Contract
EXHIBIT 10.55
EXECUTION
COPY
This
TECHNOLOGY LICENSE AGREEMENT (this “License
Agreement”) is made and effective as of the 31st day of
March, 2008 (the “Effective
Date”), by and between SaluMedica, LLC, a Georgia limited liability
company (“Licensor”),
and MiMedx, Inc., a Florida corporation (“MiMedx”;
and, together with any Affiliate or successor-in-interest of MiMedx, “Licensee”).
RECITALS:
A.
Licensor and Licensee (specifically, SpineMedica, LLC (a
successor by merger to SpineMedica, Corp), a subsidiary of MiMedx) are parties
to that certain Technology License Agreement, dated August 12, 2005 (the “2005
Spine License”), concerning “Licensed Technology” (as defined in the 2005
Spine License) for all neurological and orthopedic uses, including muscular and
skeletal uses, related to the human spine;
B.
Licensor and Licensee (specifically, MiMedx) are parties to
that certain Technology License Agreement, dated August 3, 2007, as
amended by that certain First Amendment to Technology License Agreement, dated
August 3, 2007 (the “2007 Hand
License”; and, together with the 2005 Spine License, the “Prior
Agreements”), concerning “Licensed Technology” (as defined in the 2007
Hand License) for all neurological and orthopedic uses, including muscular and
skeletal uses, related to the rotator cuff and the hand (excluding the
wrist);
C.
Licensor and Licensee have entered into that certain Investment
Agreement of even date herewith (the “Investment
Agreement”) pursuant to which, among other things, Licensor has
subscribed for the “Closing Shares” (as defined in the Investment Agreement) in
exchange for the license and other rights granted by Licensor to Licensee in
this License Agreement;
D.
Licensor is the owner of certain intellectual property rights
with regard to certain biomaterials known as Salubria™ biomaterials, and such
intellectual property rights are included in the Licensed Technology (as defined
hereinafter); and
E.
Licensee is desirous of obtaining and commercializing certain
intellectual property rights under the terms set forth herein;
NOW
THEREFORE, in consideration of ten U.S. dollars ($10.00) in hand paid, the
Closing Shares, the premises, the promised performance of each of the parties of
the terms set forth herein, and for other good and valuable consideration, the
receipt and sufficiency of which are hereby acknowledged, the parties hereto,
intending to be legally bound, mutually agree as follows:
1.
Incorporation
of Recitals; Prior Agreements. The above recitals are
by this reference incorporated herein as if set forth with particularity and are
made part of this License Agreement. To the extent the Prior
Agreements are inconsistent with or contradict this License Agreement, the terms
of this License Agreement shall supersede the terms of the Prior Agreements;
provided however, that the terms of this License Agreement shall not constitute
an amendment to the Prior Agreements.
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2.
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Definitions.
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“Affiliate”
means, with respect to any Person, a Person that directly or indirectly through
one or more intermediaries, controls, is controlled by, or is under common
control with such Person. “Control”
(including the terms “controlled by” and “under common control with”) means the
possession, directly or indirectly, of the power to direct or cause the
direction of the management policies of a Person, whether through the ownership
of voting securities, by contract or credit arrangement, as trustee or executor,
or otherwise. Without limiting the foregoing, SpineMedica, LLC (a
successor by merger to SpineMedica, Corp), MiMedx Group, Inc., and LeveL
Orthopedics, LLC are Affiliates of MiMedx.
“Background
Technology” means technical and other information in the possession of
Licensor that is necessary or convenient to Practice the Licensed Technology and
that is in the public domain.
“Confidential
Information” means all confidential information and trade secrets (a)
related to the business plans and affairs, property, methods of operation,
processing systems, designs, or other information of the disclosing party and
(b) in the Field of Use and comprised in, relating to, or arising out of the
Licensed Technology that is proprietary to the disclosing party or licensed or
otherwise transferred to the disclosing party by any Person, that is not
generally known to the public, whether such information is disclosed orally, in
writing, or otherwise. Notwithstanding the foregoing, for purposes of
the license granted to Licensee herein (but not for purposes of Section 8.3
hereof), Confidential Information shall not include information that Licensor
obtains after the Effective Date and which is subject to restrictions on further
disclosure that would be breached by a disclosure to Licensee.
“Effective
Date” means the effective date of this License Agreement, as set out
above.
“Field of
Use” means all uses of surgical sheet(s) as described
hereinafter. The term “surgical
sheet” means a piece or pieces of material using a polyvinyl alcohol
cryogel that provides an anti-adhesive barrier used to impede, inhibit, or
prevent the development of adhesions that: (a) is fabricated in a substantially
planar form, noting however, that in packaging or in position, in or on the
body, the surgical sheet can conform to the shape of local anatomy or structure;
and (b) can have any perimeter shape with a thickness or thicknesses of up to
seven (7) millimeters or less. The surgical sheet can be used as an
adjunct to surgical procedures to inhibit or impede the development of adhesions
or scarring that may otherwise occur incident to the surgical procedure or to
provide a plane of dissection for a revision surgery. The surgical
sheet can also be used: (1) in repairs by patching organs or other tissues,
including, without limitation, for urinary, intestinal, colon, stomach, hernial,
gynecologic, and cardiac patches; (2) as a substitute for the dura; and (3) as
an anti-adhesive dressing or covering used externally for wounds, xxxxx, and/or
other skin conditions. Notwithstanding the foregoing, The Field of
Use shall exclude any use in articulating joints.
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“GTRC”
means Georgia Tech Research Corporation.
“GTRC
License” means that certain License Agreement, dated March 5, 1998, by
and between GTRC and Licensor, as amended from time to time.
“Improvement
Patents” means all patents or patent applications disclosing and claiming
any Improvements and all future patent applications, patents, divisions,
reissues, continuations, continuations-in-part, renewals, and extensions validly
claiming priority to any of these patents or patent applications.
“Improvements”
means any enhancements, additions, changes, supplements, or other improvements
to the Licensed Technology as they relate to the Field of Use, whether or not
patentable, that are now existing or otherwise developed by Licensor or Licensee
after the Effective Date.
“Know-How”
means all technical and other information, intellectual property, or knowledge
useful to Practice the Licensed Technology in the Field of Use in the possession
of Licensor on the Effective Date or at any time after the Effective Date that
is necessary or convenient to Practice the Licensed Technology in the Field of
Use, which is not in the public domain, including, without limitation, concepts,
discoveries, data, designs, formulae, ideas, inventions, methods, models,
assays, research plans, procedures, processes, designs for experiments and tests
and results of experimentation and testing (including, without limitation,
results of research or development), processes (including, without limitation,
manufacturing processes, specifications, and techniques), laboratory records,
chemical, clinical, analytical, and quality data, trial data, case report forms,
data analyses, reports, manufacturing data or summaries, and information
contained in submissions to and information from regulatory authorities, and
includes any rights including, without limitation, copyright, database, or
design rights protecting any of the foregoing. The fact that an item
is known to the public shall not be taken to exclude the possibility that a
compilation including the item, or a development relating to the item, is or
remains not known to the public. Notwithstanding the foregoing, Know
How shall not include information or knowledge that Licensor obtains after the
Effective Date subject to restrictions on disclosure or use by Third
Parties.
“License
Agreement” means this Technology License Agreement, as it may be amended
from time to time.
“Licensed
Patents” means (a) Patents Under License, (b) Owned Patents, and (c)
Licensor’s Improvement Patents.
“Licensed
Product” means any product or device that is developed, manufactured,
produced, expressed, used, sold or offered for sale, or licensed for use by
Licensee, its sublicensees or assignees, or their contract manufacturers,
utilizing the Licensed Technology in the Field of Use.
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“Licensed
Technology” means the Licensed Patents, the Confidential Information, the
Know How, the Improvements, and the Improvement Patents, in each and every case
only as they relate to the Field of Use.
“Licensee
Indemnitees” has the meaning set forth in Section 6.1.
“Licensor
Indemnitees” has the meaning set forth in Section 6.2.
“Losses”
has the meaning set forth in Section 6.1.
“Owned
Patents” means the patents and patent applications listed in Section II
of Appendix
A and all of Licensor’s future patent applications, patents, divisions,
reissues, continuations, continuations-in-part, renewals, and extensions thereof
or related thereto in the United States and in foreign jurisdictions validly
claiming priority to any of these patents and patent
applications. The Parties acknowledge that U.S. Patent No. 6,231,605
is a continuation-in-part of U.S. Patent No. 5,981,826. Although the
pending patent applications listed in Section II of Appendix
A are presently identified as owned by Licensor, it is possible that one
or more of the continuation applications may be owned by GTRC or may be co-owned
by GTRC and Licensor, depending on the claimed subject matter. To the
extent that GTRC has any ownership rights to the continuations listed in Section
II of Appendix
A, Licensor represents and warrants that it is the exclusive licensee
thereof pursuant to the terms of the GTRC License. The Parties agree
that if such ownership rights of a continuation patent application or issuing
patent should change to be owned in whole or in party by GTRC, then such
application or patent shall, without any action by the Parties, be
included under the term “Patents Under License.”
“Parties”
means Licensor and Licensee, and “Party”
means either one of them.
“Patents
Under License” means the patents and patent applications listed in
Section I of Appendix
A and any and all of Licensor’s future patent applications, patents,
divisions, reissues, continuations, continuations-in-part, renewals, and
extensions thereof or related thereto in the United States and elsewhere validly
claiming priority to any of these patents and patent applications.
“Person”
means any natural person, firm, partnership, association, corporation, limited
liability company, trust, business trust, or other entity.
“Practice”
means the right in the Field of Use to make, have made, manufacture, have
manufactured, use, offer to sell, sell, market, distribute, import, or export
Licensed Products.
“Rules”
has the meaning set forth in Section 8.7.
“Third
Party” means any Person other than the Parties.
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3.
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License.
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3.1 Licensor
hereby grants to Licensee an exclusive, fully-paid, worldwide, royalty-free,
perpetual, irrevocable, and non-terminable (except as provided in the
termination provisions of the GTRC License) license, with the right to
sublicense, to Practice the Licensed Technology in the Field of
Use. Licensor will grant Licensee reasonable access to and the
ability to make copies of all Background Technology and Licensed
Technology.
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3.2 Licensor
shall not itself, nor shall it directly or indirectly assist or consent to any
Third Party to, manufacture, have manufactured, use, offer for sale, sell,
market, distribute, import, or export Licensed Products or otherwise Practice
the Licensed Technology in the Field of Use.
3.3 Licensor
shall have the exclusive right and authority, in its own name, to apply for,
prosecute, and obtain Owned Patents.
3.4 Either
Party may seek to obtain Improvement Patents in its own name, subject to
applicable laws, treaties, and regulations.
3.5 Licensee
shall have the right and authority, in the name of Licensor, to file for
continuation with respect to any Licensed Patents after providing written notice
to Licensor of Licensee’s intent to make such filing.
3.6 Notwithstanding
anything herein to the contrary, Licensor shall have no right to terminate this
License Agreement or the license granted to Licensee under Section
3.1.
3.7 Licensee
hereby grants to Licensor an exclusive, fully-paid, royalty-free, irrevocable
and non-terminable license to Practice the Improvement Patents outside the Field
of Use.
4.
License
Fee. In consideration
of the license and other rights granted herein by Licensor to Licensee, Licensee
shall enter into the Investment Agreement and issue to the Licensor the Closing
Shares (as defined in the Investment Agreement). The Parties agree
and acknowledge that the Closing Shares shall constitute fair, adequate, and
legally sufficient consideration for the license and other rights granted
herein. Licensor acknowledges and agrees that the issuance or
non-issuance of Additional Shares under the Investment Agreement has no effect
whatsoever on this Agreement and the rights granted to Licensee
hereunder.
5.
Representations
and Warranties. Licensor hereby
represents and warrants to Licensee that as of the Effective Date:
5.1 Licensor
has the full right and power to grant the license set forth in Section 3 of this
License Agreement.
5.2 The
Closing Shares constitute fair, adequate, and legally sufficient consideration
for the license set forth in Section 3 of this License Agreement.
5.3 Appendix
A sets forth an accurate and complete list of all patents and patent
applications owned, under license, or otherwise controlled by Licensor that are
necessary or convenient to Practice the Licensed Technology in the Field of
Use.
5.4 Licensor
has received no notice of any claims or suits pending and, to the best knowledge
of Licensor, there are no claims or suits threatened against Licensor
challenging Licensor’s ownership of or right to use any of the Licensed
Technology, nor, to the best knowledge of Licensor, does there exist any basis
therefor.
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5.5 Licensor
has received no notice of any claims or suits against Licensor pending and, to
the best knowledge of Licensor, there are no claims or suits threatened against
Licensor alleging that any of the Licensed Technology infringes any rights of
any Third Parties in the Field of Use, nor, to the best knowledge of Licensor,
does there exist any basis therefor.
5.6 To
the best knowledge of Licensor, no person has infringed or is infringing the
Licensed Patents or has misappropriated any of the Licensed
Technology.
5.7 Licensor’s
granting of the license set forth in Section 3 of this License Agreement and
Licensee’s exercise of its rights hereunder does not and shall not constitute a
breach or default under (a) any agreement or instrument by which Licensor is
bound or (b) to the best knowledge of Licensor, any instrument affecting the
Licensed Technology.
5.8 To
the best knowledge of Licensor, Licensee’s Practice of the Licensed Technology
in the Field of Use shall not result in patent infringement or trade secret
misappropriation.
5.9 Except
as otherwise specifically provided in this Section 5, (a) the license granted in
this License Agreement is “as is” and with all faults and (b) Licensor makes no
representations or warranties, express or implied, regarding (i) merchantability
or fitness of the Licensed Technology for a particular purpose, (ii)
non-infringement of any Licensed Technology with any rights of Third Parties, or
(iii) validity or scope of any Licensed Patent.
5.10 Any
claim regarding the breach of a representation or warranty by Licensor in this
License Agreement must be made within two (2) years after the Effective
Date.
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6.
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Indemnification;
Insurance.
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6.1 Licensor
shall indemnify, defend, and hold harmless Licensee and Licensee’s sublicensees
and assignees hereunder, and their respective officers, directors, managers,
shareholders, members, employees, agents, and advisors (collectively, the “Licensee
Indemnitees”), from and against any and all loss, damage, claim,
obligation, liability, cost, and expense (including, without limitation,
reasonable attorneys’ fees and costs and expenses incurred in investigating,
preparing, defending against, or prosecuting any litigation, claim, proceeding,
or demand), of any kind or character (“Losses”)
resulting from:
(a) any
breach by Licensor of this License Agreement, including, but not limited to, any
breach of Licensor’s representations and warranties made herein, provided that
any such claim for indemnification for breach of representation or warranty must
be instituted by Licensee prior to the second (2nd)
anniversary of the Effective Date; or
(b) the
Practice by Licensor or its licensees (other than Licensee or its sublicenses or
assignees) of any of the Licensed Technology outside the Field of Use,
including, without limitation, advertising injury, personal injury, product
liability, medical malpractice, or loss or damage to medical or other data,
except to the extent such Losses result from any acts of Licensee for which
Licensor is entitled to indemnification under Section 6.2.
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6.2 Licensee
shall indemnify, defend, and hold harmless Licensor and Licensor’s officers,
directors, managers, shareholders, members, employees, agents, and advisors (the
“Licensor
Indemnitees”) from and against any and all Losses resulting
from:
(a) any
breach by Licensee of this Licensee Agreement; and
(b) the
Practice by Licensee or its sublicensees and assignees of any Licensed
Technology, including, without limitation, advertising injury, personal injury,
product liability, medical malpractice, or loss or damage to medical or other
data, except to the extent such Losses result from any acts of Licensor for
which Licensee is entitled to indemnification under Section 6.1.
6.3 During
the term of this Agreement, Licensee shall maintain product liability insurance
in reasonable amounts and to the extent available and name Licensor as
additional insured if Licensee can reasonably do so and without incurring
additional premium.
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7.
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Patent
Maintenance, Infringement, and Enforcement.
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7.1 Licensor
shall maintain the Owned Patents at its sole cost and expense. If
Licensor elects not to pay or for any reason fails to pay any maintenance or
annuity fees for any of the Licensed Patents as they relate to the Field of Use
within the non-surcharge payment time window, Licensee shall have the right (but
not the obligation) to pay any such maintenance or annuity fees and seek
reimbursement thereof from Licensor. Licensor shall pay such
reimbursement within ten (10) days after Licensee’s written request
therefor.
7.2 If
Licensor or Licensee determines that any Licensed Patent or Licensee’s rights in
the Licensed Technology are being infringed in any field of use, or a claim
arises that the Licensed Technology infringes the rights of a Third Party, then
Licensor or Licensee (as applicable) shall notify promptly the other Party,
giving as many particulars concerning such infringement as shall be practicable
at the time.
7.3 Upon
becoming aware of a potential infringer or an asserted infringement, Licensor
shall diligently investigate and shall determine, in the exercise of reasonable
judgment and good practice, whether the activities in question in fact
constitute infringement. The Parties shall promptly confer with
respect to the initiation and prosecution of litigation against an alleged
infringer, or defense of a Third Party infringement claim, as the case may be,
but Licensor shall have the right of ultimate decision with respect to a breach
outside of the Field of Use and Licensee shall have the right of ultimate
decision with respect to a breach inside the Field of Use, including, without
limitation, the right to settle or compromise any claim or consent to the entry
of any judgment with respect to any claim.
7.4 Subject
to Licensee’s right to initiate an infringement action regarding the Licensed
Technology in the Field of Use in Section 7.5 below, Licensor shall, in the
event that an infringement appears to be occurring in any application involving
the Licensed Technology outside the Field of Use, have the first right,
discretion, and authority (but not obligation), at its sole expense, to either
defend a Third Party claim, or bring infringement proceedings naming the
asserted infringer within not more than ninety (90) days of a determination of
probable infringement at its own cost and retain all recovery therefrom, and
Licensee shall provide all necessary assistance and cooperation reasonably
requested by Licensor, at Licensor’s sole expense. In furtherance of
such right, Licensee shall join Licensor as a party plaintiff in any such suit
whenever requested by Licensor or required by applicable law, at Licensor’s sole
expense. If the Licensor fails for any reason to take action to
defend or to bring such infringement proceedings within ninety (90) days, and
failure to do so would reasonably jeopardize Licensee’s ability to Practice the
Licensed Technology in the Field of Use, Licensee shall have the right to do so
(including, without limitation, the right to require Licensor to join Licensee
as a party plaintiff in any such suit whenever requested by Licensee or required
by applicable law) at its own expense and to retain all damages or other
recovery.
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7.5 With
regard to infringement by a Third Party of the Licensed Technology appearing to
be solely in the Field of Use, Licensee shall have the first right, discretion,
and authority (but not obligation) to prosecute at its own expense any such
infringement of any Licensed Patent or the other Licensed Technology occurring
in the Field of Use at its own cost, and to keep any recovery or damages for
infringement derived therefrom. Licensor agrees to cooperate as a
necessary party in any proceeding as appropriate, including, without limitation,
join Licensee as a party plaintiff in any such suit whenever requested by
Licensee or required by applicable law, at Licensee’s sole
expense. If Licensee does not elect to bring such infringement
proceedings within ninety (90) days of a determination of probable infringement,
and failure to do so would reasonably jeopardize Licensor’s ability to Practice
outside the Field of Use, Licensor shall have the right but not obligation to do
so at its own expense and to retain all damages or other recovery. In
furtherance of such right, Licensee shall join Licensor as a party plaintiff in
any such suit whenever requested by Licensor or required by applicable law, at
Licensor’s sole expense.
7.6 Notwithstanding
the foregoing provisions of this Section 7, in the event a recovery relates to
both the Field of Use and other applications of the Licensed Technology, then
any damages or other recovery shall, subject to reimbursement of attorneys’ fees
and costs and expenses incurred in investigating, preparing, defending against,
or prosecuting any litigation, claim, proceeding, or demand, be appropriately
allocated between Licensor and Licensee. If the Parties are
unable to agree on an appropriate allocation of damages or other recovery within
ninety (90) days, they shall submit the decision to arbitration pursuant to
Section 8.7 hereof.
7.7 Each
Party will provide reasonable cooperation in connection with any adversarial
proceeding conducted by the other Party involving any Licensed Patent,
including, without limitation, producing documents, answering interrogatories,
and sitting for depositions, at no cost to the other Party other than recovery
of its actual out-of-pocket expenses directly incurred in providing such
cooperation.
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8.
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Miscellaneous.
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8.1 Notices. All
notices, consents, waivers, requests, instructions, or other communications
required or permitted hereunder shall be in writing or by written electronic
transmission, and shall be deemed to have been duly given if (a) delivered
personally (effective upon delivery), (b) sent by a reputable, established
international courier service that guarantees delivery within three (3) business
days (effective upon receipt), (c) mailed by certified mail, return receipt
requested, postage prepaid (effective upon receipt), or (d) sent by facsimile or
e-mail with confirmation of transmission by the transmitting equipment
(effective upon receipt), addressed as follows (or to such other address as the
recipient may have furnished for the purpose pursuant to this Section
8.1):
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If to
Licensor:
SaluMedica,
LLC
0000
Xxxxxxx Xxxx, X.X., Xxxxx 000
Xxxxxx,
Xxxxxxx 00000
Attention:
Xxxxxx X. Xxxxxx
Facsimile:
(000) 000-0000
Email: xxxxx.xxxxxx@xxxxxxxxxx.xxx
With a
copy (which shall not constitute notice) to:
Xxxxxxx
X. Xxxxxxx, Esq.
Xxxxxxxxx
Xxxxxxx Xxxxxxxxx, LLP
0000
Xxxxxxxxx Xxxxxx X.X.
000
Xxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxx,
Xxxxxxx 00000
Facsimile:
000-000-0000
Email:
xxxxxxxx@xxxxxx.xxx
If to
Licensee:
MiMedx,
Inc.
0000
Xxxxxxx Xxxx, Xxxxx 000
Xxxxxx,
Xxxxxxx 00000
Attention: Xxxxx
Xxxxxx, Chairman
Facsimile: (000)
000-0000
Email:
xxxxxxx@xxxxxxxxxxxxxxx.xxx
With a
copy (which shall not constitute notice) to:
G. Xxxxxx
Xxxxxxx, Esq.
Xxxxxx
Xxxxxxx Xxxxxxxxx & Xxxx, PLLC
0000 Xxxx
Xxxxxxxxx Xxxxxx, Xxxxx 0000
Xxxxxxx,
Xxxxxxx 00000
Facsimile:
(000) 000-0000
Email:
XXxxxxxx@xxxx.xxx
Changes
to the above notification addresses may be made by notice to the Parties in the
manner set forth above.
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8.2 Assignment and
Sublicense. Licensee may assign this License Agreement, assign
or sublicense any rights under this License Agreement, and delegate any of its
obligations under this License Agreement to any Third Party; provided however,
that (a) Licensee must comply with the notice and payment obligations set forth
in Section 4.1 of the GTRC License, (b) the sublicense, assignment, or
delegation shall not affect Licensee’s obligations to Licensor under this
License Agreement and Licensee shall remain liable as a primary obligor to
Licensor for breach of this License Agreement by Licensee or its sub-licensees,
assignees, or delegates, (c) the sublicense, assignment, or delegation must
include a binding obligation on the sub-licensee, assignee, or delegate to
comply with all the patent protection, confidentiality, and other obligations of
Licensee in this License Agreement subject to such sublicense, assignment, or
delegation, and (d) Licensee must provide Licensor reasonable prior written
notice providing the terms of such sublicense, assignment, or delegation, as
they relate to insuring the Third Party’s compliance with the terms of this
License Agreement, to the extent such notification obligation can be complied
with without breach of any confidentiality obligation of
Licensee. Licensor shall have the right to assign this License
Agreement, provided that the assignment must occur in conjunction with an
assignment of the Licensed Technology. No further contribution or
payment to Licensor shall be due in the event of a sublicense, assignment, or
delegation by Licensee. Without limiting the generality of the
foregoing, this License Agreement shall survive unimpaired and remain in full
force and effect in the event of any sale of assets, merger, or other
transaction involving the sale of assets or capital stock of either Licensor or
Licensee.
8.3 Confidentiality. For
a period of two (2) years after the Effective Date, each Party covenants and
agrees, with respect to the Confidential Information of the other Party, as
follows: (a) to receive and hold such Confidential Information in confidence;
(b) to protect and safeguard such Confidential Information against unauthorized
use, publication, and disclosure; (c) not to use any of such Confidential
Information or derivatives thereof except as permitted by this License
Agreement; and (d) to restrict access to such Confidential Information to those
of its officers, managers, directors, employees, agents, and advisors who
clearly have a need to access to such Confidential
Information. Notwithstanding the foregoing, after such two (2) year
period, any Confidential Information that is also a trade secret under
applicable law shall continue to be subject to the obligations imposed in this
Section as long as it remains a trade secret.
8.4 Binding
Agreement. This License Agreement shall not be binding upon
the Parties until it has been signed herein below by or on behalf of each
Party. No amendment or modification hereof shall be valid or binding
upon the Parties unless made in writing and signed as aforesaid.
8.5 Severability. If
any section of this License Agreement is found by a court of competent
jurisdiction to be invalid, illegal, or unenforceable in any respect for any
reason, the validity, legality, and enforceability of any such section in every
other respect and the remainder of this License Agreement shall continue in
effect so long as this License Agreement still expresses the intent of the
Parties. If the intent of the Parties, however, cannot be preserved,
this License Agreement either shall be renegotiated or shall be
terminated.
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8.6 Governing
Law. This License Agreement shall be interpreted and
construed, and the legal relations between the Parties shall be determined, in
accordance with the laws of the State of Georgia, without regard to such
jurisdiction’s conflicts of laws rules.
8.7 Arbitration. Any
dispute, claim, or controversy arising out of or in connection with this License
Agreement, including, without limitation, any question regarding its existence,
validity, or termination, shall be finally determined by arbitration in
accordance with the Commercial Arbitration Rules of the American Arbitration
Association (the “Rules”). Unless
the Parties shall otherwise mutually agree, there shall be one (1)
arbitrator. Any judgment or award rendered by the arbitrator shall be
final, binding, and nonappealable. The place of arbitration shall be
Atlanta, Georgia. Neither of the Parties shall contest the choice of
Atlanta, Georgia as the proper forum for such dispute, and notice in accordance
with Section 8.1 shall be sufficient for the arbitrator to conduct such
proceedings. If the Parties are unable to agree on an arbitrator, the
arbitrator shall be selected in accordance with the Rules. In
resolving any dispute, the Parties intend that the arbitrator apply the
substantive laws of the State of Georgia, without regard to the choice of law
principles thereof. The Parties intend that the provisions to
arbitrate set forth herein be valid, enforceable, and
irrevocable. The Parties agree to comply with any award made in any
such arbitration proceedings that has become final in accordance with the Rules
and agree to enforcement of, or entry of judgment upon such award, by any court
of competent jurisdiction. Without limiting the provisions of the
Rules, unless otherwise agreed in writing by the Parties or permitted by this
License Agreement, the Parties shall keep confidential all matters relating to
the arbitration or the award, provided, such matters may be disclosed (a) to the
extent reasonably necessary in any proceeding brought to enforce the award or
for entry of a judgment upon the award and (b) to the extent otherwise required
by law. Notwithstanding any provision of the Rules to the contrary,
the Party other than the prevailing Party in the arbitration shall be
responsible for all of the costs of the arbitration, including, without
limitation, legal fees and other costs associated with such arbitration incurred
by either Party.
8.8 Compliance with Applicable
Laws. Licensee agrees to comply with all governmental laws and
regulations applicable in connection with the Practice of the Licensed
Technology in the Field of Use.
8.9 Headings. The
headings of sections are inserted for convenience of reference only and are not
intended to be part of or to affect the meaning or interpretation of this
License Agreement.
8.10 Counterparts. This
License Agreement may be executed in two or more counterparts or by facsimile
signature, each of which shall be deemed an original and which together shall
constitute one instrument.
8.11 Authority. The
person(s) signing on behalf of Licensor and Licensee, respectively, hereby
warrant and represent that they have authority to execute this License Agreement
on behalf of the Party for whom they have signed.
8.12 Representation by
Counsel. Each Party acknowledges that it has been represented
by counsel in connection with the negotiation and drafting of this License
Agreement and that no rule of strict construction shall be applied to either of
them as the drafter of all or any part of this License Agreement.
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8.13 Entire
Agreement. This License Agreement constitutes the entire
agreement between the Parties with respect to the subject matter hereof,
supersedes all previous express or implied promises or understandings related to
the subject matter hereof, and may not be varied, amended, or supplemented
except by a writing of even or subsequent date executed by both Parties and
containing express reference to this License Agreement.
8.14 No
Waiver. The failure of either Party to enforce at any time any
of the provisions of this License Agreement, or any rights in respect thereto,
will in no way be considered a waiver of such provisions, rights, or elections
with respect to subsequent events or in any way to affect the validity and the
enforceability of this License Agreement.
[SIGNATURES
ON NEXT PAGE]
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IN
WITNESS WHEREOF, the Parties have affixed their signatures to this Technology
License Agreement as of the Effective Date.
|
Agreed
to:
|
Agreed
to:
|
|
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SALUMEDICA,
LLC
|
MIMEDX,
INC.
|
|
|
By:
/s/ Xxxxxx X.
Xxxxxx
|
By:
/s/ Xxxxxxx X.
Xxxxxx
|
|
|
Name:
Xxxxxx X.
Xxxxxx
|
Name:
Xxxxxxx X.
Xxxxxx
|
|
|
Title:
President
|
Title:
Executive Vice
President
|
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Appendix
A
Issued
Patents and Pending Patent Applications
I.
Patents Under License:
U.S.
Patent No. 5,981,826, entitled “Poly(vinyl alcohol) cryogel” (owned by Georgia
Tech Research Corporation under exclusive license to SaluMedica,
LLC)
European
patent No. EP0991402, issued in the following countries:
Austria,
Belgium, Switzerland, , Denmark, Spain, Finland, France, United Kingdom, Greece,
Ireland, Italy, Luxembourg, Monaco, Netherlands, Portugal and
Sweden.
German
Patent No. 69828050.4.
Australian
Patent No. 728426.
Japanese
Patent No. 0000000.
II.
Owned Patents:
U.S.
Patent No. 6,231,605, entitled “Poly(vinyl alcohol) hydrogel”
U.S.
Patent Application Publication No. 2003-0008396, entitled “Poly(vinyl alcohol)
hydrogel”
U.S.
Patent Application Publication No. 2004-0143329, entitled “Poly(vinyl alcohol)
hydrogel”
U.S.
Patent Application Publication No. 2005-0106255, entitled “Poly(vinyl alcohol)
hydrogel”
U.S.
Patent Application Publication No. 2005-0071003, entitled “Poly(vinyl alcohol)
hydrogel”
U.S.
Patent Application 11/626,405, entitled Methods Of Producing PVA Hydrogel
Implants and Related Devices
U.S.
Patent Application 11/837,027, entitled Methods of Making Medical Implants of
Poly(Vinyl Alcohol) Hydrogel
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