Royalty Report: Medical, Device, Surgical – Collection: 645

License Grant

Licensor hereby grants to Licensee (a) a royalty-bearing, and exclusive license under the Subject Technology to make, have made, use and sell Wet Electrode Products in the Field of Use that are Licensed Products throughout the Territory and (b) a royalty-bearing and non-exclusive license under the Subject Technology to make, have made, use and sell Wet Electrode Generators in the Field of Use that are Licensed Products throughout the Territory.

License Property

Licensor has developed certain technology related to “Wet Electrode Products” and a “Wet Electrode Generator”.

“Wet Electrode Generator(s)” shall mean the medical generators primarily intended to provide power directly to Wet Electrode Products, in the Field of Use.

“Wet Electrode Products” shall mean medical blades, forceps or rollerballs that employ an electrode to deliver radio frequency energy and an electrically conductive fluid between the electrode and the surface of living tissue to apply radio frequency energy in medical applications, in the Field of Use. Wet Electrode Products specifically exclude any interstitial needle or intraluminal wire devices or products.

The technology forms the basis for the Company’s TranscollationTM technology.

Transcollationâ„¢ is the transformation of fibrous collagen resulting from the remodeling of its triple helix structure.  Transcollationâ„¢ Technology simultaneously integrates saline and RF energy allowing thermal energy to gently reach targeted tissues via saline-induced liquid electrodes.

Transcollation technology platform is used for the sealing of blood vessels and other collagen-based structures. We believe that our products improve surgical procedures and patient outcomes by enabling surgeons to substantially reduce blood loss during and after surgery. We believe our Transcollation technology provides clinical and economic benefits to patients, physicians, hospitals and payors by addressing many of the limitations of alternative blood loss management methods. Our Transcollation technology is designed to deliver an optimized combination of RF energy and electrically conductive fluid, such as saline, to permanently seal blood vessels and other collagen-based structures in soft-tissue and bone.

Interstitial Needle Patents

License Grant

License Grant to Licensee under the Licensor Infusion Claims. Subject to the terms and conditions of this Agreement, including, without limitation, the limitations set forth in this agreement, and in consideration of the payment of royalties by Licensee to Licensor, Licensor hereby grants to Licensee and Licensee’s Affiliates, under the Licensor Infusion Claims, a non-exclusive license throughout the Licensed Territories in the Field to make, have made, use, practice, import, offer to sell, sell and otherwise dispose of or make available for use, directly or indirectly, Products and Methods which, but for the license granted herein, would infringe any one or more of the Licensor Infusion Claims. Notwithstanding any other provision of this Agreement
(a) the foregoing license extends only to such Products and Methods as are offered for sale, sold and otherwise disposed of or made available for use under Licensee’s (or its Affiliates’) own trademarks, tradenames and/or label(s), which shall be the most prominent trademarks, tradenames and/or label(s) thereon, and does not extend, and shall not be construed to extend, to any Products, or parts or components thereof, offered for sale, sold or otherwise disposed of or made available for use to any Third Person by Licensee or its Affiliates for resale or re-distribution by such Third Person solely under such Third Person’s own trademarks, tradenames and/or label(s); and
(b) Licensee, on behalf of itself and its Affiliates, hereby covenants and agrees not to market, offer for sale or sell any Products or Methods that, absent the foregoing license, would infringe the Licensor Infusion Claims, until eighteen (18) months after the Effective Date.

License Property

Licensor Infusion Claims shall mean those Claims of any patents within the Licensor Patent Portfolio which require for infringement liquid infusion capability or the use of liquid infusion.

Licensor Patent Portfolio
U.S. Patent No. 5,458,597 – Device for treating cancer and non-malignant tumors and methods
U.S. Patent No. 5,472,441 – Device for treating cancer and non-malignant tumors and methods
U.S. Patent No. 5,486,161 – Medical probe device and method

Field of Use

Field shall mean Products and Methods used to ablate tumors with radio frequency (RF) electrical energy.  Sub-Field shall mean tumor ablation within the Field directed to specific organs or regions of the body.

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

Licensor grants a non-transferable non-assignable, non-exclusive worldwide license, without the right to sublicense, under the Licensed Patent Rights to make, have made, market, use, import, distribute, sell, have sold, and offer for sale the Licensed Products solely in the Field of Use.

For the Option, Licensor grants an option for a non-transferable, non-assignable, non-exclusive license, without the right to sublicense, under the Licensed Patent Rights to make , have made, market, use, import, distribute, sell, have sold and offer for sale Licensed Products solely in one or more of the Additional Fields.

License Property

Licensed Products shall mean a Controller or Disposable Product within the scope of a Valid Claim, which is either an aparatus or method claim.

Controllers shall mean a radio frequency power supply that operates at any frequency between 10Khz and 20Mhz.

Disposable Products shall mean medical instruments and components of such medical instruments which may have one or more electrode(s) and electrical connections for coupling the electrode(s) to a Controllers.

Lumen Products shall mean Disposable Products having one or more lumens for the purpose of aspiration or fluid delivery.

Thermal Products shall mean Disposable Products used for the thermal treatment of tissue without significantly ablating, cutting, resecting or otherwise removing tissue.

The rights relate  to Licensor's Coblation radiofrequency technology for use in its single electrode, bipolar arthroscopic surgical devices.

Field of Use

The Field of Use  shall mean the use of RF energy in arthroscopy.

Additional Fields shall mean the use of RF energy in laparoscopy, neurosurgery, general surgery, ENT and spinal procedures.

The Coblation technique uses bipolar radiofrequency technology to remove tissue with minimal collateral tissue necrosis.

License Grant

The Licensor hereby grants an exclusive right and License under the Licensed Subject Matter to make, have made, use, import, sell and offer to sell and have sold Licensed Products to Customers in the territory, Direct Current Energy Discharge System for use in the fields of decontamination, sterilization and industrial processing using plasma generated by methods or apparatuses claimed under U.S. patent # 6,232,723 including but not limited to, sterilization or decontamination of equipment, facilities or areas, and modification of chemical properties of such things as areas, surfaces or compounds.

License Property

Licensor has acquired, developed and patented certain gas plasma antenna ('GPA') technology that utilizes ionized gas in a vessel as an antenna to both receive and transmit radio frequency signals and as a reflector/shield/filter for radio frequency signals. As a result of Licensor 's inventions it was awarded, by assignment and/or has pending the patents and patent applications listed.

License Grant

Licensee has an exclusive license to reproduce, distribute, sell, lease, display and perform and otherwise use the Property (including the SOLACE medical device) for use in pain management.

License Property

Licensed intellectual property consists of several issued and pending US patents licensed.
Licensed patent consists of the following
– US Patent 7,967,839 Electromagnetic Treatment of Tissues and Cells
– US Patent 10,271,900 Inductive Heating of Tissues Using Alternating Magnetic Fields and Uses Thereof
– US Patent 10,441,346 Inductive Heating of Tissues Using Alternating Magnetic Fields and Uses Thereof

SOLACE, a non-invasive medical device that uses electromagnetic induction to generate deep heat below the surface of the skin to reduce and relieve pain. The SOLACE platform is based on proprietary high-frequency magnetic induction technology, which is referred to as Electromagnetic Induction (“EMI”). Magnetic fields are induced beneath the skin surface to create localized, planar heat in the dermis and deeper muscle, while selectively avoiding sensitive structures in the epidermis and fat layers. By comparison, the SOLACE device creates currents in discreet planes beneath the tissue surface rather than directing energy through the planes and penetrating the epidermis. Therefore, the EMI technology may provide for shorter duration of treatments and a more comfortable patient experience vs. other energy-based technologies. The SOLACE device utilizes a directional handpiece to apply the planar heat more precisely to discrete areas of the body, which may provide clinicians with greater therapeutic control.

Field of Use

SOLACE is a non-invasive medical device that uses electromagnetic induction to generate deep heat below the surface of the skin to reduce and relieve pain.