AGREEMENT
Exhibit 10.19
THIS
AGREEMENT, entered into this 30 day of April 2008, is by and between Accelerated
Innovation LLC, a Delaware Limited Liability Company having its principal place of business at 0000
X.X. Xxxxxxx 00X, Xxxxx X000, Xxxxxxx, XX 00000 (“Accelerated”), Cervical Xpand, LLC, a New Jersey
Limited Liability Company having its principal place of business at 0000 X.X. Xxxxxxx 00X, Xxxxx
X000, Xxxxxxx, XX 00000 (“Cervical Xpand”) and Xxxx X. Xxxxxx, M.D., an individual residing at 0000
Xxxx Xxxx Xx, Xxxx Xxxxxx, XX 00000 (“Xxxxxx”).
Whereas, Accelerated is the owner of all right, title and interest in certain technology
related to spinal, hip and knee orthopedic devices and instruments, including, but not limited to
the patent applications set forth in Exhibit A (hereinafter, “Accelerated Technology”); and
Whereas, Cervical Xpand is the owner of all right, title and interest in certain technology
related to the Accin Helibone Hourglass VBR System for Spinal Surgery, including, but not limited
to the patent applications set forth in Exhibit B (hereinafter, “Cervical Xpand Technology”); and
Whereas, Xxxxxx has certain knowledge and expertise in the field of spinal surgery, and
assisted Accelerated in the development and commercialization some of Accelerated’s Technology;
and
Whereas, Xxxxxx has certain knowledge and expertise in the field of spinal surgery with VBR
devices, and assisted Cervical Xpand in the development and commercialization some of Cervical
Xpand’s Technology; and
Whereas, Xxxxxx assisted Accelerated in the development and/or commercialization some of the
Accelerated Technology; and
Whereas, Xxxxxx assisted Cervical Xpand in the development and/or commercialization some of
the Cervical Xpand Technology; and
Whereas, the parties recognize Albert’s on-going relationship as a volunteer faculty member
with Xxxxxx Xxxxxxxxx University (the “University”).
NOW, THEREFORE, for good and valuable consideration, the receipt for and sufficiency of which
is hereby acknowledged, Xxxxxx does hereby represent and warrant as follows:
1.1. Xxxxxx hereby represents and warrants that the subject matter of Albert’s research and/or
services performed for University is not related to Albert’s contributions to the Accelerated
Technology and to the Cervical Xpand Technology.
1.2. Xxxxxx hereby represents and warrants that Xxxxxx will not assert any rights in any
Accelerated Technology or any Cervical Xpand Technology.
1.3. Xxxxxx hereby represents and warrants that his contributions to the inventions as
disclosed in the Accelerated Technology and the Cervical Xpand Technology are not subject to
any pre-existing or co-existing obligations to any third party.
1.4. Xxxxxx hereby represents and warrants that Albert’s contributions to the Accelerated
Technology and the Cervical Xpand Technology did not violate any of his outstanding
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obligations with the University, including his obligations under the University’s Intellectual
Property policy.
1.5. Xxxxxx hereby represents and warrants that to Albert’s knowledge, no composition, method,
software or device incorporating his inventions would infringe any patent, copyright or other
proprietary right of any third party.
1.6. Xxxxxx hereby represents and warrants that Xxxxxx has no other obligations to assign any
inventions made, conceived or reduced to practice during his relationship with Accelerated or
Cervical Xpand.
1.7. Xxxxxx hereby represents and warrants that the terms of this Agreement are not
inconsistent with any other contractual or legal obligations that Xxxxxx may have or with the
policies of any institution or company with which Xxxxxx is or was associated.
1.8. Xxxxxx hereby represents and warrants that all of Albert’s contributions to the
Accelerated Technology and to the Cervical Xpand Technology were Albert’s original work and
that, to Albert’s knowledge, none of his inventions or any development, use, production,
distribution, or exploitation thereof will infringe, misappropriate, or violate any
intellectual property or other right of any other person or entity (including, without
limitation, Xxxxxx).
1.9. Xxxxxx has the full right to enter into this Agreement and to provide Accelerated and
Cervical Xpand with the representations and warranties and rights provided for herein.
2. MISCELLANEOUS PROVISIONS.
2.1. Assignment:
This Agreement cannot be assigned by either party without the prior written consent of the other
party, which will not be unreasonably withheld, except that Accelerated and Cervical Xpand may
assign this Agreement to any successor of all or substantially all of its business to which this
Agreement relates without the prior written consent of Xxxxxx.
2.2. Binding Effect:
This Agreement will be binding on and inure to the benefit of the parties hereto and their
respective heirs, personal representatives, successors, and assigns.
2.3. Force Majeure:
No party will be in default or otherwise liable for any delay in or failure of its performance
under this Agreement if such delay or failure arises by any reason beyond its reasonable control,
including any act of God, any acts of the common enemy, terrorism, the elements, earthquakes,
floods, fires, epidemics, riots, failure or delay in transportation or communications, or any
other act or failure to act by another party or such other party’s employees, agents, or
contractors; provided, however, that lack of funds will not be deemed to be reasons beyond a
party’s reasonable control. The parties will promptly inform and consult with each other as to any
of the above causes, which in their judgment may or could be the cause of a delay in the
performance of this Agreement.
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2.4. Waiver:
The failure of any party to enforce any of the provisions hereof will not be construed to be a
waiver of the right of such party thereafter to enforce such provisions or any other provisions.
2.5. Governing Law:
This Agreement will be governed for all purposes by the laws of the State of New Jersey. If any
provision of this Agreement is declared void, such provision will be deemed severed from this
Agreement, which will otherwise remain in full force and effect.
2.6. Jurisdiction; Service of Process:
Any action or proceeding seeking to enforce any provision of, or based on any right arising out
of, this Agreement shall be subject to the exclusive jurisdiction of the state and federal courts
located in the State of New Jersey.
2.7. Costs:
Xxxxxx agrees that if he is held by any court of competent jurisdiction to be in violation,
breach, or nonperformance of any of the terms of this Agreement, then he will pay all costs of
such action or suit, including reasonable attorneys’ fees.
2.8. Section Headings; Construction:
The heading appearing at the beginning of the several sections making up this Agreement have been
inserted for identification and reference purposes only and will not be used in the construction
and interpretation of this Agreement.
2.9. Remedies:
2.10. All rights conferred under this Agreement or by any other instrument or law will be
cumulative and may be exercised singularly or concurrently.
2.11. Amendments:
This Agreement may only be amended, changed, or modified in a writing signed by both parties.
2.12. Relationship of the Parties:
Each party is acting as an independent contractor and not as employee, agent, partner, or joint
venturer with the other party for any purpose. Except as provided in this Agreement, neither party
will have any right, power, or authority to act or to create any obligation, express or implied,
on behalf of the other.
2.13. Counterparts:
This Agreement may be executed in one or more counterparts, each of which will be deemed to be an
original copy of this Agreement, and all of which, when taken together, will be deemed to
constitute one and the same Agreement.
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2.14. Entire Agreement:
The parties agree that this Agreement constitutes the complete and exclusive statement of the
agreement between them as to the specific subject matter hereof.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
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IN WITNESS WHEREOF, the parties hereby intending to be legally bound, have caused this Agreement to
be executed by their duly authorized representatives.
AGREED TO AND ACCEPTED BY:
| Xxxx X. Xxxxxx, M.D. | Accelerated Innovation LLC | |||||||||
By: |
/s/ Xxxx X. Xxxxxx |
By: | /s/ Xxxxxxx Xxxxxxxxxx
|
|||||||
Name: |
Xxxx X. Xxxxxx | Name: | Xxxxxxx
Xxxxxxxxxx |
|||||||
Date: |
4/30/08 | Date: | 4-30-2008 | |||||||
| Cervical Xpand LLC | ||||||||||
| By: | /s/ Xxxxxxx Xxxxxxxxxx
|
|||||||||
| Name: | Xxxxxxx Xxxxxxxxxx | |||||||||
| Date: | 4-30-2008 | |||||||||
| Acknowledged By University: | ||||||||||
By: |
||||||||||
Name: |
||||||||||
Date: |
||||||||||
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EXHIBIT A
| PATENT | ||||||
| KGGD | APPLICATION | DATE | ||||
| No. | NO. | FILED | TITLE OF INVENTION | |||
| 622/2 | 60/658,365) | (03/03/05) | DYNAMIC STABILIZER | |||
| 622/2A | 11/186,699 | 07/21/05 | VERTEBRAL STABILIZATION USING FLEXIBLE RODS | |||
| 622/2B | 11/325,104 60/658,365) |
1/4/06 (3/3/05) |
METHODS AND APPARATUS FOR VERTEBRAL STABILIZATION USING SLEEVED SPRINGS | |||
| 622/3 | 11/348,594 60/658,313) |
02/07/06 (03/03/05) |
METHODS AND APPARATUS FOR PROVIDING A RETAINER FOR A BONE STABILIZATION DEVICE | |||
| 622/5 | 60/658,227) | (03/03/05) | PEDICLE SCREW | |||
| 622/5A | 11/360,708 | 02/23/06 | SPINAL STABILIZATION USING BONE ANCHOR AND ANCHOR SEAT WITH TANGENTIAL WITH LOCKING FEATURE | |||
| 622/5B | 11/360,707 | 02/23/06 | SPINAL STABILIZATION USING BONE ANCHOR SEAT AND CROSS COUPLING WITH IMPROVED LOCKING FEATURE | |||
| 622/6 | 11/385,083 60/665,010) |
03/21/06 (03/24/05) |
METHOD AND APPARATUS FOR BONE STABILIZATION | |||
| 622/7 | 11/376,977 60/665,009 |
03/16/06 (03/24/05) |
INTERVERTEBRAL DISC REPLACEMENT DEVICE | |||
| 622/8 | Non-Provisional No. 11/137,963 |
05/26/05 | COATED MATERIAL PEDICLE SCREW AND ROD | |||
| 622/9 | 11/443,425 60/688,421 |
05/30/06 (06/08/05) |
VERTEBRAL FACET STABILIZER | |||
| 622/10 | 11/488,817 | 07/18/06 | INTERVERTEBRAL DISC REPLACEMENT DEVICE WITH RESILIENT SUPPORT |
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EXHIBIT B
| PATENT | ||||||
| KGGD | APPLICATION | DATE | ||||
| No. | NO. | FILED | TITLE OF INVENTION | |||
622/4A |
Non-Provisional No. 11/176,915 (Provisional No. 60/658,345) |
07/07/05 (03/03/05) |
INTERVERTEBRAL STABILIZER | |||
622/4 PCT |
PCT/US05/27506 | 08/03/05 | INTERVERTEBRAL STABILIZER | |||
622/4B |
Non-Provisional No. 11/176,916 (Provisional No. 60/658,345) |
07/07/05 (03/03/05) |
CERVICAL INTERVERTEBRAL STABILIZER | |||
622/4C |
Non-Provisional No. 11/176,717 (Provisional No. 60/658,345) |
07/07/05 (03/03/05) |
ANTERIOR LUMBAR INTERVERTEBRAL STABILIZER | |||
622/4D |
Non-Provisional No. 11/176,175 (Provisional No. 60/658,345) |
07/07/05 (03/03/05) |
POSTERIOR LUMBAR INTERVERTEBRAL STABILIZER | |||
622/4E |
Non-Provisional No. 11/176,914 (Provisional No. 60/658,345) |
07/07/05 (03/03/05) |
INTERVERTEBRAL STABILIZER, METHODS OF USE AND INSTRUMENTATION THEREFOR | |||
622/4 EP |
05778926.5-1257 | August 8, 2007 | INTERVERTEBRAL STABILIZER, METHODS OF USE AND INSTRUMENTATION THEREFOR |
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