EXCLUSIVE LICENSE AGREEMENT FOR: MECHANISM TO ENABLE NORMAL GAIT DESPITE LEG INJURIES, DECREASING OXYGEN CONSUMPTION BY USE OF A LOAD-CARRYING EXOSKELETON, UNDER-ACTUATED TRANSFEMORAL PROSTHETIC KNEE, AND CONTROLLING THE SWINGING LEG OF AN EXOSKELETON...
Exhibit 10.20
EXCLUSIVE LICENSE AGREEMENT
FOR:
MECHANISM TO ENABLE NORMAL GAIT DESPITE LEG INJURIES,
DECREASING OXYGEN CONSUMPTION BY USE OF A
LOAD-CARRYING EXOSKELETON,
UNDER-ACTUATED TRANSFEMORAL PROSTHETIC KNEE, AND
CONTROLLING THE SWINGING LEG OF AN EXOSKELETON
UC Case Numbers: B07-128, B08-119, B08-125, B08-141
This license agreement (“AGREEMENT”) is entered into as of the date that this AGREEMENT is fully executed by both parties (“EFFECTIVE DATE”), by and between The Regents of the University of California, a California corporation, having its statewide administrative offices at 0000 Xxxxxxxx Xxxxxx, 00xx Xxxxx, Xxxxxxx, Xxxxxxxxxx 00000-0000 acting through its Office of Technology Licensing, at the University of California, Berkeley, having its administrative office at 0000 Xxxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxx, XX 00000-0000 (“REGENTS”), and Berkeley ExoTech, Inc. dba Berkeley Bionics and formerly dba Berkeley ExoWorks (“LICENSEE”), a Delaware corporation, having a principal place of business at 0000 Xxxxxxxxxx Xxxxxx, #000, Xxxxxxxx, XX 00000. The parties agree as follows:
1.1 REGENTS has an assignment of the intellectual property characterized as (collectively “INVENTIONS”):
1.1a Mechanism to Support Those with Lower Leg Injuries While Enabling Them to Walk with a Near Normal Gait as described in REGENTS Case Number B07-128 and PATENT RIGHTS that was invented by Xxxxxxxx Xxxxxxxxx, Xxxx Xxxxx Xxxxxxx, Xxxxxxxx Xxxx, and Xxxx Xxxxx, all employed by the University of California, Berkeley at the time that the invention was made;
1.1b Device and Method for Decreasing Oxygen Consumption of a Person During Steady Walking by Use of a Load-Carrying Exoskeleton as described in REGENTS Case Number B08-119 and PATENT RIGHTS that was invented by Xxxxxxxx Xxxxxxxxx and Xxxx Xxxxxxxx, all employed by the University of California, Berkeley at the time that the invention was made, and also invented by Xxxx Xxxxxx and Xxxxxx Xxxxxxx, all employed by LICENSEE at the time that the invention was made; accordingly, the patent rights for this invention are expected to be jointly-owned between REGENTS and LICENSEE;
1.1c Under-Actuated Transfemoral Prosthetic Knee as described in REGENTS Case Number B08-125 and PATENT RIGHTS that was invented by Xxxxxxxx Xxxxxxxxx, Xxxx Xxxxxxx, Xxxxxx Xxxxxxxxx, Xxxxxxxxx Xxxxx, and Xxxxxxx Xxxx, all employed by the University of California, Berkeley at the time that the invention was made, and also invented by Xxxxx Xxxxxx Fairbanks, Xxxx Xxxx, and Xxxxxxx Xxxxxx, all employed by LICENSEE at the time that the invention was made; accordingly, the patent rights for this invention are expected to be jointly-owned between REGENTS and LICENSEE; and
| Page 1 of 34 |
1.1d A Method for Controlling the Swing Leg of an Exoskeleton as described in REGENTS Case Number B08-141 and PATENT RIGHTS that was invented by Xxxxxxxx Xxxxxxxxx, employed by the University of California, Berkeley at the time that the invention was made, and also invented by Xxxx Xxxxxxxx and Xxxx Xxxxxx, all employed by LICENSEE at the time the invention was made; accordingly, the patent rights for this invention are expected to be jointly-owned between REGENTS and LICENSEE.
1.2 LICENSEE and REGENTS jointly own the intellectual property resulting from the INVENTIONS described in Paragraphs 1.1b, 1.1c and 1.1d.
1.3 LICENSEE has another exclusive license agreement (“OTHER RELATED LICENSE AGREEMENT”) with REGENTS that is related to REGENTS Case Numbers B04-002, B05-045, B05-093, and B06-042. The OTHER RELATED LICENSE AGREEMENT will co-exist with this AGREEMENT; moreover the technology, applications and markets associated with the OTHER RELATED LICENSE AGREEMENT are related to the technology, applications and markets associated with this AGREEMENT.
1.4 LICENSEE provided REGENTS with a marketing overview and financial forecasts for the commercialization of the INVENTIONS in order to evaluate LICENSEE’s capabilities as a LICENSEE.
1.5 In accordance with Paragraph 3.3 of this AGREEMENT, the development of the INVENTIONS in Paragraphs 1.1b (B08-119) and 1.1c (B08-025) were sponsored in part by various grants from U.S. Government agencies, and as a consequence, REGENTS elected to retain title to the INVENTIONS subject to the rights and regulations of the U.S. Government under 35 USC 200-212 and implementing regulations, including REGENTS’s grant to the U.S. Government of a non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the INVENTIONS for or on behalf of the U.S. Government throughout the world. These U.S. Government grants are DARPA Contract No. DAD19-01-1-0509.
1.6 LICENSEE requested certain rights from REGENTS to commercialize the INVENTIONS.
1.7 REGENTS wishes to respond to the request of the LICENSEE by granting the following rights to the LICENSEE to enable the general public to enjoy the products and other benefits derived from the INVENTION.
As used in this AGREEMENT, the following terms, whether used in the singular or plural, have the following meanings:
| Page 2 of 34 |
2.1 “PATENT RIGHTS” excludes any rights in and to NEW DEVELOPMENTS, and means the PATENT CLAIMS of, to the extent assigned to or otherwise obtained by REGENTS, (a) the U.S. patents and patent applications, (b) the corresponding foreign patents and patent applications, and (c) any reissues, extensions, substitutions, continuations, divisions, and continuation-in-part applications (but only those PATENT CLAIMS in the continuation-in-part applications that are entirely supported in the specification and entitled to the priority date of the parent application) that are based on future patents and patent application for the following:
2.1a The INVENTION described in Paragraph 1.1a, Mechanism to Support Those With Lower Leg Injuries While Enabling Them to Walk With a Near Normal Gait, filed by Xxxxxxxx Xxxxxxxxx, Xxxx Xxxxx Xxxxxxx, Xxxx Xxxxx, and Xxxxxxxx Xxxx;
2.1b The INVENTION described in Paragraph 1.1b, Device and Method for Decreasing Oxygen Consumption of a Person During Steady Walking by Use of a Load-Carrying Exoskeleton, filed by Xxxxxxxx Xxxxxxxxx, Xxxx Xxxxxxxx, Xxxxxx Xxxxxxx, Xxxx Xxxxxx;
2.1c The INVENTION described in Paragraph 1.1c, Under-Actuated Transfemoral Prosthetic Knee, filed by Xxxxxxxx Xxxxxxxxx, Xxxx Xxxxxxx Xxxxxx Xxxxxxxxx, Xxxxxxxxx Xxxxx, Xxxxxxx Xxxx, Xxxxx Xxxxxx Xxxxxxxxx, Xxxx Xxxx, and Xxxxxxx Xxxxxx; and
2.1d The INVENTION described in Paragraph 1.1d, A Method for Controlling the Swing Leg of an Exoskeleton, filed by Xxxxxxxx Xxxxxxxxx, Xxxx Xxxxxxxx and Xxxx Xxxxxx.
2.2 “PATENT CLAIM” means a claim of a patent or patent application in any country that (a) has not expired; (b) has not been disclaimed; (c) has not been cancelled or superseded, or if cancelled or superseded, has been reinstated; and (d) has not been revoked, held invalid, or otherwise declared unenforceable or not allowable by a tribunal or patent authority of competent jurisdiction over such claim in such country from which no further appeal has or may be taken.
2.3 “NEW DEVELOPMENT” means inventions, or claims to inventions, which constitute advancements, developments, or improvements, whether or not patentable and whether or not the subject of any patent application, but if patentable, are not sufficiently supported by the specification of a previously-filed patent or patent application within the PATENT RIGHTS to be entitled to the priority date of the previously-filed patent or patent application.
2.4 “LICENSED PRODUCT” means any product, service, kit, material, or apparatus either (a) produced by, used in, or required for the practice of LICENSED METHOD, or (b) the manufacture, use, SALE, offer for SALE, distribution, or import of which, which for both (a) and (b) in the absence of the license granted in this AGREEMENT, would infringe, or contribute to, or induce the infringement of, any PATENT RIGHTS were they issued in a country at the time of the infringing activity in that country. The definition of LICENSED PRODUCT includes LICENSED METHOD (as defined below).
| Page 3 of 34 |
2.5 “LICENSED METHOD” means any process, service or method the use or practice of which, in the absence of the license granted in this AGREEMENT, would infringe, or contribute to, or induce the infringement of any PATENT RIGHTS were they issued in a country at the time of the infringing activity in that country.
2.6 “LICENSED FIELD-OF-USE” means the following applications or markets: all applications and markets without limitation (no restrictions).
2.7 LICENSED TERRITORY” means jurisdictions where REGENTS has obtained, or obtains PATENT RIGHTS, or filed corresponding patent applications under PATENT RIGHTS.
2.8 “SUBLICENSEE” means the third parties, AFFILIATES or JOINT VENTURES that, to the extent allowable by this AGREEMENT, are granted a sublicense by LICENSEE to practice LICENSED METHOD, or to make, have made, use, SELL, offer for SALE, distribute or import LICENSED PRODUCT. For purposes of clarity, the term SUBLICENSEE excludes end-users of a LICENSED PRODUCT, or other similar instances where “use” is the only PATENT RIGHT granted to such third party.
2.9 “SALE” means the act of selling, leasing or otherwise transferring, providing, exploiting or furnishing for use for any consideration. Correspondingly, “SELL” means to make a SALE or cause a SALE to be made, and “SOLD” means to have made a SALE or caused a SALE to have been made.
2.10 “COMBINATION LICENSED PRODUCT” means a LICENSED PRODUCT that is a combination of one or more LICENSED PRODUCTS with one or more products that are not LICENSED PRODUCTS (“NLPs”) where such NLP(s) has independent value from the LICENSED PRODUCT (i.e., the COMBINATION PRODUCT incorporating or using such NLP has a higher value or utility than the applicable LICENSED PRODUCT without such NLP).
2.11 “NET INVOICE PRICE” means the gross invoice price charged and the value of any other consideration received for a SALE of a LICENSED PRODUCT or the performance of a LICENSED METHOD when SOLD or performed by LICENSEE or SUBLICENSEE, less the following items, but only to the extent that they actually pertain to the disposition of LICENSED PRODUCT, LICENSED METHOD, COMBINATION LICENSED PRODUCT (as defined below), or combination thereof, and are separately billed:
i. Allowances actually granted to customers for rejections, returns, prompt payment or volume discounts;
ii. Freight, transport packing, or insurance charges associated with transportation;
iii. Taxes, including DEDUCTIBLE VALUE-ADDED TAX, tariffs or import/export duties based on SALES when included in the gross invoice price, but excluding value-added taxes other than DEDUCTIBLE VALUE-ADDED TAX or taxes assessed on income derived from SALES. “DEDUCTIBLE VALUE-ADDED TAX” means value-added tax only to the extent that such value-added tax is actually incurred and is not reimbursable, refundable, or creditable under the tax authority of any country;
| Page 4 of 34 |
iv. Discounts or rebates paid or credited to customers, third-party payers, health-care systems, or administrators solely to promote the inclusion of LICENSED PRODUCT in formulary programs;
v. Wholesaler’s discounts or rebates to customers, third-party payers, health-care systems, or administrators solely to promote the inclusion of LICENSED PRODUCT in formulary programs; and
vi. Rebates or discounts paid or credited pursuant to applicable law.
2.12 “NET SALES PRICE” means the NET INVOICE PRICE except in the instances described as follows:
2.12a In those instances where LICENSED PRODUCT, or LICENSED METHOD is not SOLD, but is otherwise exploited, the NET SALES PRICE for the purpose of computing royalties for LICENSED PRODUCT and LICENSED METHOD are determined as follows:
i. If LICENSEE and/or any SUBLICENSEE are currently offering for SALE products or services that are the same or similar to LICENSED PRODUCT or LICENSED METHOD, then the NET SALES PRICE for LICENSED PRODUCT or LICENSED METHOD otherwise exploited is the NET INVOICE PRICE of products or services of the same or similar kind and quality, SOLD in similar quantities, currently being offered for SALE by the LICENSEE and/or any SUBLICENSEE; or
ii. If LICENSEE and/or any SUBLICENSEE are not currently offering for SALE products or services that are the same or similar to LICENSED PRODUCT or LICENSED METHOD, then NET SALES PRICE for a LICENSED PRODUCT or LICENSED METHOD otherwise exploited, is the average NET INVOICE PRICE at which products or services of the same or similar kind and quality, SOLD in similar quantities, are currently being offered for SALE by other manufacturers; or
iii. If LICENSEE, SUBLICENSEE and/or any other companies are not currently offering for SALE products or services that are the same or similar to LICENSED PRODUCT or LICENSED METHOD, then the NET SALES PRICE for LICENSED PRODUCT or LICENSED METHOD otherwise exploited, is the LICENSEE’s and/or any SUBLICENSEE’s costs of manufacture of LICENSED PRODUCT or costs of performing LICENSED METHOD, determined by the customary accounting procedures of the LICENSEE and/or any SUBLICENSEE, plus one-hundred percent (100%) of those costs.
2.12b Sales of COMBINATION LICENSED PRODUCTS: The applicable NET SALES PRICE for any COMBINATION LICENSED PRODUCT will be calculated by
| Page 5 of 34 |
i Multiplying the NET INVOICE PRICE of the COMBINATION LICENSED PRODUCT by the ratio of the average NET INVOICE PRICE of the LICENSED PRODUCT included in the combination (during the six-month period in which such combination SALE occurred) to the sum of the average NET INVOICE PRICE of each of the LICENSED PRODUCT and the NLPs included in the combination (during the six-month period in which such combination SALE occurred); or
ii If an item included in the combination is not offered for SALE by LICENSEE, then
ii1. The NET INVOICE PRICE of the item will equal the average NET INVOICE PRICE at which products of the same or similar kind and quality, sold in similar quantities, are offered for SALE by other manufacturers (during the six months in which such combination SALE occurred) to the extent such information is readily available to LICENSEE; or
ii2. If the items are not offered for SALE by LICENSEE or any other company or cannot be reasonably ascertained by LICENSEE, then the NET INVOICE PRICE of the item will equal LICENSEE’s cost of goods sold (“COGS”) related to the manufacture of the item as determined by the customary accounting procedures of LICENSEE, plus one-hundred percent (100%) of those COGS.
2.12c For a REACQUISITION SALE OR EXPLOITATION, the NET SALES PRICE means the NET INVOICE PRICE upon final SALE of LICENSED PRODUCT by LICENSE or SUBLICENSEE. “REACQUISITION SALE OR EXPLOITATION” means those instances where the LICENSEE acquires LICENSED PRODUCT or a SUBLICENSEE acquires LICENSED PRODUCT, and then subsequently SELLS such LICENSED PRODUCT.
2.12d For any reason RELATIONSHIP-INFLUENCED SALE of LICENSED PRODUCT or LICENSED METHOD, the NET SALES will be based on the NET INVOICE PRICE at which the RELATIONSHIP-INFLUENCED SALE PURCHASER resells LICENSED PRODUCT (and not in addition to the NET INVOICE PRICE charge by LICENSEE or SUBLICENSEE for such LICENSED PRODUCT to the RELATIONSHIP-INFLUENCE SALE PURCHASER). “RELATIONSHIP-INFLUENCED SALE” means a SALE of LICENSED PRODUCT or LICENSED METHOD, between LICENSEE and any SUBLICENSEE or between LICENSEE and/or SUBLICENSEE and an AFFILIATE, a JOINT VENTURE, or a RELATED PARTY. “RELATIONSHIP-INFLUENCED SALE PURCHASER” means the purchaser of LICENSED PRODUCT or LICENSED METHOD in a RELATIONSHIP-INFLUENCED SALE.
2.13 “AFFILIATE” means any entity that, directly or indirectly, CONTROLS LICENSEE or SUBLICENSEE, is CONTROLLED by LICENSEE or SUBLICENSEE, or is under common CONTROL with LICENSEE or SUBLICENSEE. “CONTROL” means as follows: (a) having the actual, present capacity to elect a majority of the directors of such AFFILIATES; (b) having the power to direct at least forty percent (40%) of the voting rights entitled to elect directors; or (c) in any country where the local law will not permit foreign equity participation of a majority, then ownership or control, directly or indirectly, of the maximum percentage of such outstanding stock or voting rights permitted by local law.
| Page 6 of 34 |
2.14 “JOINT VENTURE” means any separate entity established pursuant to an agreement between (a) a third party, and (b) LICENSEE and/or SUBLICENSEE to institute a vehicle for a joint venture, in which the separate entity manufactures, uses, purchases, SELLS, or acquires LICENSED PRODUCT from LICENSEE and/or SUBLICENSEE.
2.15 “RELATED PARTY” means a corporation, firm, or other entity with which, or individual with whom, LICENSEE and/or SUBLICENSEE (or any of their respective stockholders, subsidiaries or AFFILIATES) have an agreement, understanding, or arrangement (for example, but not by way of limitation, an agreement providing LICENSEE and/or SUBLICENSEE with an option to purchase stock or other equity interest, or a share of revenue or profits), that (a) is unrelated to the SALE of LICENSED PRODUCT and without which such other agreement, understanding, or arrangement, the amounts, if any, charged by LICENSEE or SUBLICENSEE to such entity or individual for LICENSED PRODUCT, would be higher than the NET INVOICE PRICE actually received, or (b) if such agreement, understanding, or arrangement results in LICENSEE or SUBLICENSEE extending to such entity or individual lower prices for LICENSED PRODUCT than those charged to others without such agreement, understanding, or arrangement buying similar products or services in similar quantities.
3. GRANT OF LICENSEGRANT OF LICENSE
3.3a In accordance with 35 USC §200-212 and implementing regulations, REGENTS has granted back to the U.S. Government a non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced INVENTIONS for or on behalf of the U.S. Government throughout the world.
| Page 7 of 34 |
3.3b In accordance with 37 CFR §401.14(h), REGENTS has an obligation to report on the utilization of the INVENTIONS; and in order to fulfill this obligation, LICENSEE has a continuing responsibility to keep REGENTS informed of the large/small entity status (as defined in 15 USC §632) of LICENSEE and its SUBLICENSEES.
3.3c In accordance with PL 96-517 as amended by PL 98-620, to the extent required by law or regulation, LICENSED PRODUCT that is exclusively SOLD in the U.S. will be substantially manufactured in the U.S.
4.2a A statement setting forth the date upon which LICENSEE’s exclusive rights, privileges, and license hereunder will expire;
4.2b The same provision for indemnification of REGENTS as has been provided for in this AGREEMENT; and
4.2c A statement such that, to the extent applicable, the obligations of this AGREEMENT will be binding upon the SUBLICENSEE as if it were in place of LICENSEE, except as follows:
i. EARNED ROYALTY rates, MINIMUM ANNUAL ROYALTIES, and fees and other consideration due to LICENSEE may be higher than those specified in this AGREEMENT; and
ii. SUBLICENSEES will be precluded from granting further sublicenses of PATENT RIGHTS unless agreed to in writing by REGENTS.
| Page 8 of 34 |
4.7a REGENTS may give written notice to LICENSEE identifying the NEW APPLICATION, except for the following: (a) information that is subject to restrictions of confidentiality with third parties, or (b) information that originates with REGENTS personnel who do not assent to its disclosure to LICENSEE. If REGENTS gives such written notice to LICENSEE, then LICENSEE will have ninety (90) days to give REGENTS written notice stating whether LICENSEE elects to develop LICENSED PRODUCT or LICENSED METHOD for the application.
4.7b If LICENSEE elects to develop and commercialize LICENSED PRODUCT or LICENSED METHOD for the NEW APPLICATION, then LICENSEE will submit a commercialization plan with performance milestones and PROGRESS REPORT to REGENTS in accordance with the Progress Report Article of this AGREEMENT.
4.7c If LICENSEE elects not to develop and commercialize LICENSED PRODUCT or LICENSED METHOD for the NEW APPLICATION, then REGENTS may seek third parties to develop and commercialize LICENSED PRODUCT or LICENSED METHOD for the NEW APPLICATION. If REGENTS is successful in finding a third party, it will refer such third party to LICENSEE. If the third party requests a sublicense under this AGREEMENT, then LICENSEE will report the request to REGENTS within thirty (30) days from the date of such request.
| Page 9 of 34 |
i. If such request results in a sublicense, then LICENSEE will report it to REGENTS in accordance with this AGREEMENT.
ii. If LICENSEE has not granted a sublicense to the third party within six (6) months after receiving such request, then within thirty (30) days after such refusal, LICENSEE will submit to REGENTS a report specifying the license terms proposed by the third party and a written justification for LICENSEE’s refusal to grant the proposed sublicense. If REGENTS, at its sole discretion, determines that the terms of the sublicense proposed by the third party are reasonable under the totality of the circumstances, taking into account LICENSEE’s LICENSED PRODUCTS or LICENSED METHOD in development, then REGENTS will have the right to grant to the third party a license to make, have made, use, SELL, offer for SALE, distribute and import LICENSED PRODUCTS or LICENSED METHOD for use in the LICENSED FIELD-OF-USE at substantially the same terms most recently proposed to LICENSEE by that the third party and providing royalty rates that are at least equal to those paid by LICENSEE.
6.3 Schedule: EARNED ROYALTIES accruing to REGENTS will be paid to REGENTS semi-annually on or before the following dates of each calendar year:
| · | February 28 for the calendar six months ending December 31 |
| Page 10 of 34 |
| · | August 31 for the calendar six months ending June 30 |
| · | Beginning in the first calendar year after the first occurrence of NET SALES PRICE that is royalty bearing (in other words, not SOLD or reSOLD to the U.S. Government): five thousand dollars ($5,000); |
| · | Next (second) calendar year: ten thousand dollars ($10,000); |
| · | Next (third) calendar year: twenty thousand dollars ($20,000); |
| · | Next (fourth) calendar year: forty thousand dollars ($40,000); |
| · | Next (fifth) calendar year and every calendar year thereafter: fifty thousand dollars ($50,000); |
6.4a No Double MARS: If LICENSEE pays to REGENTS a minimum annual royalty in the performance of OTHER RELATED LICENSE AGREEMENT, then LICENSEE will subtract such payments from LICENSEE’s payment to REGENTS of minimum annual royalties in the performance of this AGREEMENT.
6.5a Charges: EARNED ROYALTIES on NET SALES PRICE received in any country outside the U.S. will not be reduced by any taxes, fees or other charges imposed by the government of such country except those taxes, fees, and charges allowed under the provisions of the Definition of NET SALES PRICE as described in this AGREEMENT. LICENSEE also will be responsible for all bank transfer charges.
| Page 11 of 34 |
| · | By 2009 December 31: First beta unit of third generation LICENSED PRODUCCT (that must include active hip actuation) shipped to a potential customer. LICENSEE will send REGENTS a letter from LICENSEE’s customer that confirms the completion of this objective; |
| · | By 2010 December 31: First commercial order of third generation LICENSED PRODUCT (that must include active hip actuation). LICENSEE will send REGENTS a letter from LICENCEE’s outside accountants that confirms the completion of this objective; and |
| · | By 2011 December 31: First commercial shipment of third generation LICENSED PRODUCT (that must include active hip actuation). LICENSEE will send REGENTS a letter from LICENSEE’s outside accountants that confirms the completion of this objective. |
7.3a If REGENTS gives such written notice to LICENSEE, then LICENSEE may extend the target date of any diligence obligation for an additional six (6) months upon payment to REGENTS of an additional $5,000. Additional extensions may be granted only by mutual written agreement of the parties to this AGREEMENT. Such extension fees are in addition to all other payments by LICENSEE to REGENTS pursuant to this AGREEMENT.
| Page 12 of 34 |
7.3b If LICENSEE opts not to extend the obligation or fails to meet it by the extended target date, then REGENTS will have the right and option either to terminate this AGREEMENT or to reduce LICENSEE’s exclusive license to a non-exclusive, royalty-bearing license. To exercise either the right to terminate this AGREEMENT or to reduce the license to a non-exclusive license for lack of diligence as specified in this Due Diligence Article, REGENTS will give LICENSEE written notice of the deficiency. After receiving notice, LICENSEE will have sixty (60) days to cure the deficiency or to request arbitration. If REGENTS has not received a written request for arbitration or satisfactory tangible evidence that the deficiency has been cured by the end of the sixty (60)-day period, then REGENTS may, at its option, either terminate the AGREEMENT or reduce LICENSEE’s exclusive license to a non-exclusive license by giving written notice to LICENSEE.
7.3c This right to terminate the AGREEMENT or reduce LICENSEE’s exclusive license to a non-exclusive license, if exercised will (a) supersede the rights granted in the Grant of License, and Grant of Sublicense Article in this AGREEMENT, and (b) be REGENTS’s sole remedy for breach of due diligence obligations.
8. COMMERCIALIZATION, PROGRESS AND ROYALTY REPORTS
| · | Summary of work completed and in progress; |
| Page 13 of 34 |
| · | Summary of actual and anticipated events and milestones; |
| · | The date of first SALE, if any, of LICENSED PRODUCT; and |
| · | Activities of SUBLICENSEES if any, including any change in their large/small entity status (as defined in 15 USC §632). |
8.6b Revenue: NET SALES PRICE of LICENSED PRODUCT that is SOLD by LICENSEE and its SUBLICENSEES;
8.6c Volume: The quantity of LICENSED PRODUCT manufactured and SOLD by LICENSEE and its SUBLICENSEES;
8.6d Royalty: The EARNED ROYALTIES due REGENTS, in U.S. dollars, payable hereunder with respect to NET SALES PRICE of LICENSED PRODUCT that is SOLD by LICENSEE and its SUBLICENSEES;
8.6e Calculations: The method used to calculate EARNED ROYALTY, specifying all deductions taken and the dollar amount of each such deduction as well as the exchange rates used, if any;
8.6g Sublicenses: The name and address of new SUBLICENSEES and their large/small entity status (as defined by 15 USC §632) along with a summary of the material terms of each new sublicensing agreement consummated.
| Page 14 of 34 |
· Article 2 Definition
· Article 4 Grant of Sublicenses
· Article 9 Books and Records
· Article 10 Life of Agreement
· Article 12 Disposition of Products
· Article 14 Use of Names and Trademarks
· Article 15 Patent Prosecution and Maintenance
· Article 17 Warranty and Liability
· Article 18 Indemnification
· Article 19 Confidentiality
| Page 15 of 34 |
| · | Paragraph 21.2 Late Payments |
· Article 22 Governing Laws; Venue; and Attorneys’ Fees
12. DISPOSITION OF PRODUCTS UPON TERMINATION
| Page 16 of 34 |
13.1 US: LICENSEE agrees to xxxx LICENSED PRODUCT (or their containers or labels) made, SOLD, licensed or otherwise disposed of by LICENSEE in the U.S. under the license granted in this AGREEMENT (a) with the words “Patent Pending” prior to the issuance of patents under PATENT RIGHTS, and (b) with the patent numbers of the PATENT RIGHTS following the issuance in the U.S. of one or more patents under PATENT RIGHTS.
14. USE OF NAMES AND TRADEMARK
14.1 Obligations: Except as specified in the Metric Exception Paragraph of the Confidentiality Section of this AGREEMENT, nothing contained in this AGREEMENT will be construed as conferring any right to either party to use in advertising, publicity, or other promotional activities any name, trade name, trademark, or other designation of the other party (including a contraction, abbreviation or simulation of any of the foregoing). LICENSEE is expressly prohibited from using the name “The Regents of the University of California” or the name of any campus of the University of California in advertising, publicity, or other promotional activities unless written consent is obtained by LICENSEE from REGENTS to do so.
15. PATENT PROSECUTION AND MAINTENANCE
| Page 17 of 34 |
15.1a Deliberate Prosecution Unfavorable to REGENTS: As REGENTS is the owner of PATENT RIGHTS, REGENTS wants to obtain the optimal breadth, depth and overall comprehensiveness of valid, enforceable PATENT CLAIMS. Accordingly, at any time in the patent prosecution of PATENT RIGHTS, if REGENTS believes that LICENSEE or LICENSEE PATENT COUNSEL is deliberately not attempting to obtain the optimal breadth, depth and overall comprehensiveness of valid, enforceable PATENT CLAIMS, then LICENSEE will enable REGENTS to take control of patent prosecution of PATENT RIGHTS and replace LICENSEE PATENT COUNSEL with REGENTS’ choice of patent counsel (if REGENTS so desires).
15.3 Comments: REGENTS can comment on PATENT DOCUMENTATION sufficiently in advance of any initial deadline for filing a response, provided, however, if REGENTS has not commented upon PATENT DOCUMENTATION in reasonable time for LICENSEE to sufficiently integrate REGENTS’ comments prior to a deadline with the relevant government patent office, or if LICENSEE will act to preserve PATENT RIGHTS, then LICENSEE is free to respond without integration of REGENTS’ comments, if any.
| Page 18 of 34 |
| Page 19 of 34 |
16.4a In any suit initiated by REGENTS, any recovery in excess of litigation costs will belong to REGENTS.
16.4b In any suit initiated by LICENSEE, any recovery in excess of litigation costs will be shared between LICENSEE and REGENTS as follows:
i If REGENTS joins the suit, any recovery in excess of litigation costs will be shared in proportion to the costs incurred by each party, but in no event will REGENTS’ proportion be less than ten percent (10%);
ii If REGENTS does not join the suit, any recovery in excess of litigation costs will belong to LICENSEE.
| Page 20 of 34 |
17.1 REGENTS warrants to LICENSEE that REGENTS has the lawful right to grant this license.
17.2 Except as expressly set forth in Paragraph 17.1 this AGREEMENT, the licenses and the associated INVENTION, PATENT RIGHTS, LICENSED PRODUCTS, and LICENSED METHODS are provided by REGENTS WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY OF ANY KIND, EITHER EXPRESS OR IMPLIED. REGENTS MAKES NO EXPRESS OR IMPLLIED REPRESENTATION OR WARRANTY THAT THE INVENTION, PATENT RIGHTS, LICENSE PRODUCTS, OR LICENSE METHODS WILL NOT INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK OR OTHER RIGHTS.
17.3 REGENTS WILL NOT BE LIABLE FOR ANY LOST PROFITS, COSTS OF PROCURING SUBSTITUTE GOODS OR SERVICES, LOST BUSINESS, ENHANCE DAMAGES FOR INTELLECTUAL PROPERTY INFRINGEMENT, OF FOR ANY INDIRECT, INCIDENTAL, CONSEQUENTIAL, PUNITIVE, OR OTHER SPECIAL DAMAGES SUFFERED BY LICENSEE, SUBLICENSEES, JOINT VENTURES, OR AFFILIATES ARISING OUT OF OR RELATED TO THIS AGREEMENT FOR ALL CAUSES OF ACTION OF ANY KIND (INCLUDING TORT, CONTRACT, NEGLIGENCE, STRICT LIABILITY AND BREACH OF WARRANTY) EVEN IF REGENTS HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
17.4 Nothing is this AGREEMENT is or will be construed as:
17.4a A warranty or representation by REGENTS as to the validity, enforceability, or scope of any PATENT RIGHTS; or
17.4b A warranty or representation that anything made, used, SOLD, or otherwise exploited under any license granted in this AGREEMENT is or will be free from infringement of patents, copyrights, or other rights of third parties; or
17.4c An obligation to bring or prosecute actions or suits against third parties for patent infringement except as provided in the Patent Infringement Article of this AGREEMENT; or
| Page 21 of 34 |
17.4d Conferring by implication, estoppel, or otherwise any license or rights under any patents or other rights of REGENTS other than PATENT RIGHTS, regardless of whether such patents are dominant or subordinate to PATENT RIGHTS; or
17.4e An obligation to furnish any NEW DEVELOPMENTS, know-how, technology, or technological information not provided in PATENT RIGHTS.
18.2a Upon EFFECTIVE DATE, Commercial Form General Liability Insurance (contractual liability included) with limits as follows:
| i. | Each Occurrence | $ | 1,000,000 | |||
| ii. | Products/Completed Operations Aggregate | $ | 1,000,000 | |||
| iii. | Personal and Advertising Injury | $ | 1,000,000 | |||
| iv. | General Aggregate | $ | 1,000,000 |
18.2b If LICENSEE offers a LICENSE PRODUCT that is a medical device, then prior to first SALE of such medical device, Commercial Form General Liability Insurance (contractual liability included) with limits as follows:
| i. | Each Occurrence | $ | 5,000,000 | |||
| ii. | Products/Completed Operations Aggregate | $ | 10,000,000 | |||
| iii. | Personal and Advertising Injury | $ | 5,000,000 | |||
| iv. | General Aggregate | $ | 10,000,000 |
| Page 22 of 34 |
18.2c The coverage and limits referred to in the Subparagraph above will not in any way limit the liability of LICENSEE.
18.2d LICENSEE will furnish REGENTS with certificates of insurance evidencing compliance with all requirements. Such certificates will:
i. Provide for thirty (30) days’ advance written notice to REGENTS of any modification;
ii. Indicate that REGENTS has been endorsed as an additional insured under the coverage described above; and
iii. Include a provision that the coverage will be primary and will not participate with, nor will be excess over, any valid and collectable insurance or program of self-insurance maintained by REGENTS.
| Page 23 of 34 |
19.4a That recipient can demonstrate by written records was previously known to it prior to its disclosure by the disclosing party;
19.4b That recipient can demonstrate by written records is now, or becomes in the future, public knowledge other than through acts or omissions of recipient;
19.4c That recipient can demonstrate by written records was lawfully obtained without restrictions on the recipient from sources independent of the disclosing party; or
19.4d That is required to be disclosed pursuant to the California Public Records Act or other applicable law.
19.5a To a governmental entity or agency in connection with seeking any governmental or regulatory approval, governmental audit, or other governmental requirement; or
19.5b By law, provided that the recipient uses reasonable efforts to give the party owning the CONFIDENTIAL INFORMATION sufficient notice of such required disclosure to allow the party owning the CONFIDENTIAL INFORMATION reasonable opportunity to object to, and to take legal action to prevent, such disclosure.
| Page 24 of 34 |
20.1a To LICENSEE:
| · | Berkeley ExoTech, Inc. |
| · | 2100 Xxxxxxxxxx Xxx. #000 |
| · | Xxxxxxxx, XX 00000 |
| · | Telephone: 000-000-0000 |
| · | Facsimile: 000-000-0000 |
| · | Email: xxxx@XxxxxxxxXxxxxxx.xxx |
| · | Attention: COO |
| 20.1b | To REGENTS: |
| · | Office of Technology Licensing |
| · | 2100 Xxxxxxxx Xxxxxx, Xxxxx 000 |
| · | Xxxxxxxx, XX 00000-0000 |
| · | Attn: Director (REGENTS Case Number B07-128, B08-119, B08-125, B08-141) |
20.2 Effective Date: Any such properly given notice or payment will be deemed to be effective as follows:
20.2a On the date of delivery if delivered in person;
20.2b On the date of mailing if mailed by first-class certified mail; or
20.2c On the date of mailing if mailed by any global express carrier service that requires the signature of recipient to demonstrate the delivery of such notice or payment.
| Page 25 of 34 |
21.1 Payment Method: All consideration due REGENTS will be payable in U.S. dollars. LICENSEE will make all payments to REGENTS under this AGREEMENT by check payable to “The Regents of the University of California” and forward it to REGENTS in accordance with the Notices Article 20.
22. GOVERNING LAWS; VENUE; ATTORNEYS’ FEES
22.1 THIS AGREEMENT WILL BE INTERPRETED AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF CALIFORNIA, excluding any choice of law rules that would direct the application of the laws of another jurisdiction, but the scope and validity of any patent or patent application will be governed by the applicable laws of the country of such patent or patent application.
22.2 Any legal action related to this AGREEMENT will be conducted in San Francisco, California.
22.3 The prevailing party in any suit related to this AGREEMENT will be entitled to recover its reasonable attorneys’ fees in addition to its costs and necessary disbursements.
23. GOVERNMENT APPROVAL OR REGISTRATION
| Page 26 of 34 |
24. GOVERNMENT EXPORT AND IMPORT LAWS
24.1 LICENSEE will comply with all applicable international, national, state, regional, and local laws and regulations in performing its obligations hereunder and in its use, manufacture, SALE, or import of the LICENSED PRODUCT or practice of the LICENSED METHOD.
24.2 LICENSEE will observe all applicable U.S. and foreign laws with respect to the transfer or provision of LICENSED PRODUCT and related technical data to foreign countries, including, without limitation, the International Traffic in Arms Regulations (ITAR) and the Export Administration Regulations.
24.3 When LICENSED PRODUCT is made outside the particular country in which such LICENSED PRODUCT is used, SOLD, or otherwise exploited, then LICENSEE will manufacture LICENSED PRODUCT or practice LICENSED METHOD in compliance with applicable government importation laws and regulations of the particular country.
25.2a No waiver by either party of any breach or default of any of the duties, obligations, or agreements contained herein will be deemed a waiver as to any subsequent and/or similar breach or default.
25.2b No waiver will be valid or binding upon the parties unless made in writing and signed by a duly authorized officer of each party.
| Page 27 of 34 |
| Page 28 of 34 |
In witness whereof, both REGENTS and LICENSEE have executed this AGREEMENT, in duplicate originals, by their respective officers hereunto duly authorized, on the date and year hereinafter written.
| Berkeley Bionics | The Regents of the University of California | |||
| By: | /s/ Xxxxxx Xxxxxxx | By: | /s/ Xxxxxxx Xxxxx | |
| (Signature) | (Signature) | |||
| Name: | Xxxxxx Xxxxxxx | Name: | Xxxxxxx Xxxxx | |
| Title: | COO | Title: | Acting Director, OTL | |
| Date: | July 14, 2008 | Date: | July 7, 2008 | |
| Page 29 of 34 |
UNIVERSITY OF CALIFORNIA, BERKELEY
AMENDMENT #1 TO EXCLUSIVE LICENSE AGREEMENT
U.C. Case Nos.: B07-128, B08-119, B08-125, B08-14, B09-112
Agreement Number: 0000-00-0000
Effective May 20, 2009, THE REGENTS OF THE UNIVERSITY OF CALIFORNIA, a California Corporation whose legal address is 1100 Xxxxxxxx Xxxxxx, 00xx Xxxxx, Xxxxxxx, XX 00000-0000, acting through its Office of Technology Licensing at the University of California, Berkeley, 2100 Xxxxxxxx Xxxxxx, Xxxxx 000, Xxxxxxxx, XX 00000-0000 ("REGENTS"), and Berkeley Bionics, a California corporation having a principal place of business at 2100 Xxxxxxxxxx Xxx. #000, Xxxxxxxx, XX 00000 (“LICENSEE"), agree to amend the Exclusive License Agreement dated June 14, 2008 ("License Agreement").
| · | 1.1e Wearable Material Handling System as described in REGENTS Case Number B09-112 and PATENT RIGHTS that was invented by Xxxxxxxx Xxxxxxxxx, Xxxxxx Xxxxxxx, Xxxx Xxxxxxxx, Russdon Angold, Xxx Xxxxx and Xxxx Xxxx. |
Amend Article 1.2 to REPLACE WITH THE FOLLOWING:
| · | 1.2 LICENSEE and REGENTS jointly own the intellectual property resulting from the INVENTIONS described in Paragraphs 1.1b, 1.1c, 1.1d, and 1.1e. |
| · | "Paragraphs 1.1b (B08-119) and 1.1c (B08-125)” WITH "Paragraphs 1.1b (B08-119), 1.1c (B08-125), and I. 1 e (B09-1 12)" |
Amend Article 2.1 to ADD:
| · | 2.le The INVENTION described in Paragraph l.le Wearable Material Handling System, filed by, Xxxxxxxx Xxxxxxxxx, Xxxxxx Xxxxxxx, Xxxx Xxxxxxxx, Russdon Angold, Xxx Xxxxx and Xxxx Xxxx. |
In consideration for the above addition, LICENSEE will pay a licensee fee in the amount of three thousand dollars ($3,000) upon execution of this Amendment.
All other terms and conditions in the License Agreement remain in full force and effect.
| THE REGENTS OF THE UNIVERSITY OF CALIFORNIA | BERKELEY BIONICS | |||
| Signature | /s/ Xxxxxxx Xxxxx | Signature | /s/ Xxxxxx Xxxxxxx | |
| Xxxxxxx Xxxxx | Name: Xxxxxx Xxxxxxx | |||
| Acting Director | Title: C.O.O. | |||
| Date: 2009 May 21 | Date: 5/20/2009 | |||
