CRM LICENSE AGREEMENT
EXHIBIT
10.7
This
CRM
License Agreement (the "Agreement"), which is agreed to be effective as
hereinafter provided, is by and between St. Jude Medical, Inc., a Minnesota
corporation having its principal place of business at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇.
▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ("St. Jude"), and Boston Scientific Corporation, a
Delaware corporation having its principal place of business at One Boston
Scientific Place, Natick Massachusetts, 01760-1537 ("BSC").
RECITALS
A.
BSC
and/or certain of its Affiliates, on the one hand, and St. Jude and/or certain
of its Affiliates, on the other hand, are adverse parties in the following
currently pending litigation matters, which are being terminated pursuant to
a
Settlement Agreement by and between BSC and certain of its Affiliates, on the
one hand, and St. Jude and certain of its Affiliates, on the other hand, dated
July 29, 2006 (the "Settlement Agreement"):
1)
Pacesetter,
Inc. v. Cardiac Pacemakers, Inc., et al.,
Case
No. 02-1337 DWF/SRN (D. Minn.) (the "Minnesota Pacesetter Case");
2)
Cardiac
Pacemakers, Inc., et al., v. St. Jude Medical, Inc., et al.,
Civil
Action No. 04-1016 JMR/FLN (D. Minn.) (the "Minnesota CPI
Case");and
5)
Pacesetter,
Inc. et al. v. Intermedics, Inc. et
al.,
Case
No. CV 06-3166 GHK(FFMx) (C.D. Cal.) (the "California case").
B.
St.
Jude
and BSC and/or certain of their respective Affiliates are engaged in,
inter
alia,
the
design, development, manufacture, and sale of CRM Products.
C.
St.
Jude
and BSC and/or certain of their respective Affiliates own or hold certain
Licensed Patents and rights under Sublicensable Patents relating to CRM
Products.
D. Pursuant
to the Settlement Agreement, St. Jude and BSC have agreed to terminate the
Minnesota Pacesetter Case, the Minnesota CPI Case, and the California case
and
have agreed to enter into a cross licensing of certain rights under the Licensed
Patents and Sublicensable Patents.
Now
therefore, in consideration of the covenants and agreements set forth herein
and
for valuable consideration receipt of which is hereby acknowledged, St. Jude
and
BSC mutually agree as follows:
** The
appearance of a double asterisk denotes confidential information that has been
omitted from the exhibit and filed separately, accompanied by a confidential
treatment request, with the Securities and Exchange Commission pursuant to
Rule
24b-2 of the Securities Exchange Act of 1934, as amended (the "Exchange
Act").
ARTICLE
I
Definitions
of Certain Terms
For
the
purposes of this Agreement, the following capitalized terms shall have the
meaning specified below. In addition, whenever used in the Agreement, "include,"
"includes," and "including" shall be deemed to be followed by "without
limitation," whether or not it is followed by such words.
Section
1.01.
Affiliate.
"Affiliate" means any person or entity that controls or is controlled by or
is
under common control with St. Jude or BSC on the Effective Date or at any time
thereafter. For purposes of this Section 1.01, ownership, directly or
indirectly, of more than fifty percent (50%) of the capital stock or other
comparable ownership interest of the corporation or entity carrying the right
to
vote for or appoint directors or their equivalent (if not a corporation) shall
constitute control thereof. "Affiliate" of a third party means a person or
entity that controls, is controlled by, or under common control with, such
third
party. Without in any way limiting the foregoing, "Affiliates" of St. Jude
include Pacesetter, Inc., St. Jude Medical AB, and St. Jude Medical S.C., Inc.
and "Affiliates" of BSC include Guidant Corporation, Cardiac Pacemakers, Inc.,
Guidant Sales Corporation, and Intermedics, Inc.
Section
1.02.
CRM
Products.
"CRM
Products" means devices for monitoring or electrically stimulating or shocking
the heart which are suitable for chronic implantation, in whole or in part,
by
or with human patients. The term "CRM Products" includes, without limitation:
cardiac pacemakers, antitachycardia pacemakers, cardiac resynchronization
therapy systems, cardioverters, and defibrillators, including combinations
thereof; loop recording systems, implantable cardiac monitoring systems,
implantable hemodynamic monitoring systems, pulse generators and other waveform
generators for such devices; cardiac lead implant catheters and associated
tools; leads, electrodes, sensors, capacitors, batteries, power sources, and
all
other components for such devices; mechanisms for coupling such generators
in a
stimulating, shocking, sensing, or monitoring relationship to the heart; and
data dispensing, processing, and gathering systems for such devices, including
programmers, pacing system analyzers, defibrillation system analyzers, testers,
encoders, decoders, transtelephonic and other remote monitoring systems and
services for use with implantable devices, transmitters, receivers, and computer
software-controlled systems, and including the software. The term "CRM Products"
excludes, by way of example and not limitation, nerve stimulators (unless used
for cardiac therapy), bone growth stimulators, drug release pumps, cardiac
pumps, artificial hearts, prosthetic heart valves, catheter ablation devices,
imaging systems, catheter location systems, apparatus for revascularization
or
correction of other physical defects in heart tissue, arrhythmia mapping devices
(except as part of an implantable cardiac therapy or monitoring device),
angioplasty devices and EKG monitors (other than cardiac stimulation device
programmers or other telemetry devices for use with implantable pulse generators
or cardiac monitors) which are standalone, non-ambulatory and not intended
for
transtelephonic or other remote monitoring.
Section
1.03.
Licensed
Patents.
(a) "Licensed
Patents" means any and all patents relating to CRM Products (including the
manufacture or use thereof), which are (i) owned (whether by development,
acquisition, or
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
otherwise)
by St. Jude or its Affiliates as of the Effective Date or BSC or its Affiliates
as of the Effective Date and have a priority date on or before the Effective
Date or (ii) licensed to St. Jude or its Affiliates or BSC or its Affiliates
as
of the Effective Date under licenses or other agreements, and which permit
St.
Jude or its Affiliates or BSC or its Affiliates to grant licenses or
sublicenses, in each case without any right in a non-Affiliated third party
to
receive royalties or any other continuing payments to maintain the license
or
other agreement in effect, which are within the scope of the following class:
all patents issued in any country from patent applications filed as of the
Effective Date including all patents maturing from continuation,
continuation-in-part, divisional, and reissue applications, or reexaminations
of
such patents and patent applications, and further including all patents which
are counterparts of such patents or patent applications which are described
in
this Section 1.03, regardless of whether such patent matures from a convention
or non-convention patent application, and any other substitution, renewal,
extension, addition, utility model, or other patent, non-U.S. or U.S., which
claims priority based on such a patent application.
(b)
Notwithstanding
the foregoing, the term "Licensed Patents" specifically excludes the ** Patents
and the ** Patents.
(c) Notwithstanding
the foregoing, the term "Licensed Patents" specifically excludes Sublicensable
Patents.
(d)
Notwithstanding
the foregoing, the term "Licensed Patents" specifically excludes the patents
listed on Exhibit A which are or will be subject to licensing restrictions
being
negotiated with a third party.
Section
1.04.
Sublicensable
Patents.
(a)
"Sublicensable
Patents" shall mean patents and patent applications, both U.S. and non-U.S.,
which relate to CRM Products and which are the subject of licenses or
assignments or other agreements with non-Affiliated third parties in force
as of
the Effective Date and which licenses or assignments or other agreements (a)
convey rights to St. Jude or its Affiliates or BSC or its Affiliates as licensee
or assignee or grantee, including the right to grant sublicenses or licenses,
and further (b) (i) require the payment of royalties or any other continuing
payments either for use of the patents or patent applications or to maintain
the
license or assignment or other agreement in effect or (ii) have other licensing
restrictions such as field of use restrictions.
(b)
Without
limiting the foregoing, the term "Sublicensable Patents" specifically includes,
but is not limited to, all present patents and patent applications listed on
Exhibit B of this Agreement. The parties believe that Exhibit B is a complete
listing of their respective U.S. patents and patent applications within the
foregoing definition of Sublicensable Patents which are in existence as of
the
Effective Date, and any errors, overinclusions or omissions from Exhibit B
will
be deemed to be inadvertent and not a material breach. Present foreign patents
and applications, including foreign counterparts of U.S. patents and patent
applications listed on Exhibit B, have intentionally not been included in
Exhibit B but are deemed to be Sublicensable Patents if they are covered by
the
foregoing definition in this Section 1.04.
(c)
Notwithstanding
the foregoing, the term "Sublicensable Patents" excludes the ▇▇▇▇▇▇▇▇-Owned
Patents.
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
Section
1.05.
▇▇▇▇▇▇▇▇-Owned
Patents.
"▇▇▇▇▇▇▇▇-Owned Patents" shall mean all patent rights that are the subject
of
the Amended and Restated Exclusive License Agreement dated January 28, 2004,
by
and between Guidant Corporation and ▇▇▇▇▇▇▇▇ Family Ventures, LLC ("MFV"),
a
limited liability company organized under the laws of the State of Maryland
(the
"MFV Exclusive License").
Section
1.06.
**
Patents.
"**
Patents" shall mean those patents and patent applications, and all patents
and
patent applications claiming priority therefrom, ** as set forth in Exhibit
C.
Section
1.07.
**
Patents.
"**
Patents" shall mean those patents and patent applications, and all patents
and
patent applications claiming priority therefrom, ** as set forth in Exhibit
D.
The ** Patents shall include the sublicensable patents and patent applications
of ** listed in Exhibit D.
Section
1.08.
Effective
Date.
"Effective Date" shall mean July 29, 2006.
ARTICLE
II
Cross
License; Covenant Not to ▇▇▇
Section
2.01.
License.
Subject
to the terms, conditions, and limitations set forth herein:
(a)
St.
Jude
grants (and will cause its Affiliates to grant) to BSC and its Affiliates a
non-exclusive, irrevocable, perpetual, fully paid-up worldwide license or
sublicense, as the case may be, without the right to sublicense, under all
Licensed Patents of St. Jude (and its Affiliates) to make, have made, use,
sell,
have sold, offer to sell, distribute, have distributed, and otherwise dispose
of
CRM Products, including supplying or causing to be supplied components thereof
for use therein, and further including importing CRM Products, including
components thereof for use therein, into any jurisdiction where Licensed Patents
of St. Jude (or its Affiliates) are effective.
(b)
BSC
grants (and will cause its Affiliates to grant) to St. Jude and its Affiliates,
a non-exclusive, irrevocable, perpetual, fully paid-up, worldwide license or
sublicense, as the case may be, without the right to sublicense, under all
Licensed Patents of BSC (and its Affiliates) to make, have made, use, sell,
have
sold, offer to sell, distribute, have distributed, and otherwise dispose of
CRM
Products, including supplying or causing to be supplied components thereof
for
use therein, and further including importing CRM Products, including components
thereof for use therein, into any jurisdiction where Licensed Patents of BSC
(or
its Affiliates) are effective.
(c)
If
any
party has CRM Products made for it under the above license grant, such CRM
Products must bear its or one of its Affiliates’ trade names or trademarks;
however, such CRM Products may bear third-party trade names or trademarks for
materials or components used in such CRM Products.
(d)
The
licenses granted in this Section 2.01 shall be irrevocable except for the
specific right to terminate described in Section 9.02, below.
Section
2.02.
Option
to Obtain Sublicense on Sublicensable Patents.
It is
the intent of each party to afford the other party and its Affiliates the
opportunity to obtain sublicenses under the
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
Sublicensable
Patents. Accordingly:
(a)
St.
Jude
grants (and will cause its Affiliates to grant) to BSC and its Affiliates the
right and option until sixty (60) days following the termination of this
Agreement to obtain sublicenses under one or more of the Sublicensable Patents.
Upon written request by BSC to St. Jude, St. Jude will inform BSC of the
provisions of the agreement or license with a third party conveying rights
in a
particular Sublicensable Patent to St. Jude or its Affiliates, and shall make
available to BSC and its Affiliates a non-exclusive, non-transferable license
affording them the most favorable terms and conditions permissible to
sublicensees under such agreement or license with such third party (but in
no
event under terms more favorable than those of St. Jude or its
Affiliates).
(b)
BSC
grants (and will cause its Affiliates to grant) to St. Jude and its Affiliates
the right and option until sixty (60) days following the termination of this
Agreement to obtain sublicenses under one or more of the Sublicensable Patents.
Upon written request by St. Jude to BSC, BSC will inform St. Jude of the
provisions of the agreement or license with a third party conveying rights
in a
particular Sublicensable Patent to BSC or its Affiliates, and shall make
available to St. Jude and its Affiliates a non-exclusive, non-transferable
license affording them the most favorable terms and conditions permissible
to
sublicensees under such agreement or license with such third party (but in
no
event under terms more favorable than those of BSC or its
Affiliates).
(c)
It
is the
intention of the parties under this Section 2.02 that a party acquiring a
sublicense under Sublicensable Patents be required to make only current payments
based on current usage and that no previously paid "front end" payments be
recovered by the sublicensor under such sublicensing arrangement.
Notwithstanding any contrary foregoing provisions, if the party elects to obtain
a sublicense thereunder and the license or assignment granted to the sublicensor
requires ongoing minimum payments to maintain the license or assignment,
payments by the sublicensor for the right to grant a sublicense or option to
sublicense, or if the sublicensor is required to pay to the original licensor
or
assignor amounts based on the sublicensor's or its sublicensee's current usage,
then the sublicensor may require under the sublicensing arrangement that its
sublicensee pay the amounts required for the grant of the sublicense or option
to sublicense as well as a pro rata portion of such minimum payments under
the
original license or such usage payments due from the sublicensor, with each
party's respective pro rata amount based upon the volume of their respective
sales of products covered by the original license agreement. The obligation
to
pay a pro rata share of minimum royalty does not apply to a minimum royalty
required to maintain an exclusive license under a Sublicensable Patent unless
otherwise agreed.
(d)
This
Section 2.02 shall not apply to the ** Patents.
Section
2.03.
Royalty
Payments to Third Parties.
Any
royalty payments required to be made to the owner of a patent sublicensed in
the
future in accordance with this Agreement shall be made, if permissible under
the
applicable license agreement and if acceptable to the sublicensor, directly
by
the sublicensee to such owner in accordance with the terms of the applicable
license agreement. Unless otherwise required by the applicable license
agreement, questions regarding the applicability, validity, or enforceability
of
any patent sublicensed in accordance with this
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
Agreement
shall be resolved by the owner of the sublicensed patent and the sublicensee.
The sublicensor of such patent shall have the right in its discretion to
participate in any such discussions or negotiations between the owner of the
sublicensed patent and the sublicensee. In any event, the sublicensee shall
keep
the sublicensor fully informed of all discussions and negotiations between
such
sublicensee and the owner of the sublicensed patent. Any dispute arising between
the sublicensor and sublicensee of any such patent shall be resolved by
alternative dispute resolution as provided in Article 8 of this
Agreement.
Section
2.04.
Rights
under Section 2.02 Subject to Continued Payment of Royalties.
In the
event that either party fails in any material respect to pay to the other party
(or to the licensor of a Sublicensable Patent, as the case may be) royalties
required under this Agreement, and such failure is not cured within sixty (60)
days of written notice to the defaulting party of such failure, then all license
rights of the defaulting party under Section 2.02 of this Agreement, with
respect only to the particular patent or patents in dispute, shall terminate.
Such a termination shall in no way affect or impair the rights of the other
party under such Section 2.02.
Section
2.05.
Regarding
OEM Activities.
The
licenses granted or to be granted under this Article II shall not be used in
such a way as to manufacture CRM Products on an original equipment manufacturer
("OEM") basis for any person or entity other than St. Jude and its Affiliates
or
BSC and its Affiliates. The licenses granted or to be granted under this Article
II shall apply to and for the benefit of CRM Products manufactured by a party
to
this Agreement for a third party who is licensed under the appropriate patents
of the other party to this Agreement where, and to the extent that, the third
party's license permits such third party to "have made" such CRM Products for
such third party. Nothing in this Agreement shall preclude the use of the
licenses granted or to be granted under this Article II by a party or its
Affiliate for the purpose of having CRM Products manufactured by a third party
on an OEM basis for such party or its Affiliate; provided, however, that such
CRM Products must bear the trademark or trade name of such party or its
Affiliate. Notwithstanding the foregoing, such CRM Products may bear third-party
trade names or trademarks for materials or components used in such CRM
Products.
Section
2.06.
Option
To Sublicense ▇▇▇▇▇▇▇▇-Owned Patents.
BSC
grants (and will cause its Affiliates to grant) to St. Jude and its Affiliates
an irrevocable, perpetual right and option to obtain a sublicense under the
▇▇▇▇▇▇▇▇-Owned Patents. Upon written notice by St. Jude to BSC of St. Jude's
election to exercise the option granted in this Section 2.06, St. Jude and
its
Affiliates shall have a non-exclusive, non-transferable (except as permitted
by
Section 9.02, below) worldwide license under the ▇▇▇▇▇▇▇▇-Owned Patents
effective as of the date such written notice is deemed to have been given under
Article 6 of this Agreement. Any sublicense granted as a result of this Section
2.06 shall afford St. Jude the most favorable terms and conditions permissible
to sublicensees under the MFV Exclusive License (but shall in no event require
BSC or its Affiliates to make any payments on behalf of St. Jude or its
Affiliates).
Section
2.07.
**
and
** Patents.
It is
the intent of each party to afford the other party and its Affiliates the rights
provided below regarding the ** Patents and the ** Patents.
Accordingly:
(a)
BSC
grants (and will cause its Affiliates to grant) to St. Jude and its Affiliates
the right and option for a period of thirty (30) months from the Effective
Date
to obtain a non-
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
exclusive,
worldwide, non-transferable, royalty-bearing license under the ** Patents.
Should St. Jude opt to acquire such license, St. Jude shall pay to BSC on no
less than a quarterly basis a royalty of ** percent (**%) of the net revenue
received for the sale of each St. Jude product that utilizes the ** Patents.
St.
Jude's royalty obligation under this Section 2.07(a) shall commence as of the
date of the first sale of a St. Jude product that utilizes the ** Patents and
shall continue for a period of five (5) years thereafter, at which point St.
Jude's license under the ** Patents will convert to a non-exclusive,
non-transferable, irrevocable, perpetual, fully-paid up, worldwide
license.
(b)
If,
and
only if, St. Jude exercises its option for a license under the ** Patents
pursuant to Section 2.07 (a), above, St. Jude shall grant (and will cause its
Affiliates to grant) to BSC and its Affiliates the right and option until the
expiration of thirty (30) months from the Effective Date or ninety (90) days
from the date St. Jude exercises its option under Section 2.07, whichever is
later in time, to obtain a non-exclusive, worldwide, non-transferable,
royalty-bearing license under the ** Patents. Such sublicense to the ** Patents
shall, if requested by BSC, include a sublicense to the patents and patent
applications of ** listed in Exhibit D, and shall be subject to the terms of
the
license agreement between ** and **. Should BSC opt to acquire such license,
BSC
shall pay to St. Jude on no less than a quarterly basis a royalty of ** percent
(**%) of the net revenue received for the sale of each BSC product that utilizes
the ** Patents. BSC's royalty obligation under this Section 2.07(b) shall
commence as of the date of the first sale of a BSC product that utilizes the
**
Patents and shall continue for a period of five (5) years thereafter, at which
point BSC's license under the ** Patents will convert to a non-exclusive,
non-transferable, irrevocable, perpetual, fully-paid up, worldwide
license.
(c)
Should
St. Jude not exercise its option for a license under the ** Patents pursuant
to
Section 2.07(a), above, St. Jude agrees that it will enter into good faith
negotiations with BSC for the grant of a license to BSC and its Affiliates
under
the ** patents should BSC desire such a license.
Section
2.08.
Certain
Conditions, Limitations and Understandings.
The
licenses and sublicenses granted under this Agreement are expressly made subject
to the following conditions, limitations and understandings:
(a)
The
licenses are personal to the parties hereto, and are nonassignable and
nontransferable, except as set forth in Section 9.02 below.
(b)
The
parties and their Affiliates shall have the right, in their sole and absolute
discretion, to control the maintenance, abandonment, extension, and licensing
of
their own patents including the Licensed Patents and Sublicensable Patents;
provided however, that no such license or other transfer of interest shall
in
any manner abridge the rights of the other party granted under this
Agreement.
(c)
The
owner
or exclusive licensee of a Licensed Patent or Sublicensable Patent shall have
the right to enforce, or not to enforce, its Licensed Patents or Sublicensable
Patents in its sole and absolute discretion against all persons and
organizations other than a party or Affiliate of a party hereto.
(d)
The
licenses granted herein shall not extend to any technical know-how or design
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
information,
manufacturing, marketing, and/or processing information or know-how, designs,
drawings, mask works, specifications, software source code, algorithms, clinical
data, or other documents directly or indirectly pertinent to the use of the
Licensed Patents or Sublicensable Patents, or to the use of any trademarks
or
trade names, service marks, or software copyrights or other copyrights
(including copyright registrations) of any party, and the parties acknowledge
that there is no obligation upon any party or its Affiliates to provide such
information, know-how, designs, drawings, mask works, specifications, software
source code, algorithms, clinical data, or other documents.
(e)
Except
as
otherwise expressly provided in this Agreement, all licenses are granted for
the
life of the covered patents.
(f)
Licenses
and sublicenses under Sublicensable Patents will only be granted to the extent
the grantor has the right to grant such licenses and sublicenses.
(g)
All
licenses and sublicenses required to be granted by Affiliates under this
Agreement shall be subject to the terms and conditions set forth in this
Agreement, except as may be otherwise provided in Section 2.02 relating to
Option to Obtain Sublicense on Sublicensable Patents.
(h)
Any
assignment or other transfer by a party or its Affiliate of that entity's
interest in (i) a Licensed Patent or (ii) a Sublicensable Patent in which the
other party and its Affiliates has exercised the option to obtain a sublicense
as provided in Section 2.02 above shall be made subject to the rights of the
other party and its Affiliates under this Agreement.
(i)
Any
license extended to an Affiliate shall continue only so long as "Affiliate"
status is maintained, or as permitted pursuant to the other party’s
consent.
Section
2.09. Covenant
Not to ▇▇▇.
(a)
St.
Jude
and its Affiliates hereby covenant not to ▇▇▇ BSC and its Affiliates, their
respective successors, assigns, affiliated entities, directors, officers,
shareholders, and legal representatives, distributors, resellers, customers,
and
end users for the alleged infringement of patent or other intellectual property
rights that are acquired or licensed by St. Jude and/or its Affiliates after
the
Effective Date with respect to any CRM Products that are commercially marketed
or sold anywhere in the world as of the Effective Date.
(b)
BSC
and
its Affiliates hereby covenant not to ▇▇▇ St. ▇▇▇▇ and its Affiliates, their
respective successors, assigns, affiliated entities, directors, officers,
shareholders, and legal representatives, distributors, resellers, customers,
and
end users for the alleged infringement of patent or other intellectual property
rights that are acquired or licensed by BSC and/or its Affiliates after the
Effective Date with respect to any CRM Products that are commercially marketed
or sold anywhere in the world as of the Effective Date.
(c)
This
Section 2.09 shall not apply to the ▇▇▇▇▇▇▇▇-Owned Patents, the ** Patents,
the
** Patents, or the patents listed on Exhibit A.
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
ARTICLE
III
Representations,
Warranties and Limitations
Section
3.01.
Certain
Representations and Warranties.
(a)
Each
party represents and warrants to the other party as follows and acknowledges
that each of the following representations and warranties has been relied upon
by the other party and is material to the other party's decision to enter into
the Agreement: each party hereto has the requisite power and authority,
corporate and otherwise, to execute and perform the Agreement, to grant the
licenses, sublicenses, and option to obtain licenses and sublicenses provided
for herein, and, except as provided in this Section 3.01, to cause such party’s
Affiliates to execute and perform the Agreement and to grant the licenses,
sublicenses, and option to obtain licenses and sublicenses provided for
herein.
(b)
To
the
extent that a party shall lack the requisite authority to cause an Affiliate
of
such party to execute or perform this Agreement or to grant the licenses or
option to obtain sublicenses as provided in this Agreement, then such party
shall defend, indemnify, and hold harmless the other party and its Affiliates,
and all officers, directors, employees, attorneys, agents, successors, and
assigns of the other party and its Affiliates, against any and all legal
expenses, costs, and judgments arising from claims, controversies, demands,
rights, disputes, grievances, or causes of action that would have been avoided
had such party caused such Affiliate to execute or perform the Agreement or
to
grant the licenses or option to obtain sublicenses as provided in this
Agreement.
(c)
BSC
(and its Affiliates) represents and warrants that ▇▇▇ ▇▇▇▇▇ and Company does
not
hold any rights in the Licensed Patents, the Sublicensable Patents or the
▇▇▇▇▇▇▇▇-Owned Patents, and has no claims or causes of action against St. Jude
and its Affiliates arising therefrom. BSC shall defend, indemnify, and hold
harmless St. Jude and its Affiliates, and all officers, directors, employees,
attorneys, agents, successors, and assigns of St. Jude and its Affiliates,
against any and all legal expenses, costs, and judgments arising from any
claims, controversies, demands, rights, disputes, grievances, or causes of
action that ▇▇▇ ▇▇▇▇▇ and Company asserts relating to the Licensed Patents,
the
Sublicensable Patents or the ▇▇▇▇▇▇▇▇-Owned Patents.
(d)
Neither
party hereto is a party to any license, agreement or other instrument which
would prohibit the granting of the licenses or option to obtain sublicenses
granted herein.
Section
3.02.
Disclaimers.
Nothing
contained in this Agreement shall be construed as:
(a)
A
warranty or representation by any party hereto as to the validity, scope, or
enforceability of any Licensed Patents or Sublicensable Patents; or
(b)
A
warranty or representation by any party hereto that anything made, used, sold,
or otherwise disposed of under any license granted in this Agreement is or
will
be free from infringement of patents of third parties; or
(c)
An
obligation to bring or prosecute actions or suits against third parties for
patent
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
infringement,
or as an agreement by the parties to assist each other in any manner in the
defense of any claim of infringement brought by a third party; or
(d)
An
obligation to file or prosecute any patent application, to secure the grant
of
any patent or any reissue or extension thereof, or to pay any maintenance fee
or
annuity or tax or take any other steps to maintain any patent; or
(e)
A
representation, warranty, or extension of warranties of any kind, expressed
or
implied, or an assumption of responsibility by any party with respect to the
use, sale, or other disposition by the other party or its agents,
representatives, distributors, or users of products incorporating or made by
use
of inventions licensed under this Agreement.
Section
3.03.
Limitations.
Each
party shall be responsible for its design, manufacture, instructions for use,
quality control, and all safety-related activities relating to its own products,
whether or not manufactured under license from the other party's Licensed
Patents or Sublicensable Patents, and shall not be responsible for the products
of the other party, the other party's Affiliates, or any other party or
person.
ARTICLE
IV
Termination
of Agreement
Section
4.01.
Termination
of Agreement.
This
Agreement shall be effective as of the Effective Date and shall continue in
force and effect until the expiration of the last to expire of the patents
licensed and sublicensed pursuant to the provisions of this
Agreement.
ARTICLE
V
Confidentiality/Publicity
Concerning Agreement
Section
5.01.
Confidentiality/Publicity
Concerning Agreement.
It is
intended that, to the extent possible, the terms of this Agreement remain
confidential. No party or any Affiliate of a party shall originate any
publicity, news release, or other such general public announcement or make
any
other disclosure to any third party regarding the terms of this Agreement
without the express written consent of the other party (without limitation,
the
foregoing provision is not intended to limit communications deemed reasonably
necessary or appropriate by a party or its Affiliate to its employees,
shareholders, directors, officers, accountants, auditors and legal counsel).
Notwithstanding the foregoing provision, the parties and their respective
Affiliates shall not be prohibited from making any disclosure or release that
is
required by law, court order, or applicable regulation, or is considered
necessary by counsel to fulfill an obligation under securities laws or the
rules
of the New York Stock Exchange or other applicable stock exchange or to protect
any intellectual property right in any territory so long as the disclosing
party
provides notice to the other party at least five (5) business days prior to
such
disclosure. However, the parties agree that, with regard to any required
disclosure to the Securities and Exchange Commission regarding this Agreement
or
the fact that it has been executed that is made on or around the Effective
Date,
prior notice to the other party shall not be required.
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
ARTICLE
VI
Notice
Section
6.01.
Notice.
Any
notice or other communication to be made pursuant to this Agreement shall be
sent to the other party at its address listed below or at such other address
such party may hereinafter designate to the other party in writing:
If
to
BSC:
President
and CEO
Boston
Scientific Corporation
▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
with
a
copy to:
General
Counsel
Boston
Scientific Corporation
▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
If
to St.
Jude:
President
and CEO
St.
Jude
Medical, Inc.
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇.
▇▇▇▇,
▇▇ ▇▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
with
a
copy to:
General
Counsel
St.
Jude
Medical, Inc.
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇.
▇▇▇▇,
▇▇ ▇▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
Notice
shall be deemed to have been given (i) at the expiration of two (2) business
days from the date of delivery by a facsimile transmission, provided a copy
is
deposited postage prepaid for delivery with the postal service or given for
delivery to an express courier service on the same date as the sending of the
facsimile, or (ii) ten (10) business days from the date the communication is
deposited postage prepaid with the postal service or given to an express courier
service, unless actual receipt of the notice at an earlier date is established.
Without limitation of the foregoing, a
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
written
receipt signed by the addressee or its duly appointed representative situated
at
the addresses set forth hereinabove shall constitute sufficient evidence of
service. Either party may change its address and facsimile information by
written notice given in accordance with the provisions of this
Section.
ARTICLE
VII
Loss
of Patents
Section
7.01.
Loss
of Patents.
The
loss of any patent(s) or patent application(s) embraced by the term "Licensed
Patents" or "Sublicensable Patents" by any party hereto, through abandonment,
failure to renew, declaration of invalidity, or otherwise, shall not be cause
to
terminate this Agreement or the licenses granted hereunder with respect to
all
other Licensed Patents or Sublicensable Patents and such loss, or any
declaration of noninfringement, invalidity, or unenforceability, shall not
be
deemed a failure of consideration.
ARTICLE
VIII
Alternative
Dispute Resolution
Section
8.01.
Alternative
Dispute Resolution.
(a) Any
dispute concerning whether any party’s actions are licensed under Article II of
this Agreement, that is not resolved by negotiation as provided in subsection
(c) of this Section 8.01 shall be resolved by binding Alternative Dispute
Resolution ("ADR") in the manner described in Exhibit E.
(b) Any
dispute that arises out of or relates to this Agreement, including an alleged
breach of this Agreement but excluding any dispute within the scope of
subsection (a) of this Section 8.01, between (i) St. Jude or a St. Jude
Affiliate and (ii) BSC or a BSC Affiliate that is not resolved by negotiation
as
provided in subsection (c) of this Section 8.01 shall be resolved by binding
Alternative Dispute Resolution ("ADR") in the manner described in Exhibit
F.
(c) The
parties recognize that a bona fide
dispute
may arise from time to time as to certain matters that relate to this Agreement.
In all such instances, any party may, by written notice to the other party,
have
such dispute referred to their respective employees designated below or their
successors, for attempted resolution by good faith negotiations within sixty
(60) days after such notice is received. Such designated employees are as
follows:
For
BSC:
General
Counsel
Boston
Scientific Corporation
▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇-▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
For
St.
Jude:
General
Counsel
St.
Jude
Medical, Inc.
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇.
▇▇▇▇,
▇▇ ▇▇▇▇▇
Facsimile
No.: (▇▇▇) ▇▇▇-▇▇▇▇
Any
settlement reached by the parties under this Section 8.01 (c) shall not be
binding until reduced to writing and signed by authorized officers of BSC and
St. Jude. If the designated employees are unable to resolve such dispute within
such sixty-day period, any party may invoke the other ADR provisions of this
Section 8.01.
ARTICLE
IX
General
Provisions
Section
9.01.
Modification.
The
Agreement may not be modified, changed, or terminated orally. No change,
modification, addition, or amendment shall be valid unless given in a writing
expressly indicating an intent to modify the Agreement and duly executed by
the
parties.
Section
9.02.
Assignment
and Transfer.
The
licenses and other rights granted in this Agreement shall be nonassignable
and
nontransferable except in connection with the sale of a party’s CRM Products
business (whether by the sale of all or substantially all of a party’s assets or
its subsidiaries' assets related to CRM Products, sale of stock of one or more
subsidiary companies, merger, or otherwise). Except as permitted herein, a
purported transfer of the license or other rights granted herein shall be null
and void and shall give the other party hereto the right to terminate the
licenses granted to the transferring party without terminating the licenses
granted by the transferring party. Subject to the foregoing, this Agreement
shall be binding upon and inure to the benefit of St. Jude, BSC, and their
respective Affiliates and successors.
Section
9.03.
Assurances.
BSC
shall in all events remain fully responsible for, and shall assure its own
and
its Affiliates' performance of, all of their respective obligations under this
Agreement, and St. Jude shall in all events remain fully responsible for, and
shall assure its own and its Affiliates' performance of, all of their respective
obligations under this Agreement.
Section
9.04.
Entire
Agreement.
Other
than for the agreements listed in Exhibit G, hereto, which shall still remain
in
full force and effect in accordance with their terms and conditions, this
Agreement constitutes the entire agreement among the parties with respect to
the
subject matter hereof and supersedes any and all negotiations, correspondence,
understandings and agreements, whether written or oral, between the parties
respecting the subject matter hereof. Except for those license agreements listed
in Exhibit G, any license agreement covering any Licensed Patents in existence
between the parties prior to the Effective Date shall be deemed terminated
as of
the Effective Date and superseded by this Agreement.
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
Section
9.05.
Governing
Law.
Recognizing that the laws within the United States and international
jurisdictions vary in their content and effect with respect to similar subject
matter, and that the parties desire uniformity and predictability in
interpretation and enforcement of this Agreement, the parties have agreed to
the
following provisions regarding applicable law to govern this Agreement: All
matters affecting the interpretation, form, validity, and performance of this
Agreement shall be decided under the laws of the State of Minnesota (without
regard to principles of conflicts of laws), including its procedural laws;
provided, however, that (a) nothing in Minnesota state procedural law shall
be
deemed to alter or affect the applicability of the Federal Arbitration Act
as
governing arbitration of disputes as provided in this Agreement, and (b) no
Minnesota state arbitration laws or arbitration rules shall be
applicable.
Section
9.06.
Force
Majeure.
No
party (including any of its Affiliates) shall be liable in damages for, nor
shall this Agreement be terminable or cancelable by reason of, any delay or
default in any party's performance hereunder if such default or delay is caused
by events beyond such party's reasonable control including, but not limited
to,
acts of God, action of any government or agency thereof, war or insurrection,
civil commotion, destruction of facilities or materials by earthquake, fire,
flood or storm, labor disturbances, epidemic, or failure of public utilities
or
common carriers. The party (or Affiliates) so affected shall give prompt notice
to the other parties of such cause, and shall take whatever reasonable steps
are
necessary to relieve the effect of such cause as rapidly as possible. All
parties (or Affiliates) agree to endeavor to resume their performance hereunder
if such performance is delayed or interrupted by reason of force
majeure.
Section
9.07.
Counterparts.
This
Agreement may be executed simultaneously in two or more counterparts, each
of
which shall be deemed to be an original.
Section
9.08.
Captions.
The
captions in this Agreement are intended solely as a matter of convenience and
are for reference only, and shall be given no effect in the construction or
interpretation of this Agreement.
Section
9.09.
Severability
of Provisions.
Should
any part or provision of this Agreement be held unenforceable or in conflict
with the law of any jurisdiction, the validity of the remaining parts or
provisions shall not be affected by such holding.
Section
9.10.
No
Agency.
At no
time shall any party or its Affiliate hold itself out to be the agent, employee,
lessee, sublessee, partner, or joint venture partner of the other party or
its
Affiliates. Nothing in this Agreement shall be construed to create any
relationship between the parties other than that of licensor/licensee (or
sublicensor/sublicensee) as provided in this Agreement. No party or its
Affiliates shall have any express or implied right or authority to assume or
create any obligations on behalf of or in the name of the other party or its
Affiliates or to bind the other party or its Affiliates with regard to any
other
contract, agreement, or undertaking with a third party.
Section
9.11.
Further
Assurances.
At such
time and from time to time on and after the Effective Date upon request by
a
party, the other party will execute and deliver or will cause to be executed
and
delivered, all such further acts, acknowledgments, and assurances that may
be
reasonably required for carrying out the purposes of this Agreement. Such
further assurances may include, but not be limited to, an acknowledgment by
Affiliates of a party that such Affiliates are
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
bound
by
the terms and provisions of this Agreement or an acknowledgment that a
particular patent is a Licensed Patent or a Sublicensable Patent.
Section
9.12.
Construction
Against Waiver.
No
waiver of any term, provision, or condition of this Agreement, whether by
conduct or otherwise, in any one or more instances shall be deemed to be or
construed as a further or continuing waiver of any such term, provision, or
condition of this Agreement; nor shall any failure to enforce any provision
hereof operate as a waiver of such provision or of any other
provision.
IN
WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
in
duplicate and duly attested by their corporate officers duly authorized for
this
purpose.
BOSTON
SCIENTIFIC CORPORATION.
By:
/s/
▇▇▇▇ ▇.
▇▇▇▇▇▇▇
Executive
Vice President, Secretary
and
General Counsel
ATTEST:
By: /s/
▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
ST.
JUDE
MEDICAL, INC.
By:
/s/
▇▇▇▇▇▇ ▇.
▇▇▇▇
Vice
President, General Counsel and Secretary
ATTEST:
By:
/s/ ▇▇▇▇▇ W. A. ▇▇▇▇▇▇
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
Exhibit
A
Exclusions
from "Licensed Patents" Pursuant to Section 1.03(d)
U.S.
Patents:
**
U.S.
Patent Applications:
**
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
Exhibit
B
Sublicensable
Patents
BSC
Sublicensable Patents:
St.
Jude
Sublicensable Patents:
**
U.S.
Patents:
**
U.S.
Patent Applications:
**
**
U.S.
Patents:
**
U.S.
Patent Applications:
**
**
U.S.
Patent No. **
**
U.S.
Patent Applications:
**
**
U.S.
Patent No. **
**
U.S.
Patents:
**
**
U.S.
Patents:
**
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
**
U.S.
Patents:
**
**
U.S.
Patents:
**
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
Exhibit
C
**
Patents
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
Exhibit
D
**
Patents
U.S.
Patent Applications:
**
**
U.S.
Patents:
**
U.S.
Patent Applications:
**
**Confidential
treatment requested pursuant to Rule 24b-2 of the Exchange
Act.
Exhibit
E
ADR
Procedure Pursuant to Section 8.01(a)
1.
Upon
the
expiration of the 60-day period for good faith negotiations pursuant to Section
8.01(c), any party may initiate arbitration with the American Arbitration
Association ("AAA") by filing a Notice of Arbitration pursuant to the
then-existing AAA rules for commercial arbitration. Should any provision of
the
applicable AAA rules conflict in any way with any provision of this Agreement,
this Agreement shall govern.
2.
Within
twenty (20) days after filing the Notice of Arbtiration, the parties shall
appoint a single, neutral arbitrator. The arbitrator shall have substantial
experience in patent infringement litigation and in determining whether a
product embodies patent claims. If the parties are unable to agree on the
arbitrator within the time specified above, AAA will select a so-qualified
arbitrator within three (3) business days thereafter.
3.
The
parties shall not be entitled to any discovery.
4.
Fifty
(50) days after filing the Notice of Arbitration, each party will submit to
the
arbitrator an opening brief, not to exceed 40 pages in length, setting forth
its
position on the merits of the dispute. The text must be spaced at least 24
points vertically and the font must be at least 12 points. Claim charts
regarding infringement, non-infringement, or invalidity, attached to the brief
as exhibits for the convenience of the arbitrator, will not count towards the
page limit.
5.
Eighty
(80) days after filing the Notice of Arbitration, each party will submit to
the
arbitrator a reply brief, not to exceed 40 pages in length, setting forth its
responses to the other party’s opening brief. The reply brief may not raise any
issues not already raised in the parties’ opening briefs and must conform to the
same spacing/font requirements as the opening briefs.
6.
No
more
than one-hundred twenty (120) days after filing the Notive of Arbitration,
the
arbitrator shall provide a written, reasoned decision to the
parties.
Exhibit
F
ADR
Procedure Pursuant to Section 8.01(b)
1.
Upon
the
expiration of the 60-day period for good faith negotiations pursuant to Section
8.01(c), any party may initiate arbitration with the American Arbitration
Association ("AAA") by filing a Notice of Arbitration pursuant to the
then-existing AAA rules for commercial arbitration. Should any provision of
the
applicable AAA rules conflict in any way with any provision of this Agreement,
this Agreement shall govern.
2.
Within
twenty (20) days after filing the Notice of Arbtiration, the parties shall
appoint a single, neutral arbitrator. The arbitrator shall have substantial
experience in commercial licensing, preferably in the medical devices industry.
If the parties are unable to agree on the arbitrator within the time specified
above, AAA will select a so-qualified arbitrator within three (3) business
days
thereafter.
3.
The
parties shall be entitled to discovery as ordered by the arbitrator; however,
it
is the intention of the parties that any such discovery be limited in scope
in
order to reduce the cost and burden to the parties. The arbitrator shall take
this intention into account when ordering discovery so that any discovery so
ordered is narrowly-tailored to lead to relevant information while minimizing
the burden and cost of such discovery on the parties.
4.
The
arbitrator will be empowered to award specific performance of the Agreement,
as
well as compensatory damages, costs, and attorneys' fees to the prevailing
party, as the arbitrator deems appropriate. No punitive damages of any kind
shall be awarded.
5.
The
arbitration shall be conducted in such a way that the arbitrator issues a
decision and award no later than six (6) months after commencement of the
arbitration.
Exhibit
G
Additional
Agreements Still in Effect
"Agreement"
between Pacesetter, Inc. and Intermedics, Inc. effective October 22,
1996
"License
Agreement" between Pacesetter, Inc. and Sulzer Intermedics, Inc. having an
Effective Date of December 3, 1996