EXHIBIT
10.55
EXECUTION COPY
TECHNOLOGY LICENSE
AGREEMENT
This
TECHNOLOGY LICENSE AGREEMENT (this “ License
Agreement ”) is made and effective as of the 31
st
day of March, 2008 (the “ Effective
Date ”), by and between SaluMedica, LLC, a
Georgia limited liability company (“ Licensor
”), and MiMedx, Inc., a Florida corporation (“
MiMedx
”; and, together with any Affiliate or
successor-in-interest of MiMedx, “ Licensee
”).
RECITALS:
A.
Licensor and Licensee (specifically,
SpineMedica, LLC (a successor by merger to SpineMedica, Corp),
a subsidiary of MiMedx) are parties to that certain Technology
License Agreement, dated August 12, 2005 (the “
2005
Spine License ”), concerning “Licensed
Technology” (as defined in the 2005 Spine License) for
all neurological and orthopedic uses, including muscular and
skeletal uses, related to the human spine;
B.
Licensor and Licensee (specifically, MiMedx)
are parties to that certain Technology License Agreement,
dated August 3, 2007, as amended by that certain
First Amendment to Technology License Agreement, dated August
3, 2007 (the “ 2007
Hand License ”; and, together with the 2005 Spine
License, the “ Prior
Agreements ”), concerning “Licensed
Technology” (as defined in the 2007 Hand License) for
all neurological and orthopedic uses, including muscular and
skeletal uses, related to the rotator cuff and the hand
(excluding the wrist);
C.
Licensor and Licensee have entered into that
certain Investment Agreement of even date herewith (the
“ Investment
Agreement ”) pursuant to which, among other
things, Licensor has subscribed for the “Closing
Shares” (as defined in the Investment Agreement) in
exchange for the license and other rights granted by Licensor
to Licensee in this License Agreement;
D.
Licensor is the owner of certain
intellectual property rights with regard to certain
biomaterials known as Salubria™ biomaterials, and such
intellectual property rights are included in the Licensed
Technology (as defined hereinafter); and
E.
Licensee is desirous of obtaining and
commercializing certain intellectual property rights under the
terms set forth herein;
NOW
THEREFORE, in consideration of ten U.S. dollars ($10.00) in
hand paid, the Closing Shares, the premises, the promised
performance of each of the parties of the terms set forth
herein, and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the
parties hereto, intending to be legally bound, mutually agree
as follows:
1.
Incorporation
of Recitals; Prior Agreements . The
above recitals are by this reference incorporated herein as if
set forth with particularity and are made part of this License
Agreement. To the extent the Prior Agreements are
inconsistent with or contradict this License Agreement, the
terms of this License Agreement shall supersede the terms of
the Prior Agreements; provided however, that the terms of this
License Agreement shall not constitute an amendment to the
Prior Agreements.
“
Affiliate
” means, with respect to any Person, a Person that
directly or indirectly through one or more intermediaries,
controls, is controlled by, or is under common control with
such Person. “ Control
” (including the terms “controlled by” and
“under common control with”) means the possession,
directly or indirectly, of the power to direct or cause the
direction of the management policies of a Person, whether
through the ownership of voting securities, by contract or
credit arrangement, as trustee or executor, or
otherwise. Without limiting the foregoing,
SpineMedica, LLC (a successor by merger to SpineMedica, Corp),
MiMedx Group, Inc., and LeveL Orthopedics, LLC are Affiliates
of MiMedx.
“
Background
Technology ” means technical and other
information in the possession of Licensor that is necessary or
convenient to Practice the Licensed Technology and that is in
the public domain.
“
Confidential
Information ” means all confidential information
and trade secrets (a) related to the business plans and
affairs, property, methods of operation, processing systems,
designs, or other information of the disclosing party and (b)
in the Field of Use and comprised in, relating to, or arising
out of the Licensed Technology that is proprietary to the
disclosing party or licensed or otherwise transferred to the
disclosing party by any Person, that is not generally known to
the public, whether such information is disclosed orally, in
writing, or otherwise. Notwithstanding the
foregoing, for purposes of the license granted to Licensee
herein (but not for purposes of Section 8.3 hereof),
Confidential Information shall not include information that
Licensor obtains after the Effective Date and which is subject
to restrictions on further disclosure that would be breached
by a disclosure to Licensee.
“
Effective
Date ” means the effective date of this License
Agreement, as set out above.
“
Field
of Use ” means all uses of surgical sheet(s) as
described hereinafter. The term “ surgical
sheet ” means a piece or pieces of material using
a polyvinyl alcohol cryogel that provides an anti-adhesive
barrier used to impede, inhibit, or prevent the development of
adhesions that: (a) is fabricated in a substantially planar
form, noting however, that in packaging or in position, in or
on the body, the surgical sheet can conform to the shape of
local anatomy or structure; and (b) can have any perimeter
shape with a thickness or thicknesses of up to seven (7)
millimeters or less. The surgical sheet can be used
as an adjunct to surgical procedures to inhibit or impede the
development of adhesions or scarring that may otherwise occur
incident to the surgical procedure or to provide a plane of
dissection for a revision surgery. The surgical
sheet can also be used: (1) in repairs by patching organs or
other tissues, including, without limitation, for urinary,
intestinal, colon, stomach, hernial, gynecologic, and cardiac
patches; (2) as a substitute for the dura; and (3) as an
anti-adhesive dressing or covering used externally for wounds,
burns, and/or other skin
conditions. Notwithstanding the foregoing, The
Field of Use shall exclude any use in articulating
joints.
“
GTRC
” means Georgia Tech Research Corporation.
“
GTRC
License ” means that certain License Agreement,
dated March 5, 1998, by and between GTRC and Licensor, as
amended from time to time.
“
Improvement
Patents ” means all patents or patent
applications disclosing and claiming any Improvements and all
future patent applications, patents, divisions, reissues,
continuations, continuations-in-part, renewals, and extensions
validly claiming priority to any of these patents or patent
applications.
“
Improvements
” means any enhancements, additions, changes,
supplements, or other improvements to the Licensed Technology
as they relate to the Field of Use, whether or not patentable,
that are now existing or otherwise developed by Licensor or
Licensee after the Effective Date.
“
Know-How
” means all technical and other information,
intellectual property, or knowledge useful to Practice the
Licensed Technology in the Field of Use in the possession of
Licensor on the Effective Date or at any time after the
Effective Date that is necessary or convenient to Practice the
Licensed Technology in the Field of Use, which is not in the
public domain, including, without limitation, concepts,
discoveries, data, designs, formulae, ideas, inventions,
methods, models, assays, research plans, procedures,
processes, designs for experiments and tests and results of
experimentation and testing (including, without limitation,
results of research or development), processes (including,
without limitation, manufacturing processes, specifications,
and techniques), laboratory records, chemical, clinical,
analytical, and quality data, trial data, case report forms,
data analyses, reports, manufacturing data or summaries, and
information contained in submissions to and information from
regulatory authorities, and includes any rights including,
without limitation, copyright, database, or design rights
protecting any of the foregoing. The fact that an
item is known to the public shall not be taken to exclude the
possibility that a compilation including the item, or a
development relating to the item, is or remains not known to
the public. Notwithstanding the foregoing, Know How
shall not include information or knowledge that Licensor
obtains after the Effective Date subject to restrictions on
disclosure or use by Third Parties.
“
License
Agreement ” means this Technology License
Agreement, as it may be amended from time to
time.
“
Licensed
Patents ” means (a) Patents Under License, (b)
Owned Patents, and (c) Licensor’s Improvement
Patents.
“
Licensed
Product ” means any product or device that is
developed, manufactured, produced, expressed, used, sold or
offered for sale, or licensed for use by Licensee, its
sublicensees or assignees, or their contract manufacturers,
utilizing the Licensed Technology in the Field of
Use.
“
Licensed
Technology ” means the Licensed Patents, the
Confidential Information, the Know How, the Improvements, and
the Improvement Patents, in each and every case only as they
relate to the Field of Use.
“
Licensee
Indemnitees ” has the meaning set forth in
Section 6.1.
“
Licensor
Indemnitees ” has the meaning set forth in
Section 6.2.
“
Losses
” has the meaning set forth in
Section 6.1.
“
Owned
Patents ” means the patents and patent
applications listed in Section II of Appendix
A and all of Licensor’s future patent
applications, patents, divisions, reissues, continuations,
continuations-in-part, renewals, and extensions thereof or
related thereto in the United States and in foreign
jurisdictions validly claiming priority to any of these
patents and patent applications. The Parties
acknowledge that U.S. Patent No. 6,231,605 is a
continuation-in-part of U.S. Patent No.
5,981,826. Although the pending patent applications
listed in Section II of Appendix
A are presently identified as owned by Licensor, it is
possible that one or more of the continuation applications may
be owned by GTRC or may be co-owned by GTRC and Licensor,
depending on the claimed subject matter. To the
extent that GTRC has any ownership rights to the continuations
listed in Section II of Appendix
A , Licensor represents and warrants that it is the
exclusive licensee thereof pursuant to the terms of the GTRC
License. The Parties agree that if such ownership
rights of a continuation patent application or issuing patent
should change to be owned in whole or in party by GTRC, then
such application or patent shall, without any action by the
Parties, be included under the term “Patents
Under License.”
“
Parties
” means Licensor and Licensee, and “ Party
” means either one of them.
“
Patents
Under License ” means the patents and patent
applications listed in Section I of Appendix
A and any and all of Licensor’s future patent
applications, patents, divisions, reissues, continuations,
continuations-in-part, renewals, and extensions thereof or
related thereto in the United States and elsewhere validly
claiming priority to any of these patents and patent
applications.
“
Person
” means any natural person, firm, partnership,
association, corporation, limited liability company, trust,
business trust, or other entity.
“
Practice
” means the right in the Field of Use to make, have
made, manufacture, have manufactured, use, offer to sell,
sell, market, distribute, import, or export Licensed
Products.
“
Rules
” has the meaning set forth in
Section 8.7.
“
Third
Party ” means any Person other than the
Parties.
3.1 Licensor
hereby grants to Licensee an exclusive, fully-paid, worldwide,
royalty-free, perpetual, irrevocable, and non-terminable
(except as provided in the termination provisions of the GTRC
License) license, with the right to sublicense, to Practice
the Licensed Technology in the Field of
Use. Licensor will grant Licensee reasonable access
to and the ability to make copies of all Background Technology
and Licensed Technology.
3.2 Licensor
shall not itself, nor shall it directly or indirectly assist
or consent to any Third Party to, manufacture, have
manufactured, use, offer for sale, sell, market, distribute,
import, or export Licensed Products or otherwise Practice the
Licensed Technology in the Field of Use.
3.3 Licensor
shall have the exclusive right and authority, in its own name,
to apply for, prosecute, and obtain Owned
Patents.
3.4 Either
Party may seek to obtain Improvement Patents in its own name,
subject to applicable laws, treaties, and
regulations.
3.5 Licensee
shall have the right and authority, in the name of Licensor,
to file for continuation with respect to any Licensed Patents
after providing written notice to Licensor of Licensee’s
intent to make such filing.
3.6 Notwithstanding
anything herein to the contrary, Licensor shall have no right
to terminate this License Agreement or the license granted to
Licensee under Section 3.1.
3.7 Licensee
hereby grants to Licensor an exclusive, fully-paid,
royalty-free, irrevocable and non-terminable license to
Practice the Improvement Patents outside the Field of
Use.
4.
License
Fee . In
consideration of the license and other rights granted herein
by Licensor to Licensee, Licensee shall enter into the
Investment Agreement and issue to the Licensor the Closing
Shares (as defined in the Investment
Agreement). The Parties agree and acknowledge that
the Closing Shares shall constitute fair, adequate, and
legally sufficient consideration for the license and other
rights granted herein. Licensor acknowledges and
agrees that the issuance or non-issuance of Additional Shares
under the Investment Agreement has no effect whatsoever on
this Agreement and the rights granted to Licensee
hereunder.
5.
Representations
and Warranties .
Licensor hereby represents and warrants to Licensee that as of
the Effective Date:
5.1 Licensor
has the full right and power to grant the license set forth in
Section 3 of this License Agreement.
5.2 &n
