Royalty Report: Medical, Device, Surgical – Collection: 243456

License Grant

Licensor hereby grants to Licensee the worldwide right and license, without the right to sublicense, in the Field under the Patent Rights to make, have made, use, lease, sell, offer for sale and import the Licensed Products until the expiration of the last to expire of the Patent Rights, unless this Agreement shall be sooner terminated according to the terms hereof.

License Property

Licensed Product means any device for sealing of a percutaneous puncture in a blood vessel or organ in the Field

(i)      that is covered in whole or in part by an issued, unexpired valid claim or a pending claim contained in the Patent Rights in the country in which any such product or part thereof is made, used, sold or imported; and/or
(ii)     that is manufactured by using a process or is employed to practice a process which is covered in whole or in part by an issued, unexpired valid claim or a pending claim contained in the Patent Rights in the country in which a process is used or in which such product or part thereof is used, sold or imported; and/or
(iii)    that incorporates Polymer.

Polymer means the poly-3-hydroxybutyrate-co-4-hydroxybutyrate copolymer (PHA3444) manufactured by or for Licensor and offered for sale by Licensor to its customers. All current Polymer compositions are listed below, which shall be updated from time to time by Licensor to include all future improvements to and compositions of PHA3444 developed by Licensor.

Poly-3-hydroxybutyrate-co-4-hydroxybutyrate (PHA3444)

US Patent No. 5,229,279 'Method for producing novel polyester biopolymers' by Peoples and Sinskey, issued July 20, 1993.
US Patent No. 5,245,023 'Method for producing novel polyester biopolymers' by Peoples and Sinskey, issued September 14, 1993.
US Patent No. 5,250,430 'Polyhydroxyalkanoate polymerase' by Peoples and Sinskey, issued October 5, 1993.

Field of Use

Field means medical devices for sealing of a percutaneous puncture in a blood vessel or organ, but specifically excluding pericardial and intracardiac (any construct in contact with the inner compartment of the heart) patches and small and large diameter vascular grafts to repair, replace or bypass compromised blood vessels.

License Grant

University hereby grants to Company an exclusive license in the Field under its interest in and to the Licensed Patents, to make, use, offer to sell, sell and import Licensed Products during the Term. No right to sublicense the Licensed Patents are granted under this Agreement.

License Property

Licensed Patents shall mean the patent applications and issued patents listed hereto and made a part hereof; any divisions, continuations (but excluding continuations-in-part) or patents issuing thereon or reissues thereof; and any and all United States and foreign patents and patent applications corresponding thereto, all to the extent controlled by University.

Application #14/256,540 – System and Apparatus for Endoscopic Deployment of Robotic Concentric Tube Manipulators for Performing Surgery
Application #62/236,187 – Hand-held Concentric Tube Manipulator Actuation Unit and Mechanism for Surgery

Licensed Product shall mean (i) any product, process, or service in the Field (a) the making, use, sale, offer to sell, or import of which is covered by (in whole or in part), or absent the license granted herein would infringe, one or more Valid Claims, or (b) that is made, uses, or is used by or in a process that is covered by (in whole or in part), or absent the license granted herein would infringe, one or more Valid Claims, or (ii) a service performed using a product or process described in subsection (i)(a) or (b) above.

Field of Use

This agreement pertains to the medical industry in the field that shall mean human surgical applications.

License Grant

The Companies desire to enter into an agreement and licenses to settle the Minnesota Action and the Minnesota Counterclaims upon the terms and conditions set forth herein.

License Property

Licensed Product shall mean any vascular closure device (U.S. Patent No. 5,275,616 (the ‘616 patent), U.S. Patent No. B1 5,275,616, reexamination certificate, (the B1 ‘616 patent), U.S. Patent No. 5,591,205 (the‘205 patent), U.S. Patent No. 5,601,602 (the ‘602 patent), and U.S. Patent No. 5,716,375).

License Grant

Licensor has been advised that Licensee will assign the Patent Sublicense Agreement to a new Licensee. The assignment provisions of the Sublicense Agreement shall continue in full force with changes to the royalty amount.

Per the Patent Sublicense Agreement,, Licensor hereby grants to Licensee a personal, nonexclusive sublicense under the Sublicensed Patent to make, have made for its own account, use, and import Licensed Products, and to sell, lease, offer for sale and otherwise transfer Licensed Products as hereinafter provided. Licensee or an Affiliate of Licensee may sell or transfer Licensed Products directly to End Users. Licensee or, in the event that Licensee first sells or transfers Licensed Products to any Affiliate of Licensee, such Affiliate, may also sell or transfer Licensed Products to Distributors for resale to End Users; provided, however, that any such Distributor must resell the Licensed Products to End Users in unchanged form, and provided further, that there shall be no more than one distribution channel for Licensed Products (i.e., one of Licensee or an affiliate of Licensee or a Distributor) in any specific country in the world. This sublicense specifically excludes any right of Licensee (or any Affiliate or Distributor of Licensee) to sell or otherwise transfer Licensed Products to OEM Customers.

License Property

Sublicensed Patent shall mean United States Patent No. 6,436,135 issued to David Goldfarb, MD. on August 20, 2002, and any reissues and/or any reexaminations thereof.
United States Patent No. 6,436,135 – Prosthetic vascular graft

Field of Use

The Licensee's EndoFit Aortic Stent Graft is a line of endovascular grafts used to treat aortic aneurysms, a weakening and ballooning of the aorta.

Field of Use shall mean the field of endovascular products i.e., medical products that are placed within the arteries or veins of the human body. The Field of Use expressly excludes any surgical prosthetic device intended in whole or in part to replace any portion of any artery, vein or other vessel or conduit within the human body, including but not limited to bypass grafts, dialysis grafts, aortic grafts or thoracic grafts.

License Grant

The purpose of this amendment is to (i) transfer the rights and obligations of Party A to Party C, (ii) amend the royalty payment provision set forth in the Agreement, and (iii) amend the termination provision set forth in the Agreement.

Accordingly, this letter confirms the assignment of the rights and obligations of Party A to Party C and acknowledges the consent thereto by Party B.

License Property

Royalty Obligations means Net Sales” means the gross amount received on the sale of Royalty Products by Licensee.

Royalty Product means a product developed and sold by Party C that is covered by a Valid Claim of an Unexpired patent that is included within the Patent Rights.

Patent Right or Patent Rights means (x) U.S. Patent No. 6,241,761 (Stented Grafts for Coupling Vascular Members) issued on June 5, 2001, and U.S. Patent No. 6,241,764 (Stented Grafts Coupling Vascular Members) issued on June 5, 2001 (including any divisions, continuations, reexaminations, reissue substitution applications thereof and foreign applications based thereon) and (y) any and all patents issuing therefrom and extensions thereof.

Field of Use

This agreement pertains to the medical industry relating to stented grafts for coupling vascular members.

License Grant

The Licensee has entered into an agreement with the Licensor, an individual, who shall provide technical assistance to the Licensee upon request,  to enable the Licensee to manufacture and market the Products or the Licensor's improvements thereto and to prosecute and enforce any Patent Rights.

License Property

The royalty obligations shall continue in full force for as long as the vascular graft, vascular plug, or vascular trap is covered by, or manufactured in accordance with the method recited in, one or more valid and enforceable claims of a patent issuing from or claiming priority to U.S. Patent No. 6,123,715.

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.