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EXHIBIT 10.10
VER. EQ.7/9/98 LAST MODIFIED:_______________
TLO:________________
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
EXCLUSIVE PATENT LICENSE AGREEMENT
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TABLE OF CONTENTS
R E C I T A L S....................................................................1
1. Definitions....................................................................2
2. Grant of Rights................................................................4
3. COMPANY Diligence Obligations..................................................5
4. Royalties and Payment Terms....................................................5
5. Reports and Record keeping.....................................................7
6. Patent Prosecution.............................................................8
7. Infringement...................................................................8
8. Indemnification and Insurance..................................................10
9. No Representations or Warranties...............................................11
10. Assignment....................................................................12
11. General Compliance with Laws..................................................12
12. Termination...................................................................13
13. Dispute Resolution............................................................14
14. Miscellaneous.................................................................16
APPENDIX A.........................................................................18
APPENDIX B.........................................................................19
APPENDIX C.........................................................................20
APPENDIX D.........................................................................22
APPENDIX E.........................................................................23
APPENDIX F.........................................................................24
APPENDIX G.........................................................................25
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VER. EQ.7/9/98
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
EXCLUSIVE PATENT LICENSE AGREEMENT
This Agreement, effective as of the date set forth above the signatures
of the parties below (the "EFFECTIVE DATE"), is between the Massachusetts
Institute of Technology ("M.I.T."), a Massachusetts corporation, with a
principal place of business at ▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
and Intuitive Surgical, Inc. ("COMPANY"), a Delaware corporation, with a
principal place of business at ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇
▇▇▇▇▇.
R E C I T A L S
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS (as later defined
herein) relating to ▇.▇.▇. ▇▇▇▇ ▇▇. ▇▇▇▇, ▇▇▇/▇▇ 98/19508 "Robotic Apparatus "
by ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, And J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇. and has the
right to grant licenses under said PATENT RIGHTS, subject only to a
royalty-free, nonexclusive non-transferable license to practice the PATENT
RIGHTS granted to the United States Government for government purposes;
WHEREAS, M.I.T. desires to have the PATENT RIGHTS developed and
commercialized to benefit the public and is willing to grant a license
thereunder;
WHEREAS, COMPANY has represented to M.I.T., to induce M.I.T. to enter
into this Agreement, that COMPANY has committed itself to a thorough, vigorous
and diligent program of exploiting the PATENT RIGHTS so that public utilization
shall result therefrom; and
WHEREAS, J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, a current employee of M.I.T., and also an
M.I.T. inventor of the PATENT RIGHTS now holds an equity position in COMPANY,
the Conflict Avoidance Statement of J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ is attached hereto as
Appendix C; and
WHEREAS, ▇▇▇▇▇ ▇▇▇▇▇▇▇ an inventor of the PATENT RIGHTS holds equity in
COMPANY, his waiver of participation in M.I.T.'s institutional equity share is
attached hereto as Appendix E; and
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WHEREAS, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ an inventor of the PATENT RIGHTS holds equity
in COMPANY, his waiver of participation in M.I.T.'s institutional equity share
is attached hereto as Appendix F; and
WHEREAS, J, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ an inventor of the PATENT RIGHTS holds
equity in COMPANY, his waiver of participation in M.I.T.'s institutional equity
share is attached hereto as Appendix G; and
WHEREAS, M.I.T. is also accepting equity in consideration for the
license granted hereunder, M.I.T.'s Vice President for Research has granted
approval;
WHEREAS, COMPANY desires to obtain a license under the PATENT RIGHTS
upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, M.I.T. and COMPANY hereby agree as follows:
1. DEFINITIONS.
1.1 "AFFILIATE" shall mean any legal entity (such as a corporation,
partnership, or limited liability company) that is controlled by COMPANY. For
the purposes of this definition, the term "control" means (i) beneficial
ownership of at least fifty percent (50%) of the voting securities of a
corporation or other business organization with voting securities or (ii) a
fifty percent (50%) or greater interest in the net assets or profits of a
partnership or other business organization without voting securities.
1.2 "EXCLUSIVE PERIOD" shall mean the period of time set forth in
Section 2.2.
1.3 "FIELD" shall mean Medical Devices.
1.4 "LICENSED PRODUCT" shall mean any product that cannot be
manufactured, used, leased, or sold, in whole or in part, without infringing one
or more claims under the PATENT RIGHTS.
1.5 "LICENSED PROCESS" shall mean any process that cannot be performed,
in whole or in part, without using at least one process that infringes one or
more claims under the PATENT RIGHTS or which uses a LICENSED PRODUCT.
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1.6 "PATENT RIGHTS" shall mean:
(a) the United States and international patents listed on
Appendix A;
(b) the United States and international patent applications
and/or provisional applications listed on Appendix A and the resulting patents;
(c) any patent applications resulting from the provisional
applications listed on Appendix A, and any divisionals, continuations,
continuation-in-part applications, and continued prosecution applications (and
their relevant international equivalents) of the patent applications listed on
Appendix A and of such patent applications that result from the provisional
applications listed on Appendix A, to the extent the claims are directed to
subject matter specifically described in the patent applications listed on
Appendix A, and the resulting patents;
(d) any patents resulting from reissues, reexaminations, or
extensions (and their relevant international equivalents) of the patents
described in (a), (b), and (c) above; and
(e) international (non-United States) patent applications and
provisional applications filed after the EFFECTIVE DATE and the relevant
international equivalents to divisionals, continuations, continuation-in-part
applications and continued prosecution applications of the patent applications
to the extent the claims are directed to subject matter specifically described
in the patents or patent applications referred to in (a), (b), (c), and (d)
above, and the resulting patents.
1.7 "REPORTING PERIOD" shall begin on the first day of each calendar
quarter and end on the last day of such calendar quarter.
1.8 "SUBLICENSEE" shall mean any non-AFFILIATE sublicensee of the rights
granted COMPANY under Section 2.1.
1.9 "TERM" shall mean the term of this Agreement, which shall commence
on the EFFECTIVE DATE and shall remain in effect until the expiration or
abandonment of all issued patents and filed patent applications within the
PATENT RIGHTS, unless earlier terminated in accordance with the provisions of
this Agreement.
1.10 "TERRITORY" shall mean world-wide.
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2. GRANT OF RIGHTS.
2.1 License Grants. Subject to the terms of this Agreement, M.I.T.
hereby grants to COMPANY and its AFFILIATES for the TERM a royalty-bearing
license under the PATENT RIGHTS to develop, make, have made, use, sell, lease,
and import LICENSED PRODUCTS in the FIELD in the TERRITORY and to develop and
perform LICENSED PROCESSES in the FIELD in the TERRITORY.
2.2 Exclusivity. In order to establish an exclusive period for COMPANY,
its AFFILIATES and SUBLICENSEES, M.I.T. agrees that it shall not grant any other
license to make, have made, use, sell, lease and import LICENSED PRODUCTS in the
FIELD in the TERRITORY or to perform LICENSED PROCESSES in the FIELD in the
TERRITORY during the period of time commencing on the EFFECTIVE DATE and
terminating with the last to expire of the PATENT RIGHTS.
2.3 Sublicenses. COMPANY shall have the right to grant sublicenses of
its rights under Section 2.1. COMPANY shall incorporate terms and conditions
into its sublicense agreements sufficient to enable COMPANY to comply with this
Agreement. Upon termination of this Agreement for any reason, any SUBLICENSEE
not then in default shall have the right to seek a license from M.I.T. M.I.T.
agrees to negotiate such licenses in good faith under reasonable terms and
conditions.
2.4 U.S. Manufacturing. LICENSEE agrees that any LICENSED PRODUCTS used,
leased, or sold in the United States will be manufactured substantially in the
United States.
2.5 Retained Rights.
(a) M.I.T. M.I.T. retains the right to practice under the PATENT
RIGHTS for research, teaching, and educational purposes.
(b) Federal Government. COMPANY acknowledges that the U.S.
federal government retains a royalty-free, non-exclusive, non-transferable
license to practice any government-funded invention claimed in any PATENT RIGHTS
as set forth in 35 U.S.C. Sections 201-211, and the regulations promulgated
thereunder, as amended, or any successor statutes or regulations.
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2.6 No Additional Rights. Nothing in this Agreement shall be construed
to confer any rights upon COMPANY by implication, estoppel, or otherwise as to
any technology or patent rights of M.I.T. or any other entity other than the
PATENT RIGHTS, regardless of whether such technology or patent rights shall be
dominant or subordinate to any PATENT RIGHTS.
3. COMPANY DILIGENCE OBLIGATIONS.
3.1 Diligence Requirements. COMPANY shall use diligent efforts, or shall
cause its AFFILIATES and SUBLICENSEES to use diligent efforts, to develop
LICENSED PRODUCTS or LICENSED PROCESSES and to introduce LICENSED PRODUCTS or
LICENSED PROCESSES into the commercial market; thereafter, COMPANY or its
AFFILIATES or SUBLICENSEES shall make LICENSED PRODUCTS or LICENSED PROCESSES
reasonably available to the public. Specifically, COMPANY or AFFILIATE or
SUBLICENSEE shall fulfill the following obligations:
3.2 COMPANY shall fund, or shall cause its AFFILIATES or SUBLICENSEES to
fund, no less than Five Hundred Thousand Dollars ($500,000) of research toward
the development of LICENSED PRODUCTS and/or LICENSED PROCESSES in each calendar
year (pro-rated for partial years) beginning in 1999 and ending with the first
commercial sale of a LICENSED PRODUCT or a first commercial performance of a
LICENSED PROCESS.
3.3 In the event that M.I.T. determines that) has failed to fulfill its
obligations under this Section 3.2, then M.I.T. may treat such failure as a
material breach in accordance with Section 12.3(b).
4. Royalties and Payment Terms.
4.1 Consideration for Grant of Rights.
(a) License Issue Fee and Patent Cost Reimbursement. COMPANY
shall pay to M.I.T. on the EFFECTIVE DATE a license issue fee of Twelve Thousand
Dollars ($12,000), and, in accordance with Section 6.3, shall reimburse M.I.T.
for its actual expenses incurred as of the EFFECTIVE DATE in connection with
obtaining the PATENT RIGHTS. These payments are nonrefundable.
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(b) Equity.
(i) Grant. COMPANY shall issue a total of Thirty Five
Thousand Eight Hundred Thirty Four (35,834) shares of Common Stock of COMPANY,
(the "Shares") in the name of M.I.T and shall mail to M.I.T. a stock certificate
for such number of shares on or before June 1, 1999
(ii) Investor Rights. COMPANY further agrees that within
ninety (90) days from the Effective Date, and in any event prior to such time as
the COMPANY files a registration statement with the Securities and Exchange
Commission for the initial public offering of any of the COMPANY's securities,
COMPANY will cause that certain Amended and Restated Investor Rights Agreement
(Attached hereto as Appendix H) dated July 31, 1998 by and between the COMPANY
and certain holders of the COMPANY's capital stock to be amended to make M.I.T.
a party thereto, with respect to of Thirty Five Thousand Eight Hundred Thirty
Four (35,834) shares of Common Stock to be issued by COMPANY to MIT in
consideration of the grant of the license hereunder.
4.2 Payments.
(a) Method of Payment. All payments under this Agreement should
be made payable to "Massachusetts Institute of Technology" and sent to the
address identified in Section 14.1. Each payment should reference this Agreement
and identify the obligation under this Agreement that the payment satisfies.
(b) Payments in U.S. Dollars. All payments due under this
Agreement shall be payable in United States dollars. Conversion of foreign
currency to U.S. dollars shall be made at the conversion rate existing in the
United States (as reported in the Wall Street Journal) on the last working day
of the calendar quarter of the applicable REPORTING PERIOD. Such payments shall
be without deduction of exchange, collection, or other charges, and,
specifically, without deduction of withholding or similar taxes or other
government imposed fees or taxes.
(c) Late Payments. Any payments by COMPANY that are not paid on
or before the date such payments are due under this Agreement shall bear
interest, to the extent permitted by law, at two percentage points above the
Prime Rate of interest as reported in the Wall Street Journal on the date
payment is due.
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5. REPORTS AND RECORD KEEPING.
5.1 Frequency of Reports.
(a) Before First Commercial Sale. Prior to the first commercial
sale of any LICENSED PRODUCT or first commercial performance of any LICENSED
PROCESS, COMPANY shall deliver reports to M.I.T., annually, within sixty (60)
days of the end of each calendar year, containing information concerning the
funds spent toward the commercialization of LICENSED PRODUCTS and LICENSED
PROCESSES, and shall also deliver to M.I.T. the same reports delivered to other
common shareholders, and with the same frequency.
(b) Upon First Commercial Sale of a LICENSED PRODUCT or
Commercial Performance of a LICENSED PROCESS. COMPANY shall report to M.I.T. the
date of first commercial sale of a LICENSED PRODUCT or first commercial use of a
LICENSED PROCESS.
(c) After First Commercial Sale. After the first commercial sale
of a LICENSED PRODUCT or first commercial performance of a LICENSED PROCESS,
LICENSEE shall deliver to M.I.T the same reports delivered to other common
shareholders, and with the same frequency.
5.2 Names and Addresses of SUBLICENSEES and AFFILIATES. COMPANY shall
inform M.I.T. of the names and addresses of its AFFILIATES and SUBLICENSEES.
5.3 Financial Statements. On or before the ninetieth (90th) day
following the close of COMPANY's fiscal year, COMPANY shall provide M.I.T. with
COMPANY's financial statements for the preceding fiscal year including, at a
minimum, a balance sheet and an income statement, certified by COMPANY's
treasurer or chief financial officer or by an independent auditor.
5.4 Record keeping. COMPANY shall maintain, and shall cause its
AFFILIATES and SUBLICENSEES to maintain, complete and accurate records relating
to the rights and obligations under this, which records shall contain sufficient
information to permit M.I.T. to confirm the accuracy of any reports delivered to
M.I.T. and compliance in other respects with this Agreement. The relevant party
shall retain such records for at least five (5) years following the end of the
calendar year to which they pertain, during which time M.I.T., or M.I.T.'s
appointed agents, shall have the right, at M.I.T.'s expense, to inspect such
records during normal business hours to verify any reports and payments made or
compliance in other respects under
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this Agreement. In the event that any audit performed under this Section
noncompliance with the terms of this Agreement, COMPANY shall bear the full cost
of such audit, and shall remit any amounts due to M.I.T. within thirty (30) days
of receiving notice thereof from M.I.T.
6. PATENT PROSECUTION.
6.1 Responsibility for PATENT RIGHTS. M.I.T. hereby appoints COMPANY its
agent to apply for, seek prompt issuance of, and maintain the PATENT RIGHTS
during the term of this Agreement, provided that COMPANY uses commercially
reasonable efforts to obtain broad and strong patent protection in the best
interest of M.I.T. and COMPANY, and further provided that COMPANY agrees to copy
M.I.T. on all patent prosecution documents, and to give M.I.T. reasonable
opportunities to advise COMPANY on patent prosecution related decisions. M.I.T.
agrees to cooperate with COMPANY in such filing, prosecution and maintenance. If
COMPANY elects not to initiate or to discontinue patent prosecution of a
particular patent application, COMPANY agrees to give M.I.T. sufficient notice
of its decision so that M.I.T. may elect, at its sole discretion, to continue
prosecuting such patent application at its sole expense.
6.2 International (non-United States) Filings. Appendix B is a list of
countries in which patent applications corresponding to the United States patent
applications listed in Appendix A shall be filed, prosecuted, and maintained.
Appendix B may be amended by mutual agreement of COMPANY and M.I.T.
6.3 Payment of Expenses. Payment of all fees and costs, including
attorneys fees, relating to the filing, prosecution and maintenance of the
PATENT RIGHTS shall be the responsibility of COMPANY, whether such amounts were
incurred before or after the EFFECTIVE DATE. As of March 29, 1999, M.I.T. has
incurred approximately $33,731.17 for such patent-related fees and costs.
COMPANY shall reimburse all amounts due pursuant to this Section within thirty
(30) days of invoicing; late payments shall accrue interest pursuant to Section
4.2(c). In all instances, M.I.T. shall pay the fees prescribed for large
entities to the United States Patent and Trademark Office.
7. INFRINGEMENT.
7.1 Notification of Infringement. Each party agrees to provide written
notice to the other party promptly after becoming aware of any infringement of
the PATENT RIGHTS.
7.2 Right to Prosecute Infringements.
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(a) COMPANY Right to Prosecute. So long as COMPANY remains the
exclusive licensee of the PATENT RIGHTS in the FIELD in the TERRITORY, COMPANY,
to the extent permitted by law, shall have the right, under its own control and
at its own expense, to prosecute any third party infringement of the PATENT
RIGHTS in the FIELD in the TERRITORY, subject to Section 7.4. If required by
law, M.I.T. shall permit any action under this Section to be brought in its
name, including being joined as a party-plaintiff, provided that COMPANY shall
hold M.I.T. harmless from, and indemnify M.I.T. against, any costs, expenses, or
liability that M.I.T. incurs in connection with such action.
Prior to commencing any such action, COMPANY shall consult
with M.I.T. and shall consider the views of M.I.T. regarding the advisability of
the proposed action and its effect on the public interest. COMPANY shall not
enter into any settlement, consent judgment, or other voluntary final
disposition of any infringement action under this Section without the prior
written consent of M.I.T.
(b) M.I.T. Right to Prosecute. In the event that COMPANY is
unsuccessful in persuading the alleged infringer to desist or fails to have
initiated an infringement action within a reasonable time after COMPANY first
becomes aware of the basis for such action, M.I.T. shall have the right, at its
sole discretion, to prosecute such infringement under its sole control and at
its sole expense, and any recovery obtained shall belong to M.I.T.
7.3 Declaratory Judgment Actions. In the event that a declaratory
judgment action is brought against M.I.T. or COMPANY by a third party alleging
invalidity, unenforceability, or non-infringement of the PATENT RIGHTS, M.I.T.,
at its option, shall have the right within twenty (20) days after commencement
of such action to take over the sole defense of the action at its own expense.
If M.I.T. does not exercise this right, COMPANY may take over the sole defense
of the action at COMPANY's sole expense, subject to Section 7.4.
7.4 Recovery. Any recovery obtained in an action brought by COMPANY
under Sections 7.2 or 7.3 shall be distributed as follows: (i) each party shall
be reimbursed for any expenses incurred in the action (including the amount of
any royalty or other payments withheld from M.I.T. as described below), (ii) as
to ordinary damages, COMPANY shall receive an amount equal to its lost profits
or a reasonable royalty on the infringing sales, or whichever measure of damages
the court shall have applied, and COMPANY shall pay to M.I.T. based upon such
amount a reasonable approximation of the royalties and other amounts that
COMPANY would have paid to M.I.T. if COMPANY had sold the infringing products,
processes and services rather than the infringer, and (iii) as to special or
punitive damages, the parties shall share equally in any award.
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7.5 Cooperation. Each party agrees to cooperate in any action under this
Article which is controlled by the other party, provided that the controlling
party reimburses the cooperating party promptly for any costs and expenses
incurred by the cooperating party in connection with providing such assistance.
7.6 Right to Sublicense. So long as COMPANY remains the exclusive
licensee of the PATENT RIGHTS in the FIELD in the TERRITORY, COMPANY shall have
the sole right to sublicense any alleged infringer in the FIELD in the TERRITORY
for future use of the PATENT RIGHTS in accordance with the terms and conditions
of this Agreement relating to sublicenses. Any upfront fees as part of such
sublicense shall be shared equally between COMPANY and M.I.T.; other revenues to
COMPANY pursuant to such sublicense shall be treated as set forth in Article 4.
8. INDEMNIFICATION AND INSURANCE
8.1 Indemnification.
(a) Indemnity. COMPANY shall indemnify, defend, and hold harmless
M.I.T. and its trustees, officers, faculty, students, employees, and agents and
their respective successors, heirs and assigns (the "Indemnitees"), against any
liability, damage, loss, or expense (including reasonable attorneys fees and
expenses) incurred by or imposed upon any of the Indemnitees in connection with
any claims, suits, actions, demands or judgments arising out of any theory of
liability (including without limitation actions in the form of tort, warranty,
or strict liability and regardless of whether such action has any factual basis)
concerning any product, process, or service that is made, used, sold, imported,
or performed pursuant to any right or license granted under this Agreement.
(b) Procedures. The Indemnitees agree to provide COMPANY with
prompt written notice of any claim, suit, action, demand, or judgment for which
indemnification is sought under this Agreement. COMPANY agrees, at its own
expense, to provide attorneys reasonably acceptable to M.I.T. to defend against
any such claim. The Indemnitees shall cooperate fully with COMPANY in such
defense and will permit COMPANY to conduct and control such defense and the
disposition of such claim, suit, or action (including all decisions relative to
litigation, appeal, and settlement); provided, however, that any Indemnitee
shall have the right to retain its own counsel, at the expense of COMPANY, if
representation of such Indemnitee by the counsel retained by COMPANY would be
inappropriate because of actual or potential differences in the interests of
such Indemnitee and any other party represented by such
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counsel. COMPANY agrees to keep M.I.T. informed of the progress in the defense
and disposition of such claim and to consult with M.I.T. with regard to any
proposed settlement.
8.2 Insurance. COMPANY shall obtain and carry in full force and effect
commercial general liability insurance, including product liability and errors
and omissions insurance which shall protect COMPANY and Indemnitees with respect
to events covered by Section 8.1(a) above. Such insurance (i) shall be issued by
an insurer licensed to practice in the Commonwealth of Massachusetts or an
insurer pre-approved by M.I.T., such approval not to be unreasonably withheld,
(ii) shall list M.I.T. as an additional named insured thereunder, (iii) shall be
endorsed to include product liability coverage, and (iv) shall require thirty
(30) days written notice to be given to M.I.T. prior to any cancellation or
material change thereof. The limits of such insurance shall not be less than One
Million Dollars ($1,000,000) per occurrence with an aggregate of Three Million
Dollars ($3,000,000) for bodily injury including death; One Million Dollars
($1,000,000) per occurrence with an aggregate of Three Million Dollars
($3,000,000) for property damage; and One Million Dollars ($1,000,000) per
occurrence with an aggregate of Three Million Dollars ($3,000,000) for errors
and omissions. In the alternative, COMPANY may self-insure subject to prior
approval of M.I.T. COMPANY shall provide M.I.T. with Certificates of Insurance
evidencing compliance with this Section. COMPANY shall continue to maintain such
insurance or self-insurance after the expiration or termination of this
Agreement during any period in which COMPANY or any AFFILIATE or SUBLICENSEE
continues (i) to make, use, or sell a product that was a LICENSED PRODUCT under
this Agreement or (ii) to perform a service that was a LICENSED PROCESS under
this Agreement, and thereafter for a period of five (5) years.
9. NO REPRESENTATIONS OR WARRANTIES
EXCEPT AS MAY OTHERWISE BE EXPRESSLY SET FORTH IN THIS AGREEMENT, M.I.T.
MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND CONCERNING THE PATENT RIGHTS,
EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT, VALIDITY OF PATENT RIGHTS
CLAIMS, WHETHER ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS,
WHETHER OR NOT DISCOVERABLE. Specifically, and not to limit the foregoing,
M.I.T. makes no warranty or representation (i) regarding the validity or scope
of the PATENT RIGHTS, and (ii) that the exploitation of the PATENT RIGHTS or any
LICENSED PRODUCT or LICENSED PROCESS will not infringe any patents or other
intellectual property rights of M.I.T. or of a third party.
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IN NO EVENT SHALL M.I.T., ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES
AND AFFILIATES BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND,
INCLUDING ECONOMIC DAMAGES OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF
WHETHER M.I.T. SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT
SHALL KNOW OF THE POSSIBILITY OF THE FOREGOING.
10. ASSIGNMENT.
This Agreement is assignable with M.I.T.'s written consent, which shall
not unreasonably be withheld provided that the assignee agrees in writing to be
bound by all the terms and conditions of this Agreement.
11. GENERAL COMPLIANCE WITH LAWS
11.1 Compliance with Laws. COMPANY shall use reasonably commercial
efforts to comply with all commercially material local, state, federal, and
international laws and regulations relating to the development, manufacture,
use, and sale of LICENSED PRODUCTS and LICENSED PROCESSES.
11.2 Export Control. COMPANY and its AFFILIATES and SUBLICENSEES shall
comply with all United States laws and regulations controlling the export of
certain commodities and technical data, including without limitation all Export
Administration Regulations of the United States Department of Commerce. Among
other things, these laws and regulations prohibit or require a license for the
export of certain types of commodities and technical data to specified
countries. COMPANY hereby gives written assurance that it will comply with, and
will cause its AFFILIATES and SUBLICENSEES to comply with, all United States
export control laws and regulations, that it bears sole responsibility for any
violation of such laws and regulations by itself or its AFFILIATES or
SUBLICENSEES, and that it will indemnify, defend, and hold M.I.T. harmless (in
accordance with Section 8.1) for the consequences of any such violation.
11.3 Non-Use of M.I.T. Name. COMPANY and its AFFILIATES and SUBLICENSEES
shall not use the name of "Massachusetts Institute of Technology," "Lincoln
Laboratory" or any variation, adaptation, or abbreviation thereof, or of any of
its trustees, officers, faculty, students, employees, or agents, or any
trademark owned by M.I.T., or any terms of this Agreement in any promotional
material or other public announcement or disclosure without the prior written
consent of M.I.T. The foregoing notwithstanding, without the consent
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of M.I.T., COMPANY may state that it is licensed by M.I.T. under one or more of
the patents and/or patent applications comprising the PATENT RIGHTS.
11.4 Marking of LICENSED PRODUCTS. To the extent commercially feasible
and consistent with prevailing business practices, COMPANY shall ▇▇▇▇, and shall
cause its AFFILIATES and SUBLICENSEES to ▇▇▇▇, all LICENSED PRODUCTS that are
manufactured or sold under this Agreement with the number of each issued patent
under the PATENT RIGHTS that applies to such LICENSED PRODUCT.
12. TERMINATION.
12.1 Voluntary Termination by COMPANY. COMPANY shall have the right to
terminate this Agreement, for any reason, (i) upon at least six (6) months prior
written notice to M.I.T., such notice to state the date at least six (6) months
in the future upon which termination is to be effective, and (ii) upon payment
of all amounts due to M.I.T. through such termination effective date.
12.2 Cessation of Business. If COMPANY ceases to carry on its business
related to this Agreement, M.I.T. shall have the right to terminate this
Agreement immediately upon written notice to COMPANY.
12.3 Termination for Default.
-----------------------
(a) Nonpayment. In the event COMPANY fails to pay any amounts due
and payable to M.I.T. hereunder, and fails to make such payments within thirty
(30) days after receiving written notice of such failure, M.I.T. may terminate
this Agreement immediately upon written notice to COMPANY.
(b) Material Breach. In the event COMPANY commits a material
breach of its obligations under this Agreement, except for breach as described
in Section 12.3(a), and fails to cure that breach within sixty (60) days after
receiving written notice thereof, M.I.T. may terminate this Agreement
immediately upon written notice to COMPANY.
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16
12.4 Effect of Termination.
(a) Survival. The following provisions shall survive the
expiration or termination of this Agreement: Articles 1, 8, 9, 13 and 14, and
Sections 4.1(b), 5.4, 11.1, 11.2 and 12.4.
(b) Inventory. Upon the early termination of this Agreement,
COMPANY and its AFFILIATES and SUBLICENSEES may complete and sell any
work-in-progress and inventory of LICENSED PRODUCTS that exist as of the
effective date of termination, provided that (i) COMPANY pays M.I.T. the
applicable running royalty or other amounts due on such sales of LICENSED
PRODUCTS in accordance with the terms and conditions of this Agreement, and (ii)
COMPANY and its AFFILIATES and SUBLICENSEES shall complete and sell all
work-in-progress and inventory of LICENSED PRODUCTS within six (6) months after
the effective date of termination.
(c) Pre-termination Obligations. In no event shall termination of
this Agreement release COMPANY, AFFILIATES, or SUBLICENSEES from the obligation
to pay any amounts that became due on or before the effective date of
termination.
13. DISPUTE RESOLUTION.
13.1 Mandatory Procedures. The parties agree that any dispute arising
out of or relating to this Agreement shall be resolved solely by means of the
procedures set forth in this Article, and that such procedures constitute
legally binding obligations that are an essential provision of this Agreement.
If either party fails to observe the procedures of this Article, as may be
modified by their written agreement, the other party may bring an action for
specific performance of these procedures in any court of competent jurisdiction.
13.2 Equitable Remedies. Although the procedures specified in this
Article are the sole and exclusive procedures for the resolution of disputes
arising out of or relating to this Agreement, either party may seek a
preliminary injunction or other provisional equitable relief if, in its
reasonable judgment, such action is necessary to avoid irreparable harm to
itself or to preserve its rights under this Agreement.
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13.3 Dispute Resolution Procedures.
(a) Mediation. In the event any dispute arising out of or
relating to this Agreement remains unresolved within sixty (60) days from the
date the affected party notified the other party of such dispute, either party
may initiate mediation upon written notice to the other party ("Notice Date"),
whereupon both parties shall be obligated to engage in a mediation proceeding
under the then current Center for Public Resources ("CPR") Model Procedure for
Mediation of Business Disputes (▇▇▇▇://▇▇▇.▇▇▇▇▇▇.▇▇▇/▇▇▇▇▇▇▇▇.▇▇▇), except that
specific provisions of this Article shall override inconsistent provisions of
the CPR Model Procedure. The mediator will be selected from the CPR Panels of
Neutrals. If the parties cannot agree upon the selection of a mediator within
fifteen (15) business days after the Notice Date, then upon the request of
either party, the CPR shall appoint the mediator. The parties shall attempt to
resolve the dispute through mediation until the first of the following occurs:
(i) the parties reach a written settlement; (ii) the mediator notifies the
parties in writing that they have reached an impasse; (iii) the parties agree in
writing that they have reached an impasse; or (iv) the parties have not reached
a settlement within sixty (60) days after the Notice Date.
(b) Trial Without Jury. If the parties fail to resolve the
dispute through mediation, or if neither party elects to initiate mediation,
each party shall have the right to pursue any other remedies legally available
to resolve the dispute, provided, however, that the parties expressly waive any
right to a jury trial in any legal proceeding under this Article.
13.4 Performance to Continue. Each party shall continue to perform its
undisputed obligations under this Agreement pending final resolution of any
dispute arising out of or relating to this Agreement; provided, however, that a
party may suspend performance of its undisputed obligations during any period in
which the other party fails or refuses to perform its undisputed obligations.
Nothing in this Article is intended to relieve LICENSEE from its obligation to
make undisputed payments pursuant to Articles 4 and 6 of this Agreement.
13.5 Statute of Limitations. The parties agree that all applicable
statutes of limitation and time-based defenses (such as estoppel and laches)
shall be tolled while the procedures set forth in Sections 13.3(a) are pending.
The parties shall cooperate in taking any actions necessary to achieve this
result.
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14. MISCELLANEOUS.
14.1 Notice. Any notices required or permitted under this Agreement
shall be in writing, shall specifically refer to this Agreement, and shall be
sent by hand, recognized national overnight courier, confirmed facsimile
transmission, confirmed electronic mail, or registered or certified mail,
postage prepaid, return receipt requested, to the following addresses or
facsimile numbers of the parties:
If to M.I.T.: Technology Licensing Office, Room NE25-230
Massachusetts Institute of Technology
▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: Director
Tel: ▇▇▇-▇▇▇-▇▇▇▇
Fax: ▇▇▇-▇▇▇-▇▇▇▇
If to COMPANY: Intuitive Surgical Corporation
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇.
Attention: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
President and Chief Executive Officer
Tel: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇ ▇▇▇-▇▇▇▇
All notices under this Agreement shall be deemed effective upon
receipt. A party may change its contact information immediately upon written
notice to the other party in the manner provided in this Section.
14.2 Governing Law. This Agreement and all disputes arising out of or
related to this Agreement, or the performance, enforcement, breach or
termination hereof, and any remedies relating thereto, shall be construed,
governed, interpreted and applied in accordance with the laws of the
Commonwealth of Massachusetts, U.S.A., without regard to conflict of laws
principles, except that questions affecting the construction and effect of any
patent shall be determined by the law of the country in which the patent shall
have been granted.
14.3 Force Majeure. Neither party will be responsible for delays
resulting from causes beyond the reasonable control of such party, including
without limitation fire, explosion, flood, war, strike, or riot, provided that
the nonperforming party uses commercially reasonable efforts to avoid or remove
such causes of nonperformance and continues performance under this Agreement
with reasonable dispatch whenever such causes are removed.
14.4 Amendment and Waiver. This Agreement may be amended, supplemented,
or otherwise modified only by means of a written instrument signed by both
parties. Any waiver of
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19
any rights or failure to act in a specific instance shall relate only to such
instance and shall not be construed as an agreement to waive any rights or fail
to act in any other instance, whether or not similar.
14.5 Severability. In the event that any provision of this Agreement
shall be held invalid or unenforceable for any reason, such invalidity or
unenforceability shall not affect any other provision of this Agreement, and the
parties shall negotiate in good faith to modify the Agreement to preserve (to
the extent possible) their original intent. If the parties fail to reach a
modified agreement within thirty (30) days after the relevant provision is held
invalid or unenforceable, then the dispute shall be resolved in accordance with
the procedures set forth in Article 13. While the dispute is pending resolution,
this Agreement shall be construed as if such provision were deleted by agreement
of the parties.
14.6 Binding Effect. This Agreement shall be binding upon and inure to
the benefit of the parties and their respective permitted successors and
assigns.
14.7 Headings. All headings are for convenience only and shall not
affect the meaning of any provision of this Agreement.
14.8 Entire Agreement. This Agreement constitutes the entire agreement
between the parties with respect to its subject matter and supersedes all prior
agreements or understandings between the parties relating to its subject matter.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
executed by their duly authorized representatives.
M.I.T.'s offer to Intuitive Surgical Corporation to execute this license
shall extend to April 5, 1999.
THE EFFECTIVE DATE OF THIS AGREEMENT IS APRIL 1, 1999
MASSACHUSETTS INSTITUTE OF INTUITIVE SURGICAL CORPORATION
TECHNOLOGY
By: /s/ J. ▇▇▇▇▇ ▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
------------------------------------ -------------------------------
Name: J. ▇▇▇▇▇ ▇▇▇▇▇▇▇ Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
---------------------------------- -----------------------------
Title: Vice President for Research Title: President & CEO
--------------------------------- ----------------------------
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APPENDIX A
List of Patent Applications and Patents
I. United States Patents and Applications
MIT Case 7830
"Robotic Apparatus"
by ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, and J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
PCT/US98/19508 designating the United States
II. International (non-U.S.) Patents and Applications
MIT Case 7830
"Robotic Apparatus"
by ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, and J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
PCT/US98/19508 designating the EPO, Canada, and Japan
-18-
▇▇
▇▇▇▇▇▇▇▇ ▇
▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇▇ (▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇) for which
PATENT RIGHTS Applications Will Be Filed, Prosecuted and Maintained
Please advise
-19-
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CONFLICT AVOIDANCE STATEMENT
Name: J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
Dept. or Lab.: Mechanical Engineering
Company: Intuitive Surgical Corporation
Address: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇.
Licensed Technology:
MIT Case 7830
"Robotic Apparatus"
by ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, and
J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
Because of the M.I.T. license granted to the above company and my equity*
position and continuing relationship with this company, I acknowledge the
potential for a possible conflict of interest between the performance of
research at M.I.T. and my contractual or other obligations to this company.
Therefore, I will not:
1) use students at M.I.T. for research and development projects
for the company;
2) restrict or delay access to information from my M.I.T.
research;
3) take direct or indirect research support from the company in
order to support my activities at M.I.T.; or
4) employ students at the company, except in accordance with
Section 2.12.2, "Relations of Faculty and Students," in the
Policies and Procedures Guide.
In addition, in order to avoid the appearance of a conflict, I will attempt to
differentiate clearly between the intellectual directions of my M.I.T. research
and my contributions to the company. To that end, I will expressly inform my
department head/laboratory director annually of the general nature of my
activities on behalf of the company.
Signed: /s/ J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇.
-----------------------------------
Date: 3/31/99
--------------
Approved by: Illegible
-----------------------
Name (print):
----------------------
(Dept. Head or Lab Dir)
Conf Avoid Stmnt 941017
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* "Equity" includes stock, options, warrants or other financial instruments
convertible into Equity, which are directly or indirectly controlled by the
inventor.
-21-
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APPENDIX
WAIVER
For good and valuable consideration, including the grant of a license to
Intuitive Surgical Corporation ("COMPANY"), of the invention referenced below:
▇.▇.▇. ▇▇▇▇ ▇▇. ▇▇▇▇
▇▇▇▇, ▇▇▇/▇▇ 98/19508 "Robotic Apparatus " by
▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, And J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇.
a company in which I hold equity, I hereby release all rights,
title and interest I and my heirs and assigns may have as an
inventor/author under M.I.T.'s Guide to the Ownership, Distribution and
Commercial Development of M.I.T. Technology, as that policy may be
amended from time to time, to receive my inventor's share of M.I.T.'s
institutional equity. pursuant to this License Agreement.
Witness: Illegible Signed: /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
----------------- ------------------------------
Name: ▇▇▇▇▇ ▇▇▇▇▇▇▇
--------------------------------
Date: 3/31/99
------------------------------
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25
APPENDIX
WAIVER
For good and valuable consideration, including the grant of a license to
Intuitive Surgical Corporation ("COMPANY"), of the invention referenced below:
▇.▇.▇. ▇▇▇▇ ▇▇. ▇▇▇▇
▇▇▇▇, ▇▇▇/▇▇ 98/19508 "Robotic Apparatus " by
▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, And J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇.
a company in which I hold equity, I hereby release all rights,
title and interest I and my heirs and assigns may have as an
inventor/author under M.I.T.'s Guide to the Ownership, Distribution and
Commercial Development of M.I.T. Technology, as that policy may be
amended from time to time, to receive my inventor's share of M.I.T.'s
institutional equity. pursuant to this License Agreement.
Witness: /s/ ▇▇▇▇ ▇▇▇▇▇▇▇ Signed: /s/ ▇. ▇▇▇▇▇▇▇▇
------------------------ --------------------------
Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
----------------------------
Date: 3/31/99
----------------------------
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APPENDIX
WAIVER
For good and valuable consideration, including the grant of a license to
Intuitive Surgical Corporation ("COMPANY"), of the invention referenced below:
▇.▇.▇. ▇▇▇▇ ▇▇. ▇▇▇▇
▇▇▇▇, ▇▇▇/▇▇ 98/19508 "Robotic Apparatus " by
▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, And J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇.
a company in which I hold equity, I hereby release all rights,
title and interest I and my heirs and assigns may have as an
inventor/author under M.I.T.'s Guide to the Ownership, Distribution and
Commercial Development of M.I.T. Technology, as that policy may be
amended from time to time, to receive my inventor's share of M.I.T.'s
institutional equity. pursuant to this License Agreement.
Witness: /s/ ▇▇▇▇ ▇▇▇▇▇▇▇ Signed: /s/ J. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇.
------------------------ --------------------------------
Name: J.▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇
----------------------------------
Date: 3/31/99
--------------------------------
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MASSACHUSETTS INSTITUTE OF TECHNOLOGY
EXCLUSIVE PATENT LICENSE AGREEMENT WITH
INTUITIVE SURGICAL, INC.
APRIL, 1, 1999
ADDENDUM
WHEREAS, Intuitive Surgical, Inc. ("Intuitive") has represented in good faith
that its present efforts to acquire regulatory approval for, and commercialize,
its da Vinci(TM) Surgical System in both Europe and the United States require
its complete and undivided attention;
WHEREAS, Intuitive believes in good faith that its future depends upon its
undivided commitment to making its da Vinci(TM) Surgical System widely available
to the public, and that the public will benefit from having access to its
technology; and
WHEREAS, Intuitive has asked MIT for a clarification of certain obligations
under the Parties April 1, 1999 License Agreement in order for Intuitive to
devote its resources solely to successfully introducing its technology into the
world's markets;
NOW:
MIT hereby clarifies and agrees that Intuitive's present efforts to
commercialize its da Vinci(TM) Surgical System in the United States and abroad
satisfy the spirit of section 3.1 and 3.2 of the Parties April 1, 1999 License
Agreement, and thus that Intuitive's obligations under section 3.1 and 3.2 of
that Agreement shall be deemed satisfied.
Read, Understood, Executed and Agreed to:
/s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇ /s/ ▇▇▇▇ ▇▇▇▇▇▇
------------------------------ ---------------------------------------
▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇
President & CEO Director
Intuitive Surgical, Inc. Technology Licensing Office, NE25-230
▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇▇ Institute of Technology
▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Feb. 24, 2000 Feb. 29, 2000
------------------------------ ---------------------------------------
Date Date
1.