Royalty Report: Medical, Device, Diagnostic – Collection: 28487

License Grant

The Licensor granted the Licensee a non-exclusive license agreement for the use of the patent rights and technology as they relate to cervical and ovarian cancer.

License Property

The Company agreed to settle an arbitration proceeding instituted by anther party against the Company through the transfer to the other party of certain patents, patent applications and other intellectual property rights relating to the AcCell technology.

The AcCell product is a computer-aided automated microscopy instrument designed to help medical specialists examine and diagnose specimens of human cells.

U.S. Patent 6,535,626; 6,430,309; 6,285,498; 6,148,096; 6,151,161; 6,118,581; 6,091,842; 6,081,740; 5,999,844; 5,963,368; 5,930,732; 5,833,794; 5,690,892; 5,077,806; 5,073,857

Field of Use

Licensed Field shall mean the field of products designed, developed, tested, manufactured, distributed, marketed, approved, sold, provided, and/or used exclusively for the screening of cervical or ovarian cancer which require the incorporation of  a fluorescent probe as its primary probe,  or which may incorporate other fluorescent or non-fluorescent probes, and in which the assay itself (a procedure employing one or more reagents which determines the biological state of a clinical specimen comprised of cells or tissues) is primarily fluorescent.

Licensee have designed and manufactured the AcCell(TM) computer-aided automated microscopy instrument and the AcCell Savant(TM), an instrument that includes an AcCell instrument and software and which collects quantitative cellular information used in support of a diagnostic process.

Licensee is a life sciences company engaged in the design, development and commercialization of cost-effective screening systems to assist in the early detection of cancer.

License Grant

The Company is the exclusive licensee of certain patented technology used in the ThinPrep System.

The Company’s ThinPrep® System allows for the automated preparation of cervical cell specimens on microscope slides for use in cervical cancer screening, as well as for the automated preparation of other cell specimens on microscope slides for use in non-gynecological testing applications.

License Grant

Each Party shall have the right to use and practice the Developed Technology in Non-Product Fields.

Each Party shall have the right to use Developed Technology in the Product Field subject to the terms and conditions set forth in this agreement.

Each party shall retain sole ownership of the intellectual property reduced to practice by its personnel outside of the scope of the Project.

License Property

Developed Technology includes but not limited to Apparatus and Method for Determining Tissue Characteristics, Multi-Modal Optical Cancer Diagnostic System and the Method for Protecting a Fiber Optic Probe and the Resulting Fiber Optic.

U.S. Patent #5,203,328 – Apparatus and methods for quantitatively measuring molecular changes in the ocular lens
U.S. Patent #5,582,168 – Apparatus and methods for measuring characteristics of biological tissues and similar materials

Field of Use

Product Field means any device or method for diagnosing cervical cancer that uses [optical spectroscopy to  measure reflectance and / or fluorescence from whole cells, intercellular material, or tissue ('target') in vivo] to reveal the morphological, biochemical, or other characteristics of the target.

Non-Product Field means all fields of use of the Developed Technology other than the Product Field.

License Grant

Licensor appoints Canadian Licensee and each of its Affiliates as (i) a distributor, developer, marketer, manufacturer, and seller of the Kits in the Territory; and (ii) a distributor, marketer and reseller of the Licensor Instruments in the Territory, the whole in accordance with prices, terms and conditions determined by Licensee, in its discretion; provided, however, that the Beads are sold only as part of Kits, and further provided that Kits are designed and sold solely for use within the Field(s) and subject to the End User restrictions and provided such Licensor Instruments and Beads are not purchased from a then-existing licensee of Licensor technology. Licensee shall have the right to advertise the Beads and Licensor Instrument under the trademarks, marks, and trade names of Licensor set forth.

License Property

Beads means fluorescently-dyed carboxylated microsphere beads supplied by Licensor for use with Licensor Instruments and made available by Licensor generally to customers for use in tests as specifically set forth in this Agreement.

Kit means the combination of (i) Beads conjugated to biological reactants, (ii) Beads conjugated to universal sequences, (iii) standards for use with (i) and (ii), and (iv) other ancillary materials (e.g. buffers) intended for use with (i) and/or (ii) and required for performance of Tests. A “Kit(s)” must contain all of the foregoing components and must be branded by Licensee in accordance with this Agreement.

Licensor Instrument means a laser-based fluorescent analytical test system consisting of Licensor’s instrumentation and the Software, with computer components, as specifically identified as Licensors 200 IS 2.3 Total System.

Licensor Intellectual Property Rights means Patent Rights, copyrights and all other intellectual property rights that Licensor has or acquires during the Term in connection with the Beads or the Licensor Instruments, by way of sale, license or otherwise, but shall exclude the intellectual property rights licensed to Licensor under the License Agreement between the Parties dated March 28, 2001.

Trademarks
Flowmetrix®
Luminex®
Lumavidin®
LabMAP®
xMAP®
Luminex® 100TM
Luminex® 100TM IS
Luminex® 200TM
Suspension Array TM
Luminex® XYPTM
Luminex® SDTM
Luminex® HTSTM
Luminex® FlexMAPTM
Luminex® SeroMAPTM

Field of Use

Field One means the field of DNA-based In-Vitro Diagnostics. DNA-based In-Vitro Diagnostics means DNA-based testing used for clinical diagnosis within the Territory for the quantitative or qualitative testing or measurement of human samples to assist clinicians (i) in determining the predisposition and/or prediction and/or diagnosis and/or carrier screening, of familial and/or other genetic related diseases or conditions; (ii) in the diagnosis or epidemiological surveillance or screening, of infectious related diseases or conditions; (iii) in determining the predisposition and prediction and/or diagnosis of cancers of all types, including solid and lymphatic.

Field Two means the field of Custom Swine SNP Assays for Maxxam Analytics. Custom Swine SNP Assays for Maxxam Analytics means custom swine assays sold to Maxxam, incorporating sequences/SNPs provided to Licensee by Maxxam Analytics, a Canadian corporation, with its principal offices at 6740 Campobello Rd., Mississauga, Ontario LSN 2L8, Canada.

Licensees research and development efforts and product pipeline are focused in the fields of human genetic disorders, personalized medicine (pharmacogenomics or PGx – the use of genetic testing to help determine the prescription of drugs) and infectious diseases.

License Grant

The University grants the right and worldwide, non-exclusive license, with the right to grant sublicenses, in the Field to make, have made, use, sell, offer for sale, and import the Licensed Technology and to practice under the Patent Rights to the end of the term.

License Property

University is the joint owner by assignment with Carnegie Mellon University of certain Patent Rights,

The Patent Rights are titled A Method and Apparatus for Holding Cells.

Field of Use

The Field shall mean human and veterinary cellular imaging in the Cancer Diagnostics Field and the Drug Development Field.

The Cancer Diagnostics Field shall mean diagnostic assays to detem1ine therapeutic efficacy of then-available chemotherapeutics or biologics on cancer or screening assays for the detection of cancer.

The Drug Development Field shall mean research conducted to measure the effect of preclinical, clinical or commercial stage cancer agents on primary or early passage cell strains.