EXCLUSIVE LICENSE
AGREEMENT
This
EXCLUSIVE LICENSE AGREEMENT (“Agreement”) is
entered into and made effective as of August 5, 2008
(“Effective Date”) by INTUITIVE SURGICAL, INC. ,
a Delaware corporation with principal offices located at 1266 Kifer
Road, Sunnyvale, CA 94086 (“ISI”), and VIKING
SYSTEMS, INC. , a Delaware corporation having a place of
business at 134 Flanders Rd, Westborough, MA 01581
(“VIKING”). ISI and VIKING may be referred
to herein individually as a “Party” and collectively as
the “Parties”.
A.
Whereas, ISI has
developed and markets proprietary computer-enhanced, minimally
invasive surgical/interventional and diagnostic robotic
devices;
B.
Whereas, VIKING possesses
rights to patents relating to devices used in surgery, including
laparoscopic/endoscopic vision systems for minimally invasive
surgeries;
C.
Whereas, ISI desires to
obtain from VIKING and VIKING wishes to grant to ISI an exclusive
license under all of VIKING’s Licensed Patents and
Applications limited to the Medical Robotics Field; and
D.
Whereas, VIKING desires
to obtain from ISI and ISI wishes to grant back to VIKING a
nonexclusive license under the Licensed Patents and Applications
for certain products in the Medical Robotics Field;
NOW,
THEREFORE, the Parties
hereby agree as follows:
TERMS AND
CONDITIONS
1.1 “Affiliate”
shall mean any entity, whether
incorporated or not, which is controlled by, under common control
with, or controls a Party, where “control” means the
ability, whether directly or indirectly, to direct the affairs of
another by means of ownership, contract, or otherwise.
1.2 “Computer”
shall mean digital computers, analog
computers, and/or electronic logic arrays that are used to
translate an input into corresponding powered manipulator
movements.
1.3 “Licensed Patents and
Applications” shall
mean:
(a) all worldwide patents owned (in whole or in
part), acquired, and licensed (to the extent VIKING is empowered to
sublicense) by VIKING at the Effective Date of this Agreement;
and
(b) all worldwide patent applications owned (in
whole or in part), acquired, and licensed (to the extent VIKING is
empowered to sublicense) by VIKING at the Effective Date of this
Agreement, all patent applications based on such applications,
including all continuations, continuations in part filed within
three (3) years of the Effective Date of this Agreement,
divisionals, renewals, reissues, reexaminations, extensions, and
international and foreign counterparts, and all patents that issue
from all such applications.
1.4 “Medical Robotics
Field” shall mean
the use of Robotic Systems for any medical purpose, including
medical diagnosis and/or treatment of a human or animal body or
part thereof and/or simulation and/or modeling.
1.5 “Robotic System”
shall mean a system which includes
manipulator(s) and/or steerable device(s) that are computer aided
or computer controlled.
1.6 “Vision Video
Systems” shall mean
endoscope and video camera products and/or systems or devices for
use with endoscopes and video camera products for generating and/or
displaying video images and includes head-mounted systems or
devices.
2.1 License Grant by Viking.
(a) VIKING hereby grants, and ISI hereby accepts, a
fully-paid, royalty-free, perpetual, worldwide, non-revocable,
sublicensable, transferrable, assignable, exclusive license under
the Licensed Patents and Applications to make, have made, use,
offer for sale, sell, import, and distribute products and services
in the Medical Robotics Field as if ISI is the sole owner of such
rights and released from any past or future claim arising from or
related to the practice of the Licensed Patents and
Applications.
(b) To
be clear, the license granted in Section 2.1(a) is limited to the
Medical Robotics Field as herein defined and does not limit
VIKING’s right to make, have made, use, sell, offer to sell,
or distribute (1) stereoscopic or non-stereoscopic vision video
systems outside of the Medical Robotics Field or (2) endoscopes,
video camera products, endoscope and video camera components, and
related control, recording, and telecommunication systems and
software in the Medical Robotics Field which do not practice any of
the patents which are the subject of this Agreement.
(c) This Agreement is solely a patent license
agreement and shall not be understood or construed to grant to ISI
a license or other right to obtain, copy, use, sell, offer to sell,
distribute, or disclose VIKING’s current know-how,
trade-secrets, technology, software, or trademarks.
(d) Other than the license granted in Section
2.1(a), this Agreement shall not be understood or construed to
grant to ISI a license or other right with respect to (1) any
inventions, product, or technology, conceived, developed, or
acquired by or licensed to VIKING after the Effective Date of this
Agreement or (2) any patent applications or patents covering any of
said inventions, products, or technology applied for or acquired by
or licensed to VIKING after the Effective Date of this
Agreement.
2.2 License Grant by ISI.
(a) ISI hereby grants back to VIKING, and VIKING
hereby accepts, a fully-paid, royalty-free, perpetual, worldwide,
non-revocable, non-sublicensable, non-transferrable, non-exclusive
license under the Licensed Patents and Applications to make, use,
and sell non-stereoscopic (i.e., monoscopic) Vision Video Systems
in the Medical Robotics Field.
(b) ISI hereby grants back to VIKING, and VIKING
hereby accepts, a fully-paid, royalty-free, perpetual, worldwide,
non-revocable, nonsublicensable, non-transferrable, non-exclusive
license under the Licensed Patents and Applications to make, use,
and sell the unmodified current version, which has been marketed on
or before the Effective Date of this Agreement, of its stereoscopic
Vision Video Systems in the Medical Robotics Field, except that
VIKING may modify its current version of the head mounted display
(which uses U.S. Design Patent D415,146) solely to replace
components no longer commercially available or to resolve
compatibility issues with other components no longer commercially
available.
(c) ISI hereby grants to any buyer of a Vision Video
System sold by VIKING under Section 2.2(a) or 2.2(b), a license
under the Licensed Patents and Applications to use the purchased
system.
2.3 Enforcement. ISI shall have the right to enforce the Licensed
Patents and Applications with respect to infringement occurring
within the Medical Robotics Field.
(a) To
the extent that VIKING is deemed an indispensable party in ISI
patent infringement litigation involving the Licensed Patents and
Applications, VIKING agrees to join ISI in such
action. ISI shall reimburse all of VIKING’s
reasonable expenses, including attorney fees, in connection with
patent infringement litigation involving the Licensed Patents and
Applications that VIKING is required to join as an indispensable
party.
(b) VIKING agrees to cooperate with ISI in any
lawsuit that ISI brings against an infringer of the Licensed
Patents and Applications and to join ISI as a party to such lawsuit
if (i) requested by ISI and (ii) if ISI agrees to reimburse all of
VIKING’s reasonable litigation expenses, including attorney
fees, in such lawsuit.
(c) To
the extent permissible under the Federal Rules of Civil Procedure,
VIKING shall have the right to join in any ISI litigation involving
the Licensed Patents and Applications.
(d) ISI and VIKING agree that the primary goal in
litigating validity and enforceability issues associated with the
Licensed Patents and Applications shall be the preservation of
maximum claim breadth and enforcement rights, and the Parties shall
cooperate with each other in good faith to achieve this mutual
goal. ISI agrees that it shall not consent to any
judgment of any court or other tribunal or make any agreement with
any third party regarding patent claim breadth or patent
enforcement rights detrimental to VIKING without VIKING’s
prior written consent, which shall not be unreasonably
withheld. VIKING agrees that it shall not consent to any
judgment of any court or other tribunal or make any agreement with
any third party regarding patent claim breadth or patent
enforcement rights detrimental to ISI without ISI’s prior
written consent, which shall not be unreasonably
withheld.
(e) To
the extent that ISI is deemed an indispensable party in VIKING
patent infringement litigation involving the Licensed Patents and
Applications, ISI agrees to join VIKING in such
action. VIKING shall reimburse all of ISI’s
reasonable expenses, including attorney fees, in connection with
patent infringement litigation involving the Licensed Patents and
Applications that ISI is required to join as an indispensable
party.
(f) ISI agrees to cooperate with VIKING in any
lawsuit that VIKING brings against an infringer of the Licensed
Patents and Applications and to join VIKING as a party to such
lawsuit if (i) requested by VIKING and (ii) if VIKING agrees to
reimburse all of ISI’s reasonable litigation expenses,
including attorney fees, in such lawsuit.
(g) To
the extent permissible under the Federal Rules of Civil Procedure,
ISI shall have the right to join in any VIKING litigation involving
the Licensed Patents and Applications.
2.4 Patent Filing, Prosecution, and
Maintenance. VIKING shall retain control over
filing, prosecuting, and maintaining all Licensed Patents and
Applications. VIKING agrees to exe
