Royalty Report: Medical, Device, Diagnostic – Collection: 7157

License Grant

Seller desires to sell and deliver to Buyer, and Buyer desires to purchase and receive from Seller all, right, title and interest in and to certain Seller’s assets used or useful in connection with the operation of the Business in the RFID Field, so as to permit Buyer to independently pursue the development and improvement of the Business in the RFID Field.

License Property

In the past, the Seller’s business has included the manufacture and sale of implantable passive radio-frequency identification microchips (RFID Chip), and components related thereto, including readers, transponders, implanters, packaging devices and related services (the Business).

Seller, in conjunction with its development partner (a third party) has developed the GlucoChipâ„¢, a product designed to measure blood glucose levels in vivo. This product is based on the intellectual property (patents, patents pending and other intellectual property) being sold to Buyer as a part of this agreement. Simultaneously with the execution of this agreement, the parties will enter into a License Agreement whereby Buyer will grant a license to Seller regarding and including the GlucoChipâ„¢.

Description of Assets. Upon the terms and subject to the conditions hereof, on the Closing Date, Seller shall sell, transfer, assign and deliver to Buyer, and Buyer shall purchase from Seller, all of Seller’s right, title and interest in and to all of Seller’s assets that are limited to the operation of the Business in the RFID Field, including, without limitation, the following assets (collectively referred to as the Purchased Assets) which shall be conveyed in the manner described  The patents and patent applications, including divisions, continuations, renewals, reissuances, and extensions of the foregoing (as applicable) listed in this Agreement shall be transferred and assigned to Buyer (the Assigned Patents), pursuant to an assignment of patent, and Seller shall receive from Buyer a full and irrevocable covenant not to sue for Seller's use of such patents and patent applications pursuant to the License Agreement between Seller and Buyer dated August 28, 2012.

Assigned Patents

Patent #
                  Title

7,125,382            Embedded Bio-Sensor System
7,297,112            Embedded Bio-Sensor System
2008/0033273     Embedded Bio-Sensor System
7,241,266            Transponder for Embedded Bio-Sensor using Body Energy as a Power Source

The implantable RFID device is protected under United States Patent No. 7,125,382, Embedded Bio Sensor System for the purpose of designing and constructing, using, selling and offering to sell products or services related to the Licensee business, but excluding the GlucoChip, or any product or application involving blood glucose detection or diabetes management.  

Embedded bio-sensor system – Provided is a bio-sensor system which utilizes radio frequency identification technology and which includes a remote transponder in wireless communication with an implantable passively-powered on-chip transponder. The bio-sensor system is specifically adapted to provide a substantially stable and precise sensor reference voltage to a sensor assembly that is included with the on-chip transponder.

The remote transponder is also configured to remotely receive data representative of a physiological parameter of the patient as well as identification data and may enable readout of one or more of the physiological parameters that are measured, processed and transmitted by the on-chip transponder upon request by the remote transponder. The precision and stability of the sensor reference voltage is enhanced by the specific circuit architecture of the glucose sensor to allow for relatively accurate measurement of the physiological parameter such as measurement of glucose concentration by a glucose sensor without the use of a microprocessor.

Field of Use

Buyer intends to develop, market, and sell RFID systems used to identify, locate and protect people, medical devices and other applications, which systems use the RFID Chip and components related thereto, including readers, transponders, implanters and packaging devices, and which future systems, products, components and services developed by or on behalf of Buyer may use the RFID Chip or portions thereof (RFID Field).

License Grant

Licensor grants a non-exclusive, non-transferable license under the patent rights to design and construct, use, sell and offer to sell licensed products and the right to grant sublicenses under the patent rights.

License Property

The licensed property is U.S. Patent No. 7,125,382, Embedded Bio Sensor System which expires October 24, 2026 and U.S. Patent Application No. Wireless Molecular Sensor System and Process, Application Number 20110282175.

Field of Use

The field of methods and products related to an implantable radio frequency identification (RFID) device, employing PositiveID’s proprietary technology or methods and capable of connecting to a database which can contain information related to the RFID microchip, such as personal identification or health information. The term Field expressly excludes Restricted Applications.

License Grant

Licensee, the company subsidiary, entered into an agreement that permits licensee to use Sensor technology (Noninvasive Glucose Sensor) for the manufacture and sale by licensee of a proposed implantable closed loop system.

License Property

The Sensor will enable users to measure blood glucose levels without taking blood samples.  The Sensor is subject to clinical testing and regulatory approvals by the FDA.

License Grant

Seller shall sell, assign, transfer and convey to Buyer (or such Affiliates of Buyer as Buyer may direct), and Buyer (or such Affiliates of Buyer as Buyer may direct) shall purchase, acquire and accept from Seller, all of Seller’s right, title and interest to and in all of the Assets of Seller that are primarily used in or held for use in, or necessary for, the operation of the Business, of every kind and description, wherever located, real, personal or mixed, tangible or intangible, as the same shall exist at the Effective Time, free and clear of all Liens other than Permitted Liens (the Purchased Assets).

License Property

Business means the business of developing, commercializing, distributing, marketing, selling and servicing of medical devices used in the diagnosis or treatment of cancer in human beings, but does not include Seller’s businesses (i) of distributing, marketing, selling and servicing blood flow monitoring devices, (ii) of developing, commercializing, marketing, distributing and selling biologics or pharmaceuticals, or (iii) of developing and commercializing personalized cell processing technology; or (iv) that require the use of any asset described in Agreement.

Product or Products means instruments, devices and related accessories developed, manufactured, marketed or sold by (or on behalf of) the Business, including but not limited to the instruments, devices and accessories set forth
14mm Collimator
14mm Corded Probe
14mm Wireless Probe
14mm Wireless Probe
Laparoscopic Wireless Probe
8 High Energy (Fl 8) Probe
9mm Wireless Probe (straight head)
Serial Port Adapter and Software Upgrade Kit for Bluetooth Probes
AC Power Cord, N. America
Reusable 14mm High Energy Probe Cord
Accessory Case —··– 2021 NPA73 Probe Cable
Probe Cable
Software and Utilities Kit 2045
Software and Utilities Kit 2046
Software and Utilities Kit 2200
Control Unit, Model 2200 (incl. 2201 Operations Manual)
Control Unit, Model 2300 (incl. 2201 Operations Manual)
Check Source Holder with Software

Purchased Assets include but not limited to tangible personal property, books, records, all Intellectual Property, Accounts Receivables, Inventory and Contracts.

Intellectual Property means (i) Patents, (ii) Trademarks, (iii) Trade Names, (iv) rights in trade dress and packaging, (v) shop rights, (vi) copyrights and copyright registrations and applications for registration, (vii) inventions and invention disclosures, (viii) trade secrets, (ix) domain name registrations, (x) utility models, (xi) rights in industrial designs, (xii) software, (xiii) Know-how, and (xiv) all other intellectual property rights, whether granted or registered or not, in each case wherever such rights exist throughout the world, and including the right to recover for any past infringement, misappropriation or other violations thereof.

Patents means all pending, abandoned, expired, completed, and issued U.S. and foreign patent applications and patents therefor (including all reissues, re-examinations, divisions, continuations, continuations-in-part and extensions thereof, foreign equivalence thereto, provisional and non-provisional applications, including Patent Cooperative Treaty (PCT) and regional patent applications), as well as all files and documents relating to any of the foregoing.

Trademarks means all pending, expired, abandoned, registered, unregistered, and common law U.S. and foreign trademark applications and trademarks, service mark applications and service marks, designs, logos, and trade dress, including the goodwill related to the foregoing, and all federal and state registrations thereof.

Field of Use

Field of use is handheld gamma radiation detection devices used in the diagnosis or identification of cancer in human beings.