Royalty Report: Medical, Device, Surgical – Collection: 6307

License Grant

The Grantor on behalf of itself and its subsidiaries grants to Grantee, a nonexclusive and worldwide license under Grantor’s Licensed Patents (a) to make (including the right to use any apparatus and practice any method in making), use, import, offer for sale, lease, license, sell and/or otherwise transfer Grantee Licensed Products.

License Property

Licensed Product shall mean a Robotic Device primarily designed for surgery in the medical field of orthopedics and/or primarily designed for spinal surgery in the medical field of neurology.

“Robotic Device” means a machine or device, including tools held by such machine or device, if any, which machine or device includes mechanical components, logic circuitry, computing components, software and/or other specialized components, that (i) operates automatically, semi-automatically, interactively or by remote control, in which desired and/or measured force, torque, position, orientation, velocity, and/or angular velocity information is processed, inputted, monitored, and/or displayed by a computing source and such or a related computing source is used to control the force, torque, position, orientation, velocity, angular velocity, and/or physical configuration of the device; or (ii) senses force and/or torque information, provides tactile, force and/or torque information to the user, applies a force and/or torque to a medical instrument, and/or fully or partially constrains the position, velocity, orientation, or angular velocity of a medical instrument; or (iii) provides patient or surgical instrument information to a user.

IBM Non-Licensed Patents
PATENTS OWNED BY IBM WHICH ARE NOT LICENSED PATENTS

PATENT NUMBER   TITLE
5,487,120 Optical wavelength division multiplexer for high speed, protocol-independent serial data sources

5,825,949  Optical wavelength division multiplexer for coupling to data sources and sinks, wherein at least two data sources and sinks operate with different communication protocols and all continuations (including continuations in part), divisions, reissues and foreign counterparts thereof.

IBM Licensed Patents
PARTIAL LIST OF PATENTS OWNED BY IBM WHICH ARE LICENSED PATENTS
IN MAKO’S FIELD
                            
  Glassman     Taylor-     Funda       Joskowicz    
  5,086,401     5,279,309     5,417,210       5,343,385    
  5,299,288     5,397,323     5,572,999            
  5,408,409     5,402,801     5,749,362            
        5,445,166     6,201,984            
        5,630,431     5,887,121            
        5,695,500     6,226,566            
        5,950,629     6,393,340            
        5,976,156                  
        6,024,695                  
        6,231,526                  
        6,547,782

Field of Use

“Field” means surgery performed in the field of orthopedics and spinal surgery performed in the field of neurology, each practiced in combination with a Robotic Device.

License Grant

The Licensor hereby grants to the Licensee, and the Swiss Licensee hereby accepts, a non-exclusive, royalty-bearing right and license under the Licensed IP to use, make, have made, sell, offer to sell, distribute and import Licensed Products in the Territory during the Term for applications within the Field of Use; provided, however, that upon the occurrence of a License Conversion Event, the portion of the non-exclusive license consisting of the non-exclusive, royalty-bearing license to sell, offer to sell, distribute and import Licensed Products in the Territory during the Term for applications within the Field of Use (the Non-Exclusive Distribution License) shall immediately, and without the need for any action on the part of either party, convert into an exclusive, royalty-bearing license to sell, offer to sell, distribute and import Licensed Products in the Territory during the Term for applications within the Field of Use (Exclusive Distribution License); provided, however, that the exclusivity of such Exclusive Distribution License shall be subject to, and shall not impact, any license rights previously granted in favor of Greatbatch pursuant to the Greatbatch License Agreement; provided, further, however, that if the Licensee fails to obtain FDA Approval for the Licensed Products within six (6) years after the License Conversion Date, the Exclusive Distribution License shall become convertible by the Licensor, at its sole discretion, back into a Non-Exclusive Distribution License. For the avoidance of doubt, during the Term, the non-exclusive, royalty-bearing license to use, make and have made Licensed Products in the Territory during the Term for applications within the Field of Use shall continuously remain a non-exclusive license.  License Conversion Event means the first to occur of (i) receipt of a Conformité Européenne (CE) mark for the Licensed Products that permits sale of such Licensed Products within the European Economic Area for application within the Field of Use; (ii) receipt of FDA Approval or (iii) completion by the Licensee of a human clinical study demonstrating safety and efficacy required to obtain (A) a Conformité Européenne (CE) mark for the Licensed Products that permits sale of such Licensed Products within the European Economic Area for applications within the Field of Use, or (B) FDA Approval.

License Property

United States (U.S.) Licensed Patents
8,954,148  Key Fob controller for an implantable neurostimulator  
8,483,836  Automated search to identify a location for electrical stimulation to treat a patient
8,515,545  Current steering neurostimulator device with unidirectional current sources
8,571,667  Active current control using the enclosure of an implanted pulse generator
8,738,153  Implantable lead with braided conductors
8,757,485  System and method for using clinician programmer and clinician programming data for inventory and manufacturing prediction and control
8,761,892  Active current control using the enclosure of an implanted pulse generator
8,761,897  Method and system of graphical representation of lead connector block and implantable pulse generators on a clinician programmer
8,781,592  Identifying an area for electrical stimulation to treat a patient
8,812,125  Systems and methods for the identification and association of medical devices
8,868,199  System and method of compressing medical maps for pulse generator or database storage
8,874,219  Arbitrary waveform generator and neural stimulation application
8,903,496  Clinician programming system and method
8,983,616  Method and system for associating patient records with pulse generators
8,996,115  Charge balancing for arbitrary waveform generator and neural stimulation application
8,996,117  Arbitrary waveform generator and neural stimulation application with scalable waveform feature
8,700,175  Devices and methods for visually indicating the alignment of a transcutaneous energy transfer device over an implanted medical device
9,002,466  Diversity antennas for neurostimulator programming devices
9,031,664  Current steering neurostimulator device with unidirectional current sources
9,031,666  Devices and methods for visually indicating the alignment of a transcutaneous energy transfer device over an implanted medical device
9,067,074  Automated search to identify a location for electrical stimulation to treat a patient
9,072,903  System and method of establishing a protocol for providing electrical stimulation with a stimulation system to treat a patient
9,098,610  Communication for implantable medical devices
9,101,767  Measuring load impedance with active stimulation pulses in an mplanted pulse generator
9,126,043  Patient handheld device for use with a spinal cord stimulation system
D663,035  Two-port implantable medical device
D665,086  Three-port implantable medical device
D665,087  Multi-port implantable medical device
D671,900  Pocket controller for implantable neurostimulator
D698,779  Clinician programmer for implantable neurostimulator

Field of Use

Field of Use means deep brain stimulation for movement disorders (i.e. Parkinson’s disease and/or essential tremor).

License Grant

University hereby grants to Company an exclusive license in the Field under its interest in and to the Licensed Patents, to make, use, offer to sell, sell and import Licensed Products during the Term. No right to sublicense the Licensed Patents are granted under this Agreement.

License Property

Licensed Patents shall mean the patent applications and issued patents listed hereto and made a part hereof; any divisions, continuations (but excluding continuations-in-part) or patents issuing thereon or reissues thereof; and any and all United States and foreign patents and patent applications corresponding thereto, all to the extent controlled by University.

Application #14/256,540 – System and Apparatus for Endoscopic Deployment of Robotic Concentric Tube Manipulators for Performing Surgery
Application #62/236,187 – Hand-held Concentric Tube Manipulator Actuation Unit and Mechanism for Surgery

Licensed Product shall mean (i) any product, process, or service in the Field (a) the making, use, sale, offer to sell, or import of which is covered by (in whole or in part), or absent the license granted herein would infringe, one or more Valid Claims, or (b) that is made, uses, or is used by or in a process that is covered by (in whole or in part), or absent the license granted herein would infringe, one or more Valid Claims, or (ii) a service performed using a product or process described in subsection (i)(a) or (b) above.

Field of Use

This agreement pertains to the medical industry in the field that shall mean human surgical applications.

License Grant

For the Commercialization, Licensor grants an exclusive, nontransferable license in the Licensed Field of Use to exercise and exploit the Licensed Patents and related know-how, if any, in the Territory.

License Property

The patents are Actuator for independent axial and rotational actuation of a catheter or similar elongated object, and, Master/slave system for the manipulation of tubular medical tools.

Royalty-Bearing Products means any Products other than standard sterile tools which could also be used in conventional non-robotic vascular intervention, such as, for example, catheters and disposable catheter accessories.

Field of Use

The Licensed Field of Use means therapeutic or diagnostic vascular or endoluminal intervention involving robotics, automation and/or telemanipulation.
telemanipulator. A device for transmitting hand and finger movements to a remote robotic device, allowing the manipulation of objects that are too heavy, dangerous, small, or otherwise difficult to handle directly.

License Grant

Licensor hereby grants to Company and its Affiliates a royalty-bearing license under its commercial rights in the Patent Rights, Copyright Rights. Trade Secrets. and Know-How to the extent not prohibited by other patents, to develop, make, have made, use, sell, lease, and import Licensed Products in the Field in the Territory and to develop and perform Licensed Processes in the Field in the Territory.

In order to establish an Exclusive Period, Licensor agrees that it shall not grant any other license to make, have made; use, sell, lease and import Licensed Products in the Field in the Territory or to develop and perform Licensed Processes in the Field in the Territory during the Term unless said Exclusive Period is terminated. Upon expiration of the Exclusive Period the license granted hereunder shall become-nonexclusive and shall extend to the end of the Term.

License Property

Patent Rights shall mean
(a) the United States Patents listed
(b) any patents resulting from reissues, reexaminations; or extensions of the patents described.
U.S. Patent #5,388,480 – Pretensioning mechanism for tension element drive systems
U.S. Patent #5,207,114 – Compact cable transmission with cable differential
U.S. Patent #5,046,375 – Compact cable transmission with cable differential

Copyright Rights shall mean the copyright that listed hereto and incorporated herein by reference in all substitutions. additions. extensions. reissues, renewals, divisions, continuations and continuations-in-part thereof and any foreign counterparts thereto. U.S. Copyright Registration No. TX 3,310,946, effective May 7, 1992, WAM-1 Maintenance and User Manual. Owned by Licensor.

Field of Use

Field shall mean all medical procedures including, but not limited to, Image Guided Surgery (including but not limited to, Coordinated Fluoroscopy, Fluoroscopy, Magnetic Resonance Imaging, CT, CineCT, Ultrasound, and Video), Orthopedic Surgery, Spinal Surgery, Laparoscopy, Endoscopy, all minimally invasive surgical procedures, all Radiological procedures. Neurosurgery, MaxillofaciaJ/Dental Surgery, Cardiovascular Surgery, Gastroenterology, and Nephrology, but excluding Physical Therapy, Ophthalmology, and nonsurgical applications of Chiropracty.

License Grant

Contributor, an individual, does hereby irrevocably contribute, transfer, assign and convey to Corporation, its successors and assigns, free and clear of any Encumbrances, to have and hold forever, all of Contributor's right, title and interest in and good and marketable title to the Contributed Assets.

License Property

The Licensor invented the DenerveX technology for use in the field of FJS, also known as spinal osteoarthritis, spinal arthritis, or facet joint osteoarthritis. The System consists of single use device and a reusable dedicated power generator. The system works exclusively in precise synchronization for therapy delivery for patients with facet joint pain.

'Contributed Assets' means the (i) Patent; and (ii) all Intellectual Property Rights described in, related to or associated with the Patent, including without limitation, all Intellectual Property Rights in and to and all rights to Practice the Debrider Device and the Intellectual Property Rights described in or evidenced by the Patent; and (iii) all Know-How and all technical and other information that is necessary, useful, or convenient to Practice the Debrider Device or the Intellectual Property Rights described in or evidenced by the Patent, in each case to the extent owned or held by Contributor as of the Effective Date.

The Patent and all Intellectual Property Rights described in, related to or associated with the Patent, including without limitation, all Intellectual Property Rights in and to and all rights to Practice the Device and the Intellectual Property Rights described in or evidenced by the Patent; and all Know-How and all technical and other information that is necessary, useful, or convenient to Practice the Device or the Intellectual Property Rights described in or evidenced by the Patent, in each case to the extent owned or held by Contributor as of the Effective Date.

Patent means United States Patent No. US 8,167,879 B2 issued May 1, 2012, and all continuations, continuations-in-part, divisions, re-examinations, and reissues thereof, and any corresponding foreign patents and foreign patent applications currently filed or filed in the future and any patent rights issuing, granted or registered thereon.

Field of Use

Medical device is namely rotational denervation cautery devices for the treatment of facet joint syndrome.

The present invention relates to spinal medical procedures.

Methods and surgical tools for treating back pain use a spinal facet debridement tool with cautery and denuding action and minimally invasive protocol that can denude and cauterize soft tissue associated with a synovial capsule of the spinal facet joint.

License Grant

Licensor hereby grants to Licensee a royalty-bearing exclusive, sublicensable, license under the Licensed Patents to Exploit any Licensed Product in the Field of Use, during the Term and throughout the Territory.

License Property

United States Patent
62/319,710 – Apparatus, method and system for providing customizable bone implants.
PCT/US2017/26681 – Apparatus, method and system for providing customizable bone implants.

In addition to the above, we have submitted the following 2 provisional patent applications
· 5247.005P– ROBOT MOUNTED CAMERA REGISTRATION AND TRACKING SYSTEM FOR ORTHOPEDIC AND NEUROLOGICAL SURGERY

· 5247.003P- A SYSTEM AND METHOD FOR INTERACTION AND DEFINITION OF TOOL PATHWAYS FOR A ROBOTIC CUTTING TOOL

Software means Sulaiman Somani’s automated segmentation and surgical planning pipelines captured as Mount Sinai TechID 170304.

Field of Use

Field of Use means the design, fabrication, and/or implantation of orthopedic implants, along with the robotic design, and/or robotic preparation of the surgical site for such implants.