Exhibit 10.6
AMENDMENT TO FIRST LICENSE AGREEMENT
This Amendment, dated as of this 3rd day of March, 2005 (this "AMENDMENT")
to the License Agreement dated March 19, 2001 (the "FIRST LICENSE AGREEMENT"),
is made by and between Cytomedix, Inc. ("LICENSOR") and DePuy Spine, Inc. (f/k/a
DePuy AcroMed, Inc.) (hereinafter "LICENSEE"). Capitalized terms used herein and
not otherwise defined shall have the meaning set forth in the FIRST LICENSE
AGREEMENT.
WHEREAS, LICENSOR and LICENSEE are contemporaneously entering into a
SECOND LICENSE AGREEMENT (the "SECOND LICENSE AGREEMENT") whereby LICENSOR is
granting to LICENSEE non-exclusive worldwide exploitation rights to practice and
utilize the PATENTS in other fields of use requested by LICENSEE;
WHEREAS, LICENSOR and LICENSEE desire to modify the terms of the FIRST
LICENSE AGREEMENT to eliminate the exclusivity provisions attendant to
LICENSEE'S rights to practice and utilize the PATENTS in respect of the LICENSED
FIELD and to make such other amendments to the FIRST LICENSE AGREEMENT as are
consistent therewith;
NOW, THEREFORE, in consideration of the mutual covenants and promises
contained in this AMENDMENT, and for other good and valuable consideration, the
receipt of which is hereby acknowledged, the parties agree as follows:
1. Section 1.3: Reference to "Section 1.8" is changed to "Section 1.5."
2. Section 1.5: The last sentence of Section 1.5 is deleted in its
entirety and replaced with the following:
The term "chronic non-healing wounds" means (i) any venous stasis,
pressure (i.e., decubitus), or diabetic foot ulcers or (ii) any
wounds lasting 30 days or longer.
3. Section 1.6: Section 1.6 is amended to read:
1.6 AFFILIATES shall mean entities owned and organized under DePuy,
Inc. including, but not limited to DePuy Orthopaedics, Inc., DePuy
International, Ltd. and its affiliates, DePuy ACE, Inc., and Codman
& ▇▇▇▇▇▇▇▇▇, Inc. or an entity that directly or indirectly controls,
is controlled by, or is under common control with, the entity
specified. The term "owned" means the legal, beneficial or equitable
ownership directly or indirectly of more than 50% of the aggregate
of all voting equity interests rights in such entity.
4. Section 2.0:
a. Section 2.0 is deleted in its entirety and replaced with the
following:
LICENSOR hereby grants to LICENSEE, to the extent of the LICENSED
FIELD and LICENSED TERRITORY, a license under the PATENTS to fully
practice the PATENTS, including the right to make, have made, use,
offer for sale, sell and import PRODUCTS and promote the methods and
compositions recited in the claims of PATENTS using PRODUCTS in the
LICENSED FIELD. LICENSOR recognizes that LICENSEE may also practice
the PATENTS by promoting and selling through its AFFILIATES and
DISTRIBUTORS. This license also includes a right in purchasers and
users of PRODUCT to fully practice PATENTS within the LICENSED
FIELD, with such PRODUCT. Additionally, notwithstanding anything in
the FIRST LICENSE AGREEMENT to the contrary, CYTOMEDIX releases
LICENSEE and all purchasers and users of purchased PRODUCT for any
liability to CYTOMEDIX of any kind whatsoever (whether direct or
indirect, or known or unknown) arising from any past sale or use of
purchased PRODUCT outside of the LICENSED FIELD. LICENSEE
acknowledges and agrees that no license is granted or implied under,
and agrees not to practice under the PATENTS outside the LICENSED
FIELD. Furthermore, LICENSOR releases LICENSEE from any liability to
LICENSOR of any kind whatsoever (including breach of contract)
arising from purchasers of PRODUCT using the PRODUCT outside the
LICENSED FIELD of the FIRST LICENSE AGREEMENT and the ADDITIONAL
FIELDS of the SECOND LICENSE AGREEMENT provided that LICENSEE does
not promote sales of PRODUCT outside the LICENSED FIELD of the FIRST
LICENSE AGREEMENT and the ADDITIONAL FIELDS of the SECOND LICENSE
AGREEMENT.
5. Section 2.1: Section 2.1 is deleted in its entirety and replaced
with the following:
The license granted pursuant to Section 2.0 hereof shall be
non-exclusive for the remaining term of this Agreement.
6. Article III: The following sections 3.2 is added to Article III:
3.2 In the event that LICENSOR enters into any agreement with a
third party whereby LICENSOR grants the third party a license under
the PATENTS, and said third party is obligated under said license to
pay LICENSOR a royalty rate that is less than the six and one-half
percent (6.5%) royalty rate payable under Sections 3.1 and 5.3
hereof (hereinafter, the "More Favorable Royalty Rate), then the
royalty rate of Sections 3.1 and 5.3 hereof shall be deemed,
effective as of the date of such third-party license agreement, to
be the More Favorable Royalty Rate.
7. Article IV: Minimum Royalties: Sections 4.0 and 4.1 are deleted in
their entirety.
8. Article V: Sublicensing.
a. Section 5.0: The second sentence of Section 5.0 is deleted in
its entirety and replaced with the following:
This sublicense also includes a right in purchasers and users of the
purchased PRODUCT to fully practice PATENTS within the ADDITIONAL
LICENSED FIELDS with such PRODUCT. The LICENSEE shall not have the
right to sublicense to any other third party.
b. Section 5.5: Section 5.5 is deleted in its entirety.
9. Article VI: Payments
a. Section 6.3: Section 6.3 is deleted in its entirety.
b. Section 6.4: Deleted from Section 6.4 is the parenthetical
expression "(including minimum royalties of the year in which
the Agreement is terminated)."
10. Article VII: Confidentiality: A new Section 7.03 shall be added,
which provides as follows:
7.03 Information disclosed by LICENSEE to LICENSOR or
otherwise obtained by LICENSOR under this Agreement shall only be
used by LICENSOR for the purpose of determining compliance under
this Agreement by LICENSEE, sublicensees, or users or purchasers of
PRODUCT, and not for any other purpose
11. Section 8.2: Section 8.2 is deleted in its entirety.
12. Article X: Termination
a. Section 10.1: Deleted from Section 10.1 is the phrase "for up
to ninety (90) days".
b. Section 10.3.b: Deleted from Section 10.3.b is the
parenthetical phrase "(including minimum royalties)".
c. Section 10.6: Section 10.6 is deleted in its entirety and
replaced with the following:
LICENSEE shall have a right to terminate this Agreement upon 180
days written notice.
13. Section 11.0 through Section 11.5: Sections 11.0 through 11.5 of
Article XI are deleted in their entirety and replaced with the
following:
11.0 LICENSOR may, at its own expense, bring suit or take any other
action it deems appropriate in its sole and absolute discretion
against any infringer in the LICENSED FIELD and LICENSOR shall be
entitled to all past, present, or future recoveries that in any way
result from or relate to such suit or action.
14. Article XII: Records. In Section 12.0, the phrase "records of all
operations affecting payments hereunder" is replaced with "records
showing the sales or other disposition of PRODUCT sold or otherwise
disposed of under the license herein granted in sufficient detail to
enable the compliance with the terms of this FIRST LICENSE AGREEMENT
to be determined."
15. Section 21.0: The addresses in Section 21.0 to which notices to the
LICENSOR shall be supplied are replaced with the following:
LICENSOR: Cytomedix, Inc.
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇. ▇▇▇▇▇▇▇ ▇▇▇▇▇, CEO
With a copy to: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ & Associates
▇▇ ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
15. Section 22.0: Section 22.0 is deleted in its entirety and replaced
with the following:
To the extent legally permissible and/or legally mandated, LICENSEE
agrees to ▇▇▇▇ its brochures for the items listed in Appendix B
(revised and attached hereto) and improvements thereof with the
following: "Certain products shown in this brochure are sold subject
to a License Agreement with Cytomedix Inc., and are not licensed for
use in treating chronic non-healing wounds (i.e., any venous stasis,
decubitus, or diabetic foot ulcers, or any other wounds lasting 30
days or longer).
IN WITNESS WHEREOF, the parties have caused this AMENDMENT to be duly
executed as of the date first mentioned above via their telefaxed signatures,
which shall have the same import and effect as if signed originally.
LICENSOR LICENSEE
Cytomedix, Inc. DePuy Spine, Inc. (f/k/a DePuy AcroMed, Inc.)
By: ▇▇▇▇▇▇▇ ▇▇▇▇▇, Ph.D. By: ▇▇▇▇ ▇▇▇▇▇▇
Name: ▇▇▇▇▇▇▇ ▇▇▇▇▇, Ph.D Name: ▇▇▇▇ ▇▇▇▇▇▇
Its: Chief Executive Officer Its: Worldwide President
APPENDIX B
(Schedule of Products)
SEPARATORS
▇▇▇▇-▇▇-▇▇▇ SYMPHONY II FS-20 Blood Draw and Processing Components
▇▇▇▇-▇▇-▇▇▇ SYMPHONY II FS-60 Blood Draw and Processing Components
▇▇▇▇-▇▇-▇▇▇ SYMPHONY II FS-120 Blood Draw and Processing Components
▇▇▇▇-▇▇-▇▇▇ SYMPHONY Process Disposable-One
▇▇▇▇-▇▇-▇▇▇ SYMPHONY Process Disposable-Two
Disposable Processing Kits contain the items required for containing blood
during processing in the centrifuge
CAPITAL
▇▇▇▇-▇▇-▇▇▇ SYMPHONY II Centrifuge with Balance Weight Set
▇▇▇▇-▇▇-▇▇▇ SYMPHONY Centrifuge
APPLICATORS/MIXERS
▇▇▇▇-▇▇-▇▇▇ SYMPHONY Spray Applicator
▇▇▇▇-▇▇-▇▇▇ SYMPHONY Dual Lumen Applicator
▇▇▇▇-▇▇-▇▇▇ SYMPHONY GDS Standard Kit
▇▇▇▇-▇▇-▇▇▇ SYMPHONY GDS Manifold Kit
