|
<PAGE>
EXHIBIT 10.6
AMENDED AND RESTATED
EXCLUSIVE LICENSE AGREEMENT
MADE this 28th day of January, 2004, by and between Mirowski
Family
Ventures, LLC, a Limited Liability Company organized and
existing under the laws
of the State of Maryland (hereinafter called "MIROWSKI") and
Guidant
Corporation, a corporation organized under the laws of the State
of Indiana
(hereinafter called "GUIDANT").
WHEREAS, MIROWSKI is the owner of United States Letters Patents
as more
fully set forth on Exhibit A hereto;
WHEREAS, MIROWSKI is the owner of United States Patent
Applications as
more fully set forth on Exhibit B hereto;
WHEREAS, MIROWSKI is the owner of each of the corresponding
foreign
patents and patent applications set forth on Exhibit C
hereto;
WHEREAS, MIROWSKI and GUIDANT desire to amend and restate
the
relationship between the parties that currently exists by virtue
of the
Exclusive License Agreement dated the 30th day of January 1973
between MEDRAD,
Inc. and Mieczyslaw Mirowski as amended, as assigned to Eli
Lilly and Company,
and sub-licensed on October 18, 1994 to Cardiac Pacemakers, Inc.
("the Prior
Agreements"), and further, to restate the grant to GUIDANT of
the sole and
exclusive worldwide license for the use of said patents, patent
applications,
and inventions set forth on Exhibits A, B, and C hereto,
together with any
improvements or modifications thereto, developed by
MIROWSKI;
WHEREAS, Eli Lilly and Company is not a party to this Exclusive
License
Agreement, has no rights or obligations under this Exclusive
License Agreement,
and
<PAGE>
will have no further rights or obligations under the Prior
Agreements; and
MIROWSKI and GUIDANT understand that Eli Lilly and Company has
consented by
separate agreement to this Exclusive License Agreement and the
changes and
terminations effected thereby;
NOW, THEREFORE, in consideration of the premises and of the
mutual
covenants hereinafter set forth, and of the good and valuable
consideration
flowing from each party to the other, the parties hereto,
intending to be
legally bound hereby, covenant and agree as follows:
ARTICLE I
Definitions
For the purpose of this Exclusive License Agreement the
following terms
shall have the following meanings:
Section 1. Patent Rights. The term "Patent Rights" means the
rights to
the subject matter of all inventions which are contained in or
are disclosed by,
and which are covered by valid, unexpired claims of:
(i) United States Letters Patents set forth on Exhibit A
hereto;
(ii) United States Reissue Application No. 10/214,474 and
any
patent that may issue therefrom;
(iii) United States Patent Applications reflected on Exhibit
B
hereto and any patent or patents that may issue therefrom;
(iv) the corresponding foreign patents and patent applications
set
forth on Exhibit C hereto;
2
<PAGE>
(v) any and all divisions, continuations, reissues and
extensions
of any of the foregoing patents and patent applications; and
(vi) such other U.S. or foreign patent applications or patents
as
may be designated by mutual agreement of the parties hereto.
Section 2. Improvement. The term "Improvement" means any
future
inventions, plans, drawings, specifications, techniques, data
and technical
information directly relevant to the development, engineering,
design,
installation, use, or sale, of any device included in the Patent
Rights, whether
or not such information includes patentable subject matter.
Section 3. Implantable defibrillator. The term "Implantable
Defibrillator" means any implantable or semi-implantable
defibrillator or
cardioverter or any other device or method which is covered by
any of the Patent
Rights of the Exclusive License Agreement.
Section 4. Net Sales, Rental or Lease. The term "Net Sales,
Rental or
Lease" means the total aggregate selling price received by
GUIDANT for the
initial sale of a device, its parts or components, and the total
aggregate
rental or lease price received by GUIDANT for a device, its
parts or components
after the deduction of all discounts, sales, use and similar
taxes, and delivery
costs.
Section 5. Sold. The term "Sold" means billed out, or paid for
if paid
for before delivery.
3
<PAGE>
ARTICLE II
Grant and Extent of Exclusive License
Section 1. MIROWSKI hereby grants to GUIDANT the sole and
exclusive
license and right to manufacture, use, sell, rent and lease or
otherwise dispose
of any and all devices under the Patent Rights and or any
Improvements thereof
throughout the United States, its territories and possessions,
and in any and
all foreign countries, subject to the terms and conditions set
forth in this
Exclusive License Agreement.
Section 2. GUIDANT shall have the right to grant sub-licenses to
others
and to collect royalties therefrom; provided, however, that
GUIDANT shall
continue to be responsible to MIROWSKI for royalties as provided
for in Article
III hereof to the same extent as if all manufacture, use, sale,
rental, lease or
other disposition by a GUIDANT sub-licensee were manufacture,
use, sale, rental,
lease or other disposition made by GUIDANT.
Section 3. GUIDANT shall, and shall so obligate its
sub-licensees, to
mark all devices manufactured, used, sold, rented or leased
under the Patent
Rights in accordance with the patent notice requirements of the
country in which
such devices are manufactured, used, sold, rented or leased.
Section 4. GUIDANT agrees, during the term of this Exclusive
License
Agreement, to diligently exert its best efforts to prosecute any
pending or
mutually agreed to future applications within the patent Rights.
Guidant also
agrees to diligently exert its best efforts to create a demand
for each device
included in the Patent Rights, to increase and extend its
business, and to make
every effort to supply the demand for each such device,
provided, however, that
Guidant may elect as to any patent in Patent Rights at any time
prior to the
earlier of two years after issuance of such patent or six (6)
years after such
patent's filing date not to exercise its best efforts to
commercialize devices
4
<PAGE>
included in such patent. Such election will be by written notice
to MIROWSKI,
and MIROWSKI may, at any time after receiving such notice by
written notice to
GUIDANT, terminate this Agreement as to the patent identified in
the notice,
whereupon GUIDANT shall have no right or interest thereunder in
such identified
patent. If, on such termination, no unexpired Patent Rights
remain, MIROWSKI or
GUIDANT may elect to terminate the Agreement.
Section 5. Unless previously terminated as hereinafter provided,
the
term of the exclusive license under the Patent Rights shall be
from and after
the date of this Exclusive License Agreement until the
expiration date of the
last to expire of the Patent Rights.
Section 6. GUDIANT may assign any license granted herein to
any
corporation in which it holds a majority interest, or to any
corporate entity
which is the successor to GUIDANT.
Section 7. GUIDANT shall as promptly as may be practicable
inform
MIROWSKI of any Improvement which it may make or acquire and
vice versa.
ARTICLE III
Payments and Royalties
Section 1. In consideration for the exclusive license granted
herein,
GUIDANT shall:
A. Pay to MIROWSKI during the term of this Exclusive License
Agreement as follows:
5
<PAGE>
(i) three percent (3%) of the Net Sales, Rental or Lease
received by GUIDANT for Implantable Defibrillators,
their parts and components sold by GUIDANT.
(ii) three percent (3%) of the Net Sales, Rental or Lease
received by GUIDANT for lead devices even though not
covered under patent rights if the lead devices are
sold by GUIDANT with an Implantable Defibrillator.
(iii) four percent (4%) of the Net Sales, Rental or Lease
received by GUIDANT for any other device sold by
GUIDANT with an Implantable Defibrillator, and for
use with the Implantable Defibrillator during the
implant procedure, even though not covered under
Patent Rights, including, without limitation, Rapido
dual catheters but excluding devices subject to
Article III, Section 1, Subparagraph A(ii).
B. Pay to MIROWSKI during the term of this Exclusive License
Agreement an annual minimum royalty of $10,000.
Section 2. Payments and Royalties under Article III, Section
1,
Subparagraph A(i), shall be payable only on devices which are
covered, in the
country of manufacture, use, sale, rental or lease, by one or
more valid claims
of a patent application or an unexpired patent included in the
Patent Rights.
6
<PAGE>
Section 3. All royalty payments due MIROWSKI by GUIDANT under
Article
III, Section 1, Subparagraph A, shall become due thirty (30)
days following the
end of each fiscal quarter of GUIDANT for all sales, rental or
lease during such
fiscal quarter.
Section 4. All minimum royalty payments due MIROWSKI by GUIDANT
under
Article III, Section 1, Subparagraph B, shall be paid in equal
quarterly
installments and shall become due thirty (30) days following the
end of each
fiscal quarter of GUIDANT.
Section 5. GUIDANT shall have the right to credit minimum
royalty
payments under Article III, Section 1, Subparagraph B against
royalties payable
under Article III, Section 1, Subparagraph A, and GUIDANT shall
have the right
to credit payments made under Article III, Section 1,
Subparagraph A against
minimum royalty payments regardless of the year in which such
payments are made.
Section 6. All sums payable by GUIDANT to MIROWSKI under the
terms of
this Exclusive License Agreement shall be payable to MIROWSKI in
United States
dollars without deduction for any taxes or any other
charges.
ARTICLE IV
Books, Reports and Records
GUIDANT shall maintain full and complete books and records of
all
sales, rentals and leases upon which royalties are payable under
this Exclusive
License Agreement. Within thirty (30) days after the end of each
fiscal quarter
of GUIDANT, GUIDANT shall furnish to MIROWSKI a full written
report setting
forth the Net Sales, Rental or Leases of all devices upon which
royalties are
payable. MIROWSKI and its designated accountants or attorneys
shall have the
right to examine such books and records of GUIDANT during normal
business hours,
after first giving reasonable written notice.
7
<PAGE>
ARTICLE V
Breach of Contract, Termination
Section 1. If GUIDANT shall, at any time during the term of
this
Exclusive License Agreement:
(i) default in the making of any report required in Article IV
to
be made by GUIDANT to MIROWSKI under the terms of this
Exclusive License Agreement, and such default shall continue
for a period of thirty (30) days after MIROWSKI gives
written
notice of such default to GUIDANT; or
(ii) default in the performance of any other obligation or
undertaking contained in this Exclusive License Agreement on
the part of GUIDANT, and such default shall continue for a
period of thirty (30) days after MIROWSKI gives written
notice
of such default to GUIDANT, MIROWSKI may, at its option,
terminate the exclusive portion of this Exclusive License
Agreement by thirty (30) days written notice to GUIDANT and
GUDIANT shall retain a royalty bearing Non-exclusive License
to manufacture, sell, use or otherwise dispose of products
developed by GUIDANT under the
| 
