Exhibit 10.1
ASSIGNMENT OF PATENT
This Assignment of Patent (this "Assignment") is made and entered into this 1st
day of July, 2000, by Xxxxxxx Xxxxxxx, M.D. ("Xxxxxxx") and Xxxxx-Xxxxx Xxxxxx
("ASSIGNORS"), in favor of Cardiac Science, Inc., a Delaware corporation
("CARDIAC"), located at 00000 Xxxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxx 00000.
WHEREAS, Assignors are the owners by assignment of U.S. Patent 4,576,170, "Heart
Monitor and Defibrillator Device," issued March 18, 1986, a copy of which is
attached hereto as Schedule A, and made a part thereof;
WHEREAS, Cardiac has an exclusive license under such patent pursuant to that
certain Exclusive License Agreement dated December 22, 1993 between Cardiac and
Xxxxxxx Xxxxxxx, M.D. (the "Exclusive License"), and now wishes to obtain all
rights in and to U.S. Patent 4,576,170 from Assignors; and WHEREAS, the
Assignors wish to transfer all rights in U.S. Patent 4,576,170 to Cardiac;
NOW, THEREFORE, for good and valuable consideration as described herein, the
receipt and sufficiency of which are hereby acknowledged, the parties agree as
follows:
1. ASSIGNMENT OF PATENT. Assignors hereby assign, sell and transfer exclusive
to Cardiac all of the right, title, and interest in and to United States
Patent 4,576,170 and any continuations, continuations in part, divisional,
reexaminations, reissues, or foreign counterparts or equivalents thereof
(the "Patent"), to be held and enjoyed by Cardiac for its own use and by
its legal representatives, successors and assigns to the full extent and
for the entire term for which the Patent is granted, including the right to
xxx and collect damages and other relief for infringement thereof including
prior infringement with no obligation or duty to account for Assignors for
any recovery thereby.
2. PURCHASE PRICE. As payment for this Assignment, Cardiac shall transfer to
Xxxxxxx the number of shares of Cardiac common stock pursuant to that
certain Patent Acquisition Agreement between Cardiac and Assignors executed
contemporaneously with this Assignment.
3. CANCELLATION OF EXCLUSIVE LICENSE. All prior royalties due and owing to
Assignors under the Exclusive License are hereby deemed paid in full, and
the Exclusive License is hereby cancelled. Section 6(b) of the Exclusive
License shall survive such cancellation, but all other provisions including
Sections 11(c) and (d) of the Exclusive License shall not survive such
cancellation notwithstanding anything therein to the contrary.
4. REPRESENTATIONS AND WARRANTIES. Assignors represent and warrant that
together they are the collective owners of all right, title, and interest
in and to the Patent, that they have the full right
and power to make this Assignment, and that there has been no previous
assignment, transfer, sale, license or other agreement in conflict herewith
or providing to a third party a present or future interest, lien or
encumbrance of the Patent except for the Exclusive License.
5. MODIFICATIONS. This Assignment cannot be altered, amended, or modified in
any way, except by a writing signed by the parties hereto.
6. FURTHER ASSURANCES. Assignors shall cooperate fully with Cardiac, and
hereby agree to execute and, if necessary, to file with the appropriate
government entities such documents, and to take such further action as
Cardiac shall reasonably request to carry out the purposes of this
Agreement including the perfection, recordation or enforcement of any of
the rights conveyed to Cardiac hereunder.
7. BINDING EFFECT; GOVERNING LAW. This Assignment shall be binding upon
Assignors and their successors and heirs and shall inure to the benefit of
Cardiac and its successors and assigns. This Assignment shall, except to
the extent that federal law or the law of another state applies to the
Patent or any part thereof, be governed by and construed in accordance with
the internal laws, notwithstanding any conflict of laws provisions, of the
State of California.
IN WITNESS WHEREOF, the undersigned executed this Assignment this 1st day
of July, 2000.
Assignee: Assignors:
CARDIAC SCIENCE, INC. XXXXXXX XXXXXXX, M.D.
By its
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SCHEDULE A
PATENT TITLE INVENTORS NUMBER ISSUE DATE
1. "Heart monitor and Xxxxxxx, Xxxxxx X. and Xxxxxxx, 4,576,170 March 18, 1986
defibrillator device" Xxxxxxx X.
