INNOVATION, PROPRIETARY INFORMATION AND CONFIDENTIALITY AGREEMENT
Exhibit 10.6
INNOVATION,
PROPRIETARY INFORMATION
As
a condition of becoming employed or retained as a consultant by Xcorporeal,
Inc., a Delaware corporation (together with any of its current or future
affiliates, successors or assigns, collectively, the “Company”),
and
in consideration of my employment or consulting relationship with the Company
and my receipt of the compensation paid to me by the Company, I agree to the
following:
Recitals
A. The
Company is dedicated to a policy of exerting a significant influence in its
chosen fields through technical innovation and creative administration and
marketing. The competitive success of this policy depends to a large extent
on
the Company’s ability to maintain a free flow of pertinent information among its
employees and consultants.
B. All
key employees and consultants are required to sign this standard Agreement,
under which: (i) requirements are specified for avoiding conflicting
outside activities while associated with the Company, (ii) the Company is
assured of disclosure of, and exclusive rights to, my inventions, ideas and
works which relate to Company business, and (iii) the Company is protected
against unauthorized disclosure of confidential information of the Company
or
other persons and against retention of Company records.
Agreement
1. Confidential
Information.
(a) I
agree at all times during the term of my relationship with the Company and
thereafter, to hold in strictest confidence, and not to (i) use, except for
the benefit of the Company, (ii) disclose to any person or entity without
written authorization of the Board of Directors of the Company, or
(iii) make copies of, except as authorized by Company, any of the
following: confidential or proprietary information, inventions, trade secrets,
know-how, theories, research, data, plans, products, services, suppliers,
customers, prices, costs, markets, software, hardware, developments,
improvements, processes, formulas, methods, technology, machines, apparatus,
designs, drawings, engineering, configurations, laboratory notebooks, licenses,
finances, budgets or projections, directly or indirectly created, conceived,
invented, made, discovered, developed, worked on, learned by or disclosed to
me
during the course of my relationship with the Company, either orally, in
writing, or by observation, whether or not during working hours (all of the
foregoing, collectively, “Confidential
Information”).
(b) Confidential
Information includes, but is not limited to, information pertaining to any
aspect of the Company’s business or any use or application arising out of or
relating to any: (i) portable or continuous dialysis method or device,
specifically including any wearable artificial kidney, or related device,
(ii) portable or continuous ultra-filtration method or device, specifically
including any congestive heart failure device, or related device,
(iii) device, method or treatment for kidney failure or congestive heart
failure, (iv) “Technology” or “Licensed Product” as defined in the Company’s
September 1, 2006 License Agreement, or (v)
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medical
device, treatment or method substantially similar in functionality to any of
the
foregoing; (all of the foregoing, collectively, the “Products”).
(c) Confidential
Information does not include any information that is publicly and widely known
and made generally available through no wrongful act of mine or of others who
were under confidentiality obligations. In these regards, although certain
information or technology may be generally known in the relevant industry,
the
fact that the Company uses same, and how the Company uses same, may not be
so
known and therefore is Confidential Information. Furthermore, the fact that
various fragments of information or data may be generally known in the relevant
industry does not mean that the manner in which the Company combines them and
the results obtained thereby are so known and in such instance are also
Confidential Information. Confidential Information also does not include
information that I can show be clear and convincing documentary evidence was
known to me prior to its disclosure to me by the Company.
(d) I
recognize that the Company has received and in the future will receive from
third parties their confidential or proprietary information subject to a duty
on
the Company’s part to maintain the confidentiality of such information and to
use it only for certain limited purposes. I agree to hold all such confidential
or proprietary information in the strictest confidence and not to disclose
it to
any person or entity, or to use it except as necessary in carrying out my work
for the Company, consistent with the Company’s agreement with such third party.
2. Conflicts
of Interest.
(a) During
the term of my employment or consulting relationship with Company, I will not,
without the prior written approval of the President or Chief Executive Officer
of the Company, directly or indirectly, participate in or assist any person
or
business that is a current or potential competitor, customer or supplier of
the
Company. For these purposes, a current or potential competitor of the Company
is
any person or entity that has developed, is developing, is seeking to develop,
or is selling, marketing or distributing any Products.
I
understand that the purpose of these restrictions is to avoid conflicts of
interest and to avoid inadvertent trade secret disclosure during periods I
am
most likely to retain valuable Company trade secrets.
(b) I
represent that my performance of all the terms of this Agreement and my work
for
the Company does not and will not breach any invention assignment, proprietary
information, confidentiality or other agreement with any former employer or
other party, or create any conflict of interest with anyone. I will not disclose
to the Company or use for the benefit of the Company any confidential
information derived from sources other than employment or consultation with
the
Company. I agree that if I am in doubt as to the confidential status of any
information, I will refer to an executive officer of the Company the question
of
whether such information is available for disclosure and use for the benefit
of
the Company.
(c) I
have not and will not enter into any other agreement with any other person
or
entity, either written or oral, in conflict with the terms of this Agreement.
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3. Inventions.
(a)
Disclosure.
I will
immediately disclose to the Company all discoveries, inventions, ideas,
improvements, works of authorship, developments, concepts, trade secrets,
Confidential Information, and other intellectual property, whether or not
patentable or copyrightable (collectively, “Work
Product”),
that
I create, conceive, invent, make, discover, develop, work on, or reduce to
practice, in whole or in part, during the term of my employment or consulting
relationship with Company, either solely or jointly with others, whether or
not
in the course of my employment, whether or not reduced to drawings, written
description, documentation, models, or other tangible form.
(b)
Work
for Hire.
I
further acknowledge that all Work Product other than Personal Inventions is
“work made for hire” to the greatest extent permitted by applicable law and are
compensated by my salary (if I am an employee) or by such amounts paid to me
under any applicable consulting agreement or consulting arrangements (if I
am a
consultant), unless regulated otherwise by mandatory applicable law.
(c)
Assignment.
I will
hold in trust for the sole right and benefit of the Company all Work Product
other than Personal Inventions, and all such Work Product will forthwith and
without further consideration become and be the exclusive property of the
Company. I hereby absolutely, unconditionally and irrevocably assign, transfer
and convey to the Company all Work Product and all rights in, to, arising out
of, or relating to any Work Product, including without limitation all patents,
copyrights, trademarks, mask works and other statutory and common law
protections in all countries, except Personal Inventions and inventions that
qualifies fully for exemption under California Labor Code Section 2870 or
any other applicable law. I hereby appoint the Company’s Secretary or any other
officer of the Company as my attorney-in-fact and agent to execute all documents
required or appropriate to perfect or enforce all rights assigned under this
Agreement.
(d)
Sole
Exception.
The
assignment requirement of the preceding section will not apply to Work Product
for which all of the following conditions are met: (i) no equipment,
supplies, facilities, or trade secret information of the Company was used,
(ii) was developed entirely on my own time, (iii) does not arise out
of or relate in any way to the Products, the business of the Company, or the
Company’s actual or demonstrably anticipated research or development, and
(iv) does not result, in whole or in part, from any work performed by me
for the Company. Work Product satisfying all of these conditions is hereinafter
referred to as “Personal
Inventions.”
I
agree that if I am in doubt as to whether any given Work Product must be
disclosed to the Company by the terms of this Agreement, I will refer such
question to the management of the Company.
(e)
Assistance.
I will
assist the Company in every reasonable way, including without limitation
(i) signing of all papers, authorizations, applications and assignments,
(ii) making and keeping proper records of all Work Product,
(iii) giving evidence and testimony (all at the Company’s reasonable
expense), to obtain and to maintain for the use and benefit of the Company
or
its nominees all patents, copyrights, mask works and other protections, in
all
countries, for all Work Product. My obligations under this Section will extend
beyond the termination of my employment or consulting relationship with the
Company.
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(f)
Schedule A.
I have
attached hereto, as Schedule A,
a list
describing with particularity all Work Product, including Personal Inventions,
that (i) was made by me prior to the commencement of my relationship with
the Company, (ii) belongs solely, or jointly with others, to me or an
entity in which I own or control a direct, indirect or beneficial interest,
(iii) relates in any way to any of the Products or any application or use
thereof, and (iv) is not assigned to the Company hereunder (collectively,
the “Prior
Inventions”);
or,
if no such list is attached, I represent that there are no Prior Inventions.
(g) If,
in the course of my relationship with the Company, I incorporate into a Company
product, process or machine a Prior Invention owned by me (or, to the extent
I
have the ability to do so, in which I have an interest), the Company is hereby
granted and shall have a non-exclusive, royalty-free, irrevocable, perpetual,
worldwide license (with the right to sublicense) to make, have made, copy,
modify, make derivative works of, use, sell and otherwise distribute such Prior
Invention as part of or in connection with such product, process or machine.
4. Records.
(a) I
will keep and maintain adequate and current written records of all Work Product
made by me (solely or jointly with others) during the term of my relationship
with the Company. The records may be in the form of notes, sketches, drawings,
flow charts, electronic data or recordings, laboratory notebooks, and any other
format. The records will be available to and remain the sole property of the
Company at all times. I will not remove such records from the Company’s place of
business except as expressly permitted by Company policy for the purpose of
furthering the Company’s business.
(b) All
data and records coming into my possession or kept by me in connection with
the
Company are the exclusive property of the Company. Any property situated on
the
Company’s premises or owned by the Company, including disks and other storage
media, filing cabinets or other work areas, is subject to inspection by Company
personnel at any time, with or without notice.
(c) I
will return to the Company all originals and copies of such data and records
upon termination of my relationship for any reason, unless specific written
consent is obtained from an executive officer of the Company to retain any
such
data or records. In the event of the termination of the relationship, I agree
to
sign and deliver the “Termination Certification” attached hereto as Schedule B.
5. Non-Solicitation.
During
my relationship with the Company and for a period one year thereafter, I will
not, without the express prior written permission of an executive officer of
the
Company, solicit or encourage (nor will I direct or encourage anyone under
my
authority or control to solicit or encourage) any of the Company’s employees or
full-time consultants to work elsewhere.
6. Equitable
Relief.
The
Company will have the right to enforce this Agreement and any of its provisions
by injunction, specific performance or other equitable relief, without bond
and
without prejudice to any other rights or remedies the Company may have, because
a breach of this Agreement will cause irreparable harm for which there is no
adequate remedy at law.
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7. ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇.
I am
aware that the United States securities laws prohibit any person who has
material, non-public information concerning the Company from purchasing or
selling securities of the Company or from communicating such information to
any
other person under circumstances in which it is reasonably foreseeable that
such
person is likely to purchase or sell such securities.
8. At
Will Relationship.
Except
as set forth in a written agreement signed by the Chairman, President or CEO
of
the Company, by employment or consulting relationship with the Company is at
will, and may be terminated by me or the Company at any time. Except as
otherwise provided herein, the provisions of this Agreement will survive
termination of my relationship with the Company.
9. General.
(a) This
Agreement will not be terminated or altered by changes in duties compensation,
or other terms of my employment or consulting arrangement.
(b)
Disclosure.
I
hereby authorize the Company to disclose this Agreement and my responsibilities
hereunder to any person or entity, including without limitation, my future
employers or clients.
(c)
Severability.
The
invalidity or unenforceability of any provisions of this Agreement under
particular facts and circumstances will not affect the validity or
enforceability either of other provisions of this Agreement or, under other
facts and circumstances, of such provisions. In addition, such provisions will
be reformed to be less restrictive if under such facts and circumstances they
would then be valid and enforceable.
(d)
Governing
Law.
The
validity, construction and performance of this Agreement will be governed by
the
laws, without regard to the laws as to choice or conflict of laws, of the State
of California.
(e)
Arbitration.
Any
dispute, controversy or claim arising out of or relating to this Agreement,
or
my employment or consulting relationship with the Company, including without
limitation the issue of arbitrability, will be resolved by final and binding
arbitration before a retired judge at JAMS or its successor in Santa Monica,
California. To the maximum extent permitted by applicable law he prevailing
party will be awarded its arbitration, attorney and expert witness fees, costs
and expenses. Judgment on any interim or final award of the arbitrator may
be
entered in any court of competent jurisdiction.
(f)
Headings.
The
Section and other headings contained in this Agreement are for reference
purposes only and will not affect in any way the meaning or interpretation
of
this Agreement.
(g)
Waiver.
No
waiver by either party of a breach of any provision of this Agreement will
be
construed as a waiver of any subsequent or different breach, and no forbearance
by a party to seek a remedy for noncompliance or breach by the other party
will
be construed as a waiver of any right or remedy with respect to such
noncompliance or breach.
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(h)
Amendment.
This
Agreement may be amended, modified or supplemented only by a writing executed
by
the Chairman, President or CEO of the Company.
(i)
Entire
Agreement.
This
Agreement is the only agreement and understanding between the parties pertaining
to the subject matter of this Agreement, and supersedes all prior agreements,
summaries of agreements, descriptions of compensation packages, discussions,
negotiations, understandings, representations or warranties, whether verbal
or
written, between the parties pertaining to such subject matter.
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________________________________
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Signature
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________________________________
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Printed
Name
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Schedule A
LIST
OF PRIOR INVENTIONS
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I
have no Prior Inventions as defined in the Innovation, Proprietary
Information And Confidentiality Agreement.
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I
have the following Prior
Inventions:
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No.
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Title
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Description
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Number
of
Prior Inventions listed (if any): ___
Number
of
additional pages attached (if any): ___
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________________________________
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________________________________
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Signature
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Printed
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Schedule B
TERMINATION
CERTIFICATION
This
is to certify that I do not have in my possession, nor have I failed to return,
any devices, records, data, notes, reports, proposals, lists, correspondence,
specifications, drawings, blueprints, sketches, laboratory notebooks, flow
charts, materials, equipment, other documents or property, or copies or
reproductions of any aforementioned items belonging to Xcorporeal, Inc., its
affiliates, successors or assigns (together the “Company”).
I
further certify that I have complied with all the terms of the Innovation,
Proprietary Information And Confidentiality Agreement (“Agreement”) signed by
me, including the reporting of any inventions and Work Product (as defined
therein), conceived or made by me (solely or jointly with others) covered by
the
Agreement, and the return do all Company documents and records.
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Signature
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________________________________
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Printed
Name
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