSES
3.1 Grant With Respect to the Demonstration Version. Subject to the
terms and conditions of this Agreement, MSS grants to Digisphere a worldwide,
nontransferable license under MSS' Intellectual Property Rights other than the
Trademarks to use, copy, and distribute copies of the Demonstration Version
solely for the purpose of pursuing potential Clients. The foregoing license
shall be exclusive to Digisphere, subject to the rights reserved to MSS set
forth in Section 3.4 below. Digisphere has no right to modify the Demonstration
Version or create derivative works based thereon, or to license any other party
to do so.
3.2 Grant With Respect to Client Versions. Subject to the terms and
conditions of this Agreement, MSS grants to Digisphere, with respect to each
Client Version developed by MSS hereunder, a worldwide, nontransferable license
under MSS' Intellectual Property Rights other than the Trademarks to use, copy,
and distribute copies of such Client Version to its Client in accordance with
the applicable Client Contract, and to sublicense the Client to use and copy
such Client Version only as permitted in the applicable Client Contract. MSS
reserves the right to have its own intellectual property counsel develop or
modify from time to time form sublicense provisions and to require that
Digisphere use such provisions in granting sublicenses to its Clients. The
license set forth in this Section 3.2 shall be exclusive to Digisphere, subject
to the rights reserved to MSS set forth in Section 3.4 below. Digisphere has no
right to modify any Client Version or create derivative works based thereon, or
to sublicense any Client or other party to do so.
3.3 Grant With Respect to Trademarks. Subject to the terms and
conditions of this Agreement, MSS grants to Digisphere a worldwide,
nonexclusive, nontransferable license under MSS' Trademarks to use the Marks in
Digisphere's marketing and promoting of Client Versions and on copies of Client
Versions, provided that such use is in accordance with MSS' trademark usage
guidelines then in effect. Such use must reference the Marks as being owned by
MSS. Nothing in this Agreement grants Digisphere ownership or any rights in or
to use the Marks, except in accordance with this license. The rights granted to
Digisphere in this license will terminate upon any termination or expiration of
this Agreement. Upon such termination or expiration, Digisphere will no longer
make any use of any Marks. Digisphere has paid no consideration for the use of
MSS' Marks and Digisphere agrees that it will not at any time (i) claim any
interest in any of MSS' Marks; (ii) register, seek to register, or cause to be
registered any of MSS' Marks, other than in MSS' name and at MSS' specific
request; (iii) adopt and use any trademark that might be confusingly similar to
MSS' trade names, trademarks or logos; (iv) attach any trademark, logo or trade
designations other than the Marks to the Client Versions; or (v) affix any MSS
trademark, logo or trade name to products other than the appropriate Client
Versions. Digisphere will assist MSS, if requested and at MSS' expense, to
register MSS' Marks
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in MSS' name anywhere in the world. MSS retains the right to use the Marks in
any way in connection with its own business.
3.4 Rights Reserved By MSS. Notwithstanding the grants of exclusivity
set forth in Sections 3.1 and 3.2 above, MSS shall have the right to develop its
own versions of the Disease Progression Explorer targeted toward specific
diseases and to distribute copies of the same, and of the Demonstration Version,
with or without charge, in conjunction with or in support of the sale or
marketing of MSS products. In addition, MSS retains the right to use, modify,
copy, and create derivative works based upon any Client Version solely for
internal purposes in conjunction with the discovery, development and
conmmercialization of MSS products.
3.5 No Other Rights. Except as expressly set forth in this Section 3, no
license or other right is granted herein by MSS, directly or by implication,
estoppel or otherwise, and no such license or other right will arise from the
consummation of this Agreement or of the LLC Agreement or from any acts,
statements or dealings leading to such consummation.
4. OWNERSHIP
MSS shall remain the sole and exclusive owner of the Disease Progression
Explorer, all Client Versions and Enhancements thereof, the Demonstration
Version, and all Inventions related to any of the foregoing, and of all
Intellectual Property Rights therein, subject to the license rights granted to
Digisphere hereunder. MSS shall have the sole right to pursue the securing,
registration, recordation and/or perfection of Intellectual Property Rights in
the Disease Progression Explorer, all Client Versions and Enhancements thereof,
the Demonstration Version, and all Inventions related to any of the foregoing.
5. LIMITED WARRANTY
5.1 Limited Warranty During the Warranty Period. With respect to each
Client Version, MSS warrants to Digisphere for the Warranty Period that the
Client Version will function in accordance with its applicable Specifications in
the corresponding Client Contract. Provided MSS is able to reproduce the error
on a computer at its own facilities, MSS will modify or replace, at no
additional charge to the Client, any Client Version to correct any error therein
reported to MSS during the Warranty Period which causes the Client Version not
to function in accordance with its applicable Specifications in the
corresponding Client Contract. In the event that MSS is unable after reasonable
efforts to correct any such error, MSS may at its option require Digisphere to
refund to the Client, and reimburse Digisphere for, any fees paid by the Client
for the Client Version that contains the error, less a reasonable rental charge
for the period during which the Client has had use of the Client Version, using
straight line depreciation assuming a useful life of the Client Version of three
(3) years. The foregoing remedies shall be Digisphere's and the Client's sole
and exclusive remedies for errors contained in and for the performance of the
Client Version. The limited warranty set forth in this Section 5.1 shall
automatically become null and void if any person other than MSS modifies the
Client Version in any way.
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5.2 Supply of Error Corrections and Enhancements After the Warranty
Period. With respect to a particular Client Version, MSS shall supply Error
Corrections and Enhancements for such Client Version after expiration of the
Warranty Period only in accordance with a Maintenance Agreement, if any,
approved by MSS and entered into between the Client and Digisphere. MSS shall be
entitled to receive ninety percent (90%) of all fees paid by the Client under
such Maintenance Agreement, which shall be paid to MSS in accordance with the
payment procedures set forth in Section 6 below.
5.3 Disclaimer. EXCEPT AS EXPRESSLY SET FORTH IN THIS SECTION, MSS MAKES
NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, AND MSS EXPRESSLY
DISCLAIMS ANY AND ALL SUCH OTHER WARRANTIES, INCLUDING BUT NOT LIMITED TO ANY
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE AND
ANY WARRANTIES OF NON-INFRINGEMENT. MSS does not warrant that any Client Version
will be error free or that it will function without interruption.
6. PAYMENT PROVISIONS
Within fifteen (15) days after the close of each calendar month, MSS
shall supply to Digisphere a written report detailing all costs with respect to
such month that are reimbursable to MSS in accordance with the provisions of
Section 2.5 above. Within fifteen (15) days thereafter, Digisphere shall supply
to MSS a written report detailing all fees paid during such month under
Maintenance Agreements and a calculation of the amount of the same to which MSS
is entitled in accordance with the provisions of Section 5.2 above. Digisphere
shall deliver to MSS with each such report full payment in the amount of the
reimbursable costs to which MSS is entitled for such month and the portion of
fees paid under Maintenance Agreements to which MSS is entitled for such month.
7. TERM
Unless earlier terminated in accordance with the provisions of Section 8
below, this Agreement shall remain in effect for so long as the LLC Agreement is
in effect. This Agreement shall automatically terminate upon any termination of
the LLC Agreement.
8. TERMINATION
8.1 Termination Upon Notice of Breach. Either party may terminate this
Agreement upon the other party's failure to cure the breach of and comply with
any of the terms or conditions of this Agreement within thirty (30) days after
receipt of written notice of default concerning the same.
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8.2 Termination by MSS. MSS may terminate this Agreement in the event
that (i) Digisphere fails to meet the revenue targets for Client Versions of the
Disease Progression Explorer set forth in the LLC Agreement or determined in
accordance with the procedures set forth in the LLC Agreement, subject to any
relevant cure periods contained therein, or (ii) Digisphere fails to exercise
the good faith efforts to market and promote Client Versions of the Disease
Progression Explorer as required by the LLC Agreement, subject to any relevant
cure periods contained therein.
8.3 Immediate Termination Upon Certain Events of Bankruptcy. Either
party may at its option terminate this Agreement immediately upon written notice
to the other party upon the occurrence of any of the following events:
(a) In the event that the other party makes an assignment for the
benefit of creditors; admits in writing its inability to pay its debts as they
become due; files a voluntary petition in bankruptcy; is adjudicated to be
bankrupt or insolvent; files a petition seeking for itself any reorganization,
arrangement, composition, readjustment, liquidation, dissolution or similar
arrangement under any present or future statute, law or regulation, or files an
answer or similar pleading admitting the material allegations of a petition
filed against it in any such proceeding; or consents to or acquiesces in the
appointment of, or has its business placed in the hands of, a trustee, receiver,
assignee, or liquidator of it or any substantial part of its business, assets or
properties, whether by voluntary act or otherwise; or
(b) In the event that either party ceases doing business as a
going concern, or it or its shareholders take any action in anticipation of or
furtherance of dissolution or liquidation.
8.4 Effect of Termination. The rights of termination set forth in this
Section 8 shall be in addition to any other remedy that the terminating party
may have at law or in equity. Upon termination of this Agreement, all license
rights granted to Digisphere hereunder shall automatically terminate, and
Digisphere shall, within ten (10) business days thereafter, at MSS' sole option,
either return to MSS all copies of the Disease Progression Explorer, all Client
Versions and Enhancements thereof, and the Demonstration Version within
Digisphere's possession or under its control, or certify to MSS through one of
Digisphere's officers that all copies of the foregoing within Digisphere's
possesstion or uncer its control have been destroyed. Termination of this
Agreement shall not affect the right of any Client to continue to utilize any
Client Version licensed and delivered to the Client prior to such termination,
so long as the Client's use of the same is in accordance with the applicable
Client Contract.
8.5 Survival. The provisions of Sections 4.1, 5.3, 8.4, 8.5, 9 and 10
shall survive the termination or expiration of this Agreement.
9. LIMITATIONS OF LIABILITY
REGARDLESS WHETHER ANY REMEDY SET FORTH HEREIN FAILS OF ITS ESSENTIAL
PURPOSE OR OTHERWISE, IN NO EVENT SHALL MSS BE LIABLE, WHETHER ARISING UNDER
CONTRACT, TORT (INCLUDING NEGLIGENCE), STRICT
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LIABILITY, BREACH OF WARRANTY OR OTHERWISE, FOR LOSS OF ANTICIPATED PROFITS,
COST OF MONEY, LOSS OF USE OF CAPITAL OR REVENUE, OR FOR ANY SPECIAL,
INCIDENTAL, INDIRECT OR CONSEQUENTIAL LOSS OR DAMAGES OF ANY KIND, EVEN IF MSS
HAS BEEN ADVISED OF THE POSSIBILITY FO SUCH LOSS OR DAMAGES.
10. GENERAL
10.1 Applicable Law. All questions concerning the construction,
validity, and interpretation of this Agreement and the performance of the
obligations imposed by this Agreement shall be governed by the internal law, not
the law of conflicts, of the State of California.
10.2 Seperability of Provisions. Each provision of this Agreement shall
be considered separable; and if, for any reason, any provision or provisions
herein are determined to be invalid and contrary to any existing or future law,
such invalidity shall not impair the operation of or affect those portions of
this Agreement which are valid.
10.3 Notices. All notices required or permitted under this Agreement
will be in writing, will reference this Agreement and will be deemed given: (i)
when sent by confirmed facsimile; (ii) five (5) working days after having been
sent by registered or certified mail, return receipt requested, postage prepaid;
or (iii) one (1) working day after deposit with a commercial overnight carrier,
with written verification of receipt. All communications will be sent to the
addresses set forth below or to such other address as may be designated by a
party by giving written notice to the other party pursuant to this Section:
To MSS:
Xxxx X. Xxxxx
President and CEO
Medical Science Systems, Inc.
0000 XxXxxxxx Xxxx., Xxxxx 000
Xxxxxxx Xxxxx, XX 00000
To Digisphere:
Digisphere
000 Xxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
Attn: Xxxxxx X. Xxxxx, Director
Xxxx X. Xxxxx, Director
10.4 Delays Beyond Control. Neither party will be liable to the other
party for any failure or delay in performance caused by reasons beyond such
party's reasonable control, and such failure or delay will not constitute a
material breach of this Agreement.
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10.5 Assignment. Neither party may assign its rights or obligations
hereunder, by operation of law or otherwise, without express written consent of
the other party, which consent will not be unreasonably withheld. Any attempted
assignment without such consent shall be void. Subject to the foregoing, this
Agreement will benefit and bind the successors and assigns of the parties.
10.6 No Third Party Beneficiaries; No Agency. Except as expressly
provided herein to the contrary, no provision of this Agreement, express or
implied, is intended or will be construed to confer rights, remedies or other
benefits to any third party under or by reason of this Agreement. This Agreement
will not be construed as creating an agency, partnership or any other form of
legal association (other than as expressly set forth herein) between the
parties.
10.7 Complete Agreement. This Agreement and the LLC Agreement, including
all exhibits, constitutes the complete and exclusive statement of the agreement
with respect to the subject matter hereof. It supersedes all prior written and
oral statements other than the LLC Agreement, including any prior
representation, statement, condition, or warranty. This Agreement may not be
amended without the written consent of both of the parties.
10.8 Counterparts. This Agreement may be executed simultaneously in two
or more counterparts, each of which shall be deemed an original and all of
which, when taken together, constitute one and the same document. The signature
of any party to any counterpart shall be deemed a signature to, and may be
appended to, any other counterpart.
10.9 Section Titles. The headings herein are inserted as a matter of
convenience only and do not define, limit, or describe the scope of this
Agreement or the intent of the provisions hereof.
10.10 Terms. Common nouns and pronouns shall be deemed to refer to the
masculine, feminine, neuter, singular, and plural, as the identity of the person
may in the context require.
IN WITNESS WHEREOF, the parties have executed this Agreement through
their duly authorized representatives as set forth below:
MEDICAL SCIENCE SYSTEMS, INC. DIGISPHERE, LLC
By: By:
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Xxxxxx X. Xxxxx, Director
Printed Name:
-----------------
Title: By:
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Xxxx X. Xxxxx, Director
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EXHIBIT A
DESCRIPTION OF DISEASE PROGRESSION EXPLORER
The Disease Progression Explorer is a computer software system that allows entry
of data about a specific patient to project how a given disease will progress,
in terms of key clinical signs and/or symptoms, over a specified period of time.
The tool can be used for a number of purposes, including 1) education of the
patient in terms of how the patient's risk factors affect progression of the
disease and how altering those risk factors can alter that progression, 2)
support of the practitioner in comparing how different therapeutic approaches
might affect disease progression in a particular patient, and 3) providing a
means for the payer to assess how a selected therapeutic regimen works on a
given type of patient.
MODULES
[ * ]
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