Exhibit 10.2
ASSIGNMENT AGREEMENT
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THIS ASSIGNMENT AGREEMENT (the "Agreement"), made as of the 27th day of
February 1998, is entered into by Nitinol Medical Technologies, Inc., a Delaware
corporation with its principal place of business at 00 Xxxxxxxx Xxxxxx, Xxxxxx,
XX 00000 (the "Company"), and Xxxxxx Xxxxx, M.D., residing at 0 Xxxx Xxxxx,
Xxxxxx, XX 00000 ("Simon").
INTRODUCTION
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The Company wishes to purchase, and Simon wishes to sell, all of Simon's
rights in certain inventions and related patent rights, on the terms and
conditions set forth herein.
1. Assignment. Simon hereby agrees to assign to the Company all of his
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right, title and interest to the inventions (the "Inventions") and related
patent rights specified on Exhibit A hereto. Such assignment shall be in the
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form of Exhibit B to this Agreement. Upon the request of the Company, and at
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the Company's expense, Simon shall execute such further assignments, documents
and other instruments as may be necessary or desirable to fully and completely
assign all of his right, title and interest to the Inventions to the Company and
to assist the Company in applying for, obtaining and enforcing patents or
copyrights or other rights in the United States and in any foreign country with
respect to the Invention.
2. Compensation.
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(a) In partial consideration for the sale and assignment of the
Inventions, the Company agrees to pay Simon the following amounts: (i) one
percent (1%) of the Net Sales (as defined below) of Products (as defined below)
sold by the Company, its affiliates or licensees (or any of their direct or
indirect sublicensees), and (ii) five percent (5%) of License Fees (as defined
below). Such amounts shall be paid on a quarterly basis within 60 days after
the end of each calendar quarter, and shall be accompanied by a statement
setting forth in reasonable detail the calculation thereof. In the event of
Simon's death, such amounts shall continue to be payable to the executors or
personal representatives of his estate or to such other persons as they may
direct.
(b) As used herein, the following terms shall have the following
meanings:
(i) "Product" means any product, device, composition, method or
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service whose manufacture, use, provision or sale is covered by a Claim of an
Applicable Patent Right.
(ii) "Applicable Patent Rights" means all United States and
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foreign patents and/or patent applications or the equivalent thereof that
describe or claim an Invention, and all continuations, continuations-in-part,
divisionals, reissues, reexaminations or extensions thereof. Without limiting
the foregoing, "Applicable Patent Rights" includes all patents and patent
applications set forth on Exhibit A.
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(iii) "Claim" means any (A) claim of an issued patent included
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in the Applicable Patent Rights that has not been declared invalid in the
jurisdiction in question by a court of competent jurisdiction in any unappealed
and unappealable decision, and (B) claim of a patent application included in the
Applicable Patent Rights, provided that such claim of a patent application shall
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cease to constitute a Claim as of the seventh anniversary of the date of filing
of such patent application (or, in the case of a divisional or continuation
application, the date of filing of the earliest parent application).
(iv) "Net Sales" means the total amount received by the Company,
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its affiliates or licensees (or any of their direct or indirect sublicensees)
from the sale of Products to third parties, less only the following amounts (to
the extent the total amount received by the Company otherwise reflects such
amounts): (A) refunds for returned Products, (B) freight and insurance costs
incurred in shipping Products to customers and billed to such customers, (C)
quantity and trade discounts actually allowed and taken, (D) sales, use, value-
added and other taxes or government charges that are incurred in connection with
the sale, exportation or importation of the Products and are billed to customers
(but specifically excluding income taxes), and (E) charge back payments and/or
rebates for Products provided to managed health care organizations or federal,
state and local governments, including Medicare and Medicaid. With respect to
sales of Products by licensees, the definition of "Net Sales" shall be modified
to be consistent with the definition of such term in the agreement between the
Company and such licensee, such that the basis for payment of royalties from Net
Sales by such licensee shall be the same for the Company and the Consultant,
provided that the definition of "Net Sales" in such agreement between the
Company and such licensee is not materially less favorable to the licensor than
the definition contained herein.
(v) "License Fees" means all fees and other payments of any kind
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(but excluding royalties or other payments based upon Net Sales) received by the
Company as consideration for any license or sublicense of an Invention or
Applicable Patent Right; provided that License Fees shall not include bona fide
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payments made by a third party to the Company to fund research and development
or as an equity investment in the Company.
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(c) If the Company wishes to sell or assign (rather than license) any
of the Applicable Patent Rights to any third party, then, prior to and as a
condition of such sale or assignment, the Company shall obtain the binding
written agreement of such third party, in form and substance reasonably
satisfactory to Consultant, to assume and perform all of the Company's royalty
payment and other obligations under Section 2(a), Section 2(e) and Section 4
hereof that relate to such Applicable Patent Right or to any Product whose
manufacture, use, provision or sale is covered by a Claim of such Applicable
Patent Right.
(d) In further consideration for the sale and assignment of the
Inventions, effective as of the date of this Agreement, the Company shall grant
to Simon two nonstatutory stock options to purchase a total of 50,000 shares of
the Company's Common Stock ($.001 per value per share) at an exercise price of
$10.50 per share. One of such options (the "Plan Option"), covering 25,000
shares, shall be in the form of Exhibit C to this Agreement and shall be granted
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under the Company's 1996 Stock Option Plan (the "Plan"). The other of such
options (the "Non-Plan Option"), also covering 25,000 shares, shall be in the
form of Exhibit D to this Agreement and shall be granted outside the Plan. In
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connection with such options, simultaneously herewith the Company and Simon
shall enter into a Registration Rights Agreement in the form of Exhibit E to
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this Agreement. The Company hereby represents and warrants that (i) the
issuance and delivery of the Plan Option and the Non-Plan Option have been duly
authorized by all requisite corporate action (including approval by the
Company's Board of Directors) and will not violate any provision of law, the
Company's charter or by-laws, or any agreement or instrument by which the
Company is bound, (ii) the Plan Option complies with all applicable provisions
of the Plan, and (iii) both the Plan Option and the Non-Plan Option represent
the legal, valid and binding obligations of the Company, enforceable in
accordance with their respective terms.
(e) The Company shall keep full and accurate records containing all
information necessary to calculate the amounts payable to Simon under Section
2(a). Upon at least five days prior written notice to the Company, no more often
than once in each calendar year, Xxxxx xxx inspect such records for the purpose
of verifying the proper amount of such payments.
3. Certain Representations, Warranties and Disclaimers of Simon. Simon
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represents and warrants to the Company that he has the legal right to make the
assignment contemplated by Section 1. Except for the representation and
warranty set forth in the foregoing sentence, Simon makes no representations or
warranties of any kind, whether express, implied or otherwise, in connection
with the Inventions or this Agreement. Without limiting the foregoing, Simon
expressly disclaims any express or implied representation or warranty as to (i)
the validity or scope of any patent rights assigned hereunder, (ii) non-
infringement of the intellectual property
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rights of any third party, or (iii) the merchantability, fitness for a
particular purpose, or performance of any product that uses any Invention.
4. Indemnification. The Company shall indemnify and hold harmless Simon
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and his executors, administrators, personal representatives, successors and
assigns against all liabilities, damages, losses and expenses (including
reasonable attorneys' fees) incurred by or imposed upon any of the foregoing
persons in connection with any claim, suit, action, demand or judgment
(including but not limited to those based on any theory of product liability
whether brought in tort, warranty, strict liability or other form) arising out
of the design, production, manufacture, marketing, provision, use, sale or other
disposition of any product, process or service that uses any Invention.
5. Retrievable Filter, Technology Purchase Agreement. The Company
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acknowledges and agrees that the retrievable xxxx xxxx filter invented by Simon
and others and described in Removable Embolus Blood Clot Filter (U.S. Serial No.
08-682192, filed on July 17, 1996) constitutes "New Technology" within the
meaning of the Technology Purchase Agreement dated as of April 14, 1987 between
the Company and Simon, and that the Company shall pay royalties on such filter
in accordance with the terms of the Technology Purchase Agreement. The parties
acknowledge that Simon previously assigned some of his rights under the
Technology Purchase Agreement to The Xxxx Israel Hospital Association. Nothing
in this Agreement is intended to or shall modify or supersede the Technology
Purchase Agreement.
6. Entire Agreement. This Agreement constitutes the entire agreement
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between the parties and supersedes all prior agreements and understandings,
whether written or oral, relating to the subject matter of this Agreement.
7. Amendment. This Agreement may be amended or modified only by a
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written instrument executed by both the Company and Simon.
8. Governing Law. This Agreement shall be construed, interpreted and
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enforced in accordance with the laws of the Commonwealth of Massachusetts.
9. Successors and Assigns. This Agreement shall be binding upon, and
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inure to the benefit of, both parties and their respective executors,
administrators, personal representatives, successors and assigns, including any
corporation with which, or into which, the Company may be merged or which may
succeed to its assets or business.
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IN WITNESS WHEREOF, the parties hereto have executed this Assignment
Agreement as of the day and year set forth above.
NITINOL MEDICAL TECHNOLOGIES,
INC.
By: /s/ Xxxxxx X. Xxxxx
__________________________________________
Title: Chief Executive Officer
_______________________________________
/s/ Xxxxxx Xxxxx
_____________________________________________
Xxxxxx Xxxxx, M.D.
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EXHIBIT A
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Inventions
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The Inventions shall consist of the inventions described in "Daisy Occluder
and Method for Septal Defect Repair" (U.S. Patent Application filed on August
28, 1996, App. No. 08/697,837).
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EXHIBIT B
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Form of Assignment
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ASSIGNMENT
In consideration of the sum of One Dollar ($1.00) or equivalent and other
good and valuable consideration paid to Xx. Xxxxxx Xxxxx ("Xxxxx"), Xxxxx hereby
sell(s) and assign(s) to NITINOL MEDICAL TECHNOLOGIES, INC. (the "Assignee") all
of his right, title and interest, for the United States of America (as defined
in 35 U.S.C. (S)100) and throughout the world, in the invention(s) known as
"Daisy Occluder and Method for Septal Defect Repair" for which application(s)
for patent in the United States of America has (have) been executed by Simon
(also known as United States Application Serial No. 08/697,837, filed on August
28, 1996), in any and all applications thereon, in any and all Letters Patent(s)
therefor, and any and all reissues, extensions, renewals, reexaminations,
divisions and continuations of such applications or Letters Patent(s) to the
full end of the term or terms for which such Letters Patent(s) issue, such
entire right, title and interest to be held and enjoyed by the Assignee the same
as they would have been held and enjoyed by Simon had this assignment and sale
not been made.
Simon agrees to execute all papers necessary in connection with the
application(s) and any continuing, divisional, reissue, reexamination or
corresponding application(s) thereof and also to execute separate assignments in
connection with such applications as the Assignee may deem necessary or
expedient.
At Assignee's expense, Simon agrees to execute all papers necessary in
connection with any interference which may be declared concerning the
application(s) or any continuation, division, reissue or reexamination thereof,
or Letters Patent(s), and to cooperate reasonably with the Assignee in obtaining
evidence and going forward with such interference.
Simon hereby covenants that he has full right to convey the entire interest
herein assigned, and that he has not executed, and will not execute, any
agreement in conflict therewith.
The undersigned hereby grant(s) Xxxxxx X. Xxxxxx of Sixbey, Friedman,
Xxxxxx & Xxxxxxxx, Suite 600, 0000 Xxxxxxxxx Xxxxx, XxXxxx, XX 00000, power to
insert on this assignment any further identification which may be necessary or
desirable in order to comply with the rules of the United States Patent and
Trademark Office for recordation of this document.
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WITNESS my hand and seal as of the 27th day of February, 1998.
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Xxxxxx Xxxxx
COMMONWEALTH OF MASSACHUSETTS )
) ss.
COUNTY OF ______________________________ )
Then personally appeared before me this ________________________ day of
, 1998, the above-named Xxxxxx Xxxxx who acknowledged the foregoing
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instrument to be his free act and deed.
______________________________________
Notary Public
My commission expires:
WITNESS my hand and seal this _____ day of _________, 1998.
___________________________________
Xxxxxx Xxxxx
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COMMONWEALTH OF MASSACHUSETTS )
) ss.
COUNTY OF ____________________________ )
Then personally appeared before me this ________________________ day of
, 1998, the above-named Xxxxxx Xxxxx who acknowledged
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the foregoing instrument to be his free act and deed.
______________________________________
Notary Public
My commission expires:
WITNESS my hand and seal this ____ day of February, 1998.
___________________________________
Xxxxxx Xxxxx
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Exhibit C intentionally omitted - See Exhibit 10.3 to Amendment No. 1 to
Registrant's Quarterly Report on Form 10-Q for the quarterly period ended March
31, 1998 for an executed copy of the Stock Option Agreement.
Exhibit D intentionally omitted - See Exhibit 10.4 to Amendment No. 1 to
Registrant's Quarterly Report on Form 10-Q for the quarterly period ended March
31, 1998 for an executed copy of the Non-Plan Stock Option Agreement.
Exhibit E intentionally omitted - See Exhibit 10.5 to Amendment No. 1 to
Registrant's Quarterly Report on Form 10-Q for the quarterly period ended March
31, 1998 for an executed copy of the Registration Rights Agreement.
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