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EXHIBIT 10.9
AGREEMENT ("Agreement") with an Effective Date of December 22, 1997, between
INTERNATIONAL BUSINESS MACHINES CORPORATION, a New York corporation (hereinafter
called IBM), and INTUITIVE SURGICAL, INC. a Delaware corporation (hereinafter
called INTUITIVE).
IBM has the right to license others under certain patents and patent
applications relating to systems and methods for the augmentation of surgery.
INTUITIVE desires to acquire an exclusive license under those patents and patent
applications.
In consideration of the premises and mutual covenants herein contained,
IBM and INTUITIVE agree as follows:
SECTION 1. DEFINITIONS
1.1 "ASSOCIATED MATERIALS" shall mean copies of all inventor notebooks (or the
relevant portions thereof), files, data, information, results of testing,
drawings and schematics and all models, robots and prototypes which are owned by
IBM and are in IBM's possession on the Effective Date and which relate to the
LARS Patents.
1.2 "BIOPSY" shall mean the removal and microscopic examination of tissue taken
from a living body and performed to establish an exact diagnosis.
1.3 "CORPORATE PARTNERS" shall mean those parties who are essential to the
success of gaining regulatory approval for the sale of INTUITIVE Licensed
Products and Services in a given country and/or in making significant sales of
INTUITIVE Licensed Products and Services in a given country.
1.4 "ENDOSCOPE" shall mean any optical imaging device adapted to be inserted
through a small incision, puncture wound, or orifice into a natural or
artificial lumen or cavity of a human body.
1.5 "FIELD" shall mean Surgery performed in the practice of animal and human
medicine, with or without an Endoscope, provided, however, the medical fields of
neurology, ophthalmology and orthopedics, and all Surgery practiced in those
medical fields, and Biopsy procedures are excluded from the Field.
1.6 "INTUITIVE LICENSED PRODUCTS AND SERVICES" shall mean any product and/or
service the manufacture, use or sale of which is covered by a claim contained in
the LARS and/or ROBODOC Patents.
1.7 "INFORMATION HANDLING SYSTEM" OR "IHS" shall mean any instrumentality or
aggregate of instrumentalities primarily
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designed to compute, classify, process, transmit, receive, retrieve, originate,
switch, store, display, manifest, measure, detect, record, reproduce, handle or
utilize any form of information, intelligence or data for business, scientific,
control or other purposes.
1.8 "LARS PATENTS" shall have the meaning set forth in Exhibit I to this
Agreement.
1.9 "ROBODOC PATENTS" shall mean United States Patents 5,299,288; 5,408,409 and
5,086,401 and Japanese Patent ▇▇▇▇▇▇▇ and all patents which are continuations,
continuations-in-part, divisions, reissues, renewals, extensions or additions
thereof (or which otherwise claim priority from the foregoing) and their
corresponding patents.
1.10 "SUBSIDIARY" shall mean a corporation, company or other entity:
1.10.1 more than fifty percent (50%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other
managing authority) are, now or hereafter, owned or controlled, directly
or indirectly, by a party hereto; or
1.10.2 which does not have outstanding shares or securities, as may be the case
in a partnership, joint venture or unincorporated association, but more
than fifty percent (50%) of whose ownership interest representing the
right to make the decisions for such corporation, company or other
entity is now or hereafter, owned or controlled, directly or indirectly,
by a party hereto, but such corporation, company or other entity shall
be deemed to be a Subsidiary only so long as such ownership or control
exists.
1.11 "SURGERY" shall mean operation on or manipulation of tissue for the
treatment of disease, injury or deformity.
SECTION 2. GRANT OF RIGHTS
2.1 After the Effective Date and upon receipt of the payment of Section 4.1, IBM
agrees to grant and hereby grants to INTUITIVE an exclusive (subject to Sections
2.3 and 2.4), revocable (upon termination per Section 9), worldwide right (with
the right to grant sublicenses thereunder) under the LARS Patents to make, have
made for INTUITIVE, use, import, offer for sale, sell and/or otherwise transfer
INTUITIVE Licensed Products and Services in the Field.
2.2 After the Effective Date and upon receipt of the payment of Section 4.1, IBM
agrees to grant and hereby grants to INTUITIVE a nonexclusive revocable (upon
termination per Section 9), worldwide right (without the right to grant
sublicenses
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thereunder except as provided in Section 3) under the LARS Patents to make, have
made for INTUITIVE, use, import, offer for sale, sell and/or otherwise transfer
INTUITIVE Licensed Products and Services outside the Field.
2.3 The license of Section 2.1 is subject to a reserved right in IBM and its
Subsidiaries to practice the LARS Patents in its and their own facilities for
research, development, testing and engineering for any purpose and for the
manufacture and sale of IBM products and the provision of IBM services, other
than for IBM products and services within the Field.
2.4 INTUITIVE acknowledges that IBM has previously licensed the right to
practice the inventions claimed in the LARS Patents to the entities identified
in the letter dated December 18, 1997, from A. M. Torressen (IBM) to K. I.
▇▇▇▇▇▇▇▇▇ (INTUITIVE) for use in "Information Handling Systems", but otherwise
without restriction as to field, and accepts the license of Section 2.1 above
subject to these identified prior licenses. IBM shall exclude the LARS Patents
from all patent licenses IBM enters into with third parties after the Effective
Date except for specific licenses which may be granted by IBM outside the Field.
INTUITIVE further acknowledges that IBM is negotiating the grant of license
rights under the LARS Patents outside the Field with Integrated Surgical
Systems.
2.5 After the Effective Date and upon receipt of the payment of Section 4.1, IBM
agrees to grant and hereby grants to INTUITIVE an exclusive (subject to Sections
2.7 and 2.8), revocable (upon termination per Section 9), worldwide right (with
the right to grant sublicenses thereunder) under the ROBODOC Patents to make,
have made for INTUITIVE, use, import, offer for sale, sell and/or otherwise
transfer INTUITIVE Licensed Products and Services in the Field.
2.6 After the Effective Date and upon receipt of the payment of Section 4.1, IBM
agrees to grant and hereby grants to INTUITIVE a nonexclusive revocable (upon
termination per Section 9), worldwide right (without the right to grant
sublicenses thereunder except as provided in Section 3) under the ROBODOC
Patents to make, have made for UNINTUITIVE, use, import, offer for sale, sell
and/or otherwise transfer INTUITIVE Licensed Products and Services outside the
Field.
2.7 The license of Section 2.5 is subject to a reserved right in IBM and its
Subsidiaries to practice the ROBODOC Patents in its and their own facilities for
research, development, testing and engineering for any purpose and for the
manufacture and sale of IBM products and the provisions of IBM services, other
than for IBM products and services within the Field. The license of
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Section 2.5 is also subject to a reserved right in the University of California
to practice the ROBODOC Patents for educational and research purposes.
2.8 INTUITIVE acknowledges that IBM has previously licensed the right to
practice the inventions claimed in the ROBODOC Patents to the entities
identified in the letter dated December 18, 1997, from A. M. Torressen (IBM) to
K. I. ▇▇▇▇▇▇▇▇▇ (INTUITIVE) for use in "Information Handling Systems", but
otherwise without restriction as to field, and accepts the license of Section
2.5 above subject to those identified prior licenses. IBM shall exclude the
ROBODOC Patents from all patent licenses IBM enters into with third parties
after the Effective Date except for specific licenses which may be granted by
IBM outside the Field. INTUITIVE further acknowledges that IBM has granted to
Integrated Surgical Systems, its Subsidiaries, and its and their customers, an
immunity from suit under the ROBODOC Patents, and accepts the license of Section
2.5 subject thereto, and that IBM is also negotiating the grant of license
rights under the ROBODOC Patents outside the Field with Integrated Surgical
Systems.
2.9 As soon as practicable after the payment of Section 4.1, IBM shall provide
INTUITIVE with all Associated Materials.
SECTION 3. SUBLICENSES
3.1 The right to grant sublicenses granted in Section 2.2 and 2.6 shall extend
only to INTUITIVE's Subsidiaries and Corporate Partners and only to the extent
necessary for INTUITIVE to Partners and only to the extent necessary for
INTUITIVE to develop, manufacture, market, sell and/or otherwise transfer
INTUITIVE Licensed Products and Services.
3.2 INTUITIVE shall be responsible to IBM for the adherence of all such
Subsidiaries and Corporate Partners to the terms and conditions of this
Agreement as such terms and conditions are applicable to such Subsidiaries and
Corporate Partners. Any sublicenses to any such Subsidiaries or Corporate
Partners shall terminate on the date such Subsidiary or Corporate Partner ceases
to be a Subsidiary or Corporate Partner.
SECTION 4. CONSIDERATION
4.1 In consideration for the rights and licenses granted in Sections 2.1 and
2.2:
4.1.1 INTUITIVE shall pay IBM a non-refundable payment of nine hundred sixteen
thousand, six hundred seventy dollars ($916,670) upon the Effective
Date.
4.1.2 INTUITIVE shall also pay IBM four million, five hundred eighty three
thousand, three hundred thirty dollars ($4,583,330) within ten (10) days
after the closing of the first underwritten public offering registered
under the Securities Act of 1933, as amended, but in any event not
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later than September 1, 1998, which date may be extended until October
1, 1998 upon a showing of good cause by INTUITIVE.
4.2 In consideration for the rights and licenses granted in Sections 2.5 and
2.6:
4.2.1 INTUITIVE shall pay IBM a non-refundable payment of eighty three
thousand, three hundred thirty dollars ($83,330) upon the Effective
Date.
4.2.2 INTUITIVE shall also pay IBM four hundred sixteen thousand, six hundred
seventy dollars ($416,670) within ten (10) days after the closing of the
first underwritten public offering registered under the Securities Act
of 1993, as amended, but in any event not later than September 1, 1998,
which date may be extended until October 1, 1998 upon a showing of good
cause by INTUITIVE.
4.3 INTUITIVE shall also pay IBM one million dollars ($1,000,000) within ninety
days (90) after the end of the fiscal year in which the cumulative total of all
sales of products and services (including INTUITIVE Licensed Products and
Services, if any) in that year by INTUITIVE (or any entity or person acting for
or on behalf of INTUITIVE which leases, sells and/or otherwise transfers
INTUITIVE products and/or services) first equals or exceeds twenty five million
dollars ($25,000,000) ("Due Date"). Such payments shall accrue on the date upon
which the above-noted total sales are attained ("Accrual Date").
4.4 INTUITIVE shall also pay IBM an additional one million dollars ($1,000,000)
within ninety days (90) after the end of the fiscal year in which the cumulative
total of all sales of products and services (including INTUITIVE Licensed
Products and Services, if any) in that year by INTUITIVE (or any entity or
person acting for or on behalf of INTUITIVE which leases, sells or otherwise
transfers INTUITIVE products and/or services) first equals or exceeds fifty
million dollars ($50,000,000) ("Due Date"). Such payments shall accrue on the
date upon which the above-noted total sales are attained ("Accrual Date").
INTUITIVE understands that, depending upon the total sales attained, the
payments of both Sections 43.3 and 4.4 may be due at the same time.
SECTION 5. PATENT ENFORCEMENT AND PROSECUTION
5.1 INTUITIVE shall have the right but not the obligation to enforce the LARS
Patents and the ROBODOC Patents in the Field, at INTUITIVE's expense. IBM agrees
to cooperate with such enforcement efforts as necessary. INTUITIVE agrees to
reimburse IBM for its reasonable expenses incurred in connection with such
cooperation. If IBM becomes aware of infringement of the LARS Patents or the
ROBODOC Patents inside the Field and believes that
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enforcement of the patents is required in order to protect the value of the
patents in the face of the infringement, then IBM shall submit a written request
for enforcement of the patents to INTUITIVE. INTUITIVE shall respond to IBM
within sixty (60) days indicating whether INTUITIVE will enforce the patents
against the alleged infringer. In the event that INTUITIVE declines to enforce
the patents, and IBM disagrees with that position, INTUITIVE's CEO shall meet,
upon IBM's request, the IBM's Vice President of Intellectual Property and
Licensing to further discuss the necessity and advisability of enforcement
against the alleged infringer.
5.2 Outside the Field, INTUITIVE shall have no right to bring suit against any
third party under or in connection with this Agreement including, but not
limited to, alleged infringers of the LARS Patents or the ROBODOC Patents or any
one of them. If INTUITIVE becomes aware of infringement of the LARS Patents or
the ROBODOC Patents outside the Field and believes that enforcement of the
patents is required in order to protect the value of the patents in the face of
infringement, then INTUITIVE shall submit a written request for the enforcement
of the patents to IBM. IBM shall respond to INTUITIVE within sixty (60) days
indicating whether IBM will enforce the patents against the alleged infringer.
In the event that IBM declines to enforce the patents and INTUITIVE disagrees
with that position, IBM's Vice President of Intellectual Property and Licensing
shall meet, upon INTUITIVE's request, with INTUITIVE's CEO to further discuss
the necessity and advisability of enforcement against the alleged infringer.
5.3 If either Party is threatened with suit, intends to file suit or is sued, it
shall promptly advise the other Party in writing. Neither IBM nor INTUITIVE
shall enter any settlement or other agreement which negatively affects the
validity or enforceability of the LARS Patents or the ROBODOC Patents or any
issued claim thereof without the advice and prior written consent of the other
party, which consent shall not be unreasonably withheld.
5.4 INTUITIVE shall have the right but not the obligation, at its expense, to
participate in the prosecution (including the filing of foreign counterparts) of
the LARS Patents. At INTUITIVE's request IBM will provide INTUITIVE with copies
of patent office actions and filings in the United States and foreign countries
in sufficient time to permit INTUITIVE to comment on and advise IBM with respect
to such actions or filings prior to submission of IBM's response. INTUITIVE
shall have the right to suggest additional claims under the LARS Patents for
prosecution by IBM, at IBM's expense. If IBM elects not to prosecute such
claims, INTUITIVE may, at its election and its
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expense, prosecute such claims. IBM agrees to cooperate with such prosecution
and execute such papers as may be required for INTUITIVE to pursue such
prosecution. Any patent issuing therefrom shall be included in the LARS Patents
and will be subject to the licenses granted under Sections 2.1 and 2.2. However,
IBM shall continue the prosecution and maintenance of the LARS Patents at its
expense. However, if IBM elects to abandon prosecution or maintenance of any of
the LARS Patents, INTUITIVE may, at its election, assume such prosecution or
maintenance, and IBM will assign such patent or patent application to INTUITIVE
subject to a worldwide, non-exclusive, paid-up right outside the Field to make,
have made, practice, have practiced, use, import, offer for sale, sell and/or
otherwise transfer under such patents or patents issuing on such applications,
including the right to extend such license to IBM's IHS licensees.
SECTION 6. WARRANTY
6.1 IBM represents and warrants that as of the Effective Date:
(A) it has the full right and power to grant the licenses set forth in
Section 2.1, 2.2, 2.5 and 2.6;
(B) to the best of its knowledge, there are no outstanding agreements,
licenses, assignments, or encumbrances inconsistent with the provisions
of said licenses or with any other provision of this Agreement, other
than those set forth in Sections 2.4 and 2.8;
(C) to the best of its knowledge none of the licenses to the licensees
listed in the letter referred to in Sections 2.4 and 2.8 grant the
licensees the right to sublicense or assign their rights under such
license except to a Subsidiary (as that term is defined herein) of such
licensee (or of sublicensed Subsidiaries to sublicense other
Subsidiaries).
IBM makes no representation or warranty, express or implied, as to the validity
or scope of any of the LARS Patents or the ROBODOC Patents. IBM shall have no
liability in respect of any infringement of patents, copyrights or other rights
of third parties due to INTUITIVE's operating under the rights and license
herein granted.
SECTION 7. RECORDS
7.1 INTUITIVE shall keep records in accordance with generally accepted
accounting principles and in sufficient detail to permit the determination of
the amounts due to IBM under Sections 4.3 and 4.4. Such records shall be kept
until the payment of Section 4.4 is made.
7.2 Prior to the payment of Section 4.4, upon written notice for an audit,
INTUITIVE shall permit auditors designated by IBM, and reasonably acceptable to
INTUITIVE, together with such legal and
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technical support as IBM deems necessary, to examine, during ordinary business
hours, books, records, materials, and manufacturing processes of INTUITIVE for
the purpose of verifying compliance with Sections 4.2, 4.3 and 4.4. Each party
shall pay the costs that it incurs in the course of the audit. No more than one
audit may be conducted in any one fiscal year.
SECTION 8. COMMUNICATIONS
8.1 Any notice or other communication required or permitted to be made or given
to either party hereto pursuant to this Agreement shall be sent to such party by
facsimile or certified mail, postage prepaid, addressed to it at its address set
forth below, or to such other address as it shall designate by written notice
given to the other party, and shall be deemed to have been made or given on the
date of facsimile transmission or mailing. The addresses are as follows:
8.1.1 For IBM:
Direct of Licensing
International Business Machines Corporation
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇ of America
8.1.2 For facsimile transmission to IBM:
(▇▇▇) ▇▇▇-▇▇▇▇
8.1.3 For INTUITIVE:
Chief Patent Counsel
INTUITIVE Surgical, Inc.
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
8.1.4 For facsimile transmission to INTUITIVE:
(▇▇▇) ▇▇▇-▇▇▇▇
8.2 Payment by INTUITIVE to IBM shall be made by electronic funds transfer
to:
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SECTION 9. TERM AND TERMINATION
9.1 This Agreement shall expire upon the expiration of the last to expire of the
LARS or the ROBODOC Patents.
9.2 This agreement may be terminated by IBM upon 30 days written notice in the
event that INTUITIVE fails to make the payments of Sections 4.1 and 4.2 and, if
applicable, those of Sections 4.3 and 4.4, or fails to comply with the
conditions of Section 9.3 or 9.4, and fails to cure any such failure within the
aforementioned notice period.
9.3 In the event that fifty percent (50%) or more of the outstanding shares or
securities (representing the right to vote for the election of directors or
other managing authority) of INTUITIVE are or become owned or controlled,
directly or indirectly, by a third (acquiring) party, INTUITIVE shall promptly
give written notice of such acquisition to IBM. If INTUITIVE does not have
outstanding shares or securities, such acquisition shall be deemed to occur if
more than fifty percent (50%) of its ownership interest representing the right
to make decisions for INTUITIVE is to be acquired by said third party. If such
event occurs before the date upon which the payment of Section 4.2 is made, IBM
may terminate this Agreement under this Section 9 unless the acquiring party
settles, to IBM's satisfaction, any outstanding disputes which it may have with
IBM or any of IBM's Subsidiaries, and agrees in writing with IBM to accept
assignment of this Agreement subject to all the rights, conditions, duties and
obligations thereof. If such event occurs after the date on which the payments
of Sections 4.3 and 4.4 are made, IBM may terminate this Agreement unless the
acquiring party agrees to in writing with IBM to accept assignment of this
Agreement subject to all the rights, conditions, duties and obligations thereof,
and makes the unpaid payments of Sections 4.3 and/or 4.4 to IBM prior to closing
such acquisition.
9.4 In the event that INTUITIVE is a party to a merger, consolidation,
amalgamation or other combination with another entity (whether preceded by an
acquisition or not) such that INTUITIVE will cease to exist as a legal entity
following such event, INTUITIVE shall promptly give written notice of such event
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to IBM. If such event occurs before the date on which the payment of Section 4.2
is made, IBM may terminate this Agreement unless the entity which survives or
results from such event settles, to IBM's satisfaction, any outstanding disputes
which it may have with IBM, or any of IBM's Subsidiaries, and agrees in writing
with IBM to accept assignment of this Agreement subject to all the rights,
conditions, duties and obligations thereof. If such event occurs after the date
on which the payment of Section 4.2 is made, but before one or both of the
payments of Sections 4.3 and 4.2 are made, IBM may terminate this Agreement
unless the acquiring party agrees in writing with IBM to accept assignment of
this Agreement subject to all the rights, conditions, duties and obligations
thereof, and makes the unpaid payments of Sections 4.3 and/or 4.4 to IBM prior
to closing such merger, consolidation, amalgamation or other combination.
9.5 No termination or this Agreement or the licenses granted hereunder shall
relieve INTUITIVE of any obligation or liability accrued hereunder prior to such
termination. If this Agreement is terminated by IBM prior to the payment of
Section 4.2, the payments of Sections 4.2, 4.3 and 4.4 shall not be due IBM. If
this Agreement is terminated by IBM prior the Accrual Date of either or both
Section 4.3 and 4.4, the payment or payments of Section 4.3 and/or Section 4.4
shall not be due IBM.
SECTION 10. MISCELLANEOUS
10.1 Each party (the first party) shall, at its expense, defend, indemnify and
hold the other party (the second party), its Subsidiaries and each of them and
their officers, directors, agents, representatives and employees, harmless
against all claims, representatives and employees, harmless against all claims,
demands, damages, liabilities, penalties and expenses (including, but not
limited to, legal fees and expenses, including reasonable attorneys fees)
including those for infringement, property damage and personal injury or death,
whether arising in contract, tort (including negligence of any degree) or
otherwise, wherever and by whomever brought (including third parties) arising
out of, connected with or resulting from such first party's activities under or
in furtherance of this Agreement or the first party's use (including
sublicensing in the case of INTUITIVE) of the LARS Patents and/or ROBODOC
Patents licensed hereunder, including the use, sale or other transfers of
products of the first party covered, in whole or in part, by any claim of the
LARS Patents and/or ROBODOC Patents or made, in whole or in part, with any
process or apparatus covered by any claim of the LARS Patents or the ROBODOC
Patents.
10.2 Except as provided in Sections 9.3 or 9.4, INTUITIVE shall not assign this
Agreement, nor any of its rights or privileges, nor delegate any of its duties
or obligations, thereunder, under any circumstances, without the prior written
consent of IBM. Any
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attempt to do so shall be void. However, notwithstanding the foregoing,
INTUITIVE may grant sublicenses under the LARS Patents as provide din Sections
2.1, 2.2, 2.5 and 2.6 without the prior written consent of IBM.
10.3 This Agreement shall not be binding upon the parties and shall not obligate
either of the parties until it has been signed hereinbelow by both parties, in
which event it shall be effective as of the Effective Date.
10.4 Nothing contained in this Agreement shall be construed as conferring any
right to use in advertising, publicity, or other promotional activities any
name, trade name, trademark, or other designation of either party hereto
(including any contraction, abbreviation or simulation of any of the foregoing).
Each party hereto agrees not to use or refer to this Agreement or any provision
thereof in any publicity without the express written approval of the other
party, which approval shall not be unreasonably withheld. Notwithstanding the
foregoing, the parties may disclose without approval of the other party the
existence and terms of this Agreement to the extent (a) required by law
(including securities laws); (b) the disclosure is made under a binder of
confidentiality to any person or entity who may be interested in investing in or
acquiring all or substantially all of the assets or securities of such party, or
(c) the disclosure is made to its financial advisors provided that such advisors
have signed a binder of confidentiality.
10.5 Nothing contained in this Agreement shall be construed as conferring on
either party any license or other right to copy the exterior design of the
products of the other party.
10.6 Nothing contained in this Agreement shall be construed as limiting the
rights which the parties have outside the scope of the licenses granted
hereunder, or restricting the right of either party or any of its Subsidiaries
to make, have made, use, lease, sell or otherwise dispose of any particular
product or products not herein licensed.
10.7 Except as expressly set forth in this Agreement nothing contained in this
Agreement shall be construed as conferring either directly or by implication,
estoppel or otherwise upon either party or any third party any license or other
right with respect to any patents, patent applications copyrights or mask works
or similar rights of other party.
INTUITIVE understands that its customers may need licenses or other rights from
third parties and/or International Business Machines Corporation for the use of
products acquired from INTUITIVE. However, provided that this Agreement is not
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terminated by IBM for breach, customers of INTUITIVE who were customers of
INTUITIVE prior to any such termination shall not need additional licenses from
IBM for INTUITIVE Licensed Products and Services and Subsidiaries and Corporate
Partners who were Subsidiaries and Corporate Partners prior to any such
termination shall not need additional licenses from IBM for INTUITIVE Licensed
Products and Services outside the Field but within the scope of Section 3.1.
10.8 Each party shall pay all taxes (including, without limitation, sales and
value added taxes), exclusive of taxes based on the other party's net income,
imposed by the national government, including any political subdivision thereof,
of any country in which said party is doing business, as the result of said
party's furnishing consideration hereunder. In the event such a tax becomes
payable as a result of a party furnishing consideration in respect of a
sublicense granted pursuant to Section 3 said sublicensing party shall be
reasonable for determining the amount of and paying, or causing said sublicensed
Subsidiary to pay, said tax.
10.9 The headings of the several Sections are inserted for convenience of
reference only and are not intended to be a part of or to affect the meaning of
interpretation of this Agreement.
10.10 If any Section of this Agreement is founded by competent authority to be
invalid, illegal or unenforceable in any respect for any reason, the validity,
legality and unenforceability of such Section in every other respect and the
remainder of this Agreement shall continue in effect so long as the Agreement
still expresses the intent of the parties. If the intent of the parties cannot
be preserved, then the parties shall attempt to renegotiate this Agreement.
10.11 This Agreement shall be construed, and the legal relations between the
parties hereto shall be determined, in accordance with the law of the State of
New York, United States of America, without regard to its principles of
conflicts of law, as such law applies to contracts signed and fully performed in
the State of New York. Each of the parties waives its right to a jury trial.
10.12 Nothing in this Agreement shall be construed as creating any agency, joint
venture, partnership or other type of relationship between the parties.
10.13 No amendment or modification hereof shall be valid or binding upon the
parties unless made in writing and signed by both parties.
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10.14 This Agreement and its Exhibit embodies the entire understanding of the
parties with respect to the subject matter hereof and mergers all prior
communications (whether oral or written) between them, and neither of the
parties shall be bound by any conditions, definitions, warranties,
understandings or representations with respect thereto other than as expressly
provided in this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly signed.
INTERNATIONAL BUSINESS
MACHINES CORPORATION
Date 12/30/97 By /s/ ▇. ▇. ▇▇▇▇▇▇, Jr.
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▇. ▇. ▇▇▇▇▇▇, Jr.
Vice President
INTUITIVE SURGICAL, INC.
Date 12/30/97 By /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
------------------------- --------------------------------
▇▇▇▇▇▇ ▇. ▇▇▇▇▇
President and CEO
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EXHIBIT 1
This is an Exhibit to the Agreement with an Effective Date of December 22, 1997
between IBM and INTUTIVE SURGICAL, INC.
"LARS Patents" shall mean the following patents, patents issuing from
the following applications, and all patents which are continuations,
continuations-in-part, divisions, reissues, renewals, extensions, or
additional of or otherwise claim priority from the following patents and
patent applications and their corresponding patents:
APPLICATION APPLICATION DATE
COUNTRY FILED NUMBER ISSUED PATENT NO. DATE EXPIRES
---------- ----------------- ------------- ----------------- ------------- -----------------
US July 27, 1992 0000919450 January 19, 1994 0005299309 June 13, 2011
US October 11, 1994 0000321320 May 20, 1997 0005630431 May 20, 2014
US April 6, 1994 0000223862 August 29, 1995 0005445166 August 29, 2012
US April 28, 1994 0000234825 April 4, 1995 ▇▇▇▇▇▇▇▇▇▇ April 4, ▇▇▇▇
▇▇ May 13, 1993 93107816.6 May 13, 2013
BE May 13, 1993 93107816.6 May 13, ▇▇▇▇
▇▇ May 13, 1993 93107816.6 May 13, 2013
GE May 13, 1993 93107816.6 May 13, 2013
IT May 13, 1993 93107816.6 May 13, 2013
JA April 19, 1993 0005-90989 October 24, 1996 0002575586 April 19, 2013
NE May 13, 1993 93107816.6 May 13, 2013
SP May 13, 1993 93107816.6 May 13, 2013
SW May 13, 1993 93107816.6 May 13, 2013
SZ May 13, 1993 93107816.6 May 13, 2013
UK May 13, 1993 93107816.6 May 13, 2013
US May 27, 1992 0000889215 May 23, 1995 0005417210 May 27, 2012
US January 26, 1995 0000378433 November 12, 1996 0005572999 November 12, ▇▇▇▇
▇▇ October 27, 1993 93117400.7 April 23, 1997 000E152026 October 27, 2013
BE October 27, 1993 93117400.7 April 23, 1997 0000595291 October 27, ▇▇▇▇
▇▇ October 27, 1993 93117400.7 April 23, 1997 0000595291 October 27, 2013
GE October 27, 1993 93117400.7 April 23, 1997 69310085.0 October 27, 2013
IT October 27, 1993 93117400.7 April 23, 1997 0000595291 October 27, 2013
JA October 4, 1993 005-248114 May 2, 1997 0002642047 October 4, 2013
NE October 27, 1993 93117400.7 April 23, 1997 0000595291 October 27, 2013
SP October 27, 1993 93117400.7 April 23, 1997 0002102577 October 27, 2013
SW October 27, 1993 93117400.7 April 23, 1997 0000595291 October 27, 2013
SZ October 27, 1993 93117400.7 April 23, 1997 0000595291 October 27, 2013
UK October 27, 1993 93117400.7 April 23, 1997 0000595291 October 27, 2013
US October 30, 1992 ▇▇▇▇▇▇▇▇▇▇ March 14, 1995 0005397323 October 20, 2012
JA June 24, 1994 006-142841 March 11, 1997 0002620518 June 24, 2014
US August 17, 1993 0000108027 August 30, 1994 0005343395 August 17, 2013
US April 28, 1994 Y0991-080-G **
US November 2, 1993 Y0991-080XA **
US January 24, 1995 0000000000* **
US January 26, 1995 Y0992-080C **
US April 6, 1994 0000223969 0005695500 **
US July 17, 1997 Y0995-081X **
------------------
* Filing receipt problem being resolved with USPTO
** Longer of either 17 years from issue or 20 years from earliest U.S. filing
date.
15
LICENSE REFERENCE NO: L973288
This is amendment number 1 ("Amendment") to the patent license agreement
in respect of systems and methods for the augmentation of surgery ("Agreement")
having an Effective Date of December 22, 1997 between International Business
Machines Corporation ("IBM") and Intuitive Surgical, Inc. ("INTUITIVE").
INTUITIVE has asked IBM for an extension of time in which to make
certain payments specified in the Agreement. IBM is willing to grant the
requested extension of time on an interest-free basis.
In consideration of the premises and mutual covenants herein contained,
IBM and INTUITIVE agree as follows:
The Agreement is hereby amended as follows:
1. In Section 4.1.2, delete "September 1, 1998" and insert therefor - -
November 2, 1998 - -.
2. In Section 4.2.2, delete "September 1, 1998" and insert therefor - -
November 2, 1998 - -.
This Amendment embodies the entire understanding of the parties with
respect to its subject matter and supersedes and merges all prior
communications, representations and understandings (whether written or oral)
between them relating to the subject matter hereof.
This Amendment shall be effective as of the date of the last signature
below.
IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be
duly executed by their authorized representatives.
INTERNATIONAL BUSINESS INTUITIVE SURGICAL, INC.
MACHINES CORPORATION
By: /s/ ▇.▇. ▇▇▇▇▇▇, Jr. By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
------------------------------------ ---------------------------
▇.▇. ▇▇▇▇▇▇, Jr. ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Vice President President and CEO
Date: 10/16/98 Date: Oct. 15, 1998
---------------------------------- -------------------------
1.