Royalty Report: Medical, Device, Surgical – Collection: 3508

License Grant

Licensor hereby grants to Licensee a non-exclusive, worldwide, non-transferable perpetual royalty-bearing right and license under the Licensed Patents, with the right to authorize or grant sublicenses to make, have made, use, sell, have sold, offer to sell, market, have marketed, import, export, and otherwise exploit and commercialize the Licensed Products solely in the Licensor Field.

License Property

Licensed Products means any software, hardware or other product that is owned by Licensee, and that is covered by one or more claims of the Licensed Patents, regardless of whether such product is combined with any Licensee technology or any third party technology, but excluding any CyberKnife System (as defined in the License Agreement) or any other product or component that contains functionality in addition to that required to implement the claims of the Licensed Patents.

Licensor is the sole and exclusive owner, except for any existing licenses thereunder, of all the right, title, and interest in and to the Letters Patent of the United States No. 6,889,695 and Letters Patent of the United States No. 7,645,276.

Field of Use

Licensor Field means any and all non-tumor applications involving or relating to the heart, the coronary arteries (including without limitation the epicardial coronary arteries), the cardiac veins, the structure or function of any of the foregoing, or related conditions, including without limitation all diseases and conditions of the conduction system, the coronary, arterial and/or venous systems, heart valves or chambers, wall anomalies affection, ejection fraction and/or conduction, but excluding arterio venous malformations outside the heart and not within 2cm of the heart wall.

License Grant

Licensor grants under Licensor’s Intellectual Property Rights, a non-exclusive right and license, without the right to authorize or grant sublicenses, except to final end users,  to use, reproduce, produce derivative works of, transmit, display, perform, and distribute the Interface Technology, and derivative works thereof, including Licensee Software, solely as necessary to develop, make, use, sell, offer to sell, market, import, and otherwise exploit and commercialize the Licensee Product solely in the Licensee Field; provided, however, that Licensee shall not have the right to transmit or distribute the Interface Technology separately from the Licensee Product.

License Property

Licensor owns or controls certain devices and technology used for performing radiation treatments, and Licensee owns or controls software that enables such Licensor devices and technology.

CyberKnife Documentation means technical specifications, user manuals, and other documentation developed by or on behalf of Licensor, relating to the use of the CyberKnife System or the Licensor Technology or requested by Licensee to enable development, improvement, modification, addition, patches, fixes, or creation of derivative works of or to the Licensee Software.

CyberKnife Software means the object code and source code versions of any software, firmware, and other code, including CyberKnife Updates, that may be developed by or for Licensor or any Licensor Affiliate, and to which Licensor has the rights to license hereunder, that is incorporated into, integral with, or otherwise necessary for the CyberKnife System to function in accordance with published or represented specification, exclusive of Licensee Technology.

CyberKnife System means any stereotactic radiosurgery system designed or developed by or on behalf of Licensor or any Licensor Affiliate, and which may include components purchased or licensed from third party suppliers that are not designed by or on behalf of Licensor, including CyberKnife Software and CyberKnife Documentation.

CyberKnife Treatment Planning System means the software system that is owned or controlled by Licensor that is necessary for creating treatment delivery plans using the CyberKnife System.

CyberKnife Updates means any software fixes, patches, updates, upgrades, versions, and releases, whether or not such fixes, patches, updates, versions, and releases add to or enhance the functionality of the CyberKnife System, developed by or on behalf of Licensor, that are to be released or are released to customers.

Field of Use

The field of use is treating certain cardiovascular indications in humans.

Licensee Field means any and all non-tumor applications involving or relating to the heart, the coronary arteries, including without limitation the epicardial coronary arteries, the cardiac veins, the structure or function of any of the foregoing, or related conditions, including without limitation all diseases and conditions of the conduction system, the coronary, arterial and/or venous systems, heart valves or chambers, wall anomalies affection, ejection fraction and/or conduction, but excluding arterio venous malformations outside the heart and not within 2cm of the heart wall.

Licensee Probe means a stereotactic radiosurgery adjunct that is designed or developed by or on behalf of Licensee or its Affiliates, but which may include components purchased or licensed from third party suppliers that are not designed by or on behalf of Licensee, solely for use in applications in the Licensee Field.

Licensee Product means a Licensee Probe that communicates with a radiation system using, at least in part, Licensee Software and Licensee Technology, but which may include components purchased or licensed from third party suppliers that are not designed by or on behalf of Licensee, and any related computer hardware, that are sold, delivered, or otherwise provided as an integrated product by Licensee or its Affiliates, solely for use in applications in the Licensee Field.

Licensee Software means the object code version of software developed by or on behalf of Licensee or its Affiliates to functionally interface between a Licensee Probe and a radiation system for use in the Licensee Field, and any Updates thereof, whether or not combined with computer hardware.

Licensee Technology mean all Technology developed by or for Licensee or its Affiliates disclosed or provided to Licensor by Licensee under this Agreement or any other agreement between the Parties; and, all Intellectual Property Rights related thereto, other than Patents; provided that Licensee Technology does not include any Licensor Technology or any Technology or Intellectual Property Rights conceived or created by or on behalf of Licensor.

Licensee Upgrade means any modifications to the Licensee Software that adds to, enhances, or modifies the functionality of the Licensee Software, and for which Licensee charges a fee.

License Grant

For the Grant of Rights, Licensor grants under the Licensor Patents and Licensor Technology an exclusive, worldwide, right and license, without the right to authorize or grant sublicenses – to research, develop, have developed, use, sell, offer to sell, market, import, and otherwise exploit and commercialize, but not the right to manufacture or have manufactured Licensee Products solely in the Licensee Field; to make and have made all portions of a Licensee Product that are not a CyberKnife Component solely for use in the Licensee Field; and to disclose Licensor Technology in all cases solely to parties that are not Licensor Competitors,

Licensor grants under the Licensor Technology, an exclusive right and license to distribute, directly and indirectly, Licensor Products, and portions thereof, solely in the Licensor Field, to use, reproduce, produce derivative works  of, transmit, display, perform, and distribute the Licensor Technology, and derivative works thereof, including the New Software and Licensee Software, as necessary or useful to research, develop, use, sell, offer to sell, market, import, and otherwise exploit and commercialize (but not the right to manufacture or have manufactured Licensee Products solely in the Licensee Field, and to distribute, reproduce, transmit, publicly display, and publicly perform, sales, marketing, and user documentation and materials, in each case solely for purposes in the Licensee Field.

Licensor grants an exclusive right and license under Licensor’s trademarks to distributors and marketing and advertising partners, to use the trademark CyberHeart to market, sell, and promote Licensee Products in the Licensee Field.

License Property

Licensor owns or controls certain intellectual property rights and technologies related to stereotactic radiosurgery devices for use in, among other things, cranial tumor and thoracic applications.

Manufacturing Technology means the Technology owned or controlled by Licensor that is used in or is useful for any manufacturing of a CyberKnife System, CyberKnife Component, or Licensee Product, or of any components or portions of a Licensee Product.

Licensees Module means any and all hardware, software, other modifications, and Technology that are added to or used with, or that alter, any CyberKnife System-whether or not such hardware, software, other modification, or Technology is an Improvement of a CyberKnife System, or portion thereof and whether or not it is developed through the exercise of rights granted to Licensee in this Agreement-so that such modified CyberKnife System, in combination with such hardware, software, other modifications, and Technology, is capable of performing applications solely within the Licensee Field.

Licensees System means a stereotactic radiosurgery system that is designed or developed by or on behalf of Licensee solely for use in applications solely in the Licensee Field, including, without limitation, a stereotactic radiosurgery system that is based upon or incorporates a CyberKnife System or Licensor Technology, or is based upon or incorporates any portion or component thereof; or method or process related thereto, solely for use in applications solely in the Licensees Field.

Licensee Technology means all Technology, including without limitation Licensee Improvements, Licensee Software, and New Software, disclosed or provided to Licensor by Licensee under this Agreement or any other agreement between the Parties and all Intellectual Property Rights related thereto, other than Patents; provided that Licensee Technology does not include any Licensor Technology or any Technology or Intellectual Property Rights conceived or created by or on behalf of Licensor.

CyberKnife Component means a hardware component of a Licensee Product that was designed by or on behalf of Licensor, other than pursuant to the Development Services, and is used in the Licensor Product in substantially the same form in which it is used in a CyberKnife System at the time that Licensee first seeks any quote, proposal, or terms for supply of such component or Licensee Product, is not made generally commercially available by any other party in the form used by Licensor, and is manufactured by or on behalf of Licensor for incorporation into CyberKnife Systems at the time that Licensee makes an Initial Solicitation with respect to such component.

CyberKnife System means any stereotactic radiosurgery system designed or developed by or on behalf of Licensor for any application solely in the Licensor Field.

Field of Use

The field is cardiac disease, including, but not limited to, atrial fibrillation.

Licensor field means radiation treatments, including without limitation radiotherapy and radiosurgery, but excluding the Licensee Field.

Licensee Field means any and all non-tumor applications involving or relating to the heart, the coronary arteries (including without limitation the epicardial coronary arteries), the cardiac veins, the structure or function of any of the foregoing, or related conditions, including without limitation all diseases and conditions of the conduction system, the coronary, arterial and/or venous systems, heart valves or chambers, wall anomalies affection, ejection fraction and/or conduction.

License Grant

The Licensor hereby grants to the Licensee a worldwide, non-transferable royalty-bearing, co-exclusive license under the Surgical Licensed Patents, without the right to sublicense, to manufacture, have manufactured, use, import, offer for sale, and sell Surgical Licensed Products solely in the Surgical Field of Use.

License Property

The Licensor is the owner or has the right to sublicense certain patents and patent applications relating to catheter-delivered heart valves and venous valves.

Field of Use

'Fields of Use' shall mean the Surgical Field of Use and the Venous Field of Use.

The 'Venous Field of Use' shall mean the treatment and repair outside of the heart of venous valves with venous insufficiency; provided, however, that such Venous Field of Use shall also include venous valves placed in the superior or inferior vena cava for treatment of the tricuspid valve.

Applications within these areas have a significant lower royalty rate than 'outside field' royalties.  The surgical field of use is defined as the surgical insertion through the chest cavity of a stented, tissue heart valve using a catheter delivery system of no greater than 50 centimeters in usable length (i.e., the length that can be inserted into the human body); provided, however, that such Surgical Field of Use does not include the delivery of a stented, tissue heart valve to the heart by way of any vessel other than solely through the thoracic aorta.

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

The Licensee entered a License Agreement for the reservoir style cardioplegia delivery  systems. The Licensee will pay a royalty to the Licensor, an individual.

License Property

The reservoir style cardioplegia delivery systems encompasses several techniques employed in open-heart surgery to preserve, protect and manage the heart tissue.  Cardioplegia involves the use of a chilled solution which is infused into the heart through the coronary  arteries to cool the heart and reduce heart activity and metabolism.

Field of Use

Cardioplegia is intentional and temporary cessation of cardiac activity, primarily for cardiac surgery.