EXHIBIT 10.30
A G R E E M E N T
This Agreement, effective March 19, 2001 is made by and between Cytomedix, Inc.
(referred to as "LICENSOR"), a company organized and existing under the laws of
Delaware and having a principal place of business of at 0 Xxxxxxx Xxxxx,
Xxxxxxxxx, XX 00000, and DePuy AcroMed, Inc. ("LICENSEE"), a corporation
organized and existing under the laws of the State of Ohio and having a
principal place of business at 000 Xxxxxxxxx Xxxxx, Xxxxxxx, XX 00000. LICENSOR
and LICENSEE may be referred to herein each individually as a "Party" or jointly
as the "Parties."
WHEREAS:
A. LICENSOR co-owns certain patents with the University of Minnesota pertaining
to damaged tissue treatment methods, processes, and compositions. The University
of Minnesota has assigned all rights to the certain patents, but has retained a
non-exclusive perpetual license solely in connection with not-for-profit
research and teaching. LICENSOR is prepared to grant an exclusive license to
LICENSEE for all rights except for those rights retained by the University of
Minnesota.
B. LICENSEE is desirous of acquiring from LICENSOR the exclusive worldwide
exploitation rights to practice and utilize the aforesaid inventions,
technology, know-how, patents and patent applications, including to manufacture
and market the Product.
C. LICENSOR is willing to grant such rights upon the terms and conditions set
forth in this Agreement.
NOW, THEREFORE, in consideration for the mutual covenants and promises contained
in this Agreement, the parties agree as follows:
I. DEFINITIONS
1.0 PATENT or PATENTS means the patents and/or patent applications listed in
Appendix A.
1.1 LICENSED TERRITORY means the entire world.
1.2 LICENSED FIELD means, and is limited to, the practice of PATENTS for
APPLICATIONS.
1.3 PRODUCT shall mean any LICENSEE device marketed or promoted by LICENSEE as
being for producing or applying compositions including platelets (which
includes, but is not limited to, platelet concentrate) to facilitate healing and
used in the APPLICATIONS of Section 1.8. Any LICENSEE device which is marketed
by LICENSEE without direct or indirect reference to platelets or platelet
releasate shall not be considered a PRODUCT. Notwithstanding the above, for the
term of this Agreement, the items listed in Appendix B and replacements of the
centrifuge and separator products will be considered PRODUCTS irrespective of
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LICENSEE's marketing activities thereon. LICENSEE reserves the right to revise
the items listed in Appendix B subject to LICENSOR's written consent.
1.4 NET SALES PRICE shall mean LICENSEE's invoice price to customers,
AFFILIATES, or DISTRIBUTORS, f.o.b. factory, after deduction of freight,
taxes and agent's commissions. Products that are used only by LICENSEE for
sales demonstration purposes shall have a zero dollar value for NET SALES
PRICE. PRODUCTS that are not sold to an end user, but are disposed of by
LICENSEE due to obsolescence, damage or other similar conditions shall have a
zero dollar value for NET SALES PRICE. NET SALES PRICE for the purposes of
computing royalties under this Agreement shall never be less than LICENSEE's
cost to manufacture, determined by LICENSEE's customary accounting practices
plus five percent (5%).
a. capital PRODUCT
i. disposable allocation
In the instance, wherein LICENSEE disposes of a capital PRODUCT (such
as a centrifuge) to a third party and receives full consideration therefor
solely by explicitly adding a capital allocation therefor to invoices for the
sales of disposable PRODUCTs to the third party, the royalty due for disposal of
the capital PRODUCT shall be included in the royalty due upon the disposable
PRODUCTs (such as a separator).
ii. outright capital PRODUCT sales
In the instance wherein the capital PRODUCT is sold outright, the
royalty shall be ten dollars ($10.00) for such PRODUCTS sold to a U.S. customer,
and five dollars ($5.00) for such PRODUCTS sold to non-U.S. customers.
b. Non-US AFFILIATE sales of disposables
For LICENSEE's non-US sales to AFFILIATES, the NET SALES PRICE will be
LICENSEE's transfer price to its AFFILIATES, but in no event will be less than
cost to manufacture determined by LICENSEE's customary accounting practices plus
five percent (5%).
c. Applicators/Mixers
Royalties for all other products marketed and sold by LICENSEE in the Field
shall be settled by an annual Flat Fee payment in the amounts indicated:
2001 $10,000.00
2002 $20,000.00
2003 $30,000.00
and $30,000.00 for each calendar year thereafter during the term of this
Agreement.
1.5 APPLICATIONS shall mean diagnostic and therapeutic spinal, neurosurgery
(including cranial), orthopaedic (including joint replacement, sports medicine
and trauma) surgeries, including soft tissue damage resulting from such
surgeries . APPLICATIONS excludes soft tissue applications outside of such
surgeries, including chronic non-healing wounds; dental applications; and
veterinary applications.. The term "soft tissue" means any tissue other than
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bone, joint, cartilage, ligaments, and tendons. The term "chronic non-healing
wounds" means wounds lasting 30 days or longer.
1.6 AFFILIATES shall mean entities owned and organized under DePuy, Inc.
including, but not limited to DePuy Orthopaedics, Inc., DePuy International,
Ltd. and its affiliates, DePuy ACE, Inc., and Codman & Xxxxxxxxx, Inc. The term
"owned" means the legal, beneficial or equitable ownership directly or
indirectly of more than 50% of the aggregate of all voting equity interests
rights in such entity.
1.7 DISTRIBUTORS shall mean an entity which is not an AFFILIATE but which
contracts with LICENSEE or an AFFILATE to either a) provide promotion, sales and
distribution services under the name of LICENSEE or an AFFILATE respecting
PRODUCT in exchange for commissions, or b) buys PRODUCT from LICENSEE or an
AFFILATE for resale under the name of LICENSEE or an AFFILATE.
II. LICENSE GRANT
2.0 LICENSOR hereby grants to LICENSEE, to the extent of the LICENSED FIELD and
LICENSED TERRITORY, a license under PATENTS, to fully practice PATENTS,
including the right to make, use, offer for sale, sell and import PRODUCTS and
promote the methods and compositions recited in the claims of PATENTS using
PRODUCTS in the LICENSED FIELD. LICENSOR recognizes that LICENSEE may also
practice the PATENTS by promoting and selling through its AFFILIATES and
DISTRIBUTORS. This license also includes a right in purchasers of PRODUCT to
fully practice PATENTS within the LICENSED FIELD, with such PRODUCT. LICENSEE
acknowledges and agrees that no license is granted or implied under, and agrees
not to practice under, PATENTS, outside the LICENSED FIELD and LICENSED
TERRITORY. If LICENSEE practices outside the LICENSED FIELD and LICENSED
TERRITORY, LICENSOR may, at its option, begin termination proceedings under
Section 10.4 of this Agreement.
2.1 The license granted pursuant to Section 2.0 hereof shall be exclusive for
the term of this Agreement.
III. LICENSE FEES AND ROYALTIES
3.0 LICENSEE shall, as a license fee, pay to LICENSORwithin five (5) business
days of the effective date of this Agreement, seven hundred and fifty thousand
dollars ($ 750,000), which shall be nonrefundable and not creditable against the
royalty called for under Section 3.1.
3.1 LICENSEE shall pay to LICENSOR six and one half percent (6.5 %), after the
effective date, of the NET SALES PRICE ("Royalty") of all PRODUCTS sold or
otherwise disposed of under the license granted under Section 2.0 of this
Agreement in jurisdictions having valid unexpired, and enforceable U.S. or
foreign PATENTS where PRODUCT is made, used, sold, or offered for sale.
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IV. MINIMUM ROYALTIES
4.0 LICENSEE shall pay to LICENSOR royalties as stated in Section 3.1, but in no
event shall Royalties for a calendar year for practice of the PATENTS, in the
LICENSED FIELD and LICENSED TERRITORY be less than the following minimum
royalties during each of the calendar years indicated:
Calendar Year Minimum Royalty,
U.S. $ per Calendar Year*
2001 $ 90,000
2002 $180,000
2003 and for each $270,000
calendar year thereafter
during the term of this
agreement
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* Net to Licensor after taxes, if any, withheld at the source.
4.1 LICENSOR may, at its option and with written notice to LICENSEE, convert the
exclusive license to a non-exclusive license or begin termination proceedings
under Section 10.4 during any March subsequent to the year 2001, if LICENSEE and
AFFILIATES have not practiced the PATENTS during the calendar year that precedes
each such March to the extent of generating earned royalties as provided by
Section 3.1 of this Agreement in the amount of minimum royalties listed in
Article 4.0. However, LICENSOR may not convert the exclusive license nor
terminate if LICENSEE complies with Article 6.3.
V. SUBLICENSING
5.0 LICENSEE shall have the right to sublicense to AFFILIATES and DISTRIBUTORS.
The LICENSEE shall not have the right to sublicense to any other third party
without the prior written consent of LICENSOR which consent shall not be
unreasonably withheld.
5.1 LICENSEE shall supply LICENSOR with a copy of each such sublicense agreement
within thirty (30) days after the execution of the sublicense agreement.
5.2 The royalty for sublicensees shall be no less than that set forth for
LICENSEE in Section 3.1, above.
5.3 LICENSEE shall pay to LICENSOR six and one half percent (6.5%) of any and
all net sales made by sublicensors of PRODUCTS. For purposes of calculating the
amount due to LICENSOR under this section 5.3, sales of products by sublicensors
shall be made using the definition of NET SALES PRICE and PRODUCT or PRODUCTS.
Amounts payable under this Section 5.2 shall be made to LICENSOR quarterly as
provided in Section 6.0.
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5.4 If this Agreement is terminated, LICENSEE shall immediately assign all of
its right, title, and interest to all sublicenses to LICENSOR, including the
right to receive all income from sublicensees. LICENSEE shall, prior to
execution of each sublicense, make the sublicensee aware of this contingency.
5.5 Income received by LICENSEE from sublicensees, excluding AFFILIATES and
DISTRIBUTORS, shall not apply to the minimum royalty provisions of Section 4.0
or the earned royalty provisions of Section 4.1.
VI. PAYMENTS
6.0 LICENSEE shall pay all amounts due pursuant to Sections 3.1 and 5.3
("Royalty") quarterly. Within thirty (30) days after the end of each calendar
quarter, LICENSEE shall (a) pay LICENSOR the Royalty owed by LICENSEE for such
calendar quarter, and (b) provide LICENSOR with a written report setting forth
the NET SALES PRICE with respect to Products for the applicable quarter.
LICENSEE shall separately report PRODUCTS sold and PRODUCTS otherwise disposed
of pursuant to Section 1.7 plus a computation of royalty amount due with respect
thereto for the applicable quarter for LICENSEE, each AFFILIATE, and each
sublicensee. At LICENSEE's option, each AFFILIATE shall provide a written report
directly to LICENSOR setting forth the NET SALES PRICE with respect to PRODUCTS
for the applicable quarter. The AFFILIATE shall separately report PRODUCTS sold
and PRODUCTS otherwise disposed of pursuant to Section 1.7 plus computation of
Royalty amount due with respect thereto for the applicable quarter.
6.1 The Royalty shall be payable in currency of the United States of America
regardless of the country where earned and shall be paid or deposited as
designated in writing by LICENSOR. The exchange rate used to calculate the
amounts due pursuant to Sections 3.1 and 5.3 shall be the same rate specified
under Financial Accounting Standards Board Statement 52, or its successor, used
to translate the financial results of LICENSOR or its Affiliates for public
reporting.
6.2 If the Royalty for the previous calendar quarter remains unpaid thirty (30)
days after the end of such calendar quarter, interest shall accrue on such
unpaid amount at the lower of (a) fifteen percent (15%) per annum, or (b) the
highest rate permitted by law, until paid.
6.3 In the event that the amounts due at the end of any calendar year do not
equal the minimum royalties specified in Section 4.0 for said calendar year,
LICENSEE shall pay to LICENSOR, on the last day of the following January, the
amount required to satisfy the minimum royalty obligation for the preceding
calendar year. Such amounts are due at the dates the written reports are due. If
no amount is accrued during any quarterly period, a written report to that
effect shall be furnished.
6.4 If this Agreement is for any reason terminated before all of the payments
herein provided for have been made (including minimum royalties for the year in
which the Agreement is terminated), LICENSEE shall immediately submit a terminal
report and pay to LICENSOR any remaining unpaid balance even though the due date
as above provided has not been reached.
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VII. CONFIDENTIALITY
7.0 No party to this Agreement shall disclose to any third party nor use for any
purpose, other than the purpose of this Agreement information or data received
from a Party under this Agreement without prior written approval from the Party
from whom the information or data was received.
7.1 The obligations of non-disclosure and non-use shall apply for a period of
five (5) years following the expiration or termination of this Agreement, but
shall not apply to any information or data which receiving Party can show by
competent proof:
(a) is known to the public prior to disclosure hereunder;
(b) becomes known to the public through no fault of the receiving Party;
(c) was known to the receiving Party prior to disclosure under this Agreement;
(d) is disclosed to the receiving Party by a third party having a legal right to
make such disclosure;
(e) is reasonably required to be disclosed to further the purposes of this
Agreement, including to file for registration, to file patent applications,
and to contact with third parties under an obligation of confidentiality to
further the development of the Licensed Product;
(f) is required to be disclosed to a regulatory agency of competent jurisdiction
consistent with the receiving Party's past practice, provided that if such
agency is not required by law to maintain the confidentiality of such
information, then the disclosing Party shall first be given the opportunity to
intervene and contest the disclosure or seek appropriate protection.
7.2 The parties agree that information disclosed during the negotiation of this
Agreement is to be considered confidential.
VIII. REPRESENTATIONS AND DISCLAIMER OF WARRANTIES
8.0 LICENSOR SHALL HAVE NO LIABILITY WHATSOEVER TO LICENSEE FOR OR ON ACCOUNT OF
ANY INJURY, LOSS, OR DAMAGE, OF ANY KIND OR NATURE SUSTAINED BY, OR ANY DAMAGE
ASSESSED OR ASSERTED AGAINST, OR ANY OTHER LIABILITY INCURRED BY OR IMPOSED UPON
LICENSEE, ARISING OUT OF OR IN CONNECTION WITH OR RESULTING FROM (A) THE
PRODUCTION, USE, OR SALE OF ANY APPARATUS OR PRODUCT, OR THE PRACTICE OF THE
PATENTS, OR (B) ANY ADVERTISING OR OTHER PROMOTIONAL ACTIVITIES WITH RESPECT TO
ANY OF THE FOREGOING.
8.1 LICENSOR agrees not to abandon, and agrees to pay all taxes and fees
necessary to maintain PATENTS hereunder, in the United States and all other
countries. In the event LICENSOR elects not to pay any maintenance or file for
renewal any of the PATENTS, LICENSOR shall notify LICENSEE, in writing, of
LICENSOR's intention sufficiently in advance of the date by which such payment
or filing is due to afford LICENSEE a reasonable opportunity to pay such fee or
file such renewal, and LICENSOR shall cooperate with
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LICENSEE in doing so.
8.2 Not withstanding any other provision in this Agreement, LICENSOR expressly
warrants and represents that it has not granted and will not grant during the
term of this Agreement or any renewal hereof, any similar rights, license,
consent or privilege with respect to the rights granted herein.
8.3 LICENSOR expressly represents and warrants that it has the full power and
authority to enter into this Agreement and to carry out the transaction
contemplated hereby. Licensor further represents and warrants that no academic
institution (other than the University of Minnesota which has a non-exclusive
perpetual license to the PATENTS solely in connection with not-for-profit
research and teaching), member of an academic institution, corporation or any
local, state or federal government holds any property rights through it in the
subject matter of this Agreement, and that it is able to consummate this
Agreement in the capacity of a free agent.
8.4 LICENSOR herein represents, covenants, and warrants that it is co-owner of
the entire right, title, and interest in the PATENTS with the University of
Minnesota. The University of Minnesota has assigned all rights to the PATENTS
but has retained a non-exclusive perpetual license to the PATENTS solely in
connection with not-for-profit research and teaching. LICENSOR further warrants
that no existing prior agreement or assignment presently conflicts in any manner
with the present Agreement or otherwise prevents LICENSOR from fulfilling all of
its obligations under this Agreement. A copy of LICENSOR's assignment of U.S.
Patent No. 5,165,938 is attached as Appendix C.
8.5 LICENSOR further covenants, warrants and represents that, except for the
University of Minnesota non-exclusive perpetual license to the PATENTS solely in
connection with not-for-profit research and teaching, it has the sole right to
grant, for the LICENSED TERRITORY, licenses under all PATENTS.
8.6 LICENSOR further represents and warrants that it believes each claim of its
PATENTS are valid and enforceable.
IX. TAXES, GOVERNMENT APPROVALS, AND LIABILITY
9.0 LICENSEE shall be solely responsible for the payment and discharge of any
taxes, duties, or withholdings relating to any transaction of LICENSEE in
connection with the manufacture, use, sale, lease, or other commercialization of
a portion of the PRODUCTS, if done by LICENSEE. LICENSOR is solely responsible
for any and all taxes, annuities, and fees levied by the authorities to maintain
the PATENTS and because of the receipt of any and all payment by third parties
to LICENSOR because of the PATENTS.
9.1 LICENSEE shall, at its own expense, be responsible for applying for and
obtaining any approvals, authorizations, or validations relative to this
Agreement under the appropriate national
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laws or otherwise, including authorization for the remittances hereunder from
the appropriate governmental authorities.
9.2 LICENSEE shall be responsible for all PRODUCT liability and PRODUCT warranty
for any PRODUCTS manufactured for or by LICENSEE under this Agreement and shall
insure this risk accordingly.
X. TERMINATION
10.0 This Agreement shall terminate upon the expiration of the last to expire of
the valid and enforceable PATENTS included herein, or upon the abandonment of
the last to be abandoned of any patent applications included herein, whichever
is later, unless the Agreement is sooner terminated.
10.1 Subsequent to the termination of this Agreement under Section 10.4,
LICENSEE agrees that it will not practice under the PATENTS. Notwithstanding the
foregoing, LICENSEE may, for up to ninety (90) days after the effective date of
such termination, sell all PRODUCTS which may be in inventory and not sold;
provided, however, LICENSEE provides any reports and payments required by
Section 6.5 of this Agreement.
10.2 If either party shall be adjudged bankrupt, or become insolvent, or make an
assignment for the benefit of creditors, or be placed in the hands of a receiver
or a trustee in bankruptcy, the other party may terminate this Agreement by
giving sixty (60) days notice by Registered Mail to the other party, specifying
the basis for termination. If within sixty (60) days after the receipt of such
notice, the party receiving notice shall remedy the condition forming the basis
for termination, such notice shall cease to be operative, and this Agreement
shall continue in full force.
10.3 The word "termination" and cognate words, such as "term" and "terminate,"
used in this Article X and elsewhere in this Agreement are to be read, except
where the contrary is specifically indicated, as omitting from their effect the
following rights and obligations, all of which survive any termination to the
degree necessary to permit their complete fulfillment or discharge:
a. LICENSEE's obligation to supply a terminal report as specified in Section 6.5
of this Agreement.
b. LICENSOR's right to receive or recover and LICENSEE's obligation to pay
Royalties (including minimum royalties) accrued or accruable for payment at the
time of any termination.
c. LICENSEE's obligation to maintain records under Section 12.0 of this
Agreement.
d. Any cause of action or claim of LICENSOR accrued, or to accrue, because of
any breach or default by LICENSEE.
e. The representation and disclaimer of warranties of Section 8.0.
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f. The PRODUCT liability, PRODUCT warranty, and indemnification of Section 9.2.
g. The obligations of confidentiality of Sections 7.0 and 7.1.
10.4 TERMINATION FOR CAUSE. Either party shall have the right to begin
proceedings to terminate this Agreement in the event that the other party
breaches or defaults in the performance of any of the terms of this Agreement.
The non-breaching party shall give the breaching party thirty (30) days written
notice of such breach and intention to terminate, stating in such notice the
grounds for such intention, provided, however, that if such breach or default is
remediable and if the breaching party shall, within said thirty (30) day period
remedy or is proceeding diligently to the non-breaching party's reasonable
satisfaction to remedy such breach or default, then this Agreement shall remain
in full force and effect. If the breaching party does not, within said thirty
(30) day period remedy such breach to the reasonable satisfaction of the
non-breaching party, the non-breaching party may, at its option, terminate this
Agreement. Moreover, if, however the alleged breaching party responds within the
30 day of receiving the above notice by either denying the existence of the
breach or asserting that the breach has been cured, then the alleged breaching
party has a right to arbitrate the matter of the breach and/or cure under
Article 23 of this Agreement, and such disputed issues will be settled by such
arbitration prior to any further attempt to terminate this Agreement under this
Article. Only upon a finding of an arbitrator under Article 23 that a material
breach has occurred and has not been cured may the non-breaching party then
terminate this Agreement under this Article. If and when such finding of an
uncured material breach has been made by the arbitrator, the non-breaching party
shall have the right and option to terminate this Agreement by giving the
breaching party thirty (30) days written notice of the termination stating in
such notice the grounds for such termination, provided, however, that if such
breach or default is remediable and if the breaching party shall, within said
thirty (30) day period remedy or is proceeding diligently to the non-breaching
party's reasonable satisfaction to remedy such breach or default, then this
Agreement shall remain in full force and effect.
10.5 Termination of this Agreement shall not limit either party from pursuing
any other remedies otherwise available to it, including, without
limitation, injunctive relief.
10.6 LICENSEE shall have a right to terminate this Agreement upon 180 days
written notice to LICENSOR and upon accelerated payment of: (1) the royalties
due or the minimum royalties due for the calendar year when such written notice
has issued, whichever is greater and (2) the minimum royalties due for the two
subsequent calendar years . The accelerated minimum royalty payment shall be
paid on 180 days from such written notice.
XI. LITIGATION
11.0 Each party shall notify the other party in writing of any suspected
infringement(s) of the PATENTS and IMPROVEMENTS in the LICENSED TERRITORY and
shall inform the other party of any evidence of such infringement(s).
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11.1 LICENSEE shall have the first right to institute suit for infringement(s)
in the LICENSED FIELD and the LICENSED TERRITORY so long as this Agreement
remains exclusive. LICENSOR agrees to join as a party plaintiff in any such
lawsuit initiated by LICENSEE, if requested by LICENSEE, with all costs,
attorneys' fees, and expenses to be paid by LICENSEE. The first right to
institute a suit for infringement in the LICENSED FIELD rests with LICENSEE.
LICENSOR agrees to fully cooperate with LICENSEE in all respects at LICENSEE's
expense including, but not limited to, having any of LICENSOR's employees
testify when requested by LICENSEE, and making available any records, papers,
information, specimens, and the like provided that the same are not privileged
and provided that a protective order satisfactory to LICENSOR is in effect.
LICENSEE shall control all decisionmaking in such litigation. The expenses of
such prosecution of patent infringement shall be deductible as an expense from
any award of damages or settlement . LICENSEE shall be entitled to retain
seventy five percent (75%) of the net proceeds of any award of damages or
settlement of such infringement lawsuit less such expenses. LICENSEE shall
pre-approve all costs expended by LICENSOR under this provision.
11.2 If LICENSEE does not institute suit for infringement(s) within ninety (90)
days of receipt of written notice from LICENSOR of LICENSOR's desire to bring
suit for infringement in its own name and on its own behalf, then LICENSOR may,
at its own expense, bring suit or take any other appropriate action.
11.3 If any lawsuit is brought by the LICENSOR pursuant to Section 11.2,
LICENSOR shall be entitled to recovery of all damages resulting from the
lawsuit.
11.4 Neither party may settle with an infringer without the prior approval of
the other party if such settlement would affect the rights of the other party
under the PATENTS.
11.5 If, at any time during the term of this Agreement, LICENSOR or LICENSEE
shall be unable to uphold the validity of any LETTERS PATENTS or other
intellectual property rights against any alleged infringer, LICENSEE shall not
have a damage claim or a claim for refund or reimbursement against LICENSOR.
11.6 It is hereby agreed that LICENSEE shall defend, indemnify and save LICENSOR
harmless from any liability, damages, losses, claims, suits, proceedings,
demands, recoveries or expenses, including reasonable attorney's fees and
expenses, resulting from injury or damage to a third party (including AFFILIATES
and DISTRIBUTORS) caused or alleged to be caused by the Product or by the
practice of the PATENT by LICENSEE. LICENSEE shall have no indemnity obligation
to LICENSOR for third party claims arising or resulting from any negligence or
willful misconduct by LICENSOR.
LICENSOR and LICENSEE hereby agree to cooperate in the defense of any such
claim, lawsuit or action. LICENSOR further agrees to make available to LICENSEE
its employees, document and expertise in the mutual defense of such action.
LICENSOR hereby agrees to immediately notify LICENSEE within five (5) days of
LICENSOR's receipt thereof of any claim, lawsuit or action which is within the
scope of
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LICENSEE's undertaking. Failure to provide such notification shall terminate
LICENSEE's obligation as to such lawsuit, claim or action.
LICENSEE shall control the management of any such claim, lawsuit or action,
including, without limitation, the selection of counsel, trial strategy, and
determination of the appropriateness and reasonableness of any settlement.
XII. RECORDS
12.0 LICENSEE and sublicensees shall keep accurate records of all operations
affecting payments hereunder, and shall permit LICENSOR or its duly authorized
agent to inspect all such records and to make copies of or extracts from such
records during regular business hours throughout the term of this Agreement and
for a reasonable period of not less than three (3) years thereafter.
12.1 LICENSEE and sublicensees shall keep proper books of account with reference
to their use of the PATENTS and to all PRODUCTS which it may use or sell.
LICENSEE shall provide LICENSOR with a quarterly written report reconciled to
its quarterly Royalty. This report shall be in a format acceptable to LICENSOR
and LICENSEE.
12.2 In case LICENSOR does not accept the statements of sales performed by
LICENSEE, and sublicensees and the parties cannot reach an agreement within
thirty (30) days after LICENSOR's notification of disagreement, LICENSOR is
authorized to have audited by a certified public accountant bound by
professional secrecy the documents relevant for computing the fee. This auditor
shall have the right to inspect all books and records of LICENSEE and
sublicensees directly related to the Product, its manufacturing or sale. The
auditing costs shall be borne by LICENSOR unless the auditing proves the failure
of LICENSEE to provide LICENSOR with correct statement of sales performed. In
the latter case LICENSEE shall pay the costs of the auditing if the statement of
sales is in error in excess of five percent (5%) of the amounts due to LICENSOR.
XIII. NONASSIGNABILITY
13.0 This Agreement or any interest herein shall not be assigned or transferred,
in whole or in part, by either party hereto without the prior written consent of
the other party hereto. However, without securing such prior written consent,
either party may assign this Agreement to an AFFILIATE or a successor of all or
substantially all of its business to which this Agreement related provided, that
no such assignment shall be binding and valid until and unless the assignee
shall have assumed in a writing, delivered to the non-assigning party, all of
the duties and obligations of the assignor. If the LICENSEE is the assignor,
then the LICENSEE shall remain liable and responsible to the non-assigning party
hereto for the performance and observance of all such duties and obligations. If
the LICENSOR is the assignor, the LICENSOR shall give written notice to LICENSEE
of any assignment of any of the PATENTS.
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XIV. SEVERABILITY
14.0 The parties agree that if any part, term, or provision of this Agreement
shall be found illegal or in conflict with any valid controlling law, the
validity of the remaining provisions shall not be affected thereby.
14.1 In the event the legality of any provision of this Agreement is brought
into question because of a decision by a court of competent jurisdiction,
LICENSOR, by written notice to LICENSEE, may revise the provision in question or
may delete it entirely so as to comply with the decision of said court.
XV. NON-USE OF LICENSOR'S NAME
15.0 In publicizing anything made, used, offered for sale, sold, or imported
under this Agreement, LICENSEE shall not use the name of LICENSOR or otherwise
refer to any organization related to LICENSOR, except with the written approval
of LICENSOR. The parties covenant and agree that, except as provided for herein
below, each will not from and after the date hereof make, issue or release any
public announcement, press release, statement or acknowledgment of the existence
of, or reveal publicly the terms, conditions and status of, the transactions
contemplated herein, without the prior written consent of the other party as to
the content and time of release of and the media in which such statement or
announcement is to be made; PROVIDED, HOWEVER, that in the case of
announcements, statements, acknowledgments or revelations which either party is
required by law to make, issue or release, the making, issuing or releasing of
any such announcement, statement, acknowledgment or revelation by the party so
required to do so by law shall not constitute a breach of this Agreement. One
party shall not use the name or trademarks of the other party or any of its
Affiliates for advertising or promotional purposes without the prior written
consent of the other party. In furtherance of the foregoing, neither party shall
originate any publicity or other announcement, written or oral, whether to the
public, the press, the trade, or otherwise, relating to this Agreement or the
existence of an arrangement between the parties, without the prior written
approval of the other party.
XVI. INDEPENDENCE OF THE PARTIES
16.0 This Agreement shall not constitute the designation of either party as the
representative or agent of the other, nor shall either party by this Agreement
have the right or authority to make any promise, guarantee, warranty, or
representation, or to assume, create, or incur any liability or other obligation
of any kind, express or implied, against or in the name of, or on behalf of, the
other, except as described herein.
XVII. WAIVER, INTEGRATION, ALTERATION
17.0 The waiver of a breach hereunder may be effected only by a writing signed
by the waiving party and shall not constitute a waiver of any other breach.
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17.1 This Agreement represents the entire understanding between the parties, and
supersedes all other agreements, express or implied, between the parties
concerning PATENTS.
17.2 A provision of this Agreement may be altered only by a writing signed by
both parties, except as provided in Sections 14.0 and 14.1, above.
XIX. FORCE MAJEURE
19.0 The obligations of either party to perform under this Agreement shall be
excused if such failure to perform or any delay is caused by acts of God, civil
commotion, riots, war, revolution, fire, explosion, flood, compliance with or
other action taken to carry out the intent or purpose of any law or regulation,
or any other cause reasonably beyond the control of the party obligated to
perform. Upon the occurrence of such an event, the duties and obligations of the
parties shall be suspended for the duration of the event preventing proper
performance under this Agreement, provided, however, that if such suspension
shall continue in excess of sixty days, the parties shall meet and attempt to
arrive at a mutually acceptable compromise within the spirit and intent of this
Agreement.
XX. JURISDICTION
20.0 This Agreement shall be construed in accordance with the substantive laws
of the State of Illinois of the United States of America.
XXI. NOTICES UNDER THE AGREEMENT
21.0 For the purpose of all written communications and notices between the
parties, their addresses shall be:
LICENSOR: Cytomedix, Inc.
Xxxxx Xxxxxxx Xxxxx
Xxxxxxxxx, Xxxxxxxx 00000
Attn: President
LICENSEE: DePuy AcroMed, Inc.
000 Xxxxxxxxx Xxxxx
Xxxxxxx, XX 00000
Attn: President
With a copy to: Chief Patent Counsel
Xxxxxxx & Xxxxxxx
Xxx Xxxxxxx & Xxxxxxx Xxxxx
Xxx Xxxxxxxxx, XX 00000
or any other addresses of which either party shall notify the other party in
writing.
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XXII. MARKING
22.0 To the extent legally permissible and/or legally mandated, LICENSEE agrees
to xxxx its brochures for the items listed in Appendix B and improvements
thereof with the following: "Certain products shown in this brochure are sold
subject to a License Agreement with Cytomedix Inc."
XXIII. ARBITRATION.
23.0 Except in the event of any litigation or proceeding commenced by any
third party against the LICENSOR or the LICENSEE in which the other
party is an indispensable party or potential third party defendant, and
except for enforcement of a party's remedies to the extent such
enforcement must be pursuant to court authorization or order under
applicable State law in Illinois or any State having jurisdiction, any
controversy or claim arising out of or relating to this Agreement or
the validity, inducement, or breach thereof, shall be settled by
arbitration prior to any attempt to terminate the Agreement. Any
controversy or claim arising out of or relating to this Agreement or
the validity, inducement, or breach thereof, shall be settled by
arbitration before a single arbitrator in accordance with the
Commercial Arbitration Rules of the American Arbitration Association
("AAA") then pertaining, except where those rules conflict with this
provision, in which case this provision controls. The parties hereby
consent to the jurisdiction of the federal district court for the
district in which the arbitration is held for the enforcement of this
provision and the entry of judgment on any award rendered hereunder.
Should such court for any reason lack jurisdiction, any court with
jurisdiction shall enforce this clause and enter judgment on any award.
The arbitrator shall be an attorney who has at least 15 years of
experience with a law firm or corporate law department of over 25
lawyers or was a judge of a court of general jurisdiction. The
arbitration shall be held in Chicago, Illinois and in rendering the
award the arbitrator must apply the substantive law of State of
Illinois (except where that law conflicts with this clause), except
that the interpretation and enforcement of this arbitration provision
shall be governed by the Federal Arbitration Act. The arbitrator shall
be neutral, independent, disinterested, impartial and shall abide by
The Code of Ethics for Arbitrators in Commercial Disputes approved by
the AAA. Within 45 days of initiation of arbitration, the parties shall
reach agreement upon and thereafter follow procedures assuring that the
arbitration will be concluded and the award rendered within no more
than eight months from selection of the arbitrator. Failing such
agreement, the AAA will design and the parties will follow procedures
that meet such a time schedule. Each party has the right before or, if
the arbitrator cannot hear the matter within an acceptable period,
during the arbitration to seek and obtain from the appropriate court
provisional remedies such as attachment, preliminary injunction,
replevin, etc., to avoid irreparable harm, maintain the status quo or
preserve the subject matter of the arbitration. THE ARBITRATOR SHALL
NOT AWARD ANY PARTY PUNITIVE, EXEMPLARY, MULTIPLIED OR CONSEQUENTIAL
DAMAGES, AND EACH PARTY HEREBY IRREVOCABLY WAIVES ANY RIGHT TO SEEK
SUCH DAMAGES. NO PARTY MAY SEEK OR OBTAIN PREJUDGMENT INTEREST OR
ATTORNEYS' FEES OR COSTS. Nothing in this agreement shall limit the
right of either party, before and during
14
such arbitration, to have recourse to such to such judicial remedies,
including preliminary injunction and attachment, as would be available
in the absence of this clause.
23.1 Discovery shall be allowed pursuant to the intendment of the Federal
Rules of Civil Procedure and as the arbitrators determine appropriate
under the circumstances.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed as of the date first mentioned above.
LICENSOR LICENSEE
Cytomedix, Inc. DePuy AcroMed, Inc.
By: /s/ Xxxxx X. Xxxx By: /s/ Xxxx Xxxxxxx
Name: Xxxxx X. Xxxx Name: Xxxx Xxxxxxx
Its: President Its: President, U.S.
15
APPENDIX A
U.S. Patent No. 5,165,938 entitled "Wound Healing Agents," issued 11/24/92
Australia Patent No. 596,954 entitled "Wound Healing Agents," issued 11/8/85
Canada Patent No. 1,261,259 entitled "Wound Healing Agents issued 9/26/89
Europe Patent No. 202,298 entitled "Wound Healing Agents," issued 7/15/92
(validated in Belgium, France, Germany, Great Britain, Netherlands, and Sweden)
Israel Patent No. 77,096 entitled "Wound Healing Agents," issued 11/19/85
Ireland Patent No. 57,894 entitled "Wound Healing Agents," issued 5/5/93
Japan Patent No. 1,986,949 entitled "Wound Healing Agents," issued 3/8/95
00
XXXXXXXX X
SCHEDULE OF PRODUCTS
SEPARATORS
0000-00-000 Disposable Processing Kit - Single
0000-00-000 Disposable Processing Kit - Double
Disposable Processing Kits contain the items required for containing blood
during processing in the centrifuge
CAPITAL
0000-00-000 Centrifuge
0000-00-000 Centrifuge and Cart Assembly
APPLICATORS/ MIXERS
0000-00-000 Applicator Kit
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APPENDIX C
(Copy of Curative Assignment)
18
