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EXHIBIT 10.27
LICENSE AGREEMENT
This Agreement made this ___ day of July, 1995 by and between Xx. Xxxxxxxx
X. Xxxxxxxx, an individual residing in Chicago, Illinois (hereinafter
"Licensor") and Strato/Infusaid Inc., a Massachusetts corporation, having a
place of business in Norwood, Massachusetts (hereinafter "Licensee").
WITNESSETH
WHEREAS, Licensor owns United States Patent No. ***
WHEREAS, Licensee wishes to obtain and Licensor is willing to grant to
Licensee the non-exclusive right and license to make, have made for it, use and
sell products covered by Licensor's *** patent.
NOW, THEREFORE, in consideration of the mutual covenants and promises made
herein and for other good and valuable consideration, the parties agree as
follows:
I. DEFINITIONS
A. LICENSED PATENT RIGHTS -- Shall mean United States Patent No. *** and
all foreign counterparts for the *** patent and any divisions, continuations,
continuations-in-part or reissues of such patents.
B. LICENSED PRODUCTS -- Shall mean any product that is covered by any
claim of the *** patent, whether sold for hemodialysis or non-hemodialysis
applications in catheter, kit or implantable port form.
C. NET SALES -- Shall mean the amount invoiced to Licensee's customers
(including End Users and Distributors) f.o.b. Licensee's factory, exclusive of
allowances for returns or taxes, but shall
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include all *** or other product covered by this Agreement.
D. End User -- Shall mean any bona fide customer of Licensee who
purchases Licensed Products for purposes other than resale to unrelated third
parties.
E. Distributor -- Shall mean any entity that purchases Licensed Products
for purposes of resale to unrelated third parties.
II. LICENSE GRANT
A. Licensor hereby grants Licensee, and the specific affiliated companies
identified in Appendix A, a personal, non-exclusive, non-transferable right and
license under said Licensed Patent Rights to make, have made for it, use and
sell Licensed Products. Licensee shall have no right to grant sublicenses under
any of the Licensed Patents. The sale of a Licensed Product for which a royalty
has been paid under this Agreement shall not be considered as the grant of a
sublicense.
B. No license or right is granted by implication or otherwise with
respect to any patent or pending patent application of Licensor except as
specifically set forth in the definition of Licensed Patent Rights.
III. ROYALTIES
A. Licensee shall pay Licensor *** upon execution of this Agreement, as
full payment of any obligations or liabilities for any past acts of infringement
of the
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*** patent. The signed Agreement, with payment, shall be sent to Licensor's
attorneys, Niro, Scavone, Xxxxxx & Niro, 000 Xxxx Xxxxxxx, Xxxxx 0000, Xxxxxxx,
Xxxxxxxx 00000-0000.
B. Commencing effective January 1, 1995, Licensee shall also pay
Licensor a continuing royalty for all Licensed Products manufactured or sold by
Licensee. The royalties due shall be as follows:
FOR SALES MADE DIRECTLY TO END USERS
1. For all Licensed Products which include or operate with *** that
are covered by any claim of U.S. Patent No. ***, the royalty due shall be
*** of Licensee's Net Sales of Licensed Products.
2. For all Licensed Products *** or other form that are covered by
any claim of U.S. Patent no. *** the royalty due shall be *** of
Licensee's Net Sales of Licensed Products.
FOR SALES MADE TO DISTRIBUTORS
3. For all Licensed Products which include or operate with *** that
are covered by any claim of U.S. Patent No. *** the royalty due shall be
*** of Licensee's Net Sales of Licensed Products.
4. For all Licensed Products *** or other
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form that are covered by any claim of U.S. Patent No. *** the royalty due
shall be *** of Licensee's Net Sales of Licensed Products.
C. In the case of all royalties due Licensor, there shall be included in
the royalty base for the purpose of determining the royalties due, the Net
Sales of all *** which are sold in combination with, or packaged with, the ***
D. In the event Licensor shall hereafter *** Licensor shall *** license
under such more favorable rates for each patent in which *** provided Licensee
***
E. In the event the applicable claims of the *** patent are finally
adjudged to be invalid or unenforceable in any final order or judgment in any
civil action or other proceeding from which no appeal has been or can be taken,
then Licensee shall receive the benefit of any such final order or judgment as
if it were a party to that proceeding including, specifically, relief from any
obligation to pay further royalties under the applicable claims of the ***
patent.
IV. BOOKS, RECORDS AND PAYMENTS
A. Licensee shall keep accurate and complete books and
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records sufficient to determine the quantity of Licensed Products sold by
Licensee to the extent necessary to accurately reflect all items material to the
determination of the amounts due and owing Licensor and, at the written request
of Licensor, Licensee shall cause the same to be reviewed by an outside
certified public accountant named by Licensor. If the audit review shows a
discrepancy of more than *** Licensee shall pay all expenses of the audit
review. If the audit review shows a discrepancy of *** or less, Licensor shall
pay all expenses of the audit review.
B. The books and records of Licensee shall identify the quantity of all
Licensed Products sold by Licensee, with credit for returns for which credit is
given to customers. Such records shall show separately the quantity of Licensed
Products sold to each End User or each Distributor net price and the date of
invoice and shipment. Sales shall be considered as made on the date of invoice
unless shipped more than thirty (30) days before invoiced, in which event such
sales shall be considered as made on the date of shipment.
C. Within one month after the last day of each calendar quarter, Licensee
shall send Licensor a report, in writing, certified by an officer of Licensee as
to its correctness, showing separately the quantity of Licensed Products subject
to a royalty payment that were sold to End Users and to Distributors and then
computing the amount of royalty due Licensor for the preceding quarter as to
each category of customer, except that the reports
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for the first, second and third quarters of 1995 shall be due no later than
October 31, 1995. The initial quarter shall begin on January 1, 1995 and end
on March 30, 1995. Each such report shall be accompanied by the proper royalty
amount then payable to Licensor as shown in such report. The report due for
each quarter which coincides with the end of a calendar year or portion of a
calendar year in which termination of this Agreement occurs shall also include
a statement of the total payments for such year made pursuant to this Agreement.
D. All such reports, books, records and accounts shall be retained for
not less than three (3) years, and shall be open to confidential examination at
Licensor's expense at all reasonable times, not more than twice per year, by an
independent outside certified public accountant designated by Licensor. The
information obtained in any such audit will be kept in confidence and disclosed
only to Licensor and his counsel for use in evaluating Licensor's compliance
with this Agreement.
E. Any failure by Licensee to keep and maintain such books and records
or to provide reports or payments to Licensor as required by this Agreement
shall constitute a material breach of this Agreement.
F. In the event an audit of Licensee's books and records by an outside
certified public accountant establishes that Licensee's payments to Licensor
are deficient by an amount greater than *** of the amount actually due Licensor,
Licensee shall be required, upon receipt of notice of such deficiency, to pay
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Licensor the total amount due, plus a penalty of *** the interest on such
deficiency calculated at the prime rate charged by major New York banks at the
time the deficiency is discovered, unless the deficiency results from a failure
by Licensee to pay royalties on a product or products that are not Licensed
Products.
G. Within thirty (30) days of December 31, 1995, Licensee shall provide
Licensor (at Licensee's cost) one copy of each item of sales and promotional
literature for each Licensed Product and a single sterile or non-sterile sample
of each Licensed Product in its customary packaging. Thereafter, Licensee
shall notify Licensor of any product which has been discontinued and shall
provide Licensor with one copy of each item of sales or promotional literature
which has been modified or changed in any way and a single sterile or
non-sterile sample of each Licensed Product which has been modified or changed
in any way within thirty (30) days of the discontinuation or implementation of
such modification or change. The cost charged Licensor for each sample shall
be separately invoiced to Licensor and shall not include any xxxx-up for profit
of any kind. Licensor shall also have the right to return any samples for full
credit provided the packaging for such samples is unopened. Within thirty (30)
days of December 31 of each year, Licensee shall also provide Licensor with a
complete product catalog identifying the products Licensee sells.
V. TERM AND TERMINATION
A. This Agreement shall continue in full force and effect,
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unless sooner terminated as herein provided, with respect to the various
Licensed Products licensed hereunder, until the expiration date of each
corresponding Licensed Patent Right covering each Licensed Product.
B. Licensor may terminate this Agreement upon written notice to
Licensee, if:
1. Licensee shall become insolvent, or shall make any assignment for
the benefit of creditors, or Licensee is adjudicated bankrupt, or a
receiver or trustee of the Licensee's properties shall be appointed.
2. Licensee shall remain in default of any payment or report required
hereunder or fail to comply with any other provision of this Agreement
for a period of more than forty-five (45) days after written notice
specifying such default or failure is given Licensee by Licensor.
3. Licensee shall otherwise continue to violate any term, condition
or provision of this Agreement for a period of more than forty-five (45)
days after written notice specifying such violation is given Licensee by
Licensor.
In the event Licensee cures any default within the forty-five (45) day time
period set forth above, the subject Agreement shall not be terminated and shall
remain in full force and effect.
C. Licensee may terminate this Agreement for any reason by giving
Licensor ninety (90) days written notice. Termination shall become effective
upon expiration of the ninety (90) day period.
D. Termination of this Agreement shall not relieve Licensee
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of the obligation to make payments accruing under this Agreement prior to
termination nor shall it bar Licensor from obtaining any relief to which
Licensor may be entitled in law or in equity.
VI. ASSIGNMENTS
A. This Agreement shall inure to the benefit of, and be binding upon,
the successors, legal representatives or assigns of Licensor.
B. This Agreement and the licenses granted hereunder, are personal and
shall not be assigned by Licensee to any other business or entity (except
entities wholly-owned by the same shareholders of Licensee or completely
controlled by Licensee), nor shall it be extended to any third party that
purchases any part of Licensee's assets or stock, without the prior written
consent of Licensor. Notwithstanding the foregoing, however, Licensee shall
have the right to assign this License as part of the sale of the entire
business or assets to which this Agreement relates, provided such sale is not
made to any entity that is involved in litigation with Licensor relating to the
Licensed Patents (including appeals) at the time any such assignment, purchase,
sale or transfer is made.
VII. PATENT MARKING
Licensee agrees to apply to all Licensed Products sold under this
Agreement, where it is possible to do so, and in all events to packages in
which such products are sold, except for packages of products in inventory as
of the date of this License Agreement, appropriate markings stating that the
products are licensed under
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the appropriate Licensed Patent Rights. Where possible, patent markings should
also appear on product literature, as well as packaging.
VIII. SEVERABILITY CLAUSE
If any part, provision, covenant or condition of this Agreement shall be
held to be invalid, illegal, void or unenforceable in any respect, such
invalidity, illegality, voidness or unenforceability shall not affect any other
parts of this Agreement, and this Agreement shall be construed as if such
invalid, illegal, void or unenforceable part, provision, covenant or condition
had never been contained herein. If, moreover, any one or more of the parts,
provisions, covenants or conditions contained in this Agreement shall for any
reason be held to be excessively broad as to time, duration, geographical
scope, activity or subject, it shall be construed, by limiting and reducing it,
so as to be enforceable to the extent compatible with the applicable law as it
shall then appear.
IX. NOTICES
All notices required or permitted by this Agreement shall be in writing
and shall be sent by registered mail, postage prepaid, addressed as follows:
Licensor:
Xx. Xxxxxxxx Xxxxxxxx
0000 Xxxxx Xxxxxxxx
Xxxxx 0000
Xxxxxxx, Xxxxxxxx 00000
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Licensee:
General Counsel of Strato/Infusaid
c/o Pfizer Inc.
Legal Division
Pfizer, Inc.
000 Xxxx 00xx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000-0000
Any party may change the address to which notices shall be sent to it
by notice in writing to the other party.
X. NON-WARRANTIES AND WARRANTY
A. Nothing in this Agreement shall be construed as:
1. a warranty or representation by Licensor as to the validity
or scope of any patent that has issued from the Licensed Patent rights;
2. a warranty or representation that making, using or selling
of Licensed Products will be free from infringement of any patents owned
by others than Licensor.
B. Licensee hereby releases and holds Licensor harmless from any and
all product liability claims, actions, losses, damages and liability resulting
from or arising out of the manufacture, use or sale by Licensee of Licensed
Products.
C. Licensee agrees to indemnify Licensor for all product liability
claims, actions, losses, proceedings, damages, liabilities, costs and expenses,
including attorney's fees arising out of, in connection with or resulting from
the manufacture, use or sale of Licensed Products by Licensee.
D. Licensor has not made, and does not make, any representation,
warranty or covenant, express or implied, with respect to the condition,
quality, durability, suitability, fitness
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for particular purpose or merchantability of Licensed Products or Licensed
Apparatus. Further, Licensor expressly disclaims any and all warranties,
express or implied, regarding the condition, quality, durability, suitability,
fitness for particular purpose or merchantability of Licensed Products.
XI. EFFECTIVE DATE
This Agreement shall become effective and binding upon the parties hereto
on the date first above written.
IN WITNESS WHEREOF, the parties hereto have caused to be signed by their
duly authorized officers, this Agreement at the places and on the dates set
forth below.
XX. XXXXXXXX X. XXXXXXXX, LICENSOR
Dated: July 27, 1995 /s/ S. Muhurkar
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STRATO/INFUSAID INC., LICENSEE
Dated: 07/24/95 By: /s/ Xxxxx X. Xxxxx
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Xxxxx X. Xxxxx
Its General Manager
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APPENDIX A
List of Affiliated Companies
American Medical Systems, Inc.
Biomedical Sensors Ltd.
Howmedica, Inc.
NAMIC, Inc.
Pfizer Inc.
Xxxxxxxxx (Europe) XX
Xxxxxxxxx (USA) Inc.
Valleylab, Inc.
