|
EXHIBIT 10.8
SCS LICENSE AGREEMENT
This
SCS License Agreement (the "Agreement"), which is agreed to be
effective as hereinafter provided, is by and between St. Jude
Medical, Inc., a Minnesota corporation having its principal
place of business at One Lillehei Plaza, St. Paul, Minnesota,
55117 ("St. Jude"), and Boston Scientific Corporation, a
Delaware corporation having its principal place of business at
One Boston Scientific Place, Natick Massachusetts, 01760-1537
("BSC").
RECITALS
A.
Advanced
Bionics Corporation ("ABS"), a wholly-owned subsidiary of BSC
and Advanced Neuromodulation Systems, Inc. ("ANS"), a
wholly-owned subsidiary of St. Jude, are adverse parties in
the following currently pending litigation matters
(collectively referred to as the "SCS Cases"):
1)
Advanced Neuromodulation Systems, Inc. v. Advanced Bionics
Corporation ,
Civil Action No. 4:04cv131 (E.D. Tex);
2)
Advanced Bionics Corporation v. Advanced Neuromodulation System,
Inc. ,
Civil Action No. 4:04cv131 (E.D. Tex.); and
3) the arbitration proceeding before the International
Institute for Conflict Prevention and Resolution, Case No.
G-06-08A.
B.
St.
Jude and BSC and certain of their respective Affiliates are
engaged in,
inter alia ,
the design, development, manufacture, and sale of devices for
spinal cord stimulation.
C.
St.
Jude and BSC and certain of their respective Affiliates own or
hold certain rights in the Patents-In-Suit.
D.
Pursuant
to a Settlement Agreement dated July 29, 2006, St. Jude and
BSC have agreed to terminate the SCS Cases in return
for,
inter alia ,
the granting of certain rights by and between St. Jude and BSC
concerning the Patents-In-Suit (the "Settlement
Agreement").
Now
therefore, in consideration of the covenants and agreements
set forth herein and the Settlement Agreement, pursuant to
which a number of additional cases between St. Jude and BSC
are either resolved or limited in scope, and for valuable
consideration receipt of which is hereby acknowledged, St.
Jude and BSC mutually agree as follows:
ARTICLE I
Definitions of Certain Terms
For
the purposes of this Agreement, the following terms shall have
the meaning specified below. Whenever used in the Agreement,
"include," "includes," and "including" shall be deemed to be
followed by "without limitation," whether or not it is
followed by such words.
Section 1.01 .
Affiliate .
"Affiliate" means any person or entity that controls or is
controlled by or is under common control with St. Jude or BSC on
the Effective Date or at any time thereafter.
For
purposes of this Section 1.01, ownership, directly or
indirectly, of more than fifty percent (50%) of the capital
stock or other comparable ownership interest of the
corporation or entity carrying the right to vote for or
appoint directors or their equivalent (if not a corporation)
shall constitute control thereof. "Affiliate" of a third party
means a person or entity that controls, is controlled by, or
under common control with, such third party.
Section 1.02 .
Patents-In-Suit .
"Patents-In-Suit" means U.S. Patent Nos. 6,516,227; 6,381,496;
6,216,045; 6,154,678; and 4,793,353.
Section 1.03 .
BSC Licensed Patents .
(a)
"BSC
Licensed Patents" means U.S. Patent Nos. 6,516,227 and
6,381,496, including all divisionals, continuations,
continuations-in-part, reissues, reexaminations and foreign
counterparts, except as set forth in Section 1.03(c),
below.
(b)
Without
limiting the foregoing, the term "BSC Licensed Patents"
specifically includes, but is not limited to, all present
patents and patent applications listed on Exhibit A of this
Agreement. BSC believes that Exhibit A is a complete listing
of its U.S. patents and patent applications within the
foregoing definition of BSC Licensed Patents which are in
existence as of the Effective Date, and any errors,
overinclusions, or omissions from Exhibit A will be deemed to
be inadvertent and not a material breach. Present foreign
patents and patent applications, including foreign
counterparts of U.S. patents and patent applications listed on
Exhibit A, have intentionally not been included in Exhibit A
but are deemed to be BSC Licensed Patents if they are covered
by the foregoing definition in this Section 1.03.
(c)
Notwithstanding
the foregoing, the term "BSC Licensed Patents" specifically
excludes the following:
(1)
Claims
3-15 and 20-53 of U.S. Patent No. 6,516,227;
(2)
Claims
2, 6 and 10 of U.S. Patent No. 6,895,280; and
(3)
any
patent claim with priority based on U.S. Patent Nos. 6,516,227
or 6,895,280 that claims multiple independent current sources
for generating independently-controlled stimulus currents on
multiple electrodes, thereby having the equivalent function to
the device as claimed in any of the claims excluded pursuant
to sub-sections (1) and (2), above.
Section 1.04 .
St. Jude Licensed Patents .
(a)
"St.
Jude Licensed Patents" means U.S. Patent Nos. 6,154,678 and
4,793,353, including all divisionals, continuations,
continuations-in-part, reissues, reexaminations and foreign
counterparts.
(b)
"St.
Jude Licensed Patents" also means U.S. Patent No. 6,216,045,
including all divisionals, continuations,
continuations-in-part, reissues, reexaminations, and foreign
counterparts, for use in the SCS Field and excludes any use
outside of the SCS Field.
(c)
Without
limiting the foregoing, the term "St. Jude Licensed Patents"
specifically includes, but is not limited to, all present
patents and patent applications listed on Exhibit A of this
Agreement. St. Jude believes that Exhibit A is a complete
listing of its U.S. patents and patent
applications
within the foregoing definition of St. Jude Licensed Patents
which are in existence as of the Effective Date, and any
errors, overinclusions, or omissions from Exhibit A will be
deemed to be inadvertent and not a material breach. Present
foreign patents and patent applications, including foreign
counterparts of U.S. patents and patent applications listed on
Exhibit A, have intentionally not been included in Exhibit A
but are deemed to be St. Jude Licensed Patents if they are
covered by the foregoing definition in this Section
1.04.
Section 1.05 .
SCS Field .
"SCS Field" shall mean spinal cord stimulation to treat or manage
chronic pain of the trunk and limbs.
Section 1.06 .
Effective Date .
"Effective Date" shall mean July 29, 2006.
ARTICLE II
Cross License
Section 2.01 .
License .
Subject to the terms, conditions, and limitations set forth
herein:
(a)
St.
Jude grants (and will cause its Affiliates to grant) to BSC
and its Affiliates a non-exclusive, irrevocable, perpetual,
fully paid-up (except for royalties due to a third party, if
any) worldwide license or sublicense, as the case may be,
without the right to sublicense, under the St. Jude Licensed
Patents to make, have made, use, sell, have sold, offer for
sale, distribute, have distributed, and otherwise dispose of
products, including supplying or causing to be supplied
components thereof for use therein, and further including
importing products, or components thereof for use therein,
into any jurisdiction where St. Jude Licensed Patents are
effective and which are manufactured in accordance with a
method of any St. Jude Licensed Patent.
(b)
BSC
grants (and will cause its Affiliates to grant) to St. Jude
and its Affiliates a non-exclusive, irrevocable, perpetual,
fully paid-up (except for royalties due to a third party, if
any) worldwide license or sublicense, as the case may be,
without the right to sublicense, under the BSC Licensed
Patents to make, have made, use, sell, have sold, offer for
sale, distribute, have distributed, and otherwise dispose of
products, including supplying or causing to be supplied
components thereof for use therein, and further including
importing products, or components thereof for use therein,
into any jurisdiction where BSC Licensed Patents are effective
and which are manufactured in accordance with a method of any
BSC Licensed Patent.
(c)
If
any party has products made for it under the above license
grant, such products must bear its or one of its
Affiliates’ trade names or trademarks; however, such
products may bear third-party trade names or trademarks for
materials or components used in such products.
(d)
The
licenses granted in this Section 2.01 shall be irrevocable
except for the specific exceptions described in the change of
control situations contemplated by provisions of Section 9.02
below.
Section 2.02 .
Regarding OEM Activities .
The licenses granted or to be granted under this Article II shall
not be used in such a way as to manufacture products on an original
equipment manufacturer (“OEM”) basis for any person or
entity other than St. Jude and its Affiliates or BSC and its
Affiliates. The licenses granted or to be granted under this
Article II shall apply to and for the benefit of products
manufactured by a party to this Agreement for a third party who is
licensed under the appropriate patents of the other party to this
Agreement where, and to the extent that, the
third
party's license permits such third party to "have made" such
products for such third party. Nothing in this Agreement shall
preclude the use of the licenses granted or to be granted
under this Article II by a party or its Affiliate for the
purpose of having products manufactured by a third party on an
OEM basis for such party or its Affiliate; provided, however,
that such products must bear the trademark or trade name of
such party or its Affiliate. Notwithstanding the foregoing,
such products may bear third-party trade names or trademarks
for materials or components used in such
products.
Section 2.03 .
Certain Conditions, Limitations and Understandings
.
The licenses and sublicenses granted under this Agreement are
expressly made subject to the following conditions, limitations and
understandings:
(a)
The
licenses are personal to the parties hereto, and are
nonassignable and nontransferable, except as set forth in
Section 9.02 below.
(b)
The
parties and their Affiliates shall have the right, in their
sole and absolute discretion, to control the maintenance,
abandonment, extension, and licensing of their own patents
including the BSC Licensed Patents and St. Jude Licensed
Patents; provided however, that no such license or other
transfer of interest shall in any manner abridge the rights of
the other party granted under this Agreement.
(c)
The
owner of a BSC Licensed Patent or St. Jude Licensed Patent
shall have the right to enforce, or not to enforce, such
patents in its sole and absolute discretion against all
persons and organizations other than a party or Affiliate of a
party hereto.
(d)
The
licenses granted herein shall not extend to any technical
know-how or design information, manufacturing, marketing,
and/or processing information or know-how, designs, drawings,
mask works, specifications, software source code, algorithms,
clinical data, or other documents directly or indirectly
pertinent to the use of the BSC Licensed Patents or St. Jude
Licensed Patents, or to the use of any trademarks or trade
names, service marks, or software copyrights or other
copyrights (including copyright registrations) of any party,
and the parties acknowledge that there is no obligation upon
any party or its Affiliates to provide such information,
know-how, designs, drawings, mask works, specifications,
software source code, algorithms, clinical data, or other
documents.
(e)
Except
as otherwise expressly provided in this Agreement, all
licenses are granted for the life of the covered
patents.
(f)
All
licenses and sublicenses required to be granted by Affiliates
under this Agreement shall be subject to the terms and
conditions set forth in this Agreement.
(g)
Any
assignment or other transfer by a party or its Affiliate of
that entity's interest in (i) a BSC Licensed Patent or (ii) a
St. Jude Licensed Patent shall be made subject to the rights
of the other party and its Affiliates under this
Agreement.
(h)
Any
license extended to an Affiliate shall continue only so long
as "Affiliate" status is maintained, or as permitted pursuant
to the other party’s consent.
ARTICLE III
Representations, Warranties and Limitations
Section 3.01 .
Certain Representations and Warranties .
(a)
Each
party represents and warrants to the other party as follows
and acknowledges that each of the following representations
and warranties has been relied upon by the other party and is
material to the other party's decision to enter into the
Agreement: each party hereto has the requisite power and
authority, corporate and otherwise, to execute and perform the
Agreement, to grant the licenses and sublicenses provided for
herein, and, except as provided in this Section 3.01, to cause
such party’s Affiliates to execute and perform the
Agreement and to grant the licenses and sublicenses provided
for herein.
(b)
To
the extent that a party shall lack the requisite authority to
cause an Affiliate of such party to execute or perform this
Agreement or to grant the licenses or sublicenses as provided
in this Agreement, then such party shall defend, indemnify,
and hold harmless the other party and its Affiliates, and all
officers, directors, employees, attorneys, agents, successors,
and assigns of the other party and its Affiliates, against any
and all legal expenses, costs, and judgments arising from
claims, controversies, demands, rights, disputes, grievances,
or causes of action that would have been avoided had such
party caused such Affiliate to exec
|
