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EXHIBIT 10
MASTER LICENSE AGREEMENT
THIS MASTER LICENSE AGREEMENT ("Agreement"), made as of this 3rd day of
April, 2000 by and among CORDIS CORPORATION, a Florida corporation having a
place of business at 14201 NW 60th Avenue, Miami Lakes, FL 33014, and its
Affiliates (Cordis Corporation and its Affiliates, collectively, "CORDIS"),
GUIDANT CORPORATION, an Indiana corporation, having a place of business at 111
Monument Circle, 20th Fl., Indianapolis, IN 46204, and its Affiliates including
ADVANCED CARDIOVASCULAR SYSTEMS, INC., a California corporation and a subsidiary
of GUIDANT having a place of business at 3200 Lakeside Drive, Santa Clara, CA
95052 ("ACS") (Guidant Corporation and its Affiliates, including ACS,
collectively referred to as "GUIDANT").
RECITALS
The Parties manufacture and distribute throughout the world various
angioplasty products, as well as other medical products, and both own and are
licensed, with the right to sublicense, under various United States and foreign
patents and patent applications applicable to such products;
* Material has been omitted pursuant to a request for confidential treatment
and such material has been filed separately with the Securities and Exchange
Commission. Asterisks within brackets denote omissions.
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The Parties are involved in multiple patent litigations with one
another and are simultaneously with the execution of this Agreement entering
into an Arbitration Agreement providing for the resolution of such litigation
along with the resolution of future disputes;
The Parties further contemplate expanding each of their respective
businesses by entering into an arrangement providing for specified conditions
under which ACS may manufacture and supply certain of its products to CORDIS for
commercial distribution to users;
The Parties also contemplate providing each other access to certain of
their respective technologies for the purpose of exploring use applications of
those technologies for use in future products; and
Each of the Parties has various Affiliates located both in the United
States and elsewhere in the world.
NOW, THEREFORE, in consideration of the mutual covenants expressed
herein and for other good and valuable consideration, receipt and sufficiency of
which are hereby acknowledged, the Parties, intending to be legally bound,
hereby agree as follows:
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ARTICLE I
DEFINITIONS
1.1 "Affiliate" shall mean any corporation, firm, partnership, joint
venture or other entity which, now or hereafter, directly or indirectly owns, is
owned by or is under common ownership of a Party. "Owned" for purposes of
determining Affiliates shall mean ownership of more than fifty percent (50%) (or
such lesser percentage which is the maximum allowed to be owned by a foreign
corporation in a particular jurisdiction) of the equity or other ownership
interest having the power to vote on or direct the affairs of such corporation,
firm, partnership, joint venture or other entity. It is specifically
acknowledged that each of the Parties presently has multiple Affiliates.
1.2 "Arbitration Agreement" shall mean the Arbitration Agreement dated
April 3, 2000, by and among the Parties to this Agreement; and "Arbitration"
shall mean the proceedings conducted pursuant to the Arbitration Agreement.
1.3 "Other Vascular Products" means products used for repairing
abdominal aortic aneurysms, for performing minimally invasive or off-pump
cardiac surgery and for harvesting blood vessels.
1.4 "Confidential Information" means information including, but not
limited to, techniques, designs, drawings, processes, inventions, developments,
equipment, prototypes, sales and customer information, and business and
financial information,
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relating to the business, products, practices, or techniques of the disclosing
party. As used herein, "Confidential Information" shall not include any
information or data which (i) is in or becomes part of the public domain by any
means other than the receiving party's breach of its obligations hereunder; (ii)
was known to the receiving party at the time of disclosure by the disclosing
party; (iii) is, at any time, disclosed to the receiving party by any third
party having the right to disclose the same; or (iv) is developed by an
employees, agents or consultants of the receiving party who were not privy to
any Confidential Information disclosed by the disclosing party pursuant to this
Agreement.
1.5 "Current Product" means a product that is or has been sold
anywhere in the world as of or prior to the Effective Date, but excluding Other
Vascular Products.
1.6 "Effective Date" shall mean the date of this Agreement.
1.7 "Radiation Field" shall mean catheter-based radiation technology
for use with radiation delivered by a source wire or a ribbon placed through a
lumen of such catheter. Examples of source wires are those currently made by
Neocardia and Omnitron. Examples of ribbons are those currently made by Best
Medical for CORDIS.
1.8 "Foreign Counterpart(s)" shall mean and comprise those foreign
Patents which claim priority from, or share common priority with an identified
U.S. Patent and which make a common disclosure as the subject matter of such
identified U.S. Patent.
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1.9 "Licensed Product(s)" shall mean a device, apparatus or method,
the practice, manufacture, use or sale of which would, but for this Agreement,
infringe a Valid Claim of at least one Patent.
1.10 "Net Sales" shall mean worldwide gross sales of Licensed Products
to Third Parties less the following amounts: (i) discounts, including, without
limitation, cash discounts and rebates actually allowed or granted, (ii) credits
or allowances actually granted upon claims or returns regardless of the party
requesting the return, (iii) insurance paid in connection with shipment and
freight charges paid for delivery, and (iv) taxes or other governmental charges
levied on or measured by the invoiced amount (including, without limitation,
value added tax), whether absorbed by the billing party or paid by the billed
party. In the event that a Licensed Product is sold in the form of an assemblage
of products containing one or more components other than a Licensed Product, Net
Sales of such Licensed Product will be calculated by multiplying the Net Sales
of such assemblage of products by the fraction A/(A+B) where A is the invoice
price of the Licensed Product if sold separately by such Party, and B is the
total invoice price of any other component or components that are not Licensed
Products but are contained in the assemblage of products, if sold separately by
such party. If, on a country-by-country basis, the Licensed Product is only sold
in an assemblage of products, Net Sales will include only that part of such sale
reasonably allocable to the Licensed Product. In making such allocation, primary
consideration will be given to the added value provided by the Licensed Product
as compared to the value of the assemblage of products sold without it. To the
extent that
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calculation of "Net Sales" requires translation of foreign currencies into US
Dollars, such translation shall be effected using the procedures set forth in
paragraph 3.4.
1.11 "Party" means CORDIS, ACS or GUIDANT, as the case may be, and its
Affiliates.
1.12 "Patents" shall mean and be limited to the patents and patent
applications identified below and in the referenced Schedules, owned or
controlled by the Parties, as the case may be. Included within the definition of
Patents are any continuations, continuations-in-part, divisionals, including any
patents maturing therefrom and any patents of addition, reissues,
re-examinations, renewals or extensions thereof, further including any Foreign
Counterparts of such Patents:
A. "Palmaz/Schatz Patents" shall mean those Patents having in common
the priority date or dates of those patents listed in Schedule "1A".
B. "Lam/Lau Patents" shall mean those Patents having in common the
priority date or dates of those patents listed in Schedule "1B".
C. "Lazarus Patents" shall mean those Patents having in common the
priority date or dates of those patents listed in Schedule "1C".
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D. "Hillstead Patents" shall mean those Patents having in common the
priority date or dates of those patents listed in Schedule "1D".
E. "Pinchuk Patents" shall mean those Patents having in common the
priority date or dates of those patents listed in Schedule "1E".
F. "Dake/Bradshaw Patents" shall mean those Patents having in common
the priority date or dates of those patents listed in Schedule "1F".
G. "Radiation Non-Stent Patents" shall mean those Patents owned or
controlled by CORDIS, directed to the Radiation Field, but not comprising Stent
Implants, having in common the priority date or dates before the Effective Date.
Examples of Radiation Non-Stent Patents include, but are not limited to, those
patents listed in Schedule "1G".
H. "[***] Patents" shall mean the Patents directed to and claiming in
the field of radiation, owned by or licensed to [***], if and at the time that
[***] is acquired by CORDIS as contemplated by Article VI of this Agreement, and
those patents having in common the priority date or dates of such patents.
I. "Stent Implant Patents" shall mean all of the Parties' respective
Patents having claims that cover Stent Implants which are owned, acquired, or
licensed, with right of sublicense, by any of the Parties and having a worldwide
priority date before December
* Material has been omitted pursuant to a request for confidential treatment
and such material has been filed separately with the Securities and Exchange
Commission. Asterisks within brackets denote omissions.
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31, 2015. Stent Implant Patents shall not include the Palmaz/Schatz Patents, the
Lam/Lau Patents, or the Lazarus Patents.
K. "Yock Patents" shall mean those Patents having in common the
priority date or dates of those patents listed in Schedule "1K."
1.13 "Released Matters" shall have the definition given in paragraph
12.1 of this Agreement.
1.14 "Stent Implant" shall mean any bare, metal device, at least a
portion of which is placed within a blood vessel of the body to help maintain
the patency of such blood vessel, and that requires expansion by a radially
expandable force (i.e., devices that are not self-expanding.) For the avoidance
of doubt, "Stent Implant", as defined, is understood not to include stent-grafts
(including those used to treat abdominal aortic aneurysms), radioactive stents
(unless otherwise licensed under this Agreement) and drug delivery (i.e.,
"coated") stents.
1.15 "Third Party (ies)" shall mean any party other than a Party to
this Agreement or an Affiliate of a Party.
1.16 "Valid Claim" means a claim of an issued Patent that has not been
held or declared invalid, unpatentable or unenforceable by the United States
Patent and Trademark Office, a foreign patent office, or a court of competent
jurisdiction or an
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arbitration panel acting pursuant to the Arbitration Agreement, provided that no
appeal can or has been taken.
ARTICLE II
LICENSE GRANTS AND PAYMENTS
2.1 Palmaz/Schatz Patents. CORDIS hereby grants to GUIDANT an
irrevocable, non-exclusive, worldwide right and license (without the right to
sublicense) to make, have made, use or sell, or otherwise dispose of Licensed
Products, under the Palmaz/Schatz Patents, and to practice processes and methods
under the Palmaz/Schatz Patents. The license granted pursuant to this paragraph
2.1 shall be a paid-up license and any pass-through royalties payable in respect
of past and future Net Sales of Licensed Products by GUIDANT (including Net
Sales of the relevant products that occurred prior to the Effective Date) shall
be payable by CORDIS.
2.2 Lam/Lau Patents. GUIDANT hereby grants to CORDIS an irrevocable,
non-exclusive, worldwide right and license (without the right to sublicense) and
to make, have made, use or sell, or otherwise dispose of Licensed Products,
under the Lam/Lau Patents, and to practice processes and methods under the
Lam/Lau Patents. The license granted pursuant to this paragraph 2.2 shall be a
paid-up license and any pass-through royalties payable in respect of past and
future Net Sales by CORDIS of Licensed Products (including Net Sales of the
relevant products that occurred prior to the Effective Date) shall be payable by
GUIDANT; provided, however, that, if CORDIS is found to be
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infringing or to have infringed one or more Valid Claims of the Lam/Lau Patents
pursuant to the terms of the Arbitration Agreement, CORDIS shall pay to GUIDANT
a royalty of [***] of the past and future Net Sales (including Net Sales of the
relevant products that occurred prior to the Effective Date), subject to a
possible additional supplemental royalty rate pursuant to paragraph 2.10 below,
of (i) the Licensed Products found in the Arbitration to infringe the Lam/Lau
Patents and (ii) all additional Licensed Products, if any, that are subsequently
found to infringe the Lam/Lau Patents.
2.3 Pinchuk Patents. CORDIS hereby grants to GUIDANT an irrevocable,
non-exclusive, worldwide right and license (without the right to sublicense) to
make, have made, use or sell or otherwise dispose of Licensed Products, under
the Pinchuk Patents, and to practice processes and methods under the Pinchuk
Patents. The license granted pursuant to this paragraph 2.3 shall be a paid-up
license and any pass-through royalties payable in respect of past and future Net
Sales of Licensed Products by GUIDANT (including Net Sales of the relevant
products that occurred prior to the Effective date) shall be payable by CORDIS;
provided, however, that if ACS is found to be infringing or to have infringed
one or more Valid Claims of the Pinchuk Patents pursuant to the terms of the
Arbitration Agreement, ACS shall pay to CORDIS a royalty rate as determined by
the arbitrators pursuant to the Arbitration Agreement of the past and future Net
Sales (including Net sales of the relevant products that occurred prior to the
Effective Date) of (i) the catheter portion of the Licensed Products found in
the Arbitration to infringe the Pinchuk Patents and (ii) the catheter portion of
all additional Licensed Products, if any, that are subsequently found to
infringe such Patents.
* Material has been omitted pursuant to a request for confidential treatment
and such material has been filed separately with the Securities and Exchange
Commission. Asterisks within brackets denote omissions.
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2.4 Stent Implant Patents. CORDIS and GUIDANT each hereby grants to
the other an irrevocable, non-exclusive, worldwide right and license (without
the right to sublicense) to make, have made, use or sell, or otherwise dispose
of Licensed Products (limited to Stent Implants), under the Stent Implant
Patents, and to practice processes and methods under the Stent Implant Patents.
The Arbitration Agreement shall provide for determination of whether a Party
Licensee infringes any of the Stent Implant Patents and, if so, then what
royalty shall be paid on the Stent Implant Patents. The respective licensees
shall be responsible for any pass-through royalty payments required to be made
to a third party licensor.
2.5 Hillstead Patents. CORDIS hereby grants to GUIDANT an irrevocable,
non-exclusive, worldwide right and license (without the right to sublicense) to
make, have made, use or sell or otherwise dispose of Licensed Products, under
the Hillstead Patents, and to practice processes and methods under the Hillstead
Patents. The license granted pursuant to this paragraph 2.5 shall be a paid-up
license and any pass-through royalties payable in respect of past and future Net
Sales of Licensed Products by GUIDANT (including Net Sales of the relevant
products that occurred prior to the Effective Date) shall be payable by CORDIS.
2.6 Lazarus Patents. GUIDANT hereby grants to CORDIS an irrevocable,
non-exclusive, worldwide right and license (without the right to sublicense)
limited to the field of Stent Implants, to make, have made, use or sell or
otherwise dispose of Licensed
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Products under the Lazarus Patents, and to practice processes and methods under
the Lazarus Patents. The license granted pursuant to this paragraph 2.6 shall be
a paid-up license and any pass-through royalties payable in respect of past and
future Net Sales of Licensed Products by CORDIS (including Net Sales of the
relevant products that occurred prior to the Effective Date) shall be payable by
GUIDANT.
2.7 Radiation Non-Stent Patents. CORDIS hereby grants to GUIDANT an
irrevocable, non-exclusive, worldwide right and license (without the right to
sublicense) to make, have made, use or sell or otherwise dispose of Licensed
Products under the Radiation Non-Stent Patents, and to practice processes and
methods under the Radiation Non-Stent Patents. The license granted pursuant to
this paragraph 2.7 shall be a paid-up license and any pass-through royalties
payable in respect of past and future Net Sales of Licensed Products by GUIDANT
(including Net Sales of the relevant products that occurred prior to the
Effective Date) shall be payable by GUIDANT.
2.8 Dake-Bradshaw Patents. GUIDANT hereby grants to CORDIS an
irrevocable, non-exclusive, worldwide right and license (without the right to
sublicense), limited to the Radiation Field, to make, have made, use or sell or
otherwise dispose of Licensed Products under the Dake-Bradshaw Patents, and to
practice processes and methods under the Dake-Bradshaw Patents. The license
granted pursuant to this paragraph 2.8 shall be a paid-up license; provided,
however, that any pass-through royalties payable in respect of past and future
Net Sales of Licensed Products by CORDIS (including Net Sales of the relevant
products that occurred prior to the Effective Date)
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shall be payable by CORDIS. The foregoing license to the Dake-Bradshaw Patents
shall automatically terminate if CORDIS or any of its Affiliates acquires all or
substantially all of the current cardiology business of Novoste Corporation, a
Georgia corporation, or if CORDIS or any of its Affiliates acquires all or
substantially all of a successor in interest to such current cardiology business
of Novoste Corporation.
2.9 Yock Patents. GUIDANT hereby grants to CORDIS, effective August 9,
2005, an irrevocable, non-exclusive, worldwide right and license (without the
right to sublicense) to make, have made, use or sell or otherwise dispose of
Licensed Products under the Yock Patents, and to practice processes and methods
under the Yock Patents. The license granted pursuant to this paragraph 2.9 shall
be a paid-up license; provided, however, that any pass-through royalties payable
in respect of past and future Net Sales of Licensed Products by CORDIS
(including Net Sales of the relevant products that occurred prior to the
Effective Date) shall be payable by CORDIS.
2.10 For purposes of paragraphs 2.2 and 2.3 and 2.4 above if either
CORDIS or GUIDANT believes that its patent is being infringed by any product of
the other Party, other than a Current Product, such Party can give notice to the
other Party. The recipient of the notice shall have the option of negotiating an
amicable solution or initiating an arbitration pursuant to paragraph 10.3 below
and the Arbitration Agreement to contest infringement by such product, and the
validity or enforceability of the accused Patent, provided however, that such
validity or enforceability determination shall be made in an
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arbitration one time only. If the arbitrators determine that the disputed Patent
is infringed, not invalid and enforceable, the arbitrators will, in the case of
the Lam/Lau Patents, designate a royalty equal to [***] and, in the case of the
other patents, may designate an appropriate supplemental royalty rate not to
exceed [***] of Net Sales. If the recipient of the notice does not believe a
license is necessary and does not initiate an arbitration proceeding within
ninety (90) days after receipt of the notice, the Party giving notice will be
free to initiate an arbitration pursuant to the Arbitration Agreement.
2.11 The Parties recognize the benefit of maintaining their own product
identity in the marketplace. To this end, the licenses granted hereunder shall
not extend to or cover "knock-off" products. A "knock-off" is one which (i) is
developed or acquired by one Party after public release of a base product by the
other Party or after knowledge of such base product is otherwise acquired and
(ii) is so similar in structure and function to be perceived by one of ordinary
skill in the relevant art to have been in fact derived from such base product.
It is understood that no Current Product of a Party shall be deemed to be a
"knock-off."
2.12 For any Licensed Product under which royalties are payable under
more than one Patent, it is understood by the Parties that any royalty payment
shall not be cumulative, but shall be no greater than [***] of Net Sales (the
"Maximum Rate"); provided, however, that any royalty rate in respect of the
Lau/Lam Patents determined pursuant to paragraph 2.2 above shall be subject to
an increase of up to [***] over the Maximum Rate, pursuant to the provisions of
paragraph 2.10 above.
* Material has been omitted pursuant to a request for confidential treatment
and such information has been filed separately with the Securities and
Exchange Commission. Asterisks within brackets denote omissions.
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2.13 Nothing in this Agreement shall be construed as conferring by
implication, estoppel or otherwise any license or other right under any patent
or intellectual property of the Parties, except as expressly granted.
2.14 The royalty rates provided for herein have been determined by the
Parties as part of an effort to compromise and settle various disputes between
them and taking into consideration other transactions to be entered into between
the Parties, so that any particular royalty rate does not necessarily represent
the value of the applicable licenses or the royalty rates that would be
established independently or under other circumstances.
2.15 The licenses granted by a Party under this Agreement shall not
authorize the licensee to make, have made, use or sell, or otherwise dispose of,
for or to any Competitor of the licensor. For this purpose, "Competitors" shall
have the meaning used in Schedule 7.1.
2.16 The licenses granted under this Agreement shall continue in full
force and effect in accordance with their respective terms notwithstanding any
breach by the licensee, or any expiration or termination, of this Agreement.
ARTICLE III
ROYALTIES AND ACCOUNTING
3.1 Each licensee of a royalty bearing license set forth in Article II
shall pay the licensor of such royalty bearing license or its assignee in United
States Dollars. Royalty payments due to GUIDANT or ACS shall be made by check
mailed to Guidant or ACS, as
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the case may be, or by wire transfer to its designated bank or as otherwise
specified from time to time by GUIDANT or ACS, as the case may be. Royalty
payments due to CORDIS shall be paid by check mailed to CORDIS, or by wire
transfer to its designated bank, or as otherwise specified from time to time by
CORDIS. Royalties shall accrue when products covered by such royalty bearing
license are sold to a Third Party; shall be paid in full no later than sixty
(60) days after the end of each calendar quarter and shall be calculated based
upon Net Sales of such products during the immediate preceding calendar quarter.
3.2 Each licensee of a royalty bearing license set forth in Article II
shall deliver to the licensor of such royalty bearing license a royalty report
within sixty (60) days after the end of each calendar quarter. Such report shall
set forth the Net Sales of products covered by such royalty bearing license for
the calendar quarter most recently ended, with explanations of any adjustments
made.
3.3 Each licensee of a royalty bearing license set forth in Article II
shall keep and preserve accurate records of all transactions relating to this
Agreement, or the computation of royalties hereunder. Each licensee of a royalty
bearing license set forth in Article II agrees to preserve all such records for
the longer of at least three (3) years or as legally required after the close of
the quarter when any payment based thereon is due under this Agreement.
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3.4 The remittance of royalties payable on sales outside the United
States will be payable to a Party licensor based on sales in United States
dollar equivalents converted at the monthly average exchange rate for the
quarter of the currency of the country from which the royalties are payable,
based on rates used by the Parties for conversion of sales for financial
reporting purposes. If the transfer or the conversion into United States Dollar
equivalents in any such instance is not lawful or possible, the payment of such
part of the royalties as is necessary shall be made by the deposit thereof, in
the currency of the country where the sales were made on which the royalty was
based, to the credit and account of the Party licensor or its nominee in any
commercial bank or trust company of its choice located in that country, prompt
notice of which shall be given by the Party licensor to the Party licensee.
3.5 Each licensor of a royalty bearing license set forth in Article
II, through a public accounting firm reasonably acceptable to the licensee,
shall have the right, upon reasonable notice, to inspect, during normal business
hours, the accounting books and records of the licensee of such license to
verify the amounts of royalties due under this Agreement, including the right to
interview and question such licensee's accounting personnel, including personnel
in any outside accounting firm(s) used by such licensee; provided, however, that
a licensor shall be limited to only one such inspection during any twelve-month
period and no period can be examined more than once or later than two years
after the period ends. Each licensee of a royalty bearing license set forth in
Article II shall make such books and records available to the licensor at the
location(s) where such
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materials are maintained in the ordinary course of business. In the event that
following any such examination it is finally determined that such licensee has
not paid in full the royalties due, the balance shall be promptly remitted with
interest at the prime commercial lending rate as announced from time to time by
The Chase Manhattan Bank, NA in New York City. Any licensor exercising its right
to review and examine books and records hereunder shall be responsible for the
cost of such examination and review unless such examination and review disclose
that the amount of royalties paid for any six-month period was less than ninety
percent (90%) of the amount due, in which event the licensee associated with the
examination and review shall be responsible for the reasonable cost of such
examination and review as well as for the balance of the royalties due, as
provided above.
ARTICLE IV
MAINTENANCE OF LICENSED TECHNOLOGY
4.1 Each licensor of a license set forth in Article II shall be solely
responsible for filing, prosecuting and maintaining the patent(s) licensed
thereunder. This shall include, inter alia, the filing and prosecution of any
pending patent applications licensed thereunder, as deemed appropriate in the
discretion of such licensor, and the payment of all maintenance and/or annuity
fees related to any issued patents licensed thereunder. The licensee of a
license set forth in Article II shall have no obligation to cooperate with the
licensor in such efforts, except in situations in which a licensee is practicing
a licensed
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Patent, in which case such licensee shall reasonably cooperate with the licensor
(at the licensor's expense and request.)
4.2 If it is determined that any product of a licensee Party is
covered by any Patent of a licensor Party, the licensee Party shall use
reasonable efforts, consistent with its customary practices, to mark such
Product (or where this is impractical, the Product packaging) with appropriate
patent numbers. Such marking shall be in accordance with 35 U.S.C. Section 287,
insofar as United States sales are concerned, and the requirements of the
individual foreign countries, insofar as foreign sales are concerned.
ARTICLE V
CONFIDENTIALITY AND NON-DISCLOSURE
5.1 Each Party hereby agrees to hold in strict confidence and trust
all Confidential Information disclosed to such Party, to undertake all necessary
and appropriate steps to ensure the confidentiality of the Confidential
Information, and not to disclose, sell, rent or otherwise provide, directly or
indirectly, any Confidential Information or anything related to the Confidential
Information without the prior written consent of the owner of such Confidential
Information. Each Party may disclose Confidential Information only to: (i) its
employees, agents, representatives, related companies, and Permitted
Sublicensees who agree to be bound by the terms of this Agreement, and then only
to the extent necessary to carry out activities involving the legitimate use of
the Confidential Information, or (ii) prospective Third-Party purchasers
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of substantially all of a Party's vascular cardiology business who agree to be
bound by the confidentiality and non-disclosure provisions of this Article V; or
(iii) as a result of judicial order, upon reasonable notice to the disclosing
Party, and after taking all reasonable precautions of maintaining
confidentiality, including the establishment of any necessary protective order;
or (iv) as required by the federal securities laws or other applicable laws or
the applicable rules of a nationally recognized stock exchange.
5.2 Each Party further agrees that it may use and copy the
Confidential Information only in connection with the activities and duties
arising from this Agreement and not for its own purposes beyond the scope of
this Agreement or for the benefit of any Third Party except to the extent
necessary and as is consistent with this Agreement. Each Party agrees that it
will require its employees, agents, representatives, related companies, and
Permitted Sublicensees to comply with this Agreement and that it will be
responsible for any breach of this Agreement by such employees, agents,
representatives, related companies, and Permitted Sublicensees. Each Party
agrees to promptly notify the owner of such Confidential Information of any
breach by such Party's employees, agents, representatives, related companies,
and Permitted Sublicensees of the confidentiality obligations set forth herein,
and to cooperate with the owner of such Confidential Information in the action
to prevent further disclosure of use of such Confidential Information by any
such employees, agents, representatives, related companies, and Permitted
Sublicensees.
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5.3 Upon expiration or termination of this Agreement, each Party
agrees to promptly return all Confidential Information including copies of all
documents embodying such information held by itself, its employees, agents,
representatives, related companies, or Permitted Sublicensees, to the owner(s)
of such Confidential Information, and to make no further use or disclosure of
such Confidential Information.
5.4 Subject to the exceptions specified in clauses (i)-(iv) of
paragraph 5.1, no Party shall disclose any information to any third party with
respect to the existence or terms of this Agreement, other than in accordance
with the press release attached hereto as Schedule 5.4, without the prior
written consent of the other Parties, which shall not be unreasonably withheld
or delayed. This prohibition includes, but is not limited, to education and
scientific conferences, promotional materials, governmental filings, and
discussions with lenders, investment bankers, public officials, and the media.
To the extent that a disclosure of information is authorized or required, the
Parties shall cooperate to insure that the content is accurate and in accordance
with the reasonable business standards of each of them.
5.5 If CORDIS or GUIDANT determines that a disclosure of Confidential
Information or the information contemplated by paragraph 5.4 is required by law,
including a court or governmental agency, or the applicable rules of a
nationally recognized stock exchange, it shall notify the other Party in writing
ten (10) days (or, if such period is not feasible, such lesser period as is
feasible under the circumstances) before
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the time of the proposed disclosure. The notice shall include the exact text of
the proposed disclosure and the time and manner thereof. If requested, the Party
seeking to disclose information shall furnish to the other an opinion of counsel
that the disclosure of the information is required by law or the applicable
rules of a nationally recognized stock exchange. At the other Party's request
and before the disclosure, the Party desiring to disclose the information shall
consult with the other Party on the necessity for the disclosure and the text of
the proposed disclosure.
5.6 The restrictions and obligations of this Article V shall survive
for a period of three (3) years following any expiration, termination, or
cancellation of this Agreement and shall continue to bind each Party, its
successors and assigns for such period.
5.7 Each party agrees that in the event of a breach or threatened
breach of the confidentiality provisions of this Agreement, the owner of the
Confidential Information that is the subject of the breach or threatened breach
may be entitled to injunctive or other preliminary or equitable relief, in
addition to any other remedies available at law.
5.8 The Parties may, in their sole discretion, negotiate with one
another the content and timing of one or more press releases concerning the
subject matter of this Agreement, including the terms thereof. In the event that
the Parties mutually agree in writing to the content of any such press release,
the content of such press release shall be excluded from the definition of
Confidential Information set forth in Article V. Nothing in this paragraph shall
be construed as requiring a Party to negotiate or agree to any press
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release concerning the subject matter of this Agreement. In the event that the
Parties fail to agree in writing as to the content and timing of any press
release concerning this Agreement, all aspects of this Article V shall remain in
full force and effect.
ARTICLE VI
ACQUISITION OF [***]
CORDIS, CORDIS's parent, Johnson & Johnson, and [***] have entered
into a Collaboration Agreement dated [***] (as heretofore amended the "[***]
Agreement"), which provides, in part, for Johnson & Johnson to have the right
and option to acquire [***] under certain circumstances in accordance with the
Agreement and Plan of Merger substantially in the form attached as Exhibit G to
the [***] Agreement (the "Merger Agreement"). Cordis granted [***] the right
during the period beginning [***] and ending on [***] to enter into negotiations
with Guidant for the acquisition of [***] on such terms as [***] and Guidant may
agree to. Under the terms of the [***] Agreement, during the "Second Phase", as
defined in the [***] Agreement, Cordis has certain other rights to acquire [***]
(such rights are defined therein as the "Floating Purchase Option" and the
"Second Purchase Option"). In the event GUIDANT consummates the acquisition of
[***] pursuant to an agreement entered into during the period beginning [***]
and ending on [***] (the "Negotiation Period"), any rights of Johnson & Johnson
or any
* Material has been omitted pursuant to a request for confidential treatment
and such material has been filed separately with the Securities and Exchange
Commission. Asterisks within brackets denote omissions.
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Affiliate of Johnson & Johnson (collectively, "J&J") then existing to acquire
[***] shall terminate. If J&J acquires [***] during the period beginning [***]
and ending on [***] (the "Acquisition Period"), then the [***] Patents shall be
considered part of the Radiation Non-Stent Patents, and GUIDANT shall be
licensed or sublicensed, as the case may be, under the [***] Patents pursuant to
paragraph 2.7 herein, but subject to any then-existing conditions affecting
[***] right to license such patents; provided, however, that CORDIS shall use
reasonable efforts to eliminated or minimize the effect of any condition that
affects CORDIS's ability to license or sublicense any [***] Patents to GUIDANT.
In the event that either J&J or GUIDANT acquires from [***] during the
Acquisition Period a non-exclusive license to the [***] Patents, the acquiring
party shall, as a requirement of entering into such license, obtain the right
for the other party to acquire at the same time a non-exclusive license to such
patent [***]. Further, if during the Acquisition Period J&J acquires (whether by
purchase, assignment or exclusive license) from [***] any [***] Patent, such
patent shall be considered part of the Radiation Non-Stent Patents and GUIDANT
shall be licensed or sublicensed, as the case may be, under such patent pursuant
to Section 2.7. In the event GUIDANT acquires [***] pursuant to a definitive
agreement entered into during the Negotiation Period, GUIDANT shall cause [***]
to terminate, and CORDIS shall terminate and cause J&J to terminate, the [***]
Agreement to the extent then in effect; and GUIDANT shall cause [***] to
terminate, and CORDIS shall terminate the International License and Distribution
Agreement (as defined in the [***] Agreement). CORDIS hereby represents to
GUIDANT that it has not previously acquired or obtained control of any patents
that
* Material has been omitted pursuant to a request for confidential treatment
and such material has been filed separately with the Securities and Exchange
Commission. Asterisks within brackets denote omissions.
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would otherwise be included within the [***] Patents, other than those
already included in the Radiation Non-Stent Patents licensed pursuant to Section
2.7.
ARTICLE VII
ASSIGNMENT
7.1 Except as specifically provided in this Article VII, neither this
Agreement nor any of the rights and obligations of any Party hereunder,
including the licenses granted herein, and the technology licensed thereby,
shall be assigned, delegated, sold, transferred, or otherwise disposed of, by
operation of law or otherwise (including direct or indirect changes of control
of a Party or its parent company) without the prior written consent of all
Parties hereunder, such consent to be granted or withhold with the sole
discretion of any Party; provided however, that a Party may assign, delegate,
sublicense, sell, transfer, or otherwise dispose of rights hereunder to any one
or more of its Affiliates (for so long as it remains a Party's Affiliate)
without consent or other limitation; and provided, however, that a Party may
assign its rights hereunder to a successor-in-interest to substantially all of
that Party's vascular cardiology business if such successor is not itself
included on the list of organizations appearing on Schedule 7.1; and provided
that such successor is not then or thereafter in control of, or an Affiliate of
any party in control of, any organizations included on Schedule 7.1. In the
event that a Licensee (or its assignee) attempts to transfer rights licensed
under this Agreement to an organization included on Schedule 7.1, or to an
organization that is in control of, or an Affiliate of any party in control of,
any
* Material has been omitted pursuant to a request for confidential treatment
and such material has been filed separately with the Securities and Exchange
Commission. Asterisks within brackets denote omissions.
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organizations included in Schedule 7.1, the purported transfer of such rights
shall be null and void and the license set forth herein originally granting such
rights to the Licensee shall immediately terminate. In the event that the
Licensee (or its assignee) transfers rights licensed under this Agreement to an
organization that is not included on the list appearing on Schedule 7.1, and, at
a later time after such transfer, such organization (through merger or sale,
etc.) becomes included on the list appearing on Schedule 7.1, or in control of,
or an Affiliate of any party in control of, any organization included on
Schedule 7.1, then at such later time the license set forth herein originally
granting such rights to Licensee shall immediately terminate and such
organization shall thereafter retain no rights to any rights licensed under this
Agreement.
7.2 Any assignment permitted hereunder shall not relieve the assigning
Party of liability for performance of its obligations hereunder.
ARTICLE VIII
REPRESENTATIONS AND WARRANTIES
8.1 Each Party represents and warrants that it is a corporation duly
organized, validly existing, and in good standing. Each Party represents and
warrants that it has corporate power and authority to execute and deliver this
Agreement, to own any technology licensed hereunder, and to perform its
obligations hereunder, and all such action has been duly and validly authorized
by all necessary corporate proceedings on its part.
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8.2 As of the Effective Date, each Party licensor shall own all right
and title to the technology licensed by it hereunder, or otherwise shall have
the right and authority to grant the license hereunder to the Party licensee. As
of the Effective Date, each Party licensor's right, title and interest in and to
the technology licensed by it hereunder is and during the term of this Agreement
shall continue to be free and clear of any lien, charge, security interest or
encumbrance which would adversely affect or limit the Party licensee's or its
Permitted Sublicensee's exercise of its rights hereunder. Without limiting the
generality of the foregoing, (a) CORDIS represents and warrants that as of the
Effective Date is it shall own all right and title to or shall have the ability
to grant the licenses to the Palmaz/Schatz Patents and the Fischell Non-Stent
Patents; and (b) GUIDANT represents and warrants that as of the Effective Date
it shall own all right and title to the Lam/Lau Patents, the Dake-Bradshaw
Patents and the Yock Patents.
8.3 Each Party represents and warrants that this Agreement has been
duly and validly executed and delivered and constitutes a legal, valid, and
binding obligation enforceable in accordance with the terms hereof, except as
may be limited by bankruptcy, insolvency, or other similar laws of general
application affecting the enforcement of creditors' rights or by general
principles of equity limiting the availability of equitable remedies.
8.4 Each Party represents and warrants that neither the execution and
delivery of this Agreement nor consummation of the transactions herein
contemplated nor performance of or compliance with the terms and conditions
hereof will (i) violate any material law, (ii) conflict with or result in a
breach of or a default under the certificate of incorporation or bylaws of the
Party or any material agreement or instrument to which the Party is a Party or
by which it or any of its properties may be subject or bound, or (iii) result in
the creation or imposition of any lien upon any property of such Party.
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8.5 Each Party licensor specifically makes no representation or
warranty of any description or kind, either expressly or impliedly, by operation
of law or otherwise, with respect to the sufficiency, use or usefulness, or the
commercial viability of the technology licensed hereunder. Moreover, no
representation or warranty with respect to the ability of any Party to obtain
necessary or useful consents or approvals of any government regulatory body or
agency with an interest in, or with control over, the use or applications of
technology licensed hereunder is offered or made by any Party to this Agreement
to, or through, any other Party.
8.6 DISCLAIMER OF WARRANTY - EXCEPT FOR THE WARRANTIES EXPRESSLY
PROVIDED IN THIS AGREEMENT, EACH PARTY LICENSOR DISCLAIMS ALL WARRANTIES,
EXPRESSED OR IMPLIED, WITH REGARD TO THE TECHNOLOGY LICENSED HEREUNDER,
INCLUDING BUT NOT LIMITED TO ANY REPRESENTATION OR WARRANTY THAT ANY PATENT
LICENSED HEREUNDER IS VALID OR ENFORCEABLE, THAT THE TECHNOLOGY LICENSED
HEREUNDER DOES NOT INFRINGE ANY PATENTS, COPYRIGHTS, OR INTELLECTUAL OR OTHER
INDUSTRIAL PROPERTY RIGHTS OF A THIRD PARTY, AND THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE IX
INDEMNIFICATIONS
9.1 CORDIS and GUIDANT each hereby indemnifies and agrees to defend
and hold the other, its permitted successors, Affiliates, and permitted assigns
harmless from and against all claims, liabilities, damages, losses and expenses
(collectively, "Losses") arising out of or in connection with (a) any breach by
the Indemnifying Party or its
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Affiliates of any representation or warranty set forth in this Agreement and (b)
any breach by the Indemnifying Party or its Affiliates of any agreement,
covenant or obligation set forth in this Agreement.
9.2. Payments by the Indemnifying Party pursuant to paragraph 9.1 shall
be limited to the amount of any Losses that remain after deducting therefrom (i)
any tax benefit (net of any related tax detriments) actually realized by the
Indemnified Party and (ii) any indemnity, contribution or similar payment
actually recovered by the Indemnified Party from any third party with respect
thereto (other than proceeds of insurance maintained by or for the benefit of
the Indemnified Party). The Indemnified Party shall use all reasonable efforts
to seek and recover any tax benefits and any indemnity, contribution or similar
payments available to the Indemnified Party with respect to any Losses for which
the Indemnified Party seeks indemnification pursuant to paragraph 9.1.
9.3 A person to whom indemnification is provided hereunder is referred
to herein as the "Indemnified Party" and the party providing indemnification is
referred to as the "Indemnifying Party."
9.4 If an Indemnified Party intends to seek indemnification pursuant
to this Article IX, such Indemnified Party shall promptly notify the
Indemnifying Party in writing of such claim. The Indemnified Party will provide
the Indemnifying Party with prompt written notice of any third party claim in
respect of which indemnification is sought. The failure to provide either such
notice will not affect any rights hereunder except to the extent the
Indemnifying Party is materially prejudiced thereby. Any such notice shall set
forth in reasonable detail the available facts, circumstances and basis of the
claim.
9.5 If such claim involves a claim by a third party against the
Indemnified Party, the Indemnifying Party may, after acknowledging in writing
liability hereunder, assume, through counsel of its own choosing (so long as
reasonably acceptable to the
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Indemnified Party) and at its own expense, the defense thereof, and the
Indemnified Party shall cooperate with it in connection therewith (including by
furnishing such information as the Indemnifying Party may reasonably request),
provided, that the Indemnified Party may participate in such defense through
counsel chosen by it, at its own expense. So long as the Indemnifying Party is
contesting any such claim in good faith, the Indemnified Party shall not pay or
settle, or admit any liability with respect to, any such claim which it
continues to seek indemnification for without the Indemnifying Party's consent.
The Indemnifying Party will not without the Indemnified Party's prior written
consent settle or compromise any claim or consent to entry of any judgment which
does not include as an unconditional term thereof the giving by the claimant or
the plaintiff to the Indemnified Party of a release from all liability in
respect of such claim. The Indemnifying Party shall not, without the prior
written consent of the Indemnified Party (which consent shall not be
unreasonably withheld), take any measure or step in connection with any
settlement or compromise that imposes a material burden or encumbrance upon the
operation or conduct of the Indemnified Party's business. If the Indemnifying
Party is not contesting such claim in good faith, then the Indemnified Party
may, upon at least ten (10) days' notice to the Indemnifying Party (unless the
Indemnifying Party shall assume such settlement or defense within such ten (10)
day period), conduct and control, through counsel of its own choosing and at the
expense of the Indemnifying Party, the settlement or defense thereof, and the
Indemnifying Party shall cooperate with it in connection therewith. The failure
of the Indemnified Party to participate in, conduct or control such defense
shall not relieve the Indemnifying Party of any obligation it may have
hereunder.
9.6 Exclusivity. The provisions of this Article IX shall be the
exclusive remedy for the breaches and other matters covered thereby.
9.7 Survival. The obligations under this Article IX shall survive the
termination or expiration of this Agreement.
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9.8 For the avoidance of doubt, references in this Article IX to
GUIDANT or CORDIS or a Party shall include the Affiliates of GUIDANT, CORDIS or
the Party, as the case may be.
ARTICLE X
TERM AND TERMINATION; EVENTS OF DEFAULT
10.1 This Agreement shall continue in full force and effect for the
life of the last expiring patent referenced in Article II of this Agreement
unless either GUIDANT or CORDIS, as the case may be, delivers to the other
notice of its intent to terminate in accordance with the terms set forth in this
Agreement. Expiration or termination shall not relieve the Parties of any
obligation occurring prior to such expiration or termination. The licenses
granted under this Agreement shall continue in full force and effect in
accordance with their respective terms notwithstanding any breach by the
licensee, or any expiration or termination, of this Agreement.
10.2 After careful consideration of the complex and interdependent
nature of the business arrangements between them, the Parties recognize that
issues may arise during the course of this Agreement that may result in disputes
between them. The Parties further recognize that each is significantly dependent
upon the continued performance by the other of all obligations under this
Agreement. Accordingly, the Parties desire to create a procedure by which
disputes, even those involving material or significant issues, will be resolved
without disruption of the performance of those obligations both during and after
the process of addressing or resolving such disputes.
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10.3 Except for disputes to be resolved in accordance with the terms of
the Arbitration Agreement, any controversy or claim arising out of or relating
to this Agreement shall be submitted to binding arbitration in accordance with
the following procedures, except as the parties shall otherwise agree. The
controversy or claim shall be settled by arbitration in Chicago, Illinois in
accordance with the rules then pertaining of the CPR Institute for Disputes
Resolution, or successor ("CPR"), except where those rules conflict with these
provisions, in which case these control. Any arbitration shall be subject to the
following:
(a) Any award pursuant to such arbitration shall be
accompanied by the written opinion of a majority of the arbitrators giving their
reasons therefor and rendered within thirty (30) days of the date of closing of
the arbitration hearing.
(b) The panel shall consist of three arbitrators chosen from
the CPR Panels of Distinguished Neutrals (or, by agreement, from another
provider of arbitrators) each of whom is a lawyer with at least fifteen (15)
years experience with a law firm or corporate law department of over twenty-five
(25) lawyers or was a judge of a court of general jurisdiction. In the event the
aggregate damages sought by the claimant are stated to be less than $5 million,
and the aggregate damages sought by the counterclaimant are stated to be less
than $5 million, and neither side seeks equitable relief, then a single
arbitrator shall be chosen, having the same qualifications and experience
specified above. Each arbitrator shall be neutral, independent, disinterested,
and impartial and shall abide by The Code of Ethics for Arbitrators in
Commercial Disputes approved by the American
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Arbitration Association. There shall be no ex parte communications with an
arbitrator either before or during the arbitration, relating to the dispute or
the issues involved in the dispute or the arbitrator's views on any such issues.
(c) The parties agree to cooperate to attempt to select the
arbitrator(s) by agreement within twenty (20) days of initiation of the
arbitration, including jointly interviewing the final candidates.
(d) In the event the parties cannot agree upon selection of
the arbitrator(s), the CPR will select arbitrator(s) as follows: CPR shall
provide the parties with a list of no less than twenty-five (25) proposed
arbitrators (fifteen (15) if a single arbitrator is to be selected) having the
credentials referenced above. Within twenty-five (25) days of receiving such
lists, the parties shall rank at least 65% of the proposed arbitrators on the
initial CPR list, after exercising cause challenges. The parties may then
interview the five candidates (three if a single arbitrator is to be selected)
with the highest combined rankings for no more than one hour each and, following
the interviews, may exercise one peremptory challenge each. The panel will
consist of the remaining three candidates (or one, if one arbitrator is to be
selected) with the highest combined rankings. In the event these procedures fail
to result in selection of the required number of arbitrators, CPR shall select
the appropriate number of arbitrators from among the members of the various CPR
Panels of Distinguished Neutrals, allowing each side challenges for cause and
three peremptory challenges each.
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(e) The award rendered by the arbitrators shall, solely with
respect to the particular dispute, difference or alleged breach of this
Agreement which was submitted to arbitration, be conclusive and binding upon the
parties hereto and judgment on the award may be entered in any court of proper
jurisdiction; provided, however, that nothing herein shall give the arbitrators
any authority to amend, alter or delete any term, condition or provision of this
Agreement. The law applicable to the enforcement of any award shall be Title 9
of the United States Code, the Federal Arbitration Act.
(f) Each party shall pay its own attorney fees, costs and
expenses of arbitration and the fees, costs and expenses of the arbitrators
shall be equally shared; except that if any matter or dispute raised by a party
or any defense or objection thereto was unreasonable, the arbitrators may
assess, as part of the award, all or any part of the arbitration expenses
(including reasonable attorneys' fees) of the other party or parties and of the
arbitrators against the party raising such unreasonable matter or dispute or
defense or objection thereto.
(g) The arbitrators shall fix the time and place in Chicago
for the arbitration hearing, which shall be held within forty-five (45) days
after appointment of the arbitrators. Notice of such hearing shall be given by
the arbitrators to the parties at least twenty (20) days in advance, unless the
parties by mutual agreement waive such notice.
(h) The parties shall submit all documents and proof upon
which they intend to rely within thirty (30) days after the appointment of the
arbitrators. All parties
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shall be afforded a reasonable opportunity to examine such documents and proof
prior to any hearing.
(i) The panel will establish what procedures and format will
be followed at the hearing. Live testimony will be permitted. Direct examination
will be followed by cross-examination. A court reporter will record the
proceedings. The arbitration hearing shall take place on consecutive business
days until complete. Each party shall be given a limited and equal amount of
time to present its case. Unless the parties otherwise agree, no hearing shall
exceed ten (10) trial days. The arbitration hearing shall be conducted in
accordance with the Federal Rules of Evidence, except as modified herein or by
agreement of the parties.
(j) Any party may be represented by counsel. A party intending
to be so represented shall be notify the other party or parties and the
arbitrators of the name and address of counsel at least three days prior to the
date set for the hearing at which counsel is first to appear. When an
arbitration is initiated by counsel, or where any attorney replies for another
party, such notice is deemed to have been given by such party.
(k) The parties may modify any period of time by mutual
agreement. The arbitrators for good cause may extend any period of time
established by this Agreement, except the time for making the award. The panel
shall notify the parties of any such extension of time and its reason therefor.
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(l) The scope of discovery allowed with respect to arbitration
proceeding shall be the same as that allowed under the Federal Rules of Civil
Procedure except as provided herein. The arbitrators shall provide for discovery
according to the time limits set out in paragraph (g), giving recognition to the
understanding of the parties that they contemplate reasonable discovery,
including document demands and depositions, but that such discovery will be
limited so that the paragraph (g) schedule may be met without difficulty. No
more than twenty (20) requests for documents may be served. Interrogatories or
Requests for Admissions will not be permitted. Notwithstanding the above, it is
the intent of the parties that document discovery will be limited to only those
documents reasonably necessary to the adjudication of the arbitrable issues.
This provision is intended to replace Rule 4 "Early Disclosure of Information"
of the CPR Rules, which will have no force and effect. Depositions or parties
and non-parties will be limited to a total of forty (40) hours per party per
case. Both parties will be permitted to use any discovery obtained in court or
other proceedings. The Chairperson of the arbitration panel will resolve any
discovery disputes between the parties.
10.4 If a Party believes another Party has not complied in any material
respect with this Agreement, it shall give the other Party written notice,
specifying the acts or omissions constituting such non-compliance. A Party's
non-compliance with any provision of this Agreement shall not be considered to
be a breach of this Agreement provided the non-complying Party promptly
commences and diligently pursues in good faith a cure and such non-compliance is
cured within sixty (60) days of receipt of such notice.
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10.5 The Parties further agree that they will continue to perform all
obligations hereunder during the pendency of any dispute, arbitration
proceeding, or enforcement proceeding regardless of the nature of the matter
which is the subject of the dispute or arbitration. The parties further agree
that there is no adequate remedy at law for a party's failure to comply with
this provision, and that 1) injunctive relief and 2) relief in the nature of
specific performance is necessary and appropriate to remedy any such breach.
ARTICLE XI
REGULATORY APPROVALS
11.1 It is expressly understood that all Parties are responsible for
obtaining their own regulatory approvals for sale of products that practice
patents licensed under this Agreement. The licensor shall not be obligated to
assist the licensee in connection therewith.
ARTICLE XII
RELEASES
12.1 Apart from the obligations created by, referenced, acknowledged or
rising out of this Agreement and the other agreements being entered into
pursuant to or in connection with this Agreement, CORDIS, on the one hand, and
GUIDANT, on the other hand, do hereby for themselves and their respective legal
successors and assigns, release
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and forever discharge each other and their respective shareholders, officers,
directors, employees, agents, attorneys, customers, distributors, officials,
legal successors and assigns of and from any and all claims, demands, damages,
debts, liabilities, accounts, reckonings, obligations, costs, expenses, liens,
actions and causes of action of any kind and nature whatsoever, whether now
known or unknown, suspected or unsuspected which either now has, owns or holds
or at any time heretofore had ever owned or held based on or arising from the
Patents, all of which are referred to hereinafter as the "Released Matters". For
the avoidance of doubt, the terms "CORDIS" and "GUIDANT," as used in this
paragraph 12.1, shall include the Affiliates of such Party, and the Released
Matters shall include any alleged liability by CORDIS under the Agreement dated
December 1, 1992 between ACS and Johnson & Johnson Interventional Systems, a
division of Ethicon, INC.
12.2 It is the intention of the Parties hereto in executing this
Agreement and in paying and receiving the consideration called for by this
Agreement that this Agreement shall comprise a full and final accord and mutual
release of all the Released Matters. Each of the Parties acknowledges that it is
aware that it or its attorneys or accountants may hereafter discover claims or
facts in addition to or different from those which it now knows or believes to
exist with respect to the Released Matters, but that it is its intention hereby
to fully and finally and forever settle and release all Released Matters,
whether known or unknown. The releases given herein shall remain as full and
complete releases notwithstanding the discovery or existence of any such
additional or different claim or fact, unless it is later discovered that one
party has intentionally withheld properly
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discoverable facts from another party, which facts would have had a material
bearing on any such Released Matter.
12.3 Each of GUIDANT and CORDIS by and on behalf of its predecessors,
successors, parents, subsidiaries, heirs, executors, administrators, assigns,
stockholders, officers, directors, attorneys, agents, employees and
representatives, hereby waives with respect to the release of Paragraph 12.1
above the benefits of Section 1542 of the Civil Code of California to the extent
that such benefits may contravene a provision hereof. Such section reads as
follows:
"1542. General Release Extent.
A General Release does not extend to claims which the creditor
does not know or suspect to exist in his favor at the time of
executing the Release, which if known by him must have
materially affected his settlement with the debtor."
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ARTICLE XIII
MUTUAL COVENANTS NOT TO SUE
13.1 The Parties hereby for themselves and their respective legal
successors and assigns, hereby covenant not to sue each other and their
respective shareholders, officers, directors, employees, agents, attorneys,
customers, distributors, officials, legal successors and assigns of and from any
and all claims, demands, damages, debts, liabilities, accounts, reckonings,
obligations, costs, expenses, liens, actions and causes of action of any kind
and nature whatsoever, whether now known or unknown, suspected or unsuspected
which either now has, owns or holds or at any time heretofore had ever owned or
held based on or arising from an allegation of infringement of the other Party's
patents through the manufacture, use or sale of the allegedly infringing Party's
Current Products, but excluding Other Vascular Products. For the avoidance of
doubt, the term "Parties," as used in this Article XIII, shall include the
Affiliates of the Parties.
13.2 The Parties agree that the resolution between the Parties of any
allegedly infringing acts referred to in Paragraph 13.1 shall be subject to the
arbitration provisions of Paragraph 10.3 herein, as well as the terms of the
Arbitration Agreement.
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ARTICLE XIV
MISCELLANEOUS
14.1 Force Majeure. If performance of any part of this Agreement by any
party, or of any obligation under this Agreement, is prevented, restricted,
interfered with or delayed by reason of any cause beyond the control of the
party liable to perform, including, riots, war, acts of God, invasion, fire,
explosions, floods, acts of government or governmental agencies and
instrumentalities, the party so affected shall, upon giving immediate written
notice to the other party, be excused from such performance to the extent of
such prevention, restriction, interference or delay. Upon cessation of any such
event preventing performance by the party, that party shall promptly resume
performance hereunder. Each party shall promptly advise the other of any force
majeure of which it has knowledge.
14.2 Governing Law. This Agreement shall be interpreted, governed
and construed in accordance with the laws of the State of New York, without
regard to its choice of law rules.
14.3 Severability. The provisions of this Agreement are intended to be
severable. If any provision of this Agreement shall be held invalid or
unenforceable in whole or in part in any jurisdiction, such provision shall, as
to such jurisdiction, be
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ineffective to the extent of such invalidity or enforceability without in any
manner affecting the validity or enforceability thereof in any other
jurisdiction or the remaining provisions hereof in any jurisdiction. In that
event, the terms and conditions of this Agreement have been materially affected,
the Parties will renegotiate the terms and conditions of this Agreement to
resolve any inequities.
14.4 Entire Agreement. This Agreement, together with all other
agreements referred to herein shall constitute the entire agreement between the
Parties relating to the subject matter hereof and shall supersede all previous
negotiations, commitments and writings relating thereto (other than the
Confidentiality Agreements dated May 12, 1999 and July 8, 1998 between GUIDANT
and Johnson & Johnson). This Agreement shall not be modified or altered by in
any manner except by an instrument in writing executed by the Parties. All
Exhibits and Schedules attached to this Agreement shall be deemed to be a part
of this Agreement as if set forth fully in this Agreement.
14.5 Waiver. Any waiver must be in writing. A waiver of any breach of,
or failure to enforce, any of the terms or conditions of this Agreement shall
not in any way affect, limit or waive a Party's rights at any time to enforce
strict compliance thereafter with every other term or condition of this
Agreement.
14.6 Relationship of the Parties. Nothing in this Agreement shall
create or constitute a partnership or joint venture between the Parties hereto,
and other than as expressly provided in this Agreement, no Party shall enter
into or have authority to enter
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into any engagement or make any representation or warranty on behalf of or
pledge the credit of or otherwise bind or oblige the other Party hereto.
14.7 No Admission. Neither the entering into this Agreement, nor any
provision hereof, shall be deemed as an admission by any Party of any
wrongdoing, or of the validity or invalidity of any position taken or proposed
to be taken by or against the Party in any past, present, or future litigation.
14.8 Consultation with Counsel and Reliance. Each of the Parties
acknowledges that it has consulted with, or has had the opportunity to consult
with, counsel of its choice, and that in executing this Agreement it has not
relied upon any statements, representations or agreements of any other person
other than those contained herein.
14.9 Compliance with Law. No Party will perform or omit to perform any
act in connection with this Agreement, including the sale and marketing of
Licensed Products, which would be in violation of (a) any applicable laws of the
United States of America, including any regulations of the Department of
Commerce relating to the export from the United States of products or
technology, or the United States Foreign Corrupt Practices Act; or (b) any
applicable laws or regulations of any other relevant jurisdiction.
14.10 Captions. Captions are inserted herein only as a matter of
convenience and for reference, and in no way define, limit, or describe the
scope of this Agreement or the intent of any provision herein.
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<PAGE> 44
14.11 Counterparts. This Agreement may be executed in counterparts,
each of which shall be deemed an original, but both of which shall constitute
one and the same instrument.
14.12 No Strict Construction. This Agreement has been prepared with the
participation of both parties, and shall not be strictly construed against
either party.
ARTICLE XV
NOTICES
Any notice, report or written statement to a party permitted or
required under this Agreement shall be in writing and shall be sent by facsimile
or by first class mail or by Federal Express or other recognized overnight
delivery service, or hand delivered at the respective addresses set forth below,
or to such other addresses as the respective parties may from time to time
designate:
GUIDANT CORPORATION
111 Monument Circle, 29th Floor
Indianapolis, Indiana 46204
Attention: General Counsel
Fax: (317) 971-2141
ADVANCED CARDIOVASCULAR SYSTEMS, INC.
3200 Lakeside Drive
Santa Clara, California 95052-8167
Attention: General Counsel
Fax: (408) 845-3987
CORDIS CORPORATION
14201 NW 60th Ave.
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Miami Lakes, Florida 33014
Attention: President
Fax: (305) 824-2630
With a copy to:
JOHNSON & JOHNSON
One Johnson & Johnson Plaza
New Brunswick, New Jersey 08933
Attention: Office of General Counsel
Fax: (732) 524-2788
Notice shall be deemed to have been given at the expiration of one (1)
business day from the date of notice given by facsimile or five (5) business
days from the date the notice is deposited with the postal service or two (2)
business days from the date the notice is sent by recognized overnight delivery
service unless actual receipt of the notice at an earlier date is established.
Hand-delivered notices shall be effective upon delivery. If any notice is given
by facsimile, a confirmation copy shall also be sent on the same date by
recognized delivery service.
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IN WITNESS WHEREOF, the Parties, through their authorized officers,
have executed this Agreement as of the date first above written.
CORDIS CORPORATION
By: /s/ Robert W. Croce
-------------------------------
Name: Robert W. Croce
------------------------------
Title: Chairman
-----------------------------
ADVANCED CARDIOVASCULAR
SYSTEMS, INC.
By: /s/ John M. Capek
-------------------------------
Name: John M. Capek
------------------------------
Title: President
-----------------------------
GUIDANT CORPORATION
By: /s/ A. Jay Graf
-------------------------------
Name: A. Jay Graf
------------------------------
Title: Group Chairman
-----------------------------
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SCHEDULE "1A"
PALMAZ/SCHATZ PATENTS
4,733,665
B1 4,733,665
4,776,337
Serial No. 90/004,916
Serial No. 90/004,786
4,739,762
B1 4,739,762
5,102,417
5,195,984
5,902,332
47
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SCHEDULE "1B"
LAM/LAU PATENTS
5,421,955
B1 5,421,955
5,514,154
5,603,721
5,728,158
5,569,295
5,649,952
48
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SCHEDULE "1C"
LAZARUS PATENTS
4,787,899
5,104,399
5,275,622
5,669,936
5,397,345
5,662,700
5,759,203
SN 09/082,592
49
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SCHEDULE "1D"
HILLSTEAD PATENTS
5,116,318
5,366,472
5,476,476
50
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SCHEDULE "1E"
PINCHUK PATENTS
5,156,612
5,304,197
5,449,371
4,906,244
5,108,415
5,738,653
5,236,659
5,356,591
EP0436501
EP0362826
51
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SCHEDULE "1F"
DAKE/BRADSHAW PATENTS
5,199,939
B1 5,199,939
5,643,171
52
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SCHEDULE 1G
RADIATION NON-STENT PATENTS
EP 059136 (SN 93203354.1)
5,669,932
5,797,948
SN 08/790447
53
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SCHEDULE "1K"
YOCK PATENTS
5,040,548
5,061,273
5,300,085
5,350,395
5,451,233
5,501,227
5,685,312
5,749,888
6,036,715
54
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SCHEDULE "5.3"
Form of Press Release
PRESS RELEASE
DATE: April 4, 2000
CONTACTS: Renaldo Juanso, Media Relations, 408-845-3185
Todd McKinney, Investor Relations, 317-971-2094
GUIDANT AND JOHNSON & JOHNSON ANNOUNCE COMPREHENSIVE TECHNOLOGY AGREEMENT;
GUIDANT ACQUIRES EXCLUSIVE OPTION TO IMPULSE DYNAMICS HEART FAILURE TECHNOLOGY
INDIANAPOLIS, IN--APRIL 4, 2000--Guidant Corporation (NYSE and PCX: GDT), a
world leader in the treatment of cardiovascular disease, and Cordis Corporation,
a wholly owned subsidiary of Johnson & Johnson (NYSE: JNJ), announced today that
they have entered into a broad agreement covering various technologies and
patents. As part of the arrangement, Guidant obtains an exclusive option from
Impulse Dynamics, N.V. to acquire emerging cardiovascular technology for the
treatment of heart failure. In addition, Guidant and Cordis have agreed to
dismiss all current patent litigation between them and agree to resolve the
remaining disputes in future arbitration proceedings. The agreement also
establishes Cordis as a U.S. customer of rapid-exchange balloon dilatation
catheters made by Guidant and provides both companies with access to certain
radiation patents.
Under the terms of the agreement with Impulse Dynamics, for an initial payment
of $125 million, Guidant will have the exclusive right to evaluate
cardiovascular technology currently under development by Impulse Dynamics.
Impulse Dynamics is a pioneer in the development of technology that may be used
in future implantable devices to provide additional benefit to patients with
heart failure. If Guidant chooses to acquire exclusive rights to this
technology, the total payment would be approximately $425 million, plus
contingent payments based on future sales of covered products. The total payment
could be financed by a combination of debt, equity, and equity-linked
securities.
"The therapy under development by Impulse Dynamics provides Guidant exclusive
access to innovative technology that has the potential to dramatically enhance
the efficacy of implantable devices now in clinical trials for the treatment of
heart failure," said Guidant Group Chairman A. Jay Graf. "This technology could
dramatically expand the number of patients who will ultimately be able to
receive treatment from these devices. Further, if successful, this technology
would provide Guidant with a unique approach to the treatment of heart failure
and redefine the standard for heart-failure therapy."
Heart failure is a debilitating condition that when in an advanced state, the
heart is unable to pump enough blood to the body to allow a person to enjoy a
normal, productive life. It affects well over 5 million people in the United
States and an estimated 6.5 million in Europe. Nearly 1 million new cases are
diagnosed annually, making it the most rapidly growing cardiovascular disorder.
According to statistics provided by the American Heart Association,
approximately $22.5 billion are spent annually on the direct and indirect costs
of treatment of heart failure in the U.S.(1)
The agreement between Guidant and Cordis also provides for the dismissal of the
pending patent disputes between the two companies. No monetary settlement has
been paid with the dismissal of the litigation. The companies have agreed to
resolve the remainder of their disputes in arbitration proceedings. Each company
will receive licenses to the other's patents involved in the disputes to ensure
future product availability. In addition, Guidant and Cordis have agreed that
future disputes related to stent patents will also be resolved in a similar
manner. This arbitration process will likely follow litigation involving Cordis
and other coronary stent manufacturers.
Under other terms of the agreement, Cordis will become a non-exclusive
distributor in the U.S. of rapid exchange dilatation catheters made by Guidant.
The products covered by this distribution agreement will have balloon material
unique to Cordis and must receive FDA approval prior to being marketed in the
U.S.
"We are pleased to have Cordis as a customer for Guidant's proprietary rapid
exchange catheters in the U.S.," said Guidant Group Chairman Ginger L. Graham.
"This arrangement has the potential to significantly expand physicians'
acceptance of rapid exchange technology, which Guidant pioneered nearly a decade
ago. We are committed to providing rapid exchange alternatives for physicians,
and believe that this agreement with Cordis will enhance this effort, while
including Guidant technology in the therapy choice."
"This landmark agreement with Cordis saves litigation costs and removes
uncertainty around certain intellectual property for both companies," said
Ronald W. Dollens, Guidant's President and CEO. Dollens concluded, "We believe
this agreement will provide a tremendous opportunity for Guidant to command a
unique technological position in the treatment of heart failure, a medical
problem of vast importance and consequence to patients, our physician customers
and healthcare systems around the world."
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A global leader in the medical device industry, Guidant provides innovative,
minimally invasive and cost-effective products and services for the treatment of
cardiovascular and vascular disease. For more information about Guidant's
products and services, visit the company's Web site at http://www.guidant.com.
This release contains forward-looking statements about the company's prospects.
This information is based upon management's current expectations and beliefs.
However, actual results may differ materially from those discussed in the
forward-looking statements. Other factors affecting future results include those
outlined in Exhibit 99.1 to the company's Form 10-K for the fiscal year ended
December 31, 1999, filed on March 20, 2000.
(1) Source - American Heart Association
# # #
CORDIS ENTERS STRATEGIC AGREEMENTS WITH GUIDANT CORP. FOR CARDIOVASCULAR DEVICES
AND THERAPIES
NEW BRUNSWICK, N.J., April 4 /PRNewswire/ -- Cordis Corporation, a wholly owned
unit of Johnson & Johnson (NYSE: JNJ), today reported it has entered into an
agreement with Guidant Corporation (NYSE: GDT) (PCX: GDT) that will enable
Cordis to market and sell rapid exchange catheters and stent delivery systems to
its U.S. customers.
Each company also will grant the other access to certain patents in the field of
intravascular brachytherapy, a promising new treatment using radiation to help
prevent and treat restenosis (reblockage of coronary arteries) in patients
undergoing angioplasty or stent procedures. In addition, the companies will
dismiss all current patent litigation between them and will resolve these
disputes in future arbitration proceedings.
Under a separate agreement between Impulse Dynamics N.V. and Guidant, Guidant
will receive the right to acquire cardiovascular rights, exclusive in the
implantable medical devices field, to technology under development by Impulse.
Cordis will receive a sole license to certain external cardiovascular
applications of the technology. Guidant will also have equal rights to external
cardiovascular applications of the technology. Impulse is a privately held
company founded by Shlomo Ben-Haim, MD, and Lewis C. Pell, and is engaged in the
research and development of innovative technologies in the field of electrical
signals affecting muscle control for treatment of heart disease as well as for
the treatment of other diseases. Impulse corporate headquarters are in the U.S.,
with research and development activities carried out in the U.S. and Israel.
Robert W. Croce, a Johnson & Johnson Company Group Chairman responsible for the
Cordis franchise worldwide, said: "We are pleased to enter into these agreements
which will significantly enhance our existing strong product portfolio and
development pipeline."
The agreements will enable Cordis to provide its U.S. customers with rapid
exchange catheters -- devices used by physicians in interventional cardiology
and radiology procedures, such as angioplasty and placement of stents -- and
incorporate Cordis' proprietary angioplasty balloon and stent technologies.
"These agreements will allow Cordis to combine rapid exchange delivery with our
proprietary stent and balloon technology," stated Jesse Penn, President of
Cordis Corporation. "We will be able to participate in the large and growing
rapid exchange portion of the U.S. market, and to provide our customers with our
state-of-the-art technology on their choice of delivery platforms. The radiation
intellectual property and other technology included in the agreement will help
to position Cordis for long-term leadership in interventional cardiology and
radiology."
In dismissing the patent litigation, the two companies agreed to resolve their
patent disputes through arbitration proceedings. Each company will receive
licenses to the other's stent patents to ensure future product availability. An
arbitration process will be in place to resolve previously negotiated remedies
under these licenses.
Cordis Corporation is a broad-based supplier of products for circulatory disease
management. Established in 1959, Cordis is the world's largest, most
comprehensive developer and manufacturer of innovative products for
interventional medicine, minimally invasive computer-based imaging, and
electrophysiology. In 1996, Cordis was acquired by Johnson & Johnson and
combined with Johnson & Johnson's cardiology business to form Cordis, a Johnson
& Johnson company, with approximately 3,500 employees worldwide. For more
information, contact Cordis via http://www.cordis.com . SOURCE Johnson & Johnson
CONTACT: David Swearingen of Cordis, 732-524-3538, or home, 732-389-9642, for
Johnson & Johnson, or Helen Short, Investor Relations, of Johnson & Johnson,
732-524-6491/
55-A
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SCHEDULE 7.1
Boston Scientific
Medtronic, Inc.
St. Jude
Terumo
Biotronik
Tyco
56
