Royalty Report: Medical, Diagnostic, Device – Collection: 3542

License Grant

The Canadian Licensor grants the Licensee, under the Licensed IP, a non-exclusive, royalty-bearing, worldwide License, with the right to grant subLicenses solely to Licensee Affiliates, to make, have made, use, lease, sell, and otherwise commercialize Licensed Products in the Field of ICP-based Flow Cytometry.

The Licensor has the right to grant sublicenses, under certain patent rights in the field of ICP-based flow cytometry.

License Property

Flow Cytometer means an analytical instrument that provides assay of a biological sample based on the analysis of individual cells or particles.
Flow Cytometry means the art of conducting assays with a Flow Cytometer.

Field of Use

The Licensee wishes to complement its existing technology and products and to achieve its goal to address diagnostic and other worldwide health issues through advanced genomics, using their innovative microfluidic chips, instruments, and other products, including through the development of products using the Licensed IP.

License Grant

Canadian Licensor grants to a Canadian Licensee, an exclusive, worldwide license under the Licensed IP, with the right to sublicense, to make, have made, use, lease, sell, and otherwise commercialize Licensed Products within the Field.

Licensor grants a non-exclusive, worldwide license under the Licensed IP, with the right to make, have made, use, lease and sell, without right to sublicense, Licensed Reagents in fields other than the Field.

Field of Use

Field means ICP-based Flow Cytometry.

Flow Cytometer means an analytical instrument that provides assay of a biological sample based on the analysis of individual cells or particles.

License Grant

Licensor hereby grants to Licensee an exclusive, worldwide, right and license under the Licensed Technology, with the right to sublicense, to develop, have developed, make, have made, use, have used, import, have imported, offer for sale, sell, have sold or lease, any Products, Storage Devices and/or Input/Output Devices for Type 1 Storage Devices and Chips and/or to provide any Services in the Orchid Field, provided, however, that with respect to Type 2 Storage Devices and Input/Output Devices for Type 1 Storage Devices, such License shall only be exclusive for Licensed Technology and further provided however with respect to the exercised Option of the Option Field, the license shall be exclusive for the Life Science Field and non-exclusive for materials and chemical research.

License Property

Technology refers to certain technology for the research, development and sale of products and services in the field of combinatorial chemistry and in vitro diagnostics.

'Product' shall mean a Chip or a system incorporating a Chip with or without Storage Devices, Input/Output Devices or Ancillary Devices developed using, incorporating, utilizing, manufactured using, based upon, arising out of, or derived from the Licensed Technology.

'Ancillary Device' shall mean a detector or other device (but not a Storage Device or Input/Output Device) that is specifically designed by Sarnoff to interface with a Chip, Storage Device or Input/Output Device to the extent such detector or other devices are incorporated in Delivered Chips and Instruments. Ancillary Devices shall not include (without upper or lower limitations as to size or volume), (i) generic robotic fluid delivery systems, (ii) transport through synthetic or natural membranes, tubes or capillaries except when part of a Chip or Input/Output Device, (iii) conventional, non-electrokinetic fluid pumping or valving technology except when part of a Chip or Input/Output Device and (iv) 3D microimaging and modeling.

'Storage Device' shall mean a microfabricated flat structure device containing Microchambers, but not Microchannels or other Elements, that is either (i) specifically designed for interacting with or connecting to a Chip or (ii) broadly useful with Chips and other devices or primarily designed to be interfaced with micropipetting systems. A Storage Device of the type described in clause (i) is referenced to herein as a Type 1 Storage Device. A Storage Device described in clause (ii) is referred to herein as a Type 2 Storage Device.

Storage Device or Input/Output Device to the extent such detector or other devices are incorporated in Delivered Chips and Instruments.

Storage Device or Input/Output Device to the extent such detector or other devices are incorporated in Delivered Chips and Instruments. Ancillary Devices shall not include (without upper or lower limitations as to size or volume), (i) generic robotic fluid delivery systems, (ii) transport through synthetic or natural membranes, tubes or capillaries except when part of a Chip or Input/Output Device, (iii) conventional, non-electrokinetic fluid pumping or valving technology except when part of a Chip or Input/Output Device and (iv) 3D microimaging and modeling.

'Chip' shall mean a microfabricated flat structure device in one or more layers having a plurality of Microchannels or Microchannels and Microchambers in the form of (A) arrays (containing at least (i) six (6) Microchambers or (ii) two Circuits, each of which contains at least one Active Element), or (B) at least one Circuit containing at least three (3) serially connected Elements, at least one of which is an Active Element, to carry out or enable synthesis, reactions, assays, analyses or sample preparation by transporting or retaining aqueous or organic fluids that are solvents, solutions, mixtures or suspensions, including those containing chemicals, particles, membranes, membrane fragments, cells, cell components or other biologically derived substances.

'Microchannels' shall mean enclosed channels having a cross section at least 10 microns by 10 microns and no more than 2 millimeters by 2 millimeters. 'Microchambers' shall mean chambers having a volume of at least 10 picoliters and no more than 10 microliters.

'Combinatorial Chemistry' shall mean the synthesis of one or more compounds as part of a process to create compounds or resynthesize known compounds, where such compounds are to be used in clinical applications or in the discovery, development, testing or optimization of molecules, materials, or compounds, or mixtures thereof.

Partitioned Microelectronic And Fluidic Device Partitioned Microelectronic And Fluidic Device Synthesis (08/338703)
Partitioned Microelectronic Device Array (08/455016)
Liquid Distribution System (08/556036)

Field of Use

Fields related to microfluidics, including the fields of genomics, high throughput screening, research products and cell-based assays.

'In-vitro Diagnostic Field' shall mean the use of a Chip to undertake any medical or clinical assessment of the health or physical condition of a human or animal, or the assessment of the condition of a plant, when such assessment is performed outside the body of the human, animal or plant and environmental or food testing where testing is for the presence of microbes or cellular components such as nucleic acids, proteins or toxins. Such assessment includes, but is not limited to, the testing of body tissue, fluids, or cells; nucleic acid analysis; immunological analysis; therapy monitoring; predisposition analysis; viral analysis; microbiological analysis; therapeutic or abused drug analysis; and chemical analysis of tissue, fluids or cells. Without limiting the generality of the foregoing, the In-vitro Diagnostic Field does not include the use of a Chip for the purpose of discovering, developing, manufacturing, using and selling pharmaceutical products, but does include the use of Chips for Environmental Testing.

License Grant

Licensor grants an exclusive, worldwide sublicense, with a right to further sublicense, under the Baylor Technology and Improvements to make, use, sell, offer for sale and import any instrumentation, device or non-drug consumable for use by customers in the Other Markets; and an exclusive, worldwide license, with a right to sublicense, under the Licensor Technology to make, use, sell, offer for sale and import any instrumentation, device or non-drug consumable for use by customers in the Other Markets.  These sublicense agreements with Licensor provide the Licensee with the exclusive right under the Baylor patents to make, use and sell instruments, devices and non-drug consumables for use by customers in the life science laboratory and drug discovery laboratory markets worldwide.

License Property

The Company develops, manufactures and markets a proprietary ProteinChip System that enables protein discovery, characterization and assay development to provide a better understanding of biological functions at the protein level.  The ProteinChip System is a novel, enabling tool in the emerging field of protein-based biology research, known as proteomics.  While recent technological advances in DNA tools have substantially changed the field of genomics, the absence of enabling protein analysis tools has limited progress in proteomics research.  Proteomics provides a direct approach to understanding the role of proteins in the biology of disease, monitoring of disease progression and the therapeutic effects of drugs.

Field of Use

The ProteinChip System incorporates the Licensee's proprietary Surface-Enhanced Laser Desorption/Ionization, or SELDI, technology on a disposable chip.  This allows proteins to be captured, separated and quantitatively analyzed directly from crude biological materials, such as whole blood, tissue and saliva, with minimal sample preparation.