Exhibit 10.11
LICENSE AGREEMENT
-----------------
THIS AGREEMENT, made and effective this 1st day of June, 1995, by and
between
BAPTIST MEDICAL CENTER OF OKLAHOMA, INC., a corporation of
the State of Oklahoma, having its principal office and place
of business at 0000 Xxxxxxxxx Xxxxxxxxxx, Xxxxxxxx Xxxx,
Xxxxxxxx 00000 (hereinafter referred to as "BAPTIST")
and
SYMPHONIX DEVICES, INC., a corporation of the State of
California, having its principal office and place of
business at 0000 Xxxxxxx Xxxxxxx, Xxx Xxxx, Xxxxxxxxxx 00000
(hereinafter referred to as "LICENSEE").
WITNESSETH THAT:
WHEREAS, BAPTIST represents that it owns certain Patent Rights
(hereinafter defined) relating to a magnetic transcutaneous mount for external
device of an associated implant;
WHEREAS, BAPTIST desires to grant to LICENSEE, under the terms, covenants,
conditions and limitations hereinafter set forth, a non-exclusive license for a
specific field under the Patent Rights; and
WHEREAS, LICENSEE is desirous of taking such license under BAPTIST's Patent
Rights under the terms, covenants, conditions and limitations hereinafter set
forth;
NOW, THEREFORE, in consideration of the mutual and reciprocal agreements
and promises hereinafter set forth and for other good and valuable
consideration, the parties hereto agree and have agreed as follows:
ARTICLE I
DEFINITIONS
-----------
As used in this Agreement:
(A) "Patent Rights" shall mean United States Patent No. Re.32,947 and, if
any, any reissue or reexamination application filed on said United States
Patent, any reissue or reexamined patent issuing thereon, and any extension of
said United States Patent.
(B) "Licensed Products" shall mean any article, apparatus, device or method
claimed in the Patent Rights and used or usable in the field of implantable
auditory prostheses for the mechanical stimulation of the middle ear and
cochlea.
ARTICLE II
WARRANTY
--------
BAPTIST hereby warrants that it has the right to grant the license herein
granted.
ARTICLE III
GRANT
-----
BAPTIST hereby grants to LICENSEE, subject to the terms, covenants,
conditions and limitations set forth in this Agreement,
a non-exclusive license to make, have made for it, use, lease and sell Licensed
Products under the Patent Rights. The non-exclusive license hereby granted is
without any right to sublicense. BAPTIST retains all rights of enforcement of
the Patent Rights.
ARTICLE IV
LICENSING FEE
-------------
At the time LICENSEE sends executed duplicate originals of this Agreement
to BAPTIST for execution by BAPTIST, LICENSEE shall send with said executed
duplicate originals payment to BAPTIST of Twenty Thousand Dollars ($20,000.00),
to be kept in escrow by BAPTIST's attorneys until receipt by LICENSEE of a fully
executed original of this Agreement. Upon receipt of the payment by BAPTIST,
LICENSEE shall have a fully paid-up license, subject to the other terms of this
Agreement.
ARTICLE V
TERM AND TERMINATION
--------------------
(A) This Agreement shall expire with the expiration of the last to expire
of the patent(s) within the Patent Rights.
(B) Upon default by either party hereto in the performance of any
obligation hereunder to be performed by such party, the other party shall give
notice in writing to the party in default specifying the thing or matter in
default. Unless such default be cured within two (2) months following the
giving of such notice, the party giving such notice may give further written
notice to the other party terminating this Agreement; in such event, this
Agreement shall terminate on the date specified in such further
notice, which date shall be no earlier than two (2) months from the date of such
further notice.
(C) No expiration or termination of this Agreement shall relieve either
party of any obligation accrued to the date of expiration or termination or
relieve the party in default from liability for damages for breach of this
Agreement. Waiver by either party of a single default or breach or a succession
of defaults or breaches shall not deprive such party of any right to terminate
this Agreement arising by reason of any subsequent default or breach.
ARTICLE VI
PATENT MARKING
--------------
LICENSEE agrees to use reasonable efforts to xxxx every Licensed Product
made, or sold, or leased by it under this Agreement; the format of such marking
shall be in accordance with the statutes of the United States relating to the
marking of patented articles.
ARTICLE VII
INDEMNIFICATION
---------------
LICENSEE agrees to defend, indemnify and hold harmless, and LICENSEE hereby
does indemnify and hold harmless, BAPTIST against any and all claims of
liability arising from the manufacture or use or sale or lease by LICENSEE of
Licensed Products, excluding claims of liability for acts exclusively within the
control of BAPTIST.
This indemnification shall survive expiration or termination of this Agreement.
ARTICLE VIII
MISCELLANEOUS
-------------
(A) This Agreement shall be construed in accordance with the laws of the
State of Oklahoma.
(B) The provisions of this Agreement shall be deemed separable. Therefore,
if any part of this Agreement is rendered void, invalid or unenforceable, such
rendering shall not affect the validity and enforceability of the remainder of
this Agreement unless the part or parts which are void, invalid or unenforceable
as aforesaid shall substantially impair the value of the whole Agreement to
either party.
(C) This Agreement sets forth the entire agreement between the parties
relating to the subject matter contained herein and may not be modified, amended
or discharged except as expressly stated in this Agreement or by a written
agreement signed by the parties hereto.
(D) This Agreement is personal to the parties. This Agreement and the
rights and obligations herein granted to and undertaken by LICENSEE shall not be
assignable by act of LICENSEE or by operation of law. This Agreement and the
rights and obligations herein granted to and undertaken by BAPTIST shall not be
assignable by act of BAPTIST or by operation of law. The
foregoing notwithstanding, this Agreement and any rights and powers created
herein may be assigned with any assignment of the Patent Rights or with any
transfer of either party's business or entire assets. This Agreement shall be
binding upon and inure to the benefit of the parties hereto, LICENSEE's
successors, trustee(s) or receiver(s) in bankruptcy, and permitted assigns, and
BAPTIST's successors, trustee(s) or receiver(s) in bankruptcy and permitted
assigns.
(E) Nothing herein shall prohibit BAPTIST from granting other licenses
under the Patent Rights.
(F) The relationship between BAPTIST and LICENSEE is that of independent
contractors. BAPTIST and LICENSEE are not joint venturers, partners, principal
and agent, master and servant, employer or employee, and have no relationship
other than as independent contracting parties. BAPTIST shall have no power to
bind or obligate LICENSEE in any manner, except as is expressly set forth in
this Agreement. Likewise, LICENSEE shall have no power to bind or obligate
BAPTIST in any manner, except as is expressly set forth in this Agreement.
(G) Any matter or disagreement under this Agreement shall be resolved by
arbitration submitted to a mutually selected single arbitrator to decide any
such matter or disagreement. The arbitrator shall conduct the arbitration in
accordance with the Rules of the American Arbitration Association, unless the
parties agree otherwise. If the parties are unable to mutually select an
arbitrator, the arbitrator shall be selected in accordance with the procedures
of the American Arbitration Association. The decision and award rendered by the
arbitrator shall be final and binding. Judgment upon the award may be entered in
any court having jurisdiction thereof. Any arbitration pursuant to this section
shall be held in Oklahoma City, Oklahoma, or such other place as may be mutually
agreed upon in writing by the parties.
(H) Any and all communications required as provided for in this Agreement
shall be in writing and sent by First Class mail, postage prepaid, and addressed
to the last known address of the parties to be served therewith. Notice sent by
Certified Mail - Return Receipt Requested shall be presumed to have been
received. Any notice to be given to LICENSEE shall be addressed to:
Symphonix Devices, Inc.
0000 Xxxxxxx Xxxxxxx
Xxx Xxxx, Xxxxxxxxxx 00000
Any notice to be given to BAPTIST shall be addressed to:
President
Baptist Medical Center of Oklahoma, Inc.
0000 Xxxxxxxxx Xxxxxxxxxx
Xxxxxxxx Xxxx, Xxxxxxxx 00000
Any change in address shall be promptly communicated in writing from either
party to the other party.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed in duplicate effective as of the date and year first shown above.
BAPTIST MEDICAL CENTER
OF OKLAHOMA, INC.
("BAPTIST")
By /s/ Xxxxxx X. Xxxx
----------------------------
Attest
/s/ Xxxxxxx Xxxxx
----------------------
SYMPHONIX DEVICES, INC.
("LICENSEE")
BY /s/ Xxxxx X. Xxxxxxx
---------------------------
PRESIDENT
Attest:
/s/ Xxxxxxxx X. Xxxx
---------------------------
