CROSS-LICENSE AGREEMENT
This Cross-License Agreement is entered into by and among St. Jude
Medical, Inc., a Minnesota corporation having its principal place of business at
Xxx Xxxxxxxx Xxxxx, Xx. Xxxx, Xxxxxxxxx 00000 ("St. Jude"), and its wholly owned
subsidiary, Pacesetter, Inc., a Delaware corporation having its principal place
of business at 00000 Xxxxxx Xxxx Xxxxx, Xxxxxx, Xxxxxxxxxx 00000 ("Pacesetter")
(hereinafter sometimes collectively referred to with St. Jude as "St.
Jude/Pacesetter"), and Angeion Corporation, a Minnesota corporation having its
principal place of business at 0000 Xxxxxxxxx Xxxx, Xxxxxxxxxxx, Xxxxxxxxx 00000
("Angeion").
RECITALS
WHEREAS, Angeion and Pacesetter executed a set of agreements on
February 4, 1993, referred to as the "Corporate Partnering Transaction," which
included, INTER ALIA, an "OEM Marketing and Manufacturing Agreement," and a
"License Agreement"; and
WHEREAS, Angeion notified St. Jude/Pacesetter by letter dated November
20, 1996, of its termination/rescission of the "OEM Marketing and Manufacturing
Agreement" and the "License Agreement"; and
WHEREAS, Pacesetter filed a lawsuit against Angeion on November 26,
1996, in Xxxxxxx Xxxxxxxx Xxxxx, Xxxxxxxx of Minnesota, Case No. 4-96-1161, for
a declaratory judgment as to the "OEM Marketing and Manufacturing Agreement" and
the "License Agreement"; and
WHEREAS, without admitting that grounds exist for the
termination/rescission of the "OEM Marketing and Manufacturing Agreement" and
the "License Agreement," and expressly reserving its rights to contend that any
sublicenses previously granted under the "License Agreement" are valid and
enforceable, and without prejudice to Pacesetter's position that the "OEM
Marketing and Manufacturing Agreement" and the "License Agreement" are valid and
enforceable, St. Jude/Pacesetter wish to enter into this Cross-License
Agreement; and
WHEREAS, without admitting that grounds exist for a determination that
the "OEM Marketing and Manufacturing Agreement" and/or the "License Agreement"
are valid and enforceable, and expressly reserving its rights to contend that
any sublicenses previously granted under the "License Agreement" are void and
unenforceable, and without prejudice to Angeion's position that grounds exist
for the termination/rescission of the "OEM Marketing and Manufacturing
Agreement" and the "License Agreement", Angeion wishes to enter into this
Cross-License Agreement;
NOW THEREFORE, in consideration of the mutual covenants and
consideration herein expressed, the sufficiency of which is hereby acknowledged,
St. Jude/Pacesetter and Angeion agree as follows:
AGREEMENT
1. DEFINITIONS.
For the purposes of this Agreement, the following terms shall have the
following meanings:
1.1. "AFFILIATE", with respect to any Party, shall mean any other
entity which directly or indirectly controls or is controlled by, or is under
common control with, such Party, including without limitation, any subsidiary,
whose parent owns fifty percent (50%) or more of its voting securities or other
voting interests.
1.2. "ANGEION FIELD OF USE" shall mean Tachycardia Devices.
1.3. "CARDIAC STIMULATION DEVICE" shall mean permanently implantable
medical devices capable of delivering electrical stimulation to the heart for
the purpose of treating cardiac dysrhythmias and shall include, without
limitation, Related Peripherals and/or Components.
1.4 "EFFECTIVE DATE" shall mean the date upon which this Agreement
becomes effective as provided in Section 10.
1.5. "LICENSED PATENT", as to a Party, shall mean all patents owned,
acquired or licensed with the right to sublicense which are licensable or
sublicensable (without any right of a non-affiliated third party to receive a
continuing royalty or payment of any kind) by such Party (or its Affiliates) as
of the Effective Date or subsequent to the Effective Date, and which claim
priority, directly or indirectly, to applications filed prior to the Effective
Date.
1.6. "PARTY" shall mean either St. Jude/Pacesetter or Angeion, and
"Parties" shall mean St. Jude/Pacesetter and Angeion.
1.7. "RELATED PERIPHERALS AND/OR COMPONENTS" shall mean products or
services for use in or with, or for support of, Cardiac Stimulation Devices,
including component parts such as batteries, capacitors, electronic components,
software, packaging, headers and the like, and peripherals such as leads,
patches, programmers, computers, software and the like.
1.8. "ST. JUDE FIELD OF USE" shall mean Cardiac Stimulation Devices for
any patents identified as "Exclusive Angeion Defibrillator Patents" or
"Nonexclusive Angeion Defibrillator Patents" as defined in the "License
Agreement," and Tachycardia Devices for all other patents.
1.9. "SUBLICENSABLE PATENTS", as to a Party, shall mean all patents
owned, acquired, or licensed with the right to sublicense which are licensable
or sublicensable (but only in consideration of a royalty or continuing payment
to a non-affiliated third party) by such Party (or its Affiliates) as of the
Effective Date or subsequent to the Effective Date, and which claim priority,
directly or indirectly, to applications filed prior to the Effective Date.
1.10. "TACHYCARDIA DEVICES" shall mean Cardiac Stimulation Devices
which are capable of delivering an electrical stimulation of more than one (1)
joule to the heart.
2. PRIOR AGREEMENTS
2.1. "OEM MARKETING AND MANUFACTURING AGREEMENT". Without prejudice as
to the position of either Party as to any issue with respect to the "OEM
Marketing and Manufacturing Agreement," the Parties nevertheless acknowledge and
agree that the "OEM Marketing and Manufacturing Agreement" is terminated as of
November 20, 1996. Each Party acknowledges that the confidentiality provisions
of Section 18 of the "OEM Marketing and Manufacturing Agreement" shall remain in
effect as provided for upon termination.
2.2. "LICENSE AGREEMENT". Without prejudice as to the position of
either Party as to any issue with respect to the "License Agreement," or the
operation of the "License Agreement" concerning laser catheter products, the
Parties nevertheless acknowledge and agree that the "License Agreement" is
terminated and superseded by this Cross-License Agreement as of the Effective
Date in all respects concerning defibrillator products, except as to the effect,
if any, of the sublicense previously agreed to be granted by St. Jude/Pacesetter
to Intermedics, Inc., or the effect, if any, of any sublicenses determined
judicially or by arbitration to have been granted in accordance with the terms
of the "License Agreement," as to which sublicenses each Party reserves any and
all rights and claims. St. Jude/Pacesetter expressly relinquish any claim to any
further right to sublicense or enforce any patent owned by Angeion.
3. GRANT OF LICENSES
3.1. GRANT OF LICENSES. Subject to the terms and conditions of this
Cross- License Agreement, each Party and its Affiliates (the "Licensor") hereby
grant to the other Party and its Affiliates (the "Licensee") a fully paid up,
royalty-free, worldwide, nonexclusive, nontransferable, nonsublicensable license
under the Licensed Patents of Licensor and its Affiliates to make, have made,
use, sell, have sold, distribute, have distributed, service, have serviced,
repair and have repaired products and services in the Licensee's Field of Use,
except that the Licensee may not use the have made rights for any products made
for the Licensee by a third party which are then resold to the same third party.
The license granted will also extend to Related Peripherals and/or Components
purchased from third parties for use with products or services licensed
hereunder. Neither the Licensee nor its Affiliates shall have the right to
sublicense the rights to the Licensed Patents of the Licensor and its Affiliates
to any third party or to enforce the Licensed Patents of the Licensor and its
Affiliates.
3.2. SUBLICENSABLE PATENTS. If a Party or its Affiliate has acquired or
acquires during the term of this Cross-License Agreement by assignment or
license a Sublicensable Patent related to the other Party's Field of Use from a
third party under conditions that permit such Party or its Affiliate to grant a
license or sublicense (but only in consideration of a royalty or continuing
payment to a non-affiliated third party), then such Party hereby grants or will
grant to the other Party the right and option to obtain a nonexclusive license
or sublicense, as the case may be, on the most favorable terms and conditions
permissible to licensees or sublicensees under such Sublicensable Patent.
3.3 TERMINATION AND ACQUISITIONS. The licenses granted in Sections 3.1
and 3.2 are irrevocable and may not be terminated for any reason except for a
material breach of the representations and warranties set forth in Section 4.1
and 4.2, provided that the rights and licenses granted to the Licensee and its
Affiliates shall immediately terminate upon any acquisition by a third party
(the "Acquiring Company") of all or substantially all of the Tachycardia Devices
business of the Licensee and such Affiliates, unless: (i) the Acquiring Company
(including all Affiliates) does not at the time of the acquisition, or at any
time in the six (6) preceding calendar months, engage in development, design or
manufacture of Tachycardia Devices, or (ii) the Acquiring Company is already
licensed under substantially all of the Licensed Patents of the Licensor and its
Affiliates in the Licensee's Field of Use, in which case, if the Acquiring
Company is paying royalties to the Licensor under an existing license, royalty
obligations provided for in the Acquiring Company's pre-acquisition license
shall be required for all manufacture, use or sale licensed under either or both
of the pre-acquisition license or the license granted herein.
3.4 OEM RESTRICTION. The licenses granted in Sections 3.1 and 3.2 shall
not be used by the Licensee or its Affiliates to make or have made products for
Cardiac Pacemakers, Inc. or its Affiliates on an OEM basis.
4. REPRESENTATIONS AND WARRANTIES
4.1. WARRANTIES. Each Party, for itself and its Affiliates, represents,
warrants and covenants to the other parties that, as of the Effective Date of
this Agreement:
(i) The execution, delivery and performance of this Agreement
are within its corporate power, have been duly and validly authorized by all
necessary corporate action and do not contravene or constitute a default under
any provision of its articles of incorporation or by-laws;
(ii) The execution, delivery and performance of this
Agreement by it does not conflict with, contravene or constitute a default under
provision of applicable law or regulation or any agreement, license, judgment,
injunction, order, decree or other instrument binding upon it, or otherwise
relating to its Licensed Patents or the inventions described and claimed
therein;
(iii) It has the right and power to grant on behalf of itself
and its Affiliates the licenses, releases and immunities set forth herein;
(iv) The licenses set forth in Section 3 above will confer
upon the Party receiving the license immunity from suit for infringement of the
Licensed Patents and all rights, benefits and immunities of a non exclusive
licensee under the Licensed Patents to the full extent provided by Section 3;
(v) All licenses, consents, authorizations and approvals, if
any, required for its execution, delivery and performance of this Agreement have
been obtained and are in full force and effect and all conditions thereof have
been complied with;
(vi) No action by or in respect of, or filing with, any
government body, agency or official or any other person or entity is required in
connection with its execution, delivery and performance of this agreement; and
(vii) This Agreement constitutes a valid and binding
agreement, enforceable against it in accordance with its terms.
4.2. ADDITIONAL WARRANTY. St. Jude/Pacesetter further warrant and
covenant that as of the Effective Date neither of them has granted or agreed to
grant a sublicense expressly relating to any Angeion patents or patent
applications to any company other than Intermedics, Inc., that there is or was
no judicial or arbitral proceeding other than that brought by Medtronic, Inc.
relating to a claim by any third party to sublicense rights in any Angeion
patent or patent application arising from the "License Agreement," and that any
other sublicenses relating to such patents or patent applications, if any, will
arise only by operation of judicial decision or arbitration.
4.3. EXCLUSIONS. Nothing in this Agreement shall be construed as:
(i) A representation or warranty as to the validity or scope
of any Licensed Patent;
(ii) A representation or warranty that anything made, used or
sold under any license granted in this Agreement is or will be free from
infringement or misappropriation of patents, copyrights, trade secrets or other
proprietary rights other than the Licensed Patents;
(iii) An obligation to bring or prosecute any action, suit or
proceeding, against third parties for infringement of any Licensed Patents or to
defend any action, suit, or proceeding which challenges or concerns the validity
of any Licensed Patent;
(iv) An obligation to file, prosecute, or pay any fee or
cost, including, without limitation, maintenance fees, with respect to any
Licensed Patent; or
(v) A grant by implication, estoppel or otherwise any
licenses or rights under patents, copyrights, trade secrets or any other rights,
except as expressly set forth herein.
4.4. SURVIVAL. The representations and warranties contained in Section
4.1 and 4.2 shall survive the execution, delivery and performance of this
Agreement by the Parties hereto.
4.5. DISCLAIMER. SECTIONS 4.1 AND 4.2 SET FORTH ALL OF THE
REPRESENTATIONS AND WARRANTIES OF EACH PARTY TO THE OTHER PARTY. EXCEPT AS
EXPRESSLY SET FORTH IN SECTIONS 4.1 AND 4.2, EACH PARTY HEREBY DISCLAIMS ALL
OTHER REPRESENTATIONS AND WARRANTIES, EXPRESS OR IMPLIED.
5. INDEMNIFICATION
Each Party shall indemnify, defend and hold harmless the other Party
and its successors, assigns, agents, officers, directors, and employees from and
against any judgements, claims, losses, costs, damages, expenses and settlements
(including, without limitation, reasonable legal fees and costs) arising out of
a breach (or a claim that, if true, would be a breach) of the representations
and warranties set forth in Sections 4.1 and 4.2. A Party shall not be obligated
to indemnify, hold harmless and defend unless (and only to the extent) the
indemnified Party (i) provides prompt notice of the commencement of the claim,
suit or proceeding for which indemnification is sought, (ii) provides
cooperation to such indemnifying party, and (iii) allows such indemnifying Party
to control the defense, provided that the indemnifying Party may not settle a
claim, suit or proceeding without approval of the indemnified Party, which
approval shall not be unreasonably withheld or delayed.
6. LIMITATION OF LIABILITY
TO THE EXTENT ALLOWED BY APPLICABLE LAW, IN NO EVENT SHALL EITHER PARTY
OR ITS AFFILIATES BE LIABLE FOR ANY LOSS OF PROFITS, LOSS OF BUSINESS, LOSS OF
USE, INTERRUPTION OF BUSINESS, OR FOR INDIRECT, SPECIAL, INCIDENTAL OR
CONSEQUENTIAL DAMAGES OF ANY KIND ARISING FROM THIS AGREEMENT OR THE SUBJECT
MATTER HEREOF, EVEN IF SUCH PARTY OR ITS AFFILIATES HAVE BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES, HOWEVER CAUSED.
7. CONFIDENTIALITY
All negotiations between the Parties relating to this Agreement and the
terms and conditions of this Agreement shall be confidential. Notwithstanding
the foregoing, it is understood that (i) each Party may discuss with third
parties the term and substance of this Agreement as may be necessary for
purposes of carrying out the business of such Party, pursuant to appropriate
confidentiality provisions with such third parties; and (ii) each Party may
disclose publicly (in press releases, in responses to any inquiries, in
regulatory filings and otherwise), that each Party has received a license to
certain of the other Party's patents.
8. TERM
This Agreement shall commence on the Effective Date of this Agreement
and, unless sooner terminated, shall continue thereafter in full force and
effect until the date of expiration of the last to expire of the Licensed
Patents.
9. GENERAL PROVISIONS
9.1. NOTES. Any notice, request, demand, or other communication
required or permitted hereunder shall be in writing, shall reference this
Agreement and shall be deemed to be properly given: (i) when delivered
personally; (ii) when sent by facsimile, with written confirmation of receipt;
(iii) five (5) business days after having been sent by registered or certified
mail, return receipt requested, postage prepaid; or (iv) two (2) business days
after deposit with a private industry express courier, with written confirmation
of receipt. All notices shall be sent to the address set forth below (or to such
other address as may be designated by a Party by giving written notice to the
other Party pursuant to this Section 9.1).
IF TO ST. JUDE/PACESETTER: IF TO ANGEION:
St. Jude Medical, Inc. Angeion Corporation
One Lillehei Plaza 0000 Xxxxxxxxx Xxxx
Xx. Xxxx, Xxxxxxxxx 00000 Xxxxxxxxxxx, Xxxxxxxxx 00000
Attn: General Counsel Attn: President
Fax: 000-000-0000 Fax: 000-000-0000
With a copy to:
Pacesetter, Inc.
00000 Xxxxxx Xxxx Xxxxx
Xxxxxx, Xxxxxxxxxx 00000
Attn: General Counsel
Fax: 000-000-0000
9.2. ASSIGNMENT. This Agreement may not be assigned, in whole or in
part, whether voluntarily, by operation of law or otherwise, by any Party
without the prior written consent of the other Party except to a wholly-owned
subsidiary or, subject to the provisions of Section 3.3, in connection with a
merger, reorganization, consolidation or sale of all or substantially all of the
assets of the business of such assigning Party relating to Tachycardia Devices.
Subject to the preceding sentence, the rights and liabilities of the Parties
hereto will bind, and inure to the benefit of, their respective assignees and
successors and is binding on the Parties and their successors and assigns. Any
attempted assignment other than in accordance with this Section 9.2 shall be
null and void.
9.3. GOVERNING LAW, JURISDICTION AND VENUE. This Agreement shall be
governed by and construed in accordance with the laws of the State of New York,
without reference to its conflicts of law provisions. Any dispute regarding this
Agreement shall be subject to the exclusive jurisdiction of the New York state
courts in and for New York county, New York (or, if there is federal
jurisdiction, the United States District Court for the Southern District of New
York) and the Parties agree to submit to the personal and exclusive jurisdiction
and venue of these courts.
9.4. CONSTRUCTION. This Agreement will be interpreted fairly in
accordance with its terms and without any construction in favor of or against
either Party.
9.5. ATTORNEYS' FEES. If any legal action, including, without
limitation, an action for arbitration or injunctive relief is brought between
the Parties relating to this Agreement or the breach hereof, the prevailing
Party in any final judgment or arbitration award, or the non-dismissing Party in
the event of a dismissal without prejudices, shall be entitled to the full
amount of all reasonable expenses, including all court costs, arbitration fees
and actual attorney fees paid or incurred in good faith.
9.6. WAIVER. The waiver by either Party of a breach of or a default
under any provision of this Agreement, shall not be effective unless in writing
and shall not be construed as a waiver of any subsequent breach of or default
under the same or any other provisions of this Agreement, nor shall any delay or
omission on the part of either Party to avail itself of any right or remedy that
it has or may have hereunder operate as a waiver of any right or remedy.
9.7. SEVERABILITY. If the application of any provision of this
Agreement to any particular facts or circumstances shall be held to be invalid
or unenforceable by an arbitration panel or a court of competent jurisdiction,
then (i) the validity and enforceability of such provision as applied to any
other particular facts or circumstances and the validity of other provisions of
this Agreement shall not in any way be affected or impaired thereby and (ii)
such provision shall be enforced to the maximum extent possible so as to effect
the intent of the Parties and reformed without further action by the parties to
the extent necessary to make such provision valid and enforceable.
9.8 RELATIONSHIP OF THE PARTIES. Nothing contained in this Agreement
shall be deemed or construed as creating a joint venture, partnership, agency,
employment of fiduciary relationship between the Parties. Neither Party nor its
agents have any authority of any kind to bind the other Party in any respect
whatsoever, and the relationship of the Parties is, and at all time shall
continue to be, that of independent contractors.
9.9. CAPTIONS AND SECTION HEADINGS. The captions for sections and
paragraphs used in this Agreement are inserted for convenience only and shall
not affect the meaning or interpretation of this Agreement.
9.10. FURTHER ASSURANCES. Each Party agrees to take or cause to be
taken such further actions, and to execute, deliver and file or cause to be
executed, delivered and filed such further documents and instruments, and to
obtain such consents, as may be reasonably required or requested in order to
effectuate fully the purposes, terms and conditions of this Agreement.
9.11. ENTIRE AGREEMENT. Except as otherwise provided for herein, this
Agreement constitutes the entire agreement between the parties concerning the
subject matter hereof and supersedes all prior or contemporaneous
representations, discussions, proposals, negotiations, conditions, agreements
and communications, whether oral or written, between the Parties relating to the
subject matter of this Agreement and all past courses of dealing or industry
custom. No amendment or modification of any provision of this Agreement shall be
effective unless in writing and signed by a duly authorized signatory of the
Party against which enforcement of the amendment or modification is sought.
10. EFFECTIVE DATE
10.1. INITIAL EFFECTIVE DATE. This Agreement shall become effective on
and as of the earlier of (i) the first day following consummation of the merger
among St. Jude/Pacesetter and Ventritex, Inc.; or (ii) May 31, 1997, provided,
however, that this Agreement shall not become effective if prior to May 31,
1997, St. Jude/Pacesetter or Ventritex terminates the merger agreement among
Ventritex and St. Jude and St. Jude provides notice to Angeion of such
termination.
10.2. SUBSEQUENT EFFECTIVE DATE. If this Agreement does not become
effective pursuant to Section 10.1, this Agreement shall become effective if St.
Jude/Pacesetter (or its Affiliates) acquires control of Ventritex, Inc. or all
or substantially all of the Tachycardia Devices business of Ventritex, Inc. (or
its Affiliates) on or before May 31, 1998, and this Agreement shall become
effective on and as of the date on which St. Jude/Pacesetter consummates such
acquisition.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by duly authorized representatives of the Parties.
ST. JUDE/PACESETTER ANGEION
ST. JUDE MEDICAL, INC. ANGEION CORPORATION
By: By:
-------------------------------- -------------------------------
Signature Signature
Name: Xxxxx X. X'Xxxxxx Name: Xxxxx X. Xxxxxxxxxxxxxx
------------------------------ -----------------------------
Print or type Print or type
Title: Vice President Title: Vice President & CFO
----------------------------- ----------------------------
Date: March 28, 1998 Date: April 2, 1997
----------------------------- ----------------------------
PACESETTER, INC.
By:
--------------------------------
Signature
Name: Xxxxxxx X. Xxxxxx
------------------------------
Print or type
Title: Assistant Treasurer
-----------------------------
Date: March 28, 1998
-----------------------------
