Royalty Report: Medical, Device, Surgical – Collection: 3990

License Grant

The Foundation owns the Licensable Technology as defined. The Optionee specializes in developing technology and bringing new technologies to market; and desires to investigate and conduct due diligence with respect to the commercial viability of the Licensable Technology prior to executing the License Agreement.

License Property

'Licensable Patents' shall refer to and mean US Patent Application # 60/797,433 entitled 'Intra-jugular Catheter' and any U.S. or foreign patent applications, reissues, extensions, renewals, reexaminations, certificates of invention, substitutions, divisions, continuations, and continuations-in-part thereof having the Principal Investigator as an inventor and having the same priority date as the parent applications. The Field shall mean clinical use as a catheter for insertion into the vascular system of a patient to direct fluid flow, sampling of fluids and oxygenation monitoring.

Field of Use

'Field' shall mean clinical use as a catheter for insertion into the vascular system of a patient to direct fluid flow, sampling of fluids and oxygenation monitoring.

License Grant

Assignor sells, assigns, conveys, transfers and delivers to Assignee, its successors and permitted assigns, the Spot Catheter Patents and the Spot Catheter Technology and the Linear Catheter Patents and the Linear Catheter Technology to be used only in the Field of Use.

License Property

Assignor is in the business of developing implantable cardiac defibrillators and electrophysiology catheters. The IP includes patents and U.S. Patent Applications, Serial Nos. 08/496,947 and 09/073,651 and corresponding foreign patents.

Field of Use

The Field of Use shall mean the radio frequency (RF) cardiac ablation therapy field.  This agreement pertains to the medical industry.

License Grant

The Licensor, a California University granted the Licensee an exclusive license for the Indwelling Heat Exchange Catheter and Method of Using disclosed in case number LA99-501, useful for brain tissue preservation after stroke or other trauma.

License Property

Whereas, certain inventions, characterized as “Indwelling Heat Exchange Catheter and Method of Using” (“Invention”), disclosed in UCLA case number LA99-501, useful for brain tissue preservation after stroke or other trauma.

1. Patent Application Serial No, 091133,813 filed August 13, 1998 entitled indwelling Heat Exchange Catheter and Method of Using Same,” (UCLA Case No. LA99-501-2).

2. Patent Application Serial No. 09/503,014 filed February 11, 2000 entitled “Indwelling Heat Exchange Catheter and Method of Using Same11’ (UCLA Case No. LA99501-3).

3. Patent Application Serial No. 09/546,814 filed April 11, 2000 entitled “Indwelling Heat Exchange Catheter and Method of Using Same,1’ (UCLA Case No, LA99-501-4).

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

Assignors, two individuals, hereby sell, assign, and transfer exclusively and subject to all of the terms and conditions of this Agreement, their entire right, title, and interest in and to the Device and the Intellectual Property.

License Property

“Applications” shall mean any and all pending patent applications filed by Assignors relating to the Device and any apparatus and/or method for reducing, sizing and/or stabilizing the circumference of a vascular or anatomical structure designed or used by Assignors, including, but not limited to, the following
(a) In the United States, application No. 09/733,224 entitled Annuloplasty System, filed December 8, 2000;
(b) In Canada, application No. 2,197,069 entitled Apparatus for Reducing the Circumference of a Vascular Structure, filed August 10, 1995;
(c) In the European Region, application No. 95929486.9 entitled Apparatus for Reducing the Circumference of a Vascular Structure, filed August 10, 1995; and
(d) In Japan, application No. 507532/1996 entitled Apparatus for Reducing Circumference of Vascular Structure, filed August 10, 1995 and any and all patents and/or patent applications claiming priority thereto, and any and all patents or patent applications in which either Segmed or Dr. Northrup is an inventor, which relate to the Device and/or any apparatus and/or method for reducing, sizing and/or stabilizing the circumference of a vascular or anatomical structure, and any reissues, continuations, divisions, continuations-in-part or extensions thereof, any patents issuing therefrom; and/or any improvements thereto or enhancements thereof which are either wholly or in part owned, invented, controlled, acquired or otherwise assignable by either or both of the Assignors, and any patent applications therefor and any patents issuing therefrom.

“Device” shall mean the apparatus and/or method for reducing, sizing and/or stabilizing the circumference of a vascular or anatomical structure (the “Field”) covered by the Intellectual Property and fully described in the Applications and applications relating to the Patents, and any and all improvements, modifications, derivations, enhancements, technology, Know-how and Documentation related thereto.

Patent relates to a new annuloplasty technology for the repair of mitral and tricuspid heart valves.

“Patents” shall mean the following patents issued to Assignors in the United States, Australia, Taiwan and South Africa
(a) In the United States, U.S. Patent No. 5,593,424 entitled Apparatus and Method for Reducing and Stabilizing the Circumference of a Vascular Structure, issued January 14, 1997, U.S. Patent No. 5,709,695 entitled Apparatus for Reducing the Circumference of a Vascular Structure, issued January 20, 1998, and U.S. Patent No. 5,961,539 entitled Method and Apparatus for Sizing, Stabilizing and/or Reducing the Circumference of an Anatomical Structure, issued October 5, 1999;
(b) In Australia, patent No. 700530 entitled Apparatus for Reducing Circumference of Vascular Structure, filed August 10, 1995;
(c) In Taiwan, patent No. 096871 entitled Apparatus for Reducing the Circumference of a Bodily Structure, filed August 11, 1995; and
(d) In South Africa patent No. 95/6672 entitled Apparatus and Method for Reducing the Circumference of a Vascular Structure, filed August 10, 1995,
and any and all patents and/or patent applications claiming priority thereto, and any and all patents or patent applications in which Assignors are an inventor, which relate to the Device and/or any apparatus or method for reducing, sizing and/or stabilizing the circumference of a vascular or anatomical structure, and any reissues, continuations, divisions, continuations-in-part or extensions thereof, any patents issuing therefrom, and/or any improvements thereto or enhancements thereof which are either wholly or in part owned, invented, controlled, acquired or otherwise assignable by Assignors, and any patent applications therefor and any patents issuing therefrom.

“Trademark” shall mean the mark represented by United States Registration No. 2,108,883 for the “SEGMENT” mark.

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 Company entered into an agreement for the license for Epidural catheters used to infuse drugs into the epidural space in the spinal column (vi) Implantable infusion ports and pumps and their attached catheters used for drug therapy and access to the vascular system (vii) Intra-aortic balloon catheters (viii) Drainage catheters used to drain chest cavities, surgical incisions, wounds and abscesses.

Field of Use

Fields of Application)
(v) Epidural catheters used to infuse drugs into the epidural space in the spinal column.
(vi) Implantable infusion ports and pumps and their attached catheters used for drug therapy and access to the vascular system.
(vii) Intra-aortic balloon catheters.
(viii) Drainage catheters used to drain chest cavities, surgical incisions, wounds and abscesses.

License Grant

Licensor hereby grants to Licensee and its Subsidiaries and Licensee hereby accepts, a sole, worldwide license (without right to sublicense) in the Licensed Field to make, have made, import, export, use, offer to sell, sell, distribute (directly or indirectly), consign and market any Licensed Product and Method under the Licensor Patent Claims.

License Property

'Licensed Products And Methods' means the Essure System.

EssureTM is an innovative and proprietary non-incisional permanent birth control device for women.  Essure is an alternative to tubal ligation and involves inserting a tiny device through the vagina that closes off the fallopian tubes.  Tubal ligation involves burning or clipping the tubes through incisions near the navel.

Patent Claims' means (1) the claims of U.S. Patent Nos. 6,432,116 and 6,096,052 and (2) any and all related patent claims, including patent claims which arise from reissues, reexaminations, continuations, continuations-in-part, divisions, continuing prosecution applications, and requests for continuing examination of U.S. Patent Application Nos. 08/770,123, 09/112,085, 09/468,749, and any and all foreign counterparts, but excluding any claims covering inventions not conceived as of October 22, 2003.

Field of Use

'Licensed Field' means the field of permanent female sterilization.