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EXHIBIT 10.5
LICENSE AGREEMENT
Effective as the 31st day of October, 1995, Siemens Medical Systems, Inc.
(hereinafter referred to as "Siemens"), a Delaware corporation, having an office
and principal place of business at 000 Xxxx Xxxxxx Xxxxx, Xxxxxx, Xxx Xxxxxx
00000, and Aspect Medical Systems, Inc. (hereinafter referred to as "Aspect"), a
Delaware corporation, having an office and principal place of business at
0 Xxxxxx Xx., Xxxxxx, Xxxxxxxxxxxxx 00000, agree as follows:
BACKGROUND
Siemens is the owner of United States Patent No. 5,368,041 entitled
"Monitor and Method for Acquiring and Processing Electrical Signals Relating to
Bodily Functions" ("the 041 patent"), issued November 29, 1994, which relates
to devices commonly referred to as patient monitors. Aspect is desirous of
obtaining a non-exclusive license under the 041 patent.
Aspect is the owner of United States Patent No. 5,381,804 entitled
"Monitor and Method for Acquiring and Processing Electrical Signals Relating to
Bodily Functions" ("the 084 patent"), issued January 17, 1995, which relates to
devices commonly referred to as patient monitors. Siemens is desirous of
obtaining a non-exclusive license under the 084 patent.
This Agreement sets forth the terms of the license agreement between
Siemens and Aspect and is entered into in accordance with the Settlement
Agreement entered into by Siemens and Aspect on October 1995.
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I. DEFINITIONS
Siemens and Aspect are hereinafter occasionally referred to as
"parties" (in singular or plural usage, as indicated by the context). Terms in
this Agreement (other than names of parties and headings) which are set forth in
upper case letters have the meanings established for such terms in this section
below.
1.1 "LICENSED 041 PATENTS" shall mean:
U.S. Patent No. 5,368,041 entitled "Monitor and Method for
Acquiring and Processing Electrical Signals Relating to Bodily Functions,"
issued November 29, 1994, which relates to and covers certain patient monitors
and any present or future reexams, reissues, continuations, based original on
claims 1-5 and 19 of U.S. Patent No. 5,368,041, and any present, or future
foreign counter-part patents or applications filed in the patent office of any
other country or the European Patent Office, the claims of which are directed to
the invention described and claimed in United States Xxx. No. 5,368,041 or in
original claims 1-5 and 19 in Appl. No. 07/961,525 which issued in modified form
in U.S. Xxx. No. 5,368,041 and any present or future reexams, reissues, or
continuations therefrom; and
1.2 "LICENSED 804 PATENTS" shall mean:
U.S. Patent No. 5,381,804 entitled "Monitor and Method for
Acquiring and Processing Electrical Signals Relating to Bodily Functions,"
issued January 17, 1995, which relates to and covers certain patient monitors
and any present or future reexams, reissues, continuations, based on original
claims 6-10 of U.S. Patent No. 5,381,804, any present or future foreign
counter-part patents or applications pending in any patent office of any other
country
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or the European Patent Office, the claims of which are directed to the
invention described and claimed in United States Xxx. No. 5,381,804 or in
original claims 6-10 in Appl. No. 07/961,525 which issued in modified form in
U.S. Xxx No. 5,381,804 and any present or future reexams, reissues, or
continuations therefrom; and
1.3 "LICENSED 041 PRODUCTS" shall mean any and all devices covered by
at least one claim of the LICENSED 041 PATENTS.
1.4 "LICENSED 804 PRODUCTS" shall mean any and all devices covered by
at least one claim of the LICENSED 804 PATENTS.
1.5 "RELATED COMPANY" shall mean any affiliate. Affiliates include any
company, including subsidiaries, parent company or corporation, partnership,
joint venture or other entity which directly or indirectly controls, is
controlled by or is under common control with Aspect Medical Systems, Inc. on
one hand or Siemens Medical Systems, Inc. or Siemens AG on the other hand, or
subsidiaries thereof. "Control" shall mean the possession of a 50% or more
portion of the voting stock or the power to direct or cause the direction of the
management and policies of the controlled entity, whether through the ownership
of voting securities, by contract or otherwise.
1.6 "EFFECTIVE DATE" of this Agreement shall be the date of execution
of the Agreement.
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II. GRANTS
2.1 Siemens hereby grants to Aspect and its RELATED COMPANIES, an
irrevocable; royalty-free, nonexclusive license to design, make, have made, use,
import and sell or otherwise dispose of LICENSED 041 PRODUCTS throughout the
world. However, Aspect shall not be licensed to design, make, have made, use,
import, or sell LICENSED 041 PRODUCTS that are plug-in compatible with any
patient monitor made by Siemens other than modules conforming to open industry
standards (as opposed to Siemens proprietary standards) which also happen to be
employed in a Siemens patient monitor.
2.2 Aspect shall not have the right to sublicense the rights granted it
under the LICENSED 041 PATENTS except under the following conditions:
(a) Aspect may grant a sublicense under the LICENSED 041
PATENTS to a sublicensee that also (1) licenses substantial signal acquisition
technology from Aspect; (2) acquires digital signal processing hardware designs
and signal processing technology from Aspect; and (3) incorporates the licensed
signal acquisition technology and digital signal processing hardware designs and
technology acquired from Aspect into a commercial product of the licensee.
(b) The sublicenses extended under subsection (a) shall extend
only to the specific module/monitor combinations of the sublicensee that
incorporates Aspect's technology and extend to such specific module/monitor
combinations only
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to the extent that Aspect's technology is used to detect and process acquired
patient information.
(c) In the event Aspect grants to any third party a sublicense
under the LICENSED 041 PATENTS, Aspect shall notify Siemens within 30 days of
the execution of said sub license and provide Siemens the identity of the sub
licensee, and shall provide a certification that the conditions and restraints
of sections 2.2 a-b of this Agreement, necessary to sublicense the LICENSED 041
PATENTS, have been met.
2.3 Aspect hereby grants to Siemens and its RELATED COMPANIES, an
irrevocable, royalty-free, nonexclusive license to design, make, have made, use,
import and sell or otherwise dispose of LICENSED 804 PRODUCTS throughout the
world and all products covered by any claim of any patent or utility model that
issues from Canadian Appl. Serial No. 2,146,979, EPO Appl. Serial No.
93923,860.9, PCT Appl. Serial No. US93/09763 or Australian Appl. Serial No.
9453702 (but only if such Australian application (1) exists, (2) was filed by,
or on behalf of, or owned by Aspect, and (3) includes claims directed to subject
matter substantially similar to the subject matter of original claims 1-5 and 19
of the LICENSED 041 PATENTS), or any patent or utility model that claims filing
priority from U.S. Appl. Serial No. 07/961,525 not already owned by Siemens.
Siemens shall not be licensed to design, make, have made, use, or sell LICENSED
804 PRODUCTS or other products covered by patents licensed to Siemens
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under this section that are plug-in compatible with any patient monitor made by
Aspect, other than modules conforming to open industry standards (as opposed to
Aspect proprietary standards) which also happen to be employed in an Aspect
patient monitor.
2.4 Siemens shall not have the right to sublicense the rights granted
it under the LICENSED 804 PATENTS or other patents licensed to Siemens pursuant
to section 2.3 of the Agreement except under the following conditions:
(a) Siemens may grant a sublicense under the LICENSED 804
PATENTS or other patents licensed to Siemens under section 2.3 to a sublicensee
that also (1) licenses substantial signal acquisition technology from Siemens;
(2) acquires digital signal processing hardware designs and signal processing
technology from Siemens; and (3) incorporates the licensed signal acquisition
technology and digital signal processing hardware designs and technology
acquired from Siemens into a commercial product of the licensee.
(b) The sublicenses extended under subsection (a) shall extend
only to the specific module/monitor combinations of the sublicensee that'
incorporates Siemens' technology and extend to such specific module/monitor
combinations only to the extent that Siemens' technology is used to detect and
process acquired patient information.
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(c) In the event Siemens grants to any third party a
sublicense under the LICENSED 804 PATENTS, or any other patents licensed to
Siemens under section 2.3, Siemens shall notify Aspect within 30 days after of
the execution of said sublicense and provide Aspect the identity of the
sublicensee, and shall provide a certification that the conditions and
restraints of sections 2.4 a-b of this Agreement, necessary to sublicense the
LICENSED 804 PATENTS and other patents licensed to Siemens under section 2.3,
have been met.
2.5 A party having actual knowledge that any product made, sold, used,
or imported includes subject matter claimed in any patent licensed to said party
pursuant to this Agreement, except products made, sold, used, or imported under
a sublicense granted pursuant to this Agreement, shall notify the licensing
party of said product.
III. MARKING
3.1 Aspect shall xxxx and require sublicensees to xxxx LICENSED 041
PRODUCTS sold, imported, exported or used in the United States in the form of
"Licensed under U.S. Xxx. No. 5,368,041" at a location and in a manner on the
product sufficient to meet the requirements of 35 U.S.C. Section 287. However,
Aspect shall require sublicensees to xxxx LICENSED 041 PRODUCTS that have any
patent marking indicating that a patent is licensed from Aspect (whether said
marking be on the
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product or associated literature) with "Manufactured under License from Siemens
Medical Systems, Inc. U.S. Xxx. No. 5,368,041" at the same location on the
product or associated literature as the Aspect marking and which is at least as
conspicuous as the most conspicuous of such notices identifying Aspect. In all
events, all LICENSED 041 PRODUCTS shall be marked at a location and in a manner
sufficient to meet the requirements of 35 U.S.C. Section 287. Aspect shall xxxx
and require all sublicensees to xxxx LICENSED 041 PRODUCTS sold in foreign
countries with marking on the product equivalent to the marking on products sold
in the U.S. and in accordance with the requirements of the domestic law of the
foreign country and shall always xxxx LICENSED 041 PRODUCTS so as to provide an
innocent infringer with constructive notice that the LICENSED 041 PRODUCTS are
patented.
3.2 Siemens shall xxxx and require all sublicensees to xxxx LICENSED
804 PRODUCTS (and correspondingly xxxx and have sub licensees xxxx other
products covered by patents licensed to Siemens under section 2.3) sold,
imported, exported or used in the United States in the form in the form of
"Licensed under U.S. Xxx. No. 5,381,804" at a location and in a manner on the
product sufficient to meet the requirements of 35 U.S.C. Section 287. In all
events, Siemens shall require sublicensees to xxxx LICENSED 804 PRODUCTS (and
other products covered by patents licensed to Siemens under section 2.3) that
have any patent marking indicating that a patent is licensed from Siemens
(whether said marking be on the product or associated
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literature) with "Manufactured under License from Aspect Medical Systems, Inc.
U.S. Xxx. No. 5,381,804" at the same location on the product or associated
literature as the Siemens marking and which is at least as conspicuous as the
most conspicuous of such notices identifying Siemens. In any event, all LICENSED
804 PRODUCTS (and other products covered by patents licensed to Siemens under
section 2.3) shall be marked at a location and in a manner sufficient to meet
the requirements of 35 U.S.C. Section 287. Siemens shall xxxx and require all
sublicensees to xxxx LICENSED 804 PRODUCTS (and other products covered by
patents licensed to Siemens under section 2.3) sold in foreign countries with
marking on the product equivalent to the marking on products sold in the U.S.
and in accordance with the requirements of the domestic law of the foreign
country and shall always xxxx said LICENSED 804 PRODUCTS (and products covered
by patents licensed to Siemens under section 2.3) so as to provide an innocent
infringer with constructive notice that the LICENSED 804 PRODUCTS are patented.
IV. REPRESENTATIONS AND WARRANTIES; LIMITATIONS
4.1 Nothing in this Agreement shall be construed as:
(a) A warranty or representation by either party as to the
validity or scope of any LICENSED 041 PATENT or LICENSED 804 PATENT; or
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(b) A warranty or representation that anything made, used,
sold, or otherwise disposed of under any license granted in this Agreement is or
will be free from infringement of patent of third parties; or
(c) A requirement that either party shall file any patent
application, secure any patent, or maintain any patent in force; or
(d) An obligation to bring or prosecute actions or suits
against third parties for infringement of any patent including the LICENSED 041
PATENTS or LICENSED 804 PATENTS; or
(e) An obligation to furnish any manufacturing or technical
information, or any information concerning pending patent applications; or
(f) Conferring a right to use in advertising, publicity, or
otherwise any trademark or tradename of the other party; or
(g) Granting by implication, estoppel, or otherwise, any
licenses or rights under any patent other than the LICENSED 804 PATENTS or
LICENSED 041 PATENTS or those granted in section 2.3.
4.2 The parties makes no representation, extends no warranties of any
kind, either express or implied, or assumes any responsibilities whatever with
respect to use, sale, or other disposition by the other party or its vendees or
transferees of products incorporating or made by use of inventions licensed
under this Agreement.
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4.3 To the extent permitted by law, a party shall not challenge or
otherwise oppose the issuance, validity, or enforceability of a patent to which
said party has been granted a license pursuant to this Agreement, and further
agrees not to initiate or fund any such challenge or opposition (except as may
be ordered by a court of competent jurisdiction).
V. TRANSFERABILITY OF RIGHTS AND OBLIGATIONS
5.1 The licenses granted in this Agreement shall be binding upon any
successor to either party in ownership or control of the LICENSED 041 PATENTS
or LICENSED 804 PATENTS or other patents licensed to Siemens under section 2.3
and the obligations of the parties, shall run in favor of any such successor and
of any assignee of the benefits under this Agreement.
5.2 The rights and licenses granted to Aspect in this Agreement are
personal to Aspect and may not be assigned or otherwise transferred except in
the event of:
(a) the sale of substantially all of the assets of Aspect; or
(b) the sale or transfer of substantially all of the assets in
which the technology claimed in the LICENSED 041 PATENTS is incorporated.
5.3 The rights and licenses granted to Siemens in this Agreement are
personal to Siemens and may not be assigned or otherwise transferred.
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VI. TERM AND TERMINATION
6.1 Unless otherwise terminated as provided in section 6.2, this
Agreement shall continue in effect until the date of lapse or expiration of the
last to lapse or expire of the LICENSED 041 PATENTS, LICENSED 804 PATENTS, or
other patents licensed to Siemens under section 2.3.
6.2 In the event that any claim of the LICENSED 041 PATENTS or
LICENSED 804 PATENTS or other patents licensed to Siemens under section 2.3, is
determined to be invalid or unenforceable in any legal or administrative
proceeding, and all appeals therefrom have been finally exhausted, the
construction placed upon any such claim by such judgment shall thereafter be
followed in the jurisdiction of the proceeding, and then and only then, the
licensed party and its sub licensees shall have no further obligations under
such claim in the jurisdiction of the proceeding.
VII. NOTICES; APPLICABLE LAW; INTEGRATION
7.1 Any notice, report, or payment provided for in this Agreement shall
be deemed sufficiently given when sent by certified or registered mail or
Federal Express addressed to the party for whom intended at the address given at
the outset of this Agreement or at such changed address as the party shall
specify by written notice.
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7.2 This Agreement shall be construed, interpreted, and applied in
accordance with the laws of Massachusetts. All suits, actions or proceedings
arising out of or relating to this Agreement shall be brought in a federal or
state court in Massachusetts having competent jurisdiction to hear the dispute,
said court shall be the exclusive forum, and each party waives any objection
which it now has or may hereafter have to jurisdiction or venue in any of the
forums selected by the parties as set forth in this section and the substantive
laws of the State of Massachusetts shall govern the construction and
enforceability of this Agreement.
7.3 This Agreement contains the entire and only agreement between the
parties, except for the above mentioned Settlement Agreement (and documents
referenced therein) which is controlling, and supersedes all preexisting
agreements between them respecting its subject matter. Any representation,
promise, or condition in connection with such subject matter which is not
incorporated in this Agreement or the above mentioned Settlement Agreement shall
not be binding upon either party. No modification, renewal, extension, waiver,
and no termination of this Agreement or any of its provisions (except as
provided in Section VII hereof) shall be binding upon the party against whom
enforcement of such modification, renewal, extension, waiver, or termination is
sought, unless made in writing and signed on behalf of such party by one of its
executive officers. As used herein, the word "termination" includes any and all
means of bringing this Agreement to an end prior to its expiration by its own
terms, or any provision thereof, whether by release, discharge, abandonment, or
otherwise.
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7.4 In the event that any provision of this Agreement is held invalid
or unenforceable for any reason by a court of competent jurisdiction, such
provision or part thereof shall be considered separate from the remaining
provisions of this Agreement which shall remain in full force and effect. Such
invalid or unenforceable provision shall be deemed revised to effect, to the
fullest extent permitted by law, the intent of the parties as set forth therein.
7.5 Any failure of either party to insist upon the performance of a
provision of this Agreement shall not constitute a waiver of any right of either
party that the party may have under this Agreement. Any such waiver can only be
made in a writing signed by the party against whom enforcement of such waiver is
sought.
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IN WITNESS WHEREOF, each of the parties, intending to be legally bound,
has caused this Agreement to be executed and duly sealed in duplicate originals
by its duly authorized representative.
Siemens Medical Systems, Inc.
By: Xxxxx Xxxx
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VP Product Development &
Operations
Attest:
/s/ Xxxxxxx Xxxxxxxx (SEAL)
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Secretary
Aspect Medical Systems, Inc.
By: /s/ Xxxxxx X. Xxxxxxx
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Chairman/CEO
Attest:
/s/ Xxxxxxx Xxxxxxxx (SEAL)
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Secretary
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