INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
This
Assignment Agreement (this“Agreement”)
dated
as of August 6, 2007 (the “Effective
Date”)
is by
and between Medtronic, Inc., a Minnesota corporation (“MDT”),
and
Biophan Technologies, Inc., a Nevada corporation (“Biophan”). MDT and Biophan
are individually a “Party”,
and
together are the “Parties,”
to
this Agreement.
WHEREAS,
MDT has determined that it is in its business interest to acquire certain
Intellectual Property of Biophan and Biophan has determined it is in its
business interest to sell such Intellectual Property to MDT.
NOW
THEREFORE, in consideration of the mutual covenants and agreements set forth
herein, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Parties agree as
follows:
1. DEFINITIONS.
As
used
herein, the following terms will have the following meanings:
“Action”
means
any Claim, action, cause of action or suit (whether in contract or tort or
otherwise), litigation (whether at law or in equity, whether civil or criminal),
controversy, assessment, arbitration, investigation, hearing, charge, complaint,
demand, patent interference, opposition, Third Party requested patent
re-examination, notice or proceeding, in each case, to, from, by or before
any
Governmental Authority.
“Affiliate”
of
a
specified person (natural or juridical) means a person that now or hereafter
directly, or indirectly through one or more intermediaries, controls, or is
controlled by, or is under common control with, the person specified. “Control”
shall mean ownership of more than 50% of the shares of stock entitled to vote
for the election of directors in the case of a corporation, and more than 50%
of
the voting power in the case of a business entity other than a corporation;
provided that, with respect to Biophan, except for the purposes of Section
2.2,
“Affiliate” shall not include Myotech, LLC (“Myotech”) or TE Bio, LLC, and
Section 2.2 shall not apply to Myotech unless and until Biophan owns over 50%
of
the Myotech member interests or other indicia of ownership.
“Ancillary
Agreements”
means
any agreements, certificates, instruments and documents executed and delivered
pursuant to any of Sections 3.3 (a), (c) to (e), (h) and (i) of this Agreement.
“Assigned
Intellectual Property Rights”
means
all Intellectual Property of Biophan as of the Closing date which are necessary
to practice the Technology, including, but not limited to, the Assigned Patent
Rights.
“Assigned
Patent Rights”
means
(a) the Patent Rights related to the patents set forth on Schedule 1 hereto;
and
(b) all counterpart Patent Rights of any of the Patent Rights in subpart (a).
“Biophan”
is
defined in the Preamble to this Agreement.
“Biophan
Disclosure Schedule”
is
defined in the Preamble to Article 4 of this Agreement.
"Biophan
Field"
means
any technology related to medical devices, methods and compositions that
(a) minimize unwanted MRI imaging artifacts; (b) create enhanced imaging
modalities, such as intraluminal imaging and spectroscopy; (c) track and/or
localize surgical tools in an MRI environment; and/or (d) provide high
performance transmission of information or power in
vivo
by
photonic means.
“Boston
Scientific License”
means
the License Agreement dated June 30, 2005, between Biophan and Boston Scientific
Scimed, Inc.
“Business
Day”
means
any weekday other than a weekday on which banks located in Minneapolis,
Minnesota are authorized or required to be closed.
“Claim”
means
any assertion of right whatsoever (including those arising from debts, bonds,
promises, damages, equitable claims and judgments), whether liquidated or
unliquidated, known or unknown, fixed or contingent, direct or indirect, or
imputed.
“Closing”
is
defined in Section 3.3 (Closing Time and Place).
“Code”
is
defined in Section 3.1 (Payments).
“Confidential
Information”
means
(i) the non-public information in this Agreement, and the Ancillary Agreements;
(ii) the details of the discussions and drafts leading up to the execution
of
this Agreement or the Ancillary Agreements; and (iii) any information or
compilation of information of one of the Parties hereto (the “Disclosing
Party”)
which
becomes known to another Party (the “Receiving
Party”)
that
is not generally known to the public, including trade secrets, whether disclosed
before or after the date of this Agreement, excluding information
which:
(a) was
already in the possession of the Receiving Party prior to the Receiving Party’s
receipt from the Disclosing Party (provided that the Receiving Party is able
to
provide the Disclosing Party with reasonable documentary proof thereof and,
if
received from a third party, that such information was acquired without breach
of a confidentiality or non-disclosure obligation related to such
information);
(b) is
or
becomes a matter of public knowledge through no act of the Receiving Party
or
its Affiliates or Representatives in violation of this Agreement;
(c) is
disclosed to the Receiving Party or its Affiliates on a nonconfidential basis
by
a Third Party who lawfully obtained such information and is under no obligation
to maintain the confidentiality of such information; or
(d) has
been
independently developed by the Receiving Party without breach of this Agreement
or use of any Confidential Information of the Disclosing Party (provided that
the Receiving Party is able to provide the Disclosing Party with reasonable
documentary proof thereof).
Information
meeting the above definition shall be treated as Confidential Information
regardless of its source, and all information identified as being “confidential”
or “trade secret” or labeled with words of similar import shall be presumed to
be Confidential Information. Confidential Information includes information
being
held in confidence by a Disclosing Party for the benefit of a third
party.
“Consents”
is
defined in Section 4.3 (Consents).
“Contractual
Obligation”
means,
with respect to any Person, any legal, valid and binding contract, agreement,
deed, note, debenture, warrant, option, mortgage, lease, license, commitment,
promise, undertaking, arrangement or understanding, whether written or oral,
or
other document or instrument to which or by which such Person is a party or
otherwise subject or bound or to which or by which any property, business,
operation or right of such Person is subject or bound, in each case as amended
or otherwise modified and in effect.
“Disclosing
Party”
is
defined in “Confidential Information.”
“Dispute”
means
any dispute, controversy, Action, or other issue relating to or arising under
or
in connection with this Agreement or any of the Ancillary Agreements, their
subject matter, or their formation, interpretation, performance or breach,
including fraud in the inducement and the validity, scope and enforceability
of
the agreement to arbitrate set forth in Section 8.13 (Alternative Dispute
Resolution).
“Effective
Date”
is
defined in the Preamble.
“Encumbrance”
means
any interest relating to or arising out any lien, license, covenant not to
xxx,
option, pledge, security interest, mortgage, right of first offer or first
refusal, buy/sell agreement and any other restriction or covenant with respect
to, or condition governing the use, construction, transfer, receipt of income
or
exercise of any other attribute of legal or equitable ownership.
“Exploit”
means
make, have made, use, import, export, offer to sell, sell or otherwise dispose
of. “Exploited,”
“Exploitation”
and
other variants or variations of the word “Exploit” shall have correlative
meanings.
“Field”
means
use of Technology in or for a medical device.
“Filings”
is
defined in Section 4.3 (Consents).
“Governmental
Authority”
means
any United States federal, state or local or any foreign government, or
political subdivision thereof, or any multinational governmental
organization
or authority or any governmental authority, agency or commission in each case
entitled to exercise any administrative, executive, judicial, legislative,
police, regulatory or taxing authority or power, any court or tribunal (or
any
department, bureau or division thereof), or any arbitrator or arbitral
body.
“Governmental
Order”
means
any order, writ, judgment, injunction, decree, stipulation, ruling,
determination or award entered by or with any Governmental Authority, but
excluding any action or inaction in the course of the ex parte preparation
or
prosecution of any Patent Right and any order, writ, judgment, injunction,
decree, stipulation, ruling, determination or award of general
applicability.
“Indemnified
Party”
means
a
Person to whom indemnification is provided under this Agreement.
“Indemnifying
Party”
means
a
Person providing indemnification under this Agreement.
“Intellectual
Property”
means
all forms of intellectual property in any jurisdiction and under any law,
whether now or hereafter existing, including (a) inventions, discoveries, patent
applications, patents (including letters patent, industrial designs, and
inventor’s certificates), design registrations, invention disclosures, and
applications to register industrial designs, and any and all rights to any
of
the foregoing anywhere in the world, including any provisionals, substitutions,
extensions, supplementary patent certificates, reissues, re-exams, renewals,
divisions, continuations, continuations in part, continued prosecution
applications, and other similar filings or notices provided for under the laws
of the United States or of any other country; and (b) trade secrets and other
confidential or non-public technical information, including ideas, formulas,
compositions, inventor’s notes, discoveries, improvements, concepts, know-how,
manufacturing and development information, data resulting or derived from
research activities, Inventions, invention disclosures, unpatented blue prints,
drawings, specifications designs, plans, proposals and technical data.
“Invention”
means
any invention, discovery, know-how, trade secret, data, information, technology,
process or concept, whether or not patented or patentable, and whether or not
memorialized in writing.
“Legal
Requirement”
means
any United States federal, state or local or foreign law, statute, standard,
ordinance, code, rule, regulation, resolution or promulgation, or any
Governmental Order, or any license, franchise, permit or similar right granted
under any of the foregoing, or any similar provision having the force or effect
of law.
“Liability”
means,
with respect to any Person, any liability or obligation of such Person whether
known or unknown, whether asserted or unasserted, whether determined,
determinable or otherwise, whether strict, absolute or contingent, whether
accrued or unaccrued, whether liquidated or unliquidated, whether incurred
or
consequential,
whether
due or to become due and whether or not required under U.S. generally accepted
accounting principles to be accrued on the financial statements of such
Person.
“Losses”
means
all Actions, Claims, Liabilities, damages, judgments, amounts paid in
settlement, assessments, Taxes, losses, fines, penalties, expenses, costs and
fees (including reasonable attorneys’ fees), and amounts, costs and reasonable
attorneys’ fees associated with seeking indemnification hereunder.
“MDT”
is
defined in the Preamble.
“Notices”
is
defined in Section 4.3 (Consents).
“Organizational
Documents”
means,
with respect to any Person (other than an individual), (a) the certificate
or
articles of incorporation or organization and any joint venture, limited
liability company, operating or partnership agreement, trust agreement and
instrument and other similar documents adopted or filed in connection with
the
creation, formation or organization of such Person and (b) all by laws, voting,
agreements and similar documents, instruments or agreements relating to the
organization or governance of such Person, in each case as amended or
supplemented.
“Party”
and
“Parties”
are
defined in the Preamble.
“Patent
Rights”
means
(i) any and all U.S. and foreign: (a) patents (including utility and design
patents); (b) patent applications (including utility and design patent
applications), including all provisional applications, substitutions,
continuations, continuations-in-part, divisions, renewals, and all patents
granted thereon; and (c) patents-of-addition, reissues, reexaminations and
extensions or restorations by existing or future extension or restoration
mechanisms, including supplementary protection certificates or the equivalent
thereof, (d) patent rights obtained from Third Parties through an interference
proceeding based upon any patent or application in (a)-(c),and (ii) any other
form of government-issued right substantially equivalent to any of the foregoing
now or hereafter recognized including, for example, statutory invention
disclosures or the like.
“Payment”
is
defined in Section 3.1 (Payments).
“PCT
Application 66143“
means
PCT Application No. US2007/66143, entitled Resonant Tuning Module for
Implantable Devices and Leads, filed April 6, 2007.
“Person”
means
any individual or corporation, association, partnership, limited liability
company, joint venture, joint stock or other company, business trust, trust,
organization, Governmental Authority or other entity of any kind.
“Receiving
Party”
is
defined in “Confidential Information.”
“Representative”
means,
with respect to any Person, any director, officer, employee, agent, consultant,
advisor, partner, trustee or other representative of such Person, including
legal counsel, accountants and financial advisors.
“Tangible
Materials”
means
documents, files (including electronic files), diagrams, drawings, plans,
specifications, designs, schematics, records, reports, lab or research
notebooks, drawings, flow charts, specifications, written descriptions,
invention disclosures, source code, data, photographs of three-dimensional
prototypes and models, or other written, graphic or tangible materials or
embodiments (other than three-dimensional prototypes and models) relating to
the
Assigned Patents, and all correspondence and files relating to the prosecution
of the Assigned Patents, in each case, within the possession, custody or control
of Biophan or its Affiliates.
“Tax”
or
“Taxes”
means
any and all federal, state, local or foreign income, gross receipts, license,
payroll, employment, excise, severance, stamp, occupation, premium, windfall
profits, capital stock, franchise, profits, withholding, social security (or
similar, including FICA), unemployment, disability, real property, personal
property, sales, use, transfer, registration, value added, alternative or add-on
minimum, estimated or other tax of any kind, including any interest, penalty
or
addition thereto, whether disputed or not.
“Technology”
means
any technology, including, but not limited to, electrochemical and magnetic
shielding, filtering, shunting or generation of cancellation current, that
is
used or useful in products providing for or enhancing of the safety or
compatibility (as used herein, “compatibility” excludes MRI imaging
compatability) of a product with respect to an MRI scan of a
patient.
“Third
Party”
means
any Person other than the Parties and their Affiliates.
“Third
Party Claim”
means
any Claim by a Third Party with respect to any matter that may give rise to
a
Claim for indemnification under this Agreement.
| 2. |
ASSIGNMENT,
LICENSES AND COVENANTS NOT TO XXX.
|
2.1 Assigned
Patent Rights.
Effective as of the Closing, subject to the terms of this Agreement, Biophan
hereby sells, conveys, assigns and transfers to MDT all its interests in and
to
the Assigned Intellectual Property Rights, together with the right to xxx and
collect for past infringement. MDT accepts the Assigned Intellectual Property
Rights, provided,
that
MDT does not assume any liabilities or obligations of Biophan related to the
Assigned Intellectual Property or otherwise.
2.2 Biophan’s
Covenant Not To Xxx.
(a) IP
Covenant.
Effective as of the date hereof and for a period of seven (7) years hereafter,
Biophan hereby irrevocably covenants, agrees and warrants that Biophan shall
not, and shall cause its Affiliates not to, xxx, assert or commence any Action
or proceeding (or participate in, join or otherwise aid in
any
Action) against MDT or its Affiliates (or their employees, agents, customers,
distributors, sales representatives, end users or suppliers with respect to
products of MDT or its Affiliates) for past or future infringement or
misappropriation of any of the Assigned Intellectual Property Rights at any
time
anywhere in the world for Exploiting any products or services or practicing
any
methods.
(b) Limited
Right to Extend Covenant to Third Parties.
The
covenant not to xxx in Sections 2.2(a) shall inure to the benefit of the
respective permitted successors and assigns of MDT and its Affiliates, and
may
be extended by MDT and its Affiliates with respect to any product line, to
any
Third Party that acquires substantially all the assets relating to such product
line; provided, however, that the covenant not to xxx shall not apply to St.
Jude Medical, Boston Scientific Scimed, Inc. or Greatbatch, Inc. or their
successors.
(c)
Termination.
The
covenants not to xxx in Section 2.2(a) shall terminate, as applicable, (i)
effective simultaneously with the Closing, if the Closing shall occur, or (ii)
upon termination of the Parties obligation to proceed to the Closing pursuant
to
Section 3.4 provided that before such termination Biophan shall have satisfied
all of the conditions to Closing set forth in Section 3.3.
| 3. |
PAYMENTS;
CLOSING.
|
3.1 Payments.
MDT
shall pay the following to Biophan in exchange for the rights granted
hereunder:
(a) In
exchange for the consideration set forth in Section 2.2 and for Biophan’s
agreements set forth in Section 6.11, MDT shall pay Biophan as follows (the
“Initial
Consideration”):
(i)
on
the date hereof, MDT shall pay Biophan Five Hundred Thousand Dollars
($500,000);
(ii)
on
the date that is thirty (30) days after the date hereof, provided that Biophan
is not in material breach of its obligations hereunder and the Closing shall
not
have occurred by such date, MDT shall pay Biophan Five Hundred Thousand Dollars
($500,000); and
(iii)
on
the date that is sixty (60) days after the date hereof, provided that Biophan
is
not in material breach of its obligations hereunder and the Closing shall not
have occurred by such date, MDT shall pay Biophan Five Hundred Thousand Dollars
($500,000).
(b) In
exchange for the Assigned Intellectual Property Rights, subject to the terms
hereof, at the Closing, MDT shall pay Biophan Ten Million Dollars ($10,000,000)
(such amount, the “Closing Payment”); provided that such Closing Payment shall
be reduced to Nine Million Dollars ($9,000,000) in the event that
the
Closing occurs on a date that is more than fifty-nine (59) days after the date
hereof and MDT makes the payment described in Section 3.1(a)(iii).
3.2 Method
of Payment.
Payments of the Initial Consideration and the Closing Payment shall be made
by
wire transfer to an account designated by Biophan. The amounts payable hereunder
shall be paid in United States dollars.
3.3 Closing
Time and Place.
The
Closing of the purchase and sale of the Assigned Intellectual Property Rights
and the transactions contemplated by the Ancillary Agreements (the “Closing”)
shall
take place three (3) Business Days after all of the conditions to closing set
forth in this Section 3.3 shall have been satisfied or waived by MDT in writing.
At the Closing, MDT shall make the payment described in Section 3.1(b).
Notwithstanding anything to the contrary herein, MDT’s obligation to proceed to
the Closing shall be conditioned on the following:
(a) MDT’s
receipt of written certification from the Secretary or an Assistant Secretary
of
Biophan dated as of the Closing Date as to (i) the incumbency and specimen
signature of each officer of Biophan executing this Agreement or any of the
Ancillary Agreements and (ii) the resolutions adopted by the Board of Directors
of Biophan authorizing the execution, delivery and performance of this Agreement
and the consummation of the transactions contemplated hereby, each as amended,
modified and in effect as of the Closing Date;
(b) All
permissions, releases, Consents or approvals, governmental or otherwise,
necessary on the part of Biophan to consummate the transactions contemplated
this Agreement shall have been obtained, including, but not limited to MDT’s
receipt of a letters from the appropriate persons authorizing the release of
all
Encumbrances such persons have upon the Assigned Intellectual Property, and
terminations of, or authorizations to file partial terminations as they relate
to the Assigned Intellectual Property Rights for each UCC financing statement
naming any of such holders as a “secured party,” to the extent such UCC
statements related to Assigned Intellectual Property;
(c)
MDT
shall
have received a certificate, dated as of the date of the Closing, executed
by
the an authorized officer of Biophan representing and warranting to MDT that
(i) each of Biophan’s representations and warranties in this Agreement are
true and correct in all respects both on the date of this Agreement and on
the
date of the Closing with the same force and effect as if made on and as of
the
date of the Closing except to the extent such representations are made expressly
as of an earlier date, which representations will be true and correct in all
respects as of such earlier date; and (ii) all of the covenants and
obligations that Biophan is required to perform or to comply with pursuant
to
this Agreement at or prior to the Closing have been performed and complied
with
in all respects;
(d) There
shall not have been issued and be in effect any order, decree or judgment of
or
in any court or tribunal of competent jurisdiction which makes the consummation
of the transactions contemplated hereby illegal;
(e) No
suit,
action or other proceeding shall be pending or threatened by any third party
or
by or before any court or Governmental Authority in which it is sought to
restrain or prohibit or to obtain damages or other relief in connection with
this Agreement or the consummation of the transactions contemplated by this
Agreement, and no governmental investigation that might result in any such
suit,
action or other proceeding shall be pending or threatened;
(f) MDT
and
Biophan shall have agreed to the terms of and entered into a consulting
agreement on reasonable terms and conditions and providing for Biophan’s
provision of consulting services to MDT for a period of at least one year
following the Closing, subject to the availability to Biophan as employees
or
consultants of the two (2) full-time employees who are most knowledgeable about
the Technology (provided that Biophan agrees that it shall not take action
to
terminate such employees prior to the Closing or during the term of such
consulting agreement); and
(g) MDT
shall
have received from Biophan such instruments of transfer, assignment, conveyance
and other instruments sufficient to convey, transfer and assign to MDT all
right, title and interest in the Assigned Intellectual Property Rights, free
and
clear of all Encumbrances, all in form and substance reasonably satisfactory
to
MDT and its counsel.
3.4 Termination
of Closing.
The
respective obligations of the Parties to consummate the Closing may be
terminated and abandoned at any time at or before the Closing only as
follows:
(a) By
and at
the option of MDT if the Closing shall not have occurred within 90 days from
the
date hereof; provided that MDT shall not have breached in any material respect
its obligations under this Agreement in any manner that shall have been the
proximate cause of, or resulted in, the failure to consummate the
Closing.
(b) By
and at
the option of Biophan if the Closing shall not have occurred within 90 days
from
the date hereof; provided that Biophan shall not have breached in any material
respect its obligations under this Agreement in any manner that shall have
been
the proximate cause of, or resulted in, the failure to consummate the
Closing.
(c) By
and at
the option of MDT, if Biophan shall be in material breach of its obligations
under this Agreement and such breach is not cured within fourteen (14) days
of
MDT’s notice of such breach is sent to Biophan.
(d) At
any
time, without liability of any party to the others, upon the mutual written
consent of Biophan and MDT.
The
termination of the Parties’ obligation to consummate the Closing shall have no
effect on any other rights or obligations of the Parties hereunder, including,
but not limited to, obligations under Section 2.2.
| 4. |
BIOPHAN’S
REPRESENTATIONS AND WARRANTIES.
|
Biophan
represents and warrants to MDT that the statements contained in this Section
4
are true, correct and complete as of the date hereof and as of the Closing,
except as set forth in the Biophan’s disclosure schedule accompanying this
Agreement (the “Biophan Disclosure Schedule”). The Biophan Disclosure Schedule
will be arranged in paragraphs corresponding to the lettered and numbered
paragraphs contained in this Section 4.
4.1 Authorization.
Biophan
is a Nevada corporation duly organized, validly existing and in good standing
under the laws of the State of Nevada. Biophan has the full corporate power
and
authority to execute and deliver this Agreement and each Ancillary Agreement
to
which it is a party and to perform its respective obligations under this
Agreement and under each such Ancillary Agreement. All corporate actions or
proceedings to be taken by or on the part of Biophan to authorize and permit
the
execution and delivery by Biophan of this Agreement and each of the Ancillary
Agreements to which it is a party and to perform its respective obligations
under this Agreement and under such Ancillary Agreements have been duly taken.
This Agreement has been duly executed and delivered by Biophan and constitutes
the legal, valid and binding obligation of Biophan, enforceable in accordance
with its terms and conditions subject to bankruptcy, insolvency, reorganization,
moratorium and other similar laws of general application affecting the rights
and remedies of creditors and to general principles of equity. Each of the
Ancillary Agreements to which Biophan is a party will be, as of the Closing,
duly executed and delivered by Biophan and will constitute, as of the Closing,
the legal, valid and binding obligation of Biophan, enforceable in accordance
with its terms and conditions subject to bankruptcy, insolvency, reorganization,
moratorium and other similar laws of general application affecting the rights
and remedies of creditors and to general principles of equity.
4.2 Noncontravention.
Neither
the execution and delivery of this Agreement and the Ancillary Agreements nor
the consummation of the transactions contemplated hereby and thereby by Biophan
will (i) conflict with or result in a breach of or default under the
Organizational Documents of Biophan, (ii) violate any material Legal Requirement
to which any of Biophan or its Affiliates or any of their assets or property
is
subject, (iii) conflict with or result in a breach of, default under, right
to
accelerate payment under or obligation to make any payment pursuant to or loss
of material rights under, or modify or terminate any material Contractual
Obligation by which Biophan or its Affiliates or any of their assets or property
is bound or subject, (iv) result in the
creation
or imposition of any Encumbrance upon or forfeiture of any of the Assigned
Patent Rights, or (v) result in the creation of any Claim that could result
in
the creation or imposition of any Encumbrance upon or forfeiture of any of
the
Assigned Patent Rights.
4.3 Consents.
No
approval, authorization, permit, license, waiver or consent is required from
any
Third Party (including any Governmental Authority) (collectively, the
“Consents”)
and no
filing or notice is required to be made with or given to any Third Party
(including any Governmental Authority) (respectively, the “Filings”
and
the
“Notices”)
for
Biophan and its Affiliates to accomplish the transactions contemplated by this
Agreement and the Ancillary Agreements.
4.4 Litigation.
There
is no Action pending or, to the Knowledge of Biophan, threatened against or
involving any of Biophan or its Affiliates that could adversely affect (i)
the
Assigned Intellectual Property Rights or (ii) the ability of Biophan or its
Affiliates to consummate the Closing or perform any obligations under this
Agreement or the Ancillary Agreements. For purposes of this Section
4.4,
threatened Actions shall include requests for interference, Third Party requests
for re-examination and requests for oppositions.
4.5 Title.
Biophan owns, and as of the Closing shall own, all rights, title and interests
in and to the Assigned Intellectual Property Rights and
has
the full right and power to assign good title to the Assigned Intellectual
Property Rights, in each case free and clear of all Encumbrances and all Claims.
There is no agreement granting rights under the Assigned Intellectual Property
Rights or imposing obligations with respect to the Assigned Intellectual
Property Rights.
4.6 Intellectual
Property.
(a) Completeness.
The
Assigned Patent Rights listed on Schedule 1 include all Patent Rights in which
Biophan or any of its Affiliates has any right, title or interest in the Field,
including without limitation any rights under licenses. Biophan has provided
MDT
with correct and complete copies of all such Patent Rights.
(b) Representations
Regarding Intellectual Property.
With
respect to each patent and patent application included within the Assigned
Intellectual Property Rights:
(i) each
issued, unexpired patent: (a) is, to the knowledge of Biophan, valid and
enforceable; and (b) has been properly obtained in accordance with all
applicable rules and regulations governing the prosecution of applications
for
such patent, and Biophan and its Affiliates and their Representatives have
not
engaged in any fraud or other misconduct with regard to the prosecution or
procurement of such patent;
(ii) no
claim
has been asserted or threatened by any person, with respect to the use of the
Assigned Intellectual Property Rights or challenging or questioning the validity
or effectiveness of any license or agreement with respect thereto, and, to
the
knowledge of Biophan, no valid basis for any such claim exists;
(iii) to
the
knowledge of Biophan, no person, business or products has infringed, misused
or
misappropriated the Assigned Intellectual Property Rights or currently is
infringing, misusing or misappropriating any such rights, and to the knowledge
Biophan, neither the use of the Assigned Intellectual Property Rights, nor
the
manufacture, marketing, distribution, use or sale of any product or service
currently under development by Biophan, infringes on the Intellectual Property
of any person in a manner;
(iv) for
each issued, unexpired patent or pending patent application, in all material
respects, (A) all necessary application, annuity, maintenance and renewal fees
in connection with all patent and patent applications have been paid and (B)
all
necessary documents and certificates in connection therewith have been filed
with the relevant authority for the purpose of maintaining the patent
registrations or applications; and
(v) no
issued, unexpired patent is undergoing cancellation, re-examination, termination
or withdrawal proceedings.
4.7 Solvency;
Fair Consideration.
As of
the Closing, Biophan shall be solvent. As of the Closing, the sum of Biophan’s
assets, at a fair valuation, shall be greater than the sum of its debts, and
Biophan shall be able, and will be able immediately following the consummation
of the transactions contemplated by this Agreement, generally to pay its debts
as they become due. The obligations of Biophan under this Agreement will not
render Biophan insolvent. Biophan is receiving fair consideration and reasonably
equivalent value in exchange for the assets transferred by Biophan to MDT and
the obligations incurred by Biophan and its Affiliates pursuant to this
Agreement. The transactions contemplated by this Agreement and the Ancillary
Agreements shall not cause Biophan to be left with unreasonably small capital.
Biophan shall retain sufficient current capital to fund its operations and
meet
its obligations under this Agreement for a period of at least twelve months
after the Closing.
| 5. |
MDT’S
REPRESENTATIONS AND WARRANTIES.
|
MDT
represents and warrants to Biophan that the statements contained in this Section
5 are true and correct as of the date hereof and on the Closing date.
5.1 Organization.
MDT is
a Minnesota corporation duly incorporated, validly existing and in good standing
under the laws of the State of Minnesota.
5.2 Authorization.
MDT has
the full corporate power and authority to execute and deliver this Agreement
and
each Ancillary Agreement to which it is a party and to perform its respective
obligations under this Agreement and under each such Ancillary Agreement. All
corporate actions or proceedings to be taken by or on the part of MDT to
authorize and permit the execution and delivery by MDT of this Agreement and
each of the Ancillary Agreements to which it is a party and to perform its
respective obligations under this Agreement and under such Ancillary Agreements
have been duly taken. This Agreement has been duly executed and delivered by
MDT
and constitutes the legal, valid and binding obligation of MDT, enforceable
in
accordance with its terms and conditions subject to bankruptcy, insolvency,
reorganization, moratorium and other similar laws of general application
affecting the rights and remedies of creditors and to general principles of
equity. Each of the Ancillary Agreements to which MDT is a party will be, as
of
the Closing, duly executed and delivered by MDT and will constitute, as of
the
Closing, the legal, valid and binding obligation of MDT, enforceable in
accordance with its terms and conditions subject to bankruptcy, insolvency,
reorganization, moratorium and other similar laws of general application
affecting the rights and remedies of creditors and to general principles of
equity.
5.3 Noncontravention.
Neither
the execution and delivery of this Agreement and the Ancillary Agreements nor
the consummation of the transactions contemplated hereby and thereby by MDT
will
(i) conflict with or result in a breach of or default under the Organizational
Documents of MDT, or (ii) violate any material Legal Requirement to which MDT
or
any of its assets or property is subject.
5.4 Consents.
No
Consents, Filings or Notices are required for MDT to accomplish the transactions
contemplated by this Agreement and the Ancillary Agreements.
5.5 No
Other Representations and Warranties.
Except
as expressly set forth in Section 5 of this Agreement, MDT makes no
representation or warranty, express or implied, at law or in equity with respect
to this Agreement, or otherwise.
| 6. |
COVENANTS.
|
6.1 Closing.
Subject
to the terms and conditions of this Agreement, each of the Parties will use
its
commercially reasonable efforts to take, or cause to be taken, all actions
and
to do, or cause to be done, all things necessary, proper or advisable in order
to consummate and make effective the transactions contemplated by this
Agreement, including, with respect to Biophan, using such commercially
reasonably efforts to satisfy the conditions to the Closing set forth in Section
3.3.
6.2 Protection
of the Subject Intellectual Property.
From
the Effective Date until the Closing, Biophan shall, and shall cause its
Affiliates and Representatives to:
(i) use
commercially reasonable efforts to preserve and to maintain and protect their
rights, title and interests in and to the Assigned Intellectual Property
Rights;
(ii) use
commercially reasonable efforts to pay or otherwise satisfy all of its and
their
respective Liabilities in respect of the Assigned Intellectual Property Rights;
and
(iii) comply
with all Legal Requirements applicable to the Assigned Intellectual Property
Rights.
6.3 Boston
Scientific License Agreement.
The
Parties acknowledge and agree that certain of the Assigned Intellectual Property
Rights are subject to certain rights of Boston Scientific Scimed, Inc. pursuant
to the Boston Scientific License Agreement. The Parties further acknowledge
and
agree that the following provisions shall apply to the Boston Scientific
Agreement:
(a)
Biophan
will not assign, and MDT will not assume, the Boston Scientific License
Agreement and MDT shall have no obligations to Boston Scientific Scimed, Inc.
thereunder.
(b)
Biophan
will continue to perform all of its obligations in full compliance with and
pursuant to the terms of the Boston Scientific License Agreement.
(c) As
of the
Closing, Biophan hereby assigns to MDT all rights, title and interests Biophan
has to “Royalties” with respect to “Non-Exclusive Products” (as term is defined
in the Boston Scientific License Agreement) and shall remit such amounts to
MDT
upon receipt thereof from Boston Scientific Scimed, Inc..
6.4 PCT
Application 66143.
Promptly after the Closing, the Parties shall cooperate with each other and
use
good faith efforts to amend PCT Application 66143 so that the claims of PCT
Application 66143 are directed only to inventions in the Field, and to file
a
continuation or other appropriate application claiming priority to PCT
Application 66143 (“Ancillary
Application”),
whereby the claims of the Ancillary Application are directed only to inventions
in the Biophan Field. Upon the filing of the Ancillary Application, MDT agrees
to sell, convey, assign and transfer, and hereby sells,
conveys, assigns and transfers to Biophan all its interests in and to the
Ancillary Appilcation, together with the right to xxx and collect for past
infringement. The Parties acknowledge that the objective of this Section 6.4
is
to have each Party own a patent application containing the claims of PCT
Application 66143 that are directed to its particular field, but not any claims
that are directed to the field of the other Party.
6.5 Further
Assurances.
From
time to time upon request by MDT, Biophan will, and will cause its Affiliates
to, execute, acknowledge and deliver, or will cause to be done, executed,
acknowledged and delivered, all such further acts, deeds, assignments,
transfers, license grants, conveyances, powers of attorney, and assurances
that
may be
required
to carry out the purposes of this Agreement. Without limiting the foregoing,
following the Closing, Biophan shall take such further actions that are
reasonably necessary to accomplish the complete transfer and assignment of
Biophan’s rights, title and interests in and to the Assigned Intellectual
Property Rights to MDT, and to assist MDT as reasonably necessary with the
lawful filing and prosecution of Patent Rights, interferences, and oppositions,
and with MDT’s determination of whether to continue requests for interferences
with respect to the Assigned Patent Rights. During the period between the
Effective Date and the Closing, Biophan will notify MDT in writing within ten
(10) Business Days after Biophan becomes aware that any interference is declared
involving any of the Assigned Patent Rights.
6.6 Third
Party Actions.
Except
as agreed to by the Parties in writing, following the Closing, MDT will have
the
sole and exclusive right and discretion to enforce the rights, title and
interests in and to the Assigned Intellectual Property Rights against Third
Parties, subject to the applicable terms of the Boston Scientific License
Agreement. Following the Closing, MDT will decide whether or not to institute
any proceeding against any Third Party with respect to any alleged infringement
or misappropriation of the rights, title and interests in and to the Assigned
Intellectual Property Rights in its sole and absolute discretion and will keep
all proceeds of any such proceedings. If MDT is unable to enforce any obligation
or other right without Biophan being party to an Action, then Biophan shall
voluntarily join as a party in such Action as necessary to enforce any such
obligation or other right; provided,
that
MDT agrees in advance to reimburse Biophan for its reasonable fees, costs and
expenses relating thereto. Following the Closing, Biophan shall not testify
(whether by declaration, affidavit, or in person) and Biophan shall not
challenge or assist any Third Party in challenging the validity, enforceability
or value of the Assigned Intellectual Property Rights, in each case other than
under subpoena or similar legal order. Biophan shall not, and shall cause its
Affiliates not to, assist any Third Party in the assertion of any Patent Rights
in the Field against MDT or its Affiliates, other than under subpoena or other
legal process.
6.7 Confidentiality.
The
Receiving Party agrees to maintain the confidentiality of the Confidential
Information of the Disclosing Party and agrees not to disclose or use (except
as
permitted or required for performance by the Receiving Party of its rights
or
duties hereunder or under the Ancillary Agreements) any Confidential Information
of the Disclosing Party. The Receiving Party further agrees to cause its and
its
Affiliates’ present and future employees, officers, agents and consultants to
comply with the foregoing. If the Receiving Party is requested or required
to
disclose any Confidential Information of the Disclosing Party pursuant to any
order or decree of a court of competent jurisdiction or any applicable law,
the
Receiving Party shall endeavor to provide the Disclosing Party with advance
written notice of any such request or requirement (to the extent practicable)
and shall provide reasonable assistance to the Disclosing Party if the
Disclosing Party desires to seek a protective order or other appropriate remedy.
If, in the absence of a protective order or other remedy, the Receiving Party
is
nonetheless legally compelled to disclose Confidential Information, the
Receiving Party may, without liability hereunder, disclose that portion of
the
Disclosing
Party’s Confidential Information that the Receiving Party’s legal counsel
advises is legally required to be disclosed.
6.8 Public
Statements.
The
Parties acknowledge and agree that as of the Effective Date, Biophan shall
issue
the press release set forth in Schedule 6.8 (the “Press
Release”).
Except for the Press Release, no Party or its Affiliate shall publicly disclose
information regarding the terms of this Agreement or the Ancillary Agreements
or
the transactions contemplated hereunder or thereunder. Notwithstanding the
foregoing provision, the Parties and their respective Affiliates shall not
be
prohibited from making any disclosure or release that is required by law, court
order, or applicable regulation or that is required to protect any intellectual
property right in any territory; provided,
however, that prior to any such disclosure or release, the party proposing
to so
disclose or release information regarding the terms of this Agreement or the
Ancillary Agreements shall notify the other parties, and the parties shall
cooperate to seek applicable limitations on the public availability of any
information that either MDT or Biophan considers sensitive or
confidential.
Notwithstanding the foregoing, in no event shall either Party be prohibited
from
making any disclosure or release that is considered necessary by its legal
counsel to fulfill an obligation under applicable securities laws or stock
exchange rules or regulations, subject to the prior review of such release
by
the other Party.
6.9 Patent
Prosecution.
Except
as specifically agreed to by the Parties in writing, following the Closing,
Biophan will have no right or obligation to file, prosecute or maintain any
Patent Rights included in the Assigned Patent Rights. MDT will have no
obligation to file, prosecute or maintain any Patent Rights included in the
Assigned Patent Rights. Notwithstanding the foregoing, the Parties agree as
follows:
(a) Biophan
Field Covenant.
Biophan
hereby irrevocably and perpetually covenants, agrees and warrants that Biophan
shall not, and shall cause its Affiliates not to, amend any patent application
owned or controlled by it to include a claim that covers the Field
(“Field
Claim”).
The
covenant in this Section 6.9(a) shall inure to the benefit of the respective
permitted successors and assigns of MDT and its Affiliates, and may be extended
by MDT and its Affiliates with respect to any product line, to any Third Party
that acquires substantially all the assets relating to such product line. In
the
event that Biophan or its Affiliates breaches its covenant in this Section
6.9(a), then Biophan agrees to grant (and to cause its Affiliate to grant),
and
hereby grants, to MDT and its Affiliates an irrevocable, perpetual, paid-up,
worldwide, transferable and assignable, exclusive license, with the right to
sublicense, to practice methods falling within the scope of the Field Claim
in
the Field and to Exploit products falling within the scope of the Field Claim
in
the Field.
(b)
MDT
Field Covenant.
MDT
hereby irrevocably and perpetually covenants, agrees and warrants that MDT
shall
not, and shall cause its Affiliates not to, amend any of the patent applications
set forth on Schedule 6.9(b) to include a claim that covers the Biophan Field
(“Biophan
Field Claim”).
The
covenants in this Section 6.9(b) shall inure to the benefit of the respective
permitted
successors and assigns of Biophan and its Affiliates. The covenants in this
Section 6.9(b) shall run with the patent applications set forth on Schedule
6.9(b) and shall be binding on any Third Party acquiring any of the patents
applications set forth on Schedule 6.9(b). In the event that MDT or its
Affiliates breaches its covenant in this Section 6.9(b), then MDT agrees to
grant (and to cause its Affiliate to grant), and hereby grants, to Biophan
and
its Affiliates an irrevocable, perpetual, paid-up, worldwide, transferable
and
assignable, exclusive license, with the right to sublicense, to practice methods
falling within the scope of the Biophan Field Claim in the Biophan Field and
to
Exploit products falling within the scope of the Biophan Field Claim in the
Biophan Field.
6.10 Tangible
Materials.
Biophan
shall, as soon as reasonably practicable deliver any Tangible Materials that
are
in the possession of Biophan or its Affiliates or Representatives.
6.11 Exclusivity.
Biophan
agrees that, during the period ending upon the earlier of (a) 90 days after
the
date hereof, or (b) such date as MDT terminates its obligation to proceed to
the
Closing pursuant to Section 3.4, Biophan will not discuss or negotiate with
any
party (other than MDT or its affiliates), or encourage the submission of
inquiries, proposals or offers from any party (other than MDT or its
affiliates), or otherwise provide information to any other person, with respect
to the sale of or investment in Biophan (whether by merger, combination, sale
of
assets, sale of stock, or otherwise) or the sale, licensing, distribution,
or
other disposition of all or any rights in the Assigned Intellectual Property
Rights, and that Biophan will, and it will direct its employees, agents,
advisors and affiliates, to affirmatively and immediately upon its execution
of
this Agreement, discontinue any discussions or negotiations with any party
(other than MDT or its affiliates) with respect to any of the foregoing.
| 7. |
INDEMNIFICATION.
|
7.1 Indemnification
by Biophan.
Biophan
and its Affiliates shall jointly and severally indemnify, defend and hold
harmless MDT and its Affiliates and Representatives, whether or not involving
a
Third Party Claim, against all Losses relating to or arising out
of:
(a) (i)
the
breach of any representation or warranty of Biophan under Section 4 of this
Agreement or (ii) the breach of any covenant or obligation of Biophan or its
Affiliates in this Agreement or any of the Ancillary Agreements;
(b) any
Third
Party Claim arising under or relating to a right to assign title to the Assigned
Patent Rights, including any ability of Biophan or its Affiliates to grant
any
license or make assignments hereunder or any restriction on Biophan’s or its
Affiliates’ rights to or make assignments of right, title and interest in and to
the Assigned Patent Rights and any Claim or Action by or on behalf of Boston
Scientific Scimed, Inc. that the transactions
contemplated
by this Agreement result in a breach of the Boston Scientific License Agreement;
or
(c) any
Contractual Obligation of Biophan or its Affiliates to make any payments to
any
Third Party arising out of or relating to the payment of the Closing
Payments.
7.2 Indemnification
by MDT.
MDT
shall indemnify, defend and hold harmless Biophan and its Affiliates and
Representatives, whether or not involving a Third Party Claim, against all
Losses relating to or arising out of:
(a) the
breach of any representation or warranty of MDT in Section 5 of this Agreement
or the breach of any covenant or obligation of MDT in this Agreement or any
of
the Ancillary Agreements;
(b) any
Claims or Actions by any Third Party arising out of or relating to the
Exploitation by MDT or its Affiliates of or relating to products, product
systems or procedures derived from or based on the Assigned Intellectual
Property Rights other than any Claim or Action by or on behalf of Boston
Scientific Scimed, Inc. under the Boston Scientific License Agreement; provided,
however, that MDT shall indemnify Biophan as to any Claims by Boston Scientific
Scimed, Inc. alleging Boston Scientific Scimed, Inc. is entitled to a license
of
any claims in any patent within the definition of the Assigned Patent Rights
that (i) were inserted in the Assigned Patent Rights after the Closing; and
(ii)
do not include new matter; and
(c) any
Claims or Actions by any Third Party for product liability, product warranty
or
similar Claim or Action arising out of or relating to the licensing or
sublicensing by MDT under the Assigned Intellectual Property
Rights.
7.3 Survival.
The
terms of this Agreement and all provisions hereof, including all
representations, warranties, promises, agreements and covenants, are contractual
and not mere recitals and shall survive the execution and delivery of this
Agreement and the Closing under this Agreement and, except as expressly stated
herein, shall continue in full force and effect thereafter; provided that
nothing in this Section 7.3 shall be interpreted as requiring that the
representations and warranties set forth in Article 4 be and remain true and
correct at times after the Closing subject to MDT’s right pursuant to Section
7.1 to make Claims based on the breach or inaccuracy of such representations
and
warranties as of the Closing and times prior thereto.
7.4 Notice
of Claims.
If an
Indemnified Party intends to seek indemnification pursuant to this
Agreement,
such Indemnified Party shall promptly notify the Indemnifying Party in writing
of the Claim for which indemnification is sought, including any Third Party
Claims in respect of which indemnification is sought under this Agreement.
Any
such notice shall set forth in reasonable detail, in light of the circumstances
then known to the Indemnified Party, the facts, circumstances and basis of
the
Claim and, if the Claim relates to a Third Party Claim, shall include copies
of
all papers served upon or received by the Indemnified Party relating thereto.
Any delay in the provision of such notice and accompanying materials shall
not
affect any rights under this Agreement except to the extent that the
Indemnifying Party is actually and materially prejudiced thereby (and except
that the Indemnifying Party shall not be liable for any expenses incurred during
the period in which the Indemnified Party failed to give such
notice).
7.5 Third
Party Claims.
The
Indemnified Party shall have the sole and exclusive right to control of the
defense of any Third Party Claim with counsel of its choice, and the Indemnified
Party’s reasonable legal fees and expenses shall constitute part of the Losses
indemnified under this Agreement. The Indemnified Party may consent to the
entry
of any judgment or enter into any compromise or settlement with respect to,
the
Third Party Claim; provided, that the Indemnifying Party will not be bound
by
the entry of any such judgment consented to, or any such compromise or
settlement effected, without its prior written consent (which consent will
not
be unreasonably withheld or delayed)
7.6 Knowledge
and Investigation.
The
right of any Indemnified Party to indemnification pursuant to this Section
7
will not be affected by any investigation conducted or knowledge acquired (or
capable of being acquired) at any time, whether before or after the execution
and delivery of this Agreement or the Closing, with respect to the accuracy
of
any representation or warranty, or performance of or compliance with any
covenant or agreement under this Agreement.
7.7 Equitable
Remedies.
In
addition to any other relief or remedies afforded by law or in equity, if either
Party or any of its Affiliates breaches its obligations under this Agreement,
the other Party shall be entitled, as a matter of right and without posting
any
bond or other security, to injunctive relief in any court of competent
jurisdiction. This shall not preclude the granting of any other appropriate
relief including, without limitation, money damages against the breaching Party
for breach of this Agreement.
| 8. |
MISCELLANEOUS.
|
8.1 Interpretation.
Except
as otherwise explicitly specified to the contrary, (a) references to a Section,
Exhibit or Schedule means a Section of or Schedule or Exhibit to this Agreement,
unless another agreement is specified, (b) the word “including” will be
construed as “including but not limited to,” and will not be construed as
limiting the general language to which it relates, and the items or matters
that
follow the word “including” or the words “including but not limited to” or
“including without limitation” or similar words in this Agreement shall be
construed as illustrative, but not exclusive or complete, examples of what
is
intended to be so included, (c) the term “or” is not limiting and means
“and/or,” (d) references to a particular statute or regulation include all rules
and regulations thereunder and any predecessor or successor statute, rules
or
regulation,
in
each
case as amended or otherwise modified from time to time, (e) words in the
singular or plural form include the plural and singular form, respectively,
(f)
references to a particular Person include such Person’s successors and assigns
to the extent not prohibited by this Agreement and (g) references to “Dollars”
or “$” shall be to U.S. Dollars. The Parties have participated jointly in the
negotiation and drafting of this Agreement. In the event an ambiguity or
question of intent or interpretation arises, this Agreement shall be construed
as if drafted jointly by the Parties and no presumption or burden of proof
shall
arise favoring or disfavoring any Party by virtue of the authorship of any
of
the provisions of this Agreement.
8.2 No
Third Party Beneficiaries.
Except
as specifically provided in this Agreement, this Agreement shall not confer
any
rights or remedies upon any Person other than the Parties and their respective
successors and permitted assigns.
8.3 Entire
Agreement.
Excepts
as agreed to by the parties in writing, this Agreement, the Schedules and
Exhibits hereto, and the Ancillary Agreements constitute the entire agreement
among the Parties and supersedes any prior understandings, agreements or
representations by or among the Parties, whether written or oral, with respect
to the subject matter hereof.
8.4 Assignment.
No
Party may assign either this Agreement or any of its rights, interests or
obligations under this Agreement without the prior written approval of the
other
Parties; provided,
however, that MDT may, without notice to or consent of Biophan, (i) assign
all
of its rights and interests and delegate all of its obligations under this
Agreement to a Third Party in connection with the sale of all or substantially
all of the capital stock of MDT or all or substantially all of the assets to
which this Agreement relates (whether by merger, consolidation or otherwise)
to
such Third Party, provided that such Third Party executes a counterpart to
this
Agreement acknowledging and agreeing to assume all such obligations of MDT
and
its Affiliates under this Agreement; (ii) assign all of its rights and interests
to one or more of its Affiliates; (iii) assign right, title and interest in
and
to any of the Assigned Intellectual Property Rights to any party; and (iv)
designate one or more of its Affiliates to perform its obligations under this
Agreement provided that such designation shall not relieve MDT from its
obligations under this Agreement. Subject to the foregoing, this Agreement
shall
be binding upon and inure to the benefit of the Parties named herein and their
respective successors and permitted assigns.
8.5 Counterparts.
This
Agreement may be executed in one or more counterparts, each of which shall
be
deemed an original but all of which together shall constitute one and the same
instrument.
8.6 Headings.
The
Section headings contained in this Agreement are inserted for convenience only
and shall not affect in any way the meaning or interpretation of this
Agreement.
8.7 Notices.
All
communications between Biophan and MDT relating to this Agreement and the
subject matter hereof shall be directed to the persons designated to receive
notices set forth in this Section 8.7 or such other individuals as they may
designate. All notices, requests, demands, Claims and other communications
under
this Agreement shall be in writing. Any notice, request, demand, Claim or other
communication under this Agreement shall be deemed duly given (i) when delivered
personally to the recipient, (ii) upon confirmation of facsimile (with a
confirmation copy to be sent by overnight delivery) or (iii) one Business Day
following the date sent when sent by overnight delivery, at the following
address:
If
to
Biophan:
Biophan
Technologies, Inc.
00
Xxxxxx
Xxxxx
Xxxxxxxxx,
XX 00000
Fax:
(000) 000-0000
Attention:
CEO
with
copies to:
Xxxxxxx
Xxxxxx, Esq.
00
Xxxxxx
Xxxxx
Xxxxxxxxx,
XX 00000
If
to
MDT:
Medtronic,
Inc.
000
Xxxxxxxxx Xxxxxxx
Xxxxxxxxxxx,
XX 00000-0000
Attention:
General Counsel
Any
Party
may change the address to which notices, requests, demands, Claims and other
communications under this Agreement are to be delivered by giving the other
Party notice in the manner herein set forth.
8.8 Governing
Law.
This
Agreement shall be governed by and construed in accordance with the domestic
laws of the State of Minnesota without giving effect to any choice or conflict
of law provision or rule (whether of the State of Minnesota or any other
jurisdiction) that would cause the application of the laws of any jurisdiction
other than the State of Minnesota. The parties hereto submit to the exclusive
jurisdiction of the State and Federal courts in the State of Minnesota and
Hennipen County with respect to any dispute.
8.9 Amendments
and Waivers.
No
amendment of any provision of this Agreement shall be valid unless the same
shall be in writing and signed by MDT and Biophan. No waiver by any Party of
any
provision of this Agreement or any default,
misrepresentation
or breach of warranty or covenant under this Agreement, whether intentional
or
not, shall be valid unless the same shall be in writing and signed by the Party
making such waiver nor shall such wavier be deemed to extend to any prior or
subsequent default, misrepresentation or breach of warranty or covenant under
this Agreement or affect in any way any rights arising by virtue of any prior
or
subsequent such occurrence. Any consent, waiver or amendment signed by Biophan
shall be deemed the consent, waiver or amendment of Biophan and its Affiliates
and any consent, waiver or amendment signed by a Representative of MDT shall
be
deemed the consent, waiver or amendment of MDT’s Affiliates pursuant
hereto.
8.10 Severability.
Any
term or provision of this Agreement that is invalid or unenforceable in any
situation in any jurisdiction shall not affect the validity or enforceability
of
the remaining terms and provisions hereof or the validity or enforceability
of
the offending term or provision in any other situation or in any other
jurisdiction. In the event that any term or provision of this Agreement would,
under applicable law, be invalid or unenforceable in any respect, each Party
intends that such provision will be construed by modifying or limiting it so
as
to be valid and enforceable to the maximum extent compatible with, and possible
under, applicable law. For any such invalid or unenforceable provision, the
Parties shall use commercially reasonable efforts to negotiate a substitute
valid and enforceable provision while preserving to the fullest extent possible
the intent and agreements of the Parties set forth herein.
8.11 Expenses.
Except
as expressly stated otherwise, each of the Parties will bear his or its own
costs and expenses (including legal and accounting fees and expenses) incurred
in connection with this Agreement, the Ancillary Agreements and the transactions
contemplated hereby and thereby.
[Signature
Page Follows]
IN
WITNESS WHEREOF, each of the undersigned has executed this Agreement as an
agreement under seal as of the date first above written.
|
MEDTRONIC, INC.
By:
/s/
Xxx Xxxxxxxx
|
|
|
Name:Xxx
Xxxxxxxx
Title:Vice
President Corporate Strategy and
Development
|
|
|
BIOPHAN TECHNOLOGIES, INC.
By: /s/
Xxxx Xxxxxxxxx
|
|
|
Name:
Xxxx Xxxxxxxxx
Title:
Chief
Operating Officer
|
