LICENSE AGREEMENT
This LICENSE AGREEMENT (the "Agreement" or "License Agreement") is
effective December 5, 2005, (hereinafter Effective Date) between ** (hereinafter
"Licensee") and Specialized Health Products International Inc., a corporation of
the State of Utah having an office at ▇▇▇ ▇▇▇▇ ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
(hereinafter "SHPI" or "Licensor"). Licensee and SHPI shall, from time to time,
be referred to individually as a Party or collectively as the Parties.
W I T N E S S E T H:
WHEREAS SHPI has certain proprietary patent rights ("Patents" as set
forth below) relating to peripheral safety IV catheter devices, and pursuant to
the provisions of this Agreement desires to non-exclusively license certain
rights in spring-type positioning member technology ("Technology" as set forth
below) to Licensee inside of Licensee's intended field of use for peripheral
safety IV catheter devices (the "Field of Use" as set forth below);
WHEREAS Licensee is interested in obtaining rights under these Patents
and undertaking development and commercialization activities in the Field of
Use; and
WHEREAS, SHPI and Licensee desire that commercial products ("Products"
as set forth below) resulting from Licensee's development and commercialization
activities be available to commercial markets.
NOW, THEREFORE, the Parties hereto agree as follows:
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The "**" marks the location of information that has been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment.
ARTICLE 1 - DEFINITIONS
Where used in this Agreement, the following terms shall have the
meanings attributed to them herein:
1.1 "Affiliate" shall mean, as to either Party, any entity, which
directly or indirectly controls, is controlled by or under common control with
such Party, but only so long as such control exists.
1.2 "Effective Date" shall mean the date first set forth above.
1.3 "First Commercial Sale Date" shall mean the date when the first Net
Sales of a Product occurs.
1.4 "First Cumulative Sale Date" shall mean the date when cumulative
Net Sales of Products reach one million (1,000,000) units.
1.5 "Products" shall mean peripheral IV catheter products having the
Technology that are covered by any Valid Claim of an issued or granted patent
included in Patents, for each country in which such products are made, used or
sold. Products shall mean only those component products of a collection of
products that Licensee may manufacture, assemble and/or sell as a packaged
product that, but for the license granted hereunder, infringe any Valid Claim of
an issued or granted patent for the Technology. For example, if Licensee should
manufacture and sell a peripheral safety IV catheter Product as part of a larger
surgical kit, including other products, which themselves are not Products under
this Agreement, the surgical kit would not be a Product, only the component
peripheral safety IV catheter would be a Product. Further, any additional
component, such as a catheter valve, that is not covered by the Patents, would
not be a Product. Moreover, "Products" specifically excludes peripheral safety
IV catheter devices utilizing various embodiments of friction elements to cause
inclination of a binding member into a binding position on a needle as disclosed
in the Patents.
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1.6 "Net Sales" shall mean revenue invoiced by Licensee, an Affiliate
of Licensee, or any Sub-Licensee of Licensee on account of the sale of Products
to independent third parties less the following amounts: (i) discounts,
including cash discounts, rebates, chargebacks and retroactive price reductions
or allowances, actually granted from any billed amount, and fees paid to
distributors; (ii) credits or allowances actually granted upon claims,
rejections or returns, including recalls, regardless of the party requesting
such return or recall; (iii) charges for freight, insurance, handling and
transportation separately identified on an invoice or other documentation
maintained in the ordinary course of business, and (iv) sales, value added or
other excise taxes and import duties to the extent invoiced to the customers and
to the extent such taxes are remitted to the applicable taxing authority. If
Products are sold by Licensee as a component of a kit, tray or system that also
contains products, subcomponents or modules that are not Products, the Net Sales
attributable to such kit, tray or system shall only include the net value of the
Products, calculated as a percentage of the net price of the kit, tray or system
based on the relationship of Licensee's retail price for the applicable
Products, if sold separately, compared to Licensee's retail price for the entire
kit, tray or system.
1.7 "Patents" shall mean all patent applications filed in any country
claiming benefit of the filing date of any of the patents, or applications and
listed in Exhibit 1.7 hereunder, including all continuation,
continuation-in-part, divisional, and renewal applications thereof, all patent
applications and patents granted thereon, and all reissues, re-examinations and
extensions thereof to the extent that they contain, or are amended to contain, a
claim covering the Technology.
1.8 "Technology" shall mean a positioning member integral with a
binding member having one or more binding surfaces, wherein the positioning
member pushes against a needle and the binding member inclines by pushing of the
positioning member when a portion of the retainer in contact with the needle is
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advanced past a distal end of the needle, as disclosed in the Patents. An
example of the Technology is a leaf spring integral to the binding member for
positioning the binding surfaces to secure a shield to the needle. "Technology"
specifically excludes various embodiments of friction elements to cause
inclination of a binding member into a binding position on a needle as disclosed
in the Patents.
1.9 "Term" of the Agreement shall mean the period of time commencing on
the Effective Date and ending on the date of the expiration of the last of the
issued or granted patents to expire included in the Patents, unless earlier
terminated in accordance with Article 8, in which case the "Term" would end upon
such earlier termination.
1.10 "Valid Claim" shall mean a claim of an issued or granted patent of
the Patents which has not lapsed or become abandoned, which claim has not been
declared invalid or unenforceable by a final, non-appealable decision or
judgment of a court of competent jurisdiction, and which claim covers the
Technology.
1.11 "Calendar Quarter" shall mean a calendar quarter ending March 31,
June 30, September 30 or December 31 of a given calendar year.
1.12 "Field of Use" shall mean medical or veterinary applications
related to any peripheral safety IV catheter connected to or placed in a
patient's body.
1.13 "Territory" shall mean the entire world.
1.14 "Sub-Licensee" shall mean a person or entity licensed by Licensee
under Article 2.1.
1.15 "Royalty Year" shall mean annual periods, with "Year 1" beginning
upon the earlier of (a) the end of the Calendar Quarter containing the First
Cumulative Sale Date or (b) six months after the end of the Calendar Quarter
containing the First Commercial Sale Date.
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ARTICLE 2 - LICENSE GRANT
2.1 SHPI hereby grants to Licensee and its Affiliates a non-exclusive
license, with the right to sublicense upon written approval of SHPI, which
approval shall not be unreasonably withheld, under the Patents for the
Technology to make, have made, develop, have developed, use offer to sell, sell,
lease, transfer, import or otherwise dispose of the Products within the Field of
Use in the Territory for the Term under the terms and conditions set forth
herein.
2.2 SHPI covenants not to ▇▇▇ Licensee and its Affiliates for
commercializing peripheral safety IV catheters incorporating ** Products that
include the Technology during the Term. This covenant applies to all patents or
patent applications owned or controlled by or licensed to SHPI or its Affiliates
as of July 18, 2005, onward during the Term. No other right or license is
granted by SHPI to Licensee, or by Licensee to SHPI, for any other intellectual
property right.
ARTICLE 3 - CONSIDERATION
3.1 In consideration of SHPI's grants to Licensee under Article 2,
Licensee shall pay SHPI:
3.1.1 A non-refundable fee of five hundred thousand U.S. dollars
($500,000) within twenty four (24) hours of the Effective Date.
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The "**" marks the location of information that has been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment.
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3.1.2 Two hundred fifty thousand U.S. dollars ($250,000) within thirty
(30) days of the date when SHPI first obtains a first U.S.-issued Patent having
a Valid Claim.
3.1.3 Two hundred fifty thousand U.S. dollars ($250,000) within thirty
(30) days of the First Commercial Sale Date.
3.1.4 If the First Commercial Sale Date has not occurred by January 1,
2008, and Licensee has not terminated this Agreement, Licensee shall pay fifty
thousand dollars ($50,000) per Calendar Quarter thereafter, due no later than
sixty (60) days after each such Calendar Quarter, until the Calendar Quarter
containing the First Commercial Sale Date or the earlier termination of this
Agreement. The first five (5) quarterly payments under this Article 3.1.4 shall
be creditable against the $250,000 payment under Article 3.1.3.
3.1.5 A quarterly royalty ("Quarterly Royalty") due no later than sixty
(60) days after each Calendar Quarter, and equal to ** of Net Sales of Products
made, used or sold in a country covered by a Valid Claim.
3.1.6 In the event that the royalties paid under Article 3.1.5 do not
reach the amounts specified below for each Royalty Year, then make-up payments
shall be made by Licensee no later than sixty (60) days after the end of that
Royalty
Year to achieve a "Minimum Annual Royalty" as follows:
Royalty Year 1: **
Royalty Year 2: **
Royalty Year 3: **
Royalty Year 4 and thereafter: **
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The "**" marks the location of information that has been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment.
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If the Agreement terminates earlier than the last day of a given
Royalty Year, the payment hereunder shall be prorated based on the number of
days this Agreement was in force during that Royalty Year.
3.2 Neither Licensee nor any licensee of Licensee shall pay a royalty
on any sale of Products between them or an Affiliate, and both Licensee and any
licensee of Licensee shall pay only one (1) royalty hereunder with respect to
the ultimate sale of any Products no matter how many patents or claims may cover
the sold Products or intermediate parties may be involved in the ultimate sale
of such Products.
3.3 Licensee's royalty obligation in Article 3.1.5 with respect to Net
Sales of Products made, used or sold in a given country shall terminate upon
expiration of the last patent to expire included in the Patents having a Valid
Claim covering such Products in that country.
3.4 No later than sixty (60) days after each Calendar Quarter, Licensee
shall deliver to SHPI reasonably detailed written reports of Net Sales of
Products for the previous Calendar Quarter and a calculation of and payment for
royalties due for the previous Calendar Quarter in which Products were sold.
Licensee shall keep (and contractually obligate any licensees to keep) accurate
books and records of Products
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3.5 sales and of all payments due SHPI hereunder for two years after
Licensee (or any Affiliate or licensee) has made or was required to make any
payment under this Agreement.
3.6 SHPI shall have a right to nominate an independent accountant
acceptable to and approved by Licensee, which approval shall not be unreasonably
withheld, to inspect books and records directly related to royalties for
Products. Such accountant must have suitable qualifications to carry out an
audit of such books and records and be of good professional standing. Licensee
(or any licensee of Licensee, and any relevant Affiliate of either) shall permit
(during reasonable business hours and upon the approved independent accountant's
execution of an appropriate confidentiality agreement) the independent
accountant access to records related to Net Sales for the sole purpose of
verifying the royalty payable as provided for in this Agreement for any
preceding, two- (2) year period. Any such access rights to accounting records
may not be exercised more than once in any calendar year, unless any audit
uncovers a material discrepancy - in which case such right can be exercised
quarterly for the next four (4) Calendar Quarters. The independent accountant
shall not be permitted to disclose to SHPI any information other than what may
be required to confirm the accuracy of Licensee's (or a licensee's) royalty
report and any payments made under this Agreement. Costs of any audit shall be
borne by SHPI.
3.7 Currency for all payments made under this Agreement shall be United
States dollars.
3.8 Any sum required under United States tax laws, or the tax laws of
any other country, to be withheld by Licensee from payments due to SHPI
hereunder shall be promptly paid by Licensee to the appropriate tax authority,
and Licensee shall deliver, upon receipt of SHPI's written request therefore, an
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official tax receipt or other appropriate evidence that is sufficient for SHPI
to support any claim that it may file for an income tax credit in respect of any
sum so withheld.
ARTICLE 4--MOST FAVORED LICENSEE
4.1 If SHPI grants rights to the Technology in the Field of Use to
another person or entity after the Effective Date, SHPI agrees to notify
Licensee within twenty (20) days of executing such grant ("Subsequent Grant").
Licensee shall have the right, at its sole discretion, to adjust the terms of
this Agreement to match such Subsequent Grant. The term "Subsequent Grant" shall
not include grants by SHPI which include rights to various embodiments of
friction elements to cause inclination of a binding member into a binding
position on a needle as disclosed in the Patents.
ARTICLE 5 - INTELLECTUAL PROPERTY OWNERSHIP
5.1 Any inventions, discoveries, improvements, developments, or trade
secrets, whether patentable or not, made, conceived or developed by SHPI, alone
or jointly with Licensee, related to the Technology and having applications
within the Field of Use (collectively "Improvements"), as made, conceived or
developed, shall become non-exclusively licensed to Licensee and its Affiliates
within the Field of Use. SHPI shall retain all rights outside the Field of Use
to any Improvements developed solely by SHPI. SHPI shall have a non-exclusive,
royalty-free, worldwide license outside the Field of Use to any Improvements
developed jointly with Licensee. SHPI shall notify Licensee of any such
Improvements and shall execute any license agreements or other documents
reasonably requested by Licensee to secure Licensee's rights in and to such
Improvements related to the Technology and having applications within the Field
of Use.
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ARTICLE 6 - WARRANTIES
6.1 SHPI represents and warrants that it has sole right, title, and
interest, free and clear of any lien or other encumbrance or restrictions, in
and to the Patents. Except for the rights of Becton, ▇▇▇▇▇▇▇▇▇ and Company to
match as set forth in Section 11.8(c), SHPI further warrants that : (i) it has
the right to license the Patents to Licensee in accordance with and subject to
the terms and conditions of this Agreement, and to enter into and to agree to
the terms and conditions of this Agreement; (ii) there is no pending claim or
demand of any person pertaining to, or any proceeding pending or, to the best
knowledge of SHPI threatened, which challenges the exclusive rights of SHPI in
respect of the Patents or the Technology; and (iii) none of the Technology is
subject to any outstanding order, ruling, decree, judgment or stipulation by or
with any court, arbitrator or administrative agency.
6.2 Each Party warrants that it has the full right, power and authority
to enter into and to agree to the terms and conditions of this Agreement and
that, when executed and delivered, this Agreement will be a legal and valid
obligation binding upon such Party in accordance with the terms hereunder.
Except for the rights of Becton, ▇▇▇▇▇▇▇▇▇ and Company to match as set forth in
Section 11.8(c), no consent, approval, authorization order, filing, registration
or qualification of or with any court, governmental authority or third person is
required to be made or obtained by either Party in connection with the execution
and delivery of this Agreement by that Party or the consummation by such party
of the transactions contemplated hereby.
6.3 Each Party (the "Warranting Party") warrants, represents and
acknowledges to the other Party that this Agreement does not in any way
constitute a violation of any other agreement that the Warranting Party may have
with any other third party.
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6.4 To the best knowledge of SHPI, none of the Technology is being
infringed upon by others or used by others, whether or not such use constitutes
infringement, or has been the subject of dispute, and whether or not resulting
in litigation. SHPI further warrants and represents that, to the best of its
knowledge, the Patents are valid, and will be valid upon grant or issuance, and
SHPI has, to the best of its knowledge, followed all material and applicable
patent rules, procedures and laws in countries where one or more of the Patents
have been filed or have issued.
6.5 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, NEITHER
PARTY HERETO MAKES ANY REPRESENTATIONS OR EXTENDS ANY WARRANTIES OR CONDITIONS
OF ANY KIND, INCLUDING EXPRESS OR IMPLIED, WITH RESPECT TO THE TECHNOLOGY,
INCLUDING, BUT NOT LIMITED TO, ANY WARRANTIES OF VALIDITY, MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE OR NON-INFRINGEMENT.
ARTICLE 7 - INDEMNIFICATION
7.1 Licensee agrees to indemnify, defend and hold SHPI, SHPI's
Affiliates and each of their respective officers, directors, employees, agents,
successors and assigns, harmless from and against any and all claims, suits,
proceedings, liabilities, losses, costs, damages, fees or expenses, including
court costs and reasonable attorneys fees and expenses (collectively "Losses"),
arising out of or due to third party claims related to the research,
development, manufacture, promotion, distribution and sales, and
commercialization of Products within the Field of Use by Licensee and its
Affiliates and Sub-Licensees.
7.2 In order for SHPI (the "Indemnified Party") to make a claim for
indemnification hereunder, the Indemnified Party must promptly notify Licensee
(the "Indemnifying Party"), in writing, of the commencement of any indemnifiable
claim or legal action initiated against the Indemnified Party. The Indemnifying
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Party shall be entitled to assume the defense and control of such matter (with
counsel of its choice) at its expense; provided, however, that the Indemnifying
Party shall not settle any such matter without the prior written consent of the
Indemnified Party, which consent shall not be unreasonably withheld. The
Indemnified Party shall be fully and completely advised of the status and
progress of any such matter. The Indemnifying Party shall not be liable to the
Indemnified Party for any legal or other expenses subsequently incurred by the
Indemnified Party in connection with the defense of such matter after the
Indemnifying Party has assumed such defense. The Indemnified Party shall
cooperate with the Indemnifying Party in the defense of any such matter.
ARTICLE 8 - TERMINATION OF AGREEMENT
8.1 Subject to the terms of this Article 10, this Agreement may be
terminated at any time prior to expiration of the Term as follows:
8.1.1 If at any time either Party (the "Breaching Party") shall fail to
comply in any material respect with any of its obligations hereunder, upon sixty
(60) days prior written notice to the Breaching Party, if such failure is not
cured within such sixty (60) day notice period, provided that if, as a practical
matter, such cure cannot be accomplished within a sixty (60) day period, no such
termination shall result and the period for such cure shall be extended as long
as the Breaching Party is diligently pursuing a cure thereof and provided that,
in any event, such cure period, together with any such extension, shall not
exceed one hundred twenty (120) days;
8.1.2 Upon thirty (30) days prior written notice by Licensee to SHPI at
any time, without cause, except that December 30, 2008 is the earliest that this
Agreement can be terminated by Licensee without cause.
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8.2 All rights and obligations of the Parties, which accrue on or
before the effective termination date, shall be fully enforceable by either
Party after termination.
8.3 The Parties expressly reserve all rights and remedies at law and in
equity not inconsistent with this Article 8, including specifically but without
limitation damages, injunctive and other provisional relief. Subject to
provisions of applicable bankruptcy law, the provisions of this Agreement shall
be binding upon each Party's estate or any trustee appointed by a court of
competent jurisdiction in connection with any bankruptcy of that Party.
8.4 The following provisions of this Agreement shall survive and remain
in full force and effect in accordance with their terms notwithstanding and
following termination of this Agreement: Article 5 (Intellectual Property
Ownership), Article 6 (Warranties), Article 7 (Indemnification), Article 8
(Termination), and Article 11 (General).
ARTICLE 9 - INFRINGEMENT
9.1 In the event that a third party files an action or asserts a claim
against Licensee or an Affiliate of Licensee alleging that any of the Products
marketed and sold by Licensee and its Affiliates infringes any patent or other
intellectual property right of such third party relating and/or similar to the
Technology, Licensee shall have the right, during the period in which such
litigation is pending, to hold back fifty percent (50%) of Quarterly Royalty
payments (including Minimum Annual Royalty payments) due SHPI up to the amount
of all reasonable litigation expenses (including attorneys fees) incurred by
Licensee in connection with the defense of such action or claim and any judgment
or settlement resulting therefrom. If, pursuant to any settlement or judgment
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resulting from any such claim, Licensee is required to make any ongoing royalty
or other payments to any third party, the royalty amounts due SHPI hereunder
shall be reduced by the lesser of royalties and/or other monies paid by Licensee
to such third party or fifty percent (50%) of the royalty amounts otherwise owed
to SHPI for the duration of Licensee's obligation to such third party to pay
such royalties or other payments. Licensee shall have no obligation to pay SHPI
any amounts of Quarterly Royalties held back pursuant to this Section; provided,
however, that if, as part of a binding settlement or final non-appealable
judgment, Licensee is reimbursed for any of its costs to defend such action or
claim, Licensee shall pay SHPI any such held back Quarterly Royalties up to, but
not in excess of, the reimbursement amount received by Licensee through such
settlement or judgment.
ARTICLE 10 - FORCE MAJEURE
10.1 Neither Party shall be responsible for any failures or delays from
causes beyond its reasonable control, including, without limitation, acts of
God, acts of government, war, fires, floods, strikes, or failure by third
parties (not an Affiliate) to comply with their obligations (except for payment
obligations) to that Party, so long as such failure or delay is not caused by
the negligence, intentional conduct or misconduct of the nonperforming Party and
the nonperforming Party has exerted and diligently continues to exert all
reasonable efforts to resume or complete such performance.
ARTICLE 11 - GENERAL
11.1 Neither Party may assign, pledge or hypothecate this Agreement to
any third party without the prior written consent of the other Party; provided,
however, that any assignment or transfer that is made in connection with an
acquisition of all or substantially all of the assets or business of a Party
relating to the Products does not require prior written consent of the other
Party. Successors, assignees and transferees of rights and obligations under
this Agreement are subject to the terms of this Agreement. Notice of each
party's rights and obligations under this Agreement shall be provided to any
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assignee or transferee of this Agreement prior to any assignment or transfer.
Notice of such transaction shall be provided to the other Party within twenty
(20) days after execution of such transaction.
11.2 Any notice required or permitted to be given hereunder shall be in
writing and shall be mailed by certified mail, return receipt requested, or
delivered by messenger or air courier (fare prepaid), and all payments shall be
delivered, to the party to whom such notice or payment is required or permitted
to be given at its address set forth as follows: if given to Licensee, to: **;
or, if given to SHPI, to: President, SHPI Inc, ▇▇▇ ▇▇▇▇ ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇ ▇▇▇▇▇. Any such notice shall be considered given when delivered, as
indicated by signed receipt or other written delivery record and, absent such
receipt or record, such delivery shall be deemed to have occurred one business
day after sending by messenger or courier and five business days after sending
by certified mail. A Party hereto may change that address to which notice to it
is to be given by notice as provided herein.
11.3 Jurisdiction: This Agreement shall be deemed entered into in the
State of Delaware and shall be construed and governed solely by the laws of that
state, without regard to choice of law doctrine.
11.4 This Agreement constitutes the entire agreement of the Parties
with respect to the subject matter hereof, and all prior agreements respecting
such subject matter, either written or oral, express or implied, are merged and
canceled, and void and of no effect. No amendment or modification of this
Agreement shall be valid or binding unless the same shall be made in writing and
signed on behalf of each Party by their respective proper officers duly
authorized to do so. In the event that any provisions of this Agreement are
determined to be invalid or unenforceable by a court of competent jurisdiction,
the remainder of the Agreement shall remain in full force and effect without
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said provision. In such event, the Parties shall in good faith negotiate a
substitute clause for any provision declared invalid or unenforceable, which
shall most nearly approximate the intent of the Parties in entering this
Agreement.
11.5 Articles/Terms:
11.5.1 The Article titles of this Agreement and the recitals are
inserted for convenience only and shall not be construed as limiting in any
manner.
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The "**" marks the location of information that has been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment.
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11.5.2 The defined terms provided in this Agreement and set forth in
Article I are referred to by capitalizing those terms throughout this Agreement.
The definitions of those terms are understood to apply to both singular and
plural uses of the defined terms.
11.6 Failure to Enforce:
11.6.1 The failure to enforce any of the terms and conditions of this
Agreement by either of the Parties to this Agreement shall not be deemed a
waiver of any other right or privilege under this Agreement or a waiver of the
right to thereafter claim damages for any deficiencies resulting from any
misrepresentation, breach of warranty, or non-fulfillment of any obligation of
any other Party to this Agreement.
11.6.2 To be a waiver of any term or condition of this Agreement, the
waiver must be in writing and signed by the Party making the waiver.
11.7 Confidential Information: Any confidential or proprietary
information disclosed by either Party to the other Party in connection with the
transactions contemplated by this Agreement in oral, written or electronic form,
which information is either prominently marked or otherwise indicated as
"Confidential" or would be considered by a reasonable person to be confidential
or proprietary in nature shall be deemed to be "CONFIDENTIAL INFORMATION".
The recipient shall retain in confidence all of the CONFIDENTIAL
INFORMATION for a period of three (3) years after termination of this Agreement,
and shall not use the CONFIDENTIAL INFORMATION for any purpose other than in
connection with the performance of its obligations under this Agreement, or as
contemplated by this Agreement, and shall not disclose any portion of the
CONFIDENTIAL INFORMATION to any third party, except that the recipient may
disclose the CONFIDENTIAL INFORMATION in confidence to the recipient's
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employees, and then only to those of said employees who require access to the
CONFIDENTIAL INFORMATION for the purpose of performing such Party's obligations
pursuant to this Agreement, and then only to such employees who have been
advised of this Agreement and have agreed to maintain the confidentiality
provisions hereunder.
The recipient shall not have any obligation of confidence or non-use in
respect of CONFIDENTIAL INFORMATION which:
1) was known to the recipient prior to any disclosure thereof by
the disclosing Party;
2) is now in the public domain, or which in the future enters the
public domain through no fault of the recipient (in which
event recipient's obligation of strict confidence in respect
thereto shall terminate on the date of entry of the
INFORMATION into the public domain);
3) is disclosed to the recipient at any time by a third party
having the right to make such disclosure to the recipient, and
without any obligation of confidence on the part of the
recipient to the third party in respect of said disclosure;
4) is released from its confidential status by the prior written
consent of the disclosing Party; or
5) is independently developed by employees of the recipient who
were not involved directly or indirectly with INFORMATION
provided hereunder, as is clearly provable by written
documents in their possession.
11.8 Agreement Confidentiality and Press Releases: The Parties shall
not disclose to any third party the terms or existence of this Agreement, except
(a) as required by applicable law or government regulation, (b) on a
confidential basis to a Party's attorneys or accountants for the purpose of
rendering professional advice, or (c) by SHPI to Becton, ▇▇▇▇▇▇▇▇▇ and Company
("BD") pursuant to a License Agreement between SHPI and BD dated May 27, 1997,
under which BD has the right of first and final match offer to SHPI for
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Technology owned by or assigned to SHPI in the field of intravascular catheters
and catheter introducers (except that SHPI shall redact information identifying
Licensee as the Licensee hereunder). Likewise, the Parties shall not issue any
press, marketing or other promotional release describing or acknowledging this
Agreement, except with the prior written consent of the other Party, which such
Party may delay, condition or withhold in its sole and absolute discretion. In
the event that either Party is required to disclose the existence or terms of
this Agreement pursuant to the Securities and Exchange Act of 1934, any
regulations thereunder, or any applicable rules or regulations of any stock
exchange, such Party shall deliver to the other Party a draft of the proposed
disclosure, in advance, and shall incorporate any reasonable comments on such
disclosure requested by the other Party, to the extent such comments conform
with applicable law.
11.9 This Agreement may be signed in two or more counterparts, each of
which shall be an original.
11.10 The relationship of the Parties hereto is that of independent
contractors. The Parties hereto are not deemed to be agents, partners or joint
venturers of the other for any purpose as a result of this Agreement or the
transactions contemplated hereby.
11.11 The Parties to this Agreement shall at any and all times, upon
reasonable request by the other Party, or its legal representative, make,
execute, and deliver any and all such other and further instruments as may be
reasonably necessary for the purpose of giving full force and effect to the
provisions of this Agreement, without charge.
IN WITNESS WHEREOF, the Parties hereto have executed this Agreement by
their duly authorized officers or representatives.
SHPI INC **
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ By /s/ **
--------------------- -------------------------------
Its: President Its: **
Date: 12/5/05 Date: 12/5/05
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The "**" marks the location of information that has been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment.
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EXHIBIT 1.7
Ser. No. 09/809,357
Filed 3/15/01
▇▇▇. No. 6,595,955
Issued 7/22/03
Ser. No. 10/202,201
Filed 7/23/02
▇▇▇. No. 6,902,546
Issued 6/7/05
Ser. No. 10/984,342
Filed 11/8/04
Pub. No. 2005-0059937
Pub. Date 3/17/05
Ser. No. 10/919,983
Filed 8/17/04
Pub. No. 2005-00443691
Pub. Date 2/24/05
Ser. No. 10/660,083
Filed 9/11/03
Pub. No. 2004-0092889
Pub. Date 5/13/04