Contract
Exhibit
10.2
Confidential
Treatment Requested:
Confidential
Portions of this document have been redacted and have been filed separately with
the Commission
This
Release Agreement (“Agreement”), is made
and entered into effective September 22, 2008, (the “Effective Date”) by
and between:
The
Regents of the University of California (“The Regents”);
and
Micrus
Endovascular Corporation (“Micrus”);
Each of
The Regents and Micrus may be referred to herein individually as a “Party” or jointly as
the “Parties.”
WHEREAS, Micrus and Boston
Scientific Corp. (“BSC”) and Target
Therapeutics, Inc. (and, collectively with BSC, “Boston Scientific”)
are parties to Boston
Scientific Corp. and Target Therapeutics, Inc. v. Micrus Corp., Civil
Action No. C04-04072 (JW), pending in the United States District Court for the
Northern District of California (hereinafter “the
Litigation”);
WHEREAS, Micrus and Boston
Scientific have entered into a binding and enforceable Settlement and License
Agreement (“Settlement
Agreement”) between them to finally resolve and settle the Litigation and
avoid potential future litigations relating to the claims and causes of action
raised in the Litigation;
WHEREAS, The Regents is the
owner of certain patents asserted by Boston Scientific against Micrus in the
Litigation;
NOW THEREFORE, in
consideration of the following terms, releases, covenants, and conditions, the
Parties on behalf of themselves hereby agree as follows:
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1.
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DEFINITIONS. All
definitions set forth in the Settlement Agreement (attached hereto as
Exhibit A) shall apply to this Agreement including, without
limitation, the definitions of “Affiliates,”
“BSC Licensed
Patents,” “BSC License,”
“[***]
Patents,” “[***] Patent,”
“[***]
patents,” “[***] Patents,”
“Excluded
Patents” and “Improvements.”
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2.
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NO ADDITIONAL RIGHTS
GRANTED. No rights
other than those set forth in the Settlement Agreement are or will be
conveyed by any Party to any other Party by virtue of the Settlement
Agreement or this Agreement between Micrus and The Regents. In
particular, no license either express or implied nor any right of sale is
granted under the Settlement Agreement or this Agreement to the [***] Patent,
[***]
patents, [***] Patents or any of the Excluded Patents identified in
Section 1.1(C) of the Settlement
Agreement.
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3.
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MUTUAL RELEASES.
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3.1
Releases. Each Party on its own behalf and on behalf of
its respective predecessors, successors, direct or indirect parent or
subsidiary companies, Affiliates, agents, representatives, attorneys,
controlling persons, and assigns, waives and releases, acquits and forever
discharges the other Party and each of its respective past or
present
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[***]
Confidential Treatment Requested
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predecessors,
successors, direct or indirect parent or subsidiary companies, Affiliates,
agents, officers, directors, employees, representatives, attorneys,
controlling persons, and assigns, and, in the case of Micrus only,
Micrus’s and its Affiliates’ distributors, customers, and manufacturers
(but only to the extent the manufacturers
have made products for or on behalf of Micrus and not on behalf of a third
party), from any and all claims, counterclaims, causes of action,
demands, liabilities, losses, damages, costs, expenses, compensation, and
all damages and liabilities of any kind or nature whatsoever, direct or
indirect, whether in law or equity, whether now known, suspected or
claimed, existing as of the Effective Date, which either were raised or
could have been raised concerning any of the BSC Licensed Patents and the
Micrus Patents and all patent and non-patent claims, counterclaims, and
causes of action that either were raised or could have been raised by
Boston Scientific and Micrus in the Litigation. Further, The
Regents waives and releases Micrus and each of its respective past or
present predecessors, successors, direct or indirect parent or subsidiary
companies, Affiliates, agents, officers, directors, employees,
representatives, attorneys, controlling persons, assigns, distributors,
customers, and manufacturers (but only to
the extent the manufacturers have made products for or on behalf of Micrus
and not on behalf of a third party)
and distributors, customers, and manufacturers of Micrus’s
Affiliates (but only to the extent the
manufacturers have made products for or on behalf of Micrus’s Affiliates
and not on behalf of a third party) from any royalty obligations
which arise out of the BSC License, including without limitation, any
past, present and future royalties that derive from any of the BSC
Licensed Patents that are owned directly or indirectly by The Regents,
including the [***] Patents. Notwithstanding the foregoing, the
releases herein do not apply to any acquirer of Micrus or its Affiliates or the Affiliates of such
acquirer except for commercialized products, products in clinical
trial, or products for which regulatory approval has been applied for in
the United States, in each case, made, sold or furnished by Micrus prior
to the Effective Date. The releases do not apply to claims,
counter-claims, defenses, or causes of action for the infringement or
alleged infringement of any claims of the [***] Patents, the Excluded
Patents, and the patents expressly excluded from the BSC Licensed Patents,
including without limitation the [***] Patent and [***]
patents.
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3.2 Defenses
Preserved. Neither this Agreement nor the Settlement Agreement
shall prejudice any defenses which a Party may assert in the event that the
other Party hereafter alleges infringement of the BSC License Patents or Micrus
License Patents, or raises any other claim or cause of action released under
this Agreement, including, without limitation, Micrus’s antitrust and state law
counterclaims raised in the Litigation.
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4.
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CALIFORNIA CIVIL CODE §
1542. The foregoing releases extend to claims referenced
in Section 3, which the releasing parties do not know or suspect to exist
in their favor, which if known by them would have materially affected
their decision to enter into this release. The Regents and
Micrus represent and agree that each has been fully advised by their
respective attorneys regarding the contents of Section 1542 of the Civil
Code of California. Section 1542 reads as
follows:
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A GENERAL
RELEASE DOES NOT EXTEND TO CLAIMS WHICH THE CREDITOR DOES NOT KNOW
[***]
Confidential Treatment Requested
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OR
SUSPECT TO EXIST IN HIS OR HER FAVOR AT THE TIME OF EXECUTING THE RELEASE, WHICH
IF KNOWN BY HIM OR HER MUST HAVE MATERIALLY AFFECTED HIS OR HER SETTLEMENT WITH
THE DEBTOR.
The
Regents and Micrus expressly waive and relinquish all rights and benefits under
the above Section 1542, and any similar law or common law principal of similar
effect in any jurisdiction with respect to the claims released
herein.
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5.
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COVENANTS NOT TO
XXX.
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5.1
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The Regents’ Covenant Not To Xxx
Micrus. The Regents covenants not to xxx Micrus and its
Affiliates (in this Section 5.1), Affiliates expressly excludes any
acquirer of Micrus or its Affiliates or the Affiliates of such acquirer)
for alleged direct infringement, contributory infringement or inducement
of infringement of the Excluded Patents and the patents expressly excluded
from the BSC License Patents, including without limitation the [***]
Patent and [***] Patents (to the extent that The Regents has or obtains
any rights to xxx on these patents) based on Micrus’s and its Affiliates’
making, using, selling, offering for sale, importing or exporting medical
devices or methods, on its own behalf (and not on behalf of any third
party), that are [***], that are substantially equivalent in design and
function to the design and functionality of Micrus’s accused products in
the Litigation (identified in the attached Exhibit B). For
clarification, this covenant not to xxx with respect to the [***]
Patents shall
not extend to [***].
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5.2
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The Regents’ Covenant Not To Xxx
Acquirer. The Regents further covenants not to xxx any
acquirer of Micrus or its Affiliates or the Affiliates of such acquirer
for alleged infringement of the Excluded Patents and the patents expressly
excluded from the BSC License Patents, including without limitation the
[***] Patent and [***] Patents (to the extent that The Regents has or
obtains any rights to xxx on these patents) based on the manufacture, use,
sale, offer for sale, import, or export of medical devices, on its own
behalf or its Affiliates’ behalf (and not on behalf of any third party),
that are: (i) [***]; (ii) commercialized products, products in clinical
trial, or products for which regulatory approval has been applied for in
the United States, in each case, made, sold or furnished by Micrus and its
Affiliates prior to the acquisition or merger, and future Improvements of
those products; and (iii)
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[***]
Confidential Treatment Requested
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substantially
equivalent in design and function to the design and functionality of Micrus’s
accused products in the Litigation (identified in Exhibit B). For
clarification, this covenant not to xxx shall extend only to products meeting
all three criteria listed above. For clarification, this covenant not to xxx
with respect to the [***] Patents shall
not extend to [***].
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5.3
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Mutual Covenants Not to
Xxx. Each Party covenants not to xxx the other Party or
any of its Affiliates for any claim that such other Party’s or any of its
Affiliates’ manufacture, use, sale, offer for sale, lease, importation,
distribution or other transfer of its or its Affiliates’ licensed products
and methods (as identified and defined in Sections 4.1 and 4.2 of the
Settlement Agreement) constitutes contributory infringement or inducement
of infringement of any BSC Licensed Patent or Micrus Licensed
Patent. This covenant not to xxx contained in this Section 5.3
does not apply to any acquirer of Micrus or its Affiliates or the
Affiliates of such acquirer except with respect to (i) commercialized
products; (ii) products in clinical trial; and (iii) products for which
regulatory approval has been applied for in the United States, in each
case, made, sold or furnished by a Party prior to the acquisition or
merger, and future Improvements of those products. For
clarification, this covenant not to xxx with respect to the [***]
Patents shall
not extend to [***].
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5.4
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Combinations of Acquired
Items. End-users (including hospitals, physicians and
their staff) and distributors for Micrus (but expressly excluding other
medical device manufacturers) who obtain, directly or indirectly, a
product subject to a covenant not to xxx (granted in Sections 5.1 or 5.2)
from Micrus or any of its Affiliates (“Acquired Item”)
shall be immune from suit, under any given claim of the Excluded Patents
and the patents expressly excluded from the BSC License Patents, including
without limitation the [***] Patent and [***] Patents (to the extent that
The Regents has or obtains any rights to xxx on these patents) covering
the combination of an Acquired Item with another Acquired Item or with one
or more other items, for making, using, selling, offering for sale,
importing, distributing, or otherwise transferring a combination of one or
more Acquired Items with another Acquired Item or with one or more other
items, but only to the extent that: (i) the use, sale, offering
for sale, importing, distributing or other transfer of such one or more
Acquired Items by Micrus or its Affiliate would absent this Agreement,
constitute direct infringement, contributory infringement or inducement of
infringement of such claim, and (ii) such claim would not be infringed by
such other items separate and apart from the combination with the Acquired
Items. The determination of infringement in (i) above shall assume the
existence of any necessary knowledge or intent required to constitute
infringement.
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5.5
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If
The Regents assigns to a third party, or transfers to a third party any
right, title, or interest in, any patents subject to any of the covenants
in this Section 5, then the assigning party shall require that such third
party is subject to the terms set
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[***]
Confidential Treatment Requested
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forth in
this Section 5 as applicable to such transferred or assigned patent, right,
title, or interest.
6. NO
IMPLIED LICENSE.
Except as
expressly set forth in the Settlement Agreement, no other rights or licenses are
granted to the Licensed Patents and all right, title and interest in the
Licensed Patents are reserved by the applicable Party. Nothing in the
Settlement Agreement or in this Agreement shall be construed as conferring by
implication, estoppel, or otherwise any license or other right under any patent
or intellectual property of Micrus, Boston Scientific or The Regents, except as
expressly granted. Nothing in the Settlement Agreement or in this
Agreement shall be construed as a warranty or representation that any acts
licensed or immunized hereunder will be free from infringement of the
intellectual property of a Party or third party, other than to the extent of the
licenses, covenants, and releases that have been expressly granted
herein.
7. MICRUS
SETTLEMENT PAYMENT.
In
consideration for the releases and covenants granted by The Regents to Micrus
under Sections 3 and 5 of this Agreement, Micrus shall pay to The Regents a
one-time payment of one million, six-hundred and fifty thousand United States
dollars ($1,650,000) on or before the five (5) business days following the
Effective Date, which funds shall be transferred to The Regents’ bank account
identified below:
Bank of
America
0000
Xxxxx Xxxxxx
Xxxxxxx,
XX 00000
Attn: XXX
Depository Account No.12337-17062
ABA
Transit Routing No. 000000000
Beneficiary
Name: Regents of the University of California
SWIFT
Code: B of A US6S
Fax your
remittance advice to: (000) 000-0000
University
of California
Office of
Technology Transfer
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8.
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MISCELLANEOUS
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8.1
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Representations and
Warranties.
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8.1.1
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Each
Party represents and warrants to the other Party that (i) it has the power
and authority to execute and deliver this Agreement and to grant its
releases, covenants and perform its obligations hereunder; and
(ii) neither it, nor any of its Affiliates, will enter into any other
agreement or understanding in conflict with the provisions contained in
this Agreement.
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8.1.2 Each Party
represents and warrants that it: (a) is represented by competent counsel with
respect to this Agreement; (b) has read this Agreement in its entirety; (c) has
been advised of its rights and obligations with respect to the execution of this
Agreement; and (d) enters into this Agreement knowingly and
willingly.
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8.2
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Costs, Expenses, and Attorneys’
Fees. Each Party shall bear its own costs, expenses, and
attorneys’ fees incurred in connection with this
Agreement.
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Severability. In
the event that any provision of this Agreement is found to be prohibited
by law and invalid, or for any other reason such provision is held
unenforceable, in whole or in part, it shall be considered severable and
shall be ineffective only to the extent of such prohibition, invalidity or
unenforceability without invalidating or having any other adverse effect
upon any other provision of the
Agreement.
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8.4
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Entire
Agreement. This Agreement sets out the entire agreement
and understanding between the Parties relating to its subject matter and
supersedes all prior oral or written representations, agreements,
arrangements or understandings between them relating to such subject
matter.
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8.5
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Governing
Law. This Agreement shall be governed by and interpreted
under the laws of the State of California, without regard to conflict of
laws. In the event any action should be required to interpret,
implement, modify, or enforce the terms and provisions of this Settlement
Agreement, or to declare rights under the same, the prevailing party in
such action shall recover from the losing party its reasonable attorney’s
fees and costs.
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8.6
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Amendments. No
amendment, change, modification or alteration of the terms and conditions
of this Agreement or any appendix hereto shall be binding upon any Party
unless in writing and signed by that
Party.
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8.7
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Counterparts. This
Agreement will be effective upon the execution in counterparts via
facsimile transmission, each of which shall be deemed an original, and all
of which together, shall be deemed a single
document.
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8.8
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Notices. Any
notice required or permitted to be given or made under this Agreement by
any Party shall be in writing, sent to such other Party at its address and
fax number indicated below, or to such other address as the addressee
shall have last furnished in writing to the addresser, and shall be
effective upon receipt by the
addressee.
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If to The
Regents:
The
Regents of the University of California
Office of
the General Counsel
0000
Xxxxxxxx Xxxxxx, 0xx Xxxxx
Xxxxxxx,
XX 00000-0000
Attn: P.
Xxxxxx Xxxxxxx, Esq.
Xxxx Xxx, Esq.
Facsimile: (000)
000-0000
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UCLA
ORA-OIPA
00000
Xxxxxxx Xxxxxx
Xxxxx
000
Xxx
Xxxxxxx, XX 00000-0000
Attn: Xxxxx
Xxxxxxxx
Facsimile: (000)
000-0000
If to
Micrus:
Micrus
Endovascular Corporation
Attn:
CEO
000 Xxx
Xxxx
Xxx Xxxx,
XX 00000
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8.9
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Survival. The
releases, covenants, agreements, representations and warranties made by
the Parties herein shall survive the execution of this
Agreement.
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8.10
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Successors and
Assigns. The terms and conditions of this Agreement
shall inure to the benefit of and be binding upon the respective
successors and permitted assigns of the Parties. Nothing in
this Agreement, express or implied, is intended to confer upon any party
other than the Parties hereto or their respective successors and permitted
assigns any rights, remedies, obligations or liabilities under or by
reason of this Agreement, except as expressly provided in this
Agreement.
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8.11
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Drafting. All
Parties and their counsel have reviewed and had the opportunity to
contribute to the drafting of this Agreement, and the rule of construction
providing that any ambiguities are to be resolved against the drafting
Party shall not be employed in the interpretation of this
Agreement. This Agreement shall be construed as drafted by both
Parties.
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8.12
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Headings. The
headings of sections are inserted for convenience of reference only and
are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
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IN WITNESS WHEREOF, the
Parties have executed this Agreement as of the date set forth
below.
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THE
REGENTS OF THE UNIVERSITY OF
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Dated:
September 22, 2008
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By:
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/s/
P Xxxxxx Xxxxxxx
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P.
Xxxxxx Xxxxxxx, Jr.
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University
Counsel
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MICRUS
ENDOVASCULAR CORPORATION
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Dated:
September 22, 2008
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By:
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/s/
Xxxxxx Xxxxxxxx
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Xxxxxx
Xxxxxxxx
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Chief
Financial Officer
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7
EXHIBIT
A
SETTLEMENT
AGREEMENT
EXHIBIT
B
MICRUS
ACCUSED PRODUCT LIST
