Royalty Report: Medical, Device, Surgical – Collection: 1405

License Grant

The Licensee entered into a development and License Agreement with the German Licensor. The Licensor and the Licensee will develop a unique coating technology for the Licensee's balloon catheters, grant a worldwide License, and assign ownership of such technology to the Licensee.

License Property

The Licensor is involved in diagnostic imaging and minimal invasive image guided therapy.

Field of Use

The Licensee develops, manufactures, markets, and distributes single-use medical devices used in minimally invasive procedures in the cardiovascular system. Its products are used to treat arterial blockages in the legs and heart, and to remove pacemaker and defibrillator cardiac leads.

License Grant

University is willing to grant a worldwide, exclusive license in the defined FIELD OF USE to Licensee.  The University is the owner and that it has the right to exclusively license those inventions which are the subject matter of USC File No. 2651 entitled 'Balloon Protection Guide Wire Device For Carotid Balloon Angioplasty and Stenting' and USC Pile 2639 entitled 'New Balloon-Inflated Carotid Artery Stent to Assist in Carotid Artery Balloon Angioplasty'.

License Property

Guardian Embolization Protection System patented technology with primary use in the neurointerventional and cardiology markets these markets focus on arteries and veins leading to the brain and those in the heart, and the removal of blockages in these veins and arteries.  The device is designed to prevent deadly embolisms during surgery to clear blocked arteries and prevent strokes and heart attacks.  The key to this device, known as the Guardian System, is a thin string of wire, really a metal tube not much larger in diameter than a human hair, with a marble-sized balloon attached toward the end.

USC File 2651 U.S. Patent Application Serial No. 08/767,221 filed December 16, 1996 (abandoned) entitled 'Cerebral Protection Balloon For Use In Carotid Artery Angioplasty and Stenting'

USC File 2561 U.S. Patent Application Serial No. 08/906,890 filed August 6,1997 (which is a continuation of U.S. Ser. No. 08/767,221), entitled Angioplasty Catheter'.

USC File 2561 PCT Patent Application Serial No. PCT/US97/23257 filed December16, 1997 and corresponding to U.S. Patent Applications Serial Nos. 08/767,221and 08/906,890.

USC File 2639 Invention Disclosure entitled 'New Balloon-Inflated Carotid Artery Stent to Assist in Carotid Artery Balloon Angioplasty'.

Field of Use

'FIELD OF USE' shall mean diagnostic and/or therapeutic devices to be used in the treatment or management of patients via the carotid artery or other arteries or veins.

License Grant

If, and only if, Licensor exercises its option for a license under the CIC Patents pursuant to this agreement, Licensor shall grant (and will cause its Affiliates to grant) to Licensee and its Affiliates the right and option until the expiration of thirty (30) months from the Effective Date or ninety (90) days from the date Licensor exercises its option, whichever is later in time, to obtain a non-exclusive, worldwide, non-transferable, royalty-bearing license under the Savacor Patents.

License Property

Savacor Patents shall mean those patents and patent applications, and all patents and patent applications claiming priority therefrom, that Licensor or its Affiliates acquired from Savacor, Ind. as set forth.  The Savacor Patents shall include the sublicensable patents and patent applications of Cedars Sinai Medical Center listed.

6,970,742 – Method for detecting, diagnosing, and treating cardiovascular disease
6,328,699 – Permanently implantable system and method for detecting, diagnosing and treating congestive heart failure

Field of Use

“CRM Products” means devices for monitoring or electrically stimulating or shocking the heart which are suitable for chronic implantation, in whole or in part, by or with human patients. The term “CRM Products” includes, without limitation cardiac pacemakers, antitachycardia pacemakers, cardiac resynchronization therapy systems, cardioverters, and defibrillators, including combinations thereof; loop recording systems, implantable cardiac monitoring systems, implantable hemodynamic monitoring systems, pulse generators and other waveform generators for such devices; cardiac lead implant catheters and associated tools; leads, electrodes, sensors, capacitors, batteries, power sources, and all other components for such devices; mechanisms for coupling such generators in a stimulating, shocking, sensing, or monitoring relationship to the heart; and data dispensing, processing, and gathering systems for such devices, including programmers, pacing system analyzers, defibrillation system analyzers, testers, encoders, decoders, transtelephonic and other remote monitoring systems and services for use with implantable devices, transmitters, receivers, and computer software-controlled systems, and including the software. The term “CRM Products” excludes, by way of example and not limitation, nerve stimulators (unless used for cardiac therapy), bone growth stimulators, drug release pumps, cardiac pumps, artificial hearts, prosthetic heart valves, catheter ablation devices, imaging systems, catheter location systems, apparatus for revascularization or correction of other physical defects in heart tissue, arrhythmia mapping devices (except as part of an implantable cardiac therapy or monitoring device), angioplasty devices and EKG monitors (other than cardiac stimulation device programmers or other telemetry devices for use with implantable pulse generators or cardiac monitors) which are standalone, non-ambulatory and not intended for transtelephonic or other remote monitoring.

License Grant

Licensor grants to Licensee a worldwide, exclusive license to make, have made, use and sell Royalty Products.

License Property

Royalty Product means any Lead Extractor covered by a claim of an unexpired patent in the Licensed Intellectual Property or employing Licensor Confidential Information in the Licensed Intellectual Property; provided that the laser generators and other capital equipment of Licensee will not be considered Royalty Product. Lead Extractors sold for the purpose of clinical trials required for obtaining government approval to market in any country shall not be deemed Royalty Product.

Lead Extractor means a device for aiding in removal of medical devices such as pacing and defibrillation leads or catheters.

Licensed Intellectual Property means (1) All U.S. patents and patent applications owned by or licensed to, with the right to sublicense, Licensor which are now or during the term of this Agreement developed for use in the laser extraction of leads or catheters, including U.S. Patent 5,423,806 entitled 'Laser Extractor for an Implanted Object' and U.S. Patent Application 08/153,715 entitled 'Heart Synchronized Extractor for an Implanted Object'; (2) all patent rights derived from such patents and patent applications, including but not limited to foreign rights, divisionals, continuations, continuations in part, re-issues, and reexaminations; and (3) any confidential information provided to Licensee by Licensor (a) under the terms of the Agreement for Mutual Exchange of Confidential Information between Licensee and Licensor dated May 21, 1991 (the Confidentiality Agreement), (b) in written form and marked as proprietary, confidential or the like, before and during the development of Licensee products, including but not limited to the original concept drawings and information disclosures (collectively the Licensor Confidential Information).  Licensor Confidential Information shall not, however, include information which
    (i)   is or was known to Licensee prior to receipt thereof under this Agreement or the Confidentiality Agreement, as evidenced by written records;
    (ii)  is disclosed without restriction to Licensee in good faith by a third party who is in lawful possession thereof and who has the right to make such disclosure;
    (iii) is or shall have become public knowledge, by publication or otherwise, through no fault of Licensee;  
    (iv)  is discovered by Licensee completely without reference to Licensor Confidential Information; or
    (v)   is transmitted to Licensee by Licensor after Licensor received notification in writing from Licensee that Licensee did not desire to receive any further Licensor Confidential information.

U.S. Patent 5,423,806 entitled Laser Extractor for an Implanted Object
U.S. Patent Application 08/153,715 entitled Heart Synchronized Extractor for an Implanted Object

Licensor has developed technology relating to laser lead extraction and owns intellectual property related thereto.

Field of Use

The field of use is in the medical industry relating to devices for aiding in removal of medical devices such as pacing and defibrillation leads or catheters.

Licensee develops, manufactures, markets, and distributes its technology for interventional cardiovascular therapy. The Companys system is used in applications such as coronary angioplasty and the removal of pacemaker leads.

License Grant

The Company hereby grants to Licensee and its Affiliates, upon the terms and subject to the conditions set forth herein, a worldwide, exclusive right and sublicense under USC Patent Rights in the Field of Use.

License Property

Guardian Embolization Protection System patented technology for primary use in the neurointerventional and cardiology markets these markets focus on arteries and veins leading to the brain and those in the heart, and the removal of blockages in these veins and arteries.  The device is designed to prevent deadly embolisms during surgery to clear blocked arteries and prevent strokes and heart attacks.  The key to this device, known as the Guardian System, is a thin string of wire, really a metal tube not much larger in diameter than a human hair, with a marble-sized balloon attached toward the end.

Field of Use

'Field of Use' shall mean diagnostic and/or therapeutic devices used in the treatment or management of patients via the carotid artery or other arteries or veins.