exv10w24



 





EXHIBIT 10.24




Patent Purchase Agreement




     THIS PATENT PURCHASE AGREEMENT (“Agreement”) is entered into as of
June 21, 2002 (“Effective Date”), by and between NuVasive, Inc., a Delaware corporation
(“Buyer” or “NuVasive”) and Dr. Anthony Ross and Dr. Peter Guagliano (“Sellers”). Buyer and Seller
agree as follows:



Recitals




     1.      Sellers are the owners of the entire right, title, and interest in and to U.S.
Patent Nos. 6,183,518, 6,206,921 and 6,264,659 and US Patent Applications Ser. No. 09/659,807 and
09/990,174 (“Patent Rights”) involving compositions and related instrumentation for disc nucleus
augmentation, collectively “Disc Augmentation Technology.”



     2.      Subject to the terms and conditions of this Agreement, Buyer wishes to purchase
the Patent Rights from Sellers, and Sellers wish to sell, transfer, and convey the Patent Rights to
Buyer.



     NOW, THEREFORE, the parties hereto hereby agree as follows:



Agreement




Section 1

Purchase and Sale of the Patent Rights




     1.1     Subject to the terms and conditions of this Agreement, Sellers shall, upon successful
completion of Biomechanical Testing of the Disc Augmentation Technology (as determined in good
faith by Buyer), sell, transfer, convey, and assign the Patent Rights to Buyer in consideration of
Sellers’ receipt, on the Effective Date, of a one-time Patent Purchase Payment of Thirty Five
Thousand Dollars ($35,000) and stock options to purchase Fifty Thousand (50,000) shares of Buyer’s
common stock (“Stock Options”) pursuant to its 1998 Stock Option/Stock Issuance Plan attached
hereto as Exhibit A (the “Plan”) and subject to the Stock Option Agreement attached hereto as
Exhibit B (the “Option Agreement”) and the Stock Purchase Agreement attached hereto as Exhibit C
(the “Purchase Agreement”).



     1.2     Said Stock Options shall include a per-share price of Twenty-Five Cents ($0.25) and shall
vest according to the vesting schedule set forth in the Grant Notice attached hereto as Exhibit D
(the “Grant Notice”) or until such time as the Biomechanical Testing is successfully completed, at
which point any unvested shares shall become fully vested.



     1.3     In the instance the Biomechanical Testing is NOT successfully completed ownership of the
Patent Rights shall remain with the Sellers and Sellers shall retain the one-time
Patent Purchase Payment of Thirty-Five Thousand Dollars ($35,000) and all Stock Options
already vested.



 









 





Section 2

Delivery




     2.1     On the Effective Date, Buyer will deliver to Sellers the Stock Options and the Patent
Purchase Payment as set forth in Section 1.1.



     2.2     Upon successful completion of the Biomechanical Testing, Sellers agree to execute and
deliver to Buyer an Assignment of Patent Rights substantially in the form of Exhibit E attached
hereto (the “Assignment Agreement”).



Section 3

Representations, Warranties, and Covenants of Sellers




     Sellers hereby represent, warrant, and covenant to Buyer as follows:



     3.1     No Public Market. Sellers understand that no public market now exists for any of the
securities issued to Buyer and that there is no assurance that a public market will ever exist for
the Shares.



     3.2     Authorization. Sellers represent that they have the full right, power, and authority to
enter into and perform their obligations under this Agreement and the Assignment Agreement
(collectively, the “Agreements”). Sellers agree that the Agreements, when executed and delivered
by Sellers, will constitute valid and binding conveyances and obligations of Sellers, enforceable
in accordance with their terms, subject to the laws of general application relating to bankruptcy,
insolvency, and the relief of debtors, rules of law governing specific performance, injunctive
relief, or other equitable remedies.



     3.3     Consents. Other than filings required by Buyer and compliance with the registration
requirements of applicable federal and state securities laws, or exemptions therefrom, no consent,
approval, or authorization of or designation, declaration or filing with any state, federal, or
foreign governmental authority, or any third party, on the part of Sellers is required in
connection with the valid execution and delivery of the Agreements by Sellers, and the consummation
of the transactions contemplated hereby.



     3.4     Ownership of the Patent Rights. Sellers are the owners of the entire right, title, and
interest in the Patent Rights, and Sellers have not previously assigned or licensed the Patent
Rights (nor will they until the Biomechanical Testing is completed) and are not aware of any
infringement issues or adverse claims of ownership to the Patent Rights.



Section 4

Buyer’s Conditions to Closing




     Buyer’s obligation to purchase the Patent Rights is, at the option of Buyer, subject to
fulfillment of the following conditions:



     4.1     Representations. The representations made by Sellers in Section 3 hereof shall be true
and correct when made, and shall be true and correct on the Effective Date and at the completion of
Biomechanical Testing.



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     4.2     Execution and Delivery of Assignment. Upon successful completion of the Biomechanical
Testing, Sellers shall have executed and delivered to Buyer the Assignment Agreement set forth in
Exhibit E.



     4.3     Board Approval. The Board of Directors of Buyer shall have approved the issuance of said
Stock Options.



Section 5

Grant Back of Patent Rights




     5.1     In the instance NuVasive fails to introduce a product or composition embodying Disc
Augmentation Technology (or related method) within a commercially reasonable time period, NuVasive
agrees to grant the Patent Rights back to Sellers (via an Assignment of Patent Rights substantially
in the form as shown in Exhibit E attached hereto). The determination of “commercially reasonable
time period” shall take into consideration, among other factors, the amount of time required to
obtain FDA clearance to commercialize Disc Augmentation Technology.



     5.2     Sellers agree that, as a precondition to the grant back of Patent Rights of Section 5.1,
NuVasive shall be entitled to receive all Stock Options which are unvested at the time the Patent
Rights are granted back to Sellers, to the extent such Stock Options have not yet fully vested
based on the successful completion of the Biomechanical Testing pursuant to Section 1.2.



Section 6

Miscellaneous




     6.1     Governing Law; Venue. This Agreement shall be governed in all respects by the laws of
the State of California as applied to contracts made and to be fully performed entirely within the
state between residents of California. All disputes arising out of this Agreement shall be subject
to the exclusive jurisdiction and venue of California state courts of San Diego County, California
(or, if there is exclusive federal jurisdiction, the United States District Court for the Southern
District of California) and the parties consent to the personal and exclusive jurisdiction and
venue of these courts.



     6.2     Successors and Assigns. Except as otherwise provided herein, the provisions hereof shall
inure to the benefit of, and be binding upon, the successors, assigns, heirs,, executors, and
administrators of the parties hereto.



     6.3     Indemnification by NuVasive. Buyer agrees to indemnify, defend and hold Sellers harmless
from any third party liability, losses, damages, or costs (including reasonable attorneys’ fees and
costs) arising out of or related to any action arising out of (a) a claim that the manufacture or
sale of any Disc Augmentation Technology violates the patent, trademark, or trade name rights of
any third party; (b) any alleged defects or failures to perform of the Disc Augmentation
Technology; (c) any product liability claims or use of the Disc Augmentation
Technology; or (d) the advertising, distribution or marketing of the Disc Augmentation
Technology. Sellers agree to assist Buyer in the defense of any such action set forth in 6.3(a)
through 6.3(d).



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     6.4     Enforcement. In the event that NuVasive wishes to enforce Patent Rights against a third
party infringer, Sellers will provide reasonable cooperation and assistance in that effort,
including being available for witness and deposition testimony, making documents available, and
complying with any other reasonable request.



     6.5     Insurance. NuVasive agrees to maintain product liability insurance coverage of at least
$3 million per occurrence and to name Drs. Anthony Ross and Peter Guagliano as additional insureds
thereunder.



     6.6     Entire Agreement; Amendment. This Agreement and the other documents delivered pursuant
hereto constitute the full and entire understanding and agreement between the parties with regard
to the subjects hereof and thereof and supersede all prior arrangements and understanding with
respect hereto. Neither this Agreement nor any term hereof may be amended, waived, discharged, or
terminated other than by a written instrument signed by Buyer and Sellers.



     6.7     Notices. Any notice or communication required or permitted to be given under this
Agreement shall be sufficiently given when received by certified mail, or by overnight courier, to
the parties at the addresses provided below.



     6.8     Severability. In the event that any provision of this Agreement becomes or is declared by
a court of competent jurisdiction to be illegal, unenforceable, or void, this Agreement shall
continue in full force and effect without said provision; provided that no such severability shall
be effective if it materially changes the economic benefit of this Agreement to any party.



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     The foregoing Patent Purchase Agreement is hereby executed by Buyer and Sellers as of the date
first above written.



	 	 	 	 	 	 	 	 	 
	Buyer:	 	 	 	Sellers:
	 
	 	 	 	 	 	 	 	 
	NuVasive, Inc.	 	 	 	Dr. Anthony C. Ross
	 
	 	 	 	 	 	 	 	 
	By:

	 	/s/ Alexis Lukianov
	 	 	 	By:
	 	/s/ Anthony Ross
	 

	 	 
	 	 	 	 	 	 
	 

	 	ALEXIS V. LUKIANOV
	 	 	 	 	 	ANTHONY C. ROSS
	 

	 	President & CEO
	 	 	 	 	 	An individual
	 

	 	NuVasive, Inc.
	 	 	 	 	 	Anthony C. Ross, D.C.
	 

	 	10065 Old Grove Road
	 	 	 	 	 	3546 Maybank Hwy.
	 

	 	San Diego, California 92131
	 	 	 	 	 	John’s Island, S.C. 29455
	 
	 	 	 	 	 	 	 	 
	Date:

	 	6-24-02
	 	 	 	Date:
	 	 6/21/02
	 

	 	 
	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	Dr. Peter A. Guagliano
	 
	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	By:
	 	/s/ Peter Guagliano
	 

	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	PETER A. GUAGLIANO
	 

	 	 	 	 	 	 	 	An individual
	 

	 	 	 	 	 	 	 	370 Bay Ridge Parkway
	 

	 	 	 	 	 	 	 	Brooklyn, NY 11209
	 
	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	Date:
	 	6/21/02
	 

	 	 	 	 	 	 	 	 






 









 








EXHIBIT A




1998 NuVasive Stock Option/Stock Issuance Plan





 









 








EXHIBIT B




NuVasive Stock Option Agreement





 









 








EXHIBIT C




Stock Purchase Agreement





 









 








EXHIBIT D




Grant Notice





 









 








EXHIBIT E




Assignment of Patent Rights




     In consideration of the mutual obligations set forth in that Patent Purchase Agreement dated
___by and between NuVasive, Inc. (“NuVasive”) and Drs. Anthony C. Ross and Peter
A. Guagliano (“Drs. Ross and Guagliano”), the adequacy and receipt of which is hereby acknowledged,
Dr. Ross and Guagliano, owners of the entire right, title, and interest in and to U.S. Patent Nos.
6,183,518, 6,206,921 and 6,264,659 and US Patent Applications Ser. No. 09/659,807 and 09/990,174
(“Patent Rights”) hereby sell and assign to NuVasive the entire right, title and interest in the
Patent Rights, to be held and enjoyed by NuVasive, its successors and assigns, as fully and
entirely as the same would have been held and enjoyed by Drs. Ross and Guagliano had this
assignment and sale not been made.



     In testimony whereof, Dr. Anthony C. Ross and Dr. Peter A. Guagliano have signed this
Assignment of Patent Rights this ___day of ___, 2002.



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