Exhibit 10.13


 


LICENSE AGREEMENT


 


This Agreement is made and entered into as of
the 13th day of February 2002, by and between the
UNIVERSITY OF PITTSBURGH - OF THE COMMONWEALTH SYSTEM OF HIGHER EDUCATION, a
non- profit corporation, organized and existing under the laws of the
Commonwealth of Pennsylvania, having its principal office at 4200 Fifth Avenue,
Pittsburgh, Pennsylvania 15260 (UNIVERSITY), and MEDQUEST PRODUCTS, INC having
its principal office at 825 North 300 West, Suite NE 107, Salt Lake City, UT
84103 (LICENSEE),


 


WHEREAS, UNIVERSITY, Magnetic Moments, LLC (“MM”)
and the National Aeronautics and Space Administration (“NASA” are the owners of
certain PATENT RIGHTS, entitled “Magnetically Suspended Miniature Fluid Pump
and Method of Making the Same” developed by Dr. James F. Antaki and Gregory
Burgreen of the UNIVERSITY faculty, Bradley Paden of MM and Nelson Groom of
NASA, and the UNIVERSITY has the right to grant licenses under such PATENT
RIGHTS;


 


WHEREAS, UNIVERSITY and NASA have entered into
an Agreement Concerning Licensing of the Jointly Owned Invention “Magnetically
Suspended Miniature Fluid Pump and Method of Making the Same,” dated July 20,
1998 (“NASA Agreement”), pursuant to which NASA granted UNIVERSITY the right to
negotiate licenses to the PATENT RIGHTS on NASA’s behalf, subject to certain
conditions;


 


WHEREAS, UNIVERSITY and Bradley Paden and MM
have entered into an Agreement dated April 24, 1998, assigning all of Bradley
Paden’s and MM’s interest in the PATENT RIGHTS to UNIVERSITY;


 


WHEREAS, UNIVERSITY has a non-exclusive
license to certain technology, entitled “Speed Control System for Implanted
Blood Pumps,” US. Patent No. 5,888,242 (filed November 1, 1996), and US. Patent
No. 6,066,086 Speed control system for implanted blood pumps (filed March 4,
1998), including the right to sublicense such technology (“LICENSE RIGHTS”), as
more fully described below;


 


WHEREAS, UNIVERSITY desires to have the PATENT
RIGHTS and LICENSE RIGHTS (collectively “TECHNOLOGY”) utilized in the public
interest;


 


WHEREAS, LICENSEE or its principals are
experienced in the development, production, manufacture, marketing and sale of
PRODUCTS as defined below, and/or the use of technology similar to the
TECHNOLOGY and that LICENSEE shall commit itself to a thorough, vigorous and
diligent program of exploiting the TECHNOLOGY primarily through the development
and commercialization of PRODUCTS so that public utilization results therefrom;


 


WHEREAS, LICENSEE has obtained other licenses
and has entered into agreements, such agreements being separate and distinct
from this agreement, which give it exclusive ownership of, claims on, and/or
rights to license related technology from other third parties, including
LICENSEE’S AFFILIATES as defined below, including those that have had or
continue to have separate relationships and agreements with the UNIVERSITY;


 


and


 


WHEREAS, LICENSEE desires to obtain a license
to the TECHNOLOGY upon the terms and conditions hereinafter set forth.


 


ARTICLE
1 - DEFINITIONS


 


For purposes of this Agreement, the following
words and phrases shall have the following meanings:


 


1.1           AFFILIATE shall mean, with respect
to UNIVERSITY, any clinical or research entity in Pittsburgh which is operated
or managed as a facility under the UPMC Health System, whether or not owned by
UNIVERSITY.


 


1.2           LICENSEE shall mean MEDQUEST
PRODUCTS, INC. and all entities at least fifty percent (50%) owned or
controlled by MEDQUEST PRODUCTS, INC.


 

















 


1.3           AFFILIATE shall mean, with respect
to LICENSEE, any third party that is directly or indirectly under the control
of MedQuest, that is under common control with MedQuest, or that controls
MedQuest. As used herein, the term “control” shall mean possession, direct or
indirect, of the power to direct or cause the direction of the management and
policies of an entity, whether through the ownership of voting securities, by
contract, or otherwise, and the term “entity” shall include without limitation
an individual, corporation, or other organization.


 


1.4           LICENSE RIGHTS shall mean the technology
entitled “Speed Control System for Implanted Blood Pumps,” U.S. Patent No.
5,888,242 (filed November 1, 1996), and U.S. Patent No. 6,066,086 Speed control
system for implanted blood pumps (filed March 4, 1998) that are the subject of
the Assignment of PATENT LICENSE AGREEMENT between UNIVERSITY and Argonaut
Medical, Inc., dated August 20, 1998, plus any divisionals, continuations,
continuations-in-part, re-examinations, re-issues, renewals or extensions of
these patents.


 


1.5           PATENT RIGHTS shall mean UNIVERSITY
intellectual property described below:


 


(a)           The United States and foreign
patents and/or patent applications listed in Exhibit A;


 


(b)           United States and foreign patents
issued from the applications listed in Exhibit A and from divisionals, continuations,
continuations-in-part, re-examinations, re-Issues, renewals or extensions of
these applications issued from such applications;


 


(c)           Claims of U.S. and foreign
continuation-in-part applications, and of the resulting patents, which are
directed to subject matter specifically described in the U.S. and foreign
applications listed in Exhibit A; and


 


(d)           Claims of all foreign patent
applications, and of the resulting patents, which are directed to subject
matter specifically described in the United States patents and/or patent
applications described in (a), (b) or (c) above


 


1.6           PRODUCT OR PRODUCTS shall mean an
implantable blood pump using rotation means to pump blood and its supporting
components.


 


1.7           NET SALES shall mean LICENSEE’s and
any sublicensee’s invoice price for products or processes included in
TECHNOLOGY and produced hereunder less the sum of the following:


 


(a)           Actual cost of freight charges or
freight absorption, separately stated in such invoice;


 


(b)           Actual trade, quantity or cash discounts
allowed, if any;


 


(c)           Sales taxes, tariff duties, excise
taxes, and/or use taxes separately stated on each invoice;


 


(d)           Allowances, credits, and write-offs
for rejections or returns.


 


1.8           FIELD shall mean implantable blood
pumps.


 


ARTICLE
2 - GRANT


 


2.1           UNIVERSITY hereby grants to
LICENSEE, to the extent it may lawfully do so, the right and worldwide
exclusive license to make, have made, use, sell, offer for sale or import
PRODUCTS in the FIELD under the PATENT RIGHTS to the end of the term for which
the PATENT RIGHTS are granted, and the worldwide nonexclusive sublicense to
make, have made, use, sell, offer for sale or import PRODUCTS under the LICENSE
RIGHTS, to the end of the term for which the LICENSE RIGHTS are granted, in
each case unless this Agreement is terminated sooner as provided herein. The
license granted hereby is subject to the rights of the United States
government, if any, as set forth in 35 U.S.C. Section 200, et seq.


 


2.2           Rights to AFFILIATES. The rights licensed to LICENSEE hereunder
shall extend to its AFFILIATES designated in writing by LICENSEE, provided each
such AFFILIATE agrees in writing to be bound by the terms and conditions of
this Agreement except that AFFILIATE will only have any right to make and/or
sell the TECHNOLOGY to 


 

















 


serve the development and
commercialization milestones of MedQuest, which right can be withdrawn by
MedQuest. MedQuest agrees to be fully responsible for the performance of such
authorized AFFILIATES hereunder.


 


2.3           UNIVERSITY shall not grant any
other license to the PATENT and/or LICENSE RIGHTS.


 


2.4           UNIVERSITY and NASA reserve the
royalty-free, non-exclusive right to practice under the PATENT RIGHTS and to
use the TECHNOLOGY for their own non-commercial education and research
purposes. UNIVERSITY reserves the royalty-free, non-exclusive right to practice
under the LICENSE RIGHTS for its own non-commercial education and research
purposes.


 


2.5           The license granted hereunder shall
not be construed to confer any rights upon LICENSEE by implication, estoppel or
otherwise as to any technology not specifically set forth in Exhibit A hereof.


 


2.6           Sublicensing. LICENSEE shall have the exclusive
right under PATENT RIGHTS and the nonexclusive right under LICENSE RIGHTS to
grant sublicenses to third parties other than AFFILIATES (“Sublicensees”) in
its discretion. Any such sublicenses shall incorporate all of the terms and
conditions of this Agreement. Termination of this Agreement or the License
shall act to terminate any such sublicenses; except that any Sublicensee whose
sublicense is in good standing with MedQuest may elect to maintain its
sublicense by advising UNIVERSITY, within sixty (60) days of such Sublicensee’s
receipt of written notice from LICENSEE or UNIVERSITY of such termination, of
its election and agreement to assume with respect to UNIVERSITY all the
obligations contained in its sublicense with LICENSEE.


 


ARTICLE
3 - DUE DILIGENCE


 


3.1           LICENSEE shall use its best efforts
to bring PRODUCTS to market through a thorough, vigorous and diligent program
for exploitation of the PATENT RIGHTS and LICENSE RIGHTS throughout the
pendency of this Agreement.


 


3.2           In addition, LICENSEE shall adhere
to each of the following milestones:


 


(a)           Finalization of first PRODUCT
design by no later than December 31,2003;


 


(b)           Commence a human clinical trial
with first PRODUCT by no later than December 31, 2004;


 


(c)           Obtain regulatory approval for
commercial sale of first PRODUCT by no later than December 31, 2006.


 


3.3           LICENSEE’s failure to perform in
accordance with Section 3.1 or to fulfill on a timely basis any one of the
milestones set forth in Section 3.2 hereof shall be grounds for UNIVERSITY to
terminate this Agreement, pursuant to Article 11, and upon termination all
rights and interest to the TECHNOLOGY, PATENT RIGHTS, and LICENSE RIGHTS shall
revert to UNIVERSITY.


 


ARTICLE
4 - ROYALTIES AND OTHER LICENSE CONSIDERATION


 


4.1           In consideration of the rights,
privileges and license granted by UNIVERSITY hereunder, LICENSEE shall pay
royalties and other monetary consideration as follows:


 


(a)           Initial license fees,
non-refundable and non-creditable against royalties, of Fifty Thousand Dollars
($50,000) due as follows:


 


(i)            $10,000 immediately upon execution
of this Agreement;


 


(ii)           $20,000 on or before June 1, 2002;
and


 


(iii)          $20,000 on or before December 1,
2002.


 


(b)           Royalties in an amount equal to
one-tenth of one percent (0.1%) of NET SALES of PRODUCTS utilizing or
incorporating TECHNOLOGY, payable per calendar quarter; and


 

















 


(c)           Annual maintenance fees, non-refundable
and non-creditable against royalties, will paid as follows:


 


(i)            $15,000 on or before May 1,2003;


 


(ii)           $20,000 on or before May 1, 2004;


 


(iii)          $40,000 on or before May 1,2005;


 


(iv)          $50,000 on or before May 1, 2006;
and


 


(v)           $75,000 on or before May 1, 2007,
and annually thereafter, until gross sales of PRODUCTS utilizing or
incorporating TECHNOLOGY during the preceding twelve (12) month period is
greater than Five Hundred Thousand Dollars ($500,000).


 


4.2           Ninety percent (90%) of all
payments due hereunder shall be paid to UNIVERSITY in United States dollars and
ten percent (10%) of such royalty payments shall be paid to NASA, to the extent
NASA has rights in the TECHNOLOGY, and directed to the addresses set forth in
Section 12 hereof. Royalty payments, pursuant to Section 4.1(b), shall be paid
within thirty (30) days after each March 31, June 30, September 30 and December
31. The maintenance payments, pursuant to Section 4.1(c) above, shall be paid
in like manner by the respective dates set forth in Section 4.1(c) above.


 


4.3           Payments pursuant to this
Agreement, which are overdue shall bear interest calculated from the due date
until payment is received at the rate of eight percent (8%) per annum.


 


4.4           Licensee shall sell PRODUCTS and/or
process resulting from TECHNOLOGY to UNIVERSITY and is AFFILIATES upon request
at such price(s) and on such terms and conditions as such PRODUCTS and/or
proceses are made available to LICENSEE’s most favored customer.


 


ARTICLE
5 – REPORTS


 


5.1           Within (3) days after each march
31, June 30, September 30 and December 31 of each year during the term of this
agreement and starting with the calendar year in which NET SALES first occur,
LICENSEE shall deliver to UNIVERSITY and to NASA true, accurate and detailed
reports of the following information in a form acceptable to UNIVERSITY:


 


(a)           Number of PRODUCTS utilizing or
incorporating TECHNOLOGY manufactured and sold by LICENSEE and all
sublicensees;


 


(b)           Total billings for all such
products;


 


(c)           Accounting for all TECHNOLOGY
processes used or sold by LICENSEE and all sublicensees;


 


(d)           Deductions set forth in Section
1.5;


 


(e)           Total royalties due; and


 


(f)            Name and addresses of sublicensees.


 


5.2           If no royalties shall be due
hereunder once NET SALES occur, LICENSEE shall so advise UNIVERSITY and NASA in
writing within thirty (30) days after the end of any calendar quarter for which
no royalties are due


 


5.3           LICENSEE shall keep full, true and
accurate books of account, in accordance with generally accepted accounting
principles, containing all information that may be necessary for the purpose of
showing the amounts payable to UNIVERSITY and NASA hereunder. Such books of
account shall be kept at LICENSEE’s principal place of business. 


 

















 


Such books and the supporting
data related thereto shall be open from time to time, at reasonable intervals,
during normal business hours, and upon reasonable notice for three (3) years
following the end of the calendar year to which they pertain to inspection by
tile UNIVERSITY or its agents for tile purpose of verifying LICENSEE’s royalty
statement or compliance in other respects with this Agreement. The fees and
expenses of UNIVERSITY’s representatives shall be borne by UNIVERSITY; however,
if an error of more than five percent (5%) of the total payments due or owing
for any year is discovered then LICENSEE shall bear the fees and expenses of
UNIVERSITY’s representatives.


 


ARTICLE
6 - PATENT PROSECUTION


 


6.1           UNIVERSITY has or shall apply for,
seek prompt issuance of and maintain during the term of this Agreement the
PATENT RIGHTS in the United States and in such foreign countries as may be
designated by LICENSEE in a written notice to UNIVERSITY within a reasonable
time in advance of the required foreign filing dates. LICENSEE shall have the opportunity
to advise and cooperate with UNIVERSITY in the prosecution, filing and
maintenance of such patents.


 


6.2           All fees and costs, including
attorneys’ fees, relating to the filing, prosecution and maintenance of the
PATENT RIGHTS incurred prior to the date of this Agreement shall be the
responsibility of LICENSEE. LICENSEE shall reimburse the UNIVERSITY for these
costs as follows:


 


(a)           $5,000 immediately upon execution
of this Agreement;


 


(b)           $30,000 on or before June 1, 2002;


 


(c)           $30,000 on or before December
1,2002;


 


(d)           $30,000 on or before May 1,2003;


 


(e)           $30,000 on or before November
1,2003; and


 


(f)            $7,387 on or before May 1, 2004.


 


6.3           All fees and costs incurred after
the date of this Agreement, including attorneys’ fees, relating to the filing,
prosecution and maintenance of the PATENT RIGHTS shall be the responsibility of
LICENSEE. Prior approval of LICENSEE must be obtained prior to UNIVERSITY
incurring fees to be paid by LICENSEE. UNIVERSITY shall consult with LICENSEE
in the selection of patent counsel for performing such prosecution and
maintenance. Approved fees and costs incurred after the date of this Agreement
shall be paid by LICENSEE within thirty (30) days after receipt of UNIVERSITY’s
invoice. Payments pursuant to Sections 6.2 and 6.3 are nonrefundable and
non-creditable against royalties.


 


6.4           The UNIVERSITY Office of Technology
Management warrants that it has no knowledge of any pending litigation related
to the PATENT RIGHTS or LICENSE RIGHTS.


 


ARTICLE
7 - INFRINGEMENT ACTIONS


 


7.1           LICENSEE shall inform UNIVERSITY
promptly in writing of any alleged infringement of the PATENT RIGHTS by a third
party and of any available evidence thereof.


 


7.2           During the term of this Agreement,
LICENSEE shall have the right, but shall not be obligated, to prosecute at its
own expense all infringements of the PATENT RIGHTS if LICENSEE has notified
UNIVERSITY in writing of its intent to prosecute; provided, however, that such
right to bring such an infringement action shall remain in effect only for so long
as the license granted herein remains exclusive. In furtherance of such right,
UNIVERSITY hereby agrees that LICENSEE may include UNIVERSITY as a party
plaintiff in any such suit, without expense to UNIVERSITY. The total cost of
any such infringement action commenced or defended solely by LICENSEE shall be
borne by LICENSEE and UNIVERSITY shall receive a percentage of any recovery or
damages for past infringement derived therefrom which is equal to the
percentage royalty due UNIVERSITY under Article 4. LICENSEE shall indemnify
UNIVERSITY against any order for costs that may be made against UNIVERSITY in
such proceedings.


 

















 


7.3           If within six (6) months after
having been notified of any alleged infringement, LICENSEE shall have been
unsuccessful in persuading the alleged infringer to desist and shall not have
brought and shall not be diligently prosecuting an infringement action, or if
LICENSEE shall notify UNIVERSITY at any time prior thereto of its intention not
to bring suit against any alleged infringer, then, and in those events only,
UNIVERSITY shall have the right, but shall not be obligated, to prosecute at
its own expense any infringement of the PATENT RIGHTS, and UNIVERSITY may, for
such purposes, use the name of LICENSEE as party plaintiff. UNIVERSITY shall
bear all costs and expenses of any such suit. In any settlement or other
conclusion, by litigation or otherwise, UNIVERSITY shall keep any recovery or
damages for past infringement derived therefrom.


 


7.4           In the event that a declaratory
judgment action alleging invalidity or infringement of any of the PATENT RIGHTS
shall be brought against UNIVERSITY, LICENSEE, at its option, shall have the
right, within thirty (30) days after commencement of such action, to intervene
and take over the sole defense of the action at its own expense.


 


7.5           In any infringement suit either
party may institute to enforce the PATENT RIGHTS pursuant to this Agreement,
the other party shall, at the request and expense of the party initiating such
suit, cooperate in all respects and, to the extent possible, have its employees
testify when requested and make available relevant records, papers,
information, samples, specimens, and the like.


 


ARTICLE
8 - INDEMNIFICATION/INSURANCE/LIMITATION OF LIABILITY


 


8.1           LICENSEE shall at all times during
the term of this Agreement and thereafter indemnify, defend and hold
UNIVERSITY, its trustees, officers, employees and AFFILIATES and shall
indemnify but not defend NASA harmless against all claims and expenses,
including legal expenses and reasonable attorneys’ fees, arising out of the
death of or injury to any person or persons or out of any damage to property or
the environment, and against any other claim, proceeding, demand, expense and
liability of any kind whatsoever resulting from the production, manufacture,
sale, use, lease, consumption or advertisement of the TECHNOLOGY or arising
from any obligation of LICENSEE hereunder. LICENSEE shall at all times during
the term of this Agreement and thereafter indemnify and hold the U.S. Government
and its officers, agents, and employees harmless against all claims and
expenses, including costs and reasonable attorneys’ fees, arising out of the
death of or injury to any person or persons or out of any damage to property or
the environment, and against any other claim, proceeding, demand, expense and
liability of any kind whatsoever resulting from the production, manufacture,
sale, use, lease, consumption or advertisement of the TECHNOLOGY or arising
from any obligation of LICENSEE hereunder.


 


8.2           LICENSEE shall obtain and carry in
full force and effect liability insurance which shall protect LICENSEE in
regard to events covered by Section 8.1 above, as provided below: 


 


	
  COVERAGE

  	
   

  	
  LIMITS 

  
	
   

  	
   

  	
   

  
	
  a. Workers’
  Compensation

  	
   

  	
  Statutory

  
	
   

  	
   

  	
   

  
	
  b. Employer’s
  Liability

  	
   

  	
  $100,000

  



 


8.3           LICENSEE shall obtain and carry in
f1111 force and effect liability insurance which shall protect both LICENSEE
and UNIVERSITY in regard to events covered by Section 8.1 above, as provided
below: 


 


	
  COVERAGE

  	
   

  	
  LIMITS 

  
	
   

  	
   

  	
   

  
	
  a. Commercial General Liability, including,
  but not limited to, Contractual, Fire Legal, and Bodily Injury

  	
   

  	
  $1,000,000
  Combined Single Limits for Bodily Injury and Property Damage

  
	
   

  	
   

  	
   

  
	
  b. Umbrella and Products Liability

  	
   

  	
  $3,000,000*

  



 






*LICENSEE shall not be required to purchase
this insurance until it commences its first clinical trial.


 

















 


The University of Pittsburgh is to be named as
an additional insured with respect to insurance policies identified in Sections
8.3(a) and 8.3(b) above.


 


Certificates of insurance evidencing the
coverage required above shall be filed with the University’s Office of Risk
Management, 1817 Cathedral of Learning, Pittsburgh, P A 15260, no later than
fifteen (15) days after execution of this Agreement and annually thereafter.
Such certificates shall provide that the insurer will give the University not
less than thirty (30) days advance written notice of any material changes in or
cancellation of coverage.


 


8.4           EXCEPT AS OTHERWISE EXPRESSLY SET
FORTH IN THIS AGREEMENT, UNIVERSITY AND NASA MAKE NO REPRESENTATIONS AND EXTEND
NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED
TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING. NOTHING IN THIS AGREEMENT
SHALL BE CONSTRUED AS A REPRESENTATION OR WARRANTY GIVEN BY UNIVERSITY AND NASA
THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT
INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY.


 


ARTICLE
9 - ASSIGNMENT


 


9.1           This Agreement is not assignable
without the prior written consent of UNIVERSITY and LICENSEE, and any attempt
to do so shall be null and void.


 


ARTICLE
10 - ARBITRATION


 


10.1         Except as to issues relating to the
validity, enforceability or final determination of infringement of any patent
contained in the PATENT RIGHTS or LICENSE RIGHTS licensed hereunder, any and
all claims, disputes or controversies arising under, out of, or in connection
with this License Agreement, which have not been resolved in good faith negotiations
between the parties, shall be resolved by a board of three (3) arbitrators in
Pittsburgh, Pennsylvania, in accordance with the rules, then in effect, of the
American Arbitration Association. Such independent board shall be composed of
three (3) panelists of sufficient education, scientific experience and national
reputation to address such issues. The board shall be composed of one
arbitrator selected by UNIVERSITY, one selected by LICENSEE and one selected by
LICENSEE and UNIVERSITY. If LICENSEE and UNIVERSITY cannot agree upon the third
arbitrator within fourteen (14) days after the notice of arbitration, the third
arbitrator shall be selected by the American Arbitration Association in
accordance with its rules. The decision of such panel shall be final and
binding upon the parties and enforceable in any court of competent
jurisdiction.


 


ARTICLE
11- TERMINATION


 


11.1         UNIVERSITY shall have the right to
terminate this Agreement if:


 


(a)           LICENSEE shall default in the
performance of any of the obligations herein contained and such default has not
been cured within sixty (60) days after receiving written notice thereof from
UNIVERSITY; or


 


(b)           LICENSEE shall cease to carry out
its business, become bankrupt or insolvent, apply for or consent to the appointment
of a trustee, receiver or liquidator of its assets or seek relief under any law
for the aid of debtors.


 


11.2         LICENSEE may terminate this
Agreement upon SIX (6) months prior written notice to UNIVERSITY and upon
payment of all amounts due UNIVERSITY through the effective date of
termination.


 


11.3         Upon termination of this Agreement,
neither party shall be released from any obligation that matured prior to the
effective date of such termination. LICENSEE and any sublicensee may, however,
after the effective date of such termination, sell all products under the
TECHNOLOGY which LICENSEE produced prior to the effective date of such
termination, provided that LICENSEE shall pay to UNIVERSITY and NASA the
royalties thereon as required by Article 4 hereof and submit the reports
required by Article 5 hereof.


 

















 


ARTICLE
12 - NOTICES


 


12.1         Any notice or communication
pursuant to this Agreement shall be sufficiently made or given if sent by
certified or registered mail, postage prepaid, or by overnight courier, with
proof of delivery by receipt, addressed to the address below or as either party
shall designate by written notice to the other party.


 


In the case of UNIVERSITY:


 


Director


Office of Technology Management


University of Pittsburgh


200 Gardner Steel Conference Center


Thackeray & O’Hara Streets


Pittsburgh, PA 15260


 


In the case of LICENSEE:


 


Mr. Pratap Khanwilkar,


President and Chairman


Medquest Products, Inc.


North 300 West, Suite NE 107


Salt Lake City, UT 84103


 


In the case of NASA:


 


Patent Counsel Office


NASA Langley Research Center


Mail Stop 212


Hampton, VA 23681


 


ARTICLE
13 - AMENDMENT, MODIFICATION


 


13.1         This Agreement may not be amended
or modified except by the execution of a written instrument signed by the
parties hereto.


 


ARTICLE
14 - MISCELLANEOUS


 


14.1         The parties acknowledge that this
Agreement sets forth the entire understanding and intentions of the parties
hereto as to the subject matter hereof and supersedes all previous
understandings between the parties, written or oral, regarding such subject
matter.


 


14.2         Nothing contained in this Agreement
shall be construed as conferring upon either party any right to use in
advertising, publicity or other promotional activities any name, trade name,
trademark, or other designation of the other party, including any contraction,
abbreviation, or simulation of any of the foregoing. Without the express
written approval of the other party, neither party shall use any designation of
the other party in any promotional activity associated with this Agreement or
the TECHNOLOGY. Neither party shall issue any press release or make any public
statement in regard to this Agreement without the prior written approval of the
other party. LICENSEE may state in its fund-raising documents, including
business plans and related presentations, that it is licensed by UNIVERSITY
under one or more of the patents and/or applications comprising the TECHNOLOGY,
and LICENSEE may disclose to its potential funders and legal counsel, this
Agreement and its relevant terms as requested or desired by such entities.


 


14.3         If one or more of the provisions of
this Agreement shall be held invalid, illegal or unenforceable, the remaining
provisions shall not in any way be affected or impaired thereby. In the event
any provision is held illegal or unenforceable, the parties shall use
reasonable efforts to substitute a valid, legal and enforceable provision
which, insofar as is practical, implements purposes of the provision held
invalid, illegal or unenforceable.


 


14.4         Failure at any time to require
performance of any of the provisions herein shall not waive or diminish a party’s
right thereafter to demand compliance therewith or with any other provision.
Waiver of any default shall not waive 


 

















 


any other default. A party
shall not be deemed to have waived any rights hereunder unless such waiver is
in writing and signed by a duly authorized officer of the party making such
waiver.


 


14.5         LICENSEE acknowledges that
UNIVERSITY is free to publish the results of the research activities of its
faculty, staff and students, even though such publication may involve the
PATENT RIGHTS or LICENSE RIGHTS. UNIVERSITY agrees to submit to LICENSEE any
proposed publication or presentation regarding the subject matter specifically
described in the PATENT RIGHTS for prior review by LICENSEE at least sixty (60)
days before its submittal for publication or its presentation. LICENSEE may,
within thirty (30) days after receipt of such proposed publication, request
that such proposed publication be delayed not more than ninety (90) days in
order to allow for protection of intellectual property rights.


 


IN WITNESS WHEREOF, the parties have set their
hands and seals as of the date set forth on the first page hereof.


 


 


	
   

  	
  UNIVERSITY OF PITTSBURGH - OF THE 

  COMMONWEALTH SYSTEM OF HIGHER

  EDUCATION

  
	
   

  	
   

  	
   

  
	
   

  	
  By

  	
  “Jerome Cochran”

  	
   

  
	
   

  	
   

  	
  Jerome Cochran

  	
   

  
	
   

  	
   

  	
  Executive Vice Chancellor

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  MEDQUEST PRODUCTS, INC.

  
	
   

  	
   

  	
   

  
	
   

  	
  By

  	
  “Pratap Khanwilkar”

  	
   

  
	
   

  	
   

  	
  Pratap Khanwilkar

  	
   

  
	
   

  	
   

  	
  President

  	
   

  



 

















 


EXHIBIT A TO LICENSE AGREEMENT BETWEEN


MEDQUEST PRODUCTS, INC.


AND UNIVERSITY OF PITTSBURGH


 


Patent Rights 


 


1.             Magnetically Suspended Fluid Pump and Method of Making Same. U.S. Patent
No. 6,015,272 issued January 18, 2001.


 


2.             Magnetically Suspended Miniature Fluid Pump and Method of Designing
Same. U.S. Patent Application no. 09/398,878 filed September 20, 1999. Allowed.
Issue fee paid.


 


3.             An Improved Blood Pump Having a Magnetically Suspended Rotor. U.S.
Patent Application No. 60/142,354 filed July 1, 1999.


 


4.             Blood Pump Having a Magnetically Suspended Rotor. U. S. Patent No.
6,244,835 issued June 25, 2001.


 


5.             Blood Pump Having a Magnetically Suspend Rotor. U.S. Patent Application
09/841,223 filed April 24, 2001.


 


6.             Patent Cooperation Treaty and Foreign Filings corresponding to Items 1
through 5 above.


 


License Rights 


 


1.             “Speed Control System for Implanted Blood Pumps,” U.S. Patent No.
5,888,242 (filed November 1, 1996)


 


2.             U.S. Patent No. 6,066,086 Speed control system for implanted blood pumps
(filed March 4, 1998),


 

















 


Lead Time Pmis
For Pump Build


 


	
   

  	
   

  	
   

  	
   

  	
  QTY/Pump

  	
   

  	
  QTY needed

  	
   

  	
  In Stock

  	
   

  	
  On Order

  	
   

  	
  Place Order

  	
   

  	
  Est. Delivery

  	
   

  
	
  8800-0003

  	
   

  	
  ALIGNMENT PIN

  	
   

  	
  2

  	
   

  	
  16

  	
   

  	
  100

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  8800-7000

  	
   

  	
  SCREW, SOCKET HD CAP (#2-56 X 3/16”, 6AL-4V TITANIUM)

  	
   

  	
  26

  	
   

  	
  208

  	
   

  	
  150

  	
   

  	
  150

  	
   

  	
   

  	
   

  	
  27-Feb

  	
   

  
	
  0807-0025

  	
   

  	
  BACK COVER

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  18

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  8800-0001

  	
   

  	
  O-RING, BACK COVER OUTER

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  50

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0006

  	
   

  	
  SKEWER ADJUSTMENT SCREW

  	
   

  	
  1

  	
   

  	
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  17

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0026

  	
   

  	
  UPPER HOUSING

  	
   

  	
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  8

  	
   

  	
  5

  	
   

  	
  3

  	
   

  	
   

  	
   

  	
  24-Feb

  	
   

  
	
  0807 -0028-01

  	
   

  	
  PORT ALIGNMENT CLAMP RING (GOLD)

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  12

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0028-02

  	
   

  	
  PORT ALIGNMENT CLAMP RING (BLUE)

  	
   

  	
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  12

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  8800-0015-02

  	
   

  	
  BELLEVILLE WASHER

  	
   

  	
  4

  	
   

  	
  32

  	
   

  	
  55

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0700-0302

  	
   

  	
  SENSOR BOARD, DUAL COIL, PCB ASSEMBLY

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  8

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  1700-0301

  	
   

  	
  SENSOR COIL TERIMINATION, PCB

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  8

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
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  SENSOR BOBBIN

  	
   

  	
  1

  	
   

  	
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  9

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
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  WIRE, COPPER :MAGNET (38 A WG)

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
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  SKEWER

  	
   

  	
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  9

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  2550-0001

  	
   

  	
  SKEWER RADIAL PM RING

  	
   

  	
  4

  	
   

  	
  32

  	
   

  	
  30

  	
   

  	
  17

  	
   

  	
   

  	
   

  	
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  0807-0029

  	
   

  	
  SKEWER PM STACK CLAMP RING

  	
   

  	
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  12

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
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  O-RING, .414 ID X .077 W

  	
   

  	
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  8

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
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  LOWER HOUSING

  	
   

  	
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  3

  	
   

  	
   

  	
   

  	
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  0807-0004

  	
   

  	
  UNIBODY

  	
   

  	
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  0

  	
   

  	
  10

  	
   

  	
   

  	
   

  	
  1 a-Mar

  	
   

  
	
  2550-0005

  	
   

  	
  STATOR MOMENT PM RING

  	
   

  	
  2

  	
   

  	
  16

  	
   

  	
  71

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0005

  	
   

  	
  LOWER VOICE COIL SPACER

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  7

  	
   

  	
   

  	
   

  	
  10

  	
   

  	
  1 a-Mar

  	
   

  
	
  6700-0002-03

  	
   

  	
  WIRE, COPPER MAGNET (28 A WG)

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  6700-0002-01

  	
   

  	
  WIRE, COPPER MAGNET (25 A WG)

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  6700-0002-02

  	
   

  	
  WIRE, COPPER MAGNET (26 A WG)

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0008

  	
   

  	
  ROTOR SHELL

  	
   

  	
  1

  	
   

  	
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  0

  	
   

  	
  8

  	
   

  	
   

  	
   

  	
  24-Feb

  	
   

  
	
  0807-0009

  	
   

  	
  IMPELLER HUB

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  13

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0013

  	
   

  	
  MOTOR RETURN IRON

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  5

  	
   

  	
  5

  	
   

  	
   

  	
   

  	
  10-Mar

  	
   

  
	
  2550-0003

  	
   

  	
  MOTOR PM SEGMENT

  	
   

  	
  12

  	
   

  	
  96

  	
   

  	
  145

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0002

  	
   

  	
  VOICE COIL IRON WEDGE

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  8

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  2550-0004

  	
   

  	
  ROTOR MOMENT PM RING

  	
   

  	
  2

  	
   

  	
  16

  	
   

  	
  22

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  2550-0002

  	
   

  	
  ROTOR RADIAL PM RING

  	
   

  	
  4

  	
   

  	
  32

  	
   

  	
  73

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0075

  	
   

  	
  PERC CABLE HOUSING

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  9

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  



 

















 


	
  0807-0074 

  	
   

  	
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  8

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  6700-0001 

  	
   

  	
  PERCUTANEOUS CABLE 

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0073 

  	
   

  	
  PERC CABLE HOUSING SEAL 

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0072 

  	
   

  	
  PERC CABLE BEND RELIEF 

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  8

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0071 

  	
   

  	
  PERC CABLE CRIMP SLEEVE 

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  27

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  2185-0019 

  	
   

  	
  CONNECTOR,/INLINESTRAIGHTPLUG 

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  1700-0303 

  	
   

  	
  MOTOR COIL BOARD, PCB 

  	
   

  	
  1

  	
   

  	
  8

  	
   

  	
  8

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  0807-0087 

  	
   

  	
  MOTOR COIL 

  	
   

  	
  9

  	
   

  	
  72

  	
   

  	
  90