SCS LICENSE AGREEMENT
EXHIBIT
10.8
This
SCS
License Agreement (the "Agreement"), which is agreed to be effective as
hereinafter provided, is by and between St. Jude Medical, Inc., a Minnesota
corporation having its principal place of business at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇.
▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ("St. Jude"), and Boston Scientific Corporation, a
Delaware corporation having its principal place of business at One Boston
Scientific Place, Natick Massachusetts, 01760-1537 ("BSC").
RECITALS
A.
Advanced
Bionics Corporation ("ABS"), a wholly-owned subsidiary of BSC and Advanced
Neuromodulation Systems, Inc. ("ANS"), a wholly-owned subsidiary of St. Jude,
are adverse parties in the following currently pending litigation matters
(collectively referred to as the "SCS Cases"):
1) Advanced
Neuromodulation Systems, Inc. v. Advanced Bionics Corporation,
Civil
Action No. 4:04cv131 (E.D. Tex);
2) Advanced
Bionics Corporation v. Advanced Neuromodulation System, Inc.,
Civil
Action No. 4:04cv131 (E.D. Tex.); and
3) the arbitration proceeding before the International Institute for Conflict
Prevention and Resolution, Case No. G-06-08A.
B.
St.
Jude
and BSC and certain of their respective Affiliates are engaged in, inter
alia,
the
design, development, manufacture, and sale of devices for spinal cord
stimulation.
C.
St.
Jude
and BSC and certain of their respective Affiliates own or hold certain rights
in
the Patents-In-Suit.
D.
Pursuant
to a Settlement Agreement dated July 29, 2006, St. Jude and BSC have agreed
to
terminate the SCS Cases in return for, inter
alia,
the
granting of certain rights by and between St. Jude and BSC concerning the
Patents-In-Suit (the "Settlement Agreement").
Now
therefore, in consideration of the covenants and agreements set forth herein
and
the Settlement Agreement, pursuant to which a number of additional cases between
St. Jude and BSC are either resolved or limited in scope, and for valuable
consideration receipt of which is hereby acknowledged, St. Jude and BSC mutually
agree as follows:
ARTICLE
I
Definitions
of Certain Terms
For
the
purposes of this Agreement, the following terms shall have the meaning specified
below. Whenever used in the Agreement, "include," "includes," and "including"
shall be deemed to be followed by "without limitation," whether or not it is
followed by such words.
Section
1.01.
Affiliate.
"Affiliate" means any person or entity that controls or is controlled by or
is
under common control with St. Jude or BSC on the Effective Date or at any time
thereafter.
For
purposes of this Section 1.01, ownership, directly or indirectly, of more than
fifty percent (50%) of the capital stock or other comparable ownership interest
of the corporation or entity carrying the right to vote for or appoint directors
or their equivalent (if not a corporation) shall constitute control thereof.
"Affiliate" of a third party means a person or entity that controls, is
controlled by, or under common control with, such third party.
Section
1.02. Patents-In-Suit.
"Patents-In-Suit" means U.S. Patent Nos. 6,516,227; 6,381,496; 6,216,045;
6,154,678; and 4,793,353.
Section
1.03.
BSC
Licensed Patents.
(a)
"BSC
Licensed Patents" means U.S. Patent Nos. 6,516,227 and 6,381,496, including
all
divisionals, continuations, continuations-in-part, reissues, reexaminations
and
foreign counterparts, except as set forth in Section 1.03(c),
below.
(b)
Without
limiting the foregoing, the term "BSC Licensed Patents" specifically includes,
but is not limited to, all present patents and patent applications listed on
Exhibit A of this Agreement. BSC believes that Exhibit A is a complete listing
of its U.S. patents and patent applications within the foregoing definition
of
BSC Licensed Patents which are in existence as of the Effective Date, and any
errors, overinclusions, or omissions from Exhibit A will be deemed to be
inadvertent and not a material breach. Present foreign patents and patent
applications, including foreign counterparts of U.S. patents and patent
applications listed on Exhibit A, have intentionally not been included in
Exhibit A but are deemed to be BSC Licensed Patents if they are covered by
the
foregoing definition in this Section 1.03.
(c)
Notwithstanding
the foregoing, the term "BSC Licensed Patents" specifically excludes the
following:
(1) Claims
3-15 and 20-53 of U.S. Patent No. 6,516,227;
(2) Claims
2,
6 and 10 of U.S. Patent No. 6,895,280; and
(3) any
patent claim with priority based on U.S. Patent Nos. 6,516,227 or 6,895,280
that
claims multiple independent current sources for generating
independently-controlled stimulus currents on multiple electrodes, thereby
having the equivalent function to the device as claimed in any of the claims
excluded pursuant to sub-sections (1) and (2), above.
Section
1.04.
St.
Jude Licensed Patents.
(a)
"St.
Jude
Licensed Patents" means U.S. Patent Nos. 6,154,678 and 4,793,353, including
all
divisionals, continuations, continuations-in-part, reissues, reexaminations
and
foreign counterparts.
(b)
"St.
Jude
Licensed Patents" also means U.S. Patent No. 6,216,045, including all
divisionals, continuations, continuations-in-part, reissues, reexaminations,
and
foreign counterparts, for use in the SCS Field and excludes any use outside
of
the SCS Field.
(c)
Without
limiting the foregoing, the term "St. Jude Licensed Patents" specifically
includes, but is not limited to, all present patents and patent applications
listed on Exhibit A of this Agreement. St. Jude believes that Exhibit A is
a
complete listing of its U.S. patents and patent
applications
within the foregoing definition of St. Jude Licensed Patents which are in
existence as of the Effective Date, and any errors, overinclusions, or omissions
from Exhibit A will be deemed to be inadvertent and not a material breach.
Present foreign patents and patent applications, including foreign counterparts
of U.S. patents and patent applications listed on Exhibit A, have intentionally
not been included in Exhibit A but are deemed to be St. Jude Licensed Patents
if
they are covered by the foregoing definition in this Section 1.04.
Section
1.05.
SCS
Field.
"SCS
Field" shall mean spinal cord stimulation to treat or manage chronic pain of
the
trunk and limbs.
Section
1.06.
Effective
Date.
"Effective Date" shall mean July 29, 2006.
ARTICLE
II
Cross
License
Section
2.01.
License.
Subject
to the terms, conditions, and limitations set forth herein:
(a)
St.
Jude
grants (and will cause its Affiliates to grant) to BSC and its Affiliates a
non-exclusive, irrevocable, perpetual, fully paid-up (except for royalties
due
to a third party, if any) worldwide license or sublicense, as the case may
be,
without the right to sublicense, under the St. Jude Licensed Patents to make,
have made, use, sell, have sold, offer for sale, distribute, have distributed,
and otherwise dispose of products, including supplying or causing to be supplied
components thereof for use therein, and further including importing products,
or
components thereof for use therein, into any jurisdiction where St. Jude
Licensed Patents are effective and which are manufactured in accordance with
a
method of any St. Jude Licensed Patent.
(b)
BSC
grants (and will cause its Affiliates to grant) to St. Jude and its Affiliates
a
non-exclusive, irrevocable, perpetual, fully paid-up (except for royalties
due
to a third party, if any) worldwide license or sublicense, as the case may
be,
without the right to sublicense, under the BSC Licensed Patents to make, have
made, use, sell, have sold, offer for sale, distribute, have distributed, and
otherwise dispose of products, including supplying or causing to be supplied
components thereof for use therein, and further including importing products,
or
components thereof for use therein, into any jurisdiction where BSC Licensed
Patents are effective and which are manufactured in accordance with a method
of
any BSC Licensed Patent.
(c)
If
any
party has products made for it under the above license grant, such products
must
bear its or one of its Affiliates’ trade names or trademarks; however, such
products may bear third-party trade names or trademarks for materials or
components used in such products.
(d)
The
licenses granted in this Section 2.01 shall be irrevocable except for the
specific exceptions described in the change of control situations contemplated
by provisions of Section 9.02 below.
Section
2.02.
Regarding
OEM Activities.
The
licenses granted or to be granted under this Article II shall not be used in
such a way as to manufacture products on an original equipment manufacturer
(“OEM”) basis for any person or entity other than St. Jude and its Affiliates or
BSC and its Affiliates. The licenses granted or to be granted under this Article
II shall apply to and for the benefit of products manufactured by a party to
this Agreement for a third party who is licensed under the appropriate patents
of the other party to this Agreement where, and to the extent that,
the
third
party's license permits such third party to "have made" such products for such
third party. Nothing in this Agreement shall preclude the use of the licenses
granted or to be granted under this Article II by a party or its Affiliate
for
the purpose of having products manufactured by a third party on an OEM basis
for
such party or its Affiliate; provided, however, that such products must bear
the
trademark or trade name of such party or its Affiliate. Notwithstanding the
foregoing, such products may bear third-party trade names or trademarks for
materials or components used in such products.
Section
2.03.
Certain
Conditions, Limitations and Understandings.
The
licenses and sublicenses granted under this Agreement are expressly made subject
to the following conditions, limitations and understandings:
(a)
The
licenses are personal to the parties hereto, and are nonassignable and
nontransferable, except as set forth in Section 9.02 below.
(b)
The
parties and their Affiliates shall have the right, in their sole and absolute
discretion, to control the maintenance, abandonment, extension, and licensing
of
their own patents including the BSC Licensed Patents and St. Jude Licensed
Patents; provided however, that no such license or other transfer of interest
shall in any manner abridge the rights of the other party granted under this
Agreement.
(c)
The
owner
of a BSC Licensed Patent or St. Jude Licensed Patent shall have the right to
enforce, or not to enforce, such patents in its sole and absolute discretion
against all persons and organizations other than a party or Affiliate of a
party
hereto.
(d)
The
licenses granted herein shall not extend to any technical know-how or design
information, manufacturing, marketing, and/or processing information or
know-how, designs, drawings, mask works, specifications, software source code,
algorithms, clinical data, or other documents directly or indirectly pertinent
to the use of the BSC Licensed Patents or St. Jude Licensed Patents, or to
the
use of any trademarks or trade names, service marks, or software copyrights
or
other copyrights (including copyright registrations) of any party, and the
parties acknowledge that there is no obligation upon any party or its Affiliates
to provide such information, know-how, designs, drawings, mask works,
specifications, software source code, algorithms, clinical data, or other
documents.
(e)
Except
as
otherwise expressly provided in this Agreement, all licenses are granted for
the
life of the covered patents.
(f)
All
licenses and sublicenses required to be granted by Affiliates under this
Agreement shall be subject to the terms and conditions set forth in this
Agreement.
(g)
Any
assignment or other transfer by a party or its Affiliate of that entity's
interest in (i) a BSC Licensed Patent or (ii) a St. Jude Licensed Patent shall
be made subject to the rights of the other party and its Affiliates under this
Agreement.
(h)
Any
license extended to an Affiliate shall continue only so long as "Affiliate"
status is maintained, or as permitted pursuant to the other party’s
consent.
ARTICLE
III
Representations,
Warranties and Limitations
Section
3.01.
Certain
Representations and Warranties.
(a)
Each
party represents and warrants to the other party as follows and acknowledges
that each of the following representations and warranties has been relied upon
by the other party and is material to the other party's decision to enter into
the Agreement: each party hereto has the requisite power and authority,
corporate and otherwise, to execute and perform the Agreement, to grant the
licenses and sublicenses provided for herein, and, except as provided in this
Section 3.01, to cause such party’s Affiliates to execute and perform the
Agreement and to grant the licenses and sublicenses provided for
herein.
(b)
To
the
extent that a party shall lack the requisite authority to cause an Affiliate
of
such party to execute or perform this Agreement or to grant the licenses or
sublicenses as provided in this Agreement, then such party shall defend,
indemnify, and hold harmless the other party and its Affiliates, and all
officers, directors, employees, attorneys, agents, successors, and assigns
of
the other party and its Affiliates, against any and all legal expenses, costs,
and judgments arising from claims, controversies, demands, rights, disputes,
grievances, or causes of action that would have been avoided had such party
caused such Affiliate to execute or perform the Agreement or to grant the
licenses or sublicenses as provided in this Agreement.
(c)
Neither
party hereto is a party to any license, agreement or other instrument which
would prohibit or restrict the granting of the licenses or sublicenses
herein.
Section
3.02.
Disclaimers.
Nothing
contained in this Agreement shall be construed as:
(a)
A
warranty or representation by any party hereto as to the validity, scope, or
enforceability of any BSC Licensed Patents or St. Jude Licensed Patents;
or
(b)
A
warranty or representation by any party hereto that anything made, used, sold,
or otherwise disposed of under any license granted in this Agreement is or
will
be free from infringement of patents of third parties; or
(c)
An
obligation to bring or prosecute actions or suits against third parties for
patent infringement, or as an agreement by the parties to assist each other
in
any manner in the defense of any claim of infringement brought by a third party;
or
(d)
An
obligation to file or prosecute any patent application, to secure the grant
of
any patent or any reissue or extension thereof, or to pay any maintenance fee
or
annuity or tax or take any other steps to maintain any patent; or
(e)
A
representation, warranty, or extension of warranties of any kind, expressed
or
implied, or an assumption of responsibility by any party with respect to the
use, sale, or other disposition by the other party or its agents,
representatives, distributors, or users of products incorporating or made by
use
of inventions licensed under this Agreement.
Section
3.03.
Limitations.
Each
party shall be responsible for its design, manufacture, instructions for use,
quality control, and all safety-related activities relating to its own products,
whether or not manufactured under license from the BSC Licensed Patents or
the
St. Jude Licensed
Patents,
and shall not be responsible for the products of the other party, the other
party's Affiliates, or any other party or person.
ARTICLE
IV
Term
Section
4.01.
Term.
This
Agreement shall be effective as of the Effective Date and shall continue in
force and effect until the expiration of the last to expire of the patents
licensed and sublicensed pursuant to the provisions of this
Agreement.
ARTICLE
V
Confidentiality/Publicity
Concerning Agreement
Section
5.01.
Confidentiality/Publicity
Concerning Agreement.
It is
intended that, to the extent possible, the terms of this Agreement remain
confidential. No party or any Affiliate of a party shall originate any
publicity, news release, or other such general public announcement or make
any
other disclosure to any third party regarding the terms of this Agreement
without the express written consent of the other party (without limitation,
the
foregoing provision is not intended to limit communications deemed reasonably
necessary or appropriate by a party or its Affiliate to its employees,
shareholders, directors, officers, accountants, auditors and legal counsel).
Notwithstanding the foregoing provision, the parties and their respective
Affiliates shall not be prohibited from making any disclosure or release that
is
required by law, court order, or applicable regulation, or is considered
necessary by counsel to fulfill an obligation under securities laws or the
rules
of the New York Stock Exchange or other applicable stock exchange or to protect
any intellectual property right in any territory so long as the disclosing
party
provides notice to the other party at least five (5) business days prior to
such
disclosure. However, the Parties agree that, with regard to any required
disclosure to the Securities and Exchange Commission regarding this Agreement
or
the fact that it has been executed that is made on or around the Effective
Date,
prior notice to the other party shall not be required.
ARTICLE
VI
Notice
Section
6.01.
Notice.
Any
notice or other communication to be made pursuant to this Agreement shall be
sent to the other party at its address listed below or at such other address
such party may hereinafter designate to the other party in writing:
If
to
BSC:
President
and CEO
Boston
Scientific Corporation
▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
with
a
copy to:
General
Counsel
Boston
Scientific Corporation
▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
If
to St.
Jude:
President
and CEO
St.
Jude
Medical, Inc.
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇.
▇▇▇▇,
▇▇ ▇▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
with
a
copy to:
General
Counsel
St.
Jude
Medical, Inc.
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇.
▇▇▇▇,
▇▇ ▇▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
Notice
shall be deemed to have been given (i) at the expiration of two (2) business
days from the date of delivery of a facsimile transmission, provided that a
copy
is deposited postage prepaid for delivery with the postal service or given
for
delivery to an express courier service on the same date as the sending of the
facsimile, or (ii) ten (10) business days from the date the communication is
deposited postage prepaid with the postal service or given to an express courier
service, unless actual receipt of the notice at an earlier date is established.
Without limitation of the foregoing, a written receipt signed by the addressee
or its duly appointed representative situated at the addresses set forth
hereinabove shall constitute sufficient evidence of service. Either party may
change its address and facsimile information by written notice given in
accordance with the provisions of this Section.
ARTICLE
VII
Loss
of Patents
Section
7.01.
Loss
of Patents.
The
loss of any patent(s) or patent application(s) embraced by the term "BSC
Licensed Patents" or "St. Jude Licensed Patents" by any party hereto, through
abandonment, failure to renew, declaration of invalidity, or otherwise, shall
not be cause to terminate this Agreement or the licenses granted hereunder
with
respect to all other BSC Licensed Patents or St. Jude Licensed Patents and
such
loss, or any declaration of noninfringement, invalidity, or unenforceability,
shall not be deemed a failure of consideration.
ARTICLE
VIII
Alternative
Dispute Resolution
Section
8.01.
Alternative
Dispute Resolution.
(a)
Any
dispute concerning whether any party’s actions are licensed under Article II of
this Agreement, that is not resolved by negotiation as provided in subsection
(c) of this Section 8.01 shall be resolved by binding Alternative Dispute
Resolution ("ADR") in the manner described in Exhibit B.
(b)
Any
dispute that arises out of or relates to this Agreement, including an alleged
breach of this Agreement but excluding any dispute within the scope of
subsection (a) of this Section 8.01, between (i) St. Jude or a St. Jude
Affiliate and (ii) BSC or a BSC Affiliate that is not resolved by negotiation
as
provided in subsection (c) of this Section 8.01 shall be resolved by binding
Alternative Dispute Resolution ("ADR") in the manner described in Exhibit
C.
(c)
The
parties recognize that a bona fide
dispute
may arise from time to time as to certain matters that relate to this Agreement.
In all such instances, any party may, by written notice to the other party,
have
such dispute referred to their respective employees designated below or their
successors, for attempted resolution by good faith negotiations within sixty
(60) days after such notice is received. Such designated employees are as
follows:
For
BSC:
General
Counsel
Boston
Scientific Corporation
▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
For
St.
Jude:
General
Counsel
St.
Jude
Medical, Inc.
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇.
▇▇▇▇,
▇▇ ▇▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
Any
settlement reached by the parties under this Section 8.01 shall not be binding
until reduced to writing and signed by authorized officers of St. Jude and
BSC.
If the designated employees are unable to resolve such dispute within such
sixty-day period, any party may invoke the ADR provisions of this Section
8.01.
ARTICLE
IX
General
Provisions
Section
9.01.
Modification.
The
Agreement may not be modified, changed, or terminated orally. No change,
modification, addition, or amendment shall be valid unless given in writing
expressly indicating an intent to modify the Agreement and duly executed by
the
parties.
Section
9.02.
Assignment
and Transfer.
The
licenses and other rights granted in this Agreement shall be nonassignable
and
nontransferable except in connection with the sale of a party’s spinal cord
stimulation products business (whether by the sale of all or substantially
all
of a party’s assets or its subsidiaries' assets related to spinal cord
stimulation products, sale of stock of one or more subsidiary companies, merger,
or otherwise). Except as permitted herein, a purported transfer of the license
or other rights granted herein shall be null and void and shall give the other
party hereto the right to terminate the license granted to the transferring
party without terminating the licensed granted by the transferring party.
Subject to the foregoing, this Agreement shall be binding upon and inure to
the
benefit of St. Jude, BSC, and their respective Affiliates and
successors.
Section
9.03.
Assurances.
BSC
shall in all events remain fully responsible for, and shall assure its own
and
its Affiliates' performance of, all of their respective obligations under this
Agreement, and St. Jude shall in all events remain fully responsible for, and
shall assure its own and its Affiliates' performance of, all of their respective
obligations under this Agreement.
Section
9.04.
Entire
Agreement.
Other
than for the agreements listed in Exhibit D, hereto, which shall still remain
in
full force and effect in accordance with their terms and conditions, this
Agreement constitutes the entire agreement among the parties with respect to
the
subject matter hereof and supersedes any and all negotiations, correspondence,
understandings and agreements, whether written or oral, between the parties
respecting the subject matter hereof. Except for the license agreements listed
in Exhibit D, any license agreement covering any BSC Licensed Patents or St.
Jude Licensed Patents in existence between the parties prior to the Effective
Date shall be deemed terminated as of the Effective Date and superseded by
this
Agreement.
Section
9.05.
Governing
Law.
Recognizing that the laws within the United States and international
jurisdictions vary in their content and effect with respect to similar subject
matter, and that the parties desire uniformity and predictability in
interpretation and enforcement of this Agreement, the parties have agreed to
the
following provisions regarding applicable law to govern this Agreement: All
matters affecting the interpretation, form, validity, and performance of this
Agreement shall be decided under the laws of the State of Minnesota (without
regard to principles of conflicts of laws), including its procedural laws;
provided, however, that (a) nothing in Minnesota state procedural law shall
be
deemed to alter or affect the applicability of the Federal Arbitration Act
as
governing arbitration of disputes as provided in this Agreement, and (b) no
Minnesota state arbitration laws or arbitration rules shall be
applicable.
Section
9.06.
Force
Majeure.
No
party (including any of its Affiliates) shall be liable in damages for, nor
shall this Agreement be terminable or cancelable by reason of, any delay or
default in any party's performance hereunder if such default or delay is caused
by events beyond such party's reasonable control including, but not limited
to,
acts of God, action of any government or agency thereof, war or insurrection,
civil commotion, destruction of facilities or materials by earthquake, fire,
flood or storm, labor disturbances, epidemic, or failure of public utilities
or
common carriers. The party (or Affiliates) so affected shall give prompt notice
to the other parties of such cause, and shall take whatever reasonable steps
are
necessary to relieve the effect of such cause as rapidly as possible. All
parties (or Affiliates) agree to endeavor to resume their performance hereunder
if such performance is delayed or interrupted by reason of force
majeure.
Section
9.07.
Counterparts.
This
Agreement may be executed simultaneously in two or
more
counterparts, each of which shall be deemed to be an original.
Section
9.08.
Captions.
The
captions in this Agreement are intended solely as a matter of convenience and
are for reference only, and shall be given no effect in the construction or
interpretation of this Agreement.
Section
9.09.
Severability
of Provisions.
Should
any part or provision of this Agreement be held unenforceable or in conflict
with the law of any jurisdiction, the validity of the remaining parts or
provisions shall not be affected by such holding.
Section
9.10.
No
Agency.
At no
time shall any party or its Affiliate hold itself out to be the agent, employee,
lessee, sublessee, partner, or joint venture partner of the other party or
its
Affiliates. Nothing in this Agreement shall be construed to create any
relationship between the parties other than that of licensor/licensee (or
sublicensor/sublicensee) as provided in this Agreement. No party or its
Affiliates shall have any express or implied right or authority to assume or
create any obligations on behalf of or in the name of the other party or its
Affiliates or to bind the other party or its Affiliates with regard to any
other
contract, agreement, or undertaking with a third party.
Section
9.11.
Further
Assurances.
At such
time and from time to time on and after the Effective Date upon request by
a
party, the other party will execute and deliver or will cause to be executed
and
delivered, all such further acts, acknowledgments, and assurances that may
be
reasonably required for carrying out the purposes of this Agreement. Such
further assurances may include, but not be limited to, an acknowledgment by
Affiliates of a party that such Affiliates are bound by the terms and provisions
of this Agreement or an acknowledgment that a particular patent is a BSC
Licensed Patent or a St. Jude Licensed Patent.
Section
9.12.
Construction
Against Waiver.
No
waiver of any term, provision, or condition of this Agreement, whether by
conduct or otherwise, in any one or more instances shall be deemed to be or
construed as a further or continuing waiver of any such term, provision, or
condition of this Agreement; nor shall any failure to enforce any provision
hereof operate as a waiver of such provision or of any other
provision.
IN
WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
in
duplicate and duly attested by their corporate officers duly authorized for
this
purpose.
BOSTON
SCIENTIFIC CORPORATION.
By:
/s/
▇▇▇▇ ▇.
▇▇▇▇▇▇▇
Executive
Vice President, Secretary
and
General Counsel
ATTEST:
By: /s/
▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
ST.
JUDE
MEDICAL, INC.
By:
/s/
▇▇▇▇▇▇ ▇.
▇▇▇▇
Vice
President, General Counsel and Secretary
ATTEST:
By:
/s/ ▇▇▇▇▇ W. A. ▇▇▇▇▇▇
Exhibit
A
Licensed
Patents
BSC
Licensed Patents:
| 1. |
U.S.
Patent No. 6,381,496
|
| 2. |
U.S.
Patent No. 6,516,227
|
| 3. |
U.S.
Patent No. 6,895,280
|
| 4. |
U.S.
Patent Application Publication No.
20050107841
|
| 5. |
U.S.
Patent Application Publication No.
20030114899
|
St.
Jude
Licensed Patents:
| 1. |
U.S.
Patent No. 4,793,353
|
| 2. |
U.S.
Patent No. 6,154,678
|
| 3. |
U.S.
Patent No. 6,216,045
|
| 4. |
U.S.
Patent No. 6,981,314
|
| 5. |
U.S.
Patent No. 7,047,627
|
| 6. |
U.S.
Application Publication
No. 20050138791
|
| 7. |
U.S.
Application Publication No. 20050138792
|
| 8. |
U.S.
Application Publication No. 20050192655
|
Exhibit
B
ADR
Procedure Pursuant to Section 8.01(a)
1.
Upon
the
expiration of the 60-day period for good faith negotiations pursuant to Section
8.01(c), any party may initiate arbitration with the American Arbitration
Association (“AAA”) by filing a Notice of Arbitration pursuant to the
then-existing AAA rules for commercial arbitration. Should any provision of
the
applicable AAA rules conflict in any way with any provision of this Agreement,
this Agreement shall govern.
2.
Within
twenty (20) days after filing the Notice of Arbtiration, the parties shall
appoint a single, neutral arbitrator. The arbitrator shall have substantial
experience in patent infringement litigation and in determining whether a
product embodies patent claims. If the parties are unable to agree on the
arbitrator within the time specified above, AAA will select a so-qualified
arbitrator within three (3) business days thereafter.
3.
The
parties shall not be entitled to any discovery.
4.
Fifty
(50) days after filing the Notice of Arbitration, each party will submit to
the
arbitrator an opening brief, not to exceed 40 pages in length, setting forth
its
position on the merits of the dispute. The text must be spaced at least 24
points vertically and the font must be at least 12 points. Claim charts
regarding infringement, non-infringement, or invalidity, attached to the brief
as exhibits for the convenience of the arbitrator, will not count towards the
page limit.
5.
Eighty
(80) days after filing the Notice of Arbitration, each party will submit to
the
arbitrator a reply brief, not to exceed 40 pages in length, setting forth its
responses to the other party’s opening brief. The reply brief may not raise any
issues not already raised in the parties’ opening briefs and must conform to the
same spacing/font requirements as the opening briefs.
6.
No
more
than one-hundred twenty (120) days after filing the Notive of Arbitration,
the
arbitrator shall provide a written, reasoned decision to the
parties.
Exhibit
C
ADR
Procedure Pursuant to Section 8.01(b)
1.
Upon
the
expiration of the 60-day period for good faith negotiations pursuant to Section
8.01(c), any party may initiate arbitration with the American Arbitration
Association (“AAA”) by filing a Notice of Arbitration pursuant to the
then-existing AAA rules for commercial arbitration. Should any provision of
the
applicable AAA rules conflict in any way with any provision of this Agreement,
this Agreement shall govern.
2.
Within
twenty (20) days after filing the Notice of Arbtiration, the parties shall
appoint a single, neutral arbitrator. The arbitrator shall have substantial
experience in commercial licensing, preferably in the medical devices industry.
If the parties are unable to agree on the arbitrator within the time specified
above, AAA will select a so-qualified arbitrator within three (3) business
days
thereafter.
3.
The
parties shall be entitled to discovery as ordered by the arbitrator; however,
it
is the intention of the parties that any such discovery be limited in scope
in
order to reduce the cost and burden to the parties. The arbitrator shall take
this intention into account when ordering discovery so that any discovery so
ordered is narrowly-tailored to lead to relevant information while minimizing
the burden and cost of such discovery on the parties.
4.
The
arbitrator will be empowered to award specific performance of the Agreement,
as
well as compensatory damages, costs, and attorneys' fees to the prevailing
party, as the arbitrator deems appropriate. No punitive damages of any kind
shall be awarded.
5.
The
arbitration shall be conducted in such a way that the arbitrator issues a
decision and award no later than six (6) months after commencement of the
arbitration.
Exhibit
D
Additional
Agreements Still in Effect
None.