David A. Makman, Cal. Bar# 178195
`Makman & Matz LLP
`655 Mariner's Island Blvd Suite 306
`
`San Mateo, CA 94404
`Tel: 650—242-1560
`
`Stewart Mesher, Texas Bar# 24032738
`Conley Rose, P.C.
`2508 Ashley Worth Blvd, Suite 200
`Austin, TX 78738
`Tel: 512—610-3410
`
`Charles J. Rogers, Texas Bar# 00786205
`Conley Rose, P.C.
`1001 McKinney Street, Suite 1800
`Houston, TX 77002
`Tel: 713-238-8049
`
`JAMS ARBITRATION
`
`BEFORE THE HONORABLE CHARLES A. LEGGE
`
`Reference No.: 1200046131
`
`
`RLSPONSfl TO DnMAND bOR ARBITRATION
`
`
`
`
`A D COU TER-CEAIMS
`
`) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )
`
`ALCON LENSX,
`
`INC.,
`
`Claimant,
`
`VS.
`
`
`L1
`
`JOSEPH N LV,
`
`DR.
`
`Defendant,
`
`VS.
`
`
`ALCON LABORATORIES,
`
`INC.,
`
`NOVARTIS AG,
`
`RON KURTZ,
`
`Counter—Claim
`
`Defendants.
`
`
`Respondent and counter—claimant Dr. Joseph Neev, respectfully submits
`
`his Response and Counter-claims arising from the document titled “License
`
`Agreement” between the parties.
`
`Any statement by Claimant not specifically admitted is denied.
`
`NeeV—EX. 008
`Alcon Re
`arch,Ltd.,
`Petitioner
`Dr. Josep NeeV. Patent
`Owner
`Case No. PR2014—002 17
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`

`

`THE PARTIES
`
`BACKGROUND
`
`Dr. Joseph Neev is a named inventor on at least eleven issued United
`
`States Letters Patent,
`
`including United States Patent No. 7,981,112,
`
`7,749,260, 7,244,253, 7,020,528, 6,717,102, 6,482,199, 6,408,212,
`
`6,402,739, 6,168,590, 6,156,030, 5,720,894.
`
`In general his patents, and
`
`his numerous patent applications, relate to the use of energy sources,
`
`such as lasers,
`
`for bio—medical applications.
`
`Alcon LenSx is a Delaware Corporation that engages in activities
`
`relating to importing and exporting, making, using, selling, and
`
`offering to sell goods and services related to lasers for bio-medical
`
`
`
`applications,
`
`including ophthalmology and ophthalmic surgery.
`
`Aicon LenSx is a wholly owned subsidiary of Alcon Laboratories,
`
`Inc.
`
` Alcon Laboratories engages in activities relating to importing and
`
`
`exporting, making, using, selling, and offering to seil goods and
`
`services related to lasers for bio-medical applications,
`
`including
`
`
`ophthalmology and ophthalmic surgery. See Exhibit A and 3 and
`
`http://www.alcon.com/en/docs/ASCRS-Chicago—2012.pdf and
`
`http://invest.alconinc.com/phoenix.zhtml?c=l30946&p=irol-
`
`newsAr:icle_Print&ID=1444818&highlight=LenSx
`
`
`
`Alcon Laboratories is a wholly owned subsidiary of Novartis AG.
`
`Novartis engages in activities relating to importing and exporting,
`
`making, using, selling, and offering to sell goods and services related
`
`to lasers for bio—medical applications,
`
`including ophthalmology and
`
`
`
`ophthalmic surgery. See Exhibit A and Exhibit C and
`
`http://www.alcon.com/en/docs/ASCRS—Chicago—2012.pdf
`
`http://www.novartis.com/downloads/investors/event—calendar/2012/2012-
`
`O3—novartis—presentation—cowen.pdf
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`Ron Kurtz co—founded LenSx Lasers,
`
`Inc., serving as its President and
`
`CEO until its acquisition by Alcon Laboratories in 2010. On information
`
` and belief, Ron Kurtz is now General Manager of Alcon LenSx,
`
`Inc.
`
`II.
`
`THE HISTORY
`
`Dr. Neev is a pioneer in the appiication of Ultra—Short Pulse Lasers
`
`(USPL)
`
`for biomedical and medicai fields of use,
`
`such as femtosecond
`
`
`
`lasers. Dr. Neev was a professor at the University of California Irvine
`
`and the Beckman Laser Institute and Medical Clinic and a researcher at
`
`Lawrence Livermore National Laboratory (LLNL). Dr. Neev has over 25
`
`years of experience working in the field of applying lasers for medical
`
`applications,
`
`including surgery, and is world renown as an expert.
`
`On an academic and professional level, Dr. Neev’s work has included
`
`collaborations with scientists and biomedical engineers from many
`
`academic and industria; organizations such as Cornell, Harvard,
`
`University of California San Diego,
`
`the University of Texas at Austin,
`
`
`
`Stanford, University of California Irvine, LLNL, Duke University, Tel
`
`Aviv University, Laser Zentrum Hannover,
`
`the University of Amsterdam
`
`Medical Center, Colorado School of Mines, Vanderbilt University,
`
`the
`
`Hebrew University in Jerusalem, Technion — Israel Institute of
`
`Technology, Loma sinda, Guthy Renker Corp, and Dermalucent — in the
`
`
`areas of hard dental tissue, ENT,
`
`in vitro fertilization, obstetrics,
`
`
`
`gynecology, urology, dermatology, neurology, ophthalmic sciences,
`
`cardiovascular research, and spinal and bone surgery. Dr. Neev has
`
`served as chairman or editor of many conferences and proceedings, and
`
`has been the author or co—author of over 80 scientific papers.
`
`In 1997, Dr. Neev began USPL commercialization efforts in several
`
`fields of use.
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`In 1998, Ron Kurtz and Tibor Juhatz approached Dr. Neev about licensing
`
`his technology for Laser-Assisted in Situ Keratomileusis (LASIK). Some
`
`early collaboration ensued but Kurtz and Juhatz founded IntraLase,
`
`without Dr. Neev.
`
`IntraLase was later sold and became a part of
`
`Advanced Medical Optics,
`
`Inc.
`
`(AMO)
`
`From 1997 onward, Dr. Neev continued developing USPL applications for
`
`several fields,
`
`including Ophthalmic and Dermatology.
`
`Between 2007 and 2009, Dr. Neev met with, and presented plans for, an
`
`ophthalmic USPL company to several venture capital organizations.
`
`In
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`2009 Ron Kurtz approached Dr. Neev about licensing several of Dr.
`
`Neev’s patents but initial discussions did not
`
`lead to an agreement.
`
`Instead Ron Kurtz approached LLNL,
`
`the assignee of certain of Dr.
`
`Neev’s patents, about licensing those patents directly from LLNL —
`
`notwithstanding the exclusive right to license those patents that LLNL
`
`had granted to Dr. Neev. LJNL informed Dr. Neev of that attempt
`
`to
`
`circumvent his exclusive rights to license LLNL patents. See Exhibit D.
`
`
`
`LenSx offered to license patent claims from Dr. Neev after learning
`
`that it could not obtain the patent licenses it wanted directly from
`
`
`LLNu. See Exhibit D and Exhibit E.
`
`
`
`
`
`On information and belief, at the time that LenSx contacted Dr. Neev
`
`and sought
`
`to license patent claims from Dr. Neev,
`
`the LenSx product
`
`had been FDA approved which, if true, means it remained unchanged after
`
`approval. It also means that LenSx would have known at that time that
`
`'cense paten: claims from Dr. Neev.
`
`the negotiations to 'icense patent claims from Dr. Neev, Ron
`
`
`
`
`
`
`
`
`
`it needed, or did not need,
`
`to
`
`Throughout
`
`Kurtz failed to disclose LenSx negotiations with Alcon and,
`
`instead,
`
`falsely represented that LenSx was a small start-up company that wanted
`
`to license patent claims from Dr. Neev in order to bring its product to
`
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`11.
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`12.
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`13.
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`14.
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`

`

`market. Given that LenSx would have analyzed its own product before
`
`approaching Dr. Neev for a license, it logically follows that Ron Kurtz
`
`
`
`understood LenSx required a license or would be willfully infringing.
`
`On information and belief, LenSx founder Ron Kurtz had been under a
`
`non—compete obligation with AMO and neither Ron Kurtz nor LenSx had
`
`issued patents. Consequently LenSx was required to seek patent licenses
`
`
`
`in order to further its business plans.
`
`After completing a license for the ‘199 patent and then a sublicense
`
`for the LLNL patents,
`
`in February and March 2010 respectively, LenSX
`
`announced in July 2010 that it agreed to be acquired by Alcon for a
`
`price totaling $744,000,000. On information and belief, Ron Kurtz and
`
`LenSx were negotiating with Alcon at the same time as they negotiated
`
`with Neev, and they deliberately chose not to inform Neev of their
`
`involvement with Alcon because they believed that they would get a
`
`better deal if they pretended that they were a startup with limited
`
`capital than if they explained that they were concurrently negotiating
`
`a $744,000,000 deal related to embodiments of the patented technology.
`
`The Alcon LenSx product that first went to market
`
`in or around January
`
`2011 was,
`
`for the purposes of any patent infringement analysis at that
`
`could be an issue in this arbitration,
`
`the same as the product that
`
`LenSx had at the time that it was negotiating with Neev.
`
`After obtaining the license from Neev, closing the $744,000,000 dollar
`
`deal with Alcon, and beginning to sell the licensed product, Ron Kurtz
`
`chose not
`
`to mark the product with the patent numbers
`
`(as he had
`
`agreed) and chose not
`
`to pay the agreed—on royalties.
`
`Instead, he
`
`notified Dr. Neev on August 4, 2011 that Alcon LenSx had “no plans” to
`
`develop the technology licensed by Dr. Neev.
`
`
`
`15.
`
`16.
`
`17.
`
`18.
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`

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`19.
`
`20.
`
`21.
`
`Despite having taken a license from Neev, and notwithstanding prior
`
`representations by Ron Kurtz that LenSx would be paying royalties under
`
`a license for its products, Ron Kurtz notified Dr. Neev on August 4,
`
`2011 that Alcon LenSx would make no payments beyond the minimum annual
`
`royalties because it was not using the technology licensed by Dr. Neev.
`
`On August 4, 2011, Ron Kurtz further advised Dr. Neev that Alcon LenSx
`
`sought further modifications to the contract in exchange for Dr. Neev
`
`relieving Alcon LenSx of the obligation to develop and commercialize
`
`the technology. At that time, Ron Kurtz made clear that Alcon LenSx did
`
`not intend to exercise its right to exclusively license the technology
`
`and sought
`
`to exchange that option for reduced payments.
`
`The modification sought by Ron Kurtz in his August 4, 2011 letter
`
`defies common sense and reason, and is one that could not be acceptable
`
`to Dr. Neev. As an owner of valuable intellectual property, Dr. Neev
`
`licensed it so it would be used to develop and commercialize a product
`
`that resulted in royalty payments for products sold — not
`
`to be a piece
`
`
`
`
`
`of paper with valuable intellectual property rights parked on a shelf.
`
`In short,
`
`the modification sought by Alcon LenSx and Alcon Laboratories
`
`is the intellectual property equivalent of “having your cake and eating
`
`it too” — immunity from suit due to a patent license but no obligation
`
`to make substantial payments. Better yet is the apparent position now
`
`that Alcon LenSx and Aicon Laboratories should be allowed to enjoy such
`
`
`
`immunity from suit while making no effort to commercialize the
`
`technology — which is clearly contrary to both the intent of the
`
`parties and the written letter of the agreement at issue.
`
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`

`

`III.
`
`22.
`
`IV.
`
`23.
`
`24.
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`RESPONSE TO ALCON LENSX CAUSE OF ACTION FOR NON-INFRINGEMENT
`
`ALCON LENSX CLAIMS
`
`Among other things, Alcon LenSx makes, uses, sells and offers to sell
`
`technology licensed by Dr. Neev. To the extent Alcon LenSx now claims
`
`otherwise, it is estopped by the actions of Ron Kurtz in negotiating
`
`the license wherein he claimed that a license was needed,
`
`that he was
`
`willing to make annual minimum payments to develop and commercialize
`
`the technology, and that the sale of products using the technology
`
`would result in substantial payments to Dr. Neev under the agreement.
`
`RESPONSE TO ALCON LENSX CAUSE OF ACTION FOR INVALIDITY
`
`Alcon LenSx is required to make annual royalty payments on “Net Sales”
`
`under the agreement, which relate to a “Valid Claim." Under Section
`
`1.16 of the Agreement a claim of a patent remains valid unless “held
`
`unenforceable or invalid by a decision of a court or other governmental
`
`agency of competent jurisdiction. Ron Kurtz and Dr. Neev negotiated an
`
`agreement that made clear any claim of patent invalidity would need to
`
`be litigated in district court or brought before the United States
`
`Patent and Trademark office, and thus agreed that they would not
`
`litigate any claims relating to the ‘199 patent
`
`in arbitration. Thus
`
`Alcon nenSx has no right to challenge validity in this arbitration.
`
`In addition, Alcon LenSx substantively participated in the re—
`
`
`
`examination of the ‘199 patent, which resulted in re—issuance of the
`
`‘199 patent with additional claims. To the extent that Alcon LenSX
`
`could raise invalidity arguments in any forum, it is estopped from
`
`doing so because it sought to obtain valid claims for the ‘199 patent.
`
`Further,
`
`to the extent Alcon LenSx is claiming it is not using the
`
`claims of the ‘199 patent it is estopped from doing so because it
`
`sought to obtain claims for the ‘199 patent that cover its products.
`
`

`

`Moreover Alcon LenSx’s use of the claims of the ‘199 patent
`
`(which it
`
`
`helped obtain) without paying royalties is willful infringement.
`
`RESPONSE TO ALCON LENSX CAUSE OF ACTION FOR BREACH OF CONTRACT
`
`Alcon LenSx claims to have made no use of the technology licensed by
`
`Dr. Neev and made clear it would not be seeking an exclusive license.
`
`
`
`Accordingly Alcon LenSx could not be damaged by any license to a
`
`technology which Alcon LenSx admits it has no plans to develop.
`
`
`
`On August 4, 2011, Alcon LenSx explicitly stated that it had made and
`
`would make no efforts to develop and commercialize the patented
`
`technology. If this statement were correct
`
`(and it is not),
`
`then Alcon
`
`LenSX incurably breached the contract with Dr. Neev and thus the
`
`
`
`contract was properly terminated thereaf:er by Dr. Neev. Accordingly,
`
`Alcon LenSx has no claim for breach of contract.
`
`27.
`
`In the alternative, Alcon LenSx claims not to be using the technology
`
`VI.
`
`28.
`
`licensed by Dr. Neev but
`
`in fact it is, and thus the contract was
`
`properly terminated thereafter by Dr. Neev. Accordingly, Alcon LenSX
`
`has no claim for breach of contract because the contact was properly
`
`terminated.
`
`RESPONSE TO ALCON LENSX CAUSE OF ACTION FOR BAD FAITH DEALING
`
`Alcon LenSx was required to make annual royalty payments on “Net Sales”
`
`under the agreement, which relate to a “Valid Claim.” Alcon LenSx was
`
`also required to develop and commercialize the technology under Section
`
`3.2 of the agreement. Neev contends, and if needed will demonstrate in
`
`this arbitration,
`
`that Alcon LenSx developed and sold a product that
`
`embodies the patented technologies,
`
`that Alcon LenSx has advanced
`
` meritless non—infringement positions, and that Alcon LenSx deliberately
`
`chose not to pay royalties and is a willful patent infringer. However,
`
`even if Alcon LenSX were to prevail on its non—infringement arguments,
`
`25.
`
`26.
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`Alcon LenSx would still be in breach of the agreement for failing to
`
`develop and commercialize the technology.
`
`29.
`
`Notwithstanding “ongoing discussions” Alcon LenSx now claims were
`
`important, Alcon LenSx was notified on December 15, 2011 that it had
`
`breached the agreement and had 30 days to cure. Although not required
`
`to do so under Section 9.2 of the agreement, Alcon LenSX was further
`
`advised that it could cure by making royalty payments and complying
`
`with the patent marking provisions of the agreement. Alcon LenSx did
`
`not cure within the time period but,
`
`instead took the position that it
`
`was not commercializing the patented technology - a position that,
`
`if
`
`correct, would still be a substantial, material and incurable breach of
`
`
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`the license agreement that provides a succinct basis for termination.
`
`Neev requests, and will move for if needed,
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`summary judgment that the
`
`agreement was properly terminated so that he can engage in other
`
`
`
`VII.
`
`30.
`
`efforts to have this valuable intellectual property commercialized.
`
`RESPONSE TO ALCON LENSX CAUSE OF ACTION FOR INNEFECTIVE TERMINATION
`
`As required under Section 9.2 of the agreement, Alcon LenSx did not
`
`cure or initiate arbitration prior to the passage of the 30 day cure
`
`period on January 14, 2012. Accordingly termination of the agreement by
`
`Dr. Neev is effective.
`
`31.
`
`As
`
`to any claim that Alcon LenSx could have cured its breach,
`
`subsequent correspondence from Alcon LenSx counsel on March 23, 2012,
`
`made clear that LenSx’s position is that the technology licensed by Dr.
`
`Neev is not being used and will not be usedia position that is,
`
`if
`
`correct,
`
`itself an incurable breach of the agreement and grounds for
`
`termination
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`

`VIII.
`
`32.
`
`33.
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`IX.
`
`34.
`
`35.
`
`36.
`
`RESPONSE TO ALCON LENSX CAUSE OF ACTION FOR PROMISSORY ESTOPPEL
`
`As best understood by Dr. Neev,
`
`the claim of promissory estoppel
`
`against Dr. Neev is that his legal counsel continued discussions
`
`seeking to have Alcon LenSx comply with the agreement.
`
`
`
`Alcon could not have reasonably relied on such discussions in any way.
`
`The December 15, 2011 communication to Alcon makes clear Dr. Neev’s
`
`position that Alcon LenSx breached the agreement and that failure to
`
`cure within 30 days could result in termination and injunctive relief.
`
`The February 28, 2012 communication to Alcon makes clear Dr. Neev’s
`
`position that Alcon LenSx breached the agreement. The April 16, 2012
`
`communication to Alcon makes clear Dr. Neev’s position that Alcon LenSX
`
`breached the agreement. Nothing in Alcon LenSx’s communications suggest
`
`that Alcon LenSx ever seriously considered curing its breach.
`
`FRAUD
`
`COUNTER-CLAIMS
`
`Ron Kurtz negotiated the agreement, claimed that a license was needed
`
`by LenSx, agreed that LenSx would make annual minimum payments while
`
`developing and commercializing the technology, and promised that the
`
`sale of products using the technology would result in substantial
`
`payments to Dr. Neev under the agreement. Based one or more of these
`
`fraudulent representations, Dr. Neev entered into the agreement with
`
`LenSx and received none of the promised benefits of the bargain.
`
`Moreover, on information and belief,
`
`a license to the patents owned or
`
`controlled by Dr. Neev was a requirement
`
`in order to proceed with the
`
`acquisition of LenSx by Alcon — a $744,000,000 transaction.
`
`Additionally, on information and belief, due diligence concerns by
`
`Alcon would have materially affected the final value of the transaction
`
`
`
`

`

`— and perhaps the entire transaction itself - had Ron Kurtz not
`
`obtained a license from Dr. Neev for use of the technology.
`
`Consequently, Ron Kurtz personal finances would have been adversely
`
`affected but for the fraud he perpetrated on Dr. Neev.
`
`37.
`
`Dr. Neev relied on Ron Kurtz and Alcon LenSx to commercialize his
`
`technology, mark the products with the patent number, provide financial
`
`information about their sales and make the promised royalty payments
`
`and, as a result, he lost the opportunity to use the patents as he saw
`
`fit or go forward with his own start-up and selling that own company to
`
`a major organization in the industry,
`
`such as Alcon — an opportunity
`
`that, as history shows, was worth at least $744,000,000.
`
`38.
`
`Given the deception here, Dr. Neev requests a ruling finding that the
`
`license agreement is null and void,
`
`that Alcon LenSx is a willful
`
`patent infringer, and that Neev is entitled to at least a reasonable
`
`
`
`royalty in the amount that would have resulted out of a hypothetical
`
`negotiation between Dr. Neev and a major organization in the industry,
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`such as Alcon (a negotiation that should be based,
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`in part, on :he
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`projections that led Alcon to value this business opportunity at
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`$744,000,000). And while Alcon may seek to use the contract terms as a
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`it would be inequitable to do so.
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`shield that limits its liability,
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`BREACH OF CONTRACT
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`39.
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`40.
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`Under the agreement Alcon LenSx was required to develop and
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`commercialize the technology and to thereafter make payments to Dr.
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`Neev under the agreement for using the technology. According to Alcon
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`aenSX, it did not do the first and had no plans to do so. Thus Alcon
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` LenSx incurably breached the contract with Dr. Neev.
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`In the alternative, Alcon LenSx was using the technology and thus was
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`v und r th agr
`m nt. Alcon LenSx
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`required to make payments to Dr. N
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`failed to make the required payments and thus breached the agreement.
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`To the extent Alcon LenSx now claims it is using the technology
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`licensed by Dr. Neev, it is estopped by the actions of Ron Kurtz in
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`negotiating the license wherein he claimed that a license was needed,
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`that LenSx was willing to make annual minimum payments to develop and
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`commercialize the technology, and that the subsequent sale of products
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`using the technology would result in substantial payments to Dr. Neev
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`under the agreement.
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`41.
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`Accordingly,
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`to the extent arbitration is the proper forum to establish
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`that a valid and enforceable contract exists ab initio and that such a
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`contract existed, Dr. Neev seeks a declaration that the contract was
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`breached by Alcon LenSx.
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`XI.
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`EFFECTIVE TERMINATION
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`42.
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`Alcon LenSx was notified on December 11, 2011 that it had breached the
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`agreement and had 30 days to cure. Following the passage of the 30 day
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`cure period on January 10, 2012, Dr. Neev had the right to unilaterally
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`terminate the agreement without further notice to Alcon LenSx. Such
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`termination was effective.
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`In the alternative, Alcon LenSx was again notified on February 28, 2012
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`that it had breached the agreement - along with another agreement.
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`Following the passage of the 30 day cure period on March 30, 2012, Dr.
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`Neev had the right to unilaterally terminate the agreement without
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`further notice to Alcon LenSx. Such termination was effective.
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`Accordingly,
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`to the extent arbitration is the proper forum to establish
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`that a valid and enforceable contract exists ab initio and that such a
`
`
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`contract existed, Dr. Neev seeks a declaration that the contract was
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`effectively terminated.
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`43.
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`44.
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`XII.
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`INFRINGEMENT OF THE LICENSED TECHNOLOGY
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`45.
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`To the extent necessary in connection with resolution of this
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`arbitration, Dr. Neev seeks a declaration that Alcon LenSx, Alcon
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`Laboratories and Novartis infringed and continue to infringe the
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`technology licensed by Dr. Neev.
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`6
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`XIII. WILLFULLNESS
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`46.
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`To the extent necessary in connection with resolution of this
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`arbitration, Dr. Neev seeks a declaration that Alcon LenSx and Alcon
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`Laboratories actions were willful insofar as they have infringed and
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`continue to infringe the technology licensed by Dr. Neev.
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`In part,
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`proof of this willfulness is evident
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`in the course of dealing starting
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`with Dr. Kurtz and continuing through the communications with Dr. Neev
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`by counsel for Alcon.
`
`47.
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`Further proof of this willfulness, above and beyond that set forth
`
`herein and which is sufficient,
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`is expected to be found upon a review
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`of the due diligence and other documents related to the acquisition of
`
`aenSX by Alcon Laboratories.
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` Even further proof of this willfulness, above and beyond that set forth
`
`48.
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`herein and which is sufficient,
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`is expected to be found in the
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`documents of Ron Kurtz and at Alcon LenSx as well as related entities
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`yet unknown based on activities relating to importing and exporting,
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`
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`making, using, selling, and offering to sell goods and services related
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`
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`to lasers for bio—medical applications,
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`including ophthalmology and
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`ophthalmic surgery. This willfulness is even further reinforced by the
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`awareness Ron Kurtz had of Dr. Neev’s intellectual property over the
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`years,
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`including but not limited to the LLNL patents Ron Kurtz tried to
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`license without
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`the involvement
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`the rightful licensor, Dr. Neev.
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`XIV.
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`49.
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`BREACH OF COVENANT OF GOOD FAITH AND FAIR DEALING
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`Alcon LenSx either failed to develop and commercialize the technology
`
`or failed to make required payments. Either one is a per se breach of
`
`
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`the covenant of good faith and fair dealing. That Alcon LenSx and Alcon
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`Laboratories take the position they were required to do neither is also
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`a per se breach of the covenant of good faith and fair dealing.
`
`50.
`
`Moreover,
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`the stall and delay tactics of Alcon LenSx and Alcon
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`Laboratories, and indeed the initiation of this arbitration proceeding
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`itself as well as subsequent behavior in this proceeding are further
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`evidence of breach of good faith and fair dealing requirements —
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`including but not limited to the attempt to have termination deemed
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`ineffective while taking the position that there is no use, and will be
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`no use, of the licensed technology notwithstanding that such use is the
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`whole point of entering such a license agreement
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`in the first place.
`
`51.
`
`Accordingly,
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`to the extent arbitration is the proper forum to establish
`
`
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`that a valid and enforceable contract exists ab initio and that such a
`
`contract existed, Dr. Neev seeks a declaration that the covenant of
`
`good faith and fair dealing contract was breached by Alcon LenSx and
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`Alcon Laboratories.
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`RELIEF SOUGHT
`
`52.
`
`In addition to the relief set forth above, Dr. Neev respectfully
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`submits that he is entitled to relief in one or more of the following
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`forms:
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`a. A finding that the agreement was effectively terminated on
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`April 24, 2012.
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`b. A finding that the agreement was void ab initio.
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`c. A finding that Alcon LenSx, Alcon Laboratories and Novartis
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`are infringing the technology licensed by Dr. Neev;
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`A finding of damages in the amount of a reasonable royalty for
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`past
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`infringement, with prejudgment interest;
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`A finding that the infringement is willful;
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`A finding that an enhancement of damages is warranted that
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`triples the total amount of royalties for past damages that
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`must be paid;
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`A finding that Alcon LenSx was obliged to patent mark its
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`products and failed to do as required;
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`An order enjoining further use by Alcon LenSx, Alcon
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`Laboratories and Novartis of the patented technology or,
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`in
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`the alternative, an order providing a lump sum payment to
`
`cover use of the patented technology through the end of the
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`agreement;
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`Payment of monetary damages related to fraudulent entry into
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`an agreement that prevented Dr. Neev from obtaining other
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`compensation for use of his technology.
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`If the arbitrator ruies that a valid contract was entered but
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`
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`that no use of the Licensed technology was made, payment of
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`monetary damages reiated to the lack of efforts that also
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`prevented Dr. Neev from obtaining fair compensation for use of
`
`
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`his technology.
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`Costs and attorney fees.
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`All other relief as The Honorable Charles A. Legge deems just
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`and proper.
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`of Se tember, 2012
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` -ted this 14th da
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