EXHIBIT 10.9
THIRD AMENDMENT TO
TECHNOLOGY TRANSFER AND LICENSE AGREEMENT
This Third Amendment to Technology Transfer and License Agreement (this
"Amendment") is entered into as of March 10, 2000, by and between SonoSite, Inc.
("SonoSite" or "SONO") and ATL Ultrasound, Inc. ("ATL).
RECITALS
A. ATL and SonoSite are parties to that certain Technology Transfer and
License Agreement, dated as of April 2, 1998, as previously amended (the
"License Agreement"), which provides for the allocation of certain rights to
technology as between ATL and SonoSite; and
B. ATL and SonoSite desire to amend the License Agreement as set forth in
this Amendment to provide for the respective rights of the parties to products
and joint inventions in their respective markets.
AGREEMENT
In consideration of the terms and conditions provided below and for other
good and valuable consideration the receipt and sufficiency of which is hereby
acknowledged, the parties hereto agree to amend the License Agreement as
follows:
Section 1.0 Definitions
Paragraph (b) of Section 1.0 of the License Agreement is amended by adding
a second paragraph as follows:
Notwithstanding the generality of the foregoing, "ATL Technology"
shall not include detailed specification documents, software or
records that are used solely to reduce to practice, in current or
future commercially-released ATL ultrasound products, the ATL
Technology described in the preceding paragraph ("ATL Product-Specific
Data"). ATL Product-Specific Data may include, without limitation,
component part and assembly specification drawings or computer aided
design data files, as well as manufacturing fabrication, assembly, and
test procedures, to the extent any of the foregoing are associated
with a specific current or future commercially-released ATL product or
ATL product component. While excluded from the definition of ATL
Technology, such ATL Product-Specific Data may be selected and made
available to SonoSite at ATL's sole discretion to describe ATL
Technology for the purposes of this Agreement.
Paragraph (c) of Section 1.0 of the License Agreement is amended by adding
a second paragraph as follows:
Notwithstanding the generality of the foregoing, "SONO
Technology" shall not include detailed specification documents,
software or records that are used solely to reduce to practice, in
current or future commercially-released SonoSite ultrasound products,
the SONO Technology described in the preceding paragraph ("SonoSite
Product-Specific Data"). SonoSite Product-Specific Data may include,
without limitation, component part and assembly specification drawings
or computer aided design data files, as well as manufacturing
fabrication, assembly, and test procedures, to the extent any of the
foregoing are associated with a specific current or future
commercially-released SonoSite product or SonoSite product component.
While excluded from the definition of SONO Technology, such SonoSite
Product-Specific Data may be selected and made available to ATL at
SonoSite's sole discretion to describe SONO Technology for the
purposes of this Agreement.
Paragraph (d) of Section 1.0 of the License Agreement is deleted in its
entirety and replaced with the following paragraph (d):
(d) "Handheld Ultrasound Devices" shall mean an ultrasound system
including a scanhead, a display device (or a data transmitter in lieu
of a display device), and all intermediate components, together with
all housings, controls, power sources, and output interfaces connected
thereto, which do not weigh in the aggregate more than ten pounds.
Handheld Ultrasound Devices shall include additional or substitute
components intended for use with and attachment to such an ultrasound
system which, together with such system, meet the aggregate ten pound
limitation. The weights of any peripheral devices (specifically
excluding the components referred to in the immediately preceding
sentence) which may be connectable to such an ultrasound system, such
as printers, VCRs, auxiliary monitors, battery chargers, and support
structures such as brackets, and mobile or immobile stands (so long as
the Handheld Ultrasound Device is not designed solely for use in
conjunction with such support structures) shall not be included in
such weight computation. Handheld Ultrasound Devices may be used with
a cart that has no ultrasound signal path between the Handheld
Ultrasound Device and the cart and its components except for a video
output or summed digital signal output, and that may utilize a
bidirectional communication protocol (for example, and without
limitation, a video or summed digital signal) to exchange data or
images with off-line review stations, archiving stations or non
real-time image or data processing devices. This Section shall not
prevent ATL from using wireless ultrasound probes with its
over-fifteen-pound ultrasound systems.
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Section 2.5 Disclosure of Technology
Section 2.5 of the License Agreement is deleted in its entirety and
replaced with the following Section 2.5:
2.5. Disclosure of Technology. At reasonable intervals during the
three-year-period following the Effective Date, the parties shall meet
to disclose technology developed by the parties that is included
within the scope of the license each party granted to the other party
under the terms of this Agreement. Any technology that is disclosed,
including any material and information disclosed during the meetings,
shall be subject to the provisions in this Agreement. If SonoSite
requests additional engineering support from ATL regarding ATL
Technology, beyond these periodic meetings, such support will be
provided and charged separately as an engineering service pursuant to
the rates and terms of the relevant service agreement between the
parties. If ATL requests additional engineering support from SonoSite
regarding SonoSite Technology, beyond these periodic meetings, such
support will be provided and charged separately as an engineering
service pursuant to SonoSite's then-current rates and terms for such
services.
In addition, not less often than once during each six month period
during the three-year period following the Effective Date, ATL shall
provide SonoSite a report concerning ATL Technology developed or
discovered during the previous six-month period, and SonoSite shall
provide ATL a report concerning SONO Technology developed or
discovered during the previous six-month period. Such reports shall
include, at a minimum, a list of all patents issued and all patent
applications filed during the six-month period covered by the report.
ATL shall disclose to SonoSite the detailed specifications of all
SonoSite products developed by ATL for SonoSite, including all
information needed to manufacture and test the products (to include
manufacturing process and procedure documentation, test software and
source code).
Section 3.0 Royalty Payments
The phrase "SONO and its distributors, licensee, and agents" in the first
paragraph of Section 3.0 is deleted and replaced with the word "SONO".
Section 3.1 Defined Terms
The second and third paragraphs of Section 3.1 are deleted in their
entirety and replaced with the following paragraph:
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For the purposes of this Section the term "net revenues" shall mean
the gross revenues from the sale, licensing, and/or billable parts and
labor resulting from after-the-sale service of Embedded Ultrasound
Devices, Handheld Ultrasound Devices or Highly Portable Ultrasound
Devices actually received by SONO (including its subsidiary companies
and any other entities at least 50% owned by SONO or controlled by
SONO), less any taxes (except income taxes) on the Devices, credits
for returned Devices, quantity discounts actually given by SONO or its
licensees, freight allowances, cash discounts actually given by SONO,
and any agent's commissions actually paid by SONO. No royalty shall be
payable to ATL by SONO with respect to accessories to Embedded
Ultrasound Devices, Handheld Ultrasound Devices or Highly Portable
Ultrasound Devices that are manufactured to SONO's functional design
specifications, but which are developed or manufactured by a third
party using only such third party's technology.
Section 8.0 Joint Inventions
The License Agreement is amended by adding a new Article VIII as follows:
VIII. JOINT INVENTIONS
8.0 Any patent applications (including, without limitation, any
provisional application) filed by either party after April 6, 1998,
claiming inventions made jointly by employees of SonoSite and ATL
after such date ("Joint Patents") shall give rise to the rights of
SonoSite and ATL set forth in this Section 8.
8.1 SonoSite shall have the exclusive right under all Joint Patents to
import, make, sell and use Handheld Ultrasound Devices and Highly
Portable Ultrasound Devices from the Effective Date until April 6,
2003 (the "Exclusivity Period"). Such right includes the exclusive
right to sublicense others under all Joint Patents to import, make,
sell and use Handheld Ultrasound Devices and Highly Portable
Ultrasound Devices during the Exclusivity Period. During the
Exclusivity Period, ATL shall not import, make, sell, or use, or
license, sublicense, or otherwise grant or transfer to any third party
the right to import, make, sell or use, any Handheld Ultrasound Device
or Highly Portable Ultrasound Device under any Joint Patent.
8.2 ATL shall have the exclusive right under all Joint Patents to
import, make, sell and use ultrasound products that are not Handheld
Ultrasound Devices or Highly Portable Ultrasound Devices during the
Exclusivity Period. Such right includes the
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exclusive right to sublicense others under all Joint Patents to
import, make, sell and use ultrasound products which are not Handheld
Ultrasound Devices or Highly Portable Ultrasound Devices during the
Exclusivity Period. During the Exclusivity Period, SonoSite shall not
import, make, sell or use, or license, sublicense or otherwise grant
or transfer to any third party the right to import, make, sell or use
any ultrasound product that is not a Handheld Ultrasound Device or
Highly Portable Ultrasound Device under any Joint Patent.
8.3 After April 6, 2003, SonoSite shall have the nonexclusive right
under all Joint Patents to import, make, sell and use any and all
ultrasound products, without the right to sublicense. SonoSite shall
continue to have the exclusive right to sublicense others under all
Joint Patents to import, make, sell, and use Handheld Ultrasound
Devices and Highly Portable Ultrasound Devices, and ATL shall not
sublicense or otherwise grant or transfer to any third party the right
to import, make, sell, or use any Handheld Ultrasound Device or Highly
Portable Ultrasound Device under any Joint Patent.
8.4 After April 6, 2003, ATL shall have the nonexclusive right under
all Joint Patents to import, make, sell and use any and all ultrasound
products, without the right to sublicense. ATL shall continue to have
the exclusive right to sublicense others under all Joint Patents to
import, make, sell and use ultrasound products which are not Handheld
Ultrasound Devices or Highly Portable Ultrasound Devices, and SonoSite
shall not sublicense or otherwise grant or transfer to any third party
the right to import, make, sell or use, any ultrasound product that is
not a Handheld Ultrasound Device or Highly Portable Ultrasound Device
under any Joint Patent.
8.5 Attachment 8.5 lists all patents and applications identified as of
the date of this Third Amendment for filing as Joint Patents. As other
Joint Patents are identified they will be added to Attachment 8.5 by
mutual agreement of the parties. Ownership of the presently identified
registrations for Joint Patents will be assigned as indicated in
Attachment 8.5. The assignment of ownership for future Joint Patents
will be determined by the parties with consideration to relationships
with previously filed applications and to assignment which will result
in the best protection under the patent laws. If none of these
considerations apply, ownership of each Joint Patent application will
be to assigned to SonoSite.
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8.6 The legal work on all Joint Patents, and all legal and filing fees
associated therewith, will be the responsibility of the assignee
company, unless the parties agree otherwise in a particular situation.
Each of SonoSite and ATL release each other and the attorneys and
agents of the other party from any and all claims which they may have
concerning the performance of legal work on Joint Patents and the
validity and scope of any Joint Patent.
Except as amended by this Agreement, the License Agreement and the First
and Second Amendments are unchanged and continue in full force and effect.
The parties hereto have caused this Agreement to be executed by their
authorized representatives as of the date first indicated above.
ATL: SonoSite:
ATL Ultrasound, Inc. SonoSite, Inc.
By /s/ Xxxxxxx X. Xxxxxxxxx By /s/ Xxxxx X. Xxxxxxx
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Its President Its President, CEO
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Attachment 8.5 - Joint Patents
1. "Cordless Scanheads," by XX Xxxxx, Xxxxxx Xxxxxxxxx, Xxx Xxxxxxx and
Xxxxxxx Xxxxxxx, assigned to ATL and presently filed in the U.S. as application
serial numbers 09/197,398, 09/197,196, 09/197,186 and 09/196,852.
2. Matrix Filters," by XX Xxxxx and Xxx Xxxxxxxx, assigned to SonoSite.
3. "High Frame Rate Pulse Inversion and RF Interpolation Imaging," by XX
Xxxxx and Xxxxx Xxxxxxxx, assigned to ATL and presently filed in the U.S. as
application serial numbers 09/252,053 and 09/251,563.
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