Royalty Report: Medical, Diagnostic, Device – Collection: 7068

$150.00

Curated Royalty Rate Report
Category: Technology Licenses, Created On: 2022-04-28, Record Count: 8

Description

This collection of transactions and supporting information was developed using our AI algorithm to curate similar royalty reports into a cohesive collection to support your licensing, transfer pricing or other transaction scenarios where documented royalty rates and/or deal terms are important.
Category: Technology Licenses
Created On: 2022-04-28
Record Count: 8

Primary Industries

  • Medical
  • Diagnostic
  • Device
  • Genome
  • Drug Discovery
  • Delivery
  • Assay
  • Scientific & Technical Instruments
  • Medical Info

IPSCIO Report Record List

Below you will find the records curated into this collection.  This summary includes the complete licensed property description so that you can review and determine if this collection covers the topics, technology or transaction type that is relevant for your needs.  The full report will include all relevant deal data such as the royalty base, agreement date, term description, royalty rates and other deal terms.  For reference, here is a sample of a full IPSCIO curated royalty rate report: Sample Report

IPSCIO Record ID: 7068

License Grant
The Licensor hereby grants to Licensee, an exclusive, worldwide, License under the Subject Technology to make, have made, use, market, sell, subLicense, and offer for sale Licensed Products and services in the field of Microfluidics.
License Property
Subject Technology shall mean all Licensor technology, cell lines, biological materials, compounds, hardware, software, know-how, methods, documents, materials, tests, trade secrets, Trademarks, Improvements, and all other.

Microfluidics deals with tiny bits of liquids, usually measured in infinitesimal amounts, such as microliters.
Disclosure # 157. Integrated Microfluidic System for Proteome Analysis.
Disclosure #198. Porous Capillary Interface for Microfluidic Chip System.
Disclosure # 194. Edman Degradation in Microfludic Chip System.
Disclosure # 199. Novel Electroextraction Method.
Disclosure # 201 and 217. Microfluidic Valve.
Disclosure # 202 and 214. Apparatus and Method for Edman Degradation on a Microfluidic Device Utilizing an Electroosmotic Flow Pump.
Disclosure #213. Integration of Bi-Direction Capillary Electrophoresis into the Integrated Microfluidic System for Proteome Analysis.
Disclosure # 216. An Integrated Microfluidic System for Proteome Analysis Using a Concentrating Membrane.
Disclosure # 245. Use of Laser Micromachining to Produce Hydrodynamic Flow Restrictors in Microfluidic Devices.
Disclosure #215 and # 246. Novel Interfaces for Coupling Microfluidic Systems with Electrospray Ionization Mass Spectromety.
Disclosure #255. A Novel Saw-Toothed Shaped Gradient for Chromatographic Separations.

Field of Use
The license technology is in the field of protein discovery for therapeutic, diagnostic and all other commercial fields.

IPSCIO Record ID: 237247

License Grant
With this agreement, the parties desire to replace all prior license agreements between the Parties relating to the Original Proprietary Rights and any and all amendments thereto collectively, the Prior Agreements with a new amended and restated sole commercial license agreement to the Original Proprietary Rights.

Licensor grants to Licensee and its Affiliates the exclusive, non-governmental, commercial right and license under the Original Proprietary Rights to manufacture, have manufactured for Licensee and its Affiliates, use, sell, offer for sale and import the Products in the Original Field of Use, including the exclusive, non-governmental,  commercial right to grant sublicenses in the Original Field of Use.

Licensor grants to Licensee and its Affiliates the exclusive, non-governmental, commercial right and license under the New Proprietary Rights to manufacture, have manufactured for Licensee and its Affiliates, use, sell, offer for sale and import the Products in All Fields of Use, including the exclusive, non-governmental, right to grant sub licenses in All Fields of Use.

License Property
The patents include Apparatus and Method for Performing Microfluidic Manipulations for Chemical Analysis, and, Apparatus and Method for Performing Microfluidic Manipulations for Chemical Analysis and Synthesis.  The new patent property includes Microfabricated Device and Method for Multiplexed Electrokinetic Focusing of Fluid Streams and A Transport Cytometry Method Using Same, and, Microfluidic Circuit Designs for Performing Electrokinetic Manipulations that Reduce the Number of Voltage Sources and Fluid Reservoirs.
Field of Use
Original Field of Use shall mean all fields of application of the Proprietary Rights excluding Analysis of Nucleic Acids for Diagnostic Applications and Non-Electrophoretic Means of Gene Discovery.

Other Field shall mean the field of Analysis of Nucleic Acids for Diagnostic Applications and Non-Electrophoretic Means of Gene Discovery.

All Fields of Use shall mean all fields of application of the Proprietary Rights.

LabChip systems miniaturize, integrate and automate many laboratory processes and put them on a chip.  Licensee developed our microfluidic LabChip technology to provide a revolutionary advance in laboratory experimentation for the pharmaceutical and other industries.

IPSCIO Record ID: 385632

License Grant
This amended and restated agreement removes CSU and CALTECH as associated parties.

The University grants, to the extent of the Licensed Territory, an exclusive license to Universities rights under the Patent Rights and University Technology to make, have made, use, offer for sale and sell Licensed Products in the Licensed Field, with the right to sublicense, provided, that, Licensee’s right in the field of microfluidics and microfluidic devices shall be nonexclusive, with respect to CALTECH’S interest in the patent application Photocurable Perfluoropolymers for use as Novel Materials in Microfluidic Devices.

License Property
University owns and controls certain valuable inventions relating to the fabrication, use and engineering of various technologies, including microfluidic devices, small scale particles, and display devices.

University jointly owns patent applications relating to, and including, the patent application Photocurable Perfluoropolymers for use as Novel Materials in Microfluidic Devices.

Patents include
—  Photocurable Perfluoropolyethers for Use as Novel Materials in Microfluidic Devices;
—  Functional Materials and Novel Methods for the Fabrication of Microfluidic Devices;
—  Methods and Materials for Fabricating Microfluidic Devices;
—  Methods for Fabricating Isolated Micro-and Nanostructures Using Soft or Imprint Lithography;
—  Nanoparticle Fabrication Methods, Systems, and Materials;
—  Isolated and Fixed Micro and Nano Structures and Methods thereof;
—  Low Surface Energy Polymeric Material for Use in Liquid Crystal Displays;
—  Micro and Nano-particles for Photovoltaics and Methods of Making the Same;
—  New Materials Based on PFPE With Hydrophilic Components;
— Nano-Molding of Large Area, 2-D Array Photovoltaic Cells;
—  Delivery Apparatus and Associated Method;
—  Degradable Compounds and Methods of Use Thereof Particularly with Particle Replication in Non-Wetting Templates; and,
—  High Fidelity Through Hole Film, and Associated Method.

Field of Use
The Specific Licensed Field means microfluidics and microfluidic devices, genome mapping, sensors, nanostructures, biologic nanostructures, drug nanostructures, nano-scale reactions, drug screening, cell sorting, drug delivery, vaccines, cosmetics, diagnostics, tissue replication, soft lithography, semiconductors, RFID chips, MEMS, opto-electronic devices, display panels, photovoltaic applications, electrets, catalysts, taggants, drug discovery probes, disease detection probes, specialty coatings, or other fields disclosed in the Inventions.

IPSCIO Record ID: 385633

License Grant
The amended and restated agreement is for microfluidic devices, small scale particles, and display devices.
This amendment modifies the sublicense royalty rates.
License Property
University jointly owns patent applications relating to, and including, the patent application Photocurable Perfluoropolymers for use as Novel Materials in Microfluidic Devices.

Patents include
—  Photocurable Perfluoropolyethers for Use as Novel Materials in Microfluidic Devices;
—  Functional Materials and Novel Methods for the Fabrication of Microfluidic Devices;
—  Methods and Materials for Fabricating Microfluidic Devices;
—  Methods for Fabricating Isolated Micro-and Nanostructures Using Soft or Imprint Lithography;
—  Nanoparticle Fabrication Methods, Systems, and Materials;
—  Isolated and Fixed Micro and Nano Structures and Methods thereof;
—  Low Surface Energy Polymeric Material for Use in Liquid Crystal Displays;
—  Micro and Nano-particles for Photovoltaics and Methods of Making the Same;
—  New Materials Based on PFPE With Hydrophilic Components;
— Nano-Molding of Large Area, 2-D Array Photovoltaic Cells;
—  Delivery Apparatus and Associated Method;
—  Degradable Compounds and Methods of Use Thereof Particularly with Particle Replication in Non-Wetting Templates; and,
—  High Fidelity Through Hole Film, and Associated Method.The Licensed Field of use means all fields.

Field of Use
The Specific Licensed Field means microfluidics and microfluidic devices, genome mapping, sensors, nanostructures, biologic nanostructures, drug nanostructures, nano-scale reactions, drug screening, cell sorting, drug delivery, vaccines, cosmetics, diagnostics, tissue replication, soft lithography, semiconductors, RFID chips, MEMS, opto-electronic devices, display panels, photovoltaic applications, electrets, catalysts, taggants, drug discovery probes, disease detection probes, specialty coatings, or other fields disclosed in the Inventions.

IPSCIO Record ID: 5893

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.

IPSCIO Record ID: 203423

License Grant
With this amendment, pursuant to the original agreement, related to the development of genetic analysis systems incorporating microfluidic electrophoresis devices;  in the event that Licensee provides notice to Licensor, and Licensor notifies Licensee that it does not agree to pursue joint development of a Proposed Product described in Licensees Joint Development Proposal, such Proposed Product shall be deemed a Post Exclusive Period Product; and, subject to the exclusion, Licensor grants a worldwide, non-exclusive license, without right to sublicense beyond enduser customers, under the Valid Claims of Licensed Patents which claim Pre-Collaboration Licensor owned Intellectual Property or Collaboration Licensor owned Intellectual Property to make, have made by an Approved Third Party, offer to sell, sell, import and use such Post Exclusive Period Product in the Licensed Field, wherein Approved Third Party means a third party other than Caliper Technologies, Inc. or its Affiliate that has been approved by Licensor.

With the Japanese Exclusion, the non-exclusive license granted expressly excludes the manufacture, use or sale of Post Exclusive Period Product having fewer than 16 electrophoresis channels in Japan.

License Property
The licensed products being developed relate to Genetic Analysis Systems and Microfluidic Electrophoresis Devices.
Field of Use
The Licensor develops a wide range of assay chemistry and microfluidic technology and intellectual property that will enable broad address the genomics, proteomics and pharmaceutical drug screening markets.

IPSCIO Record ID: 452

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.

IPSCIO Record ID: 280873

License Grant
With this Court decision,  the Chromium instruments operating Gel bead in Emulsion microfluidic chips (GEM microfluidic chips) and associated consumables infringed certain of Licensor patents and that the infringement was willful.

The Court also granted Licensor a permanent injunction against the Licensees GEM microfluidic chips and associated consumables that were found to infringe the patents.

License Property
Certain Chromium instruments operate using the GEM microfluidic chips and associated consumables.

The GEM microfluidic chips are Gel bead in Emulsion microfluidic chips.

US Patent No. 8,871,444, titled 'In vitro evolution in microfluidic systems.'

This patent covers techniques for detecting enzymatic reactions in microfluidic droplets and is part of Licensor,s comprehensive portfolio of droplet intellectual property.'

Field of Use
Licensee is a life science technology company building products to interrogate, understand and master biology. The integrated solutions include instruments, consumables and software for analyzing biological systems at a resolution and scale that matches the complexity of biology.

With this judgement, Licensee is permitted to continue to sell its GEM microfluidic chips and associated consumables for use with historical installed base of instruments.

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