EXHIBIT 10.11
LICENSE AGREEMENT
THIS LICENSE AGREEMENT dated as of December 20, 1995 (the "Agreement"),
is entered into between SRI INTERNATIONAL, a California nonprofit public
benefit corporation ("SRI"), having a place of business located at 000
Xxxxxxxxxx Xxxxxx, Xxxxx Xxxx, Xxxxxxxxxx 00000-0000, and INTUITIVE SURGICAL
DEVICES, INC., a Delaware corporation ("ISD"), having a place of business
located at Five Palo Alto Square, 0000 Xx Xxxxxx Xxxx, Xxxx Xxxx, Xxxxxxxxxx
00000-0000.
W I T N E S S E T H :
WHEREAS, SRI owns or has rights in certain patent rights and know-how
regarding Telepresence Surgical Technology (defined below), as described in
the SRI disclosures listed in Exhibit A hereto.
WHEREAS, SRI and Xxxx X. Xxxxxx, M.D. ("Xx. Xxxxxx"), entered into an
Option Agreement dated September 12, 1995 (the "Option Agreement"), pursuant
to which SRI granted to Xx. Xxxxxx an option to obtain a certain license
under SRI's rights in such patent rights and know-how.
WHEREAS, by exercising the option granted under the Option Agreement,
Xx. Xxxxxx desires that SRI convey to ISD a license under SRI's rights in
such patent rights and know-how to develop, make use and sell products for
use in performing surgery on humans and animals, on the terms and subject to
the conditions of the Agreement.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual covenants herein contained, the parties hereby agree as follows:
ARTICLE 1
DEFINITIONS
For purposes of the Agreement, the terms defined in this article shall
have the respective meanings set forth below:
1.1 "AFFILIATE" shall mean, with respect to any Person, any other
Person which directly or indirectly controls, is controlled by, or is under
common control with, such Person. A Person shall be regarded as in control of
another Person if it owns, or directly or indirectly controls, at least
fifty percent (50%) of
the voting stock or other ownership interest of the other Person, or if it
directly or indirectly possesses the power to direct or cause the direction
of the management and policies of the other Person by any means whatsoever.
1.2 "FIELD" shall mean the manipulation of tissues and medical devices
for animal and human medicine (including but not limited to surgery,
laparoscopic surgery and microsurgery).
1.3 "ISD KNOW-HOW" shall mean all inventions, discoveries, processes,
methods, compositions, formulae, procedures, protocols, techniques, results
of experimentation and testing, information and data, which have not been
published and otherwise are not generally known, which are necessary or
useful to the development, manufacture, use or sale of products utilizing or
incorporating the Telepresence Surgical Technology, or otherwise relate to or
arise from the Telepresence Surgical Technology, and which are first
conceived or reduced to practice solely or jointly by employees or other
Persons on behalf of ISD prior to September 12, 1997; all to the extent and
only to the extent that ISD has the right to grant licenses, immunities or
other rights thereunder.
1.4 "ISD PATENT RIGHTS" shall mean (a) all patent applications,
heretofore or hereafter filed or having legal force in any country which
claim a discovery or invention which is (i) necessary or useful to the
development, manufacture, use or sale of products utilizing or incorporating
the Telepresence Surgical Technology or (ii) otherwise relates to or arises
from the Telepresence Surgical Technology, and which is first conceived or
reduced to practice solely or jointly by employees or other Persons on behalf
of ISD prior to September 12, 1997, (b) all valid and enforceable patents
that have issued or in the future issue from the patent applications
described in clause (a) above, including utility, model and design patents
and certificates of invention, and (c) all divisionals, continuations,
continuations-in-part, reissues, renewals, extensions, registrations,
confirmations, re-examinations or additions to any such patent applications
and patents; all to the extent and only to the extent that ISD has the right
to grant licenses, immunities or other rights thereunder.
1.5 "MILESTONE" shall mean the good faith filing by ISD, its Affiliate
or sublicensee of a Pre-Market Approval application or 510K application with
the Food and Drug Administration in the United States (or the equivalent
application with the governing health authority of any country in Europe),
supported by the information that in ISD's best judgment would give the
greatest likelihood of approval by the FDA (or the governing health authority
of the applicable country in Europe).
1.6 "PERSON" shall mean an individual, corporation, partnership, trust,
business trust, association, joint stock company, joint venture, pool,
syndicate, sole proprietorship,
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unincorporated organization, governmental authority or any other form of
entity not specifically listed herein.
1.7 "PRODUCT" shall mean any product for use in the Field which if
made, used or sold would infringe one or more valid claims of the SRI Patent
Rights if in an issued patent but for the license granted by the Agreement,
or which otherwise uses, incorporates or was conceived, developed or reduced
to practice using the SRI Patent Rights or SRI Know-How.
1.8 "SRI FUTURE TECHNOLOGY RIGHTS" shall mean all intellectual property
rights of SRI in all inventions, discoveries, processes, methods,
compositions, formulae, procedures, protocols, techniques, results of
experimentation and testing, information and data regarding Telepresence
Surgical Technology, which are first conceived or reduced to practice solely
or jointly by employees or other Persons on behalf of SRI on or after
September 12, 1997 and prior to September 12, 1999; all to the extent and
only to the extent that SRI has the right to grant licenses, immunities or
other rights thereunder.
1.9 "SRI KNOW-HOW" shall mean all inventions, discoveries, processes,
methods, compositions, formulae, procedures, protocols, techniques, results
of experimentation and testing, information and data, which have not been
published and otherwise are not generally known, regarding Telepresence
Surgical Technology in which SRI has an ownership or other interest as of the
date of the Agreement or which are first conceived or reduced to practice
solely or jointly by employees or other Persons on behalf of SRI prior to
September 12, 1997; all to the extent and only to the extent that SRI has the
right to grant licenses or other rights thereunder.
1.10 "SRI PATENT RIGHTS" shall mean (a) all patent applications,
heretofore or hereafter filed or having legal force in any country, regarding
Telepresence Surgical Technology, which claim a discovery or invention in
which SRI has an ownership or other interest as of the date of the Agreement
or which is first conceived or reduced to practice solely or jointly by
employees or other Persons on behalf of SRI prior to September 12, 1997, (b)
all valid and enforceable patents that have issued or in the future issue
from the patent applications described in clause (a) above, including
utility, model and design patents and certificates of invention, and (c) all
divisionals, continuations, continuations-in-part, reissues, renewals,
extensions or additions to any such patent applications and patents; all to
the extent and only to the extent that SRI has the right to grant licenses,
immunities or other rights thereunder. A list of the SRI Patent Rights as of
the date of the Agreement is attached hereto as Exhibit B.
1.11 "STOCK PURCHASE AGREEMENT" shall mean the Stock Purchase Agreement
dated the date hereof, among ISD, SRI and the other signatories thereto.
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1.12 "TELEPRESENCE SURGICAL TECHNOLOGY" shall mean hardware, firmware
and software technology pertaining to the manipulation of tissues or medical
devices for human and animal medicine (including but not limited to surgery,
laparoscopic surgery and microsurgery) as described or contemplated in
Exhibits A and B to the Agreement and developed by SRI's Medical Technology
Laboratory or any successor SRI organization having the development of
medical hardware, firmware and software technology as its primary mission.
1.13 "THIRD PARTY" shall mean any Person other than SRI, ISD and their
respective Affiliates.
ARTICLE 2
REPRESENTATIONS AND WARRANTIES
Each party hereby represents and warrants to the other party as follows:
2.1 CORPORATE EXISTENCE AND POWER. Such party (a) is a corporation duly
organized, validly existing and in good standing under the laws of the state
in which it is incorporated; (b) has the corporate power and authority and
the legal right to own and operate its property and assets, to enter into the
Agreement and to perform its obligations hereunder, and to carry on its
business as it is now being conducted and (c) is in compliance with all
requirements of applicable law, except to the extent that any noncompliance
would not have a material adverse effect on the properties, business,
financial or other condition of it and would not materially adversely affect
its ability to perform its obligations under the Agreement.
2.2 AUTHORIZATION AND ENFORCEMENT OF OBLIGATIONS. Such party has taken
all necessary corporate action on its part to authorize the execution and
delivery of the Agreement and the performance of its obligations hereunder.
The Agreement has been duly executed and delivered on behalf of such
party, and constitutes a legal, valid, binding obligation, enforceable
against such party in accordance with its terms.
2.3 NO CONSENTS. All necessary consents, approvals and authorizations of
all governmental authorities and other Persons required to be obtained by
such party in connection with the Agreement have been obtained.
2.4 NO CONFLICT. The execution and delivery of the Agreement and the
performance of such party's obligations hereunder (a) do not conflict with or
violate any requirement of applicable laws or regulations, and (b) do not
conflict with, or constitute a default under, any contractual obligation of
it.
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2.5 SRI REPRESENTATIONS AND WARRANTIES. SRI hereby represents and
warrants to ISD that:
2.5.1 Except as otherwise specifically disclosed under the
Agreement, it has not granted any right to any Third Party under the SRI
Patent Rights or and SRI Technology.
2.5.2 It owns or controls under valid licenses with right of
sublicense all of the rights, title and interest in and to the patents and
patent applications set forth on Exhibit B attached hereto and the SRI
Know-How, except as otherwise provided herein.
2.5.3 It has disclosed to ISD all SRI invention disclosures
regarding the Telepresence Surgical Technology as of the date of the
Agreement.
ARTICLE 3
LICENSE GRANTS
3.1 LICENSE GRANT TO ISD. Subject to the provisions of Section 5.3
below, SRI hereby grants to ISD an exclusive, worldwide, royalty-free license
(including the right to grant sublicenses) under the SRI Patent Rights and
SRI Know-How (a) to conduct research and development with respect to Products
for use in the Field, and (b) to make, have made, use, market, distribute,
import, offer for sale and sell Products for use in the Field. Upon execution
of the Agreement and frequently thereafter until September 12, 1998, at
mutually convenient times, SRI shall disclose and make available to ISD all
information available to SRI, including without limitation SRI invention
disclosures and SRI Know-How, as is reasonably necessary for ISD's employees
and consultants to understand and practice the SRI Patent Rights and SRI
Know-How in the Field, as such information becomes available to SRI. ISD
shall have the right, during normal business hours upon reasonable notice,
to review and make copies of those portions of SRI employees' laboratory
notebooks containing such information as is reasonably necessary for ISD's
employees and consultants to understand and practice the SRI Patent Rights
and SRI Know-How in the Field.
3.2 SUBLICENSES. Each sublicense by ISD under the Agreement shall be
consistent with the terms and conditions of the license granted to ISD by SRI
and nothing in such sublicense shall eliminate or reduce ISD's obligations to
SRI under the Agreement. Each sublicense by SRI under the Agreement shall be
consistent with the terms and conditions of the license granted to SRI by ISD
and nothing in such sublicense shall eliminate or reduce SRI's obligations to
ISD under the Agreement.
3.3 RESERVATION OF CERTAIN RIGHTS. Notwithstanding the foregoing, the
license granted to ISD by the Agreement is subject
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to the reservation of (a) the right of SRI to practice processes and methods,
and to make, use and sell products, which are covered by the SRI Patent
Rights or which are disclosed in or otherwise pertain to SRI Know-How, (i)
for all commercial and research purposes outside the Field and (ii) for SRI's
internal and collaborative non-commercial research purposes (including United
States Government sponsored research) in the Field; (b) certain rights held
by or in favor of the United States Government by applicable law or
regulation; and (c) the non-exclusive, worldwide, royalty-free right to use
the SRI Patent Rights and SRI Know-How for medical training and simulations,
so long as products created pursuant to such right are not used to perform
medical procedures. To the extent required by applicable United States laws
or regulations, if at all, ISD, its Affiliates and sublicensees shall
manufacture the Products in the United States or its territories.
3.4 DISCLAIMER OF WARRANTIES. NOTHING IN THE AGREEMENT SHALL BE
CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY SRI THAT ANY PATENT
WILL ISSUE BASED UPON ANY PENDING PATENT APPLICATION INCLUDED IN THE SRI
PATENT RIGHTS, THAT ANY PATENT INCLUDED IN THE SRI PATENT RIGHTS WHICH ISSUES
WILL BE VALID, OR THAT THE USE OF ANY SRI PATENT RIGHTS OR SRI KNOW-HOW WILL
NOT INFRINGE THE PATENT OR PROPRIETARY RIGHTS OF ANY OTHER PERSON. EXCEPT AS
OTHERWISE SET FORTH IN SECTION 2.5 ABOVE, SRI MAKES NO REPRESENTATIONS OR
WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THE SRI PATENT RIGHTS OR SRI
KNOW-HOW, INCLUDING WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE.
3.5 LICENSE GRANT TO SRI. ISD hereby grants to SRI a non-exclusive,
worldwide, royalty-free license (including the right to grant sublicenses) to
practice methods and processes, and to make, use and sell products, which are
covered by the ISD Patent Rights or which are disclosed in or otherwise
pertain to ISD Know-How (a) for all commercial and research purposes outside
the Field and (b) for SRI's internal and collaborative non-commercial
research purposes (including United States Government sponsored research) in
the Field. At least quarterly prior to September 12, 1998, at mutually
convenient times, ISD shall disclose and make available to SRI information
available to ISD regarding the use of the ISD Patent Rights and ISD Know-How
outside the Field, as such information becomes available to ISD.
3.6 TECHNICAL ASSISTANCE. Prior to September 12, 1997, upon reasonable
notice and during normal business hours, SRI (a) shall provide such technical
assistance regarding the SRI Patent Rights and SRI Know-How as ISD reasonably
requests to conduct its activities contemplated by the Agreement, and (b)
shall make available to ISD such technical personnel of SRI as reasonably
necessary to provide the foregoing technical assistance. Except for services
reasonably required for the technology transfer as set forth in Section 3.1
above, ISD shall reimburse SRI for its standard research or consulting costs
for any such technical
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assistance, determined in accordance with SRI's normal business practice
applied on a consistent basis, together with all reasonable out-of-pocket
travel and other expenses incurred by SRI in providing such technical
assistance. At the request of ISD, SRI shall provide ISD with estimates of
the anticipated costs of any requested technical assistance prior to
undertaking such technical assistance.
3.7 ACCESS. During the term of the Agreement prior to September 12,
1997, subject to the limitations of this Section 3.7, ISD shall have the
right to visit SRI's facilities to inspect and use SRI Telepresence Surgical
Technology demonstration or prototype equipment. ISD's access to SRI
facilities and use of equipment shall be subject to the following conditions:
(a) ISD shall provide reasonable prior notice;
(b) ISD's use of SRI facilities and equipment shall be during
normal business hours at times mutually convenient to SRI and ISD, which do
not conflict with SRI's normal business activities;
(c) ISD shall repair or replace any SRI equipment damaged by ISD;
and
(d) ISD's access to SRI facilities shall be subject to the
execution by ISD of an agreement with standard SRI terms and conditions
regarding access to SRI facilities by contractors and other non-employee
Third Parties.
3.8 RIGHT OF FIRST NEGOTIATION. SRI shall not sell, assign, license or
otherwise transfer the SRI Future Technology Rights for use in the Field to
any Third Party unless SRI first (a) gives to ISD written notice of SRI's
desire to do so, (b) provides ISD with information available to SRI regarding
the use of the SRI Future Technology Rights in the Field, sufficient to
permit ISD to evaluate and understand such SRI Future Technology Rights,
subject to the confidentiality provisions of Article 6 below, solely to
evaluate its interest in negotiating a license under such rights, and (c)
offers to ISD the opportunity to negotiate with SRI to obtain a license under
the SRI Future Technology Rights for use in the Field. IF ISD fails to give
written notice to SRI of its desire to negotiate a license under such rights
within 60 days after receipt of the written notice from SRI under clause (a)
above, or if the parties are unable after good faith negotiations to reach a
mutually acceptable agreement, thereafter SRI shall have the right in its
sole discretion to sell, assign, license or otherwise transfer the SRI Future
Technology Rights for use in the Field to any one or more Third Parties.
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ARTICLE 4
CONSIDERATION TO SRI
4.1 ISSUANCE OF ISD SHARES. In consideration for the license granted
to ISD hereunder, concurrent with the execution of the Agreement, ISD shall
issue to SRI or SRI's designees five hundred eighty five thousand (585,000)
shares of ISD Common Stock on the terms and subject to the conditions of the
Stock Purchase Agreement.
4.2 REIMBURSEMENT OF CERTAIN SRI COSTS. Within five (5) business days
following the execution of the Agreement, ISD shall reimburse SRI for (a) all
reasonable, direct, out-of-pocket costs (not to exceed $116,000 in the
aggregate) incurred by SRI on or before the date of the Option Agreement in
connection with the preparation, filing, prosecution and maintenance of the
patent applications and patents included in the SRI Patent Rights; (b) all
reasonable, direct, out-of-pocket costs incurred by SRI after the date of the
Option Agreement and on or before the date of the Agreement in connection
with the preparation, filing, prosecution and maintenance of the patent
applications and patents included in the SRI Patent Rights, which are
approved by ISD or Xx. Xxxxxx prior to being incurred; and (c) all
reasonable, outside counsel attorneys' fees and costs (not to exceed $10,000
in the aggregate) incurred by SRI in connection with the negotiation,
drafting and execution of the Option Agreement, the Agreement and the Stock
Purchase Agreement; PROVIDED, HOWEVER, that no fees or costs resulting from
work performed by SRI in-house counsel shall be reimbursed under this Section
4.2.
4.3 PAYMENT METHOD. All payments by ISD to SRI under the Agreement
shall be paid in United States dollars by bank wire transfer in immediately
available funds to such account as SRI shall designate before such payment is
due.
ARTICLE 5
DILIGENCE OBLIGATIONS
5.1 RESEARCH AND DEVELOPMENT EFFORTS. ISD shall use its commercially
reasonable and diligent efforts (a) to conduct such research, development and
preclinical and human clinical trials as necessary or desirable (in ISD's
reasonable discretion) to obtain regulatory approvals to manufacture and
market Products for use in the Field, and (b) to commence marketing and
market each such Product for use in the Field in such countries as ISD
determines are commercially desirable. ISD's obligation to commence marketing
a Product in a country shall not commence until all regulatory approvals
necessary to market such Product in such country have been obtained by ISD.
ISD, at its sole expense and in its sole discretion, shall fund the costs of
all research, development, preclinical and clinical trials, regulatory
approval
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activities and commercialization of the Products, and SRI shall have no
obligation to fund any such activities.
5.2 REPORTS. Within ninety (90) days following the end of each
calendar year during the term of the Agreement, ISD shall prepare and deliver
to SRI a summary written report which shall summarize the status of the
research, development and testing of Products, and the status of obtaining
the necessary approvals to market Products.
5.3 FAILURE TO MEET THE MILESTONE. If ISD fails to achieve the
Milestone on or before September 12, 2002, then at SRI's election in its sole
discretion, (a) the license granted by SRI to ISD shall become non-exclusive,
and (b) the right to file and prosecute patent applications, to maintain and
enforce any resulting patents, included within the SRI Patent Rights under
Article 7 below shall revert to SRI, without any further action by ISD.
ARTICLE 6
CONFIDENTIALITY
6.1 CONFIDENTIAL INFORMATION. During the term of the Agreement, and
for a period of five (5) years following the expiration or earlier
termination hereof, each party shall exercise reasonable care to maintain in
confidence all information of the other party (including samples) disclosed
by the other party and identified as, or acknowledged to be, confidential
(the "Confidential Information"), and shall not use, disclose or grant the
use of the Confidential Information except on a need-to-know basis to those
directors, officers, employees, agents, permitted sublicensees and permitted
assignees, to the extent such disclosure is reasonably necessary in
connection with such party's activities as expressly authorized by the
Agreement. To the extent that disclosure is authorized by the Agreement,
prior to disclosure, each party hereto shall obtain the written agreement of
any such Person, who is not otherwise bound by fiduciary obligations to such
party, to hold in confidence and not make use of the Confidential Information
for any purpose other than those permitted by the Agreement. Each party shall
notify the other promptly upon discovery of any unauthorized use or disclosure
of the other party's Confidential Information.
6.2 PERMITTED DISCLOSURES. The nonuse and nondisclosure obligations
contained in this article shall not apply to the extent that (a) any
receiving party (the "Recipient") is required (i) to disclose information by
law, order or regulation of a governmental agency or a court of competent
jurisdiction, or (ii) to disclose information to any governmental agency for
purposes of obtaining approval to test or market a product, provided in
either case that the Recipient shall provide written notice thereof to the
other party and sufficient opportunity to object, time
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permitting, to any such disclosure or to request confidential treatment
thereof; or (b) the Recipient can demonstrate that (i) the information was
public knowledge at the time of such disclosure by the Recipient, or
thereafter became public knowledge, other than as a result of acts
attributable to the Recipient in violation hereof; (ii) the information was
rightfully known by the Recipient (as shown by its written records) prior to
the date of disclosure to the Recipient by the other party hereunder; (iii)
the information was disclosed to the Recipient on an unrestricted basis from
a Third Party not under a duty of confidentiality to the other party; or (iv)
the information was independently developed by employees or agents of the
Recipient without access to the Confidential Information of the other party.
6.3 PUBLICATION. ISD acknowledges SRI's interest in publishing the
results of its research to obtain recognition within the scientific community
and to advance the state of scientific knowledge. SRI and ISD each recognize
their mutual interest in obtaining valid patent protection and protecting
their respective business interests. Consequently, if SRI, its employees or
consultants desire to make a publication (including any oral disclosure made
without obligation of confidentiality) relating to any discovery or invention
regarding the technology which is the subject of the Agreement (except (a)
such technology as described in Section 3.8 above which is not licensed to
ISD, and (b) such technology as is conceived or invented by ISD), SRI shall
give ISD a copy of the proposed written publication at least 30 days prior to
submission for publication, or an outline of such oral disclosure at least 30
days prior to presentation. ISD shall have the right to request a reasonable
delay in publication or presentation, not to exceed 90 days, in order to
protect patentable information. If ISD requests such a delay, SRI shall delay
submission or presentation of the publication for a period of 90 days to
enable ISD to file the applicable patent applications protecting each
parties' rights in such discoveries or inventions to be filed in accordance
with Article 7 below. Upon the expiration of 30 days in the case of proposed
written publications, or 30 days in the case of proposed oral presentations,
from delivery to ISD, SRI shall be free to proceed with the written
publication or presentation, respectively, unless ISD has requested the delay
described above.
6.4 TERMS OF THE AGREEMENT. Except as otherwise provided in this
article or as otherwise required by applicable law, regulation or order of a
governmental agency or court of competent jurisdiction, neither party shall
disclose any terms or conditions of the Agreement to any Third Party without
the prior consent of the other party; PROVIDED, HOWEVER, that ISD may, at its
election, disclose terms or conditions of the Agreement to an investor in ISD
or a bona fide potential investor in ISD, without the prior consent of SRI.
6.5 NO USE OF NAME. Except as otherwise required by applicable law,
regulation or order of a governmental agency or
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court of competent jurisdiction, neither party shall use the name of the
other party or the other party's directors, officers or employees in any
advertising, news release or other publication, without the prior express
written consent of the other party; PROVIDED, HOWEVER, that ISD may, at its
election, identify SRI as the licensor of the Telepresence Surgical
Technology (whether under that name or under some other designation) and/or
of certain technology on which the Products are in part based.
6.6 DESCRIPTION OF TELEPRESENCE SURGICAL TECHNOLOGY. Notwithstanding
the provisions of Section 6.1, ISD may, at its election and in its sold
discretion, disclose a description of the Telepresence Surgical Technology
(whether under that name or some other designation) in financing documents,
in marketing literature and in such other publications as ISD reasonably
deems necessary to meet ISD's diligence obligations under Article 5 above;
PROVIDED, HOWEVER, that ISD may not disclose SRI Know-How without the prior
express written consent of SRI.
ARTICLE 7
INVENTIONS AND PATENTS
7.1 OWNERSHIP OF INVENTIONS. The entire right and title in all
inventions, discoveries, processes, methods, compositions, formulae,
techniques, information and data regarding Telepresence Surgical Technology,
whether or not patentable (collectively, the "Inventions"), and any patent
applications or patents based thereon, conceived in the performance of the
parties' activities during the term of the Agreement (a) by employees or
other Persons acting solely on behalf of SRI, shall be owned solely by SRI
("SRI Inventions"), (b) by employees or other Persons acting solely on behalf
of ISD shall be owned solely by ISD ("ISD Inventions"), and (c) jointly by
employees or other Persons acting on behalf of SRI and by employees or other
Persons acting on behalf of ISD, shall be owned jointly by SRI and ISD (the
"Joint Inventions"). SRI and ISD each hereby represents that all employees
and other Persons acting on its behalf in performing its obligations under
the Agreement shall be obligated to assign to it, or as it shall direct, all
Inventions conceived by such employees or other Persons.
7.2 SRI PATENT RIGHTS.
7.2.1 FILING, PROSECUTION, AND MAINTENANCE. ISD shall file and
prosecute patent applications included in the SRI Patent Rights in the United
States, Japan, the European Patent Office (designating the United Kingdom,
France, Germany and Italy) and such other countries as ISD may select in its
sole discretion, and shall maintain any resulting patents. At ISD's election
in its sole discretion, such foreign filing may be initiated through the
Patent Cooperation Treaty designating such countries. In so doing, ISD shall
endeavor to obtain the strongest commercially
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desirable patent protection (under the circumstances) regarding the
Telepresence Surgical Technology with respect to the Products and shall
consider in good faith the interests of SRI. ISD (a) shall supply SRI with a
copy of each such patent application as filed, together with notice of its
filing date and serial number; (b) shall consult with SRI regarding the
prosecution and maintenance of the SRI Patent Rights, and shall implement
reasonable requests of SRI with respect thereto; (c) shall provide SRI with
copies of all filings, submissions, correspondence, office actions and
responses thereto with the applicable patent authorities regarding the SRI
Patent Rights; and (d) shall inform SRI promptly of the allowance and
issuance of each patent included in the SRI Patent Rights, together with the
date and patent number thereof, and shall provide SRI with a copy of such
patent as issued. SRI shall cooperate with ISD, execute all lawful papers and
instruments and make all rightful oaths and declarations and and instruments
and make all rightful oaths and declarations as may be necessary in the
preparation, prosecution and maintenance of all such patents and patent
applications, ISD shall reimburse SRI for its standard costs for any such
assistance, determined in accordance with SRI's normal business practice
applied on a consistent basis, together with all reasonable out-of-pocket
travel and other expenses incurred by SRI in providing such assistance;
PROVIDED, HOWEVER, that ISD shall not be obligated to reimburse SRI for any
consultation with SRI which ISD is obligated to undertake pursuant to this
Article 7. At the request of ISD, SRI shall provide ISD with estimates of the
anticipated costs of any requested assistance prior to undertaking such
assistance.
7.2.2 FUTURE PATENT COSTS. Except as otherwise set forth in this
section, ISD shall pay all costs incurred after the date of the Agreement in
connection with the preparation, filing, prosecution and maintenance of the
patent applications and patents included in the SRI Patent Rights. If, during
the term of the Agreement, SRI grants a license to any one or more Third
Parties under the SRI Patent Rights for use outside the Field, SRI shall pay
or cause each such Third party to reimburse ISD for such Third Party's PRO
RATA share of the actual out-of-pocket costs paid by ISD (or reimbursed by
ISD to SRI) in connection with the preparation, filing, prosecution and
maintenance of the patent applications and patents included in the SRI Patent
Rights; PROVIDED, HOWEVER, that SRI shall have no obligation to reimburse ISD
for any such Third Party's share of such out-of-pocket costs paid through the
effective date of the license agreement with such Third Party in excess of
the total consideration received by SRI from such Third Party for the license
agreement with such Third Party. Patent costs incurred after the date(s) of
such Third Party license agreement(s) shall be shared on a PRO RATA basis by
ISD and each such Third Party; PROVIDED, HOWEVER, that ISD may, at is
election, seek reimbursement directly from each such Third Party, and SRI
shall cause each such Third Party to make reimbursement directly to ISD, for
such Third Party's PRO RATA share of those patent costs incurred after the
date of such Third Party license agreement. Notwithstanding anything to the
contrary in this Section 7.2, if ISD desires to abandon or materially
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narrow any claim of the SRI Patent Rights which has application outside the
Field, then SRI shall have the right, in its sole discretion and at its sole
expense, to assume control of the prosecution, maintenance and enforcement of
such claim, provided that the respective rights of each party under the
Agreement with respect to such claim shall not otherwise be affected solely
by virtue of ISD abandoning and SRI assuming control thereof.
7.2.3 ENFORCEMENT. Each party promptly shall notify the other
party of any infringement known to such party of the SRI Patent Rights and
shall provide the other party with the available evidence, if any, of such
infringement. ISD, at its sole expense, shall have the right (but not the
obligation) to determine the appropriate course of action to enforce the SRI
Patent Rights in the Field or otherwise xxxxx the infringement thereof in the
Field, to take (or refrain from taking) appropriate action to enforce the SRI
Patent Rights in the Field, to control any litigation or other enforcement
action in the Field and to enter into, or permit, the settlement of any such
litigation or other enforcement action with respect to the SRI Patent Rights
in the Field, and shall consider, in good faith, the interests of SRI in so
doing. If, within one hundred twenty (120) days of receipt of notice from
SRI, ISD does not xxxxx the infringement in the Field or file suit to enforce
the SRI Patent Rights against at least one infringing party in the Field, SRI
shall have the right to take whatever action it deems appropriate to enforce
the SRI Patent Rights in the Field. The party controlling any such
enforcement action shall not settle the action or otherwise consent to an
adverse judgment in such action that adversely affects the rights or
interests of the non-controlling party or imposes additional obligations on
the non-controlling party, without the prior written consent of the
non-controlling party. All monies recovered upon the final judgment or
settlement of any such suit by ISD to enforce the SRI Patent Rights in the
Field shall be retained by ISD. All monies recovered upon the final judgment
or settlement of any such suit by SRI to enforce the SRI Patent Rights in the
Field shall be retained by SRI. Notwithstanding the foregoing, SRI and ISD
shall fully cooperate with each other in the planning and execution of any
action to enforce the SRI Patent Rights in the Field.
7.3 ISD PATENT RIGHTS.
7.3.1 FILING, PROSECUTION, AND MAINTENANCE. ISD, at its sole
expense, shall have the right to file and prosecute patent applications
included in the ISD Patent Rights in the United States, Japan, the European
Patent Office (designating the United Kingdom, France, Germany and Italy) and
such other countries as ISD may select in its sole discretion, and to
maintain any resulting patents. At ISD's election in its sole discretion,
such foreign filing may be initiated through the Patent Cooperation Treaty
designating such countries. ISD shall provide SRI with copies of each such
patent application as filed,
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together with notice of its filing date and serial number, and copies of all
office actions and responses thereto.
7.3.2 ENFORCEMENT. ISD, at its sole expense, shall have the
right (but not the obligation) to determine the appropriate course of action
to enforce the ISD Patent Rights or otherwise xxxxx the infringement thereof,
to take (or refrain from taking) appropriate action to enforce the ISD Patent
Rights, to control any litigation or other enforcement action and to enter
into, or permit, the settlement of any such litigation or other enforcement
action with respect to the ISD Patent Rights, and shall consider, in good
faith, the interests of SRI in so doing. All monies recovered upon the final
judgment or settlement of any such suit to enforce the ISD Patent Rights
shall be retained by ISD.
7.4 PATENT MARKINGS. With respect to each Product which would infringe
a valid claim of an issued patent of the SRI Patent Rights but for the license
granted to ISD hereunder, ISD, its Affiliates and sublicensees shall xxxx
each such Product sold or otherwise disposed of by any of them with the
appropriate marking, giving notice to the public that such Product is
patented, by fixing thereon either the word "patent" or the abbreviation
"xxx", together the number of such issued patent of the SRI Patent Rights.
ARTICLE 8
TERM AND TERMINATION
8.1 EXPIRATION. Subject to the provisions of this article, the
Agreement shall expire on the later of (a) the expiration of the last to
expire of the SRI Patent Rights, or (b) the date seventeen (17) years after
the date of the Agreement.
8.2 TERMINATION BY SRI. SRI may terminate the Agreement, in its sole
discretion, upon thirty (30) days prior written notice to ISD, (a) if ISD
fails to timely reimburse SRI for the costs described in Section 4.2 above,
and if ISD has not cured such breach within thirty (30) days after written
notice thereof by SRI; or (b) except as otherwise provided in the article
below regarding force majeure, upon or after the material breach of its
obligations under the Stock Purchase Agreement or under Section 6.1, 6.2,
6.3, 6.4, 7.2, 7.3, 9.1, 9.2 or 9.3 of the Agreement, if ISD has not cured
such breach within ninety (90) days after written notice thereof by SRI.
8.3 TERMINATION BY ISD. Except as otherwise provided in the article
below regarding force majeure, if SRI materially breaches its obligations
under Section 3.1, 3.6 or 3.7 of the Agreement, and SRI has not cured such
breach within sixty (60) days after written notice thereof by ISD, then (a)
ISD may terminate the Agreement upon thirty (30) days prior written notice to
SRI, and
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for the periods(s) specified in Section 2(a) of the Stock Purchase Agreement,
repurchase that portion of the shares of ISD Common Stock issued to SRI
specified in Section 2(a) of the Stock Purchase Agreement at the price and on
the terms and conditions set forth in the Stock Purchase Agreement, and (b)
SRI shall grant to ISD an exclusive, worldwide, royalty-free license with the
right to sublicense, under the SRI Patent Rights and SRI Know-How, to make,
have made, use, market, distribute, import, offer for sale and sell Products
for use in the Field.
8.4 CONVERSION TO NONEXCLUSIVE BY SRI. SRI may convert the license
granted by SRI to ISD to a nonexclusive license, in its sole discretion, upon
thirty (30) days prior written notice to ISD, (a) upon or after the material
breach of ISD's obligations under Section 5.1 of the Agreement, if ISD has
not cured such breach within sixty (60) days after written notice thereof by
SRI; or (b) if ISD voluntarily commences any action or seeks any relief
regarding its liquidation, reorganization, dissolution or similar act or
under any bankruptcy, insolvency or similar law; or (c) if a proceeding is
commenced or an order, judgment or decree is entered seeking the liquidation,
reorganization, dissolution or similar act or any other relief under any
bankruptcy, insolvency or similar law against ISD, without its consent, which
continues undismissed or unstayed for a period of sixty (60) days; PROVIDED,
HOWEVER, that SRI shall not have the right to terminate the Agreement solely
by reason of the occurrence of any one or more of the events described in
this Section 8.4.
8.5 FAILURE TO ISSUE ISD SHARES. In the event that ISD fails to duly
authorize, validly issue and deliver to SRI or its designees the shares
referenced in Section 4.2 above concurrent with the execution of the
Agreement, the Agreement automatically shall terminate without further action
by SRI.
8.6 EFFECT OF EXPIRATION OR TERMINATION. Expiration or termination of
the Agreement shall not relieve the parties of any obligation accruing prior
to such expiration or termination, and the provisions of Articles 6 and 9
shall survive the expiration or termination of the Agreement. Upon expiration
of the Agreement under Section 8.1 above, ISD shall have an exclusive,
worldwide, royalty-free license under the SRI Know-How in the Field, and SRI
shall have a non-exclusive, worldwide, royalty-free license under the ISD
Patent Rights and ISD Know-How for use outside the Field.
8.7 ISD DATA. Notwithstanding anything to the contrary in the
Agreement, (a) if the Agreement is terminated pursuant to the provisions of
Section 8.2 above, upon SRI's request not more than ninety (90) days after
such termination, within thirty (30) days after such request, ISD shall
provide provide SRI with copies of all regulatory submissions and approvals,
if any, regarding actual or potential Products, (b) SRI shall have the right
of reference to all data and information in such regulatory submissions, and
(c) ISD shall execute all such documents and instruments reasonably necessary
to enable SRI to reference all such data, information
-15-
and submissions. ISD makes no representations and warranties whatsoever,
express or implied, regarding such data, information and submissions, and any
such use and reference of such data, information and submissions shall be at
SRI's own risk.
ARTICLE 9
INDEMNIFICATION AND INSURANCE
9.1 INDEMNIFICATION. ISD shall indemnify, defend and hold harmless SRI,
its directors, officers, employees and agents from all losses, liabilities,
damages and expenses (including reasonable attorneys' fees and costs) that
they may suffer as a result of any claims, demands, actions or other
proceedings made or instituted by any Third Party or Affiliate against any of
them and arising out of or relating to (a) any use by ISD, its Affiliate or
sublicensee of any SRI Patent Rights or SRI Know-How, including any claim of
patent infringement, or (b) any personal injury to or death of any person or
damage to any property in connection with any act or omission (without regard
to culpable conduct) by or on behalf of ISD, its Affiliate or sublicensee in
the performance of its activities contemplated by the Agreement (including
without limitation the manufacture, use and sale of Products), other than
those certain losses, liabilities, damages and expenses arising solely out of
the gross negligence or willful misconduct of SRI. Notwithstanding the
foregoing, ISD shall have no obligation to indemnify, defend or hold harmless
SRI from any losses, liabilities, damages and expenses (including reasonable
attorneys' fees and costs) that it may suffer as a result of any claims,
demands, actions or other proceedings made or instituted by any current or
former employee, consultant, licensee or optionee of SRI.
9.2 INDEMNIFICATION PROCEDURE. SRI promptly shall notify ISD of any
loss, liability, damage or expense, or any claim, demand, action or other
proceeding with respect to which SRI intends to claim such indemnification.
ISD's indemnity obligations under this article shall not apply to amounts
paid in any settlement if effected without the consent of ISD, which consent
shall not be unreasonably withheld or delayed. ISD shall not settle or
consent to an adverse judgment in any such claim, demand, action or other
proceeding that adversely affects the rights or interests of SRI, its
employees or agents or imposes additional obligations on SRI, its employees
or agents, without the prior express written consent of SRI. SRI, its
employees and agents, shall cooperate fully with ISD and its legal
representatives in the investigation of any action, claim or liability
covered by this indemnification.
9.3 INSURANCE. Concurrent with the commencement of the first human
clinical trial of any Product, ISD shall procure and maintain such liability
insurance, including contractual and product liability insurance, against
claims for bodily injury,
-16-
including death, or property damage arising from its activities contemplated
by the Agreement, in amounts not less than $2,000,000 per occurrence and
$5,000,000 in the aggregate. ISD shall maintain such insurance for so long
thereafter as it continues to conduct its activities contemplated by the
Agreement; PROVIDED, HOWEVER, that in the event such insurance becomes
unavailable to ISD or in the event of extreme market conditions or other
unforeseen events, the parties agree to discuss such changed circumstances
and appropriate mechanisms to address them. Upon request, ISD shall provide
SRI with certificates of insurance evidencing ISD's compliance with the
insurance requirements of this section. SRI assumes no liability and
disclaims any responsibility for the product specifications, clinical trials,
manufacture, use, marketing, sale or other disposition, application, or
delivery of any and all Products. No warranties made by ISD in connection
with Product shall expressly or implicitly obligate SRI in any manner
whatsoever.
9.4 LIMITED LIABILITY. IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE
OTHER PARTY FOR ANY SPECIAL, CONSEQUENTIAL OR INCIDENTAL DAMAGES ARISING OUT
OF OR RELATED TO THE AGREEMENT OR WITH RESPECT TO ANY CLAIM, DEMAND, ACTION
OR OTHER PROCEEDING RELATING TO THE AGREEMENT HOWEVER CAUSED, AND ON ANY
THEORY OF LIABILITY (INCLUDING NEGLIGENCE) AND WHETHER OR NOT SUCH PARTY HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. IN NO EVENT SHALL SRI'S
LIABILITY OWING TO ISD WITH RESPECT TO ANY CLAIM, DEMAND, ACTION OR OTHER
PROCEEDING RELATING TO THE AGREEMENT EXCEED THE VALUE OF THE CONSIDERATION
ACTUALLY RECEIVED BY SRI UNDER THE AGREEMENT OR THE STOCK PURCHASE AGREEMENT.
ARTICLE 10
FORCE MAJEURE
Neither party shall be held liable or responsible to the other party nor
be deemed to have defaulted under or breached the Agreement for failure or
delay in fulfilling or performing any term of the Agreement to the extent,
and for so long as, such failure or delay is caused by or results from causes
beyond the reasonable control of the affected party including but not limited
to fires, earthquakes, floods, embargoes, wars, acts of war (whether war is
declared or not), insurrections, riots, civil commotions, strikes, lockouts
or other labor disturbances, acts of God or acts, omissions or delays in
acting by any governmental authority or other party.
ARTICLE 11
ARBITRATION
Any controversy or claim arising out of or relating to the Agreement, or
the breach thereof, or any failure to agree where
-17-
agreement of the parties is necessary pursuant hereto, including the
determination of the scope of this agreement to arbitrate, shall be resolved
by the following procedures:
11.1 ATTEMPT TO RESOLVE DISPUTE. The parties shall use all reasonable
efforts to amicably resolve the dispute through direct discussions. The
senior management of each party commits itself to respond promptly to any
such dispute. Either party may send written notice to the other party
identifying the matter in dispute and invoking the procedures of this
article. Within ten (10) days after such written notice is received, unless a
delay is agreed to by both parties or the parties agree to confer by
telephone, one or more principals of each party shall meet in Menlo Park,
California to attempt to amicably resolve the dispute by written agreement.
If said dispute cannot be settled through direct discussions within twenty
(20) days after such written notice is received, the parties agree to first
endeavor to settle the dispute in an amicable manner by mediation in San
Francisco and administered by the American Arbitration Association ("AAA"),
000 Xxxxxxxxxx Xxxxxx, Xxx Xxxxxxxxx, Xxxxxxxxxx 00000-0000, pursuant to the
Commercial Mediation Rules of AAA at the time of submission prior to
resorting to binding arbitration.
11.2 APPLICATION TO BINDING ARBITRATION. If after sixty (60) days from
the first written notice of dispute, the parties fail to resolve the dispute
by written agreement or mediation, either party may submit the dispute to
final and binding arbitration administered by the AAA, pursuant to the
Commercial Arbitration Rules of the AAA at the time of submission. California
Arbitration Law shall govern. The arbitration shall be held in Menlo Park,
California before a single neutral, independent, and impartial arbitrator
(the "Arbitrator"). The language of the arbitration shall be English,
provided however that an interpreter may be provided for any witness that
desires an interpreter; the costs of such interpretation shall be borne by
the party requesting the interpreter, subject to being awarded by the
Arbitrator as a cost of arbitration.
11.3 BINDING ARBITRATION PROCEDURE. Unless the parties have agreed upon
the selection of the Arbitrator before then, the AAA shall appoint the
Arbitrator as soon as practicable, but in any event within thirty (30) days
after the submission to AAA for binding arbitration. The arbitration hearings
shall commence within forty-five (45) days after the selection of the
Arbitrator. Unless the Arbitrator otherwise directs, each party shall be
limited to two pre-hearing depositions each lasting no longer than 6 hours.
The parties shall exchange documents to be used at the hearing no later than
ten (10) days prior to the hearing date. Unless the Arbitrator otherwise
directs, each party shall have no longer than ten (10) hours to present its
position, the entire proceedings before the Arbitrator shall be on no more
than three (3) hearing days within a two week period. At the close of
evidence, each side shall submit a proposed award to the Arbitrator, one of
which shall be selected by the Arbitrator. The
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award shall be made no more than thirty (30) days following the close of the
proceeding. Under no circumstance should any time limit on the arbitration
hearings be applied so as to render any award subject to vacation under
California Code of Civil Procedure Section 1286.2. Accordingly, the
Arbitrator shall have authority to alter any time period believed necessary
to avoid vacatur under Section 1286.2. The Arbitrator's award shall be a
final and binding determination of the dispute and shall be fully enforceable
as an arbitration award by the California courts in accordance with the
California Arbitration Law. The prevailing party shall be entitled to recover
its reasonable attorneys' fees and expenses, including arbitration
administration fees, incurred in connection with such proceeding. Except as
otherwise required by applicable law, regulation or order of a governmental
agency or court of competent jurisdiction, neither party nor the Arbitrator
may disclose the existence, content, or results of any arbitration hereunder
without the prior written consent of both parties.
11.4 FEDERAL CLAIM. Any controversy or claim arising out of or
relating to the provisions of Article 7 of the Agreement for which the United
States District Court or other federal court would have subject matter
jurisdiction in the absence of the arbitration provisions set forth in this
Article 11 shall be exempt from such arbitration provisions and the United
States District Court for the Northern District of California shall have
exclusive jurisdiction over such controversy or claim.
ARTICLE 12
MISCELLANEOUS
12.1 NOTICES. Any consent, notice or report required or permitted to
be given or made under the Agreement by one party to the other party shall be
in writing, delivered personally or by facsimile (and promptly confirmed by
personal delivery, U.S. first class mail, courier or nationally-recognized
delivery service), U.S. first class mail postage prepaid, courier or
nationally-recognized delivery service, and addressed to the other party at
its address indicated below, or to such other address as the addressee shall
have last furnished in writing to the addressor. Except as otherwise provided
in the Agreement, such consent, notice or report shall be effective upon
receipt by the addressee.
If to SRI, for
technical matters: SRI International
000 Xxxxxxxxxx Xxxxxx
Xxxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Xxxx Xxxx
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If to SRI, for
all other matters: SRI International
000 Xxxxxxxxxx Xxxxxx
Xxxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Technology Licensing
If to ISD, for
technical matters: Intuitive Surgical Devices, Inc.
c/o Cooley Godward Xxxxxx Xxxxxxxxx & Xxxxx
Five Palo Alto Square
0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Xxxx X. Xxxxxx, M.D.
If to ISD, for
all other matters: Intuitive Surgical Devices, Inc.
c/o Cooley Godward Xxxxxx Xxxxxxxxx & Xxxxx
Five Palo Alto Square
0000 Xx Xxxxxx Xxxx
Xxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Xxxx X. Xxxxxx, M.D.
12.2 SOLICITATION OF SRI EMPLOYEES. ISD acknowledges that, during the
term of the Agreement, ISD will have access to SRI's business and employees,
including certain valuable proprietary information of SRI. ISD recognizes
that misuse of such proprietary information, including interference with the
employment relationship between SRI and its employees, would cause
substantial loss and irreparable harm to SRI. Therefore, as part of the
consideration for the Agreement, ISD shall not, prior to the expiration of
twelve (12) months after the effective date of the Agreement, either directly
or indirectly, by any means or device whatsoever, solicit any more than two
of SRI's scientific or laboratory personnel involved with or working on any
project relating to Telepresence Surgical Technology or otherwise induce or
attempt to induce such personnel to terminate their employment with SRI.
12.3 GOVERNING LAW. The Agreement, including the decision to arbitrate
and any decision by an arbitrator pursuant to Article 11, shall be governed
by and construed in accordance with the laws of the State of California,
without regard to the conflicts of law principles thereof (except to the
extent United States law preempts California law), and shall not be governed
by the United Nations Convention on Contracts for the International Sale of
Goods.
12.4 U.S. EXPORT LAWS AND REGULATIONS. Each party hereby acknowledges
that the rights and obligations of the Agreement are subject to the laws and
regulations of the United States relating to the export of products and
technical information. Without
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limitation, each party shall comply with all such laws and regulations.
12.5 NO OTHER RIGHTS. The Agreement shall not be construed to grant
any license or other rights to ISD in any patent rights, know-how or other
technology of SRI, except as expressly provided in the Agreement.
12.6 ASSIGNMENT. ISD shall not assign its rights or obligations under
the Agreement, in whole or in part, by operation of law or otherwise, wihtout
the prior written consent of SRI, which consent shall not be unreasonably
withheld; PROVIDED, HOWEVER, that ISD may, without such consent, assign the
Agreement and its rights and obligations hereunder in connection with the
transfer or sale of all or substantially all of its business or divisions or
subdivisions related to Telepresence Surgical Technology, or in the event of
its merger, consolidation, change in control, spin-off, recapitalization or
similar transaction. Any permitted assignee shall assume all obligations of
its assignor under the Agreement. Any purported assignment in violation of
this section shall be null and void.
12.7 WAIVERS AND AMENDMENTS. No change, modification, extension,
termination or waiver of the Agreement, or any of ythe provisions herein
contained, sahll be valid unless made in writing and signed by duly
authorized representatives of the parties hereto.
12.8 ENTIRE AGREEMENT. The Agreement embodies the entire
understanding between the parties and supersedes any prior understanding and
agreements between and among them respecting the subject matter hereof. There
are no representations, agreements, arrangements or understandings, oral or
written, between the parties hereto relating to the subject matter of the
Agreement which are not fully expressed herein. The Agreement supersedes the
Option Agreement, and upon execution of the Agreement by the parties, the
Option Agreement is hereby terminated.
12.9 SEVERABILITY. Any of the provisions of the Agreement which are
determined to bei nvalid or unenforceable in any jurisdiction shall be
ineffective to the extent of such invalidity or unenforceability in such
jurisdiction, without rendering invalid or unenforceable the remaining
provisions hereof and without affeting the validity or enforceability of any
of the terms of the Agreement in any other jurisdiction.
12.10 WAIVER. The waiver by either party hereto of any right
hereunder or the fialure to perform or of a breach by the other party shall
not be deemed a waiver of any other right hereunder or of any other breach or
failure by said other party whether of a similar nature or otherwise.
12.11 COUNTERPARTS. The Agreement may be executed in two or more
counterparts, each of which shall be deemd an original, but
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all of which together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have executed the Agreement as of the
date first set forth above.
SRI INTERNATIONAL INTUITIVE SURGICAL DEVICES, INC.
By: /s/ Xxxxxx X. Xxxxx By: /s/ Xxxx X. Xxxxxx
--------------------------- ----------------------------
Title: SR VP & G C Title:
----------------------- -------------------------
Agreed to, for purposes of the
third sentence of Section 12.8
only, as of this December 19, 1995
/s/ Xxxx X. Xxxxxx
-----------------------------------
Xxxx X. Xxxxxx, M.D.
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EXHIBIT "A"
SRI International Invention Disclosures
#3026
Teleoperator System and Method with Telepresence
Green (corresponds to #48)
P #3079
Steerable and Stereoscopic Laparoscope
Green
P #3278
Remote Center Positioner
Jenses (corresponds to #29)
P #3308
Articulated Surgical Grasper
Hill
P #3311
Telepresence Surgery Demo System
Hill, Green, Jensen, Gorfa, Shah
P #3318
Sterilizable Inner Manipulator
Hill
P #3319
Method for Telemanipulation with Telepresence
Green (corresponds to #33)
P #3336
Articulated Manipulator
Green, Hill, Xxxxxx
P #3421
Method and Apparatus for Axial and Rotational Positioning Shaft with
Application to Laparoscopic Medical Instruments
Green
P #3435
Combined Remote-Center Positioner and Abdominal Wall Lift Device
Green
P #3441
Manipulator with Twist-Lock Tool Insertion
Xxxxxx, Hill (corresponds to #42)
P #3457
Quick-Change Surgical Instrument
Hill (corresponds to #44)
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EXHIBIT "B"
SRI International Patent Rights
#48
Basic teleoperator system for providing operator tactile feedback and control
and a real or virtual image of the workspace (filed January 21, 1992).
(SN: 07/8231932) (also filed in Europe, Japan and Canada)
#48-1
Divisional of -48, directed to tactile sensors and broader claim language re
the basic telepresence concept (filed August 21, 1995). (SN: 08/S17,052)
#29
Remote center positioner (RCP) - four bar linkage that constrains movement of
an endoscopic instrument about a remote point (i.e., a percutaneous penetration
in the patient) (filed May 14, 1993). (SN: 08/062,404) (also filed in Europe
and Japan)
#29-4
Divisional of RCP application-directed to method claims (filed July 20, 1995).
(SN:08/504,301)
#29-5
Divisional of RCP application-directed to flexible drive element (filed
July 20, 1995). (SN: 08/504,620)
#29-6
Divisional of RCP application-directed to channel shaped linkage (filed
July 20, 1995). (SN: 08/504,619)
#33
System and method for transforming view able real-time image into perspective
image simulating the view of an operator at the remote workspace (filed
May 5, 1994). (SN: 08/239,086)
#33-1
Directed to the dynamic calibration system (filed April 20, 1995). (SN:
06/239,086)
#42, -44
Surgical instrument manipulator - receives signals from servomechanism and
manipulates instrument, provides at least four degrees of freedom and quick
attachment and release of different surgical instruments (filed June 7,
1995). (42: 08/485,597, 44: 08/487,020)
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