Royalty Report: Medical, Device, Personal Care Products – Collection: 882

License Grant

Licensor hereby grants to Licensee an exclusive license, with right to grant sublicenses, under each of the Non-Medicated Device Patents to make, have  made, use, import, offer to sell, sell and/or otherwise transfer, within the Field of Use, Licensee Products covered by any of the Non-Medicated Device Patents and within the Field of Use to otherwise practice the inventions covered by any of the Non-Medicated Device Patents.  Licensor  acknowledges that Licensee has the right to make, have made, use, import, offer to sell, and sell anywhere in the world Licensee Products within the Field of Use.   Licensee may authorize others to distribute Licensee Products manufactured by or for the order of Licensee.  Licensor further hereby grants to Licensee's distributors, sales representatives, and customers the right to use Licensee Products purchased directly or indirectly from Licensee.  Notwithstanding the foregoing, Licensor shall retain the right to make, have made, use, import, offer to sell, sell, and/or otherwise transfer Medicated Devices, to the extent such devices may be covered by one or more patent claims of the Non-Medicated Device Patents and subject to the non-competition provisions in this Agreement.

Non-Exclusive License.  Subject to the terms and conditions of this Agreement, Licensor hereby grants to Licensee, whether within or without the Field of Use, a worldwide non-exclusive license, under each of the Medicated Device Patents, to make, have made, use, import, offer to sell, sell and/or otherwise transfer Licensee Products that are Medicated Devices and to otherwise practice the inventions covered by any of such patents in connection with the manufacture, use, or sale of Licensee Products that are Medicated Devices, to the extent such Medicated Devices are covered by one or more valid and enforceable claims of the Licensor Patents.

Future Licenses.  Licensor also agrees to grant Licensee an exclusive license within the Field of Use under any future patents on which Licensor is an inventor or co-inventor excluding patents primarily covering Medicated Devices.  Licensor also agrees to grant Licensee a worldwide non-exclusive license, whether within or without the Field of Use, under any future patents on which Licensor is an inventor or co-inventor primarily covering Medicated Devices or similar products.  Licensor agrees to execute and deliver any documents that may be necessary to confirm such future licenses in this Agreement, as appropriate, shall thereby be deemed amended to incorporate such future license.  Licensor's obligations to license future patents to Licensee in accordance with this paragraph shall apply only to patents the application for which was filed on or before June 14, 2005, provided, however, that any continuation, continuation-in-part, divisional, or reissue application and any request for reexamination shall be treated for this purpose as having been filed on or before June 14, 2005 if at least one application in the U.S.  Patent and Trademark Office history of the patent was filed on or before June 14, 2005.

License Property

Patents relate to gel-based products that target orthopedics, skincare, and prosthetics.

Licensor represents that he is the owner of the entire right, title and interest in and to (1) an invention entitled Foot Protector Incorporating a Viscoelastic Gel, which is disclosed and claimed in United States Patent No. 5,497,789, which issued on March 12, 1996; (2) an invention entitled Viscoelastic Gel Foot Padding and Medicating Device, which is disclosed and claimed in United States Patent No. 5,098,421, which issued on March 24, 1992; and (3) an invention entitled Affixable Padding Material Using Gelatinous Viscoelastic Polymer, which is disclosed and claimed in United States Patent No 4,842,931, which issued on June 27, 1989.

Licensor represents that he is the owner of the entire right, title and interest in and to (I) an invention entitled Topical Drug Delivery System, which is disclosed and claimed in United States Patent No. 5,415,866, which issued on May 16, 1995; (2) an invention entitled Topical Medicating Device, which is disclosed and claimed in United States Patent No. 5,330,452, which issued on July 19, 1994; (3) an invention entitled Medicating Device for Nails and Adjacent Tissue, which is disclosed and claimed in United States Patent No. 5,181,914, which issued on January 26, 1993; and (4) an invention entitled Drug Delivery System for the Removal of Dermal Lesions, which is disclosed and claimed in United States Patent No. 5,167,649, which issued on December 1, 1992.

Licensee wishes to obtain from Licensor and Licensor wishes to grant to Licensee

1.  A license under United States Patents No. 5,497,789; 5,098,421; 4,842,931; 5,415,866; 5,330,452; 5,181,914; and 5,167,649 (hereinafter referred to as the Licensor Patents) and

2.  A license for all future patents on which Licensor is an inventor or co-inventor, subject to the limitations herein contained.

Field of Use

Field of Use means any of the following areas of intended use for which products excluding Medicated Devices may be sold or offered for sale by Licensee padding, friction, pressure, abrasion, sheer, shock reduction, skin protection, skin moisturization, and scar management.

License Grant

University foundation hereby grants to Licensee and its Affiliates an exclusive (even as to University), worldwide, fully transferable, sublicensable, irrevocable, non-terminable and cost-free (except for the Royalty and other remuneration provisions as provided hereof) license, continuing uninterrupted for the life of the Licensed Patents in the Licensed Territory to make, have made, use, offer for sale, import and sell Licensed Products and/or Licensed Processes claimed in the Licensed Patents for the Licensed Field.

University hereby grants to Licensee and its Affiliates a non-exclusive, license, in the Licensed Territory and the Licensed Field under the all Intellectual Property Rights (other than patent rights) in the Enabling Technology to make, have made, use, offer for sale, copy, disclose, and sell Licensed Products and/or Licensed Processes. Upon request of Licensee, University will deliver, or caused to be delivered, any Enabling Technology within the possession of the Inventors.

License Property

Licensed Patents shall refer to and mean all of the following patents and patent applications  U.S. Patent Application Serial No. 11/684,514, filed March 9, 2007, and the corresponding international PCT application (application number not yet assigned), filed March 9, 2007, titled Prosthetic Device and System and Method for Implanting Prosthetic Device; and all U.S. and foreign patent applications claiming priority to these applications or disclosing or claiming any Improvements, including without limitation divisional, continuation, and reissue applications and any patent(s)/patent application(s) claiming inventions resulting from the Research Agreement, whether or not such inventions are Improvements.

Field of Use

The invention relates to orthopedic joint replacement and, more particularly, to a prosthetic device for use in orthopedic joint replacement and a system and method for implanting the same.

License Grant

Inventors, two of whom are former officers and directors of the Licensee hereby grant and Licensees hereby accept exclusive licenses for the entire world to make, use and sell Products. Such licenses are perpetual, subject to the payment of royalties as provided herein.

License Property

'Gel Patents' shall refer to United States Patent No. 5,067,965, Bio-Oncotic Gel for Implant Protheses
'Micro Implant Patents and Patent Applications' refers to United States patent Application Serial Number 07/232,671, an Application, allowed in part and issued on November 2, l993, as Patent No. 5,258,028, United States Patent for Textured Micro Implants

'Reflux Disorders Patent Application' refers to United States Patent Application Serial Number 07/863,848, entitled Treatment of Urologic and Gastric Fluid Reflux Disorders by Injection of Micro Particles

Field of Use

Multiple patents Macroplastique(r) Implants are an injectable medical device implant designed to treat certain forms of urinary / in a minimally invasive procedure involving injection of the product material through a needle into the soft tissue at the bladder neck to act as a tissue bulking agent.

License Grant

HOSPITAL hereby grants to COMPANY in the LICENSE FIELD in the LICENSE TERRITORY for the LICENSE TERM
  (i) an exclusive, royalty-bearing license under PATENT RIGHTS to make, have made, use, have used, sell, offer to sell, have sold, and TRANSFER PRODUCTS and to use, have used, otherwise practice and have practiced and TRANSFER PROCESSES;

  (ii) the nonexclusive right to disclose, use and transfer TECHNOLOGICAL INFORMATION disclosed by HOSPITAL to COMPANY hereunder; and

  (iii) the right to grant sublicenses under the rights granted.

License Property

This product has achieved FDA clearance, to market CoolSculpting, for the selective reduction of fat.

The Licensee is a medical technology company focused on developing and commercializing products utilizing the proprietary controlled-cooling technology platform.

The first commercial product, the CoolSculpting System, selectively reduces stubborn fat bulges that may not respond to diet or exercise. CoolSculpting is based on the scientific principle that fat cells are more sensitive to cold than the overlying skin and surrounding tissues.

CoolSculpting utilizes precisely controlled cooling to reduce the temperature of fat cells in the treated area, which leads to fat cell elimination through a natural biological process known as apoptosis, without causing scar tissue or damage to the skin, nerves, or surrounding tissues. Our clinical studies demonstrate that a single CoolSculpting procedure safely, noticeably, and measurably reduces the fat layer within a treated fat bulge without requiring the patient to diet or exercise.

PATENT RIGHTS  1. US Utility Patent Application, Serial
No. 10/391,221, filed on March 17th, 2003,
claiming priority from US Provisional Application, Serial No. 60/365,662, filed on March 15th, 2003.  2. US Utility Patent Application, Serial No. 11/016,196, filed
on December 17th, 2003, a continuation in part of US
Utility Patent Application, Serial No 10/391,221.  3. PCT Patent Application, Serial No. US03/08014, filed on March 17, 2003.
4. Australia Patent Application No. 2003220311, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
5. Brazil Patent Application No. 0308642.9, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
6. Canada Patent Application No. 2,478,887, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
7. China Patent Application No. 03810938.7, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
8. Israel Patent Application No. 164115, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
9. Japan Patent Application No. 2003-576590, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
10. Mexico Patent Application No. 2004-008992, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.
11. EPO Patent Application No. 03711609.7, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on
March 17th, 2003.

Field of Use

License Field shall mean removal of cutaneous, subcutaneous or subdermal fat, treatment or removal of cellulite, andany therapy or procedures (including without limitation aesthetic therapies or procedures) to the tissues and structures of the skin (including without limitation sweat glands and hair follicles), subcutaneous tissue, and tumors, lesions and adipose tissue of the skin and of subdermal tissue

The Licensee shall itself or through an Affiliate or sublicensee make a first commercial sale within the following countries and regions within the following number years after the effective date of the Agreement
United States of America – Six years
Japan – Seven years
Latin America – Seven years
EPO – Seven years

License Grant

Hospital hereby grants to Company the following

(i) an exclusive, royalty-bearing license under patent rights to make, have made, use, have used, sell, offer to sell, have sold, and Transfer Products and to use, have used, otherwise practice and have practiced and Transfer Processes;

(ii) the nonexclusive right to disclose, use and Transfer Technology IinformationTechnological Information disclosed by Hospital to Company hereunder; and

(iii) the right to grant sublicenses under the rights granted in Section 2.l(a)(i) and 2.1(a)(ii) to Sublicensees, provided that in each case Compny shall be responsible for the performance of any obligations of Sublicensees relevant to this Agreement as if such performance were carded out by Company itself, including, without limitation, the payment of any royalties or other payments provided for hereunder, regardless of whether the terms of any sublicense provide for such amounts to be paid by the Sublicensee directly to Hospital.

License Property

This product has achieved FDA clearance, to market CoolSculpting, for the selective reduction of fat.

The Licensee is a medical technology company focused on developing and commercializing products utilizing our proprietary controlled-cooling technology platform.

Our first commercial product, the CoolSculpting System, selectively reduces stubborn fat bulges that may not respond to diet or exercise. CoolSculpting is based on the scientific principle that fat cells are more sensitive to cold than the overlying skin and surrounding tissues.

CoolSculpting utilizes precisely controlled cooling to reduce the temperature of fat cells in the treated area, which leads to fat cell elimination through a natural biological process known as apoptosis, without causing scar tissue or damage to the skin, nerves, or surrounding tissues. Our clinical studies demonstrate that a single CoolSculpting procedure safely, noticeably, and measurably reduces the fat layer within a treated fat bulge without requiring the patient to diet or exercise.

PATENT RIGHTS
1. US Utility Patent Application, Serial No- 10/391,221, filed on March 17th, 2003, claiming priority From US Provisional Application, Serial No. 60/365,662, filed on March 15th, 2003.
2. US Utility Patent Application, Serial No. 11/016,196, filed on December 17th, 2003, a continuation in part of US Utility Patent Application, Serial No 10/391,221.
3. PCT Patent Application, Serial No. US03/08014, filed on March 17, 2003.
4. Australia Patent Application No 2003220311, claiming priority from PCT Patent Application No. PCT/US03/08014, tiled on March 17th, 2003.
5. Brazil Patent Application No, 0308642.9, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on March 17th, 2003.
6. Canada Patent Application No. 2,478,887, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on March 17th, 2003.
7. China Patent Application No, 03810938.7, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on March 17th, 2003.
8. Israel Patent Application No. 164115, claiming priority from PCT Patent Application No. PCT/US03/08014, filed on March 17th, 2003.
9. Japan Patent Application No. 2003-576590, claiming priority from PCT Patent Application No PCT/US03/08014, filed on March 17th, 2003.
10. Mexico Patent Application No. 2004-008992, claiming priority from PCT Patent Application No PCT/US03/08014, filed on March 17th, 2003.
11. EPO Patent Application No. 03711609.7, claiming priority from PCT Patent Application No, PCT/US03/08014, filed on March 17th, 2003.

Field of Use

“LICENSE FIELD” shall mean removal of cutaneous, subcutaneous or subdermal fat, treatment or removal of cellulite, and any therapy or procedures (including without limitation aesthetic therapies or procedures) to the tissues and structures of the skin (including without limitation sweat glands and hair follicles), subcutaneous tissue, and tumors, lesions and adipose tissue of the skin and of subdermal tissue.bb