exv10w69



 





Exhibit 10.69




CROSS-LICENSE AGREEMENT




     THIS AGREEMENT, entered into this 24th day of April, 2007, by and between Cardiac Science
Corporation, a Delaware corporation with a principal place of business at 3303 Monte Villa Parkway,
Bothell, Washington 98021; Koninklijke Philips Electronics N.V., a Netherlands corporation with a
principal place of business at Groenewoudseweg 1, 5621 BA Eindhoven, Netherlands; and Philips
Electronics North America Corporation, a Delaware corporation with a principal place of business at
1251 Avenue of the Americas, New York, New York, 10020 (collectively, the “Parties”).



RECITALS




     Whereas, the Parties are involved in a suit in the United States District Court, District of
Minnesota, filed on February 12, 2003, Civil Action No. 03-1064, (the “Lawsuit”) for patent
infringement relating to automated external defibrillators.



     Whereas, the Parties decided to resolve the Lawsuit on mutually acceptable terms as set forth
herein and in the Settlement Agreement executed concurrently herewith.



     In consideration of the mutual promises set forth below, the parties agree as follows:



ARTICLE 1




1.0 Definitions




     For the purposes of this Agreement, the terms defined in this Article shall have the meaning
specified, and shall be applicable both in the singular and plural forms.




	 	1.1	 	“Affiliates” as used in this Agreement means, with respect to each Party, any
and all corporations, limited liability companies, partnerships, corporations joint
ventures or other entities or any kind, directly or indirectly, controlled by,
controlling, or under the common control or a Party. Any such entity shall be




 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 






	 	 	 	deemed to be an Affiliate only as long as such control exists. For purposes of this
definition, an entity shall be deemed to “control” another entity when the controlling
entity (i) is directly or indirectly the legal or beneficial owner of more than 50% of
the outstanding voting securities of a corporate entity with the right to vote for the
election of the directors (or the equivalent thereof) or comparable voting interest in
the entity, joint venture or other non-corporate entity, or (ii) has possession,
directly or indirectly, of the power to direct (or cause the direction of) the
management and policies of the other entity or (iii) has control of the other entity
under applicable securities laws or regulations.
	 
	 	1.2	 	“Cardiac Science” shall mean Cardiac Science Corporation and its Affiliates.
	 
	 	1.3	 	“Cardiac Science Patents-in-Suit” shall mean those patents listed in Attachment
A, and any continuations, continuations-in-part, divisions, or substitutions of any
patent application thereof, and any reissues or reexaminations thereof, and any foreign
counterparts or equivalents.
	 
	 	1.4	 	“Effective Date” of the Agreement shall be the date set forth in the first
paragraph of this Agreement.
	 
	 	1.5	 	“Entity” shall mean any corporation, firm, partnership, proprietorship, or
other form of business organization.
	 
	 	1.6	 	“Licensed Product” shall mean an article within the field of automated external
defibrillators that is made, used, sold, offered for sale, or imported into a country
and is covered by a claim in any of the Cardiac Science Patents-in-Suit, Philips
Patents-in-Suit, Philips [**] Patents or Philips [**] Patent in force in that country
or an article within the field of automated external defibrillators whose method of




 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 






	 	 	 	manufacture or use is practiced in a country and whose method is covered by a claim
in any of the Cardiac Science Patents-in-Suit, Philips Patents-in-Suit, Philips [**]
Patents or Philips [**] Patent in force in that country.
	 
	 	1.7	 	“Party” shall mean Cardiac Science Corporation, Koninklijke Philips Electronics
N.V., and/or Philips Electronics North America Corp., where appropriate.
	 
	 	1.8	 	“Philips [**] Patents” shall mean [**] and [**], and any continuations,
continuations-in-part, divisions, or substitutions of any patent application thereof,
and any reissues or reexaminations thereof, and any foreign counterparts or
equivalents.
	 
	 	1.9	 	“Philips [**] Patent” shall mean [**], and any continuations,
continuations-in-part, divisions, or substitutions of any patent application thereof,
and any reissues or reexaminations thereof, and any foreign counterparts or
equivalents.
	 
	 	1.10	 	“Philips Electronics” shall mean Philips Electronics North America Corporation
and its Affiliates.
	 
	 	1.11	 	“Philips Patents-in-Suit” shall mean those patents listed in Exhibit B, and any
continuations, continuations-in-part, divisions, or substitutions of any patent
application thereof, and any reissues or reexaminations thereof, and any foreign
counterparts or equivalents.
	 
	 	1.12	 	“Philips” shall mean Royal Philips, Philips Electronics, and all Affiliates of
either or both.
	 
	 	1.13	 	“Royal Philips” shall mean Koninklijke Philips Electronics N.V. and its
Affiliates.





 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 





ARTICLE 2




2.0 Grants





	 	2.1	 	Cardiac Science Patents-in-Suit: Cardiac Science hereby grants to
Philips a non-exclusive, fully paid-up, world-wide, royalty-free license, without the
right to sublicense, under the Cardiac Science Patents-in-Suit to make, have made, use,
sell, offer for sale, and import Licensed Products. This license includes the right
for customers (ultimate or in privity or other) to use and/or sell such Licensed
Products so made.
	 
	 	2.2	 	Philips Patents-in-Suit: Philips hereby grants to Cardiac Science a
non-exclusive, fully paid-up, world-wide, royalty-free license, without the right to
sublicense, under the Philips Patents-in-Suit to make, have made, use, sell, offer for
sale, and import Licensed Products. This license includes the right for customers
(ultimate or in privity or other) to use and/or sell such Licensed Products so made.
	 
	 	2.3	 	Philips [**] Patents: Philips hereby grants to Cardiac Science a
non-exclusive, fully paid-up, world-wide, royalty-free license, without the right to
sublicense, under the Philips [**] Patents to make, have made, use, sell, offer for
sale, and import Licensed Products. This license includes the right for customers
(ultimate or in privity or other) to use and/or sell such Licensed Products so made.
	 
	 	2.4	 	Philips [**] Patent: Philips hereby grants to Cardiac Science a
non-exclusive, fully paid-up, world-wide, royalty-free license, without the right to
sublicense, under the Philips [**] Patent to make, have made, use, sell, offer for
sale, and
import Licensed Products. This license includes the right for customers (ultimate
or in privity or other) to use and/or sell such Licensed Products so made.




 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 






	 	2.5	 	As used in Article 2.1, “have made” means a license permitting Philips to use a
Third Party to make, in whole or in part, Licensed Products or a portion thereof, but
only for the account of, and for the use or resale by, Philips, but, with respect to
Third Parties, such license shall have effect only for the portion of the design of the
Licensed Product (or part thereof) that is provided or owned by Philips and not for any
portion of the design provided or owned by the Third Party at the time of manufacture.
	 
	 	2.6	 	As used in Articles 2.2, 2.3, and 2.4, “have made” means a license permitting
Cardiac Science to use a Third Party to make, in whole or in part, Licensed Products or
a portion thereof, but only for the account of, and for the use or resale by, Cardiac
Science, but, with respect to Third Parties, such license shall have effect only for
the portion of the design of the Licensed Product (or part thereof) that is provided or
owned by Cardiac Science and not for any portion of the design provided or owned by the
Third Party at the time of manufacture.
	 
	 	2.7	 	This Agreement does not grant a license, implied or otherwise, to any patent or
patent application not otherwise defined. Except as expressly provided in this
Article, no other license is granted by the Parties under any intellectual property
rights, including patents, know-how, copyrights, trade secrets, proprietary information
and trademarks.




 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 











ARTICLE 3




3.0 Royalty





	 	3.1	 	Paid-up Royalty. Cardiac Science shall pay Philips Electronics One
Million U.S. Dollars ($1,000,000) within 10 business days of the Effective Date of this
Agreement as consideration for the fully paid-up license for the Philips [**] Patent.





ARTICLE 4




4.0 Representations, Warranties, and Indemnifications





	 	4.1	 	No Conflicting Agreements. The Parties warrant that they and their
Affiliates have no agreements with any third party or commitments or obligations that
conflict in any way with their obligations under this Agreement. No Party shall enter
into any agreement, commitment or obligation during the term of this Agreement that is
in conflict with its obligations under this Agreement.
	 
	 	4.2	 	Cardiac Science Ownership: Cardiac Science warrants that it is the
owner of all rights, title, and interest in the Cardiac Science Patents-in-Suit.
	 
	 	4.3	 	Philips Ownership: Philips warrants that it is the owner of all rights,
title, and interest in the Philips Patents-in-Suit, Philips [**] Patents and Philips
[**] Patent.




 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 











ARTICLE 5




5.0 Confidentiality




     5.1 The Parties agree that the terms of this Agreement will be treated as confidential and
maintained in confidence by and between the Parties, their attorneys, tax advisors/and or public
accountants, and will not be disclosed to any other person or entity other than their Affiliates.
This obligation does not apply when and to the extent such information is disclosed under a
confidentiality agreement to a third party who is a potential or actual assignee of the License
Agreement or a potential or actual beneficiary of the Settlement Agreement, except (i) as may be
required by law or pursuant to a protective order entered or process issued by a court of law,
including SEC regulations, or administrative agency and (ii) that the terms of this Agreement may
be disclosed to outside legal counsel and independent outside auditors provided that such outside
legal counsel and independent outside auditors agree to maintain the contents of this Agreement in
confidence.



     5.2. Notwithstanding any other provision of Article 8, the Parties may disclose to third
parties the existence of this Agreement. The fact that the parties have resolved this dispute by
agreement and entered into a cross-license shall not be confidential. The Parties will agree on an
acceptable initial statement for public release to be made upon dismissal of the Minnesota Action.



 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 





     5.3. In the event either party is compelled by any court or administrative, judicial or
quasi-judicial agency, or requested by any third party, to disclose the Agreement, the party or
party receiving the request or demand agrees to notify the other party of such disclosure as
required by law, including SEC regulations, or in accordance with the order or notice compelling
the disclosure. If not otherwise required by law or such order or notice, the party agrees to
notify the other party at least ten (10) days prior to the date set for disclosure, or within a
reasonable time prior to the disclosure if the request or demand is received less than fourteen
(14) days prior to the disclosure date.



ARTICLE 6




6.0 Unlicensed Competition and Litigation





	 	6.1	 	The Parties shall have the sole right to take, or not to take, any measures
deemed appropriate, including the bringing or defending of actions, to prevent
infringement of the Cardiac Science Patents-in-Suit, Philips Patents-in-Suit, Philips
[**] Patents, and Philips [**] Patent. The Parties undertake no obligation or duty to
enforce or settle or license any of the Cardiac Science Patents-in-Suit, Philips
Patents-in-Suit, Philips [**] Patents, and Philips [**] Patent on any terms with any
third party.





ARTICLE 7




7.0 Term and Termination





	 	7.1	 	This Agreement shall terminate of its own accord upon expiration of the last to
expire or be held finally invalid or unenforceable of all of the Cardiac Science
Patents-in-Suit, Philips Patents-in-Suit, Philips [**] Patents, and Philips [**]
Patent.




 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 











ARTICLE 8




8.0 Miscellaneous





	 	8.1	 	Personal Jurisdiction and Applicable Law. Any questions, claims,
disputes, remedies, or procedural matters regarding this Agreement shall be governed by
the laws of the State of Washington and of the United States, without regard to the
State of Washington’s principles of conflicts of law. The Parties agree that the State
of Washington has a substantial relationship to this transaction and each Party agrees
that the courts of Washington may properly exercise personal jurisdiction over them in
the courts thereof. The Parties agree that except as stated in this paragraph, any and
all dispute resolution, including without limitation litigation relating to this
Agreement, shall be brought in the State of Washington in the state or federal court
having subject matter jurisdiction.
	 
	 	8.2	 	Severability. The provisions of this Agreement shall be deemed
separable. Therefore, if any part or provision of this Agreement is rendered void,
invalid or unenforceable in any jurisdiction in which this Agreement is performed, then
such part or provision shall be severed from the remainder of the Agreement only as to
such jurisdiction. Such severance shall not affect the validity or enforceability of
the remainder of this Agreement.
	 
	 	8.3	 	Notices. Any and all communications required by this Agreement shall be
in writing and sent by first class mail, postage prepaid, and addressed to the last
known address of the Party to be served therewith. Notices sent by Registered or
Certified Mail, Return Receipt Requested, shall be presumed to have been




 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 






	 	received.	 	Any notice to be given to the Parties shall be addressed to the addresses
as set forth below:




Cardiac Science Corporation



Attn: CEO

Cardiac Science, Corp.

3303 Monte Villa Parkway

Bothell, WA 98021-8969



Koninklijke Philips Electronics N.V.



c/o Philips Intellectual Property & Standards

Building WEP-3

P.O. Box 220

5600 AE Eindhoven



F.a.o.: IP Licensing Executive



Philips Electronics North America Corporation

1251 Avenue of the Americas

New York, New York, 10020

F.a.o. General Counsel





	 	 	 	Any change of address of a Party shall be promptly communicated in writing to the
other Party.
	 
	 	8.4	 	Integration, Amendment and Assignment. This Agreement and the
Settlement Agreement set forth the entire agreement among the Parties relating to the
subject matter contained herein. Neither this Agreement nor any right or obligation
hereunder shall be modified, amended, assigned or discharged except as expressly stated
in this Agreement or by a written agreement signed by the Parties hereto.
	 
	 	8.5	 	Succession. This Agreement and the Settlement Agreement, and the
rights and obligations granted and undertaken under both agreements, shall be binding
upon




 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 






	 	 	 	and inure to the benefit of the Parties hereto, their successors, trustee(s) or
receiver(s) in bankruptcy and permitted assigns. A Party shall not assign or
transfer any rights under this agreement without prior written consent of the other
Parties, except that it may assign or transfer its rights and obligations without
prior written consent with a transfer of substantially all of its defibrillation
business.
	 
	 	8.6	 	Headings. The headings in this Agreement are inserted for convenience
only and shall not constitute a part hereof.
	 
	 	8.7	 	Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed to constitute an original, but all of which
together shall constitute one and the same instrument.
	 
	 	8.8	 	Construction. This Agreement was negotiated between the Parties, each
of whom had the opportunity to consult with legal counsel during the negotiation,
drafting, and execution of this Agreement, and the Parties agree that this Agreement
shall not be construed against any Party as the drafter.
	 
	 	8.9	 	No External Representations or Warranties. No Party has relied on any
representation of warranty of any kind in entering into this agreement, except for
those representations and warranties expressly set forth herein.




 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 










IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed by their
duly authorized representatives in duplicate as of the date and year first above written.




	 	 	 	 	 	 	 
	CARDIAC SCIENCE CORPORATION	 	 
	 
	 	 	 	 	 	 
	Date: April 24, 2007

	 	By
	 	/s/ John Hinson
 

     John Hinson
	 	 
	 

	 	 	 	     President & Chief Executive Officer	 	 
	 
	 	 	 	 	 	 
	KONINKLIJKE PHILIPS ELECTRONICS N.V.	 	 
	 
	 	 	 	 	 	 
	Date: April 24, 2007

	 	By
	 	/s/ [illegible]	 	 
	 

	 	 	 	 	 	 
	 

	 	 	 	     [Insert Name]	 	 
	 
	 	 	 	 	 	 
	 

	 	Its
	 	FVP Philips International B. V.	 	 
	 

	 	 	 	 	 	 
	 
	 	 	 	 	 	 
	PHILIPS ELECTRONICS NORTH AMERICA CORPORATION	 	 
	 
	 	 	 	 	 	 
	Date: April 24, 2007

	 	By
	 	/s/ Michael Miller, Jr.	 	 
	 

	 	 	 	 	 	 
	 

	 	 	 	     Michael Miller, Jr.	 	 
	 	 	Its Senior Vice President	 	 






 

[**] Designates information that has been omitted and filed separately with the Securities and
Exchange Commission. Confidential treatment has been requested with respect to the omitted
portions.












 






ATTACHMENT A




Cardiac Science Patents



(This exhibit has been omitted and will be provided to the Securities and Exchange Commission
upon request).




 











 








ATTACHMENT B




Philips Patents



(This exhibit has been omitted and will be provided to the Securities and Exchange Commission
upon request).