AGREEMENT
Exhibit 10.16
THIS
AGREEMENT, entered into this 30 day of April 2008, is by and between Accelerated
Innovation LLC, a Delaware Limited Liability Company having its principal place of business at 0000
X.X. Xxxxxxx 00X, Xxxxx X000, Xxxxxxx, XX 00000 (“Accelerated”), Cervical Xpand, LLC, a New Jersey
Limited Liability Company having its principal place of business at at 0000 X.X. Xxxxxxx 00X, Xxxxx
X000, Xxxxxxx, XX 00000 (“Cervical Xpand”), Uni-Knee, LLC, a New Jersey Limited Liability Company
having its principal place of business at at 0000 X.X. Xxxxxxx 00X, Xxxxx X000, Xxxxxxx, XX 00000
(“Uni-Knee”) and Xxxxxxx Xxxxxxxxxx, an individual residing at 00 Xxxxxxxxx Xxxxxx, Xxxxxxx XX
00000 (“Kvitnitsky”).
Whereas, Accelerated is the owner of all right, title and interest in certain technology
related to spinal, hip and knee orthopedic devices and instruments, including, but not limited to
the patent applications set forth in Exhibit A (hereinafter, “Accelerated Technology”); and
Whereas, Cervical Xpand is the owner of all right, title and interest in certain technology
related to the Accin Helibone Hourglass VBR System for Spinal Surgery, including, but not limited
to the patent applications set forth in Exhibit B (hereinafter, “Cervical Xpand Technology”); and
Whereas, Uni-Knee is the owner of all right, title and interest in certain technology related
to the Accin Uni-Knee System for Unicompartmental Knee Surgery, including, but not limited to the
patent applications set forth in Exhibit C (hereinafter, “Uni-Knee Technology”); and
Whereas, Kvitnitsky has certain knowledge and expertise in the field of spinal, hip and knee
orthopedic devices and instruments, and assisted Accelerated in the development and
commercialization of Accelerated’s Technology; and
Whereas, Kvitnitsky has certain knowledge and expertise in the field of spinal VBR devices,
and assisted Cervical Xpand in the development and commercialization of Cervical Xpand’s
Technology; and
Whereas, Kvitnitsky has certain knowledge and expertise in the field of Unicompartmental Knee
Surgery, and assisted Uni-Knee in the development and
commercialization of
Uni-Knee’s Technology;
and
Whereas, Accelerated retained Kvitnitsky as an Independent Contractor to assist Accelerated
in the development and/or commercialization of the Accelerated Technology; and
Whereas, Cervical Xpand retained Kvitnitsky as an Independent Contractor to assist Cervical
Xpand in the development and/or commercialization of the Cervical Xpand Technology; and
Whereas, Uni-Knee retained Kvitnitsky as an Independent Contractor to assist Uni-Knee in the
development and/or commercialization of the Uni-Knee Technology; and
NOW, THEREFORE, for good and valuable consideration, the receipt for and sufficiency of which
is hereby acknowledged, Kvitnitsky does hereby represent and warrant as follows:
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1.1. Kvitnitsky hereby represents and warrants that Kvitnitsky will not assert any rights
in any Accelerated Technology, any Cervical Xpand Technology or any Uni-Knee
Technology.
1.2. Kvitnitsky hereby represents and warrants that his contributions to the inventions
as disclosed in the Accelerated Technology, the Cervical Xpand Technology and the Uni-Knee Technology are not subject to any pre-existing or co-existing obligations to any third
party.
1.3. Kvitnitsky hereby represents and warrants that to Kvitnitsky’s knowledge, no
composition, method, software or device incorporating his inventions would infringe any
patent, copyright or other proprietary right of any third party.
1.4. Kvitnitsky hereby represents and warrants that Kvitnitsky has no other obligations
to assign any inventions made, conceived or reduced to practice during his relationship
with Accelerated, Cervical Xpand or Uni-Knee.
1.5. Kvitnitsky hereby represents and warrants that the terms of this Agreement are not
inconsistent with any other contractual or legal obligations that Kvitnitsky may have or with
the policies of any institution or company with which Kvitnitsky is or was associated.
1.6. Kvitnitsky hereby represents and warrants that all of Kvitnitsky’s contributions to the
Accelerated Technology, the Cervical Xpand Technology and the Uni-Knee Technology
were Kvitnitsky’s original work and that, to Kvitnitsky’s knowledge, none of his inventions
or any development, use, production, distribution, or exploitation thereof will infringe,
misappropriate, or violate any intellectual property or other right of any other person or
entity (including, without limitation, Kvitnitsky).
1.7. Kvitnitsky has the right to enter into this Agreement and to provide Accelerated,
Cervical Xpand and Uni-Knee with the representations and warranties and rights provided
for herein.
2. MISCELLANEOUS PROVISIONS.
2.1. Assignment:
This Agreement cannot be assigned by either party without the prior written consent of the other
party, which will not be unreasonably withheld, except that Accelerated, Cervical Xpand and
Uni-Knee may assign this Agreement to any successor of all or substantially all of its business to
which this Agreement relates without the prior written consent of Kvitnitsky.
2.2. Binding Effect:
This Agreement will be binding on and inure to the benefit of the parties hereto and their
respective heirs, personal representatives, successors, and assigns.
2.3. Force Majeure:
No party will be in default or otherwise liable for any delay in or failure of its performance
under this Agreement if such delay or failure arises by any reason beyond its reasonable control,
including any act of God, any acts of the common enemy, terrorism, the elements, earthquakes,
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floods, fires, epidemics, riots, failure or delay in transportation or communications, or any other
act or failure to act by another party or such other party’s employees, agents, or contractors;
provided, however, that lack of funds will not be deemed to be reasons beyond a party’s reasonable
control. The parties will promptly inform and consult with each other as to any of the above
causes, which in their judgment may or could be the cause of a delay in the performance of this
Agreement.
2.4. Waiver:
The failure of any party to enforce any of the provisions hereof will not be construed to be a
waiver of the right of such party thereafter to enforce such provisions or any other provisions.
2.5. Governing Law:
This Agreement will be governed for all purposes by the laws of the State of New Jersey. If any
provision of this Agreement is declared void, such provision will be deemed severed from this
Agreement, which will otherwise remain in full force and effect.
2.6. Jurisdiction; Service of Process:
Any action or proceeding seeking to enforce any provision of, or based on any right arising out
of, this Agreement shall be subject to the exclusive jurisdiction of the state and federal courts
located in the State of New Jersey.
2.7. Costs:
Kvitnitsky agrees that if he is held by any court of competent jurisdiction to be in violation,
breach, or nonperformance of any of the terms of this Agreement, then he will pay all costs of
such action or suit, including reasonable attorneys’ fees.
2.8. Section Headings; Construction:
The heading appearing at the beginning of the several sections making up this Agreement have been
inserted for identification and reference purposes only and will not be used in the construction
and interpretation of this Agreement.
2.9. Remedies:
2.10. All rights conferred under this Agreement or by any other instrument or law will be
cumulative and may be exercised singularly or concurrently.
2.11. Amendments:
This Agreement may only be amended, changed, or modified in a writing signed by both parties.
2.12. Relationship of the Parties:
Each party is acting as an independent contractor and not as employee, agent, partner, or joint
venturer with the other party for any purpose. Except as provided in this Agreement, neither party
will have any right, power, or authority to act or to create any obligation, express or implied,
on behalf of the other.
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2.13. Counterparts:
This Agreement may be executed in one or more counterparts, each of which will be deemed to be an
original copy of this Agreement, and all of which, when taken together, will be deemed to
constitute one and the same Agreement.
2.14. Entire Agreement:
The parties agree that this Agreement constitutes the complete and exclusive statement of the
agreement between them as to the specific subject matter hereof.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the parties hereby intending to be legally bound, have caused this Agreement
to be executed by their duly authorized representatives.
| AGREED TO AND ACCEPTED BY: | ||||||||
| Xxxxxxx Xxxxxxxxxx | Accelerated Innovation LLC | |||||||
By:
|
/s/ Xxxxxxx Xxxxxxxxxx | By: | /s/ Xxxx Xxxx | |||||
| (Signature) | (Signature) | |||||||
Name:
|
Xxxxxxx Xxxxxxxxxx | Name: | Xxxx Xxxx | |||||
| (Print) | ||||||||
Date:
|
4-30-2008 | Date: | 5-5-2008 | |||||
| Uni-Knee, LLC | Cervical Xpand, LLC | |||||||
By:
|
/s/ Xxxx Xxxx | BY: | /s/ Xxxx Xxxx | |||||
| (Signature) | (Signature) | |||||||
Name:
|
Xxxx Xxxx | Name: | Xxxx Xxxx | |||||
Date:
|
5-5-2008 | Date: | 5-5-2008 | |||||
Page 5 of 8
EXHIBIT A
| PATENT | ||||||
| KGGD | APPLICATION | DATE | ||||
| No. | NO. | FILED | TITLE OF INVENTION | |||
622/2
|
60/658,365) | (03/03/05) | DYNAMIC STABILIZER | |||
622/2A
|
11/186,699 | 07/21/05 | VERTEBRAL STABILIZATION USING FLEXIBLE RODS |
|||
622/2B
|
11/325,104 | 1/4/06 | METHODS AND APPARATUS FOR VERTEBRAL STABILIZATION USING SLEEVED SPRINGS |
|||
| 60/658,365) | (3/3/05) | |||||
622/3
|
11/348,594 | 02/07/06 | METHODS AND APPARATUS FOR PROVIDING A RETAINER FOR A BONE STABILIZATION DEVICE |
|||
| 60/658,313) | (03/03/05) | |||||
622/5
|
60/658,227) | (03/03/05) | PEDICLE SCREW | |||
622/5A
|
11/360,708 | 02/23/06 | SPINAL STABILIZATION USING BONE ANCHOR AND ANCHOR SEAT WITH TANGENTIAL WITH LOCKING FEATURE |
|||
622/5B
|
11/360,707 | 02/23/06 | SPINAL STABILIZATION USING BONE ANCHOR SEAT AND CROSS COUPLING WITH IMPROVED LOCKING FEATURE |
|||
622/6
|
11/385,083 | 03/21/06 | METHOD AND APPARATUS FOR BONE STABILIZATION |
|||
| 60/665,010) | (03/24/05) | |||||
622/7
|
11/376,977 | 03/16/06 | INTERVERTEBRAL DISC REPLACEMENT DEVICE |
|||
| 60/665,009 | (03/24/05) | |||||
622/8
|
Non-Provisional No. | 05/26/05 | COATED MATERIAL PEDICLE SCREW AND ROD |
|||
| 11/137,963 | ||||||
622/9
|
11/443,425 | 05/30/06 | VERTEBRAL FACET STABILIZER | |||
| 60/688,421 | (06/08/05) | |||||
622/10
|
11/488,817 | 07/18/06 | INTERVERTEBRAL DISC REPLACEMENT DEVICE WITH RESILIENT SUPPORT |
Page 6 of 8
EXHIBIT B
| PATENT | ||||||
| KGGD | APPLICATION | DATE | ||||
| No. | NO. | FILED | TITLE OF INVENTION | |||
622/4A
|
Non-Provisional No. 11/176,915 | 07/07/05 | INTERVERTEBRAL STABILIZER | |||
| (Provisional No. 60/658,345) | (03/03/05) | |||||
622/4 PCT
|
PCT/US05/27506 | 08/03/05 | INTERVERTEBRAL STABILIZER | |||
622/4B
|
Non-Provisional No. 11/176,916 | 07/07/05 | CERVICAL INTERVERTEBRAL STABILIZER | |||
| (Provisional No. 60/658,345) | (03/03/05) | |||||
622/4C
|
Non-Provisional No. 11/176,717 | 07/07/05 | ANTERIOR LUMBAR INTERVERTEBRAL STABILIZER | |||
| (Provisional No. 60/658,345) | (03/03/05) | |||||
622/4D
|
Non-Provisional No. 11/176,175 | 07/07/05 | POSTERIOR LUMBAR INTERVERTEBRAL STABILIZER | |||
| (Provisional No. 60/658,345) | (03/03/05) | |||||
622/4E
|
Non-Provisional No. 11/176,914 | 07/07/05 | INTERVERTEBRAL STABILIZER, METHODS OF USE AND INSTRUMENTATION THEREFOR | |||
| (Provisional No. 60/658,345) | (03/03/05) | |||||
622/4 EP
|
05778926.5-1257 | August 8, 2007 | INTERVERTEBRAL STABILIZER, METHODS OF USE AND INSTRUMENTATION THEREFOR |
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EXHIBIT C
| PATENT | ||||||
| KGGD | APPLICATION | DATE | ||||
| No. | NO. | FILED | TITLE OF INVENTION | |||
622/13A
|
11/304,958 | 12/14/2005 | Unicompartmental Knee Joint Implant And Instrument System | |||
622/13B
|
11/338,159 | 01/23/2006 | Unicompartmental Knee Joint Implant And Instrument System |
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