Royalty Report: Medical, Device, Surgical – Collection: 4367

License Grant

The Licensor  hereby grants to the Licensee and its Affiliates a non-exclusive royalty-bearing License under the Patent Rights A to develop, make, have made, use, sell, offer to sell, lease, and import Licensed Products and to develop and perform Licensed Processes in the Field A in the worldwide territory.

The Licensor hereby grants to Licensee and its Affiliates a royalty-bearing exclusive License under the Patent rights B to develop, make, have made, use, sell, offer to sell, lease, and import Licensed Products and to develop and perform Licensed Processes in the Field B in the territory.

The Licensee shall have the right to grant sublicenses.

License Property

Field A shall mean all Products, Methods of Manufacture and Methods of Use Thereof for all Stasis, Adhesion and Barrier Applications, but specifically excluding Cellular Delivery.

Stasis, Adhesion and Barrier Applications shall mean applications for the prevention or control of the movement or leakage of solid, fluid or gaseous substances in or on the body (including, but not limited to, bleeding, blood and blood components, cerebral spinal fluid, intestinal content or fluid, gas or air, bacteria), for hemostasis, for the prevention or control of surgical or other types of adhesions, or which function as a barrier including, but not limited to, reduction of contamination.

Cellular Delivery shall mean applications for the delivery of cell.

Field B shall be all fields.

APPENDIX A
United States Patents and Applications
M.I.T. Case No. 6692
United States of America Patent No. 5955343, Issued September 21, 1999
United States of America Patent No. 6800481, Issued October 5, 2004
United States of America Patent No. 7098028, Issued August 29, 2006
United States of America Serial No. 11/512753, Filed August 29, 2006
'Stable Macroscopic Membranes Formed By Self-Assembly Of Amphiphilic Peptides And Uses Therefor'
M.I.T. Case No. 8813
United States of America Serial No. 09/778200, Filed February 6, 2001
'Peptide Scaffold Encapsulation Of Tissue Cells And Uses Thereof'
M.I.T. Case No. 9344
United States of America Serial No. 10/193942, Filed July 15, 2002
'Cellular Reprogramming In Peptide Hydrogel And Uses Thereof'
M.I.T. Case No. 9786
United States of America Serial No. 10/968790, Filed October 18, 2004
'Self-Assembling Peptides For Regeneration And Repair Of Neural Tissue'
M.I.T. Case No. 10154
United States of America Serial No. 10/877068, Filed June 25, 2004
'Self-Assembling Peptides Incorporating Modifications And Methods Of Use Thereof'

APPENDIX B
United States Patents and Applications

M.I.T. Case No. 11366
United States of America Serial No. 60/758827, Filed January 13, 2006
'Compositions And Methods For Inhibiting Movement Or Leakage Of A Body Substance And Promoting Tissue Repair'
United States of America Serial No. 11/411745, Filed April 25, 2006
'Compositions And Methods For Promoting Hemostasis And Other Physiological Activities'
M.I.T. Case No. 12061
United States of America Serial No. 11/796132, Filed April 25, 2007
'Compositions And Methods For Affecting Movement Of Contaminants, Bodily Fluids Or Other Entities, And/or Affecting Other Physiological Conditions'
United States of America Serial No. 60/745601, Filed April 25, 2006
'Compositions And Methods For Promoting Hemostasis And Other Physiological Activities'

Field of Use

The Licensee is a medical device company offering an innovative approach to the rapid cessation of bleeding called hemostasis and control of fluid leakage or sealant during surgery and trauma care

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

For the CoSeal Sealant Units Exclusive Distribution, Sales and Marketing Rights,  Licensors of the United States, Switzerland and Canada grant
— a sole and exclusive license, with right to sublicense, under Licensor Patents and Trademarks to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import CoSeal Sealant Units in the Sealant Territory; and
— a non-exclusive license, with right to sublicense, under Licensor Know-How to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import CoSeal Sealant Units in the Sealant Territory during the term of this Distribution and License Agreement.

For the CoSeal Sealant Option, Licensor grants an option (the CoSeal Sealant Option)
— a sole and exclusive license, with right to sublicense, under Licensor Patents and Trademarks to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import CoSeal Sealant Units in Japan; and
— a non-exclusive license, with right to sublicense, under Licensor Know-How to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import CoSeal Sealant Units in Japan.

For the CoSeal Adhesion Prevention Units Exclusive Distribution, Sales and Marketing Rights, Licensor grants
— a sole and exclusive license, with right to sublicense, under Licensor Patents and Trademarks to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import CoSeal Adhesion Prevention Units in the Adhesion Prevention Territory; and
— a non-exclusive license, with right to sublicense, under Licensor Know-How to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import CoSeal Adhesion Prevention Units in the Adhesion Prevention Territory during the term of this Distribution and License Agreement.

For the CoSeal Adhesion Prevention Option, Licensor grants to an option (the CoSeal Adhesion Prevention Option)
— a sole and exclusive license, with right to sublicense, under Licensor Patents and Trademarks to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import CoSeal Adhesion Prevention Units in the United States; and
— a non-exclusive license, with right to sublicense, under Licensor Know-How to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import CoSeal Adhesion Prevention Units in the United States.

For the CoSeal Accessories Exclusive Rights, Licensor grants
— a sole and exclusive license, with right to sublicense, under Licensor Patents and Trademarks to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import CoSeal Accessories in the Field in the Territory; and
— a non-exclusive license, with right to sublicense, under Licensor Know-How to use, have used, market, have marketed, distribute, have distributed, sell, have sold, offer for sale, export and import the CoSeal Accessories in the Field in the Territory.

License Property

The trademarks include COSEAL©, ADHIBIT™, and, ANGIOTECHKNOWLEDGY™.

CoSeal Ingredients shall mean the two derivatized polyethylene glycol ingredients, designated COH102 and COH206

CoSeal Adhesion Prevention Unit shall mean a CoSeal Adhesion Prevention Product sold in combination with a CoSeal Adhesion Prevention Device.

CoSeal Devices shall mean, collectively, as the context requires, both or either of the CoSeal Adhesion Prevention Devices and/or the CoSeal Sealant Devices.

CoSeal Unit shall mean, collectively, as the context requires, both or either of the CoSeal Sealant Unit and/or the CoSeal Adhesion Prevention Unit.

CoSeal Sealant Unit shall mean a CoSeal Sealant Product sold in combination with a CoSeal Sealant Device.

CoSeal Sealant Product shall mean a product containing the CoSeal Ingredients that is the subject matter of a Regulatory Filing for use as a tissue sealant, adhesive or glue, has been or is approved by one or more Regulatory Authorities for use as a tissue sealant, adhesive or glue, or that is in development or sold for use as a tissue sealant, adhesive or glue.

Field of Use

CoSeal is indicated for use in vascular reconstructions to achieve adjunctive ·hemostasis by mechanically sealing areas of leakage.  CoSeal is designed to rapidly seal tissue surfaces, suture lines and synthetic grafts during surgery.

Field shall mean human therapeutic use for any and all tissue sealing, adhesive, glue or adhesion prevention barrier indications but shall specifically exclude any use (i) in Hemostat indications; (ii) for tissue regeneration indications; (iii) as an osteobiologic for skeletal repair an non-pharmacologic devices for osteoarthritis treatment,; (iv) as a urinary incontinence product and for the treatment of urinary incontinence; or (v) as an ostomy product.

License Grant

The Licensor, a non-profit health care organization, and the Licensee have entered into that certain Exclusive License Agreement with an effective date of July 2, 2007 and identified as Agreement number CMCC-6748 and wish to amend certain areas.

License Property

Patent Rights
The following patents and patent applications based on CMCC case 1455 (M.I.T. Case
Number 12084) and CMCC case 1456 (M.I.T. Case 13490Q)      
Country    Serial Number    Filing Date    Status    Issue Date
U.S.
    60/794,986    4/25/2006    Expired    00/00/00
U.S.
    11/789,538    4/25/2007    Pend    00/00/00
U.S.
    12/186,346    8/5/2008    Pend    00/00/00
PCT
    PCT/US08/72226    8/5/2008    Expired    00/00/00
Australia
    2008360388    8/5/2008    Pend    00/00/00
Brazil
    TBA-BR    8/5/2008    Pend    00/00/00
Canada
    TBA-CA    8/5/2008    Pend    00/00/00
China
    TBA-CN    8/5/2008    Pend    00/00/00
India
    TBA-IN    8/5/2008    Pend    00/00/00
Japan
    TBA-JP    8/5/2008    Pend    00/00/00
Singapore
    TBA-SG    8/5/2008    Pend    00/00/00
South Korea
    10-2011-7005148    8/5/2008    Pend    00/00/00
EPO
    EP-TBA    8/5/2008    Pend    00/00/00
PCT
    PCT/US07/067403    4/25/2007    Expired    00/00/00
Australia
    TBA- AU    4/25/2007    Pend    00/00/00
Brazil
    PI 0709638-0    10/23/2008    Pend    00/00/00
Canada
    2650804    4/25/2007    Pend    00/00/00
China
    200780022752.6    4/25/2007    Pend    00/00/00
India
    TBA    10/24/2008    Pend    00/00/00
Japan
    0    10/23/2008    Pend    00/00/00
Singapore
    200807854-5    4/25/2007    Pend    00/00/00
South Korea
    10-2008-7028672    11/24/2008    Pend    00/00/00
EPO
    7761270.3    4/25/2007    Pend    00/00/00
Hong Kong
    9106081.8    4/25/2007    Pend    00/00/00

Appendix 1B Additional Patent Rights  

I. United States Patents and Applications  

CMCC Case No. 23 (M.I.T. Case No. 4973)

United States of America Patent No. 5804178, Issued September 8,1998

“IMPLANTATION OF CELL-MATRIX STRUCTURE ADJACENT MESENTERY, OMENTUM OR PERITONEUM TISSUE”

by Linda G. Griffith, Lynt Johnson, Robert S. Langer and Joseph P. Vacanti

CMCC Case No. 25 (M.I.T. Case No. 5573)

United States of America Patent No. 5514378, Issued May 7, 1996

“BIOCOMPATIBLE POLYMER MEMBRANES AND METHODS OF PREPARATION OF THREE DIMENSIONAL MEMBRANE STRUCTURES”

by Linda G. Griffith, Robert S. Langer, Antonios G. Mikos, Georgios Sarakinos and Joseph P. Vacanti

CMCC Case Nos. 20 and 30 (M.I.T. Case No. 4279)

United States of America Patent No. 5759830, Issued June 2, 1998

United States of America Patent No. 5770417, Issued June 23,1998

“THREE-DIMENSIONAL FIBROUS SCAFFOLD CONTAINING

ATTACHED CELLS FOR PRODUCING VASCULARIZED TISSUE IN VIVO”

by Robert S. Langer and Joseph P. Vacanti

United States of America Patent No. 5770193, Issued June 23, 1998 “PREPARATION OF THREE-DIMENSIONAL FIBROUS SCAFFOLD CONTAINING ATTACHED CELLS FOR PRODUCING VASCULARIZED TISSUE IN VIVO”
by Robert S. Langer and Joseph P. Vacanti
CMCC Case No. 26 (M.I.T. Case No. 5729)
United States of America Patent No. 6309635, Issued October 30, 2011
“PREVASCULARIZED POLYMERIC IMPLANTS FOR ORGAN TRANSPLANTATION”
by James C. Gilbert, Donald E. Ingber, Robert S. Langer, James E. Stein and Joseph P. Vacanti
CMCC Case No. 389 (M.I.T. Case No. 6560)
United States of America Patent No. 7462471, Issued December 9, 2008
“POROUS BIODEGRADABLE POLYMERIC MATERIALS FOR CELL TRANSPLANTATION”
by Linda G. Griffith, Robert S. Langer, Antonios G. Mikos, Georgios Sarakinos and Joseph P. Vacanti
CMCC Case No. 415 (M.I.T. Case No. 6798)
United States of America Patent No. 6281015, Issued August 28, 2001
“LOCALIZED DELIVERY OF FACTORS ENHANCING SURVIVAL OF TRANSPLANTED CELLS”
by Robert S. Langer, David J. Mooney and Joseph P. Vacanti
CMCC Case No. 505 (M.I.T. Case No. 7138)
United States of America Patent No. 6095148, Issued August 1, 2000
“NEURONAL STIMULATION USING ELECTRICALLY CONDUCTING POLYMERS”
by Robert S. Langer, Christine E. Schmidt, Venkatiam P. Shastri and Joseph P. Vacanti
M.I.T. Case No. 6984
United States of America Patent No. 5654381, Issued August 5, 1997
“FUNCTIONALIZED POLYESTER GRAFT COPOLYMERS”
by Jeffrey S. Hrkach, Robert S. Langer and Noah Lotan
M.I.T. Case No. 13525 (CMCC Case No. 26)
United States of America Patent No. 6689608, Issued February 10, 2004
United States of America Serial No. 12/218448, Filed July 15, 2008
“POROUS BIODEGRADABLE POLYMERIC MATERIALS FOR CELL TRANSPLANTATION”
by Linda G. Griffith, Robert S. Langer, Antonios G. Mikos, Georgios Sarakinos and Joseph P. Vacanti
II. International (non-U.S.) Patents and Applications
CMCC Case No. 26 (M.I.T. Case No. 5729)
European Patent Convention Patent No. 0610423, Issued May 7, 1997
Japan Patent No. 3524919, Issued February 20, 2004
Austria Patent No. 0610423, Issued May 7, 1997
Belgium Patent No. 0610423, Issued May 7, 1997
France Patent No. 0610423, Issued May 7, 1997
Germany Patent No. 69219613, Issued May 7, 1997
Italy Patent No. 0610423, Issued May 7, 1997
Luxembourg Patent No. 0610423, Issued May 7,1997
Netherlands Patent No. 0610423, Issued May 7, 1997
Sweden Patent No. 0610423, Issued May 7, 1997
United Kingdom Patent No. 0610423, Issued May 7, 1997
“PREVASCULARIZED POLYMERIC IMPLANTS FOR ORGAN TRANSPLANTATION”
by James C. Gilbert, Donald E. Ingber, Robert S. Langer, James E. Stein and Joseph P. Vacanti
CMCC Case No. 30 (M.I.T. Case No. 4279)
Canada Patent No. 1340581, Issued June 8, 1999
“CHIMERIC NEOMORPHOGENESIS OF ORGANS BY CONTROLLED CELLULAR IMPLANTATION USING ARTIFICIAL MATRICES”
by Robert S. Langer and Joseph P. Vacanti
CMCC Case No. 415 (M.I.T. Case No. 6798)
European Patent Convention Patent No. 0794790, Issued April 17, 2002
Japan Patent No. 4361134, Issued August 21, 2009
Canada Patent No. 2207286, Issued October 7, 2003
Ireland Patent No. 0794790, Issued April 17, 2002
Belgium Patent No. 0794790, Issued April 17, 2002
Switzerland Patent No. 0794790, Issued April 17, 2002
Germany Patent No. 0794790, Issued April 17, 2002
Denmark Patent No. 0794790, Issued April 17, 2002
Spain Patent No. 0794790, Issued April 17, 2002
France Patent No. 0794790, Issued April 17, 2002
Austria Patent No. 0794790, Issued April 17, 2002
Greece Patent No. 3039884, Issued April 17, 2002
Sweden Patent No. 0794790, Issued April 17, 2002
Italy Patent No. 0794790, Issued April 17, 2002
Luxembourg Patent No. 0794790, Issued April 17, 2002
Monaco Patent No. 0794790, Issued April 17, 2002
Netherlands Patent No. 0794790, Issued April 17, 2002
Portugal Patent No. 0794790, Issued April 17, 2002
United Kingdom Patent No. 0794790, Issued April 17, 2002
“LOCALIZED DELIVERY OF FACTORS ENHANCING SURVIVAL OF TRANSPLANTED CELLS”
by Robert S. Langer, David J. Mooney and Joseph P. Vacanti
CMCC Case No. 505 (M.I.T. Case No. 7138)
New Zealand Patent No. 321886, Issued June 8, 2000
Japan Patent No. 4451929, Issued February 5,2010
South Korea Serial No. 98-703320, Filed October 31, 1996 Australia Patent No. 720275, Issued September 11, 2000
Canada Serial No. 2236749, Filed October 31, 1996
Japan Serial No. 2008-287194, Filed October 31, 1996
Japan Serial No. 2009-244981, Filed October 31, 1996
“NEURONAL STIMULATION USING ELECTRICALLY CONDUCTING POLYMERS”
by Robert S. Langer, Christine E. Schmidt, Venkatram P. Shastri and Joseph P. Vacanti

Field of Use

Field of Use shall mean the following three subfields i) treatment of nerve injury of the central nervous system including the brain, and spinal cord; ii) treatment of nerve injury of the retina and the cranial nerves; and iii) treatment of the following pathologic conditions nerve root impingement from musculoskeletal elements, demyelinated tissue, damage to neural elements exiting the spinal cord and lumbosacral region of spinal cord by administering a Licensed Product to the peripheral nerves in the intraspinal location, foraminal and extraspinal areas, extrapyramidal regions, areas of peripheral bony impingement, and for repair or treatment of neural elements following damage from prostate surgery; excluding the development and commercialization of tissue engineered products for human and animal therapeutics in the field of genitourinary.

License Grant

The Licensee entered into an exclusive License and development Agreement with an Australian University, granting the Company a worldwide exclusive (even as to the university) License, with rights to subLicense, to all the Company’s product candidates and associated know-how based on the University's technology, including the exclusive right to manufacture, use and sell the product candidates. The Company agreed to invest towards development of any Licensed product.

License Property

The University Intellectual Resources Management is focused on developing the key surgical devices that would make noninvasive procedures a reality.  The Licensee is a developmental stage medical device company focused on the development of medical devices that manipulate tissues for endoscopic and minimally invasive surgery for the treatment of obesity, gastroesophageal reflux disease, Barrett's Esophagus, esophageal obstructions, upper gastrointestinal bleeding, hernia formation and other intraperitoneal abnormalities.  The Company’s product portfolio includes a device for endoscopic bariatric surgery (obesity surgery) and endoscopic repair of gastroesophageal reflux disorder (GERD), as well as an endoscopic device for excision and diagnosis of Barrett’s esophagus.

Licensed Patent Rights and Licensed Patents shall mean (1) United States Provisional Patent Application No. 60/698,748 filed July 13, 2005, and titled Suturing System for Transoral Gastroplasty and United States Provisional Patent Application No. 60/742,826 filed December 6, 2005, and titled Systems and Techniques for Transoral Gastroplasty; (2) International Patent Application No. PCT/US04/028516 entitled Suturing Devices and Methods, filed September 2, 2004 (claiming benefit of U.S. Provisional Patent Application Serial No. 60/499,539, filed September 2, 2003; U.S. Provisional Patent Application Serial No. 60/507,837, filed October 1, 2003; and U.S. Provisional Patent Application Serial No. 60/576,510, filed June 3, 2004); (3) any and all Patent Rights under the patents or patent applications for any Additional Technologies and associated Know-How licensed by the Company.

License Grant

Licensor, a non-profit health care organization, hereby grants to Licensee the worldwide, sole exclusive License, including the right to grant subLicenses, under the Patent Rights and to practice the Licensed Processes.

License Property

This application generally relates to medical devices and more specifically relates to medical devices for use in the surgical treatment of hyperproliferative diseases affecting the spinal cord.

Field of Use

Field of Use shall mean treatment of Spinal cord injury.

License Grant

The Patent Owner, an individual, granted the Licensee a license under the Licensed Patent to make, use, and sell Licensed Products for use in the Licensed Field of Use within the Licensed Territory.

License Property

Licensed Products means any water jet device for use in the medical, surgical and dental fields (the Licensed Field of Use).

Applicant's invention relates to instruments and tools useful for incising biologic tissues.

U.S. Patent #5,620,414 titled 'Apparatus and Method for Effecting Surgical Incision Through Use of a Fluid Jet' filed on April 8, 1994 and issued on April 15, 1997 (CIP of U.S. Serial Number 906,558, filed June 30, 1992 — abandoned).

Field of Use

'Licensed Field of Use' means those disciplines or areas of endeavor into and for which LICENSEE may sell Licensed Products, and includes the medical, surgical and dental fields.