Feb. 4, 2015
Cyber Imaging Systems, Inc. and Eyelation, LLC entered into a Software Development and Technology Licensing Agreement on October 26, 2009. Under the 10-year exclusive Agreement, CyberImaging would develop and deliver a customized version of its’ CyberEYESVTO software to Eyelation.
In exchange, Eyelation was to pay to CyberImaging a royalty fee on every pair of safety glasses sold by Eyelation as well as certain fees for any third party licensing of the software. No one else, including CyberImaging could use the software. CyberImaging delivered the software and Eyelation initially made the royalty payments. However, several months later, because CyberImaging would not assign its intellectual property to Eyelation, Eyelation ceased making royalty payments as required under the Software Development and Technology Licensing Agreement.
The case went to binding Arbitration in Chicago and the Arbitrator issued an award requiring Eyelation to pay damages to CyberImaging. The amount of the award is the full and complete payment of the 10-year royalty stream that was outlined in the original agreement. The value of the award is estimated to have a value of $4.5 million to $7.0 million depending on the actual sales generated over the 10-year term. The award also allows CyberImaging to conduct a complete and thorough annual examination of Eyelation’s financial documents, sales records and all other documentation that would allow the independent confirmation of the Eyelation sales reports.
After the Arbitration award was issued, Eyelation starting making monthly payments to CyberImaging in December 2013 and continued to pay the monthly damages until October 2014 when the payments suddenly stopped. CyberImaging attorneys made numerous payment inquiries which were ignored by Eyelation. CyberImaging has also requested that Eyelation provide the supporting financial and sales documentation to support the payment of damages but Eyelation has continued with their defiance of the binding award. Because Eyelation has refused to comply with the Arbitrator’s order, CyberImaging filed a Federal lawsuit requesting that the court begin immediate enforcement action against Eyelation. In addition, CyberImaging is seeking additional punitive damages based on the continuing breach of the binding arbitration, fraud and the cost of enforcement.