EXHIBIT 10.4
*** CERTAIN CONFIDENTIAL INFORMATION
CONTAINED IN THIS DOCUMENT (INDICATED BY ASTERISKS) HAS BEEN
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT UNDER
17 C.F.R. SECTIONS 200.80(B)(4), 200.83 AND 230.406.
ADDENDUM TO SOFTWARE LICENSE
AGREEMENT
This ADDENDUM TO SOFTWARE LICENSE
AGREEMENT (“Addendum”) is made this 30th day of
November 2004 (the “Effective Date”) by and
between SEGAMI CORPORATION, a Maryland corporation with its
principal offices at 8325 Guilford Road, Suite B, Columbia, MD
21046 (“Segami”), and DIGIRAD CORPORATION, a Delaware
corporation with its principal offices at 13950 Stowe Drive, Poway
CA 92064 (“Digirad”).
Recitals
WHEREAS, Segami and Digirad are
parties to that certain Software License Agreement, dated June 16,
1999, as amended November 15, 2001 (as may be amended, restated,
replaced or superceded, the “Agreement”, pursuant to
which Segami has licensed to Digirad and supported certain software
for use and distribution in connection with Digirad products;
and
WHEREAS, the parties hereby wish to
amend the Agreement and its Exhibits in certain respects as set
forth below.
NOW, THEREFORE, in consideration of
the promises and mutual covenants contained herein and other good
and valuable consideration, the receipt and sufficiency of which
are hereby acknowledged, the parties agree to the following amended
terms and conditions as follows:
Agreement
1.
Exhibits A
and D to the Agreement shall
be replaced in their entirety by Exhibit A-1, and
Exhibit D-l, respectively, attached hereto.
Exhibit B-1 , and Exhibit C-l are additions to the
terms of the Agreement.
2.
Anything to the contrary in the
Agreement notwithstanding, effective as stated herein, Digirad, and
not Segami, will be responsible for developing and employing
software required (a) for the acquisition of the images
(effective as of April 1, 2005); and (b) to perform
iterative SPECT reconstruction (effective as of the Effective
Date). The definitions of “Base Software” and
“Interface Development” stated in section 1 of the
Agreement are amended to exclude any functional reference to the
acquisition of images or iterative SPECT reconstruction.
As a result, effective April 1, 2005, except for
“bug fixes” ( i.e., corrections of malfunctions
in Segami’s original software), (a) Segami shall not
support the original acquisition software it had developed for
Digirad; (b) Digirad shall assume complete responsibility for
acquisition and iterative SPECT reconstruction; and
(c) neither the Base Software nor the Interface Development,
as revised, shall support or interface with previous
versions. Changes required in Segami’s software to
allow Digirad’s own acquisition software to interface with
Segami’s software are described in Exhibit B-1
attached hereto. To determine whether the source of any
overall software malfunction resides in the acquisition or
iterative SPECT reconstruction
1
software, on the one hand, or the Base Software
or Interface Development, on the other hand, Digirad’ s
acquisition software shall be tested against Segami’s
software version v5.310, copies of which shall be maintained by
both Digirad and Segami; and Digirad’s iterative SPECT
reconstruction software shall be tested against Segami’s
software v5.308b, copies of which shall also be maintained by both
Digirad and Segami. If the malfunction does not occur in such
a test, the malfunction is presumptively determined to be caused by
the Base Software and/of Interface Development.
3.
The Base Software shall be available
for license in (a) SPECT- enabled configurations and (b) non-SPECT
-enabled configurations, restricted to upgrades of licenses sold to
Digirad customers prior to January 1, 2005.
4.
Section 1 of the Agreement is
amended to add the following definition:
“End-Users.” Customers of Digirad, who have
acquired Products directly from Digirad or from Digirad authorized
distributors for their own use (and not for unauthorized
redistribution or, remarketing, timesharing, or service bureau use)
in accordance with the terms of End-User License
Agreements.
5.
The following subsection 2(d) is
added to Section 2 of the Agreement:
(d)
Web Vue License and
Fee . Effective as
of January 1, 2005, and subject to all the terms of this Agreement,
Segami grants to Digirad a nonexclusive, worldwide license to
sublicense to an unlimited number of End-Users (including Digirad
Imaging Solution physician customers) in connection with the sale
and use of the Products unlimited access to Web Vue, a program that
enables remote viewing of data processed by Mirage software (and
its successor programs) via a web browser. The Web Vue
License shall be free to Digirad until December 31, 2005.
Thereafter, the annual License Fee to Digirad for the Web Vue
License shall be $ *** per year, payable no later
than ten (l0) days after the beginning of any calendar year in
advance.
6.
The second sentence of section 3.2
of the Agreement is deleted and replaced by the
following:
Digirad shall pay such additional
minimum License Fees to Segami stated in Exhibit A-1 as
follows. Upon sublicense to End-Users, Digirad shall place a
written order for the acquisition of new licenses from
Segami. At the time of order, Digirad shall pay a deposit of
$ *** per licensed unit ordered. The balance of any
License Fee for each licensed unit ordered shall be paid within
ninety (90) days of the order placed with Segami.
Notwithstanding the foregoing provision, all orders for upgrades or
revised versions
*** Portions of this page have been omitted pursuant
to a request for Confidential Treatment and filed separately with
the commission.
2
of the Base Software to existing
End-Users shall be paid in full at the time of order by
Digirad.
7.
The License Fees described in
Section 3.2 of the Agreement are amended as set forth in Exhibit
A-1 attached hereto.
8.
The following subsections 4.1.1 and
4.1.2 are hereby added to Section 4 of the Agreement, entitled
“ Interface
Development ”:
“4.1.1 Additional Interface
Feature . Segami also agrees to undertake and complete
the code design, programming and testing of an additional interface
feature, under the same terms and conditions as stated in this
Section 4, that will allow the database of its current Base
Software and the future product to replace in the market the Base
Product (also currently marketed under the name Mirage but subject
to change in name) to add new patient data and retrieve old patient
data (the “Additional Interface Feature”). The
specifications for this Additional Interface Feature are set forth
in the Exhibit B-1 . The delivery schedule for the
Additional Interface Feature shall be as set forth in the attached
Exhibit C-1 . Segami shall undertake the completion of
the Additional Interface Feature on the same terms and conditions
as stated in this Section 4, except that no additional payment
shall be due therefore from Digirad. Segami shall provide a
limited number of developer license keys to Digirad for the purpose
of Digirad’s development and testing of its acquisition
software and integration with the Additional Interface
Feature. Digirad may not transfer, loan, of otherwise provide
access to the developer keys except for the limited purpose stated
herein. Such developer license keys shall be returnable on
demand to Segami.”
“4.1.2 Cardiogram
beta testing . In connection with Segami’s
development, programming and testing of the new cardiac package
Cardiogram (specifications for which are stated in Exhibit
D-l ), Segami will make pre-production versions of Cardiogram
available to Digirad for beta testing no later than December 31,
2004, without any additional charge.
9.
Section 7(3) of the Agreement is
deleted.
10.
The following subsection 10.4 is
hereby added to Section 10 of the Agreemen
