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EXHIBIT 10.5
AGREEMENT NOT TO XXX
THIS AGREEMENT NOT TO XXX (the "Agreement") is made and entered into
effective as of the 30th day of April, 1997, by and among VNUS MEDICAL
TECHNOLOGIES, INC., a Delaware corporation having its principal place of
business at Sunnyvale, California ("Vnus"), SURx, INC., a Delaware corporation
having its principal place of business at Pleasanton, California ("SURx"),
CORDIAL MEDICAL, INC., a Delaware corporation having its principal place of
business at Tustin, California ("Cordial"), and BRONCUS TECHNOLOGIES, INC., a
California corporation having its principal place of business at Mountain View,
California ("Broncus"). Vnus, SURx, Cordial and Broncus may be herein referred
to individually as a "Party" and collectively as "Parties".
RECITALS
WHEREAS, Vnus, Menlo Ventures VI, L.P., and Xxxxxxx X. Xxxxxx, M.D. ("Xx.
Xxxxxx") entered into an agreement dated April 30, 1997, a copy of which is
appended hereto as Exhibit A (the "Vnus Agreement"), pursuant to which Xx.
Xxxxxx and Menlo Ventures VI, L.P., assigned to Vnus, his, its and their right,
title and interest in certain inventions, improvements, trade secrets, patents,
patent applications, and in process patent applications (collectively,
"Inventions") related to the field of chronic venous insufficiency, hemorrhoid
treatments, endovascular treatments for vasogenic impotence and the treatment of
esophageal varices (the "Vnus Field") and agreed to assign to Vnus any future
inventions or intellectual property in the Vnus Field arising out of Xx.
Xxxxxx'x work done on behalf of Vnus; and
WHEREAS, SURx, Menlo Venture VI, L.P., and Xx. Xxxxxx entered into an
agreement dated April 30, 1997, a copy of which is appended hereto as Exhibit B
(the "SURx Agreement"), whereby Xx. Xxxxxx and Menlo Ventures VI, L.P. assigned
to SURx his, its and their right, title and interest in certain Inventions
related to the field of the treatment of urinary incontinence, fascia in and
remaining in the torso (excluding the pericardium), and kidney stones (the "SURx
Field") and agreed to assign SURx any future Inventions or intellectual property
in the SURx Field arising out of Xx. Xxxxxx'x work done on behalf of SURx; and
WHEREAS, Cordial, Menlo Venture VI, L.P., and Xx. Xxxxxx entered into an
agreement dated April 30, 1997, a copy of which is appended hereto as Exhibit C
(the "Cordial Agreement"), whereby Xx. Xxxxxx and Menlo Ventures VI, L.P.
assigned to Cordial his, its and their right, title and interest in certain
Inventions related to the field of the treatment of heart and pulmonary vessels
(the "Cordial Field") and agreed to assign to Cordial any future Inventions or
intellectual property in the Cordial Field arising out of Xx. Xxxxxx'x work done
on behalf of Cordial; and
WHEREAS, Broncus, Menlo Venture VI, L.P., and Xx. Xxxxxx entered into an
agreement dated April 30, 1997, a copy of which is appended as Exhibit D (the
"Broncus Agreement"), whereby Xx. Xxxxxx and Menlo Ventures VI, L.P. assigned to
Broncus his, its and their right, title and interest in certain Inventions
related to the field of pulmonary assist devices and treatment of the airways of
the lungs (the "Broncus Field") and agreed to assign to Broncus
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any future Inventions or intellectual property in the Broncus Field arising out
of Xx. Xxxxxx'x work done on behalf of Broncus; and
WHEREAS, the Parties desire to have freedom to operate in the respective
fields of the Parties and to avoid any disputes or conflicts based upon or
relating to the past and future assignments made by Xx. Xxxxxx under the Vnus
Agreement, SURx Agreement, Cordial Agreement, and Broncus Agreement (the
"Assignment Agreements"); and
WHEREAS, the Parties wish to provide each other mutual covenants that a
Party will not xxx another Party in the event that such other Party, acting in
its field, infringes such Party's rights in Inventions acquired pursuant to the
applicable Assignment Agreement; and
WHEREAS, the parties desire to avoid potential difficulties in enforcement
of legal rights against third parties by a Party enforcing its rights in
Inventions owned by such Party pursuant to one of the Assignment Agreements;
NOW THEREFORE, in consideration of the mutual covenants herein contained
and intending to be legally bound thereby, the parties hereto agree as follows:
ARTICLE 1.
1.1 Vnus hereby covenants that Vnus will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against SURx, SURx's agents, representatives, customers, distributors,
subdistributors or customers of such distributors or subdistributors, clients,
partners, directors, officers, attorneys, employees, affiliates, subsidiaries,
stockholders, predecessors, successors, or assigns (or any person acting by,
through, under or in concert with any of them) (collectively, "Potentially
Infringing Parties"), whether affirmatively, by cross-complaint, defense or
counterclaim, or by any other means in any court within any jurisdiction where
such Action alleges or claims that the manufacture, use, importation, offer to
sell, or sale of a product or service by or on behalf of SURx within the SURx
Field, or practice of a process by or on behalf of SURx within the SURx Field
infringes or violates any of Vnus' rights in the Inventions that have been at
that time assigned to and are owned by Vnus pursuant to the Vnus Agreement. This
covenant does not in any way impair the right of Vnus to xxx any Potentially
Infringing Party on account of such Potentially Infringing Party's activities
outside of the SURx Field.
1.2 SURx hereby covenants that SURx will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against Vnus, Vnus' agents, representatives, customers, distributors,
subdistributors or customers of such distributors or subdistributors, clients,
partners, directors, officers, attorneys, employees, affiliates, subsidiaries,
stockholders, precedessors, successors, or assigns (or any person acting by,
through, under or in concert with any of them) (collectively, "Potentially
Infringing Parties"), whether affirmatively, by cross-complaint, defense or
counterclaim, or by any other means in any court within any jurisdiction where
such Action alleges or claims that the manufacture, use, importation, offer to
sell, or sale of a product or service by or on behalf of Vnus within the Vnus
Field, or practice of a process by or on behalf of Vnus within the Vnus Field
infringes or violates any of SURx' rights in the Inventions that have been at
that time assigned to and are owned by
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SURx pursuant to the SURx Agreement. This covenant does not in any way impair
the right of SURx to xxx any Potentially Infringing Party on account of such
Potentially Infringing Party's activities outside of the Vnus Field.
ARTICLE 2.
2.1 Vnus hereby covenants that Vnus will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against Broncus, Broncus' agents, representatives, customers,
distributors, subdistributors or customers of such distributors or
subdistributors, clients, partners, directors, officers, attorneys, employees,
affiliates, subsidiaries, stockholders, precedessors, successors, or assigns (or
any person acting by, through, under or in concert with any of them)
(collectively, "Potentially Infringing Parties"), whether affirmatively, by
cross-complaint, defense or counterclaim, or by any other means in any court
within any jurisdiction where such Action alleges or claims that the
manufacture, use, importation, offer to sell, or sale of a product or service by
or on behalf of Broncus within the Broncus Field, or practice of a process by or
on behalf of Broncus within the Broncus Field infringes or violates any of Vnus'
rights in the Inventions that have been at that time assigned to and are owned
by Vnus pursuant to the Vnus Agreement. This covenant does not in any way impair
the right of Vnus to xxx any Potentially Infringing Party on account of such
Potentially Infringing Party's activities outside of the Broncus Field.
2.2 Broncus hereby covenants that Broncus will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against Vnus, Vnus' agents, representatives, customers, distributors,
subdistributors or customers of such distributors or subdistributors, clients,
partners, directors, officers, attorneys, employees, affiliates, subsidiaries,
stockholders, precedessors, successors, or assigns (or any person acting by,
through, under or in concert with any of them) (collectively, "Potentially
Infringing Parties"), whether affirmatively, by cross-complaint, defense or
counterclaim, or by any other means in any court within any jurisdiction where
such Action alleges or claims that the manufacture, use, importation, offer to
sell, or sale of a product or service by or on behalf of Vnus within the Vnus
Field, or practice of a process by or on behalf of Vnus within the Vnus Field,
or practice of a process by or on behalf of Vnus within the Vnus Field infringes
or violates any of Broncus' rights in the Inventions that have been at that time
assigned to and are owned by Broncus pursuant to the Broncus Agreement. This
covenant does not in any way impair the right of Broncus to xxx any Potentially
Infringing Party on account of such Potentially Infringing Party's activities
outside of the Vnus Field.
ARTICLE 3.
3.1 Vnus hereby covenants that Vnus will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against Cordial, Cordial's agents, representatives, customers,
distributors, subdistributors or customers of such distributors or
subdistributors, clients, partners, directors, officers, attorneys, employees,
affiliates, subsidiaries, stockholders, precedessors, successors, or assigns (or
any person acting by, through, under or in concert with any of them)
(collectively, "Potentially Infringing Parties"), whether affirmatively, by
cross-complaint, defense or counterclaim, or by any other means in any court
within any jurisdiction where such Action alleges or claims that the
manufacture, use,
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importation, offer to sell, or sale of a product or service by or on behalf of
Cordial within the Cordial Field, or practice of a process by or on behalf of
Cordial within the Cordial Field infringes or violates any of Vnus' rights in
the Inventions that have been at that time assigned to and are owned by Vnus
pursuant to the Vnus Agreement. This covenant does not in any way impair the
right of Vnus to xxx any Potentially Infringing Party on account of such
Potentially Infringing Party's activities outside of the Cordial Field.
3.2 Cordial hereby covenants that Cordial will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against Vnus, Vnus' agents, representatives, customers, distributors,
subdistributors or customers of such distributors or subdistributors, clients,
partners, directors, officers, attorneys, employees, affiliates, subsidiaries,
stockholders, precedessors, successors, or assigns (or any person acting by,
through, under or in concert with any of them) (collectively, "Potentially
Infringing Parties"), whether affirmatively, by cross-complaint, defense or
counterclaim, or by any other means in any court within any jurisdiction where
such Action alleges or claims that the manufacture, use, importation, offer to
sell, or sale of a product or service by or on behalf of Vnus within the Vnus
Field, or practice of a process by or on behalf of Vnus within the Vnus Field
infringes or violates any of Cordial's rights in the Inventions that have been
at that time assigned to and are owned by Cordial pursuant to the Cordial
Agreement. This covenant does not in any way impair the right of Cordial to xxx
any Potentially Infringing Party on account of such Potentially Infringing
Party's activities outside of the Vnus Field.
ARTICLE 4.
4.1 Broncus hereby covenants that Broncus will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against SURx, SURx's agents, representatives, customers, distributors,
subdistributors or customers of such distributors or subdistributors, clients,
partners, directors, officers, attorneys, employees, affiliates, subsidiaries,
stockholders, precedessors, successors, or assigns (or any person acting by,
through, under or in concert with any of them) (collectively, "Potentially
Infringing Parties"), whether affirmatively, by cross-complaint, defense or
counterclaim, or by any other means in any court within any jurisdiction where
such Action alleges or claims that the manufacture, use, importation, offer to
sell, or sale of a product or service by or on behalf of SURx within the SURx
Field, or practice of a process by or on behalf of SURx within the SURx Field
infringes or violates any of Broncus' rights in the Inventions that have been at
that time assigned to and are owned by Broncus pursuant to the Broncus
Agreement. This covenant does not in any way impair the right of Broncus to xxx
any Potentially Infringing Party on account of such Potentially Infringing
Party's activities outside of the SURx Field.
4.2 SURx hereby covenants that SURx will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against Broncus, Broncus' agents, representatives, customers,
distributors, subdistributors or customers of such distributors or
subdistributors, clients, partners, directors, officers, attorneys, employees,
affiliates, subsidiaries, stockholders, precedessors, successors, or assigns (or
any person acting by, through, under or in concert with any of them)
(collectively, "Potentially Infringing Parties"), whether affirmatively, by
cross-complaint, defense or counterclaim, or by any other means in any court
within any jurisdiction where such Action alleges or claims that the
manufacture, use,
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importation, offer to sell, or sale of a product or service by or on behalf of
Broncus within the Broncus Field, or practice of a process by or on behalf of
Broncus within the Broncus Field infringes or violates any of SURx's rights in
the Inventions that have been at that time assigned to and are owned by SURx
pursuant to the SURx Agreement. This covenant does not in any way impair the
right of SURx to xxx any Potentially Infringing Party on account of such
Potentially Infringing Party's activities outside of the Broncus Field.
ARTICLE 5.
5.1 Cordial hereby covenants that Cordial will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against SURx, SURx' agents, representatives, customers, distributors,
subdistributors or customers of such distributors or subdistributors, clients,
partners, directors, officers, attorneys, employees, affiliates, subsidiaries,
stockholders, precedessors, successors, or assigns (or any person acting by,
through, under or in concert with any of them) (collectively, "Potentially
Infringing Parties"), whether affirmatively, by cross-complaint, defense or
counterclaim, or by any other means in any court within any jurisdiction where
such Action alleges or claims that the manufacture, use, importation, offer to
sell, or sale of a product or service by or on behalf of SURx within the SURx
Field, or practice of a process by or on behalf of SURx within the SURx Field
infringes or violates any of Cordial's rights in the Inventions that have been
at that time assigned to and are owned by Cordial pursuant to the Cordial
Agreement. This covenant does not in any way impair the right of Cordial to xxx
any Potentially Infringing Party on account of such Potentially Infringing
Party's activities outside of the SURx Field.
5.2 SURx hereby covenants that SURx will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against Cordial, Cordial' agents, representatives, customers,
distributors, subdistributors or customers of such distributors or
subdistributors, clients, partners, directors, officers, attorneys, employees,
affiliates, subsidiaries, stockholders, precedessors, successors, or assigns (or
any person acting by, through, under or in concert with any of them)
(collectively, "Potentially Infringing Parties"), whether affirmatively, by
cross-complaint, defense or counterclaim, or by any other means in any court
within any jurisdiction where such Action alleges or claims that the
manufacture, use, importation, offer to sell, or sale of a product or service by
or on behalf of Cordial within the Cordial Field, or practice of a process by or
on behalf of Cordial within the Cordial Field infringes or violates any of
SURx's rights in the Inventions that have been at that time assigned to and are
owned by SURx pursuant to the SURx Agreement. This covenant does not in any way
impair the right of SURx to xxx any Potentially Infringing Party on account of
such Potentially Infringing Party's activities outside of the Cordial Field.
ARTICLE 6.
6.1 Cordial hereby covenants that Cordial will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against Broncus, Broncus' agents, representatives, customers,
distributors, subdistributors or customers of such distributors or
subdistributors, clients, partners, directors, officers, attorneys, employees,
affiliates, subsidiaries, stockholders, precedessors, successors, or assigns (or
any person acting by, through, under or in concert with any of them)
(collectively, "Potentially Infringing Parties"),
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whether affirmatively, by cross-complaint, defense or counterclaim, or by any
other means in any court within any jurisdiction where such Action alleges or
claims that the manufacture, use, importation, offer to sell, or sale of a
product or service by or on behalf of Broncus within the Broncus Field, or
practice of a process by or on behalf of Broncus within the Broncus Field
infringes or violates any of Cordial's rights in the Inventions that have been
at that time assigned to and are owned by Cordial pursuant to the Cordial
Agreement. This covenant does not in any way impair the right of Cordial to xxx
any Potentially Infringing Party on account of such Potentially Infringing
Party's activities outside of the Broncus Field.
6.2 Broncus hereby covenants that Broncus will not institute, maintain,
prosecute or voluntarily aid any legal or equitable action or proceeding (an
"Action") against Cordial, Cordial's agents, representatives, customers,
distributors, subdistributors or customers of such distributors or
subdistributors, clients, partners, directors, officers, attorneys, employees,
affiliates, subsidiaries, stockholders, predecessors, successors, or assigns (or
any person acting by, through, under or in concert with any of them)
(collectively, "Potentially Infringing Parties"), whether affirmatively, by
cross-complaint, defense or counterclaim, or by any other means in any court
within any jurisdiction where such Action alleges or claims that the
manufacture, use, importation, offer to sell, or sale of a product or service by
or on behalf of Cordial within the Cordial Field, or practice of a process by or
on behalf of Cordial within the Cordial Field infringes or violates any of
Broncus' rights in the Inventions that have been at that time assigned to and
are owned by Broncus pursuant to the Broncus Agreement. This covenant does not
in any way impair the right of Broncus to xxx any Potentially Infringing Party
on account of such Potentially Infringing Party's activities outside of the
Cordial Field.
ARTICLE 7.
7.1 In the event that a Party institutes a legal or equitable proceeding
or action (whether directly or by cross-complaint, counterclaim or as a defense)
against a Third Party (i.e., an entity or person not party to this Agreement),
in which the Party alleges that the Third Party has unlawfully infringed or
violated such Party's rights in the Inventions assigned to the Party pursuant to
the applicable Assignment Agreement, and should such Third Party assert that one
or more of the other Parties to this Agreement are necessary and indispensable
to such legal or equitable proceedings, such other Party or Parties agree to
participate in the proceedings. The Party instituting the action shall be
responsible for all liabilities, costs and expenses of the other Party or
Parties in participating in such suit. The Party instituting the action shall
indemnify and hold harmless the other Party or Parties participating in such
suit for any monetary award to the Third Party. The Party instituting the action
shall receive all awards and proceeds resulting from settlement, decision or
other resolution of such proceeding or action.
7.2 No party may require that the Party to whom an invention is assigned
institute a proceeding or action against a Third Party alleging that the Third
Party has unlawfully infringed or violated its rights or the rights of the Party
to whom an Invention is assigned.
ARTICLE 8.
8.1 The parties agree that Xx. Xxxxxx has full and sole authority to
decide the Party to which he assigns Inventions pursuant to the Assignment
agreements. If a patent
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application is filed based upon one of his Inventions, Xx. Xxxxxx shall assign
his entire rights, title and interest in the application to the same Party to
whom he decided to assign the corresponding Invention. Xx. Xxxxxx'x decisions to
assign the patent application to a particular Party shall not be contestable by
any of the other Parties.
8.2 The Parties recognize as valid, and agree not to contest, the
assignments already completed by Xx. Xxxxxx pursuant to the Assignment
Agreements.
8.3 The Parties recognize as valid, and agree not to contest, any future
assignments Xx. Xxxxxx may make pursuant to the Assignment Agreements.
ARTICLE 9.
9.1 In the event that a Party (the "Initiating Party") institutes an
Action against one of the other Parties (the "Defending Party") to this
Agreement which Action may be determined by a court of competent jurisdiction or
an arbitrator with jurisdiction over such matter to be in breach of a covenant
not to xxx under Articles 1 through 6 herein, such Initiating Party shall pay
all of the Defending Party's attorney's fees and costs and expenses associated
with defending against such Actions and enforcing the covenant not to xxx. In
addition, the Initiating Party shall be liable to the Defending Party for all
harm caused by such breach and the Parties agree that equitable relief may be
appropriate including temporary and permanent injunctions. Not withstanding the
foregoing, in no event shall any party be liable under this Article 9.1 to any
other Party for any special, punitive, or consequential damages.
ARTICLE 10.
10.1 TRANSFERABILITY. A Party's obligations under this Agreement,
including the obligation pursuant to Articles 1-6, not to xxx another Party for
actions within the other Party's Field, will bind the Party's respective
successors, heirs, executors, licensees, administrators, and assigns. A Party
cannot license or assign rights in the Inventions assigned to it pursuant to the
applicable Assignment Agreement without also assigning the Party's obligations
under this Agreement. The Parties' rights pursuant to Articles 7, 8 and 9 of
this Agreement will inure to the benefit of their respective successors, heirs,
executors, licensees, administrators and assigns. This Agreement authorizes a
Party to transfer the right pursuant to Articles 1-6, not to be sued by another
Party only concurrently with the transfer of the entire assets of the Party. The
Party transferring its rights and/or obligations under this Agreement must make
a written notification of such transfer to each of the other Parties. The
written notification must state to whom the rights and/or obligations are
transferred and that the transferee is aware of this Agreement.
10.2 RELATIONSHIP OF THE PARTIES. No Party is, nor will be deemed to be,
an agent or legal representative of any other Party for any purpose. No Party
will be entitled to enter into any contracts in the name of or on behalf of any
other Party, and no Party will be entitled to pledge the credit of any other
Party in any way or hold itself out as having authority to do so. No Party will
incur any debts or make any commitments for the other, except to the extent, if
at all, specifically provided herein.
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10.3 WAIVER. Unless the provision provides otherwise, no provision of the
Agreement will be waived by any act, omission or knowledge of a Party or its
agents or employees except by an instrument in writing expressly waiving such
provision and signed by a duly authorized officer of the waiving Party.
10.4 SEVERABILITY. Whenever possible, each provision of the Agreement will
be interpreted in such manner as to be effective and valid under applicable law,
but if any provision of the Agreement is held to be prohibited by or invalid
under applicable law, such provision will be ineffective only to the extent of
such prohibition or invalidity, without invalidating the remainder of the
Agreement.
10.5 CHOICE OF LAW. This Agreement shall be governed by and construed in
accordance with the laws of the state of California, as applied to agreements
executed and performed entirely within the state of California by California
residents. Any claim or controversy arising out of or related to this Agreement
or any breach hereof shall be submitted to a court of applicable jurisdiction in
the state of California, and each Party hereby consents to the jurisdiction and
venue of such court.
10.6 TERMINATION. This Agreement shall continue in effect until the later
of March 1, 2002 or the expiration of the last to expire of any patents that
issue from the Inventions assigned to the Parties pursuant to the Assignment
Agreements.
10.7 ENTIRE AGREEMENT OF THE PARTIES. This Agreement sets forth the entire
understanding and agreement between the Parties regarding the subject matter
hereof. No verbal agreement, conversation or representation between any
officers, agents or employees of the Parties either before or after the
execution of this Agreement shall affect or modify any of the terms or
obligations herein contained.
10.8 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be an original and all of which shall
constitute together the same document.
10.9 No amendment or modification to this Agreement shall be effective
unless in writing signed by each of the Parties hereto.
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IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement,
including Exhibits A, B, C and D attached hereto and incorporated herein by
reference.
VNUS MEDICAL TECHNOLOGIES, INC. SURX, INC.
By: /s/ By: /s/
------------------------------- -----------------------------------
Title: President & CEO Title: President & CEO
---------------------------- --------------------------------
CORDIAL MEDICAL, INC. BRONCUS TECHNOLOGIES, INC.
By: /s/ By: /s/
------------------------------- -----------------------------------
Title: President & CEO Title: President & CEO
---------------------------- --------------------------------
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EXHIBIT A
AGREEMENT
THIS AGREEMENT (the "Agreement") is made by and among Vnus Medical Technologies,
Inc. ("Vnus"), Menlo Ventures VI, L.P. ("Menlo") and Xxxxxxx X. Xxxxxx, M.D.
("Xx. Xxxxxx") as of April 30, 1997.
1. Assignment of Past Inventions. In exchange for one hundred dollars
($100), receipt of which is hereby acknowledged, Xx. Xxxxxx and Menlo hereby
assign to Vnus all of his, its and their existing right, title and interest in
and to any and all inventions, improvements, trade secrets, patents, patent
applications and in process patent applications (collectively "inventions")
conceived of and reduced to practice by Xx. Xxxxxx, solely or jointly, on or
before May 2, 1996, and which relate to the areas of chronic venous
insufficiency, hemorrhoid treatments, endovascular treatments for vasogenic
impotence and the treatment of esophageal varices (collectively, the "Field").
Xx. Xxxxxx retains his rights and interest in being named as an author or the
principal author in any and all such inventions within the Field.
2. Ownership of Future Inventions. Xx. Xxxxxx and Menlo shall assign for
valuable consideration to Vnus all of his, its, and their existing right, title
and interest to any invention or discovery, patentable or otherwise, and any
development, improvement, trade secret, or other intellectual property within
the Field conceived, developed and/or reduced to practice by Xx. Xxxxxx, alone
or in combination with others at Vnus after May 2, 1996, arising from work done
on behalf of Vnus, including but not limited to the review or development of
products. Xx. Xxxxxx shall have no obligation to Vnus with respect to any other
inventions or discoveries, patentable or otherwise, or for any other
development, improvement, trade secret or other intellectual property except as
listed above.
3. Further Agreements.
(a) All prior agreements between Xx. Xxxxxx and Vnus are hereby
terminated. Xx. Xxxxxx acknowledges that he is a director of Vnus and will
continue to be subject to his fiduciary duties relating to his role as a member
of the board of directors of Vnus.
(b) With respect to all inventions and information assigned by Xx.
Xxxxxx to Vnus under this Agreement, Xx. Xxxxxx will assist Vnus in any
reasonable manner upon reasonable request to obtain for Vnus' benefit patents in
any and all countries and Xx. Xxxxxx will execute, upon reasonable request,
patent applications, assignments and declarations to or for Vnus or persons
designated by it, and any other lawful documents required to carry out the
purposes of this Agreement. Xx. Xxxxxx will further assist Vnus in every way
including but not limited to testifying in any suit or proceeding, to enforce
any such patents or patent applications. Vnus agrees that it will reimburse Xx.
Xxxxxx for any and all out of pocket expenses associated with such enforcement
proceedings. In addition, should such proceedings ensue after such time as Xx
Xxxxxx is no longer a member of the board of directors, Vnus will reimburse Xx.
Xxxxxx for his time at a rate mutually agreed upon but not less than $250/hour
which can be unilaterally waived by Xx. Xxxxxx at the time of such proceedings
should he so choose.
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4. Miscellaneous.
(a) This Agreement is entered into by Xx. Xxxxxx in order to comply
with the management and limited partnership agreements of Menlo Ventures VI,
L.P. and MV Management VI, L.P. of which Xx. Xxxxxx is a General Partner.
(b) This Agreement shall be governed by and construed in accordance
with the laws of the State of California, and the parties hereto submit to the
exclusive jurisdiction of the courts in California, both state and federal, with
respect to the subject matter of this Agreement.
(c) This Agreement shall not be modified, amended, rescinded,
canceled or waived in whole or in part except by written instruments signed by
the parties hereto.
(d) This Agreement expresses modifications to existing agreements
between the parties. All previous agreements between the parties are hereby
terminated, including all compensation agreements, consulting agreements and
agreements for the assignment of intellectual property.
IN WITNESS WHEREOF, the parties have executed this Agreement as of
the date first set forth above.
VNUS MEDICAL TECHNOLOGIES, INC.
/s/ By: /s/
----------------------------------- --------------------------------
Xxxxxxx X. Xxxxxx, M.D. Title: President & CEO
--------------------------------
MENLO VENTURES VI, L.P.
BY: MV MANAGEMENT VI, L.P.
ITS GENERAL PARTNER
By: /s/
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EXHIBIT B
AGREEMENT
THIS AGREEMENT (the "Agreement") is made by and among SURx, Inc. ("SURx"), Menlo
Ventures VI, L.P. ("Menlo") and Xxxxxxx X. Xxxxxx, M.D. ("Xx. Xxxxxx") as of
April 30, 1997.
1. Assignment of Past Inventions. In exchange for one hundred dollars
($100), receipt of which is hereby acknowledged, Xx. Xxxxxx and Menlo hereby
assign to SURx all of his, its and their existing right, title and interest in
and to any and all inventions, improvements, trade secrets, patents, patent
applications and in process patent applications (collectively "inventions")
conceived of and reduced to practice by Xx. Xxxxxx, solely or jointly, on or
before August 1, 1996, and which relate to the treatment of urinary
incontinence, fascia in and remaining in the torso (excluding the pericardium),
and kidney stones (collectively the "Field"). Xx. Xxxxxx retains his rights and
interest in being named as an author or the principal author in any and all such
inventions within the Field.
2. Ownership of Future Inventions. Xx. Xxxxxx and Menlo shall assign for
valuable consideration to SURx all of his, its, and their existing right, title
and interest to any invention or discovery, patentable or otherwise, and any
development, improvement, trade secret, or other intellectual property within
the Field conceived, developed and/or reduced to practice by Xx. Xxxxxx, alone
or in combination with others at SURx after August 1, 1996, arising from work
done on behalf of SURx, including but not limited to the review or development
of products. Xx. Xxxxxx shall have no obligation to SURx with respect to any
other inventions or discoveries, patentable or otherwise, or for any other
development, improvement, trade secret or other intellectual property except as
listed above.
3. Further Agreements.
(a) All prior agreements between Xx. Xxxxxx and SURx are hereby
terminated. Xx. Xxxxxx acknowledges that he is a director of SURx and will
continue to be subject to his fiduciary duties relating to his role as a member
of the board of directors of SURx.
(b) With respect to all inventions and information assigned by Xx.
Xxxxxx to SURx under this Agreement, Xx. Xxxxxx will assist SURx in any
reasonable manner upon reasonable request to obtain for SURx' benefit patents in
any and all countries and Xx. Xxxxxx will execute, upon reasonable request,
patent applications, assignments and declarations to or for SURx or persons
designated by it, and any other lawful documents required to carry out the
purposes of this Agreement. Xx. Xxxxxx will further assist SURx in every way
including but not limited to testifying in any suit or proceeding, to enforce
any such patents or patent applications. SURx agrees that it will reimburse Xx.
Xxxxxx for any and all out of pocket expenses associated with such enforcement
proceedings. In addition, should such proceedings ensue after such time as Xx
Xxxxxx is no longer a member of the board of directors, SURx will reimburse Xx.
Xxxxxx for his time at a rate mutually agreed upon but not less than $250/hour
which can be unilaterally waived by Xx. Xxxxxx at the time of such proceedings
should he so choose.
13
4. Miscellaneous.
(a) This Agreement is entered into by Xx. Xxxxxx in order to comply
with the management and limited partnership agreements of Menlo Ventures VI,
L.P. and MV Management VI, L.P. of which Xx. Xxxxxx is a General Partner.
(b) This Agreement shall be governed by and construed in accordance
with the laws of the State of California, and the Parties hereto submit to the
exclusive jurisdiction of the courts in California, both state and federal, with
respect to the subject matter of this Agreement.
(c) This Agreement shall not be modified, amended, rescinded,
canceled or waived in whole or in part except by written instruments signed by
the parties hereto.
(d) This Agreement expresses modifications to existing agreements
between the parties. All previous agreements between the parties are hereby
terminated, including all compensation agreements, consulting agreements and
agreements for the assignment of intellectual property.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first set forth above.
SURX, INC.
/s/ By: /s/
----------------------------------- --------------------------------
Xxxxxxx X. Xxxxxx, M.D. Title: President & CEO
--------------------------------
MENLO VENTURES VI, L.P.
BY: MV MANAGEMENT VI, L.P.
ITS GENERAL PARTNER
By: /s/
-------------------------------
2
14
EXHIBIT C
AGREEMENT
THIS AGREEMENT (the "Agreement") is made by and among Cordial Medical, Inc.
("Cordial"), Menlo Ventures VI, L.P. ("Menlo") and Xxxxxxx X. Xxxxxx, M.D. ("Xx.
Xxxxxx") as of April 30, 1997.
1. Assignment of Past Inventions. In exchange for one hundred dollars
($100), receipt of which is hereby acknowledged, Xx. Xxxxxx and Menlo hereby
assign to Cordial all of his, its and their existing right, title and interest
in and to any and all inventions, improvements, trade secrets, patents, patent
applications and in process patent applications (collectively "inventions")
conceived of and reduced to practice by Xx. Xxxxxx, solely or jointly, on or
before July 8, 1996, and which relate to the treatment of the heart and
pulmonary vessels (collectively the "Field"). Xx. Xxxxxx retains his rights and
interest in being named as an author or the principal author in any and all such
inventions within the Field.
2. Ownership of Future Inventions. Xx. Xxxxxx and Menlo shall assign for
valuable consideration to Cordial all of his, its, and their existing right,
title and interest to any invention or discovery, patentable or otherwise, and
any development, improvement, trade secret, or other intellectual property
within the Field conceived, developed and/or reduced to practice by Xx. Xxxxxx,
alone or in combination with others at Cordial after July 8, 1996, arising from
work done on behalf of Cordial, including but not limited to the review or
development of products. Xx. Xxxxxx shall have no obligation to Cordial with
respect to any other inventions or discoveries, patentable or otherwise, or for
any other development, improvement, trade secret or other intellectual property
except as listed above.
3. Further Agreements.
(a) All prior agreements between Xx. Xxxxxx and Cordial are hereby
terminated. Xx. Xxxxxx acknowledges that he is a director of Cordial and will
continue to be subject to his fiduciary duties relating to his role as a member
of the board of directors of Cordial.
(b) With respect to all inventions and information assigned by Xx.
Xxxxxx to Cordial under this Agreement, Xx. Xxxxxx will assist Cordial in any
reasonable manner upon reasonable request to obtain for Cordial' benefit patents
in any and all countries and Xx. Xxxxxx will execute, upon reasonable request,
patent applications, assignments and declarations to or for Cordial or persons
designated by it, and any other lawful documents required to carry out the
purposes of this Agreement. Xx. Xxxxxx will further assist Cordial in every way
including but not limited to testifying in any suit or proceeding, to enforce
any such patents or patent applications. Cordial agrees that it will reimburse
Xx. Xxxxxx for any and all out of pocket expenses associated with such
enforcement proceedings. In addition, should such proceedings ensue after such
time as Xx Xxxxxx is no longer a member of the board of directors, Cordial will
reimburse Xx. Xxxxxx for his time at a rate mutually agreed upon but not less
than $250/hour which can be unilaterally waived by Xx. Xxxxxx at the time of
such proceedings should he so choose.
15
4. Miscellaneous.
(a) This Agreement is entered into by Xx. Xxxxxx in order to comply
with the management and limited partnership agreements of Menlo Ventures VI,
L.P. and MV Management VI, L.P. of which Xx. Xxxxxx is a General Partner.
(b) This Agreement shall be governed by and construed in accordance
with the laws of the State of California, and the Parties hereto submit to the
exclusive jurisdiction of the courts in California, both state and federal, with
respect to the subject matter of this Agreement.
(c) This Agreement shall not be modified, amended, rescinded,
canceled or waived in whole or in part except by written instruments signed by
the parties hereto.
(d) This Agreement expresses modifications to existing agreements
between the parties. All previous agreements between the parties are hereby
terminated, including all compensation agreements, consulting agreements and
agreements for the assignment of intellectual property.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first set forth above.
CORDIAL MEDICAL, INC.
/s/ By: /s/
----------------------------------- --------------------------------
Xxxxxxx X. Xxxxxx, M.D. Title: President & CEO
--------------------------------
MENLO VENTURES VI, L.P.
BY: MV MANAGEMENT VI, L.P.
ITS GENERAL PARTNER
By: /s/
-------------------------------
2
16
EXHIBIT D
AGREEMENT
THIS AGREEMENT (the "Agreement") is made by and among Broncus Technologies, Inc.
("Broncus"), Menlo Ventures VI, L.P. ("Menlo") and Xxxxxxx X. Xxxxxx, M.D. ("Xx.
Xxxxxx") as of April 30, 1997.
1. Assignment of Past Inventions. In exchange for one hundred dollars
($100), receipt of which is hereby acknowledged, Xx. Xxxxxx and Menlo hereby
assign to Broncus all of his, its and their existing right, title and interest
in and to any and all inventions, improvements, trade secrets, patents, patent
applications and in process patent applications (collectively "inventions")
conceived of and reduced to practice by Xx. Xxxxxx, solely or jointly, on or
before February 7, 1997, and which relate to the areas of pulmonary assist
devices and the treatment of the airways of the lungs (collectively the
"Field"). Xx. Xxxxxx retains his rights and interest in being named as an author
or the principal author in any and all such inventions within the Field.
2. Ownership of Future Inventions. Xx. Xxxxxx and Menlo shall assign for
valuable consideration to Broncus all of his, its, and their existing right,
title and interest to any invention or discovery, patentable or otherwise, and
any development, improvement, trade secret, or other intellectual property
within the Field conceived, developed and/or reduced to practice by Xx. Xxxxxx,
alone or in combination with others at Broncus after February 7, 1997, arising
from work done on behalf of Broncus, including but not limited to the review or
development of products. Xx. Xxxxxx shall have no obligation to Broncus with
respect to any other inventions or discoveries, patentable or otherwise, or for
any other development, improvement, trade secret or other intellectual property
except as listed above.
3. Further Agreements.
(a) All prior agreements between Xx. Xxxxxx and Broncus are hereby
terminated. Xx. Xxxxxx acknowledges that he is a director of Broncus and will
continue to be subject to his fiduciary duties relating to his role as a member
of the board of directors of Broncus.
(b) With respect to all inventions and information assigned by Xx.
Xxxxxx to Broncus under this Agreement, Xx. Xxxxxx will assist Broncus in any
reasonable manner upon reasonable request to obtain for Broncus' benefit patents
in any and all countries and Xx. Xxxxxx will execute, upon reasonable request,
patent applications, assignments and declarations to or for Broncus or persons
designated by it, and any other lawful documents required to carry out the
purposes of this Agreement. Xx. Xxxxxx will further assist Broncus in every way
including but not limited to testifying in any suit or proceeding, to enforce
any such patents or patent applications. Broncus agrees that it will reimburse
Xx. Xxxxxx for any and all out of pocket expenses associated with such
enforcement proceedings. In addition, should such proceedings ensue after such
time as Xx. Xxxxxx is no longer a member of the board of directors, Broncus will
reimburse Xx. Xxxxxx for his time at a rate mutually agreed upon but not less
than $250/hour which can be unilaterally waived by Xx. Xxxxxx at the time of
such proceedings should he so choose.
17
4. Miscellaneous.
(a) This Agreement is entered into by Xx. Xxxxxx in order to comply
with the management and limited partnership agreements of Menlo Ventures VII,
L.P. and MV Management VII, L.P. of which Xx. Xxxxxx is a General Partner.
(b) This Agreement shall be governed by and construed in accordance
with the laws of the State of California, and the parties hereto submit to the
exclusive jurisdiction of the courts in California, both state and federal, with
respect to the subject matter of this Agreement.
(c) This Agreement shall not be modified, amended, rescinded,
canceled or waived in whole or in part except by written instruments signed by
the parties hereto.
(d) This Agreement expresses modifications to existing agreements
between the parties. All previous agreements between the parties are hereby
terminated, including all compensation agreements, consulting agreements and
agreements for the assignment of intellectual property.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date first set forth above.
BRONCUS TECHNOLOGIES, INC.
/s/ By: /s/
----------------------------------- --------------------------------
Xxxxxxx X. Xxxxxx, M.D. Title: President & CEO
--------------------------------
MENLO VENTURES VI, L.P.
BY: MV MANAGEMENT VI, L.P.
ITS GENERAL PARTNER
By: /s/
-------------------------------
2
