AMENDED AND RESTATED EXCLUSIVE LICENSE AGREEMENT

 

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                                                                    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

 

 

 

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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;

 

 

 

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         (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.

 

 

 

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                                   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

 

 

 

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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:

 

 

 

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                  (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.

 

 

 

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         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.

 

 

 

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                                     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