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STREAMLINE HEALTH SOLUTIONS INC. | Streamline Health, Inc

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Title: SOFTWARE LICENSE AND ROYALTY AGREEMENT
Date: 12/17/2013
Industry: Software and Programming     Law Firm: Wiggin Dana;Womble Carlyle     Sector: Technology

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SOFTWARE LICENSE AND ROYALTY AGREEMENT

 

This document and its attachments contain certain terms of agreement between Streamline Health, Inc., a corporation organized under the laws of Ohio, with offices located at 1230 Peachtree Street NE, Suite 1000, Atlanta, Georgia 30309 (“ Streamline ”) and the Montefiore Medical Center, a not-for-profit corporation organized under the laws of New York, with offices located at 111 East 210 Street, Bronx, New York 10467 (“ Montefiore ”).

BACKGROUND INFORMATION

A.      Montefiore is a hospital that has developed a certain proprietary software product, utilizing proprietary code developed by its personnel and numerous components obtained under licenses from third parties, and Montefiore applied for and/or obtained certain patent rights related to processes that are or may be practiced by operation and use of such software. Streamline and Montefiore desire to enter into a royalty and license agreement whereby Streamline will commercialize and further develop and maintain the software product described above by licensing the same from Montefiore and sublicensing it to one or more third-party customers, while Montefiore will retain the ability to use the same for its internal operations.

B.      Streamline is in the business of developing, commercializing and supporting software products and providing related services to healthcare providers and healthcare-related industries. Streamline desires to obtain an exclusive license to commercialize the software product described above and to acquire all rights necessary and appropriate for such purposes.

C.      The Parties desire to enter into a binding agreement according to which Montefiore shall grant certain license rights to Streamline, and shall assign certain contracts, licenses and other assets to Streamline, and whereby Streamline shall pay certain royalties and provide certain services to Montefiore, all as provided in greater detail in this Contract.

TERMS OF AGREEMENT

By signing this Contract, Montefiore and Streamline signify their intent to be contractually bound by the terms and conditions set forth below, in consideration for their mutual promises set forth below.

 

1. DEFINED WORKS AND PHRASES.

Some capitalized words and phrases used in this Contract have defined meanings that are set forth in Exhibit A.

2. GRANT OF RIGHTS AND ASSET ACQUISITIONS.

2.1 Software License and Delivery of Materials; Reservation of Rights.

(a)     Montefiore grants to Streamline a license, effective during the Contract Period, to use, reproduce, publicly perform, publicly display, modify, adapt, translate, create derivative works of, digitally transmit, and distribute the Licensed Software and Software Documentation. This license is exclusive, subject to the Reserved Rights, as contemplated in Section 2.2 (Exercise of Reserved Rights; General Reservation of Rights) below. This license may not be assigned except as contemplated in Section 8 (Miscellaneous Provisions) below. The rights granted by this paragraph are fully sublicenseable, separately and/or in aggregate, through multiple tiers of sublicensees, provided that any sublicenses shall be granted in accordance with applicable restrictions set forth below. Without limiting the application of the foregoing, during the Contract Period Montefiore grants to Streamline an exclusive, worldwide license under all Licensed Rights in all fields of use and for all purposes, subject to the Reserved Rights, as contemplated in Section 2.3 below. Except as expressly granted to Streamline by Montefiore in this Contract, neither Montefiore nor any of its Affiliates grants any other licenses in and to any other Intellectual Property Rights owned or licensed by Montefiore or such Affiliates. Montefiore expressly reserves all of its right, title and interest in and to such Intellectual Property Rights.

(b)     As soon as commercially practicable after the Effective Date, Montefiore shall deliver to Streamline one (1) complete copy of the Licensed Software, including source code and object code formats, and one copy of all Software Documentation, in electronic format.

(c)     Streamline acknowledges that, as between the Parties, Montefiore owns all Intellectual Property Rights and proprietary interests that are embodied in, or practiced by, the Licensed Software and the Software Documentation. For avoidance of doubt, the Parties agree that Streamline will own all Intellectual Property Rights in derivative works that it creates based on the Licensed Software and/or Software Documentation, subject to Montefiore’s continuing ownership of Intellectual Property Rights in the underlying Licensed Software and Software Documentation as originally provided under this Contract.

(d)     For so long as this Contract remains in effect, Montefiore agrees not to attempt to commercialize any software product or online service that is designed to compete, directly or indirectly, with the Licensed Software, as it exists on the Effective Date (and for the purposes for which it is used on the Effective Date), with a solution that incorporates unique features or functionality thereof as the same exists on the Effective Date.

2.2 Exercise of Reserved Rights; General Reservation of Rights. Notwithstanding the rights granted to Streamline in Section 2.1(a), but subject to Section 2.1(d), Montefiore expressly reserves the non-exclusive right to use the Licensed Software (in both machine readable object code and source code) and the Software Documentation, and to exercise Intellectual Property Rights owned by Montefiore, on its own behalf and on behalf of its Affiliates, and embodied in, or practiced by, such Licensed Software and Software Documentation, solely for their internal business purposes. For purposes of this Contract, the rights reserved by Montefiore pursuant to this paragraph shall be referenced as “ Reserved Rights .” The Reserved Rights shall be interpreted to include the rights (i) to reproduce and install copies of the Licensed Software upon computer systems in Montefiore’s and such Affiliates’ possession or control (including, for avoidance of doubt, computer systems of any third-party service providers), (ii) to reproduce copies of the Software Documentation solely for use (including remote use) by Montefiore’s and such Affiliates’ personnel (or personnel in the employ of third-party service providers acting on behalf of Montefiore or Affiliates) in connection with using the Licensed Software and (iii) to modify the Licensed Software and create derivative works thereof or have third parties that are bound by obligations of confidentiality modify the Licensed Software and create derivative works thereof (collectively, “ Modifications ”), provided that (a) Montefiore shall notify Streamline if any Modifications are so created, describing the nature of each such Modification, (b) Montefiore shall not distribute such Modifications to any third party other than to its Affiliates, and (c) except as otherwise agreed in a statement of work, Streamline

 

 


 

 

shall not be responsible for any maintenance or support obligations with respect to such Modifications.

2.3 Assignment of Agreements in Third-Party Resources; Assignment of Other Assets.

(a)     Effective as of the Effective Date, Montefiore hereby assigns, transfers and conveys to Streamline all Montefiore’s right, title and interest in and to the Third-Party Resource Agreements listed on Exhibit C of this Contract, including all claims arising thereunder from and after the Effective Date. Montefiore agrees that it shall retain all rights, obligations, duties and liabilities under the Third-Party Resource Agreements only to the extent arising prior to the Effective Date, including, without limitation, any payment obligations coming due from or after the Effective Date with respect to any use or distribution of the Third-Party Resources prior to the Effective Date. Subject to the preceding sentence, Streamline hereby agrees to assume and perform all obligations, duties and liabilities arising under the Third-Party Resource Agreements from and after the Effective Date.

(b)     As soon as commercially practicable after the Effective Date, Montefiore shall deliver to Streamline, or cause the applicable third-party vendor or licensor to deliver to Streamline, one (1) complete copy of each Third-Party Resource, in all formats licensed under the applicable Third-Party Resource Agreement, including any associated documentation or other materials having been provided by the relevant third-party licensor.

(c)     Montefiore will provide such assistance as Streamline may reasonably request, without additional charge, as Streamline reasonably deems necessary to transition administration of each Third-Party Resource Agreement to Streamline, including, without limitation, providing notice to or obtaining consent from the relevant third-party licensors as may be required by the applicable Third-Party Resource Agreements. Nothing in this Section 2.3(c) shall be deemed to obligate Montefiore to incur any out-of-pocket costs or to provide technical assistance or personnel to Streamline in connection with the transition of any Third Party Resource Agreement. To the extent any Third Party Resources Agreement is not assignable, Streamline may undertake at its own expense to enter into a new agreement with such Third-Party Resources provider or a substitute provider of similar resources.

(d)     Effective as of the Effective Date, Montefiore hereby assigns, transfers and conveys to Streamline all Montefiore’s right, title and interest in and to the equipment and materials identified in Exhibit F (the “ Transferred Equipment ”), including, without limitation, any information, files and content stored upon the same (the “ Installed Resources ”); provided, however, that the Transferred Equipment and Installed Resources shall remain on their current site for a period of three (3) months following the Effective Date as described below. Montefiore represents and warrants that it has all rights necessary to transfer ownership of all Transferred Equipment and Installed Resources to Streamline, without encumbrance of any kind whatsoever, provided that this paragraph shall not be interpreted to assign ownership of any Intellectual Property Rights in any Third-Party Resources contained within the Installed Resources or any personal health information contained therein, all of which personal health information shall be considered Montefiore’s Proprietary Information and expressly be and remain subject to the Business Associate Agreement appended to the Software License and Support Agreement between the Parties dated the Effective Date. All such Third-Party Resources shall remain subject to applicable Third-Party Resource Agreements that are assigned pursuant to the preceding clauses of this Section 2.3. Montefiore shall deliver all Transferred Equipment, including the Installed Resources, as may be mutually agreed pursuant to a Statement of Work as contemplated in Section 2.6 below. Within three (3)

 

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months of the Effective Date, Streamline shall provide Montefiore with a list setting forth the Installed Resources (i) that Streamline has replaced or (ii) for which Streamline has obtained an assignment from the third party licensor therefor. During such three (3) month period, Streamline shall have, and Montefiore hereby grants to Streamline, a nontransferable, revocable, limited right for the Transferred Employees to access and use the Transferred Equipment located at Montefiore’s Yonkers facility (at 1010 Central Park Ave., Yonkers, NY) to conduct development for and facilitate transfer of the Software. Thereafter, such Transferred Equipment will be re-located to Streamline’s offices located in Manhattan, New York.

 

(e)     Effective as of the Effective Date, Montefiore hereby assigns, transfers and conveys to Streamline all Montefiore’s right, title and interest in and to (i) all text, graphics, and other content available for viewing and use as of the Effective Date at the domain name https://exploreCLG.Montefiore.org (the “CLG Site”), including all copyrights and all rights in the CLG Brand that are embodied by the CLG Site, and (ii) all HTML code and software underlying the functionality of the CLG Site, including all Intellectual Property Rights that are embodied in or practiced by the CLG Site, provided that this paragraph shall not be interpreted to assign ownership of any Intellectual Property Rights in any Third-Party Resources contained within the CLG Site, and instead all such Third-Party Resources shall remain subject to applicable Third-Party Resource Agreements that are assigned pursuant to the preceding clauses of this Section 2.3 Furthermore, this paragraph shall not be interpreted to assign any trademarks of Montefiore that are not part of the CLG Brand or Other CLG Marks, and no license is granted to any such other trademarks. Collectively, all information and materials assigned to Streamline pursuant to this paragraph may be referenced as “CLG Site Materials.” Montefiore shall deliver all CLG Site Materials as may be mutually agreed pursuant to a Statement of Work as contemplated in Section 2.6 below.

(f)     STREAMLINE ACKNOWLEDGES AND AGREES THAT THE REPRESENTATIONS AND WARRANTIES PROVIDED BY MONTEFIORE WITH RESPECT TO THE TRANSFERRED EQUIPMENT AND THE INSTALLED RESOURCES ARE IN LIEU OF ANY OTHER WARRANTY, AND MONTEFIORE HEREBY EXPRESSLY DISCLAIMS ANY OTHER REPRESENTATIONS OR WARRANTIES WITH RESPECT TO THE TRANSFERRED EQUIPMENT OR INSTALLED RESOURCES, EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED REPRESENTATION OR WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY OF NON-INFRINGEMENT. MONTEFIORE DOES NOT WARRANT THAT THE OPERATION OF THE TRANSFERRED EQUIPMENT, THE INSTALLED RESOURCES OR THE CLG SITE MATERIALS WILL BE UNINTERRUPTED OR ERROR FREE. FOR AVOIDANCE OF DOUBT, EXCEPT AS EXPRESSLY REPRESENTED OR WARRANTED IN THIS CONTRACT, STREAMLINE ACKNOWLEDGES THAT THE TRANSFERRED EQUIPMENT, THE INSTALLED RESOURCES AND THE CLG SITE MATERIALS ARE PROVIDED “AS IS.”

2.4 Assignment of Existing Customer Agreement.

(a)     Montefiore agrees to require its Affiliate, EHIT, to execute the form of assignment attached to this Contract as Exhibit E and to assign, transfer and convey to Streamline, effective as of the Effective Date, all of EHIT’s right, title and interest in and to the Existing Customer Agreement, including all claims existing thereunder but unasserted as of the Effective Date and all claims arising thereunder from and after the Effective Date.

 

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(b)     Montefiore will provide such assistance as Streamline may reasonably request, without additional charge, as Streamline reasonably deems necessary or appropriate to transition administration of the Existing Customer Agreement to Streamline, including, without limitation, by causing EHIT to provide such assistance, as necessary, and by providing notice (or causing EHIT to provide such notice) to or obtaining consent from the relevant third-party licensors as may be required by the Existing Customer Agreement. Nothing in this Section 2.4(b) shall be deemed to obligate Montefiore to incur any out-of-pocket costs or to provide technical assistance or personnel to Streamline in connection with the transition of the Existing Customer Agreement.

2.5. EHIT Personnel. Montefiore acknowledges that Streamline may desire to engage the services of one (1) or more of Montefiore’s or Montefiore’s Affiliate’s current personnel who are or have been involved in the development, commercialization or support of the Licensed Software. Accordingly, Streamline shall have the right, but not the obligation, to solicit any personnel listed on Schedule 2.5 for employment or engagement in connection with Streamline’s exploitation of the Licensed Software as contemplated in this Contract. Montefiore represents and warrants that such personnel are the only current personnel of Montefiore and its Affiliates who have been substantially engaged in the development, commercialization and support of the Licensed Software. With respect to those personnel who agree to be interviewed by or who subsequently are offered and accept employment with, Streamline, Montefiore agrees to provide a limited release each of such personnel from any and all obligations, arising pursuant to any employment contract or corporate policy that would prevent, restrict, or limit any such personnel’s right or ability to seek or accept employment or engagement with Streamline and/or any Streamline Affiliate, or that would prevent, restrict, or limit any such personnel’s right or ability to provide information or assistance as reasonably required by Streamline, but, with respect to their provision of information, the scope of such release shall be limited solely to information (i) relating to the Licensed Software, the Software Documentation, the Third Party Resources, or the Assumed Contracts, and (ii) which Montefiore is not prohibited from disclosing either by law or by contract with any third party (the “ Released Claims ”). Subject to the foregoing limitations, Montefiore hereby waives, discharges and releases Streamline, Streamline’s Affiliates, and any personnel of Montefiore or a Montefiore Affiliate hired or engaged by either Streamline or any Streamline Affiliate from the Released Claims and from any breach of non-competition obligations, to the extent arising in connection with Streamline’s or its Affiliate’s hiring or engagement of such personnel. Montefiore agrees to execute such further documents or agreements as reasonably requested by Streamline to evidence or give effect to this paragraph, and Montefiore shall cause its Affiliates, including, without limitation, EHIT, to provide releases with respect to their personnel of equal scope to the releases required by this paragraph. Streamline acknowledges and warrants that any member of Montefiore’s personnel whom it seeks to engage in accordance with the foregoing paragraph will be offered employment or engagement as soon as practicable after the Effective Date. Streamline also warrants that the agreements memorializing such employment relationships will be executed as of, and the individuals who enter into such agreements shall be considered employees, consultants or contractors of Streamline as of, November 1, 2013.

2.6 Transition Services. The Parties acknowledge that they may desire from time to time to establish arrangements whereby one Party would provide certain services to the other Party pursuant to one or more Statements of Work (as defined below), including, by way of example, services by Streamline to Montefiore to assist with its continued use of the Licensed Software during a defined period of time following the transfer of the Licensed Software and associated personnel to Streamline as contemplated herein. As the first of such arrangements, the parties shall execute and deliver on

 

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the Effective Date a Statement of Work (as defined below), substantially in the form attached hereto as Exhibit G, pursuant to which Montefiore’s Affiliate, Emerging Health Information Technology, LLC, will provide certain hosting services for Streamline’s development environment used in connection with the Licensed Software. For purposes of the foregoing, the term “Statement of Work” shall mean a separate, mutually signed document that unambiguously identifies this Contract and expressly states that the parties intend for it to be considered a Statement of Work under this Contract, and that (i) identifies the duties that each Party agrees to perform and, if applicable, the time period during which those duties are to be performed and/or completed; (ii) identifies any deliverables to be provided by either Party, if applicable; (iii) states any payments to be made by either Party and any other applicable economic terms; and (iv) includes any additional terms or conditions that the Parties desire to include related to the rights and duties of the parties under that Statement of Work. No Statement of Work will be binding unless and until mutually executed by the Parties. Each Statement of Work shall be considered an integral part of this Contract as if fully incorporated and set forth herein. In the event of a conflict between the terms of this Contract and the terms of any Statement of Work, the terms of this Contract will govern unless the Statement of Work expressly identifies a provision of this Contract and expressly states the Parties’ desire that the Statement of Work should supersede that provision for purposes of the Statement of Work.

2.7 Non-solicitation. During the Contract Period and for a period of twelve (12) months thereafter, Streamline shall not, whether directly or indirectly through third parties, solicit, recruit or induce any employee, consultant or representative of Montefiore or its Affiliates (other than the Transferred Employees of EHIT) to leave, terminate or otherwise end his/her association with Montefiore or its Affiliates in order to become an employee, agent, consultant or representative of Streamline or its Affiliates. Notwithstanding the immediately preceding sentence, (i) nothing in this paragraph shall limit Streamline’s right or ability to hire or engage any person whom Streamline has not directly solicited to apply for a position but who has responded to general solicitations for employment, such as newspaper advertisements; and (ii) Streamline may freely solicit and employ any of Montefiore’s or its Affiliates’ personnel after such personnel voluntarily leave the employment of such employer or are terminated by such employer.

2.8 Management Briefing . For the first six (6) months of the Contract Period, on a monthly basis, one or more members of Streamline’s management shall, telephonically or in-person, provide a briefing to Montefiore’s management designee to describe Streamline’s efforts to commercialize the Licensed Software (“ Briefing ”). Thereafter, Montefiore shall receive Briefings at quarterly intervals upon request. Any disclosure under this Section shall remain subject to the confidentiality restrictions set forth in Section 5 below.

3. COMMERCIALIZATION AND DISTRIBUTION

3.1 Attribution and Branding Rights; Assignment of CLG Brand Rights.

(a)     As between the Parties and subject to the terms of this Section 3.1, Streamline shall have the right to determine the branding of any and all Covered Offerings. Montefiore agrees that Streamline may display Streamline’s or its designees’ brand(s) upon and within the Licensed Software and Software Documentation, and may represent to third parties and the general public that Covered Offerings are proprietary to Streamline or its designees (e.g., Streamline’s resellers and other business partners), and Streamline’s licensors.

(b)     Montefiore hereby irrevocably assigns to Streamline all right, title and interest in and to the CLG Brand, including any and all registrations for trademark rights and service mark rights that

 

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Montefiore or any Montefiore Affiliate may own or hold in the CLG Brand. Montefiore acknowledges that, from and after the Effective Date, subject to the terms and conditions of this Contract, Streamline shall have the right to use the CLG Brand without restriction, including, by way of example, the rights to modify the CLG Brand in Streamline’s discretion, to make combination marks and derivatives of the CLG Brand and the right to use the CLG Brand in association with any and all Covered Offerings and Independent Offerings. Streamline may register its rights to the CLG Brand in any jurisdiction, and Montefiore agrees to provide such assistance as Streamline reasonably requests in order to evidence or to give effect to the rights assigned in this paragraph, provided that Streamline shall reimburse Montefiore for its reasonable out-of-pocket expenses incurred to provide such assistance.

(c)     Streamline agrees to include a notice, either within applicable end user documentation, within Streamline’s primary corporate website, or within the Licensed Software itself (e.g., within the acknowledgements stated in an “About” menu or similar) indicating that the relevant Covered Offering includes software that was originally developed by Montefiore. Placement of such notice shall be determined by Streamline in its reasonable discretion.

(d)     The Parties acknowledge that, as of the Effective Date, certain trademarks and/or service marks that are identified in Exhibit D as the “Other CLG Marks” are intent to use applications for trademarks and/or service marks for which Montefiore and/or Montefiore’s Affiliates have not filed statements of use. Notwithstanding, the fact that the Parties acknowledge Streamline qualifies as a successor in interest to the CLG business for purposes of assigning legal title in the Other CLG Marks under applicable trademark law, Montefiore and/or its Affiliates have agreed to license the Other CLG Marks to Streamline until such time as statements of use can be filed and then assign title to Streamline. Accordingly, Montefiore hereby grants to Streamline an exclusive license under all rights that Montefiore and/or its Affiliates have or may have with respect to the Other CLG Marks, including any and all trademark rights, all rights in any trademark registrations related to the Other CLG Marks, and all rights to apply for registration of such Other CLG Marks in any jurisdiction worldwide. Montefiore further agrees to assign to Streamline all right, title and interest in and to the Other CLG Marks promptly upon the occurrence of any circumstance giving Montefiore the legal right and ability to make such assignment. Montefiore hereby appoints Streamline as its agent and attorney-in-fact, which appointment is coupled with an interest, to act on Montefiore’s behalf to file and execute any application, statement of use, registration or other document as necessary to establish and/or perfect any proprietary rights in the Other CLG Marks in any jurisdiction, and to act on Montefiore’s behalf to execute and effect the assignment of all such rights to Streamline. Montefiore agrees to provide such assistance as Streamline deems necessary or desirable to accomplish such filings and/or assignments, including, without limitation, by executing such additional documents as Streamline reasonably requests for such purposes.

3.2 Distribution Pricing. As between the Parties, Streamline shall have sole discretion to establish price schedules and business models applicable to distribution of Covered Offerings to customers, provided that, notwithstanding such price schedules or business models, Streamline agrees to pay to Montefiore all applicable fees and royalties with respect to distribution of Covered Offerings required by Section 4 (Economic Terms of Contract). Notwithstanding the foregoing, to the extent that Streamline sells, licenses or otherwise provides Covered Offerings in combination with other products and services that do not constitute Covered Offerings (“ Bundled Offerings ”), Streamline agrees that, for purposes of calculating Net Attributable Revenues, it shall allocate the gross revenues received for Bundled Offerings in a manner that reasonably and fairly accounts for the value that the Covered Offering contributes to the Bundled Offering as a whole.

 

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3.3 Sublicensing of Covered Offerings.

(a)     Streamline will be permitted to grant to any third party a sublicense under rights granted in Section 2 (Grant of Rights and Asset Acquisitions), including, without limitation, customers and channel partners, provided that any such license shall be granted subject to a formal written agreement which (i) shall not purport to make any binding representations, warranties or other obligations on Montefiore’s behalf; (ii) shall not exceed in any respect the licenses granted by Montefiore to Streamline hereunder and shall refrain from purporting to transfer title in any Intellectual Property Rights that are embodied in the Licensed Software and Software Documentation as provided under this Contract; (iii) shall comply with applicable law; (iv) shall exercise commercially reasonable efforts (1) to limit Montefiore’s liability, in a manner consistent with the manner that Streamline limits its own liability, for direct damages and (2) disclaim all liability with respect to indirect, special, incidental, exemplary, punitive or consequential damages (including, without limitation, loss of profits); and (v) shall otherwise remain consistent with the terms and conditions of this Contract. For purposes of this Contract, an agreement between Streamline and a third party that complies with this paragraph shall be considered a “ Qualified Sublicense .”

(b)     Montefiore acknowledges and agrees that Streamline shall have the right to appoint resellers or distributors of Covered Offerings, and Streamline may grant sublicenses to any or all such third parties under each of the licenses granted by the provisions of Section 2 (Grant of Rights and Asset Acquisitions), provided that such sublicenses are, in each case, granted pursuant to a Qualified Sublicense, and provided further that, to the extent the acts and omissions of such resellers and distributors would constitute a breach of this Contract if Streamline itself were to undertake such acts or omissions, Streamline shall remain liable for such acts and omissions to the same extent Streamline would otherwise be liable under this Contract.

(c)     Streamline shall have the right (i) to place source code of the Licensed Software into escrow for the benefit of third-parties licensing Covered Offerings, which escrow shall be pursuant to escrow agreements with reputable providers (e.g., Iron Mountain) of source code escrow services; and (ii) to permit release of such source code to the relevant third-party licensees who are the designated beneficiaries of such escrow accounts, consistent with standard industry release conditions.

 

3.4 Enforcement of Intellectual Property Rights Against Third Parties.

(a)     Streamline shall have the right, at its sole expense, to enforce the Licensed Rights, and Montefiore hereby irrevocably assigns to Streamline the right to enforce the Licensed Rights during and after the Contract Period, with respect to all claims arising under the Licensed Rights prior to, during and after the Contract Period. In the event that Streamline elects to bring any action to enforce the Licensed Rights, Montefiore agrees to provide such assistance as Streamline reasonably requests, at Streamline’s expense, and Streamline shall have the right to retain any monies recovered from the relevant third party as a result of such enforcement action, provided that such amounts recovered, less all actual costs and expenses incurred by Streamline in connection with such enforcement action, shall be considered Net Attributable Revenues. Notwithstanding anything contained herein to the contrary, Montefiore may participate at its own expense in such enforcement of the Licensed Rights or negotiations to protect its interests.

 

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(b)     Montefiore acknowledges and agrees that Streamline shall have no obligation to pursue enforcement of any particular claim arising under the Licensed Rights. In the event that Montefiore desires that Streamline enforce the Licensed Rights against a third party, Montefiore shall provide written notice to Streamline, setting forth in reasonable detail the basis for such desired enforcement action. In the event that Streamline does not, within two (2) calendar months following its receipt of such notice, provide written notice to Montefiore asserting Streamline’s intent to pursue such enforcement action, Streamline agrees to assign to Montefiore, and does hereby assign to Montefiore, all of Streamline’s rights and interest in that particular claim, in which event (i) Montefiore may pursue and direct such enforcement action at its own expense, provided that Montefiore may not settle such claim in any manner that grants or purports to grant any license in conflict with the rights granted under this Contract, (ii) Streamline shall provide such assistance as Montefiore reasonably requests, at Montefiore’s expense, and (iii) Montefiore shall have the right to retain any monies recovered from the relevant third party as a result of such enforcement action, provided that such amounts recovered, less all costs and expenses incurred by Montefiore in connection with such enforcement action, shall be shared between the Parties in the same proportions as if the same had been received by Streamline as Net Attributable Revenues, and Montefiore shall remit that portion of such recovered monies that remain after first retaining the royalty to which it would otherwise be due under this Contract. In the event that Streamline does provide written notice, within the above-referenced 2-month period, asserting its intent to pursue the relevant enforcement action, Streamline agrees to pursue such enforcement diligently and in good faith.

(c)     During the Contract Period, Montefiore agrees that it shall either (i) pay (at least ninety (90) calendar dates prior to the applicable deadline) all renewal fees, extension fees, or similar charges (collectively, “ Renewal Fees ”) to all applicable governmental agencies, including, without limitation, the U.S. Patent and Trademark Office, as are necessary to cause the patents identified Exhibit D (and any patents issuing on any patent applications identified in Exhibit D) (the “ Patents ”) to remain in force and effect for the maximum duration allowed by applicable law; or (ii) notify Streamline of its intent not to pay any particular Renewal Fees at least ninety (90) calendar days prior to the date after which the failure to pay such amount would jeopardize Streamline’s ability to enforce or renew the applicable Patent(s), in which even Streamline shall have the right, at its option, to pay the applicable Renewal Fees. In the event that Montefiore has failed either to pay the applicable Renewal Fees or timely notify Streamline as required above, Streamline shall have the unilateral right to pay such Renewal Fees at its election. Streamline shall have the right to deduct all such amounts paid as Renewal Fees from amounts subsequently becoming due and payable under this Contract.

4. ECONOMIC TERMS OF CONTRACT.

4.1 Fees Payable; Report; Auditing.

(a)     In consideration for the rights granted and the promises made by Montefiore under this Contract, Streamline agrees to pay to Montefiore the royalties stated in Exhibit B at such times as Exhibit B requires.

(b)     To assist Montefiore in confirming the accuracy of payments made by Streamline as required by this Contract, Streamline agrees to accompany each payment contemplated by Exhibit B with a written report, setting forth in reasonable detail such information as is necessary to confirm the accuracy of Streamline’s payment calculations.

 

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(c)     Streamline agrees to keep accurate written records on paper or in electronic format with detail sufficient to enable later confirmation that all payments under this Contract have been accurately calculated and that Streamline has performed its material obligations hereunder in compliance with the terms of this Contract. Streamline agrees to keep those records in a manner that is consistent with generally accepted accounting principles in the United States, and will retain all such records for at least five (5) years following the period to which they relate. Streamline agrees to permit Montefiore and its agents to review those records at Streamline’s premises upon request at any time prior to the third anniversary of this Contract’s termination or expiration, and Montefiore agrees to treat those records as Streamline’s Proprietary Information. During the term of the Contract and for a period of at least three (3) years thereafter (such period, the “ Audit Period ”), Montefiore or its designees shall be provided reasonable access to such Streamline records for audit purposes. Streamline shall provide Montefiore or its designees with reasonable cooperation and assistance in connection with any such audit, and shall make available, upon reasonable request, personnel and access to facilities. If an audit conducted hereunder reveals any payments due or owing to Montefiore in accordance with the terms of Exhibit B, Streamline shall promptly remit payment to Montefiore in an amount that covers such discrepancies and, if the underpayment exceeds five percent (5%) of amounts payable during the period to which the audit relates, Streamline shall, within thirty (30) days after receiving an invoice therefor, reimburse Montefiore for all reasonable fees and expenses incurred to conduct the audit.

(d)    In the event that Montefiore has not received Ongoing Royalty Fees under Section B.3 of Exhibit B that equal or exceed the sum of Three Million Dollars ($3,000,000) prior to May 1, 2020, Streamline agrees to pay to Montefiore the sum of Three Million Dollars ($3,000,000), less any amounts having been paid under Section B.3 of Exhibit B prior to such date. The payment provided for in this paragraph shall be made by Streamline no later than June 1, 2020. Any payments made by Streamline pursuant to this paragraph shall be credited against any amounts that subsequently come due under Section B.3 of Exhibit B.

4.2 Tax Responsibilities. Streamline acknowledges that any sales taxes, use taxes, value-added taxes, import or export duties, tariffs, or similar charges imposed upon the transactions that are subject to this Contract are payable in addition to all royalties, license fees and other amounts that this Contract expressly requires Streamline to pay. Streamline agrees to pay all those charges directly to the applicable taxing authorities, or, if at any time Montefiore is required by law to collect those charges from Streamline, Streamline will pay them directly to Montefiore within thirty (30) days after Montefiore issues an applicable invoice. Streamline agrees not to withhold any amounts from its payments to Montefiore for purposes of paying taxes, unless Streamline is required to do so by applicable law. Each Party agrees to obtain and keep receipts from applicable taxing authorities if it pays any taxes that may be imposed on transactions subject to this Contract, and it will promptly provide copies of those receipts to the other Party upon request. Neither Party has any responsibility for paying any portion of income taxes imposed on the other Party.

4.3 Expenses. Except as otherwise expressly provided in this Contract, and unless the Parties expressly agree via a mutually signed writing that a different rule should apply in a particular instance, each Party agrees to bear its own expenses when exercising its rights and performing its duties under this Contract.

 

 

5. CONFIDENTIALITY.

 

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5.1 Basic duties regarding Proprietary Information.

(a)     With regard to information that one Party discloses to the other, the disclosing Party is the “ Owner ,” and with regard to information it receives from the other, it is the “ Recipient .” The Recipient agrees not to disclose or permit access to the Owner’s Proprietary Information (as defined below), except to the Recipient’s employees and agents who are informed of the confidential nature of the Proprietary Information and who have agreed in writing or who are otherwise legally bound to treat the Owner’s Proprietary Information in a manner consistent with Recipient’s duties under this Contract. The Recipient will not use the Owner’s Proprietary Information except (i) as necessary to perform the Recipient’s duties under this Contract; and (ii) in any other manner that this Contract expressly authorizes. Even after termination or expiration of this Contract, the Recipient will continue to treat Proprietary Information received from the other Party in accordance with this Contract, for so long as the information fits the definition of “ Proprietary Information ,” or until use and disclosure of the information would no longer be restricted even if this Contract remained in full force.

(b)     The Recipient’s duties under this Section will apply only to (i) information which is marked to clearly identify it as the Owner’s Proprietary Information, or, if disclosed orally, which is identified as Proprietary Information both at the time of disclosure and again in a writing delivered by the Owner within a reasonable time; (ii) information which, due to its nature or the circumstances surrounding its disclosure, any reasonable person would be compelled to conclude is intended by the Owner to be considered confidential and proprietary for purposes of this Contract; and (iii) information which the Contract expressly requires to be treated a Proprietary Information.

(c)     Montefiore represents that to its knowledge the source code of the Licensed Software has not been published or disclosed to any third party, other than EHIT, prior to or as of the Effective Date, except as disclosed in the published patents listed in Exhibit D. For avoidance of doubt, Montefiore will refrain and shall cause its Affiliates to refrain from disclosing the source code of the Licensed Software to any third party, in whole or in part, except with Streamline’s prior written consent or as otherwise required by law.

(d)     The Parties agree that the detailed terms of this Contract will be considered Proprietary Information of both Parties.

5.2 Exceptions to Confidentiality Obligations. Even if some information would be considered Proprietary Information according to the definition in this Contract, the Recipient will have no duties regarding that information, subject to Section 2.1(d), if (i) the Recipient develops the same information without any use of or reference to the information obtained from the Owner; (ii) the Recipient rightfully obtains the information from some third party, without restrictions on use and disclosure, but only if the Recipient has no knowledge that the third party’s provision of that information is wrongful; or (iii) the information is made available to the general public without any violation of this Contract by the Recipient .

5.3 Compliance with Legal Duties. The Recipient will not be in breach of this Contract by delivering some or all of the Owner’s Proprietary Information to a court, to law enforcement officials, and/or to governmental agencies, provided that it uses commercially reasonable efforts to limit the disclosure to the minimum amount that will comply with applicable law (such as in response to a subpoena) or that is necessary to enforce its legal rights against the Owner. Unless prevented by law, the Recipient agrees to notify the Owner as far in advance as reasonably possib


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