Royalty Report: Medical, Device, Surgical – Collection: 165371

License Grant

The parties agree to an agreement that includes an exclusive option period for 90 days to evaluate the system and to enter into a License Agreement prior to the conclusion of the option period.  The Licensee will receive an Exclusive worldwide marketing and sales rights to the System utilizing Licensor Ultrasonic Liposuction technology (including Patent No. 5,419,761; and all improvement patents and foreign patents now or hereafter held by Licensor).  Licensor retains the rights to ultrasonic technologies for non-medical applications.

License Property

The System is referred to as a ultrasonic technology, and prototype manufacturing capabilities to design and assemble one or more ultrasonic systems specifically for use in performing the Procedure.

The Procedure is referred to as Liposuction or Liposculpturing which are medical devices specifically designed to improve the treatment of patients desiring a surgical procedure.

Patent No. 5,419,761  Liposuction apparatus and associated method

Field of Use

This agreement pertains to the medical industry relating especially to the specialties of Plastic and Reconstructive Surgery, Cosmetic Surgery and Surgical Dermatology.

License Grant

The parties now wish to enter into a new exclusive license agreement, as hereinafter set forth, whereby Licensor is to grant to Licensees the exclusive license within the Territories to market and sell the System now and hereafter produced by Licensor, during the term of this Agreement, solely for uses in body sculpting, liposuction, or lipscuplturing, and for no other use, and Licensee desires to enter into the Agreement and to assign its rights thereunder to Lysonix, while remaining fully liable for performance and payment of all obligations thereunder on the part of Lysonix.

License Property

Licensee to Receive Exclusive marketing and sales rights to the System in the Territories utilizing Ultrasonic Liposuction technology and know-how (including but not limited to Patent No. 5,419,761; and all improvement patents and patent applications and foreign patents relating to ultrasonic equipment) which pertain to the Procedure, however, Licensor retains the rights to exploitation of the System and its ultrasonic technologies for all other applications, medical and non-medical, other than body sculpting, liposuction and lipsculpturing.

Patent No. 5,419,761 – relating to ultrasonic equipment

Field of Use

This agreement pertains to the medical industry.

License Grant

The Licensor has an Agreement with the Licensee, which represents the development of an ultrasonic sergical device, and as a result of that joint development; patents are co-owned by both parties.

License Property

The Licensor designs, manufactures, develops and markets minimally invasive ultrasonic surgical device products.

Technology relates to laparoscopic products, which uses high frequency sound waves to coagulate and divide tissue for both open and laparoscopic surgery.

Field of Use

The AutoSonix ultrasound cutting and coagulating system is distributed and marketed for the Licensor through an agreement with the Licensee.

License Grant

Licensor grants Licensee a non-exclusive, world-wide license under the Licensed Patents to the Licensed Devices for Licensed Applications which would infringe any valid claim of the Licensed Patents.

License Property

Licensor is the owner of U.S. Patent No. 5,037,421 and U.S. Patent No. 5,147,354 both entitled 'Mid Infrared Laser Arthroscopic Procedure'.

LICENSED DELIVERY DEVICE shall mean any device that delivers the laser energy to a desired location which infringes one or more of the valid claims of the Licensed Patents.

Field of Use

LICENSED APPLICATION shall mean only orthopedic applications.

License Grant

The parties agree to amend the original agreement in connection with the proposed assignment of the Agreement of Party A. This amendment refers to the Licensor granting and does hereby grant to Licensee an exclusive, worldwide license (with right to sublicense) upon the terms and conditions hereinafter specified to evaluate, make, have made, use and sell in the Territory the Surgical Clip Technology, the Licensed Products, Licensed Processes and the Technical Information and including, without limitation, Improvements, Patents and Improvement Patents.  Licensor shall retain the right to permit the Inventors to use any of the Surgical Clip Technology, the Licensed Products, Licensed Processes and Technical Information, and including, without limitation, Improvements, Patents and Improvement Patents for human, neurosurgical procedures performed only by them in their existing neurosurgical practice and only until Licensee has developed a potential Royalty Product for clinical field testing. Such usage shall be without compensation to or liability on the part of Licensee; but all of the same shall be treated by Licensor as confidential Information of Licensee during the term of this Agreement.

License Property

Licensed Product means any apparatus, product, or device within the Surgical clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Surgical Clip Technology means all of the patented or unpatented, patentable or unpatentable, scientific and technical information and know-how created and developed by the inventors during or previous to this Agreement relating to arrangements and techniques for surgical clips and applicators therefor, and includes, but is not limited to, the technology shown, described, and claimed in the patents and patent applications set forth and incorporated herein.
4,586,503 – Surgical microclip
4,733,664 – Surgical clip, applier, and method
4,983,176 – Deformable plastic surgical clip

Patent or Patent Rights are equivalent terms and shall mean any patent issuing on a patent application existing as of the effective date drawn to an invention within the Surgical Clip Technology and covering a Licensed Product Licensed Product, a Licensed Process or Technical Information including, without limitation, the patents and patent applications set forth and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on any later filed continuation-in-part application directed to substantially the same type of invention as that claimed in any patent or patent application listed.

Royalty Products mean products sold by Licensee and by any affiliate and/or sublicensee which are either (a) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents; or (b) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents, in combination with one or more Licensee Inventions.

The terms Micro Clip, Mezzo Clip, and Macro Clip and relate only to sizes and dimensions of surgical clips.

Improvement Patent means any patent issuing on a patent application which comes into existence on or after the effective date drawn to an invention within the Surgical Clip Technology covering a Licensed Product, a Licensed Process or Technical Information and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on a later filed patent application which is a continuation in part of any of the aforesaid patent applications and directed to substantially the same type of invention as that claimed in any such patent application.

Licensee Improvement Patent shall mean any Improvement Patent filed following the assignment date that is not a Post-Assignment Licensor Improvement Patent.

Post-Assignment Licensor Improvement Patent shall mean any Improvement Patent filed following the Assignment Date and containing at least one claim pertaining to an invention conceived in whole or in part by Licensor following the assignment date.

Licensed Process means any process, method, or technique within the Surgical Clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Field of Use

This agreement pertains to the medical industry relating to surgical clips for joining vessels and other surgical products, including wound closure products.

License Grant

Licensor agrees to grant and does hereby grant to Licensee an exclusive, worldwide license (with right to sublicense) upon the terms and conditions hereinafter specified to evaluate, make, have made, use and sell in the Territory the Surgical Clip Technology, the Licensed Products, Licensed Processes and the Technical Information and including, without limitation, Improvements, Patents and Improvement Patents.  Licensor shall retain the right to permit the Inventors to use any of the Surgical Clip Technology, the Licensed Products, Licensed Processes and Technical Information, and including, without limitation, Improvements, Patents and Improvement Patents for human, neurosurgical procedures performed only by them in their existing neurosurgical practice and only until Licensee has developed a potential Royalty Product for clinical field testing. Such usage shall be without compensation to or liability on the part of Licensee; but all of the same shall be treated by Licensor as confidential Information of Licensee during the term of this Agreement.

License Property

Licensed Product means any apparatus, product, or device within the Surgical clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Surgical Clip Technology means all of the patented or unpatented, patentable or unpatentable, scientific and technical information and know-how created and developed by the inventors during or previous to this Agreement relating to arrangements and techniques for surgical clips and applicators therefor, and includes, but is not limited to, the technology shown, described, and claimed in the patents and patent applications set forth and incorporated herein.
4,586,503 – Surgical microclip
4,733,664 – Surgical clip, applier, and method
4,983,176 – Deformable plastic surgical clip

Patent or Patent Rights are equivalent terms and shall mean any patent issuing on a patent application existing as of the effective date drawn to an invention within the Surgical Clip Technology and covering a Licensed Product Licensed Product, a Licensed Process or Technical Information including, without limitation, the patents and patent applications set forth and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on any later filed continuation-in-part application directed to substantially the same type of invention as that claimed in any patent or patent application listed.

Royalty Products mean products sold by Licensee and by any affiliate and/or sublicensee which are either (a) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents; or (b) Licensed Products and/or a Licensed Process which are covered by one or more valid, enforceable patent claims in or which issue on or from the Patents or Improvement Patents, in combination with one or more Licensee Inventions.

The terms Micro Clip, Mezzo Clip, and Macro Clip and relate only to sizes and dimensions of surgical clips.

Improvement Patent means any patent issuing on a patent application which comes into existence on or after the effective date drawn to an invention within the Surgical Clip Technology covering a Licensed Product, a Licensed Process or Technical Information and any reissue, reexamination, revalidation or registration patents and patents of addition based thereon and any later filed divisional, continuation, or reissue applications claiming priority therefrom and any patents issuing on said applications, and also any patent issuing on a later filed patent application which is a continuation in part of any of the aforesaid patent applications and directed to substantially the same type of invention as that claimed in any such patent application.

Licensed Process means any process, method, or technique within the Surgical Clip Technology which includes or encompasses intellectual property rights which will be or have been transferred from Licensor to Licensee under this Agreement.

Field of Use

This agreement pertains to the medical industry relating to surgical clips for joining vessels and other surgical products, including wound closure products.

License Grant

The Company and an executive of the Company entered into a Royalty Agreement wherein the Company agreed to pay the executive a royalty on a product-by-product basis for certain proprietary information and inventions that were patented during his employment with the Company.

License Property

Proprietary information and inventions include but not limited to the products such as Lucent Lateral Interbody Implant System, the Lucent XP Expandable Interbody Device System, the Clutch ISP Posterior Fixation System, the Karma Fixation System, the Vertu Anterior Stand-Alone System and Mosaic devices.

The product portfolio addresses a broad spectrum of spine surgery procedures and consists of innovative spinal fixation systems (implantable hardware systems that are mechanically attached to the spine and provide stability), interbody implants (devices implanted between the vertebral bodies of the spine), surgical instruments (instruments used to prepare the spine and implant our devices) and biologics (allograft or synthetic biomaterials intended to augment or replace the normal capacity of such tissue in the body).

“Product Line” shall mean each of the following product categories, with each understood to specifically contain and be solely composed of the individual products and parts set forth on Schedule A (i) Mosaic, (ii) Vertu, (iii) Lucent Lateral, (iv) Lucent Expandable, (v) ISP (Clutch), and (vi) Zip Tie (Karma).

Field of Use

The field of use is for the procedures used in surgery with reduced trauma to the muscles and soft tissues, less blood loss, smaller incisions, shorter procedure time, reduced hospitalization, lower post-operative medication use, faster patient recovery and other benefits for patients and surgeons.

The Company is a medical device company focused on the design, development and commercialization of a comprehensive portfolio of systems, products and technologies for spine surgery procedures, with a strategic focus on minimally invasive surgery (“MIS”) procedures.