exv10w8



 







Exhibit 10.8




EXHIBIT A




PATENT LICENSE AGREEMENT




     THIS
PATENT LICENSE AGREEMENT (“Agreement”) is entered into and effective
this
                    
day of
                    ,
1999, by and between Sutura, Inc., & Delaware
corporation having a place of business at 17080 Newhope Street, Fountain Valley, California 92708
(“LICENSOR.”) and Sterilis, Inc., a California corporation also having a place of business at
17080 Newhope Street, Fountain Valley, California 92708
(“LICENSEE”).



RECITALS




        A. LICENSOR is the owner of certain Licensed Patents (defined below) relating to suturing
devices,



        B. LICENSEE desires to obtain an exclusive, worldwide license to manufacture and sell Such
devices in LICENSEE’s Field of Use (as defined below), and
LICENSOR is willing to grant such a
license to LICENSEE.



        NOW,
THEREFORE, in consideration of the promises, mutual promises and
covenants contained herein,
the parties agree as follows:




			
	I.	 	DEFINITIONS





        For
purposes of this Agreement, the following terms shall have the meanings set forth below:



        A. “Licensed
Patents” shall mean the patents and patent applications listed in Exhibit A,
including all divisions, continuations and continuation-in-part
thereof, all patent applications
claiming priority therefrom, and all patents\ which may be granted thereon, all rights of
priority, and all reissues, re-examinations, and extensions thereof.



        B. “LICENSEE’s Field of Use” shall mean the obstetrical and/or gynecological field or
market.



        C. “Licensed
Products” shall mean [illegible] devices covered by one or more claims of the
Licensed Patents.




			
	II.	 	GRANT OF RIGHTS





        A. LICENSOR hereby grants to LICENSEE, and LICENSEE accepts an exclusive, worldwide License
under the licensed Patents to (a) make, have made, and import Licensed Products, and (b) use and
sell (or otherwise dispose of) Licenced Products solely within LICENSEE’s Field of Use.



        B. LICENSEE shall have the right to sublicense any of the rights provided to LICENSEE by the
terms of the Agreement.



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	III.	 	PAYMENT





        As monotary consideration for the license granted herein, LICENSEE shall pay to LICENSOR a
nonrefundable license fee of Two Hundred Fifty Thousand Dollars (3250,000) upon execution of this
Agreement.




			
	IV.	 	OWNERSHIP





        A. LICENSEE acknowledges that LICENSOR is the sole owner of the Licensed Patents, and
LICENSEE agrees that it does not obtain any interest in the licensed Patents except for the rights
granted herein.



        B. LICENSEE agrees not to take any action challenging or opposing, on any grounds
whatsoever, the ownership by LICENSOR of the Licensed Patents, or LICENSOR’s Intellectual property
rights therein. Furthermore, LICENSEE agrees not to contest the validity or enforceability, or
assist to request any third party to contest the validity or enforceability of any of the licensed
Patents, to the extent and in jurisdictions where permitted by law, in any judicial, governmental,
or quasi-governmental suit or proceeding; and not to request reexamination, or assist or request
any third party to request reexamination of any of the Licensed Patents, to the
extent and in jurisdictions where permitted by law.




			
	V.	 	TERM





        Unless
sooner canceled or terminated as provided herein, the license granted
herein shall terminate
on the expiration date of the last expiring of the Licensed Patents.




			
	VI.	 	TERMINATION





        A. If
any breach or default in respect of any of the terms of this Agreement by either of the
parties hereto shall occur, the other of said parties shall have the right to provide
written notice specifying in detail the nature of the breach or default and if said alleged breach
or default has, in fact, occurred and is not cured within sixty (60) days from the date of mailing
of the written notice [illegible] the other of said parties shall have the right to terminate this Agreement
upon giving an additional fifteen (15) days notice to the defaulting party of its intent to
terminate, and this Agreement shall terminate at the end of such
notice.



        B. For
purposes of this Agreement, an event of default shall occur If (1) LICENSEE or
LICENSOR fails to perform any of their respective obligations
hereunder, or (2) LICENSEE becomes
insolvent, or in financial difficulty, or the business of LICENSEE is placed in the hands of
a receiver or trustee, or an assignment is made for the benefit of creditors of LICENSEE, if
permitted by law.



        C. Certain provisions of this Agreement necessary to carry out the intent of the parties,
including, without limitation, Sections IV, VII, IX, XII, and XIII shall survive the termination or
expiration of this Agreement.



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	VII.	 	DUTIES UPON TERMINATION





        Upon any termination of this Agreement, LICENSEE shall: (1) Immediately cease manufacturing and
selling all Licensed Products; and (2) make no further use of any of LICENSOR’s rights conferred in
LICENSEE by this Agreement.




			
	VIII.	 	PATENT MARKING





        LICENSES
shall mark each Licensed Product that is made, used, sold or imported pursuant to the
provisions herein with a patent notice in compliance with the applicable salutary requirements.




			
	IX.	 	WARRANTIES





        LICENSOR makes no representation, guarantee or warranty that any patent claim that is being
licensed, or that be licensed, hereunder is valid. In addition nothing in this Agreement shall be
construed as a warranty or representation that anything made, used, sold or otherwise disposed of
under any license granted in this Agreement is or will be free from infringement of patents of
third parties.




			
	X.	 	ENFORCEMENT OF RIGHTS





        A. LICENSEE shall have the right, but not the obligation, to instigate any lawsuit, at its
own expense, to enforce the Licensed Patents in LICENSEE’s field of Use.



        B. LICENSOR shall have the right, but not the obligation, to instigate any lawsuit, at its
own expense, to enforce the Licensed Patents outside LICENSEE’s Field of Use.



        C. Each party agrees to cooperate with and assist the other party, at the other party’s
expense, in enforcing, protecting, and defending the Licensed Patents, to the extent reasonably
necessary, including but not limited to, being joined as a necessary or desirable party to any
legal proceedings.




			
	XI	 	PROSECUTION AND MAINTENANCE





        The entire patent process relating to procurement and maintenance of Licensed Patents, including
without limitation, prosecution of patents applications and maintenance, reexamination, reissue sad
extension of patents, shall be in the sole control and at the sole discretion of LICENSOR, and
LICENSOR shall have no obligation to take any action, such as but net limited to, responding to
patent Office Actions or paying maintenance fees or annuities, to keep the Licensed Patents pending
or in force.




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XII. INDEMNIFICATION




     LICENSEE hereby agrees to indemnify, defend, and hold LICENSOR harmless from and against any and
all china, liability, loss, costs, damage or expense (including attorney’ fees and costs) arising
from or in any matter connected with: (i) the infringement or alleged infringement of any third
party rights resulting from the manufacture or sale of Licensed Products; or (ii) the operation of
LICENSEE’s business as it relates to this Agreement.



XIII. GENERAL PROVISIONS




     A. The parties hereby agree that this Agreement merely constitutes a licensing agreement, and
that no agency, joint venture or partnership is created thereby, and that neither party
shall incur obligations in the name of the other party without said other party’s prior written
consent.



     B. This Agreement shall be governed and construed in accordance with the laws of the State
of California, and the parties agree that it is executed and delivered in that state. In the event
that any legal action becomes necessary to enforce or interpret the terms of this Agreement, the
prevailing party shall be entitled, in addition to its court costs, to such reasonable attorneys’
fees, expert witness fees and legal expenses as may be fixed by a court of competent jurisdiction.



     C. LICENSEE acknowledges that there will be no adequate remedy at law for its failure to
comply with the terms herewith. Accordingly, in the event LICENSEE fails to comply with the terms
of this Agreement, LICENSEE acknowledges and agrees that LICENSOR shall have the right to have any
breach or default of this Agreement remedied by equitable relief by way of a temporary restraining
order, preliminary injunction, permanent injunction, and such other alternative relief as may be
appropriate without the necessary of LICENSOR posting any bond or proving any damaged.



     D. Any notice, request, demand, statement or other writing required or permitted by this
Agreement shall he deemed sufficiently given to or made upon the parties hereto when personally
received, delivered by first class certified or registered mail, postage prepaid, or delivered by
overnight express courier to the addresses set forth on the first page of this Agreement or such other
address of which the parties receive written notice.



     E. No failure or delay on the part of either party hereto in insisting upon or enforcing or
resorting to any of in power, rights, remedies, or option hereunder, and no partial or single
exercise thereof, shall continue & waiver of any such, powers, right, remedies or options, unless
such waiver be in writing, signed by the party to be charged.



     F. If any provision of this Agreement should be held to be void or unenforceable, in whole
or in part, the court or tribunal so holding chill reform the provision to make it enforceable
while maintaining the spirit and goal of the provision, and if the court or tribunal finds it
cannot so reform that provision such provision or part thereof shall be treated as severable,
leaving valid the
remainder of this Agreement.



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     G. This Agreement constitutes the entire understanding and agreement of the parties, and there are
no representation, warranties, promises, or undertakings other than those contained herein. As to
the subject matter hereof this Agreement supersedes and cancels all previous agreements between the
parties hereto. No course of conduct or dealing between the parties shall act as a modification or
waiver of any provision of this Agreement and no waiver or modification of any of the terms or
provisions of this Agreement shall be valid, unless contained in a single written document signed
by both parties.



     H. This Agreement may be assigned by either party without the consent of the other party.



     I. This Agreement shall be binding upon the parties hereto and their respective subsidiaries,
affiliates, heirs, legal representatives, successors and assigns.



     J. The headings in this Agreement are intended for convenience only, and shall not be used to
interpret the
meaning of this Agreement or to determine the rights of the parties.



     K. Each party shall perform any further acts and sign and deliver any further documents that are
reasonable necessary to effectuate the provisions of the spirit of this Agreement.


[SIGNATURE PAGE FOLLOWS]




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     IN WITNESS WHEREOF, the parties have caused this instrument to be executed effective as of the day
and year first above written.



	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	[ILLEGIBLE], INC,
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	Date:

	 	 	 	 	 	By:
	 	/s/ Anthony A. Nobels	 	 	 	 	 	 
	 

	 	 
	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	Anthony A. Nobels
	 	 	 	 	 	 	 
	 	 	 	 	 	 	Printed Name
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	CEO/PRES
	 	 	 	 	 	 	 
	 	 	 	 	 	 	Title
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	STERILIS, INC.
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	Date:

	 	 	 	 	 	By:
	 	/s/ Egbert Ratering	 	 	 	 	 	 
	 

	 	 
	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	EGBERT RATERING
	 	 	 	 	 	 	 
	 	 	 	 	 	 	Printed Name
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	EXECUTIVE VICE PRESIDENT
	 	 	 	 	 	 	 
	 	 	 	 	 	 	Title




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EXHIBIT A




Licenced Patent




U.S. Patent Applications:




	 	 	 	 	 
	Serial Number	 	Filing Date	 	Title
	 
	 	 	 	 
	60/002,769

	 	August 24, 1995
	 	SUTURING DEVICE AND METHOD
	 
	 	 	 	 
	09/231,177

	 	January 14, 1999
	 	SUTURING DEVICE FOR SEALING

 ARTERY
FOLLOWING ANGIOGRAM
	 
	 	 	 	 
	60/134,141

	 	May 14, 1999
	 	KNOT PUSHER






U.S. Patents:




	 	 	 	 	 
	Patent Number	 	Issue Date	 	Title
	 
	 	 	 	 
	5,860,990

	 	January 19, 1999
	 	METHOD AND APPARATUS FOR SUTURING
	 
	 	 	 	 
	5,820,631

	 	October 13, 1998
	 	DEVICE AND METHOD FOR SUTURING 

TISSUE
ADJACENT TO A BLOOD VESSEL






Foreign Patent Applications:




	 	 	 	 	 	 	 
	Country	 	Serial Number	 	Filing Date	 	Title
	 
	 	 	 	 	 	 
	PCT

	 	PCT/US99/03904
	 	February 23, 1999
	 	SUTURING DEVICE FOR

SEALING AN OPENING IN A

BLOOD VESSEL OR OTHER

BIOLOGICAL STRUCTURE
	 
	 	 	 	 	 	 
	Europe

	 	99301495.0
	 	March 1, 1999
	 	SUTURING DEVICE FOR
SEALING AN OPENING IN A
BLOOD VESSEL OR OTHER
BIOLOGICAL STRUCTURE
	 
	 	 	 	 	 	 
	Japan

	 	62080/1999
	 	March 9, 1999
	 	SUTURING DEVICE FOR
SEALING AW OPENING IN A
BLOOD VESSEL OR OTHER
BIOLOGICAL STRUCTURE







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