Royalty Report: Diagnostic, Medical, Device – Collection: 28798

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 13

Description

This collection of transactions and supporting information was developed using our AI algorithm to curate similar royalty reports into a cohesive collection to support your licensing, transfer pricing or other transaction scenarios where documented royalty rates and/or deal terms are important.
Category: Technology Licenses
Created On: 2022-04-28
Record Count: 13

Primary Industries

  • Diagnostic
  • Medical
  • Device
  • Scientific & Technical Instruments
  • Drugs
  • Assay
  • Biotechnology
  • Genome
  • Pharmaceuticals
  • Antibody
  • Immune
  • Proteins
  • Supply
  • Surgical
  • HIV / AIDs
  • Test/Monitoring
  • Security
  • Specialty
  • DNA
  • Molecular
  • Diagnostic Substances

IPSCIO Report Record List

Below you will find the records curated into this collection.  This summary includes the complete licensed property description so that you can review and determine if this collection covers the topics, technology or transaction type that is relevant for your needs.  The full report will include all relevant deal data such as the royalty base, agreement date, term description, royalty rates and other deal terms.  For reference, here is a sample of a full IPSCIO curated royalty rate report: Sample Report

IPSCIO Record ID: 28798

License Grant
Licensor grants to Licensee and its Affiliates a limited non-exclusive, personal and non-transferable, right and subLicense under the Licensed Patents, to make, have made for its own use and sale, use, offer to sell, sell and import product within the field and within the territory, and to practice the methods claimed in the Licensed Patents in connection with such product, and to extend to its customers purchasing product the right to use and sell the product purchased and to practice the methods claimed in the Licensed Patents in connection with such product.
License Property
Licensed Patent shall mean United States Patent Nos. 5,073,484, 5,654,162 and 6,020,147 and any patents resulting from a re-examination or reissue from any of the foregoing patents.

The patents are for a device for detecting the presence of an analyte in a carrier liquid suspected of containing said analyte, which device comprises a liquid permeable solid medium which defines a path for fluid flow capable of supporting capillary flow, along which are a site for application of the carrier liquid, a diffusively bound labeled reactant specific for the analyte or a chemical moiety which is itself the reaction product of the analyte with another chemical moiety, said labeled reactant being capable of flow along the flow path, wherein said diffusively bound labeled reactant and said analyte or chemical moiety are of a specific ligand-anti ligand pair, and one or more zones spaced along said flow path, each zone having a predetermined amount of a reactant bound to it which is specific for either the analyte or a chemical moiety which is itself the reaction product of the analyte with another chemical moiety.

Wherein said device can be used by contacting a carrier liquid with said application site in such a manner that permits said liquid to pass along the flow path by capillary flow such that analyte or reaction product of the analyte with another chemical moiety becomes bound to both the labeled reactant and the reactant bound to the solid medium;  and wherein the labeled reactant, with the reactant bound to the solid medium, sandwiches the analyte or a chemical moiety which is itself the reaction product of the analyte with another chemical moiety.

Lateral flow tests also known as lateral flow immunochromatographic assays, are simple devices intended to detect the presence (or absence) of a target analyte in sample (matrix) without the need for specialized and costly equipment, though many lab based applications exist that are supported by reading equipment.[2] Typically, these tests are used for medical diagnostics either for home testing, point of care testing, or laboratory use.

IPSCIO Record ID: 5650

License Grant
Licensor hereby grants a non-exclusive, non-transferable, right and sublicense under the Licensed Patents, to make, have made for its own use and sale, use, offer to sell, sell and import product within the field.
License Property
A method and apparatus for the quantitative determination of an analyte in a liquid employs a liquid-permeable solid medium defining a liquid flow path.  The medium includes a number of reaction-containing reaction zones spaced apart along the flow path and in which reaction occurs with the analyte or an analyte derivative (e.g., a labeled analyte) to result in the formation of a predetermined product.  Detector means are employed to detect analyte, analyte derivatives, reactant or predetermined product in the reaction zones, the number of such zones in which such detection occurs indicating the amount of analyte in the liquid.

Licensed Patents shall mean United States Patent
5,073,484,  5,654,162 and 6,020,147

Field of Use
Field shall mean human in vitro diagnostics.

IPSCIO Record ID: 286052

License Grant
Licensor grants to a worldwide, nonexclusive, nontransferable right and license, with no right to grant any sublicenses, to make, have made, use, and sell Licensed products. Accordingly, the license includes the right of Licensee and purchasers of its Licensed products to practice methods covered by the Licensed patents and Licensed patent applications only by using such licensed products.
License Property
Licensor owns all rights to United States Patent titled Heterogenous chemiluminescent specific binding assay, and, its corresponding foreign-filed counterparts covering certain chemiluminescent specific binding assay methods and reagent systems.

Licensed Product shall mean a product for performing a Chemilumniescent Immunoassay only, and no other product, which when made, used, or sold would infringe a claim of a Licensed patent.

Chemilumniescent Immunoassay shall mean a liquid-phase heterogeneous chemiluminescent assay employing a chemiluminescent reactant as label and wherein the substance or condition to be determined, i.e., analyte of interest, is determined by binding thereto of an antibody or other specific binding protein.

Field of Use
Licensee intends to develop and market instruments and reagent systems for performing chemiluminescent immunoassays.

IPSCIO Record ID: 203464

License Grant
The Licensor of England grants to the Licensee a non-exclusive license under the Patent Rights in the Territory to make, use and sell Licensed Products.

Licensor grants to the Licensee a non-exclusive option to a license to make, use and sell Products Under Option. This option may be exercised on a per analyte basis at any time within the two (2) year period subsequent to the Effective Date of the Agreement, whereupon it will cease on a per analyte basis.

License Property
Licensed Product shall mean any device for qualitative or quantitative detection of the analytes Fetal Fibronectin, and, Interleukin 6 for Group B Strep and Chlamydia.

Products Under Option shall mean any device for qualitative or quantitative detection of the analytes Fetal Fibronectin, and, Interleukin 6 for Group B Strep and Chlamydia.

Fetal fibronectin (fFN) is a fibronectin protein produced by fetal cells. It is found at the interface of the chorion and the decidua (between the fetal sac and the uterine lining). It can be thought of as an adhesive or 'biological glue' that binds the fetal sac to the uterine lining.

Field of Use
Fetal fibronectin (fFN) is used to test pregnant women who are between 22 weeks and 35 weeks of gestation and are having symptoms of premature labor. The test helps predict the likelihood of premature delivery. Many pregnant women experience symptoms that suggest preterm labor.

Licensee designs, develops, manufactures and markets innovative products for women’s health, with focus on reproductive healthcare, using proprietary technologies to predict preterm birth and assess infertility.

IPSCIO Record ID: 26324

License Grant
The Licensor grants a non-exclusive, non-transferable, non-sublicensable, worldwide, royalty-bearing license, under the Current Patents and Future Patents to make, use, offer for sale, import and sell (a) Licensed Products sold by Licensee under a Licensee Mark (and no Third Party Mark) in the Non-Retail Field; (b) HIV Products sold by Licensee under a Licensee Mark (and no Third Party Mark) in the Retail or Non-Retail Field; and (c) HIV Products sold by Licensee to any Third Party for re-sale in the Retail or Non-Retail Field by such Third Party under a Third Party Mark owned by such Third Party (“Re-Branded HIV Products”). The Licensee and Licensor are parties to a Settlement Agreement and Mutual Release pursuant to which certain litigation was settled and, among other conditions, the parties agreed that the Licensor would license or sub-license to Licensee certain patents.
License Property
The license covers (i) U.S. Patent Nos. 5,714,389, 5,989,921, and 6,485,982; (ii) U.S. Patent Application No. 11/035,047; (iii) any continuations or divisionals of such patents and patent applications, whether such continuations or divisionals are filed before or after the Effective Date; and (iv) any foreign counterparts of the patents and patent applications.
Field of Use
The patents relate to a FDA approved Lateral Flow HIV Test.

IPSCIO Record ID: 256960

License Grant
The Licensor grants to the Licensee, to the extent of Licensed Field 1 and 2 and the Licensed Territory, a nonexclusive commercial license to make, have made, use, import and sell Licensed Products and Licensed Services and practice Licensed Processes in the field of fiber optic detection. License Includes US Patent 9,123,520 and 10,119,937.
In Licensed Field 3 and the Licensed Territory the Licenses is an exclusive commercial license to make, have made, use, import and sell Licensed Products and Services and practice Licensed Processes.
License Property
US Patent #9,123,520;10,119,937 for fiber-optic sensing technology.
Field of Use
FIELD 1 means and is limited to explosives detection when combined with a quadrupole or ion trap mass spectrometer, or with an ion mobility spectrometer.

FIELD 2 means and is limited to illicit drug detection when combined with a quadrupole or ion trap mass spectrometer, or with an ion mobility spectrometer.

FIELD 3 means and is limited to chemical warfare agent detection when combined with a quadrupole or ion trap mass spectrometer, or with an ion mobility spectrometer.

IPSCIO Record ID: 2634

License Grant
The Licensor hereby grant to Licensee and its Affiliates an irrevocable license, without the right to sublicense, to make, use, sell, offer to sell, and/or import, products utilizing or incorporating the inventions claimed in the valid and enforceable claims of the Licensor's Portfolio of Lateral Flow Patents, including continuations, continuations in part and divisionals thereof.
License Property
The settlement agreement provides for a license to the Licensee of all current and future patents of the Licensor and its affiliates which embody lateral flow technology for all diagnostic products other than for cardiology testing and for consumer/over-the-counter women's health (except that diagnostics for women's infectious diseases are within the licensed field of use).

The suit was filed in the U.S. District Court, Southern District of California alleged infringement of our U.S. Patent No. 4,943,522.

Lateral flow test devices include our tests for pregnancy, strep, H pylori, and Chlamydia.

Field of Use
The Licensor is a leading global developer of advanced diagnostic devices and is presently exploring new opportunities for its proprietary electrochemical and other technologies in a variety of professional diagnostic and consumer-oriented applications including immuno-diagnostics with a focus on women's health, cardiology and infectious disease.

IPSCIO Record ID: 372490

License Grant
For the Exclusive License in Licensee e-Detection, Licensor grants an exclusive, even as to Licensor, but subject to the license back to Licensor, right and license, under the under the Licensor IP Rights and Licensor’s interest in Joint Collaboration IP Rights, to make, have made, use, sell, offer for sale, and import in the Territory those Licensed Products utilizing Licensee e-Detection for use in the Field.

For the Exclusive License in Molecular Analyte Field, Licensor grants an exclusive, even as to Licensor, but subject to the license back to Licensor, right and license, under the under the Licensor IP Rights and Licensor’s interest in Joint Collaboration IP Rights, to make, have made, use, sell, offer for sale, and import in the Territory those Licensed Products utilizing Electrochemical Detection and capable of a throughput of 3 or more simultaneous samples for use in the Molecular Analyte Field.

For the Non-Exclusive License for Enzyme Labels, Licensor grants a non-exclusive right and license, under the under the Licensor IP Rights and Licensor’s interest in Joint Collaboration IP Rights, to make, have made, use, sell, offer for sale, and import in the Territory those Licensed Products utilizing Electrochemical Detection with an Electrochemical Label that is an enzyme and capable of a throughput of 3 or more simultaneous samples for use in the Protein Analyte Field.

Licensee shall have the option to obtain an exclusive right and license, under the Licensor IP Rights and Licensor’s interest in Joint Collaboration IP Rights, to make, have made, use, sell, offer for sale, and import in the Territory those Licensed Products utilizing Licensees e-Detection for use in the Other Analyte Field the Option.

License Property
Licensor has developed, and owns or controls certain intellectual property and other rights to, a fluidics technology using the electrowetting effect as a motive force for conducting droplet operations.

Licensee has developed, and owns or controls certain intellectual property and other rights to, technologies related to the electrochemical detection of analytes and to the use of electrochemical detection in in-vitro diagnostics.

Licensor Collaboration Inventions means those Collaboration Inventions that relate solely to Digital Microfluidics and Collaboration Inventions that are apparatuses or methods that relate solely to Digital Microfluidics.

Complex means a complex comprising a capture ligand coupled to an electrode surface, a target analyte, and an Electrochemical Label.

Diagnostic Testing means testing for the purpose of diagnosis, prognosis, monitoring, screening or predicting a disease or condition in a human, or selecting a therapeutic or prophylactic regimen; excluding screening of newborn infants for metabolic or other disorders in fields other than in the Molecular Analyte Field using Licensee e-Detection.

Digital Microfluidics means the control of the movement, including the transport, splitting, dispensing, merging or deforming, of droplets by electrical fields.

Licensees e-Detection means the detection of an analyte based on a Complex where the Electrochemical Label is detected using Electrochemical Detection.

Licensed Products means a product for use in Diagnostic Testing, including Instrument Licensed Products and Consumable Licensed Products.

Field of Use
The Field means the Protein Analyte Field and Molecular Analyte Field, and subject to exercise of the Option, the Other Analyte Field.

Protein Analyte Field means in-vitro Diagnostic Testing of samples from or derived from human subjects using Licensee e-Detection of a protein and/or peptide analyte.

Molecular Analyte Field means in-vitro Diagnostic Testing of samples from or derived from human subjects using Electrochemical Detection of a DNA, RNA or other nucleotide sequence analyte, excluding testing utilizing Sequencing.

Other Analyte Field means in-vitro Diagnostic Testing of samples from or derived from human subjects using Licensees e-Detection of an analytes other than
— proteins and/or peptides and
— DNA, RNA or other nucleotide sequences.

IPSCIO Record ID: 2218

License Grant
The Licensee was granted a non-exclusive, non-transferable right and license under the Licensed Patents, without the right to sublicense, to make, have made for its own use and sale, use, offer for sale, sell, and import Product and to practice the methods claimed in the Licensed Patents in connection with such Product, and to extend to its customers purchasing Product the right to use and sell the Product purchased and to practice the methods claimed in the Licensed Patents in connection with such Product, all of the foregoing limited expressly to the field of human In Vitro manually formatted immunodiagnostic assays.
License Property
The Licensed Patent(s) shall mean US Patent No. 4,703,017. Patents relate to Rapid Manual Tests for hCG and LH analytes.
Field of Use
Field of Use shall mean human.

IPSCIO Record ID: 286050

License Grant
The Licensor of England grants a non-exclusive license, without sublicensing rights, under Licensed Patents to make, have made, use, and sell or otherwise dispose of Licensed Products bearing the name and trademark of Licensee prominently displayed thereon to End-Users, Authorized Distributors and Royalty-Bearing Distributors.
License Property
Licensor has the rights for the US patent titled Method of performing assay for analyte in liquid medium, as well as corresponding patents and patent applications applied for in the European Patent Office and in the United Kingdom, France, Germany, and Japan.

Class A Licensed Products shall mean any human, in vitro diagnostic immunoassay products, including but not limited to instruments, instrument kits, systems, assays or chemical products, but excluding assay products using genetic probe reagents or a combination of immunoassay reagents and genetic probe reagents, employing a labelled reagent to form a chemiluminescent label and another reagent which is bound to magnetically attractable particles, the manufacture, use or sale of which would, but for the license granted in Article II hereof, infringe one or more of the License Patents.

Class B Licensed Products shall mean any human, in vitro diagnostic genetic probe products, including but not limited to instruments, instrument kits, systems, assays, or chemical products,  including assay products using a combination of genetic probe reagents and immunoassay reagents, employing a labelled reagent to form a chemiluminescent label and another reagents which is bound to magnetically attractable particles, the manufacture, use or sale of which would, but for the license granted in Article II hereof, infringe one or more of the Licensed Patents.

Licensed Products shall mean Class A Licensed Products and Class B Licensed Products.

Field of Use
The field of use is for the conduct of human, in vitro diagnostic immunoassays and genetic probe assays for detection of an analyte in a human sample contained in a liquid medium characterized by the use of a labelled reagent which forms a chemiluminescent label system and another reagent bound to magnetically attractable particles.

IPSCIO Record ID: 27725

License Grant
The Japanese Licensor grants to Licensee the non-exclusive license to develop, manufacture, sell and have sold the Licensee Products incorporating Licensor's Technology in Non-Pacific Rim Territories for the Medical Diagnostics Field.
License Property
Chip means a substrate which contains a grating pursuant to the Grating SPR Technology and is coated with a conductive surface.

Flow Cell means a device which allows liquids to flow through it and consist of a Chip and has an optically clear cover slip which is attached to the Chip by a means that allows for fluid flow there through.

Grating SPR Technology means the use of thin conductive films on a surface or surfaces of a grating or other diffracting substrate to conduct chemical analysis.

PATENT NO.                          TITLE                        JAPANESE PATENT NO.
—————————————————————————————-
  US 4,931,384           Optical Assay Technique (Merlin I)             JP 1903195
  US 5,118,608           Optical Assay Technique (Merlin I)             JP 2502222
  US 4,882,288           Assay Technique and Equipment                  JP 1928364
                         (Merlin II)
  US 4,992,385           Polymer-Coated Optical Structures              JP 2528134
                         and Methods of Making and Using                JP 2592588
                         the Same (Cellulose Nitrate Films)

  US 4,828,387           Film Measuring Device and Method               JP 2511057
                         with Internal Calibration to
                         Minimize the Effect of Sample
                         Movement (Calibration Notches)
  US 5,310,686           Polymer-Coated Optical Structures              JP 2710243
                         (Sensor Using Photoresist)
  CA 1,302,875           (Waveguide Sensor)                             JP 2572829
  US 6,093,536           (Enhanced SPR Assay)                           JP 2073383

Field of Use
This agreement pertains to the medical diagnostics field.  Medical Diagnostics Field means those fields, the applications and products which under current laws and regulations of the United States would require approval of the United States Food and Drug Administration if the application or product incorporating the application were sold for clinical use in the United States.

IPSCIO Record ID: 233453

License Grant
Licensor grants a worldwide, sub licensable, non-exclusive license under all right, title and interest in, to and under the Ramsey Patent Family to make, use, sell, offer to sell, and import Licensee Licensed Products in the Licensee Field of use.

Licensor grants a worldwide, excluding the right to make and use non-polymeric Chips with less than sixteen electrophoretic channels in Japan, non-exclusive limited license under all of its right, title and interest in, to and under the Ramsey Patent Family solely to make and use microfluidic Chips which fall outside of  the definition of Licensee LabCards, but which Chips would meet that definition but for the fact that they  are not constructed from a polymer or any other material that is not silica based, Licensee R&D Chips, solely for the purpose of research and development of products and technologies to be commercialized by Licensee itself, or in conjunction with others, but excluding any research and development performed on behalf of, or for the benefit of, other parties, including as part of a service business or contract research and development business.

License Property
Licensee Licensed Product shall mean a Licensee Licensed Instrument and/or an Licensee Licensed LabCard, as applicable.

The Ramsey Patent Family shall mean, to the extent of Licensors rights under to, and under the following, United States Patent No. 6,001,229;  any  Patent that directly claims priority to the 229 Patent, e.g., as a continuation, in-whole or in-part, divisional,  reexamination, or reissue of the 229 Patent; and any Patent that directly or indirectly claims priority to the 229 Patent, e.g., any Patent claiming priority to one or more Patents that directly or indirectly claim priority to the 229 Patent, and any Foreign Counterparts to any of the foregoing. The Ramsey Patent Family shall include, without limitation, United States Patent No. 6,001,229, 5,858,195, 6,010,607, 6,010,608 and 6,033,546 and any continuations, in whole or in part, divisions, reissues, reexamination, renewals, substitutions,  confirmations, registrations, revalidations, revisions, extensions and Foreign Counterparts of any of the foregoing Patents. For clarification, a Patent shall be deemed a Patent in the Ramsey Patent Family only to the extent and only so long as Licensor has rights to sublicense rights in, to and under the Ramsey Patent Family with respect to such Patent.

Licensee Licensed Product shall mean an Licensee Licensed Instrument and/or an Licensee Licensed LabCard, as applicable.

Licensee Licensed Instrument shall mean an instrument, add-on module, software or hardware including those specifically identified in the agreement, but excluding, in any event, any microfluidic Chip, (a) the manufacture, use, in the manner intended, or sale of which, by Licensee or any third party, would infringe a Valid Claim of a Patent in the Ramsey Patent Family in the country of such manufacture, use or sale, absent a license, or (b) that is designed or used, in the manner intended, by Licensee or any third party, to perform a method that would infringe a Valid Claim of a Patent in the Ramsey Patent Family in the country where such method is performed, absent a license.

Licensee Licensed LabCard shall mean a microfluidic chip or card, regardless of its size or thickness (Chip), constructed from a polymer or any other material that is not silica based, regardless of weather such Chip contains a Double T Structure or a Cross Structure or has covered or uncovered channels including but not limited to the types of Chips illustrated, (a) the manufacture, use, in the manner intended, or sale of which, by Licensee or any third party, would infringe a Valid Claim of a Patent in the Ramsey Patent Family in the country of such manufacture, use or sale, absent a license, or (b) that is designed or used, in the manner intended,  by Licensee or any third party, to perform a method that would infringe a Valid Claim of a Patent in the Ramsey Patent Family in the country where such method is performed, absent a license.

Field of Use
The Licensee field of use shall mean any and all fields, except for analysis of nucleic acids for diagnostic applications and non-electrophoretic means of gene discovery.

The Parties have agreed to settle all patent litigation and cross-license their microfluidic lab-on-a-chip systems. The devices are used to speed sampling in bioanalysis and genomic and pharmaceutical research.

Licensor's LabChip technology enables experiments that ordinarily require laboratories full of equipment and people to be conducted on a chip small enough to fit in the palm of a child's hand. The chip contains a network of microscopic channels that move fluids and chemicals electrostatically in order to perform experiments.

IPSCIO Record ID: 383575

License Grant
Licensor of Switzerland grants a non-exclusive and non-transferable license, without the right to sublicense, under the Licensed Patents in the Territory with the rights to
—  incorporate Licensed Products into Licensee’s Complete Diagnostic Kits,
—  make, offer to sell and sell such Complete Diagnostic Kits in the Licensed Field, and
—  convey with the sale of such Complete Diagnostic Kits the right to use the Complete Diagnostic Kits under the Licensed Patents in the Licensed Field. Licensee’s right to use Complete Diagnostic Kits includes the right to perform evaluations and validations of Complete Diagnostic Kits, but specifically does not include the right to use Complete Diagnostic Kits for the performance of diagnostic services or testing, except that Licensee may use Complete Diagnostic Kits as End Users.
License Property
Licensor owns or controls certain Licensed Patents relating to chemically modified thermostable DNA polymerases, also known as Hot Start Enzymes, for use in polymerase chain reaction, or PCR, technology.

Licensed Product means a chemically modified thermostable DNA polymerase, the manufacture, use or sale of which is covered by one or more Valid Claims of the Licensed Patents, sold by Licensor, directly or through its distributor, or made and sold by a supplier licensed to make and sell the same.

Complete Diagnostic Kit means a Licensee manufactured and trademarked kit covered by one or more Valid Claims of the Licensed Patents, not covered by any Licensor patents other than the Licensed Patents and dedicated for use for PCR in the Licensed Field, and which Licensee manufactured and trademarked kit is comprised of, at a minimum, the essential active reagents used in the practice of PCR for nucleic acid testing in the Licensed Field. For the avoidance of doubt and for the sake of clarification, ASRs, Analyte Specific Reagents, are not Complete Diagnostic Kits.

U.S. Patent No. 5,677,152 — Issued October 14, 1997 (process and kit claims only) Nucleic Acid Amplification Using a Reversibly Inactivated Thermostable Enzyme

U.S. Patent No. 5,773,258 — Issued June 30, 1998 (process and kit claims only) Nucleic Acid Amplification Using a Reversibly Inactivated Thermostable Enzyme

U.S. Patent No. 6,127,155—Issued October 3, 2000 (reaction mixture claims only) Stabilized Thermostable Nucleic Acid Polymerase Compositions Containing Non-Ionic Polymeric Detergents

Field of Use
The Licensed Field means the field of use consisting of products or processes for the measurement, observation or determination of a disease, disease state or genetic predisposition to a disease, by detecting, quantitating, distinguishing and/or monitoring nucleic acids in samples of material originating from a human being for the medical management for that human being, but excluding
—  human identity testing, and
—  the following human disease targets Hepatitis A Virus, Hepatitis B Virus, Hepatitis C Virus, Human Immunodeficiency Virus, Human Papilloma Virus and Parvovirus B19; provided, however, that the said exclusions for the Human Papilloma Virus and Parvovirus B19 disease targets shall be limited to 3 years from the Effective Date after which time the Human Papilloma Virus and Parvovirus B19 disease targets shall be included within the Licensed Field subject to the royalty and other terms and conditions of this Agreement.
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