EX-10.20 Addendum to Asset Contribution Agreement



 





EXHIBIT 10.20




ADDENDUM TO ASSET CONTRIBUTION AGREEMENT




THIS ADDENDUM TO ASSET CONTRIBUTION AGREEMENT (this “Agreement”) is made and entered into effective
the 28th day of December, 2006 (the “Effective Date”), by and among Z-KAT, INC., a Florida
corporation (“Z-KAT”), and MAKO Surgical Corp., a Delaware corporation (“MAKO,” with each of Z-KAT
and MAKO being referred to as a “Party” and, together, as the “Parties.”)



RECITALS




The following recitals for the basis hereof, are hereby acknowledged to be true by the Parties, and
are hereby incorporated herein by this reference:




	A.	 	The parties entered into that certain Asset Contribution Agreement on December 17, 2004 (the
“ACA”) attached hereto as Exhibit R.A. Pursuant to the ACA, certain intangible
property rights were transferred from Z-KAT to MAKO.
	 
	B.	 	Pursuant to the ACA, Z-KAT granted a license and certain sublicenses to MAKO pursuant to the
License Agreement attached hereto as Exhibit R.B. (the “Z-KAT/MAKO 2004 License”).
	 
	C.	 	On March 24, 2006, the parties entered into another license agreement wherein MAKO granted
Z-KAT a License as described therein (the “MAKO/Z-KAT 2006 License”) attached hereto as
Exhibit R.C.
	 
	D.	 	Pursuant to rights granted by Z-KAT to MAKO pursuant to the Z-KAT/MAKO 2004 License, MAKO has
exercised its rights to prosecute, control and maintain all Z-KAT Licensed Patents and
Licensed IP Rights (as such terms are defined in the Z-KAT/MAKO 2004 License).
	 
	E.	 	The parties now seek to clarify and amend as specifically indicated herein the ACA and
certain of these license agreements on the terms and conditions described herein.





     NOW THEREFORE, for and in consideration of the premises, the mutual representations,
warranties and covenants herein contained and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties agree as follows:



AGREEMENT




01. CERTAIN DEFINITIONS




As used herein, the following terms shall have the following meanings:



     01.1 “Affiliate” of a Party shall mean an entity directly or indirectly Controlling,
Controlled by or under common Control with that Party.



     01.2 “Change of Control” shall mean, with respect to a Party, a transaction or the last of a
series of transactions that results in: (a) a person or entity obtaining Control of, directly or


 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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indirectly, the Party; (b) a merger, consolidation, amalgamation, or other combination of the
Party with a third party in which the Party is not the surviving corporation or which results in a
new person or entity directly or indirectly obtaining Control of the Party; (c) or an acquisition
of the Party as a subsidiary of a third party; or (d) transfer, assignment or sale of substantially
all of the assets of the Party to which this Agreement pertains.



     01.3 “Control” shall mean the ownership or control, directly or indirectly, of more than fifty
percent (50%) of all of the voting power of the shares (or other securities or rights) entitled to
vote for the election of directors or other governing authority, of an entity.



     01.4 “Qualified IPO” shall mean an underwritten public offering of shares of MAKO in
connection with which the aggregate net proceeds to MAKO equals or exceeds $25,000,000.



1. LICENSE RIGHTS AND OBLIGATIONS




     1.1 MAKO LICENSE RIGHTS



          (a) Marker
License. Z-KAT and Dr. George Allen entered into that certain license agreement dated
August 31, 2001, which Allen subsequently assigned to Marker LLC, a copy of which is attached hereto as
Exhibit 1.1(a) (the “Marker License”). Notwithstanding statements to the contrary in Section 4.4 of
the Z-KAT/MAKO 2004 License, the Minimum Royalty due under the Marker (and defined in Section 1.18
therein) will be treated as a Minimum Royalty under the ZKAT/MAKO 2004 License (and defined in
Section 4.4 therein), such that MAKO shall be granted the right and shall assume the obligation to
make payment of such Minimum Royalty pursuant to the terms and provisions of Section 4.4 of the
ZKAT/MAKO 2004 License, including, without limitation, the obligation to make any Minimum Royalty
payment under the Marker License unpaid as of the Effective Date.



          (b) IGN
and Medtronic Licenses. Z-KAT and Image Guided Neurologics,
Inc. entered into a sublicense Agreement on October 12, 2004 where Z-KAT granted a license to IGN with respect to the
Marker License, a copy of which is
attached hereto as Exhibit 1.1(b)(A) (the
“IGN Sublicense”). Z-KAT, Surgical
Navigation Technologies, Inc., Saint Louis University and
Cleveland Clinic Foundation entered into a license agreement on February 9, 2001, a copy of which is attached hereto as
Exhibit 1.1(b)(B) Medtronic License. Z-KAT hereby assigns to MAKO all of its rights to receive any
royalty payments of any kind accrued (but not paid) as of the Effective Date and accruing
thereafter under the IGN Sublicense and the Medtronic License (together, the “Z-KAT In-Licenses”)
until either the First True Up or Final True Up (each as defined and described below), as
applicable.



          (c) Biomet. For as long as MAKO is, pursuant to the Z-KAT/MAKO 2004 License, paying all
Prosecution Costs and Maintenance Costs (as defined and described in the Z-KAT/MAKO 2004 License)
with respect to any particular item of Licensed IP (as defined in the Z-KAT/MAKO 2004 License)
Z-KAT hereby assigns to MAKO its rights to receive payments directly
from Biomet under the Biomet
Sublicense (attached hereto as Exhibit 1.1(c)) with respect to that particular item of
Licensed IP. Z-KAT shall make reasonable efforts in cooperating with MAKO to arrange for MAKO to
bill Biomet directly for such payments.



          (d) MAKO Right to Assign License from Z-KAT. Notwithstanding any other term or
provision to this Agreement, the ACA or the Z-KAT/MAKO 2004 License,



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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MAKO shall have the right to assume any License, if it can be assigned as of right, without
loss of Rights, and to take assignment of any Licensed Patent (as such terms are defined in the
Z-KAT/MAKO 2004 License) owned or held by Z-KAT in the event that Z-KAT’s actions or inactions
could reasonably result in forfeiture of such License or Licensed Patent, provided that the
possibility of forfeiture is not caused or does not arise from, in whole or in part, MAKO’s failure
to perform its obligations or observe conditions placed on it pursuant to this Agreement or any
other agreement with Z-KAT; and further provided that MAKO grants concurrently with the assignment
an exclusive, transferable, irrevocable, non-terminable license to Z-KAT, with the right to grant
sub-licenses, in the Z-Kat Field (as defined in the Z-KAT/MAKO 2004 License) as to any assigned
License or Licensed Patent. For the avoidance of doubt, an Assertion (as defined below) does not,
by itself, constitute an action that could reasonably result in forfeiture of a License or Licensed
Patent.



          (e) Termination of MAKO License. Including any other remedies provided for by law,
this Agreement or otherwise, MAKO shall be entitled to terminate the MAKO/Z-KAT 2006 License upon
the occurrence of a breach of this Agreement that is explicitly identified below as a “Material
Breach” and not cured within thirty (30) days of its occurrence. No breach of this Agreement, even
if it is with respect to a material obligation or condition of this Agreement, will give rise to a
right to terminate the MAKO/Z-KAT 2006 License unless it is explicitly identified in this Agreement
as a “Material Breach.”



          (f) No Change to Prior License Rights. Except to the extent expressly stated herein,
nothing in this Agreement is intended to amend or alter any of the existing agreements between
Z-KAT and MAKO. For the avoidance of doubt, except to the extent expressly stated herein, MAKO
shall continue to have the same rights with respect to the Z-KAT/MAKO 2004 License as it enjoyed
prior to the Effective Date with respect to the Z-KAT Licensed Patents and the Licensed IP Rights.



     1.2 Z-KAT License Rights.



          (a) Assertion. Z-KAT will, within a reasonable time prior to proceeding with a threat
to enforce or with action to enforce (an “Assertion”) any of the Licensed IP Rights in the Z-KAT
Field (as those terms are defined in the Z-KAT/MAKO 2004 License), either:



               (i) present MAKO in writing a binding engagement arrangement with competent counsel, covering
the contemplated Assertion and reasonably adequate to ensure proper prosecution and defense of
litigation arising from such Assertion. For the avoidance of doubt, an engagement arrangement on
terms substantially similar to those set forth on Exhibit I.2(a)(i) attached hereto shall
constitute an adequate arrangement; or



               (ii) deposit
$1,000,000, either in cash or MAKO Common Stock owned by Z-KAT (in the event
MAKO
stock is used, an independent appraisal must accompany such stock certifying the value as of the
date of deposit) with an independent escrow agent, pursuant to an escrow agreement requiring
transfer from the deposit to MAKO to pay for MAKO’s reasonable attorneys fees and expenses actually
incurred by MAKO, should MAKO elect to take



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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over such Assertion from Z-KAT in the event Z-KAT is unable or unwilling to conduct proper
prosecution and defense of litigation arising from such Assertion.



               (iii) Material Breach. An Assertion made by Z-KAT that is not in compliance with
this
Section 1.2(a) shall constitute a Material Breach by Z-KAT.



          (b) Rights with Respect to MAKO.



               (i) Accounting. Z-KAT may request and MAKO shall provide upon such reasonable
request, an accounting for payments made by MAKO pursuant to rights to make such payments granted
by Z-KAT to MAKO hereunder.



               (ii) Termination or Reimbursement. If MAKO does not make any payment as provided
for
hereunder with respect to a license or sublicense, Z-KAT may make such payment, seeking
reimbursement from MAKO and terminating MAKO’s right to make such payments directly, in addition to
any other rights it may have.



     1.3 True Up Payments.



          (a) Beginning upon the first anniversary of the date of payment of the final minimum royalty
payments due to MAKO under the IGN Sublicense and for each year thereafter in which MAKO is
making royalty payments of any kind under the Marker License, Z-KAT shall be paid (within thirty
days) by MAKO fifty percent (50%) of the positive difference, if any, between (i) the running royalty payments
received by MAKO from the Z-KAT In-Licenses for the preceding year and (ii) any minimum royalty
payments made by MAKO (less any running royalties due under the Marker License from activities of
MAKO and its sublicensees) under the Marker License (each an “Excess Royalty Payment”).



          (b) At
the end of the Initial Royalty Period as defined in the Marker License, MAKO shall
calculate the difference between (i) all amounts received by MAKO under the Z-KAT In-Licenses and
(ii) the sum of all payments made by MAKO under the Marker License (less any running royalties due
under the Marker License from activities of MAKO and its sublicensees) and the sum of all Excess
Royalty Payments made by MAKO to Z-KAT (the “First True Up”). If the First True Up is a positive
number Z-KAT shall be entitled to payment of the amount of the First True Up (within thirty days)
and the assignment of royalties from the Z-KAT In-Licenses pursuant to Section 1.1(b) shall
terminate. If the First True Up is a negative number, MAKO shall be entitled to all royalties of
any kind under the Z-KAT In-Licenses, which royalties shall be applied against the First True Up
number as received by MAKO until such time as the First True Up number has been reduced to zero
(the “Final True Up”), at which point the assignment of royalties from the Z-KAT In-Licenses
pursuant to Section 1.1(b) shall terminate.



2. CERTAIN OBLIGATIONS




     2.1 Voyager Payment. MAKO hereby purchases from Z-KAT and Z-KAT hereby sells to MAKO
the Voyager Parts owned by Z-KAT, as set forth on Schedule 2.1 (specifically excluding the
actual Voyager System located in Lakewood, Ohio) attached hereto for
$30,000 (the “Voyager
Payment”).



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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     2.2 Z-KAT Loan. MAKO hereby loans Z-KAT (the “Loan”) the Loan Amount. The Loan
Amount is calculated as follows: (i) the amount required by Z-KAT to pay all anticipated accounts
payable as of the Effective Date as set forth on Schedule 2.2 attached hereto (the “Z-KAT
Payables”); less (ii) twenty thousand dollars ($23,000.00), which is Z-KAT’s anticipated
cash balance just prior to the Effective Date.



          (a) Terms. The Loan shall be evidenced by a Note, in a form identical to that
attached as Exhibit 22 (the “Note”). The Note shall



               (i) accrue interest at a reasonable rate;



               (ii) be payable as a first priority lien against any cash proceeds to Z-KAT or any Affiliate
from a Payment Event, which shall be any or all of the following:



                    (1) receipt of cash (tender of which is unconditioned by payor)
by Z-KAT or any Affiliate as a
result of an Assertion or in consideration for licenses granted or in connection with any claim of
infringement of any intellectual property, less reasonable expenses (attorneys fees, costs,
etc.) actually incurred in connection with the claim and payable to third parties;



                    (2) commercial operations by Z-KAT or any Affiliate (other than
the sale of Z-KAT’s inventory
of fiducial markers), including the contemplated sale of the Lakewood Voyager System;



                    (3) aggregate net proceeds (amounts received less costs and
expenses) in any calendar quarter
from the sale of inventory of fiducial markers;



                    (4) investment or loan into Z-KAT or an Affiliate (provided
however that Z-KAT shall be
entitled to obtain up to $500,000 in cash solely in the form of equity investment or debt, which
shall be used to fund Z-KAT (or an Affiliate) and which shall be exempt from payment towards the
Note);



                    (5) the sale of any MAKO stock held by Z-KAT or any Affiliate; or



                    (6) liquidation/winding up of Z-KAT or any Affiliate.



               (iii) Security Agreement. MAKO, in its sole discretion, may require Z-KAT to
execute
a security agreement with respect to MAKO’s interest in Z-KAT assets to secure a Payment Event.



               (iv) Material Breach. Failure to tender the entire proceeds of a Payment Event to
MAKO upon the occurrence of such Payment Event or Z-KAT’s failure to tender any payment against the
Note when due shall constitute a Material Breach of this Agreement.



3. AGREEMENTS WITH RESPECT TO MAKO EMPLOYEES. Z-KAT agrees that the following restrictions
shall apply to Z-KAT and every Affiliate of Z-KAT as well as to all


  





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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MAKO employees employed as of the Effective Date or any time thereafter (each a “MAKO Employee”).



     3.1 General Prohibitions.



          (a) Z-KAT shall not permit a MAKO Employee to be an employee, officer or director of Z-KAT
during such MAKO Employee’s employment and for a six (6) month period following the termination of
such employment with MAKO for any reason (the “Restricted Period”).



          (b) Z-KAT shall not permit a MAKO Employee to provide technical, operational or commercial
services of any kind to Z-KAT (the “Restricted Activities”), except as allowed for under Section
3.2. Notwithstanding the foregoing, nothing contained in this Section 3.1 shall be construed to
limit the statutory and contractual informational rights of any Z-KAT shareholder who is also a
MAKO Employee, nor shall any informal, conversational interactions between Z-KAT and MAKO personnel
be regarded as the rendition of services prohibited hereunder.



          (c) MAKO may require any MAKO Employee to execute an employment agreement or covenant wherein
such MAKO Employee agrees to refrain from the Restricted Activities during the Restricted Period.



          (d) The restrictions set forth in this Section 3.1, including covenants made by MAKO employees
with MAKO restricting them from employment with, or providing services to, Z-KAT shall become void
upon a Change of Control transaction or a Qualified IPO.



     3.2 Limited and Conditioned Consulting Services.



          (a) No MAKO Employee shall be required to render services of any kind to Z-KAT.



          (b) Any MAKO Employee may provide reasonable consultation services to Z-KAT to support any
Assertion or intellectual property licensing endeavor, to provide administrative services, or to
provide Z-KAT personnel with understanding of technical information licensed by MAKO to Z-KAT.



          (c) In a case where a MAKO Employee agrees to provide consultation services to Z-KAT, such
services shall be conditioned as follows (the “Consulting Conditions”):



               (i) rendered only following written notice to and written approval (not to be unreasonably
withheld) by an independent committee of the MAKO Board of Directors;



               (ii) rendered only at such times and under such conditions so as not to have a negative impact
or interference upon MAKO’s business and/or the performance of such MAKO Employee’s duties on
behalf of MAKO (e.g. not rendered during regular business hours); and



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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               (iii) limited to providing consultation, but in no event shall such MAKO Employee create
intellectual property in any form on behalf of Z-KAT, it being expressly agreed by the Parties that
all intellectual property conceived of or developed by any MAKO Employee during the term of his
employment with MAKO shall be and is the property of MAKO (as per the IP assignment covenant
required of every MAKO employee) regardless of the extent to which such intellectual property is
conceived of or developed in connection with consultation by such MAKO Employee on behalf of Z-KAT.



     3.3 Material Breach. In the event that MAKO reasonably demonstrates to Z-KAT that
Z-KAT or a MAKO Employee has violated this Section 3, then such violation shall constitute a
Material Breach.



4. AGREEMENTS WITH RESPECT TO THE TRANSITION OF Z-KAT’S BUSINESS.



     4.1 As of the Effective Date, all of the following shall apply:



          (a) Z-KAT shall establish and maintain a place of business separate and distinct from the MAKO
business address;



          (b) Z-KAT shall not share common workspace or facilities with MAKO;



          (c) The Z-KAT website shall be removed from the MAKO server;



          (d) Z-KAT shall allow, subject to reasonable obligations of confidentiality, MAKO full,
unrestricted access (at MAKO’s expense) to its corporate and financial records (and their
custodians and the professionals managing the same), it being understood by Z-KAT that Z-KAT’s
potential, purported status as a predecessor company to MAKO may require auditing and public
disclosure of the same as MAKO contemplates the possibility of entering the public equity markets



     4.2 For the period commencing as of the Effective Date and concluding no more than one hundred
twenty (120) thereafter (the “Transition Period”), each of Z-KAT and MAKO agree to make best
efforts to completely transfer all business activities (e.g., administrative (legal and accounting)
and commercial (sale of markers)) to Z-KAT personnel (the “Transition”), subject to the following
terms, conditions and restrictions:



          (a) Applicable MAKO personnel shall provide reasonable services at no charge (but subject to
the Consulting Conditions) to assist during the Transition Period;



          (b) Z-KAT will remove all assets and inventory from MAKO’s facility by the conclusion of the
Transition Period.



          (c) Upon reasonable request during the Transition, but in any event before the end of the
Transition Period, MAKO will deliver to or cause to be delivered to Z-KAT, at Z-KAT’s written
request, any or all of the following requested documents:




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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               (i) all financial and legal records relating to Z-KAT in the possession of MAKO and any copies
of all technical documentation owned by Z-KAT in the possession of any of MAKO’s employees,
consultants and advisors (including all information originally provided by Z-KAT to MAKO); and



               (ii) copies of all information (documents, software, etc.) with respect to all Improvements
(as defined in the Z-KAT/MAKO 2004 License), Licensed IP Rights and Technical Information (as those
terms are defined in the Z-KAT/MAKO 2006 License), or other properties that are licensed to Z-KAT.



          (d) During and for a reasonable time following the Transition Period, KAT will have reasonable
access to MAKO personnel (subject to the Consulting Conditions) for purposes of assisting Z-KAT
personnel in understanding the documentation referenced in this Section 4.2.



          (e) Z-KAT may periodically request delivery, and MAKO will delivery or cause to be delivered,
any new information (documents, software, etc.) first created after delivery of information
pursuant to section 4.2(c)(ii) with respect to all Improvements (as defined in the Z-KAT/MAKO 2004
License), Licensed IP Rights and Technical Information (as those terms are defined in the
Z-KAT/MAKO 2006 License), or other properties that are licensed to Z-KAT.



5. FURTHER ACTIONS. From time to time, at the request of any Party hereto, the other Party shall
execute and deliver (or shall cause execution and delivery, by an Affiliate or otherwise) such
instruments and take such action (or cause such action to be taken, by an Affiliate or otherwise)
as may be reasonably requested to evidence the transactions contemplated hereby.



     5.1
 EBI/Biomet IP Asset Purchase. The Parties acknowledge and agree that MAKO has been in
discussions with EBI and/or Biomet Manufacturing Corp. (along with any
implicated Affiliate, EBI/Biomet) concerning the
purchase of certain intellectual property assets originally
transferred from Z-KAT to EBI/Biomet as part
of the transaction that included the Biomet License. The Parties agree and covenant that they shall
cooperate in good faith after the Effective Date to endeavor to consummate the purchase of such
intellectual property assets such that each will retain rights in its applicable field and that
each Party will enjoy rights in such intellectual property assets consistent with those
described in the Z-KAT/MAKO 2004 License.



6. REPRESENTATIONS. Each of Z-KAT and MAKO does hereby represent and warrant to the other
that the execution, delivery and performance of this Agreement and all other documents executed or
to be executed pursuant to this Agreement by such Party (a) have been duly authorized by all
necessary corporate action on the part of such Party; and (b) do not conflict in any material
respect with any of such Party’s charter, bylaws or other controlling corporate documents.



7. GENERAL PROVISIONS.



     7.l GOVERNING LAW; INTERPRETATION; SECTION HEADINGS. THIS AGREEMENT SHALL BE GOVERNED BY AND
CONSTRUED AND ENFORCED IN ACCORDANCE WITH THE LAWS OF THE STATE OF FLORIDA, WITHOUT REGARD TO




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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CONFLICT-OF-LAWS RULES AS APPLIED IN FLORIDA. THE SECTION HEADINGS CONTAINED HEREIN ARE FOR
PURPOSES OF CONVENIENCE ONLY, AND SHALL NOT BE DEEMED TO CONSTITUTE A PART OF THIS AGREEMENT OR TO
AFFECT THE MEANING OR INTERPRETATION OF THIS AGREEMENT IN ANY WAY.



     7.2 Expenses. Other than as specifically set forth herein to the contrary each Party
shall bear and pay, without any right of reimbursement from any other Party, all costs, expenses
and fees incurred by it or on its or her behalf incident to the preparation, execution and delivery
of this Agreement and the performance of such Party’s obligations hereunder, whether or not the
transactions contemplated in this Agreement are consummated, including, without limitation, the
fees and disbursements of attorneys, accountants and consultants employed by such Party, and shall
indemnify and hold harmless the other Party from and against all such fees, costs and expenses.



     7.3 Notices. All notices and other communications hereunder shall be in writing and
shall be deemed to have been duly given when personally delivered, or forty-eight (48) hours after
sent by United States registered mail, first-class, postage prepaid or by confirmed facsimile
addressed to either Party at its address appearing below or otherwise provided in writing to the
other Party.



     7.4 No Partnership. Neither this Agreement, nor any terms and conditions contained
herein, will be deemed or construed to create a partnership, joint venture, other form of business
enterprise or association or cooperative arrangement, agency relationship, or franchise
relationship between the parties or otherwise to create any liability for either Party whatsoever
with respect to the indebtedness, liabilities, and obligations of the other Party.



     7.5 Severability. Should any provision of this Agreement be held unenforceable or
invalid, then the parties hereto agree that such provision shall be deemed modified for purposes of
performance of this Agreement to the extent necessary to render it lawful and enforceable, or if
such a modification is not possible without materially altering the intention of the parties
hereto, then such provision shall be severed herefrom for purposes of performance of this
Agreement.



     7.6 Entire Agreement. This Agreement and the Exhibits and Schedules hereto set forth
the entire agreement and understanding of the parties hereto with respect to the transactions
contemplated hereby and supersedes all prior agreements, arrangements and understandings related to
the subject matter hereof. Any conflict between this Agreement and an Exhibit shall be resolved in
favor of this Agreement. Unless otherwise defined herein, capitalized terms shall have the same
meaning as described in the ACA.



     7.7 Force Majeure. Neither Party will be in default or otherwise liable for any delay
in or failure of its performance under this Agreement if such delay or failure arises by any reason
beyond its reasonable control, including any act of God, any acts of the common enemy, the
elements, earthquakes, floods, fires, epidemics, riots, failures or delay in transportation or
communications, or any act or failure to act by the other Party or such other Party’s employees,
agents, or independent contractors or representatives; provided, however, that lack of funds will
not be deemed to be a reason beyond a Party’s reasonable control. The parties will promptly




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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inform and consult with each other as to any of the above causes that in their judgment may or
could be the cause of a delay in the performance of this Agreement.



     7.8 Legal Costs. If any action is brought to enforce or interpret the terms of this
Agreement (including through arbitration), the prevailing Party will be entitled to reasonable
legal fees, costs, and disbursements in addition to any other relief to which such Party may be
entitled.



     7.9 Binding Effect; Assignment. All the terms, provisions, covenants and conditions
of this Agreement shall be binding upon and inure to the benefit of and be enforceable by the
parties hereto and their respective heirs, executors, administrators, representatives, successors
and assigns. This Agreement and the rights and obligations of the parties hereto shall not be
assigned or delegated by any Party hereto without the prior written consent of the other parties
hereto, provided however, that this Agreement is assignable to any Affiliate of Party or pursuant
to an event constituting a Change of Control, provided that such assignment is expressly
conditioned on the assignee being subject to the terms and conditions of this Agreement.



     7.10 No Additional Obligations. Unless specifically set forth herein, nothing in this
Agreement shall be construed to require any payment or obligation pursuant to a license or
sublicense that is not already specifically required by such license or sublicense.



     7.11 Execution and Delivery; Counterparts. A facsimile, telecopy or other
reproduction of this Agreement may be executed by either Party hereto and such execution and
delivery shall be considered valid, binding and effective for all purposes. At the request of
either Party the other Party shall execute an original of this Agreement as well as any facsimile,
telecopy or other reproduction hereof. This Agreement may be executed simultaneously in
counterparts, each of which shall be deemed an original, but all of which together shall constitute
one and the same instrument.



[SIGNATURE PAGE FOLLOWS]


 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




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IN WITNESS WHEREOF, each Party has caused this Agreement to be executed by its duly authorized
representatives on the respective dates entered below.



	 	 	 	 	 
	 	Z-KAT, Inc.

1940 Harrison Street, Suite 300, Hollywood, FL 33020

 	 
	 	By:  	/s/  Christopher Dewey
 	 
	 	 	Name:  	Christopher C. Dewey 	 
	 	 	Title:  	CEO
 	 
	 	 	Date: 	12/28/2006 	 
	 
	 	MAKO Surgical Corp.

2555 Davie Road, Ft. Lauderdale, FL 33317

 	 
	 	By:  	/s/ Maurice Ferré
 	 
	 	 	Name:  	Maurice Ferré 	 
	 	 	Title:  	President and CEO
 	 
	 	 	Date:  	12/28/2006 	 
	 



Attached Schedules & Exhibits




Schedule 2.1 Voyager Parts

Schedule 2.2 Z-KAT Accounts Payable

Exhibit 1.2(a)(i) Sample Engagement Letter

Exhibit 2.2 Note




Appended Exhibits





Exhibit
R.A. Asset Contribution Agreement

Exhibit R.B. Z-KAT/MAKO 2004 License

Exhibit R.C. MAKO/Z-KAT 2006 License

Exhibit 1.1(a) Marker License

Exhibit 1.1(b)(A) IGN Sublicense

Exhibit 1.1(b)(b)(B) Medtronic License

Exhibit 1.1(c) Biomet License


 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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Schedule 2.1 Voyager Parts




	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	Extended	 
	 	Quantity	 	 	Description	 	 	Unit Cost	 	 	Cost	 
	 	 	7	 	 	 	Voyager Navigation Carts w/isolation transformer

	 	 	$942.86
	 	 	$6.600.00	 
	 	 	3	 	 	 	Voyager Navigation Carts w/isolation transformer

(non-satable quality)

	 	 	$0.00
	 	 	$0.00	 
	 	 	3	 	 	 	NEC Touchscreen LCD Monitors

	 	 	$500.00
	 	 	$1,500.00	 
	 	 	6	 	 	 	NEC LCD Monitors (non touchscreen)

	 	 	$425.00
	 	 	$2,550.00	 
	 	 	9	 	 	 	P4 Digitizer Cameras

	 	 	$1,933.33
	 	 	$17,400.00	 
	 	 	8	 	 	 	Digitizer Pedestal Stands

	 	 	$243.75
	 	 	$1,950.00	 
	 	 	TOTAL	 	 	 	 

	 	 	 
	 	 	$30,000.00	 
	 





 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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Schedule 2.2 Z-KAT Accounts Payable




	 	 	 	 	 
	Description	 	Amount	 
	Dr. Allen Consulting Fee for 2005
	 	 	35,000	 
	Dr. Allen Consulting Fee for 2006
	 	 	35,000	 
	Marc Hubbard Legal Fees
	 	 	23,500	 
	Foley & Lardner LLP
	 	 	19,307	 
	Wasserstrom Weinreb & Wealcatch PL
	 	 	7,500	 
	Stryker — Cranial Markers
	 	 	28,400	 
	 
	 	 	 	 
	 
	 	 	 
	Total Liabilities
	 	 	148,707	 





 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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Exhibit 1.2(a)(i) Sample Engagement Letter




October 27, 2005




General Counsel

Z-KAT, Inc.

2901 Simms St.

Hollywood, FL 33020





			
	           Re:	 	Representation concerning current and future United States Patents assigned to Z-KAT,
Inc.





Dear:




     As we discussed, Z-KAT, Inc. (hereinafter “Z-KAT” or “you”) currently owns or controls certain
patents and patent applications listed on the attached Exhibit A (TO BE COMPLETED). During the
term of this Agreement, Z-KAT may acquire additional patents and patent applications (collectively
hereinafter “the Z-KAT Patents”). Z-KAT has reason to believe that certain entities and/or
individuals may be infringing on one or more of the Z-KAT Patents now or in the future. You have
requested that LAW FIRM represent Z-KAT (the “Representation”) by (1) conducting a preliminary
investigation in an effort to evaluate the infringement and the merits of any such claims (2) if
LAW FIRM concludes after completing its preliminary investigation that LAW FIRM is willing to incur
the risk of pursuing possible claims on Z-KAT’s behalf; then LAW FIRM will assert and pursue claims
on Z-KAT’s behalf for patent infringement and possibly other causes of action against parties for
infringement of the Z-KAT Patents. Therefore, LAW FIRM has agreed to undertake the Representation
subject to and in accordance with the terms, provisions and conditions of this letter agreement.
For convenience, accused infringers are herein sometimes called the “Defendants,” and the subject
of the Representation is herein called the “Matter.”



     Our acceptance of the Representation becomes effective upon your execution and return of the
enclosed copy of this letter (the “Effective Date”). Your claims and causes of action in
connection with the Matter are herein called “Client Claims.” Unless otherwise provided herein, the
Representation may include conducting analysis of the patents and related documents, analyzing the
systems you contend infringe the patent(s), handling licensing (if any), settlement negotiations
(if any), drafting legal documents relating to granting of licenses or settlement with any
Defendant, pretrial investigation and preparation, presentation and defense of applicable motions
(if any), mediation (if any), trial (if any), prosecution or defense of any appeals (if any),
retrial if required as a consequence of any appeal, and prosecution of legal proceedings to
endeavor to collect any judgment obtained in connection with the Matter.



SECTION 1 Terms of Engagement




     This letter sets out the terms of our engagement in the Representation. Certain of those
terms are included in the body of this letter, and additional terms are contained in the attached
document entitled Additional Terms of Engagement. That document is expressly incorporated into
this letter, and it should be read carefully. The execution and return of the enclosed copy of
this


 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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letter constitutes an unqualified agreement to all the terms set forth in this letter and in
the attached Additional Terms of Engagement.



     It is understood and agreed that our engagement pursuant to this letter is limited to the
Representation. This letter shall impose no obligation on us to provide legal services other than
those set forth in this letter.



SECTION 2 Our Personnel Who Will Be Working on the Matter




     I will be working on the Matter, and you may call, write, or e-mail me whenever you have any
questions about the Representation. I will be lead counsel in the Matter and will provide you with
regular updates regarding the Representation. Other firm personnel, including firm lawyers and
legal assistants, will participate in the Representation if, in our judgment, their participation
is necessary or appropriate. As soon as those individuals are identified, we will let you know and
you likewise may communicate with them.



SECTION 3 Preliminary Investigation and Discovery in Assisting With the Licensing and Any
Litigation



     As described above, the first stage of the Representation will consist of a preliminary
analysis and investigation to be conducted by LAW FIRM. If a lawsuit is filed, discovery of
documents and information will occur from you and from the applicable Defendants. Even though LAW
FIRM anticipates that it will incur substantial costs and expenses including both time of its
attorneys and other personnel and Other Charges (as hereinafter defined) in the process of
conducting such preliminary analysis, assisting with licensing, and investigation and discovery in
any lawsuit that may be filed, LAW FIRM has informed you that such preliminary analysis and
investigation and information obtained in licensing or discovery cannot be expected to and will not
provide certainty as to whether the Client Claims have merit. Accordingly, you are hereby informed
and hereby acknowledge that a decision by LAW FIRM based on such preliminary investigation that LAW
FIRM is willing to incur the risk of pursuing the Client Claims, and a decision by LAW FIRM to
continue the Representation after obtaining discovery in a lawsuit against one or more Defendants,
will not constitute the expression of an opinion of LAW FIRM or a representation by LAW FIRM that
the Client Claims have merit. To the contrary, in addition to the uncertainties associated with
any trial of controverted facts or disputed legal issues, additional facts or circumstances not
disclosed by the preliminary investigation or initial discovery, additional investigations,
discovery and testimony by technical experts, and complex legal principles of uncertain application
may result in defeating the Client Claims without regard to LAW FIRM’s preliminary conclusions
based on the preliminary investigation or discovery and without regard to what may have transpired
in any licensing efforts.



     At any time during the course of the Representation, LAW FIRM may notify you in writing that
LAW FIRM, in the exercise of its sole judgment and discretion, has concluded on the basis of the
preliminary analysis and investigation, what it has learned or believes as a result of assisting in
the licensing efforts, or based or discovery in any lawsuit, that LAW FIRM is not willing to incur
the risk and cost of pursuing or continuing to pursue the Client Claims against any of the
Defendants under a contingent fee arrangement as set forth hereinafter in this letter agreement and
that LAW FIRM has elected to terminate the Representation in its entirety. If LAW FIRM informs


 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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you that LAW FIRM has elected to terminate the Representation in its entirety because it is
not willing to incur the risk of pursuing or continuing to pursue the Client Claims against any of
the Defendants, LAW FIRM shall provide a written summary of the basis for the termination. You
agree that the Representation will terminate immediately and agree to execute such documents and
take such action as is necessary to enable LAW FIRM to withdraw from the Representation. In the
event that LAW FIRM withdraws from the Representation as provided for above in this paragraph (as
distinguished from LAW FIRM’s withdrawal from the Representation for cause as provided for in the
Termination section in the attached Additional Terms of Engagement), LAW FIRM will, of course, be
entitled to be paid or retain its percentage contingent fee and payment or reimbursement of Other
Charges incurred to the date of termination of the Representation out of any recoveries with
respect to the Client Claims that are received (either prior to or after termination of the
Representation) under or pursuant to licenses (if any) that have been executed and delivered
between you and one or more Defendants prior to termination of the Representation, settlement
agreements (if any) that have been executed and delivered between you and one or more Defendants
prior to termination of the Representation, and judgments (if any) that have been entered in favor
of you against one or more Defendants prior to termination of the Representation (excluding any
such judgment as to which an appeal is pending at the time of termination of the Representation or
is thereafter perfected) as provided for in the section of this letter entitled “Our Legal Fees and
Other Charges” below (subject, if applicable, to the provisions of paragraph C of such section);
but LAW FIRM will not be entitled to be paid any percentage contingent fee or other fee for
services or payment or reimbursement of Other Charges out of or with respect to any other
recoveries thereafter received by you after termination of the Representation with respect to the
Client Claims (which other recoveries shall not be deemed to be or be included in “Gross Recovery”
for any purpose under this letter agreement). In the event that LAW FIRM withdraws from the
Representation for whatever reason, you will be provided with a copy of all files created or
controlled by LAW FIRM and pertaining to the Matter and/or the Representation, including all files
containing LAW FIRM’s analysis of the Matter, including the Z-KAT Patents, and LAW FIRM shall
remain obligated to undertake any and all actions reasonably necessary to ensure no prejudice comes
to Z-KAT as a result of such withdrawal by LAW FIRM.



SECTION 4 Our Legal Fees and Other Charges




     A. Fees: In consideration for LAW FIRM’s acceptance of the Representation and for the services
to be performed pursuant to this letter and in lieu of an hourly billing arrangement, you agree to
pay a fee to LAW FIRM (contingent upon what is recovered in the Matter by way of license,
settlement, judgment, or otherwise, and subject, if applicable, to paragraph C below) and hereby
assign and transfer a present and undivided interest to LAW FIRM in and to the “Gross Recovery”
and “Net Recovery” as defined below, to be computed as follows:




	 	1.	 	30% of the Net Recovery obtained from any Defendant pursuant to a license or
settlement agreement which is executed and delivered by you and such Defendant where
such Defendant was not sued in any lawsuit filed by LAW FIRM with respect to the Client
Claims;
	 
	 	2.	 	35% of the Net Recovery obtained from any Defendant who has been sued in a
lawsuit filed by LAW FIRM with respect to the Client Claims pursuant to a license or
settlement agreement which is executed and delivered by you and such




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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	 	 	 	Defendant before the date a Notice of Scheduling Conference is received from the
Court in the initial lawsuit filed by LAW FIRM with respect to Client Claims against
any of the Defendants (but not after that date);
	 
	 	3.	 	except as provided in paragraph 2 above or paragraph 5 below,
45% of the Net
Recovery obtained from any Defendant who has been sued in a lawsuit filed by LAW FIRM
with respect to the Client Claims if the Client Claims against such Defendant are
finally resolved by settlement agreement or license agreement before any party files
any document necessary to commence an appeal to higher court of a final judgment
(subject to appeal) entered in the trial court in such lawsuit, or if no appeal is
commenced from a final judgment (subject to appeal) awarding a recovery to you entered
in the trial court in such lawsuit;
	 
	 	4.	 	except as provided in paragraph 5 below, 50% of the Net Recovery obtained
from any Defendant who has been sued in a lawsuit filed by LAW FIRM with respect to the
Client Claims if the Client Claims against such Defendant are not finally resolved
until after any party files any document necessary to commence an appeal of a final
judgment (subject to appeal) entered in the trial court in such lawsuit; and
	 
	 	5.	 	provided that if and when the total Net Recovery obtained from one or more
Defendants (collectively) exceeds $150 million, LAW FIRM’s fee with respect to amounts of the
total Net Recovery obtained from those Defendants or other Defendants (collectively) in
excess of $150 million shall be 35% of the amounts of total Net Recovery in excess of
$150 million (in addition to LAW FIRM’s fee with respect to amounts of Net Recovery up to a
total of $150 million calculated pursuant to paragraphs 1 through 4 above, as applicable),
notwithstanding the provisions of paragraphs 3 and 4 above.





     The applicable percentage fee payable to LAW FIRM as provided above shall be calculated on the
total of the Net Recovery obtained and received from each Defendant. The “Net Recovery” means the
total “Gross Recovery” as hereinafter defined, minus the total of the “Other Charges” as
hereinafter defined. The “Gross Recovery” shall mean a recovery actually obtained and received by
you, or any person or party claiming by, through, or under you, of money or property, real or
personal and tangible or intangible, or any other benefit, by settlement or judgment or otherwise,
on account of any or all of the Client Claims, without deduction of or reduction for “Other
Charges” as hereinafter defined, but subject to the provisions of paragraph C below, if applicable.
Gross Recovery shall include, but not be limited to, royalties or other periodic payments received
under a license or an agreement entered into to settle a dispute with one or more of the
Defendants, except as otherwise provided elsewhere in this engagement agreement or the attached
Additional Terms of Engagement. In the event a court orders payment of attorneys’ fees, costs or
expenses to you or to LAW FIRM as your attorneys in the Matter, the amount of those attorneys’
fees, costs or expenses which are collected shall be included in the “Gross Recovery” for purposes
of calculating the percentage fee payable to LAW FIRM hereunder, but LAW FIRM shall not be entitled
to receive or retain such court-awarded fees in addition to the applicable percentage specified
herein of the total “Net Recovery,” if any, payable to LAW FIRM as a contingent fee hereunder.



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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     If a Gross Recovery received from any Defendant includes securities or some other non-monetary
property or asset, you will have the right, at your election, to treat such securities or other
non-monetary property or asset as the equivalent of money in an amount equal to the fair market
value thereof as of the date of receipt thereof and to make payment in U.S. Dollars to LAW FIRM of
any amounts of such Gross Recovery to which it is entitled under this agreement to pay or reimburse
Other Charges or as LAW FIRM’s applicable percentage fee share of any remaining Net Recovery as
provided for above. Alternatively, you will have the right, at your election, to transfer or
convey to LAW FIRM a share of or interest in such securities or other non-monetary property or
assets having a fair market value as of the date of receipt thereof equal to the amount of such
Gross Recovery to which LAW FIRM is entitled under this agreement to pay or reimburse Other Charges
and to transfer or convey to LAW FIRM its applicable percentage fee share of the remainder, if any
(the “Net Recovery”), of such securities or other non-monetary property or asset. In any instance
when you and LAW FIRM are unable to agree regarding the fair market value of any such securities or
other non-monetary property or assets within thirty (30) days after receipt thereof, it is agreed
that the dispute will be submitted to a non-binding mediation before a mutually agreed upon
mediator in Dallas, Texas. In the event the dispute is not resolved by mediation, the parties
agree to submit the dispute to binding arbitration before a board of three arbitrators in Dallas,
Texas, conducted under the Commercial Arbitration Rules of the American Arbitration Association.



     All amounts of Gross Recovery shall be paid or delivered to LAW FIRM either directly from
Defendants or by Z-KAT promptly upon receipt thereof. LAW FIRM shall hold such Gross Proceeds in
trust for you and shall distribute such Gross Proceeds as promptly as practicable first to apply
toward payment of Other Charges owing to LAW FIRM pursuant to paragraph B below. Any remaining Net
Proceeds shall be distributed to pay the contingent fee owing to LAW FIRM pursuant to this
paragraph A, and the remainder thereof shall be distributed to you.



     B. Charges for Other Services and Expenses: LAW FIRM agrees to advance all charges for other
services and expenses (collectively, “Other Charges”) incurred or provided by LAW FIRM that appear
to LAW FIRM (in reasonable consultation with you) to be reasonably necessary for the preliminary
investigation and, if the Representation has not terminated, the prosecution of the Client Claims
whether through assistance with licensing or through litigation. LAW FIRM shall be authorized to
incur those Other Charges which we deem reasonable and necessary to endeavor to accomplish a
satisfactory resolution of the Matter. It is further agreed that we are expressly authorized to
retain any consultants, experts, or third-party providers that are reasonably necessary in our
judgment in connection with the Representation. If there is no amount of Gross Recovery in the
Matter, you shall have no obligation to pay or reimburse LAW FIRM for arty Other Charges incurred,
charged or expended by LAW FIRM, and you shall have no obligation to pay or reimburse LAW FIRM for
any amount of Other Charges in excess of whatever amounts of Gross Recovery are actually recovered.
In this regard, however, if any amounts of a Gross Recovery from any Defendant or Defendants have
been deemed to be a “Net Recovery” and have been distributed to you and LAW FIRM as provided for in
paragraph A above and LAW FIRM thereafter incurs or expends Other Charges (“Unpaid Other Charges”)
that are not paid or reimbursed to LAW FIRM out of amounts of Gross Recovery from one or more
Defendants thereafter obtained and received, and if (and only if) the total amounts of Net Recovery
theretofore distributed to you (as your share thereof) pursuant to
paragraph A above exceed one million dollars ($1,000,000),
you will be obligated to pay or reimburse to LAW FIRM a portion (hereinafter described as the
“Refundable



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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Portion”) of the amount of such Unpaid Other Charges that has not been paid or reimbursed to
LAW FIRM upon termination of the Representation out of the amounts of “Net Recovery” from any
Defendant or Defendants (collectively) in excess of one million
dollars ($1,000,000) that have been distributed to you
pursuant to said paragraph A. The “Refundable Portion” of Unpaid Other Charges that you may thus
become obligated to pay to LAW FIRM out of amounts of “Net Recovery” distributed to you pursuant to
paragraph A above shall be equal to the aggregate amount (up to all thereof) by which the amounts
of “Net Recovery” in excess of a total of one million
dollars ($1,000,000) distributed to you pursuant to said paragraph A
would have been reduced if such Unpaid Other Charges had been paid and deducted from the applicable
amounts of Gross Recovery before dividing the remainder thereof as “Net Recovery” between LAW FIRM
and you as provided for in said paragraph A. Other Charges may include, without limitation,
charges or expenses made in furtherance of the Matter for long-distance telephone calls, facsimile
and other electronic transmissions, messenger and other delivery fees, postage, charges for
computer research and outside assisted legal research, travel expenses such as mileage, parking,
airfare, meals, and hotel accommodations, photocopying and other reproduction charges, conference
expenses, clerical staff overtime, word processing charges, charges for computer time, process
server’s fees, filing fees and other charges assessed by courts and other public agencies, court
reporter’s fees, videographer’s fees, jury fees, witness fees, investigator’s fees, trial
presentation expenses, expert’s fees, or consultant’s fees, and other similar items. In situations
where we can readily determine the exact amount of expenses for products and services provided by
third parties to be charged to your account, our charges for Other Charges will reflect the cost to
us of the product or services. In many situations, however, the total cost of providing a product
or service is difficult to establish, in which case we will use our reasonable professional
judgment as to the charges to be made for such product or service, which charges shall not
substantially vary from or exceed our direct cost of such product or service. Attached is a copy
of our current recharge schedule for expenses and services provided through our Dallas, Texas,
office, which is subject to change from time to time. Charges for expenses and services provided
through other offices of our firm may vary from the attached Dallas office recharge schedule. LAW
FIRM agrees that it will send monthly statements to you that summarize the Other Charges expended
or incurred and charged to your file to date.



     It is expressly agreed, that if LAW FIRM elects to and does engage other attorneys or law
firms (who, we anticipate, would serve as local counsel) to assist LAW FIRM in connection with
litigation against or pursuing Client Claims against any Defendant or Defendants, the legal fees
charged by such attorneys or law firms for their services shall not be deemed to be “Other
Charges,” and LAW FIRM shall be solely responsible for payment of such fees on such basis and in
such manner or amount as may be agreed between LAW FIRM and such attorneys or law firms. However,
any expenses and charges for supplies or services other than legal services of the nature of “Other
Charges” described above that are incurred or expended by any such attorneys or law firms in
connection with the Matter and paid or reimbursed by LAW FIRM shall be deemed to be “Other Charges”
for purposes of this agreement.



     C. Declining or Withdrawing From Representation as to Particular Defendants or With Respect to
Appeal From or Retrial Following an Adverse Trial Court or Appellate Decision: As described in the
section of this letter agreement entitled “Conflicts of interest” below, LAW FIRM may decline to
represent you in asserting Client Claims against particular potential infringers who might be
Defendants, based on a conflict of interest that would exist if LAW FIRM undertook such
representation. If LAW FIRM notifies you that it will not represent you in



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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asserting Client Claims against a particular potential infringer because of a conflict of
interest, you will, of course, have the right to pursue the Client Claims against such party for
your own account and at your own expense using other counsel of your choice, and no amount of any
recovery you may obtain from such party shall be included in or shall be deemed to be a “Gross
Recovery” for any purpose under this agreement.



     Likewise, at any time during the course of the Representation, LAW FIRM may notify you that on
the basis of the information it has obtained it has determined that it is not willing to incur the
risk and cost of pursuing or continuing to pursue the Client Claims as against a particular
Defendant on a contingent fee basis (either because LAW FIRM believes that evidence of infringement
by the Defendant may be inconclusive, that the amount of any likely recovery from the Defendant
would not justify the cost and risk, or that collection of a recovery from the Defendant may be
doubtful, or for any other reason deemed appropriate in LAW FIRM’s judgment). If LAW FIRM provides
such a notice to you with respect to a particular Defendant, the Representation will immediately
terminate insofar only as to that particular Defendant, and you agree to execute such documents and
take such action as is necessary to enable LAW FIRM to withdraw from the Representation insofar as
to such particular Defendant. In that event, you will, of course, have the right to pursue the
Client Claims against such Defendant for your own account and at your own expense using other
counsel of your choice, and no amount of any recovery you may obtain from such Defendant shall be
included in or shall be deemed to be a “Gross Recovery” for any purpose under this agreement.



     In the event a trial court ruling on an appealable dispositive motion is entered, or a trial
court judgment is entered following a trial, or in the event an appellate court decision is
rendered in an appeal, LAW FIRM shall have the right, but not the obligation, to continue to
represent you in any appeal or appeals of such ruling, judgment, or decision or in any retrial
required by any such decision. LAW FIRM shall have complete discretion in deciding whether it will
participate in any such appeal or retrial.



     In the event LAW FIRM elects not to participate in any appeal or retrial and you elect to go
forward with an appeal or retrial with other counsel and obtain and receive a recovery from any
Defendant who is a party to such lawsuit during or after the appeal or retrial, then
(notwithstanding the fact that such recovery will not be deemed to be included in or to be “Gross
Recovery” for purposes of this agreement), within thirty (30) days after request by LAW FIRM, you
shall meet with LAW FIRM to negotiate an agreement addressing LAW FIRM’s fees for its services
through the trial and any appeal and payment for Other Charges. If after thirty (30) days you and
LAW FIRM are unable to reach an agreement in this regard, then the parties agree to submit the
dispute to a non-binding mediation before a mutually agreed-upon mediator in Dallas, Texas. In the
event the dispute is not resolved by mediation, the parties agree to submit the dispute to binding
arbitration before a board of three arbitrators in Dallas, Texas, conducted under the Commercial
Arbitration Rules of the American Arbitration Association and agree that the arbitrators shall be
directed to determine and award to LAW FIRM such amount (if any) of the following to which the
arbitrators determine LAW FIRM is entitled on a quantum meruit basis for its services and charges
and expenses in connection with the trial and any appeals: (1) Other Charges; and (2) LAW FIRM’s
fees for its services performed through the trial and any appeal.



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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SECTION 5 Taxable Court Costs or Other Expenses




     In the event a trial or appellate court awards taxable court costs, attorneys fees’ or any
other expenses against you in connection with a judgment rendered in the Matter, you are solely
responsible for any such costs, fees or expenses which may be owing to an adverse party, except
where such costs, fees or expenses are awarded based on the acts or omissions of LAW FIRM, in which
case they will be paid by LAW FIRM.



SECTION 6 Conflicts of Interest




     Before accepting the Representation, we have undertaken reasonable and customary efforts to
determine whether there are any potential conflicts of interest that would bar our firm from
representing you in the Matter. Based on the information available to us, we are not aware of any
potential conflict of interest that might bar our firm from representing you in the Matter against
a number of the potential infringers. Because of the number of potential infringers, we may have
some conflicts which prevent us from pursuing those parties and we will not pursue those parties as
to whom we determine that a conflict of interest would exist if we pursued Client Claims against
such parties. In reviewing the issue of potential conflicts of interest, we have reviewed the
issue in accordance with the rules of professional responsibility adopted in Texas and principles
applied by Federal Courts sitting in Texas regarding disqualification of counsel based on conflicts
of interest. We believe that the rules of professional conduct adopted in Texas, rather than the
rules of any other jurisdiction, are applicable to the Representation, and the execution and return
of the enclosed copy of this letter by your son s an express am to the applicability of those
rules.



     Exclusions from List of Defendants



     With the exception of those entities set forth in Exhibit B hereto (which may or may not be
potential infringers), which such entities are specifically excluded as Defendants under this
agreement and as to which you have and shall retain the right to determine whether or not to pursue
the Client Claims for your own account and at your own expense using other counsel of your choice,
and for which no amount of any recovery you may obtain shall be included in or shall be deemed to
be a “Gross Recovery” for any purpose under this agreement, as of the date of this agreement there
are no individuals and entities known by the either LAW FIRM or you to be excluded from the pool of
potential Defendants under this agreement.



SECTION 7 Consultation Regarding Settlement, Licensing, and Other Decisions




     You agree that you will consult with us in advance concerning any proposed settlement or
licensing agreement with or abandonment of the Client Claims against any of the Defendants with
respect to whom we are representing you, and we will endeavor to provide our advice concerning such
matters to assist you in determining whether to offer or propose or acceptor reject any such
proposed settlement or licensing agreement or abandon the Client Claims against any such Defendant.
However, we will not be authorized to execute any settlement or license agreement without your
express written authority; and all license agreements, settlements, decisions to abandon the Client
Claims and decisions to proceed with or abandon litigations and/or appeals shall be subject to your
consent, approval, and sole discretion.



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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Regular Reporting LAW FIRM agrees to provide you with written monthly reporting of (1) all Other
Charges incurred and/or paid and (2) services our firm rendered as part of the Representation for
the preceding month.



SECTION 8 Independent Representation




     You represent and acknowledge that you have consulted with and been advised by legal counsel
of your own choice unrelated to LAW FIRM concerning the terms and provisions and form and content
of this letter agreement and the attached Additional Terms of Engagement before executing or
agreeing to this agreement.



SECTION 9 180 Days




     If LAW FIRM shall endeavor to provide you with the results of its preliminary investigation as
soon as possible but in no event later than one hundred eighty (180) days from the commencement of
the Engagement, and should LAW FIRM fail to file an action against any Defendant within one hundred
eighty (180) days from the Effective Date of this engagement letter, then you shall have the right
to terminate this engagement letter by giving written notice of termination to LAW FIRM at any time
prior to the time that LAW FIRM does take action on any Defendant, in which event you will owe no
fees or Other Charges to LAW FIRM.



SECTION 10 Client and Investor Meeting




     It is expressly stipulated that before a final decision is made to file any lawsuit against
any Defendant asserting the Client Claims, LAW FIRM will require a meeting in Dallas, Texas (or an
alternate location acceptable to LAW FIRM), with you and any material inventors and/or assignees of
material patents to be asserted, in order to discuss an overall strategy for pursuit of the Client
Claims and explore any areas of possible concern regarding the nature of and continuation of the
Representation in a face to face meeting. Expenses associated with any such meeting shall be paid
by LAW FIRM and treated as Other Expenses under this agreement.LAW FIRM agrees to work with you to
reasonably identify those persons reasonably necessary for participation in said meeting, some of
whom may be allowed to attend telephonically should circumstances allow.



SECTION 11 Conclusion




     This letter and the attached Additional Terms of Engagement constitute the entire term of the
engagement of LAW FIRM in the Representation. These written terms of engagement are not subject to
any oral agreements or understanding s, and they can be modified only by further written agreement
signed both by you and LAW FIRM. Unless expressly stated in these terms of engagement, no
obligation or undertaking shall be implied on the part of either you or LAW FIRM.



     Please carefully review this letter and the attached Additional Terms of Engagement. If there
are any questions about these terms of engagement, or if these terms are inaccurate in any way,
please let me know immediately. If both documents are acceptable, please sign and return the
enclosed copy of this letter, so that we may commence the Representation. We have signed the
letter on this date. If this letter is not signed and retuned on of before November [ ], 2005,
the



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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offer of representation and terms and conditions of this letter are null, void and of no force
or effect. Thank you for the opportunity to be of service.



Sincerely,




AGREED:




Date:                      
                      




	 	 	 	 	 
	 	 
	By:  	 	 
	 	 	 
	 	 	 
	 



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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LAW FIRM.




Additional Terms of Engagement





     This is a supplement to our engagement letter dated November [ ], 2005, with you. Terms
which are defined in the engagement letter will have meaning therein stated when used in this
supplement. The purpose of this document is to set out additional terms of our agreement to
provide the Representation described in our engagement letter concerning the Matter described
therein. Because these additional terms of engagement are a part of our agreement to provide legal
services, you should review them carefully and should promptly communicate to us any questions
concerning this document We suggest that you retain this statement of additional terms along with
our engagement letter and any related dements.



SECTION 12 The Scope of the Representation




     As lawyers, we undertake to provide representation and advice on the legal matters for which
we are engaged. It is important for our clients to have a clear understanding of the legal
services that we have agreed to provide. Thus, if there are any questions about the scope of the
Representation that we are to provide in the Matter, please raise those questions promptly, so that
we may resolve them at the outset of the Representation.



     You acknowledge that we have made no promises or guarantees to you regarding the outcome of
the Representation or the Matter, and nothing in the engagement letter or these additional terms of
engagement shall be construed as such a promise or guarantee. Any expressions on our part
concerning the outcome of the Representation, or any other legal matters, are based on our
professional judgment and are not guarantees. Such expressions, even when described as opinions,
are necessarily limited by our knowledge of the facts and are based on our views of the state of
the law at the time they are expressed.



     Upon accepting this engagement on your behalf, LAW FIRM agrees to do the following: (1)
provide legal counsel in accordance with the additional terms of engagement and the related
engagement letter, and in reliance upon information and guidance provided by you; and (2) keep you
reasonably informed about the status and progress of the Representation.



     To enable us to provide effective representation, you agree to do the following: (1) disclose
to us, fully and accurately and on a timely basis, all facts and documents that are or might be
material or that we may request, (2) keep us apprised on a timely basis of all developments
relating to the Representation that are or might be material, (3) attend meetings, conferences, and
other proceedings when it is reasonable for you to do so and (4) otherwise cooperate fully with us.



     Our firm has been engaged to provide legal services in connection with the Representation in
the Matter, as specifically defined in our engagement letter. After completion of the
Representation, changes may occur in the applicable laws or regulations that could affect your
future rights and liabilities in regard to the Matter. Unless we are actually engaged after the
completion of the Representation to provide additional advice on such issues, the firm has no
continuing obligation to give advice with respect to any future legal developments that may pertain
to the Matter.



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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     It is our policy and your agreement that the party we represent is the one identified in our
engagement letter and that our attorney-client relationship does not include any related persons or
entities. Far example, if a corporation, partnership, or other organization is identified as our
client in our engagement letter referenced above, we do not represent any related parent companies,
subsidiaries, affiliates, employees, officers, directors, shareholders, partners, members,
commonly-owned corporations or partnerships, or other such persons, entities, or affiliates,
whether now existing or hereafter becoming such by virtue of merger, dissolution, acquisition, or
any other means. Accordingly, it is understood that we may represent another client with interests
adverse to any such affiliated or related person or entity without first obtaining consent from
you.



SECTION 13 Who Will Provide the Legal Services




     As our engagement letter confirms, LAW FIRM will represent you in the Matter. LAW FIRM is a
registered limited liability partnership pursuant to the Texas Revised Partnership Act.



     Although our firm will be providing legal services, each client of the firm customarily has a
relationship principally with one attorney, or perhaps a few attorneys. At the same time, however,
the work required in the Representation, or parts of it, may be performed by other firm personnel,
including lawyers and legal assistants. Such delegation may be for the purpose of involving other
firm personnel with experience in a given area or for the purpose of providing services on an
efficient and timely basis.



SECTION 14 Our Relationships With Others




     Our law firm represents many companies and individuals. In some instances, the applicable
rules of professional conduct may limit our ability to represent clients with conflicting or
potentially conflicting interests. Those rules of conduct often allow us to exercise our
independent judgment in determining whether our relationship with one client prevents us from
representing another. In other situations, we may lie permitted to represent a client only if the
other clients consent to that representation.



     Rules concerning conflicts of interest vary with the jurisdiction. In order to avoid any
uncertainty, it is our policy that the governing rules will be those applicable to the particular
office of our firm that prepares the engagement letter for a particular matter. The acceptance by
you of our engagement letter constitutes as express agreement with that policy, unless the
engagement letter specifically states that some outer rules of professional responsibility will
govern our attorney-client relationship.



     If a controversy unrelated to the Matter develops between you and any other client of the
firm, we will follow the applicable rules of professional responsibility to determine whether we
may represent either you or the other client in the unrelated controversy.



     In addition to our representation of other companies and individuals, we also regularly
represent lawyers and law firms. As a result, opposing counsel in the Matter may be a lawyer or
law firm that we may represent now or in the future. Likewise, opposing counsel in the Matter may
represent our firm now or in the future. Further, we have professional and personal relationships
with many other attorneys, often because of our participation in bar associations and other
professional organizations. It is our professional judgment that such relationships with other


 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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attorneys do not adversely affect our ability to represent any client. The acceptance of
these terms of engagement represents an unqualified consent to any such relationships between our
firm and other lawyers or law firms, even counsel who is representing a party that is adverse to
you in the Matter that is the subject of this engagement or in sonic other matter.



SECTION 15 Termination




     At any time, you may, with or without cause, terminate the Representation by notifying us of
your intention to do so. If you terminate the Representation without cause, LAW FIRM shall retain
the right to receive payment out of any Gross Recovery thereafter received by you (up to the full
amount of such Gross Recovery) of all Other Charges incurred, charged or expended by LAW FIRM in
connection with the Representation or which are incurred, charged or expended in connection with an
orderly transition of the Matter, together with the full contingent fee share of any Net Recovery
received by you. If LAW FIRM is discharged by you for cause, LAW FIRM may not be entitled to
compensation or payment for its services or Other Charges in connection with the Representation or
may be entitled to compensation or payment for such services or Other Charges on a quantum meruit
basis as may be appropriate in the circumstances under the applicable laws and code or rules of
professional conduct.



     We are subject to the codes or rules of professional responsibility for the jurisdictions in
which we practice. There are several hypes of conduct or circumstances that could justify and
result in our withdrawing from representing a client, including, for example, the following:
misrepresentation or failure to disclose material feeds: fraudulent or criminal conduct; and
action contrary to our advice. The right of LAW FIRM to withdraw with justification as described
herein is in addition to any rights to withdraw with justification created by statute or recognized
by the governing rules of professional conduct. We try to identify in advance and discuss with our
clients any situation that may lead to our withdrawal. If LAW FIRM withdraws from the
Representation, then, except as and unless otherwise provided in our engagement letter, LAW FIRM
shall retain the right to receive payment out of any Gross Recovery theretofore or thereafter
received by you (up to the full amount of such Gross Recovery) of all other Charges incurred,
charged or expended by LAW FIRM in connection with the Representation or which we incurred, charged
or expended in connection with an orderly transition of the Matter, and LAW FIRM may be entitled to
compensation for its services on a quantum meruit basis out of any Net Recovery (as defined in the
engagement letter) as may be appropriate in the circumstances under the applicable laws and code or
rules of professional conduct. Further, you will promptly take all steps necessary too release LAW
FIRM of any further obligations in the Representation or the Matter, including, without limitation,
the execution of any documents necessary to effectuate LAW FIRM’s withdrawal from the
Representation and the Matter.



     In the event that LAW FIRM notifies you that it believes it is entitled to compensation or
payment for its services or Other Charges in connection with the Representation on a quantum meruit
basis following termination of the Representation for cause, you and LAW FIRM will endeavor in good
faith to agree upon such amount (if any) as is mutually acceptable to the parties. If after thirty
(30) days you and LAW FIRM are unable to reach an agreement in this regard, their the parties agree
to submit the dispute to a non-binding mediation before a mutually agreed-upon mediator in Dallas,
Texas. In the event the dispute is not resolved by mediation, the parties agree to submit the
dispute to binding arbitration before a board of three arbitrators in Dallas, Texas,



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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conducted under the Commercial Arbitration Rules of the American Arbitration Association and
agree that the arbitrators shall be directed to determine and award to LAW FIRM such amount (if
any) of fees for its services and (if not otherwise provided for in these Additional Terms of
Engagement) payment or reimbursement for Other Charges to which the arbitrators determine LAW FIRM
is entitled on a quantum meruit basis.



SECTION 16 Document Retention




     At the close of any matter, we send our flies in that matter to a storage facility for storage
at our expense. The attorney closing the file determines how long we will maintain the files in
storage. After that time, we will destroy the documents in the stored files.



     Upon termination of the Representation, we return to the client any documents and files that
are subject to the agreement with such client or are specifically requested to be returned. As to
any documents so returned, we may elect to keep a copy of the documents in our stored files.



SECTION 17 Severability




     If any term or provision of the engagement letter or these additional terms of engagement is
finally determined by any court, arbitrator, or other tribunal to be void or unenforceable in whole
or in part or as to any person, party, or circumstance, the engagement letter and these additional
terms of engagement shall nevertheless be and remain valid and enforceable as to all terms and
provisions thereof and as to all persons, parties, or circumstances as to which they are not thus
determined to be void or unenforceable; and, notwithstanding any such determination, the engagement
letter and these additional terms of engagement shall be and remain valid and shall be enforced, as
to each term and provision thereof, to the maximum extent permitted by applicable laws and rules of
professional conduct.



SECTION 18 Governing Law




     The engagement letter and these additional teems of engagement shall be construed and enforced
in accordance with the laws of the State of Texas applicable to contracts made in and to be
performed in Texas, without giving effect to conflicts of law principles that might require
application of the laws of any other jurisdiction.



SECTION 19 Ownership of Client Claims/Grant of Lien




     Each of LAW FIRM and you acknowledge and repent that you own 100% of the Client Claims. You
hereby grant a first priority lien to LAW FIRM on any Gross Recovery received or recovered by you
or any party claiming by, through, or under you, to secure payment of the fees, if any, and Other
Charges, if any, becoming payable from you to LAW FIRM as provided for in the engagement Letter
agreement and these additional terms of engagement. Such lien will be in addition to all other
rights of LAW FIRM to receive sums if any owing from you under the engagement letter agreement and
these additional terms of engagement. You hereby represent and warrant to LAW FIRM that there are
no other known outstanding liens on the Client Claims or Gross Recovery.


 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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SECTION 20 Standards of Professionalism and Attorney Complaint Information




     Pursuant to rules promulgated by the Texas Supreme Court and the State Bar of Texas, we are to
advise our clients of the contents of the Texas Lawyer’s Creed, a copy of which is attached. In
addition, we are to advise clients that the State Bar of Texas investigates and prosecutes
complaints of professional misconduct against attorneys licensed in Texas. A brochure entitled
Attorney Complaint Information is available at all of our Texas offices and is likewise available
upon request. A client that has any questions about the State Bar’s disciplinary process should
call the Office of the General Counsel of the State Bar of Texas at 1-800-932-1900 toll free




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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Exhibit 2.2




SECURED PROMISSORY NOTE






$125,707.00







Broward County,

Florida

December 28, 2006









FOR VALUE RECEIVED, the undersigned, Z-KAT, INC. a Florida corporation promises to pay to MAKO
SURGICAL CORP., a Delaware corporation, and its successors and assignees (the “Holder”), at 2555
Davie Road, Ft. Lauderdale, Florida 33317 or such other place as the Holder may designate in
writing to the Maker, the principal sum of $One Hundred Twenty Five Thousand Seven Hundred
Seven Dollars ($125,707), with interest at an annual rate of eight and one half percent (8.5)%
compounded annually.



     This Note is issued pursuant to the Addendum to Asset Contribution Agreement, dated effective
as of December 28, 2006 (the “Agreement”), among the Maker and the Holder The covenants and
agreements under the Agreement are incorporated in this Note. Capitalized terms not otherwise
defined in this Note shall have the meanings ascribed to them in the Agreement.



     The Maker shall make payment (each a “Required Payment”) of principal and interest to retire
the outstanding balance of principal and interest on this Not from any and all cash received
(tender of which is unconditioned by payor) by Z-KAT or any Affiliate from a Payment Event (as
defined in the Agreement).



     This Note may be prepaid in whole or in part at any time and from time to time without prior
notice to the Holder. All payments hereunder shall be applied first to accrued interest and then
to principal.



     Time is of the essence with respect to the payment of this Note. If this Note is not tally
paid at maturity (including all additions accruing under the term herein whether the stated
maturity date, by acceleration, or otherwise), the unpaid balance of principal shall earn interest,
and shall be payable on demand, at the maximum rate allowed by law.



     This Note is secured by certain assets of the Holder as described more fully in the Agreement
and any other liens and security interests provided for in the Agreement Reference is made to the
Agreement as to various obligations and duties of the Maker and to various matters which shall
entitle the Holder hereof to accelerate the indebtedness evidenced by this Note. The Holder is
entitled to the benefit of the liens and security provided by the Agreement, and the covenants and
agreements of the Maker under the Agreement are incorporated in this Note.



     Upon the nonpayment of any Required Payment installment of principal or interest within 5
business days after receipt by the Maker of written notice from the Holder that the Maker has
failed to make the payment when due, or the occurrence of a “Material Breach” as defined in the
Agreement, the entire unpaid principal of and accrued interest on this Note shall, at the option of
the Holder, become due and payable immediately. It is further agreed that failure of the Holder to
exercise this right of accelerating the maturity of the debt, or any indulgence granted from time
to



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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time, shall in no event be considered as a waiver of such right of acceleration or estop the
Holder from exercising such right.



     The Maker agrees to pay all costs and expenses incur ed by the Holder in connection with the
collection of this Note, including reasonable attorneys’ fees and expenses (whether or not suit is
filed, and if suit is fled, all those costs and expenses, including attorneys’ fees, incurred in
any primary and appellate proceedings).



     In no event shall the amount of interest due or payable under this Note exceed the maximum
rate of interest allowed by applicable law, as amended from time to time. If any payment of
interest or in the nature of interest would, under, applicable law, cause the foregoing interest
rate limitation to be exceeded, then the excess payment shall be credited as a payment of
principal, unless the Maker notifies the Holder that the Maker desires to have the excess sum
returned to the Maker.



     All notices, demands, and other communications required or permitted in connection with this
Note shall be in writing and shall be deemed to have been given when delivered or sent by
first-class, postage prepaid, certified mail, with return receipt requested (regardless of whether
the return receipt is received by the sender) and addressed, if to the Maker, at the mailing
address provided in the Agreement, and if to the Holder, at the address specified in the first
paragraph of this Note, or at such other addresses as the Maker and the Holder may designate to
each other in writing.



     This Note shall be governed by, and construed and enforced under, the laws of Florida. Maker
consents and agrees that Broward County, Florida, shall be the exclusive, proper, and convenient
venue for any legal proceeding in federal or state court relating to this Note, and Maker waives
any defense, whether asserted by motion or pleadings, that Broward County, Florida, is an improper
or inconvenient venue. The Maker and every other party liable at any time for payment of this Note
waives presentment, demand, test, notice of protest, and notice of dishonor.



     IN WITNESS WHEREOF, the Maker has executed this Note the date first stated above.



	 	 	 	 	 
	 	ZKAT, Inc.

 	 
	 	By:  	 	 
	 	 	Name:  	 	 
	 	 	Title:  	 	 
	 



“Maker”





 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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SECURED PROMISSORY NOTE






$125,707.00







Broward County,

Florida

December 28, 2006









FOR VALUE RECEIVED, the undersigned, Z-KAT, INC. a Florida corporation promises to pay to MAKO
SURGICAL CORP., a Delaware corporation, and sits successors and assignees (the “Holder”), at 2555
Davie Road, Ft. Lauderdale, Florida 33317 or such other place as the Holder may designate in
writing to the Maker, the principal sum of $One Hundred Twenty Five Thousand Seven Hundred
Seven Dollars ($125,707), with interest at an annual rate of eight and one half percent (8.5)%
compounded annually.




     This Note is issued pursuant to the Addendum to Asset Contribution Agreement, dated effective
as of December 28, 2046 (the “Agreement”), among the Maker and the Holder The covenants and
agreements under the Agreement are incorporated in this Note. Capitalized terms not otherwise
defined in this Note shall have the meanings ascribed to them in the Agreement.



     The Maker shall make payment (each a “Required Payment”) of principal and interest to retire
the outstanding balance of principal and interest on this Note from any and all cash received
(tender of which is unconditioned by payor) by Z-KAT or any Affiliate from a Payment Event (as
defined in the Agreement).



     This Note may be prepaid in whole or in part at any time and from time to time without prior
notice to the Holder. All payments hereunder shall be applied first to accrued interest and then
to principal.



     Time is of the essence with respect to the payment of this Note. If this Note is not fully
paid at maturity (including all additions accruing under the term herein whether the stated
maturity date, by acceleration, or otherwise), the unpaid balance of principal shall earn interest,
and shall be payable on demand, at the maximum rate allowed by law.



     This Note is secured by certain assets of the Holder as described more fully in the Agreement
and any other liens and security interests provided for in the Agreement. Reference is made to the
Agreement as to various obligations and duties of the Maker and to various matters which shall
entitle the Holder hereof to accelerate the indebtedness evidenced by this Note. The Holder is
entitled to the benefit of the liens and security provided by the Agreement, and the covenants and
agreements of the Maker under the Agreement are incorporated in this Note.



     Upon the nonpayment of any Required Payment installment of principal or interest within 5
business days after receipt by the Maker of written notice from the Holder that the Maker, has
failed to make the payment when due, or the occurrence of a “Material Breach” as defined in the
Agreement, the entire unpaid principal of and accrued interest in this Note shall, at the option of
the Holder, become due and payable immediately. It is further agreed that failure of the Holder to
exercise this right of accelerating the maturity of the debts or any indulgence granted from time
to time, shall in no event be considered as a waiver of such right of acceleration or estop the
Holder from exercising such right.



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-31-









 





     The Maker agrees to pay all costs and expenses incurred by the Holder in connection with the
collection of this Note, including reasonable attorneys’ fees and expenses (whether or not suit is
filed, and if it is filed, all those costs and expenses, including attorneys’ fees, incurred in any
primary and appellate proceedings).



     In no event shall the amount of interest due or payable under this Note exceed the maximum
rate of interest allowed by applicable law, as amended from time to time. If any payment of
interest or in the nature of interest would, under applicable law, cause the foregoing interest
rate limitation, to be exceeded, then the excess payment shall be edited as a payment of principal,
unless the Maker notifies the Holder that the Maker desires to have the excess sum returned to the
Maker.



     All notices, demands, and other communications required or permitted in connection with this
Note shall be in writing and shall be deemed to have been given when delivered or sent by
first-class, postage prepaid, certified mail, with return receipt requested (regardless of whether
the return receipt is received by the sender) and addressed, if to the Maker, at the mailing
address provided in the Agreement, and if to the Holder, at the address specified in the first
paragraph of this Note, or at such other addresses as the Maker and the Holder may designate to
each other in writing.



     This Note shall be governed by, and construed and enforced under, the laws of Florida. Maker
consents and agrees that Broward County, Florida, shall be the exclusive, proper, and convenient
venue for any legal proceeding in federal or state court relating to this Note, and Maker waives
any defense, whether asserted by motion or pleadings, that Broward County, Florida, is an improper
or inconvenient venue. The Maker and every other party liable at any time for payment of this Note
waives presentment, demand, protest, notice of protest, and notice of dishonor.



     IN
WITNESS WHEREOF, the Maker has executed this Note the date first stated above.



	 	 	 	 	 
	 	ZKAT, Inc.

 	 
	 	By:  	 	 
	 	 	Name:  	 	 
	 	 	Title:  	 	 
	 



“Maker”





 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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Exhibit R.A.







EXECUTION VERSION




ASSET CONTRIBUTION AGREEMENT




     THIS ASSET CONTRIBUTION AGREEMENT (this “Agreement”) is made and entered into this
17th day of December, 2004, by and among Z-KAT, INC., a Florida corporation (“Z-KAT”),
and MAKO Surgical Corp., a Delaware corporation (“Company”).



W I T N E S S E T H




     WHEREAS, Z-KAT is the owner of One Hundred (100) shares of common stock in Company, par value
$0.001 per share (the “Common Stock”), which represents all the issued and outstanding equity
securities of Company;



     WHEREAS, Z-KAT is the owner of all right, title and interest in and to the assets described on
Schedule 2.1 hereto (the “Assets”), such assets being substantially all of the operating
assets (but not all intellectual property assets) of Z-KAT currently used by Z-KAT in the MAKO
Business (as defined below);



     WHEREAS, Z-KAT, as owner of all right, title, and interest in certain other intangible assets,
including certain patents, patent applications, trade secrets and copyrights (the “Z-KAT Patent
Rights”) and as licensee of patents, patent applications, trade secrets and copyrights from certain
third-party licensors (the “Z-KAT License Rights”, together with the Z-KAT Patent Rights, the
“Necessary IP Rights”), has developed and employed the Necessary IP Rights in the business of
orthopedic surgery, which includes, without limitation, the preservation, restoration, development,
repair and correction of the musculoskeletal system and associated structures, including, without
limitation, the spine and neck, but which expressly excludes non-bone oncology, blood vessels and
vital organs, neurology (which is the medical specialty concerned with the brain, spinal cord and
nervous system), non-spine neurosurgery, cranial neurosurgery, ENT and otolaryngology (the “MAKO
Business”);



     WHEREAS, Z-KAT desires to contribute and transfer the Assets to Company and to exclusively and
irrevocably license and/or sublicense (as the case may be) the Necessary IP Rights to Company, and
Company desires to acquire the Assets from Z-KAT and license and/or sublicense (as the case may be)
the Necessary IP Rights from Z-KAT, to allow the Company to own and operate the MAKO Business, in
exchange for the issuance of certain capital stock of the Company, all pursuant to this Agreement
as hereinafter provided; and



     WHEREAS, the contribution and transfer of the Assets and the licensure of the Necessary IP
Rights are a necessary precondition to the capitalization and funding of the Company through its
anticipated sale and transfer of its Series A convertible preferred stock, par value $0.001 per
share (the “Series A Convertible Preferred Stock”) with cash proceeds of not less than Two Million
Dollars (the “Series A Financing”).



      




      



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




 









 









Agreement




     NOW, THEREFORE, for and in consideration of the premises, the mutual representations,
warranties and covenants herein contained and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties hereby agree as follows:



1. GENERAL DEFINITIONS. For purposes of this Agreement, the following terms shall have the
respective meanings set forth below:



     1.1 “Governmental Authority” shall mean any and all foreign, federal, state or local
governments, Indian tribes, governmental institutions, public authorities and governmental entities
of any nature whatsoever, and any subdivisions or instrumentalities thereof, including, but not
limited to, departments, boards, bureaus, commissions, agencies, courts, administrations and
panels, and any divisions or instrumentalities thereof, whether permanent or ad hoc now existing.



     1.2 “Governmental Requirement” shall mean any and all laws (including, but not limited to,
applicable common law principles), statutes, ordinances, codes, rules, regulations,
interpretations, guidelines, directions, orders, judgments, writs, injunctions, decrees, decisions
or similar items or pronouncements, promulgated, issued, passed or set forth by any Governmental
Authority applicable to Z-KAT or its MAKO Business.



     1.3 “Liabilities” shall mean all liabilities, obligations, losses, expenses, damages,
indebtedness, claims or other amounts owed by a Person.



     1.4 “Person” shall mean any natural person, any Governmental Authority and any entity the
separate existence of which is recognized by any Governmental Authority or Governmental
Requirement, including, but not limited to, corporations, partnerships, joint ventures, joint stock
companies, trusts, estates, companies and associations, whether organized for profit or otherwise.



     1.5 “Tax” and “Taxes” shall mean any and all income, excise, franchise or other taxes and all
other charges or fees imposed or collected by any Governmental Authority or pursuant to any
Governmental Requirement, and shall also include any and all penalties, interest, deficiencies,
assessments and other charges with respect thereto.



     1.6 “Affiliate” of any Person shall mean any Person controlling, controlled by or under common
control with such Person.



2. CONTRIBUTION OF THE ASSETS; AGREEMENT TO LICENSE; CONTRIBUTION DATE.



     2.1 Contribution. Z-KAT hereby sells, assigns, transfers and delivers to Company all
right, title and interest in and to the Assets (as set forth on Schedule 2.1 hereto), free
and clear of any liens or encumbrances of any nature whatsoever (except for any liens, encumbrances
or obligations, if any, expressly assumed by Company hereunder). Company hereby takes delivery from
Z-KAT of the Assets along with the Licenses (described below), and



      



      





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-2-









 








in consideration therefore, shall issue to Z-KAT the Contribution Consideration (as
hereinafter defined) set forth in Section 3 below.



     2.2 Delivery of Assets and Transfer Documents. On or prior to the Contribution Date
(hereinafter defined in Section 2.5), Z-KAT shall have taken all steps necessary to put
Company in possession of the Assets, free and clear of any liens or encumbrances of any nature
whatsoever (except for liens, encumbrances or obligations, if any, expressly assumed by Company
hereunder), and have delivered to Company (i) duly executed assignments, as necessary, in form and
substance acceptable to Company and in recordable form as appropriate, (ii) all equipment,
furniture, fixture and other tangible assets utilized in the MAKO Business by Z-KAT, and (iii) such
other duly executed transfer and release documents which Company has reasonably requested to
evidence the transfer of the Assets to Company.



     2.3 Excluded Assets. The Assets shall not include any or all of the assets listed on
Schedule 2.3 hereto (collectively, the “Excluded Assets”).



     2.4 Grant of Licenses. Z-KAT agrees to grant (i) licenses for the Z-KAT Patent Rights
and (ii) sublicenses for Z-KAT License Rights which constitute all the Necessary IP Rights
(collectively, the “Licenses”) to Company on the terms and subject to the conditions of that
certain License Agreement, dated as the date hereof, by and between Z-KAT and Company, in the form
attached hereto as Exhibit A (the “License Agreement”).



     2.5 Contribution; Contribution Date. Subject to the terms and conditions herein
contained, the consummation of the transactions referred to in this Section 2 (the
“Contribution”) shall take place in the Company’s principal office on December 17, 2004, or such
other date and/or time as the parties may mutually determine (the “Contribution Date”); provided,
however, that to the extent it is not reasonably possible to complete the transfer of particular
assets hereunder (whether tangible or intangible) by that date due to required third party consents
or approvals or other matters beyond Z-KAT’s control, Z-KAT shall use its commercially reasonable
best efforts to complete the transfer as soon as reasonably practical thereafter and in the
meantime shall make appropriate arrangements to permit the Company to utilize such assets (at no
charge to the Company).



3. CONTRIBUTION CONSIDERATION.




     3.1 Contribution Consideration. The aggregate consideration for the Assets and
Licenses hereunder shall be the delivery by Company to Z-KAT of (i) Four Million Two Hundred
Seventy One Thousand Nine Hundred (4,271,900) shares of Common Stock (the “Retained Common Stock”);
(ii) One Million Seven Hundred Forty Eight Thousand Seven Hundred Forty Six (1,748,746) shares of
the Company’s Series A Convertible Preferred Stock (along with Five Hundred Seventy Seven Eighty
Four (577,084) warrants to purchase the Common Stock, the “Exchanged Series A Stock”); and Two
Hundred Fifty Thousand (250,000) shares of the Company’s Series A Convertible Preferred Stock
(without any warrants, the “Retained Series A Stock”, together with the Retained Common Stock and
the Exchanged Series A Stock, the “Contribution Consideration”), plus the assumption of the Assumed
Liabilities (as defined below).



      




      





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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     3.2 Assumed Liabilities. The Company hereby assumes the liabilities and obligations
of Z-KAT that are listed and described on Schedule 3.2 hereto (the “Assumed Liabilities”)
and no others.



     3.3 Excluded Liabilities and Obligations.




          (a) Except as expressly set forth in Section 3.2 above, Company shall not assume and
shall not be liable or responsible for any Liability of the MAKO Business, Z-KAT or any Affiliate
of Z-KAT, or any claim against any of the foregoing parties, of any kind, whether known or unknown,
contingent, absolute or otherwise (collectively, the “Excluded Liabilities”), including, without
limitation, any Liabilities or claim for Liabilities (whether in contract, in tort or otherwise,
and whether or not successful): (i) of or against Z-KAT or not related in any way to the MAKO
Business or Assets of any of them; (ii) related to any liens, obligations or encumbrances of any
nature whatsoever against or in any way related to the Assets or the MAKO Business which have not
been expressly assumed by the Company hereunder to the extent any such Liability is either incurred
by a Z-KAT or arises in connection with any action, omission or event occurring on or prior to the
Contribution Date; (iii) related to the Taxes of Z-KAT; and (iv) all Bridge Loan Debt (as defined
in Section 7.1).



          (b) Except for the Assumed Liabilities expressly provided for in Section 3.2 hereof,
Z-KAT shall forever defend, indemnify and hold harmless Company (including its directors, officers,
employees, agents and holders of Company securities and its and their respective successors and
assigns, heirs, executors and administrators) from and against any and all Liabilities (including
incidentals and consequential damages), costs and expenses (including court costs and reasonable
attorney’s fees) related to or arising from the MAKO Business prior to the Contribution Date.



4. REPRESENTATIONS AND WARRANTIES OF Z-KAT. Z-KAT hereby represents and warrants to the
Company as follows:



     4.1 Organization. Z-KAT is a corporation duly organized, validly existing and in good
standing under the laws of the State of Florida, and is duly authorized, qualified and licensed
under all applicable Governmental Requirements known to Z-KAT to carry on its respective business
in the places and in the manner as now conducted.



     4.2 Approvals. The shareholders of Z-Kat and Z-Kat’s Board of Directors have each
approved the Contribution of the Assets and Necessary IP Rights to the Company pursuant to this
Agreement. Z-KAT has obtained all necessary approvals from third party licensors to sublicense the
Z-KAT License Rights to Company hereunder.



     4.3 Effect of Agreement. The execution and delivery of this Agreement and the
consummation of the transactions contemplated hereby will not (i) result in any breach of any of
the terms or conditions of, or constitute a default under, the Charter or Bylaws or other governing
documents of Z-KAT, or any commitment, mortgage, note, bond, debenture, deed of trust, contract,
agreement, license or other instrument or obligation to which Z-KAT is now a party or by which
Z-KAT or any of its properties, Assets or Z-KAT License Rights may be bound or affected; (ii)
result in any violation of any material Governmental Requirement; (iii)





      



      



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-4-









 






cause Company to lose the benefit of any right or privilege included in the Assets, including
without limitation the HSS Agreement (as defined in Schedule 2.1 hereto); (iv) relieve any
Person of any obligation (whether contractual or otherwise) or enable any Person (x) to terminate
any such obligation or any right or benefit enjoyed by Z-KAT or (y) to exercise any right under any
agreement in respect of the Assets, the Z-KAT License Rights or the MAKO Business, including
without limitation the HSS Agreement; or (v) require notice to or the consent, authorization,
approval or order of any Person not previously obtained, including without limitation with respect
to the HSS Agreement.



     4.4 Properties, Assets and Leasehold Estates. Z-KAT has good and marketable title to
the Assets, free and clear of all mortgages, liens, pledges, conditional sales agreements, charges,
easements, covenants, assessments, options, restrictions and encumbrances of any nature whatsoever.
All leases pursuant to which real property is leased in connection with the MAKO Business are in
good standing, valid and enforceable with respect to their terms. Z-KAT is the owner, without
material restriction or royalty payments thereon, of all Z-KAT Patent Rights included in the
License Agreement and has all rights with respect to any Z-KAT License Rights included in the
License Agreement, including the right in each case to license or sublicense such intellectual
property to the Company. To the best of Z-KAT’s knowledge, the Z-KAT Patent Rights and the Z-KAT
License Rights do not infringe any intellectual property rights of a third party.



     4.5 Solvency. Z-KAT has delivered to counsel for the investors in the Series A
Financing a pro forma unaudited balance sheet immediately following the Series A Financing. Such
balance sheet discloses that the fair market value of its assets shall exceed its liabilities
following the contemplated Series A Financing. Z-KAT does not have any non-disclosed liability or
obligation of any nature (whether absolute, accrued or contingent or otherwise) which is in excess
of amounts shown or reserved therefor in such balance sheet other than liabilities or obligations
incurred after the date of such balance sheet reasonably incurred in the ordinary course of
business and consistent with past practice.



     4.6 Authorization. Z-KAT has full legal right, power and authority to enter into and
deliver this Agreement and to consummate the transactions set forth herein and to perform all the
terms and conditions hereto to be performed by it. The execution and delivery of this Agreement by
Z-KAT and the performance by it of the transactions contemplated herein have been duly and validly
authorized by all requisite corporate action of Z-KAT, and this Agreement has been duly and validly
executed and delivered by Z-KAT and is the legal, valid and binding obligation of Z-KAT,
enforceable against it in accordance with its terms, except as limited by applicable bankruptcy,
moratorium, insolvency or other similar laws affecting generally the rights of creditors or by
principles of equity.



5. CONDITIONS TO CONTRIBUTION. The obligations of the Company to consummate the
transactions to be performed by it in connection with the Contribution is subject to satisfaction
of the following conditions: (a) the representations and warranties set forth in Section 4
hereof shall be true and correct in all material respects at and as of the Contribution Date; and
(b) all actions and approvals to be taken by Z-KAT in connection with consummation of the
transactions contemplated hereby and all certificates, opinions, instruments, and other documents
required to effect the transactions contemplated hereby will be satisfactory in form



      



      






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-5-









 








and substance to the Company. The Company may waive any condition specified in this Section
5 if it executes a writing so stating at or prior to the Contribution.



6. NATURE OF STATEMENTS AND SURVIVAL OF

INDEMNIFICATIONS, GUARANTEES, REPRESENTATIONS AND WARRANTIES OF Z-KAT. All
indemnifications, guarantees, covenants, agreements, representations and warranties made by Z-KAT
hereunder or pursuant hereto or in connection with the transactions contemplated hereby shall
survive the Contribution but only for a period of three years after the Contribution Date,
except that Sections 4.1 and 4.6 shall survive in perpetuity.



7. SPECIAL COVENANTS.




     7.1 Exchange of Exchanged Series A Stock. The parties agree that the Company shall
issue the certificate representing the Exchanged Series A Stock (the “Z-KAT Certificate”) in escrow
pending execution and delivery of the Exchange Agreement (as described below). Thereafter, Z-KAT
shall transfer the respective portion of the Exchanged Series A Stock, and the Company shall issue
certificated shares, to each participating holder of Z-KAT bridge note debt (each a “Bridge Note
Holder”) in exchange for cancellation of all outstanding principal and accrued and unpaid interest
of such Bridge Note Holder’s bridge loan (collectively, the “Bridge Note Debt”, all in accordance
with the terms and conditions of that certain Exchange Agreement, by and among Z-KAT, the Company
and each such Bridge Note Holder, contemplated for closing immediately following the Contribution
Date (the “Exchange Agreement,” which is expressly incorporated herein by reference). Z-KAT agrees
and covenants that the Exchanged Series A Stock shall not be transferred to any third party other
than the Bridge Note Holders. Z-KAT agrees that the Company shall cancel the Z-KAT Certificate upon
consummation of the Exchange Agreement.



     7.2 Liquidation of Retained Series A Stock. Z-KAT acknowledges that the Retained
Series A Stock shall be transferred solely for use in satisfaction of the Excluded Liabilities
(exclusive of the Bridge Note Debt) (collectively, the “Bone Fide Debt”), and Z-KAT covenants and
warrants to transfer the Retained Series A Stock (including any and all proceeds thereof) solely
for the purpose of satisfying such Bone Fide Debt (in each case, a “Transfer”). Any Transfer
thereof shall be effective only if (i) made (A) to a bone fide creditor of Z-KAT holding Bone Fide
Debt (each, a “Bone Fide Creditor”) or (B) to a Person (which shall be an “accredited investor”
within the meaning of SEC Rule 501 of Regulation D) pre-approved in writing by the Company, the
proceeds of which shall be immediately thereafter transferred to a Bone Fide Creditor; (ii) such
Transfer complies with Article III of the Stockholders Agreement by and among Z-KAT, the Company
and certain stockholders of the Company, contemplated for execution within five (5) business days
following the Contribution Date (the “Stockholders Agreement,” which is expressly incorporated
herein by reference), except that the option of each Investor Stockholder (as such term is defined
in the Stockholders Agreement) shall run for ten (10) business days in connection with a Transfer
hereunder; and (iii) each permitted transferee hereunder enters into an agreement or instrument of
accession to the Stockholders Agreement whereby such assignee shall (x) become an “Additional
Stockholder” under the Stockholders Agreement and (y) agree to become and remain bound by the
restrictions and provisions of the Stockholders Agreement as and to the same extent as the other
Stockholders (as defined in the Stockholders Agreement) party hereto.



      



      






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-6-









 









     7.3 Cash Advance Repayment and Use Thereof. The parties acknowledge that Z-KAT and
the Company are parties to that certain letter agreement, dated November 3, 2004 (the “Cash Advance
Letter”), pursuant to which Z-KAT has made certain cash payments on behalf of the Company for
which, pursuant to the Cash Advance Letter, the Company is obligated to make repayment upon
consummation of the Series A Financing. Z-KAT and the Company hereby agree and covenants that the
Company shall transfer Two Hundred Fifty Thousand Dollars ($250,000) to Z-KAT upon consummation of
the Series A Financing (the “Cash Advance Repayment”), and that such Cash Advance Repayment, in
conjunction with the issuance to Z-KAT of the Retained Series A Stock, shall be in full
satisfaction of all amounts due pursuant to the Cash Advance Letter as of the Contribution Date.
Furthermore, Z-KAT hereby covenants that the proceeds of the Cash Advance Repayment shall only be
transferred to a Bone Fide Creditor holding Bone Fide Debt, absent the written consent of the
Company.



     7.4 Excluded Liabilities. Notwithstanding the other covenants, promises and
agreements contained in this Section 7, Z-KAT hereby covenants and agrees to use its
reasonable best efforts to satisfy in full the Excluded Liabilities.



8. ASSIGNMENT OF CONTRACTS. Notwithstanding any other provision of this Agreement, nothing
in this Agreement or any related document shall be construed as an attempt to assign (i) any
contract which, as a matter of law or by its terms, is nonassignable without the consent of the
other parties thereto unless such consent has been given, or (ii) any contract or claims as to
which all of the remedies for the enforcement thereof enjoyed by a Z-KAT would not, as a matter of
law or by its terms, pass to Company as an incident of the transfers and assignments to be made
under this Agreement. In order, however, that the full value of every contract and claim of the
character described in clauses (i) and (ii) above and all claims and demands on such contracts may
be realized for the benefit of Company, Z-KAT, at the request and expense and under the direction
of Company, shall for a period of three (3) years after the Contribution Date, take all such
reasonable action and do or cause to be done all such things as, in the opinion of Company, will be
necessary or proper in order that the obligations of Z-KAT under such contracts may be performed in
such manner that the value of such contract will be preserved and will inure to the benefit of
Company, and for, and to facilitate, the collection of the monies due and payable and to become due
and payable thereunder to Company in and under every such contract and claim incurred after the
Contribution. Z-KAT shall promptly pay over to Company all monies collected by or paid to it in
respect of every such contract, claim or demand to the extent such monies are earned by the Company
on or after the Contribution Date. Nothing in this Section 8 shall relieve Z-KAT of its
obligation to use its best efforts to obtain any consents required for the transfer of the Assets
(and all rights thereunder) and the license and sublicense of the Necessary IP Rights to Company.



9. SPECIAL PROVISIONS REGARDING EMPLOYEES OF Z-KAT. The parties hereby agree and
acknowledge that, pursuant to the Cash Advance Letter, Z-KAT has provided its employees on an
exclusive basis to the Company, and that effective of the Contribution Date, all such employees
shall continue to provide exclusive service to the Company (which shall be solely responsible for
compensation and benefits of all such employees), notwithstanding that all such employees shall
remain employees of Z-KAT through December 31, 2004 and shall become employees of the Company,
effective January 1, 2005 (the “Transition Arrangement”). The contemplated, non-binding roster of
transitioning employees



      



      




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-7-









 










is as set forth in Schedule 9 hereto. The parties acknowledge that the Transition
Arrangement is meant solely for ease of payroll administration and other human resources
consideration and the parties hereby covenant to use mutual best efforts to effectuate the smooth
implementation of the Transition Arrangement in accordance with purpose set forth in this
Section 9. It is the intention of Company, and Z-KAT hereby acknowledges and agrees with
such position, that any employee (whether of Z-KAT or otherwise) that Company hires after the
Contribution Date will be a new employee of Company as of the date of hire and shall be an employee
at will of Company unless otherwise agreed in writing between Company and such employee.



10. FURTHER ACTIONS. From time to time, at the request of any party hereto, the other
parties hereto shall execute and deliver such instruments and take such action as may be reasonably
requested to evidence the transactions contemplated hereby. Notwithstanding the foregoing, Z-KAT
agrees and covenants to transfer, assign or otherwise deliver to Company all documentation
(including, without limitation, any regulatory submission documents, e.g. 510k submissions, CE Mark
technical files, etc. and regulatory clearances e.g., 510k clearances, EC examination certificates
for CE Mark) necessary or reasonably requested, based on any Governmental Requirement, for Company
to undertake and effectuate the MAKO Business.



11. GENERAL PROVISIONS.




     11.1 GOVERNING LAW; INTERPRETATION; SECTION HEADINGS. THIS AGREEMENT SHALL BE GOVERNED
BY AND CONSTRUED AND ENFORCED IN ACCORDANCE WITH THE LAWS OF THE STATE OF DELAWARE, WITHOUT REGARD
TO CONFLICT-OF-LAWS RULES AS APPLIED IN DELAWARE. THE SECTION HEADINGS CONTAINED HEREIN ARE FOR
PURPOSES OF CONVENIENCE ONLY, AND SHALL NOT BE DEEMED TO CONSTITUTE A PART OF THIS AGREEMENT OR TO
AFFECT THE MEANING OR INTERPRETATION OF THIS AGREEMENT IN ANY WAY.



     11.2 Notices. All notices and other communications hereunder shall be in writing and
shall be deemed to have been duly given when personally delivered, or forty-eight (48) hours after
sent by United States registered mail, first-class, postage prepaid or by confirmed facsimile
addressed to the Company at its address.



     11.3 Severability. Should any provision of this Agreement be held unenforceable or
invalid, then the parties hereto agree that such provision shall be deemed modified for purposes of
performance of this Agreement to the extent necessary to render it lawful and enforceable, or if
such a modification is not possible without materially altering the intention of the parties
hereto, then such provision shall be severed herefrom for purposes of performance of this
Agreement.



     11.4 Entire Agreement. This Agreement and the License Agreement set forth the entire
agreement and understanding of the parties hereto with respect to the transactions contemplated
hereby and supersedes all prior agreements, arrangements and understandings related to the subject
matter hereof.



     11.5 Binding Effect; Assignment. All the terms, provisions, covenants and



      



      



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-8-









 








conditions of this Agreement shall be binding upon and inure to the benefit of and be
enforceable by the parties hereto and their respective heirs, executors, administrators,
representatives, successors and assigns. This Agreement and the rights and obligations of the
parties hereto shall not be assigned or delegated by any party hereto without the prior written
consent of the other parties hereto.



     11.6 Execution and Delivery; Counterparts. A facsimile, telecopy or other
reproduction of this Agreement may be executed by one or more parties hereto and such execution and
delivery shall be considered valid, binding and effective for all purposes. At the request of any
party hereto, all parties hereto agree to execute an original of this Agreement as well as any
facsimile, telecopy or other reproduction hereof. This Agreement may be executed simultaneously in
two or more counterparts, each of which shall be deemed an original, but all of which together
shall constitute one and the same instrument.



[THIS SPACE INTENTIONALLY LEFT BLANK; SIGNATURE PAGE FOLLOWS]




      



      





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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     IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first above
written.






	 	 	 
	 

	 	COMPANY
	 
	 	 
	ATTEST:

	 	MAKO SURGICAL, CORP.
	 
	 	 
	/s/ Menashe Frank

	 	By: /s/ Maurice R. Ferré
	 

	 	 
	Secretary:

	 	Name: Maurice R. Ferré

Title: President
	 
	 	 
	 
	 	 
	 

	 	Z-KAT
	 
	 	 
	 

	 	Z-KAT, INC.
	 
	 	 
	ATTEST:
	 	 
	 
	 	 
	/s/ Fritz LaPorte

	 	By: /s/ Maurice R. Ferré
	 

	 	 
	Secretary:

	 	Name: Maurice R. Ferré

Title: President






[Corporate Seal]




 




 




 




 




SIGNATURE PAGE TO ASSET CONTRIBUTION AGREEMENT




      



      



      



      




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




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SCHEDULE 2.1

LIST OF ASSETS




     (All terms used herein that are defined in the Agreement to which this Schedule is attached
have the same meaning herein as set forth in such Agreement.)



     The Assets shall consist of all assets of Z-KAT utilized solely or primarily in the MAKO
Business and all tangible and certain specified intangible assets utilized solely or primarily in
connection with the MAKO Business and to which Z-KAT has the right, title and interest, other than
the Excluded Assets listed on Schedule 2.3 hereto. The Assets specifically shall include, but not
be limited to (i) the names “MAKO Surgical,” “MAKO Robotic” and all derivations thereof, (ii) all
of the inventory, work-in-process, materials, furniture, fixtures, equipment, leasehold
improvements, leases, tooling, telephone numbers, warranties on assets, prepaid expenses, including
insurance, customer lists, drawings, software documentation, licenses and permits, books and
records (other than corporate minutes and stock records), marketing materials, noncompete
agreements, non-disclosure agreements, consulting agreements and employment agreements with
employees of Z-Kat engaged in the business or to be hired by the Company, contracts and contract
rights, including, without limitation, the Sponsored Research and Collaboration Umbrella Agreement
and addendum, by and between Z-KAT and Hospital for Special Surgery, as amended June 10, 2004 (the
“HSS Agreement”), inventions, copyrights, trademarks, trade names, service marks and service marks
pending (if any), corporate names, royalty agreements and other proprietary rights of Z-KAT used
primarily in the MAKO Business; and (iii) the following:





	 	 	 	 	 
	Deposits
	 	 	 	 
	Barrett Technologies — WAM Deposit
	 	$	39,750.00	 
	Barrett Technologies — WAM Deposit
	 	 	72,875.00	 
	Barrett Technologies — Wrist Deposit
	 	 	6,500.00	 
	 
	 	 	 
	Total Deposits
	 	$	119,125.00	 
	 
	 	 	 	 
	Prepaid Expenses
	 	 	 	 
	HSS Prepaid Services
	 	$	22,083.31	 
	 
	 	 	 	 
	Fixed Assets
	 	 	 	 
	R&D Equipment, net
	 	$	34,023.04	 
	Computer Equipment, net
	 	 	35,230.87	 
	Office Equipment & Furniture, net
	 	 	37,910.46	 
	 
	 	 	 
	Total Fixed Assets
	 	$	107,164.37	 






Note: The above balances are estimates through the closing date.




      



      




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




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SCHEDULE 2.3

EXCLUDED ASSETS




The stock ledger and corporate minute book of Z-KAT, as well as the following retained assets:




	 	 	 	 	 
	Cash (approximate)
	 	$	246,979.68	 
	Accounts Receivable
	 	 	104,278.55	 
	Due from Biomet
	 	 	40,835.25	 
	Inventory, net of reserve
	 	 	272,432.96	 
	Deposits
	 	 	1,003.65	 
	Prepaid Expenses
	 	 	26,935.35	 
	 
	 	 	 	 
	Fixed Assets
	 	 	 	 
	Manufacturing Equipment, net
	 	$	6,055.55	 
	Loan & Demo Equipment, net
	 	 	464.83	 
	Fee-Per-Use Equipment, net
	 	 	28,163.77	 
	Leasehold Improvements, net
	 	 	2,030.83	 
	R&D Equipment — on Loan, net
	 	 	34,386.46	 
	 
	 	 	 
	Total Fixed Assets
	 	$	71,101.44	 
	 
	 	 	 	 
	Patents & Licenses, net
	 	$	3,446,281.89	 
	Goodwill, net
	 	 	361,737.95	 
	Security Deposit
	 	 	8,259.26	 
	Deferred Software Development
	 	 	254,231.00	 
	Deferred R&D Costs
	 	 	205,799.92	 






Note: The above balances are estimates through the closing date.




      



      





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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SCHEDULE 3.2


ASSUMED LIABILITIES




The Company shall be responsible for all costs and expenses relating to the MAKO Business arising
after the Contribution Date, including, without limitation, all obligations concerning employees as
set forth in Section 9 of the Agreement, and all obligations (including, without
limitation, lease and utility payments) associated with the offices in which the MAKO Business is
performed.



      



      





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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SCHEDULE 9




TRANSITIONING EMPLOYEES




	 	 	 	 	 	 
	 
	 	Employee	 	 	Title	 
	 	Maurice Ferré

	 	 	President & Chief Executive Officer	 
	 	Rony Abovitz

	 	 	Chief Technology Officer	 
	 	Fritz LaPorte

	 	 	Chief Financial Officer	 
	 	Menashe Frank

	 	 	General Counsel	 
	 	Louis Arata, Ph.D.

	 	 	Director of Software Engineering	 
	 	Arthur Quaid, Ph.D.

	 	 	Director of Research & Development	 
	 	William Tapia

	 	 	Director of Regulatory Affairs	 
	 	Benjamin Hajaj

	 	 	Director of Operations / Quality Assurance	 
	 	Scott Illsley

	 	 	Application Team Leader	 
	 	Hyosig Kang, Ph.D.

	 	 	Haptic Systems Scientist	 
	 	Mark Leybzun

	 	 	Sr. Mechanical Engineer	 
	 	Dennis Moses

	 	 	Sr. Systems Software Engineer	 
	 	Jeetendra Bharadwaj

	 	 	Mechanical Engineer	 
	 	Prashant Chopra

	 	 	Application Software Engineer	 
	 	Viraj Alankar

	 	 	Systems Administrator	 
	 	Daniel Norona

	 	 	Accounting Manager	 
	 	Gerald Riley

	 	 	Document Control Manager	 
	 	Althea Brown-Walden

	 	 	Office Administrator	 
	 





      



      



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




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Exhibit
R.B.




LICENSE AGREEMENT




     THIS LICENSE AGREEMENT (this “Agreement”) is made and entered into this 17th day of
December, 2004 (the “Effective Date”), by and among Z-KAT, INC., a Florida corporation
(“Z-KAT”), and MAKO Surgical Corp., a Delaware corporation (“MAKO”). Z-KAT and
MAKO are each referred to as a “Party” and collectively as “Parties.”



     WHEREAS, Z-KAT and MAKO have entered that certain Contribution Agreement, dated as of the even
date herewith (the “Contribution Agreement”), in which Z-KAT has agreed to enter into this
License Agreement;



AGREEMENT




     NOW, THEREFORE, for and in consideration of the premises, the mutual representations,
warranties and covenants herein contained and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties hereby agree as follows:



ARTICLE 1

DEFINITION




     1.1 An “Affiliate” of a party means an entity directly or indirectly controlling,
controlled by or under common control with that party, where control means the ownership or
control, directly or indirectly, of more than fifty percent of all of the voting power of the
shares (or other securities or rights) entitled to vote for the election of directors or other
governing authority, as of the date of this Agreement or hereafter during the term of this
Agreement. However, the entity will be considered an Affiliate only for the time during which such
control exists.



     1.2
“Biomet Agreements” refers collectively to that certain Cross License Agreement by
and between Z-KAT and Biomet Manufacturing Corp. (“Biomet”), a copy of which is attached hereto as Exhibit F,
that certain Sublicense Agreement by and between Z-KAT and Biomet, a copy of which is attached
hereto as Exhibit G, and that certain Asset Purchase and Sale Agreement by and between
Z-KAT and Biomet
Manufacturing Corp., all of which were entered into effective as of October 1, 2004.



     1.3 “IP Rights” mean patents and patent applications, including provisional patents,
design patents and registrations, utility patents, utility models, petty patents; any continuation,
continuations-in-part, divisional, extension, provisional application, substitute, reissue,
reexamination, renewal, or extension (including any supplementary protection certificate) of any
such patent or patent application; any confirmation patent or registration patent or patent of
addition based on any such patent; all foreign counterparts of any of the foregoing, and any patent
claiming priority to any such patent or patent application (collectively “Patents”); U.S.
and foreign copyrights and copyright registrations, database protection rights, mask works and mask
work registrations, and all renewals, continuations, and extensions thereof (collectively
“Copyrights”); ownership and all rights to control possession, use and/or disclosure of
trade secrets and other confidential information; all causes of action relating to any of the
forgoing, including the right to collect and receive past damages; all applicable rights under all




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



 









 





international and transnational treaties and conventions relating to protection of
intellectual or industrial property arising from any of the forgoing, and all other legal rights
(whether they arise under contract, statute or common law) for the protection of intellectual or
industrial property throughout the world. Specifically excluded from IP Rights are trademarks,
trade dress, trade names, and similar rights in indicia of origin.



     1.4 “License” has the meaning given to it in Section 2.1.



     1.5 “License Agreements” mean, collectively, that certain that certain Master
Agreement by and between Z-KAT and Cleveland Clinic
Foundation(“CCF”), effective as of January 1, 2003
(the “CCF
License Agreement”), a copy of which is attached hereto as Exhibit A; that certain
Agreement by and between Z-KAT and Cedara Software Corp. (“Cedara”), made effective as of September 19, 2003 (the
“Cedara License Agreement”), a copy of which is attached hereto as Exhibit B; that
certain License Agreement, by and between Z-KAT and Northwestern
University (“NWU”), made July 30, 1997 (the
“NWU License Agreement”), a copy of which is attached hereto as Exhibit
C; that certain License Agreement by and between Z-KAT and George
S. Allen (“Allen”), made August 31,
2001 (the “Allen License Agreement”), a copy of which is attached hereto as
Exhibit D, and that certain Exclusive License by and between Z-KAT and Barrett Technology
(“Barrett”), dated March 12, 1998, a copy of which is attached hereto as Exhibit E.
Allen has subsequently assigned his interests in the
Allen License Agreement to Marker LLC, a Tennessee Limited Liability
Company (“Marker”)
(Allen and/or Marker, as the case may be, hereinafter referred to as
“Allen”).



     1.6
“Licensors” refer to Barrett, CCF, Cedara, NWU, and
Allen, collectively. “Licensor” refers to
any one of them.



     1.7 “Licensed IP Rights” means (a) all the Licensed Patents and (b) all IP Rights,
excluding however Patents, throughout the world that, as of the Effective Date, are owned (in whole
or in part) by Z-KAT or have been licensed (including sublicensed) to Z-KAT and are licensable by
Z-KAT to others, including without limitation those IP Rights (excluding Patents) licensed to Z-KAT
by CCF (the “CCF Licensed IP Rights”), Cedara (the
“Cedara Licensed IP
Rights”), NWU (the “NWU Licensed IP
Rights”), Allen (the “Allen Licensed IP
Rights”), and Barrett (the Barrett Licensed IP Rights”), pursuant to the respective
License Agreements, and by Biomet (the Biomet Licensed IP
Rights”) under the Biomet
Agreements.



     1.8 “Licensed Patents” means those Patents identified on Schedule 1.8, and all
Patents claiming the benefit of, priority to, or any subject matter found in, the identified
Patents.



     1.9 “MAKO Business” has the meaning given to it in the Contribution Agreement.



     1.10 “MAKO Field” means the medical specialty of orthopedic surgery, which includes,
without limitation, the preservation, restoration, development, repair and correction of the
musculoskeletal system and associated structures, including, without limitation, the spine and
neck, but which expressly excludes non-bone oncology, blood vessels and vitals organs, neurology
(which is the medial specialty concerned with the brain, spinal cord and nervous system), non-spine
neurosurgery, cranial neurosurgery, ENT and otolaryngology.



     1.11 “Technical Information” means, collectively, all technical information, including
without limitation software, documentation, files, data and information contained therein, in




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-2-









 





Z-KAT’s possession relating to the MAKO Business, to the extent is owned or otherwise
licensable (including sub-licensable) by Z-KAT to others.



     1.12 “Z-KAT Field” means all fields other than the MAKO Field.



ARTICLE 2

GRANTS OF LICENSE




     2.1 Grant of License to MAKO. Subject to all of the terms and conditions of this
Agreement, and in particular the limitations of Section 2.3, Z-KAT grants to MAKO, to the extent it
has a right to do so, a worldwide, fully transferable, perpetual, royalty-free and fully paid-up
license (or sublicenses, as the case may be) under the Licensed IP Rights within, and limited to,
the MAKO Field (the “License”). The License granted hereunder (a) shall include the right
to sublicense, (b) is irrevocable and cannot be terminated for any reason (including material
breach of this Agreement) except as expressly provided herein, and (c) is transferable to the
extent that such transfer is in compliance with Section 11.2.



     2.2 Scope of Grant.



          (a) The License is exclusive within the MAKO Field, but only to the extent that the Licensed
IP Rights possessed or licensable by Z-KAT are exclusive within the MAKO Field.



          (b) The License includes, unless it is otherwise expressly stated in this Agreement, and
subject specifically to the limitations of Section 2.3, the following rights:



               (i) with respect to Patents, to make, have made, use, lease, sell, offer to sell, and import
machines and articles of manufacture for use within the MAKO Field; and to make, have made, use and
import machines, tools, materials and other instrumentalities, insofar as such machines, tools,
materials and other instrumentalities are involved in or incidental to the development,
manufacture, testing or repair of products for use within the MAKO Field, which are made or
imported under the authority of the licensee;



               (ii) with respect to Technical Information, to make, use, sell, lease, distribute, publicly
display, and make available products solely within the MAKO Field incorporating or embodying the
Technical Information;



               (iii) with respect to copyrights, to copy, publicly distribute, publicly perform, publicly
display, prepare derivatives, and digitally transmit the work in which the copyright exists, for
use within the MAKO Field; and



               (iv) to convey to any purchaser, lessee, or user of any product for use within the MAKO Field,
which is made under authority of MAKO or its sublicensee, rights to use and resell the product.



          (c) MAKO may, without the consent of or notice to Z-KAT, grant further sublicenses under the
License, but only to the extent and within the scope of the License that it has been granted under
this Agreement. However, if any of the License Agreements require




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-3-









 






notice of grant of sublicense, MAKO must provide notice to the Licensor in accordance with the
License Agreement.



     2.3 Limitations on and Exclusions from Grant.



          (a) Notwithstanding section 2.2(a), MAKO may not, and will not, make available to third
parties any part or portion of software that is included with or that contains Technical
Information except pursuant to a license that obligates the licensee not to disclose the software
or use it except as permitted by this Agreement, and subject to all the terms and conditions of
this Agreement.



          (b) Notwithstanding section 2.1, the grant to MAKO of a sublicense in section 2.1 under the
Allen Licensed IP Rights is non-exclusive. Furthermore, MAKO acknowledges that the License with
respect the making or manufacturing products under the Allen License Agreement is conditioned on
the prior written approval of Allen. Z-KAT shall diligently work with
Allen, and MAKO shall
cooperate as required, to obtain such approval within a reasonable period of time after the
Effective Date of this Agreement. Until Allen has provided written approval for MAKO to make
products covered by the Licensed IP Right licensed to Z-KAT under the
Allen License Agreement, MAKO
may purchase from Z-KAT, and Z-KAT will sell to MAKO at cost,
fiducial markers and other products that come
within the scope of the Licensed IP Rights licensed to Z-KAT pursuant
to the Allen License
Agreement that meet the specifications agreed to by MAKO and Z-KAT.
All fiducial markers and other products
purchased by MAKO from Z-KAT that are covered by Licensed IP Rights
under the Allen License
Agreement shall be manufactured by an entity approved by MAKO, which approval will not be
unreasonably withheld.



          (c) For the avoidance of any doubt, and notwithstanding anything to the contrary in this
Agreement, Z-KAT is not granting to MAKO a license or sublicense that it is not otherwise permitted
to grant under the Licensed Agreements, or that extends beyond the scope of, or otherwise
constitutes a breach of, any agreement to which Z-KAT is a party as of the Effective Date,
including without limitation the License Agreements, the Biomet Agreements and other agreements
(collectively “Prior Agreements”). Z-KAT’s foregoing grant of a License to MAKO under this
Article 2 is subject to all of the limitations of the Prior Agreements. In particular, and without
limiting the generality of this Section 2.3(c), the scope of the sublicenses granted by this
Agreement under the licenses granted in the Cedara Agreement are non-exclusive and are limited to
the right to make, have made, use, sell, copy, modify, prepare derivatives, adapt, transmit,
perform, and reproduce apparatus, processes, software and other works of authorship and information
with respect to “ CAOS Applications” and “ CAOS Platforms,”
as those terms are defined in the Cedara Agreement.



     2.4 No Other Licenses; No Assignments. Other than the licenses expressly set
forth above or in other written agreements, Z-KAT is not granting any other license or
sublicense, whether by implication, estoppel or otherwise. Except as otherwise expressly stated,
nothing in this Agreement is intended to transfer title to, or other ownership interest in, any
IP Right.




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-4-









 





ARTICLE 3

PUBLICITY AND CONFIDENTIALITY





     3.1 Confidentiality of Technical Information Exchanged by the Parties. Each Party
will hold any technical or other information that is disclosed to it by the other Party, and that
is owned, and not licensed to, such other Party (“Confidential Information”) in confidence
and take reasonable precautions to maintain and protect the confidentiality of the Confidential
Information, but in no event less than reasonable care that it would take to protect its own
confidentiality and proprietary information. Technical Information that is owned, and not licensed
to, Z-KAT will be treated as Confidential Information. Technical Information that is
licensed to Z-KAT and sublicensed to MAKO herein will be treated
pursuant to Section 3.3. A receiving Party may disclose Confidential Information of the disclosing
Party to, and share the Confidential Information of the disclosing Party with, its employees,
contractors, representatives, and others who have a need to know it, so long as each such person is
obligated not to disclose such information to others and to use it only for the purposes for which
access is being given. Parties other than employees having access to software or to Confidential
Information must be licensed to use the Confidential Information, and may only use it to the same
extent as the receiving Party is licensed to use it under this Agreement.



     3.2 Exceptions. Notwithstanding the forgoing obligations of confidentiality,



          (a) The receiving Party may, except with respect to software, make available to third parties
products and related user documentation incorporating or made using the Confidential Information.
The receiving Party may only distribute to third parties Software that is part of, or that includes
the Confidential Information, pursuant to a written agreement that obligates each third party not
to disclose the software and not to use the software except as expressly permitted by this
Agreement, and that expressly forbids use of the software beyond the limits of the licenses granted
to the receiving Party in this Agreement.



          (b) The receiving Party may disclose Confidential Information as required by law, but only to
the extent required by law, and also in response to a valid order of a court or other government
body or any political subdivision thereof, but only if the receiving Party has taken reasonable
action to seek a protective order limiting the scope of the disclosure and has promptly notified
the disclosing Party of the requirement to disclose the Confidential Information.



          (c) Confidential Information does not include information that (i) is or becomes
publicly known through no unauthorized act of a receiving Party or those that it has licensed or
given access to the Confidential Information, (ii) is rightfully received by the receiving Party
from a third party without obligation of confidentiality, or (iii) is approved by the disclosing
Party for public disclosure.



     3.3 Confidentiality of Technical Information of Licensors. MAKO’s obligations under
this Agreement with respect to any Technical Information licensed to Z-KAT and sublicensed to MAKO
under this Agreement are the same as the obligations placed by the respective Licensors on Z-KAT
with respect to such Technical Information, and in no event less than the obligations imposed on a
receiving Party by Sections 3.1 and 3.2. MAKO may disclose to others, use and permit others to use
any of Technical Information licensed to Z-KAT by a Licensor only to the extent the License
Agreement of the Licensor under which the Technical Information is licensed to Z-KAT permits
disclosure and use.




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-5-









 





     3.4 Publicity and Trademarks. Nothing in this Agreement will be construed as
conferring upon either Party or its Affiliates any right to include in advertising, packaging or
other commercial activities related to a product, any reference to the other Party (or any of its
Affiliates), its trade names, trademarks or service marks in a manner which would be likely to
cause confusion or to indicate that such product is in any way certified by the other Party hereto
or its Affiliates.



ARTICLE 4

PATENTING; MAINTENANCE OF PATENTS; PAYMENTS




     4.1 Patent Prosecution and Maintenance.



          (a) Z-KAT will initially have the sole right to prosecute, control prosecution of, and
maintain the Licensed Patents that are solely owned by Z-KAT (“Z-KAT Licensed
Patents.”). However, it may, at is sole option, give control to MAKO to prosecute any one
or more the Z-KAT Licensed Patents.



          (b) The Party having control over prosecution of a patent application or patent included in
the Licensed Patents will consult and reasonably cooperate with the other Party in determining the
best course of action for prosecuting each patent application that is included in the Licensed
Patents. The Party in control will keep the other Party informed on each application’s or patent’s
status and will promptly provide to the other Party copies of all papers and correspondence filed
or sent in connection with the application. The Party not having control must have reasonable
opportunity to consult with the other Party prior to the Party in control undertaking any action
that may materially affect the scope, validity, or existence of the application.



          (c) Should a Party decide to give up control and responsibility for prosecution of a patent
application, or decide to abandon such application with the intent not to continue examination of
the claimed invention in another application, it must give the other Party reasonable notice of its
intentions and take all reasonable steps to cooperate with the other Party and to transfer to it
control of the application without loss of rights.



          (d) Should MAKO be given or take control of prosecution or maintenance of a patent
application, Z-KAT will execute, and will take reasonable actions to obtain the cooperation of
their respective employees in executing, all papers reasonably required to enable the other Party
to file, prosecute and maintain such patent applications.



          (e) Nothing in this Section 4.1 shall be deemed to require MAKO to prosecute or maintain any
Z-KAT Licensed Patents that MAKO (i) deems in its sole discretion no longer necessary to
conduct the MAKO Business and (ii) renounces pursuant to Section 4.6.



     4.2 Maintenance Fees and Prosecution Costs.



          (a) For patents and patent applications included the Licensed IP Rights, MAKO will pay to
Z-KAT its Ratable Share (defined in Section 4.2(c)) of all reasonable costs associated with
prosecution and issuance of each patent or patent application (“Prosecution Costs”)
included within the Licensed Patents. Examples of Prosecution Costs include




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-6-









 





reasonable legal fees and foreign associate charges, filing fees, duplication costs, courier
fees and the like. Maintenance, renewal fees (or “annuities”) and other periodic fees and
taxes that must be paid to maintain a patent or patent application are not, for purposes of this
section, Prosecution Costs. Should MAKO take responsibility for prosecution of any of the Licensed
Patents, Z-KAT will be responsible for reimbursing MAKO for amounts in excess of its Ratable Share
of the Prosecution Costs for each such patent or patent application.



          (b) MAKO will, within 15 days after receipt of written notice from Z-KAT, pay to Z-KAT its
Ratable Share of costs (other than Prosecution Costs) associated with maintaining each patent and
patent application included in the Licensed Patents, including without limitation any periodic
government fees (“Maintenance Fees”) — e.g. maintenance fees, renewal fees, “annuities”
and the like — and reasonable third-party charges and costs associated with tracking and paying
the fees (collectively, “Maintenance Costs”). Should MAKO take responsibility for payment
of the Maintenance Costs of any of the Licensed Patents upon mutual consent between MAKO and Z-KAT,
Z-KAT will, within 15 days after receipt of written notice from MAKO, reimburse MAKO for amounts in
excess of MAKO’s Ratable Share of the Maintenance Costs.



          (c) For the purposes of this Section 4.3, “Ratable Share,” with respect to any
particular patent or patent application, equal to 1/N
where N is the number of entities (including MAKO)
licensed or sublicensed by Z-KAT under the particular
patent or patent application; or, in the case of minimum royalties, sublicenses under the Licensed
Agreement pursuant to which such Minimum Royalties are due.



     4.3 Running Royalties. For activities undertaken by, on behalf of, or under the
authority of MAKO, its affiliates, and its sublicensees, MAKO will pay all royalties and other
amounts of money that, if these activities were undertaken by Z-KAT, Z-KAT would otherwise be
obligated to pay under the respective License Agreements as a consequence of the activities
(“Running Royalties”).



     4.4 Minimum Royalties. MAKO will pay, in addition to Running Royalties, a portion of
all Minimum Royalties (as defined below) and other amounts due under the License Agreements (other
than the Allen License Agreement) after the Effective Date that are necessary to maintain a grant
of license or exclusivity under a grant of license (“Minimum Royalties”). The portion of
the Minimum Royalties that MAKO must pay under a given one of the License Agreements is the
difference between the sum of any amounts actually paid by MAKO pursuant to Section 4.1 under the
License Agreement, and a Ratable Share Minimum Royalty that is otherwise due under the License
Agreement. Nothing in this Section 4.4 shall be deemed to require MAKO to maintain or pay any
Minimum Royalties with respect toe Licensed Patents that MAKO (a) deems in its sole discretion no
longer necessary to conduct the MAKO Business and (b) renounces pursuant to Section 4.6.



     4.5 Payments.



          (a) Except for Maintenance and Prosecution Costs that Z-KAT incurs, MAKO will pay all amounts
due under this Agreement to a particular Licensor directly to the Licensor if the Licensor agrees
to accept such payments directly from MAKO and to relieve Z-KAT from all obligations or
responsibilities for collecting and paying amounts due from MAKO (as a




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-7-









 





sublicensee) and for providing reports. Otherwise, MAKO will pay to Z-KAT all such amounts
and provide to Z-KAT any reports required of Z-KAT or a sublicensee under the respective License
Agreements. Z-KAT will immediately pay those amounts to the respective Licensors.



          (b) Except for Maintenance and Prosecution Costs, and unless MAKO comes to a different
agreement with the Licensor as permitted under section 4.5(a), all of MAKO’s payments will be due
and payable on the same schedules as Z-KAT’s payments are due under the respective License
Agreements. If MAKO must pay Running Royalties and Minimum Royalties to Z-KAT pursuant to section
4.5(a), MAKO must pay to Z-KAT any and all amounts within 15 days after receipt of written notice
from Z-KAT that such payment is due. MAKO must also deliver to Z-KAT any reports on the activities
of MAKO and those under its authority that are due under the License Agreement.



          (c) Maintenance and Prosecution Costs incurred by Z-KAT will, to the extent they are
reasonable, be reimbursed by MAKO within 45 days of presentation of an invoice or other document
requesting payment. Z-KAT will, at MAKO’s request, supply any available additional documentation
to substantiate the costs.



          (d) In the event Z-KAT fails to make any payment when due and payable under any one of the
License Agreements and MAKO makes the payment Z-KAT is otherwise obligated to pay, MAKO may, at its
option, pay to the Licensor the amount due, in which case it may seek reimbursement from Z-KAT for
Z-KAT’s share of the payment that was due.



          (e) In the event MAKO fails to make any payment which it is obligated to make under this
Agreement with respect to any sublicense granted hereunder, to Z-KAT or to any particular Licensor
within thirty (30) days after receiving written notice by Z-KAT of MAKO’s failure to make such
payment, then such sublicense granted to MAKO hereunder for which such payment was due shall
terminate; provided, that this Agreement shall remain in full force and effect. However,
if there is a genuine dispute between MAKO and a Licensor under a License Agreement regarding any
amount due, MAKO’s failure to pay such amount will not give rise to termination of the sublicense
granted hereunder, though MAKO will remain obligated to reimburse Z-KAT for MAKO’s share of any
amounts paid by Z-KAT to such Licensor within 15 days of resolution of such dispute.



     4.6 Renunciation of License. MAKO may give up its license with respect to any one or
more Licensed Patents by giving written notice to Z-KAT of its intention to do so, which will be
effective immediately. MAKO will remain liable for any Prosecution Costs and Maintenance Costs
incurred prior to giving up its license, but will have no further rights or obligations under this
Article 4 with respect to the particular patent or patent application.



     4.7 Records and Audit. Unless MAKO otherwise comes to an agreement with the Licensor
pursuant to Section 4.5(a), MAKO will keep all books, records and other information necessary for
Z-KAT to comply with its obligations under each License Agreement with respect to sublicensees. In
the event MAKO pays Z-KAT Running Royalties and Minimum Royalties pursuant to Section 4.4(a), MAKO
(including related companies and sublicensees) will keep full, clear and accurate records with
respect to all Licensed Products necessary for determining the amounts due to Z-KAT under this
Agreement, and will furnish any information which Z-KAT



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-8-









 





may reasonably prescribe from time to time to enable Z-KAT to ascertain the amounts due.
Z-KAT may, not more than once per calendar year and only through accredited auditors, make an
examination, following advance notice and during normal business hours, of all records and accounts
bearing upon the amount of royalty payable to it hereunder. The auditors may disclose only the
amounts due and may not disclose any records or other information of MAKO and their customers.
Payments must be made within 60 days to compensate for any errors or omissions disclosed by such
examination. If such audit discloses under-reporting of 5 percent or greater with respect to the
reported sums paid to Z-KAT by MAKO during the applicable period subject to such audit, MAKO will
fully reimburse Z-KAT within 60 days after demand, for the reasonable fees and disbursements for
completing such audit. Otherwise, Z-KAT will be responsible for payment of the actual costs
(including professional fees and disbursements) for each such audit.



ARTICLE 5

OTHER OBLIGATIONS OF MAKO




     5.1 Marking. MAKO will place a patent notice in accordance with 35 U.S.C. §287 on any
products made by or on behalf of MAKO, which are covered by, or made with a process covered by, a
US patent included within the Licensed IP Rights. MAKO will also require that each such product
made under its authority (other than a product made by, on behalf of, or under authority of the
other Party) will also be marked with a notice in accordance with 35 U.S.C. §287. Otherwise, MAKO
shall not have any obligation to mark any product.



     5.2 Sublicensee Obligations under License Agreements. Notwithstanding anything to the
contrary in this Agreement, MAKO will, with respect to its sublicense under each of the License
Agreements, assume each obligation that a sublicensee must have under the License Agreement in
order to avoid breach of the License Agreement and warrants that it comply with all terms and
conditions of each License Agreement that apply to sublicensees.



     5.3 Grant Back of Non-Exclusive License. MAKO grants to Z-KAT a fully paid,
royalty-free, non-exclusive, irrevocable, non-terminable license in the Z-KAT Field to make, have
made, use, sell, offers for sale, copy, publicly distribute, perform, display and transmit (except
as otherwise limited below), prepare derivatives, disclose and make available, publish arising from
any Improvements (defined below) owned, invented, created or discovered either solely or jointly
with others by MAKO or its employees, or otherwise licensable by MAKO without payment to an
unrelated third party. This foregoing license is fully transferable, in whole or in part, without
permission of MAKO and includes the right to grant sublicenses at any level.
“Improvements” are (a) any inventions (whether or not patented) that would, if practiced,
come within the scope of any Patents included in the Licensed IP Rights; (b) derivatives of any
works of authorship (including software) that is the subject of the License granted to MAKO, or any
work (including software) that, but for the License granted to MAKO, would infringe any of the
Copyrights included in the Licensed IP Rights; and (c) inventions, software or additional technical
information incorporating or embodying Technical Information licensed to MAKO, or that, but for the
Technical Information licensed to MAKO, could not have been developed or discovered. MAKO must
disclose any Improvements not previously disclosed to Z-KAT to Z-KAT promptly after Z-KAT’s
request. Technical information developed by MAKO and disclosed to Z-KAT will be treated as
Confidential Information of MAKO under Article 3.




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-9-









 





     5.4 Good Faith Negotiation for Additional Licenses. MAKO will negotiate with Z-KAT in
good faith to grant to Z-KAT on commercially reasonable, but mutually agreeable terms, a
royalty-bearing license to Z-KAT in the Z-KAT Field, in addition to the royalty-free, non-exclusive
license for Improvements under Section 5.3, under any IP Rights to any inventions (whether or not
patentable), works of authorship (including software), or technical information conceived of,
reduced to practice, created, developed or discovered, either solely or jointly with others, by
MAKO, its employees and contractors. MAKO’s failure to offer or agree to an exclusive license will
not be evidence of a lack of good faith or unreasonable.



ARTICLE 6

ENFORCEMENT




     6.1 No Obligation to Enforce; Cooperation. Subject to the rights of the Licensors of
the Licensed IP Rights, neither Party has an obligation to enforce through a legal proceeding any
Licensed IP Rights. MAKO will not enforce any of the Licensed IP Rights outside the MAKO Field
without the prior consent of Z-KAT. Z-KAT will not enforce the Licensed IP Rights inside the MAKO
Field without the prior consent of MAKO. In the event one Party desires to bring a legal action to
enforce any of the Licensed IP Rights, the Parties will act promptly and in good faith, subject to
the rights of the relevant Licensor of each of the Licensed IP Rights to be enforced, to negotiate
terms and conditions under which one or both of the Parties may bring the action.



ARTICLE 7

LIMITED WARRANTIES; REPRESENTATIONS AND COVENANTS




     7.1 Each Party covenants that it will not terminate or knowingly take any action that would
cause or permit termination of the License Agreements. Z-KAT covenants that it will not amend the
License Agreements or knowingly take any other actions that would limit sublicenses granted under
this Agreement.



     7.2 To the knowledge of Z-KAT, practice of the Licensed IP Rights, within the scope of the
License granted in this Agreement (including all of its limitations), does not infringe any third
party IP Rights.



     7.3 EXCEPT AS EXPRESSLY SET FORTH HEREIN, NEITHER PARTY MAKES ANY REPRESENTATIONS OR
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO MARKETABILITY, USE OR FITNESS FOR ANY
PARTICULAR PURPOSE, AND NON-INFRINGEMENT.



ARTICLE 8

BANKRUPTCY




     Z-KAT and MAKO each acknowledges and agrees that this Agreement (i) constitutes a
license of Intellectual Property (as such term is defined in the United States Bankruptcy Code, as
amended (the “Code”)), and (ii) is an executory contract, with significant
obligations to be performed by Z-KAT and MAKO. The parties hereto agree that each may fully
exercise all of its rights and elections under the Code following any event of bankruptcy affecting
the other, including, without limitations, those set forth in Section 3 65(n) of the Code. If
requested by




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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MAKO, MAKO shall be entitled to (a) enjoy all of the rights, benefits and use granted
hereunder for the remaining duration of the terms plus any renewal periods and (b) Z-KAT shall
immediately make available to MAKO all product, source code, formulas, information, documents and
raw materials as may be necessary for MAKO to continue to utilize the License and sublicenses
granted hereunder following a rejection of the License and/or the sublicenses set forth in this
Agreement in a Z-KAT bankruptcy.



ARTICLE 9

INDEMNIFICATION




     9.1 Indemnification.



          (a) Subject to the provisions of this Article 9, including, without limitation, Section 9.2,
Z-KAT will indemnify in respect of, and hold MAKO and its officers, directors, employees and agents
harmless against, any and all damages, claims, deficiencies, losses, including taxes, and all
expenses (including interest, penalties, and reasonable attorneys’ and accountants’ fees and
disbursements but reduced by any tax savings, benefits or offsets to which any party shall be
entitled directly or indirectly by reason thereof) (collectively “Damages”), resulting from
a third party claim of: (i) any misrepresentation, breach of warranty or failure to
perform any covenant or agreement on the part of Z-KAT under this Agreement or (ii) failure to
maintain any of the License Agreements. Z-KAT further agrees to indemnify in respect of, and hold
MAKO, its officers, directors, employees and agents harmless against, all Damages, injuries and
deaths claimed by a third party resulting directly or indirectly from production, manufacture,
sale, marketing, lease, use of a product or service by Z-KAT or its Affiliates, except to the
extent such Damages, injury or death results from the negligence, gross negligence or intentional
misconduct of MAKO, its employees, officers and directors.



          (b) Subject to the provisions of this Article 9, including, without limitation, Section 9.2,
MAKO agrees to indemnify in respect of, and hold Z-KAT and its officers, directors, employees and
agents harmless against, any and all Damages resulting from a third party claim of: (i)
any misrepresentation, breach of warranty, or (ii) failure to perform any covenant or
agreement on the part of MAKO under this Agreement, except to the extent such Damages result from
the negligence, gross negligence or intentional misconduct of Z-KAT or its respective employees,
officers and directors. MAKO further agrees to indemnify in respect of, and hold Z-KAT, the
Licensors, and their respective offices, directors, employees and agents harmless against, all
Damages, injuries and deaths claimed by a third party resulting directly or indirectly from
production, manufacture, sale, marketing, lease, use of a product or service by MAKO or its
Affiliates, except to the extent such Damages, injury or death results from the negligence, gross
negligence or intentional misconduct of Z-KAT, the Licensors, or their respective employees,
officers and directors.



     9.2 Method of Asserting Claims, Etc. The party or parties claiming indemnification
under this Article (whether one or more) are hereinafter collectively referred to as the
“Indemnified Party” and the party against whom such claims are asserted hereunder is
hereinafter referred to as to the “Indemnifying Party.” All claims for indemnification by
any Indemnified Party under this Article 9 will be asserted and resolved as follows:




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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          (a) MAKO shall have the right to enforce all claims in connection with the use of the Licensed
Patents in the MAKO Field and Z-KAT shall have the right to enforce all claims in connection with
the use of the Licensed Patents in the Z-KAT Field.



          (b) In the event that any claim or demand for which an Indemnifying Party would be liable to
an Indemnified Party hereunder is asserted against or sought to be collected from such Indemnified
Party by a third party (a “Third Party Claim”), such Indemnified Party will with reasonable
promptness notify the Indemnifying Party of such claim or demand, specifying the nature of and
specific basis for such claim or demand and the amount or the estimated amount thereof to the
extent then feasible (which estimate will not be conclusive of the final amount of such claim and
demand (the “Claim Notice”)). The Indemnifying Party will not be obligated to indemnify
such Indemnified Party with respect to any such claim or demand to the extent the failure of such
Indemnified Party to promptly notify the Indemnifying Party of such a claim or demand materially
prejudices the Indemnifying Party’s ability to defend against the claim or demand. The
Indemnifying Party will have 30 days from the personal delivery or mailing of the Claim Notice (the
“Notice Period”) to notify such Indemnified Party (i) whether or not it disputes
the liability of the Indemnifying Party to such Indemnified Party hereunder with respect to such
claim or demand and (ii) whether or not it desires at the sole cost and expense of the Indemnifying
Party, to defend such Indemnified Party against such claim or demand; provided, however, that such
Indemnified Party is hereby authorized prior to and during the Notice Period to file any motion,
answer or other pleading which it deems necessary or appropriate to protect its interests or those
of the Indemnifying Party and not materially prejudicial to the Indemnifying Party. In the event
that the Indemnifying Party notifies such Indemnified Party within the Notice Period that it
desires to defend such Indemnified Party against such claim or demand, except as hereinafter
provided, the Indemnifying Party will have the right to defend by all appropriate proceedings. If
such Indemnified Party desires to participate in, but not control, any such defense or settlement
it may do so at its sole cost and expense. If requested by the Indemnifying Party, such
Indemnified Party agrees to cooperate with the Indemnifying Party and its counsel in contesting any
claim or demand which the Indemnifying Party elects to contest, and, if appropriate and related to
the claim in question, in making any counterclaim against the person asserting the third party
claim or demand, or any cross-complaint against any person. No claim may be settled by the
Indemnifying Party without the consent of such Indemnified Party, which consent will not be
unreasonably withheld. Notwithstanding the foregoing, in connection with a Third Party Claim
asserted against both such Indemnified Party and the Indemnifying Party, if (x) such Indemnified
Party has available to it defenses which are in addition to those available to the Indemnifying
Party, (y) such Indemnified Party has available to it defenses which are inconsistent with the
defenses available to the Indemnifying Party or (z) a conflict exists or may reasonably be expected
to exist in connection with the representation of both such Indemnified Party and the Indemnifying
Party by the legal counsel chosen by the Indemnifying Party, such Indemnified Party will have the
right to select its own legal counsel. If such Indemnified Party selects its own legal counsel
pursuant to the immediately preceding sentence and the underlying Third Party Claim is otherwise
subject to the scope of the indemnification obligations of the Indemnifying Party pursuant to this
Article 9, the reasonable fees and expenses of such legal counsel will be included within the
indemnification obligations of the Indemnifying Party; provided that under no circumstances will
the Indemnifying Party be obligated to indemnify such Indemnified Party against the fees and
expenses of more than one legal counsel selected by such Indemnified Party in connection with a




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-12-









 





single claim (notwithstanding the number persons against whom the Third Party Claim may be
asserted).



          (c) In the event any Indemnified Party should have a claim against any Indemnifying Party
hereunder which does not involve a claim or demand being asserted against or sought to be collected
from it by a third party, such Indemnified Party will send a Claim Notice with respect to such
claim to such Indemnifying Party. If such Indemnifying Party does not notify such Indemnified
Party within the Notice Period that such Indemnifying Party disputes such claim, the amount of such
claim will be conclusively deemed a liability of such Indemnifying Party hereunder.



ARTICLE 10

TERM AND TERMINATION




     10.1 Term. This Agreement will become effective as of the Effective Date and will
continue until terminated according to its terms or until all of the License Agreements terminate
and all Licensed IP Rights have expired.



     10.2 Voluntary Termination By MAKO. MAKO may voluntarily terminate this Agreement
upon 60 days written notice to Z-KAT.



     10.3 Survival.



          (a) To the extent permitted by the respective License Agreements, or to the extent MAKO and
the respective Licensor agree, Z-KAT’s grant of sublicense to MAKO under the License Agreement will
survive termination of the License Agreement. Otherwise, the sublicense will terminate with
respect to any terminated License Agreement.



          (b) If a grant of sublicense to MAKO is terminated (or does not survive termination of the
License Agreement under which it is granted), MAKO will cease all use of the Technical Information
that is sublicensed pursuant to the terminated sublicense and either destroy all copies of it or
return it to Z-KAT, as directed by Z-KAT or the Licensor of the Technical Information.



          (c) Articles 1, 3 and 9 will survive and continue after termination. Any amounts due under
Article 4 prior to termination will remain due and become immediately payable.



ARTICLE 11

MISCELLANEOUS PROVISIONS




     11.1 Registration and Recordation of License Agreement. Notwithstanding the
obligations of confidentiality of Article 3, each Party consents to registration of this Agreement
if required by law, for the grants of licenses to be effective, or to make it effective against
subsequent assignees or licensees. Specifically, and without limiting the foregoing, each Party
consents to recordation of this Agreement in connection with any patents or copyright registrations
included in the Licensed IP Rights. However, Exhibits to this Agreement must be




 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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removed or redacted to show only the patents and copyright registrations and no additional
information.



     11.2 Assignment. MAKO may assign this Agreement, but only upon (a) a written notice
to Z-KAT specifying the assignee, (b) the assignee agrees to be bound by all of the terms and
conditions of this Agreement as applicable to such assignee, and, if applicable, (c) a prior
written consent from the third party Licensor as required under the applicable License Agreement.
This Agreement will be binding on successors in interest and
permitted assigns. Z-KAT may assign
this Agreement with the prior written consent of MAKO, which shall not be unreasonably withheld
only if the assignee agrees to be bound by all of the terms and conditions of the Agreement.



     11.3 Notices. All notices and other communications which are required or which may be
given under the provisions of this Agreement will be in writing and may be delivered (a)
personally, (b) by facsimile transmission, (c) expedited delivery service with proof of delivery or
(d) sent by United States Mail, postage prepaid, registered or certified, return receipt requested,
addressed as follows:




			
	               	 	If to Z-KAT:


Z-KAT, Inc.

2903 Simms Street

Hollywood FL 33020

Phone: (954) 927-2044

Facsimile: (954) 927-0446

Attention: Chief Financial Officer


With copy (which shall not constitute notice) to:


Hogan & Hartson L.L.P.

555 Thirteenth Street, NW

Washington, DC 20004

Telephone: 202-637-5600

Fax: 202-637-5910

Attention: Christopher J. Hagan, Esq.


If to MAKO:


MAKO Surgical Corp.

2903 Simms Street

Hollywood FL 33020

Phone: (954) 927-2044

Facsimile: (954) 927-0446

Attention: Chief Financial Officer





or to such other address designated by the parties as provided above. Any such notice will be
deemed to have been given either at the time of personal delivery or, in the case of delivery


 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




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service or mail, as of the date of first attempted delivery at the address and in the manner
provided herein.



     11.4 Choice of Law. THIS AGREEMENT WILL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE
WITH THE LAWS OF THE STATE OF DELAWARE (EXCLUSIVE OF CONFLICTS OF LAW PRINCIPLES).



     11.5 Captions. The captions, headings, and arrangements used in this Agreement are
for convenience only and do not in any way affect, limit, amplify, or modify its terms and
provisions.



     11.6 No Strict Construction. This Agreement is the result of substantial negotiations
among the Parties and their counsel and has been prepared by their joint efforts. Accordingly, the
fact that counsel to one Party or another may have drafted this Agreement or any portion of this
Agreement is immaterial and this Agreement will not be strictly construed against any Party.



     11.7 Severability and reformation. Wherever possible, each provision of
this Agreement will be interpreted in such manner as to be effective. If any provision of this
Agreement is held to be illegal, invalid, or unenforceable under present or future laws effective
during the term of this Agreement, such provision will be fully severable and this Agreement will
be construed and enforced as if such illegal, invalid, or unenforceable provision had never
comprised a part of this Agreement, and the remaining provisions of this Agreement will remain in
full force and effect. Furthermore, in lieu of each such illegal, invalid, or unenforceable
provision, there will be added automatically as a part of this Agreement a provision as similar in
terms to such illegal, invalid, or unenforceable provision as may be possible and be legal, valid,
and enforceable; provided, however, that, if any such change will materially diminish the practical
realization of the benefits intended to be conferred to any party to this Agreement, such party may
terminate this Agreement upon written notice to each other party within 30 days after learning such
change has been effected.



     11.8 Consents; Waivers. Any consent or approval required as a condition to an action
under this Agreement will be effective only (a) if in writing and signed by the Party whose consent
is sought, (b) with respect to the specific matter made the subject to such consent or approval
(and no other matter), and (c) for the specific instance(s) expressly set forth in such
consent or approval (and no earlier or subsequent instances). Any Party may waive any condition,
covenant, term, or provision of this Agreement, but any such waiver will be effective only (a) if
in writing and signed by the Party sought to be bound by such waiver, (b) with respect to the
specific condition, covenant, term, or provision expressly made the subject to such waiver (and no
other condition, covenant, term, or provision), and (c) for the specific instance(s)
expressly set forth in such waiver (and no earlier or subsequent instances). Without limiting
the foregoing sentence, none of the following will constitute a waiver of the rights of a Party to
this Agreement to demand exact compliance with the conditions, covenants, terms, and provisions of
this Agreement: (a) a failure of such Party to exercise any power reserved to it in this Agreement;
(b) a failure of such Party to insist upon compliance by any other Party to this Agreement with any
condition, covenant, term, or provision in this Agreement; (c) a delay, forbearance, or omission of
such Party to exercise any power; or (d) any custom or practice of the Parties at variance with the
terms of this Agreement. The consent or approval of any Party to this



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-15-









 





Agreement with respect to the act of any other Party to this Agreement will not be deemed to
waive or render unnecessary consent to or approval of any subsequent similar act. Subsequent
acceptance by a Party to this Agreement of any performance due to it under this Agreement will not
be deemed to be a waiver by such first Party of any preceding breach by any other Party of any
terms, provisions, covenants, or conditions of this Agreement.



     11.9 Force Majeure. Neither party will be in default or otherwise liable
for any delay in or failure of its performance under this Agreement if such delay or failure arises
by any reason beyond its reasonable control, including any act of God, any acts of the common
enemy, the elements, earthquakes, floods, fires, epidemics, riots, failures or delay in
transportation or communications, or any act or failure to act by the other party or such other
party’s employees, agents, or independent contractors or representatives; provided,
however, that lack of funds will not be deemed to be a reason beyond a party’s reasonable
control. The parties will promptly inform and consult with each other as to any of the above
causes that in their judgment may or could be the cause of a delay in the performance of this
Agreement.



     11.10 Legal Costs. If any action is brought to enforce or interpret the terms of this
Agreement (including through arbitration), the prevailing Party will be entitled to reasonable
legal fees, costs, and disbursements in addition to any other relief to which such Party may be
entitled.



     11.11 Equitable Remedies. Each Party to this Agreement recognizes that the
obligations imposed on it in Articles 2 and 3 are special, unique, and of extraordinary character.
Accordingly, each Party to this Agreement agrees and declares that it is impossible to measure in
money the damages that will accrue by reason of its failure to perform any of its obligations under
Articles 2 and 3 and that, in the event of breach by it of any such obligation, the remedy at law
for such breach will be inadequate. Therefore, each Party to this Agreement, by execution of this
Agreement, waives the claim or defense that there is an adequate remedy at law and agrees it will
not urge in any action or proceeding to which it is a party that relates to Articles 2 and 3 the
claim or defense that such remedy at law exists. Furthermore, the parties, by execution of this
Agreement, agree that each other Party is entitled (without proving damages or posting bond) to
equitable remedies, including specific performance and injunctive relief (in addition to damages)
as a remedy for the enforcement of Articles 2 and 3.



     11.12 Integration. This Agreement sets forth the entire agreement and understanding
between the Parties as to the subject matter hereof and merges all prior discussions between them.
Neither of the Parties shall be bound by any warranties, understandings or representations with
respect to such subject matter other than as expressly provided herein or in a writing signed with
or subsequent to execution hereof by an authorized representative of the Party to be bound thereby.



     11.13 No Partnership. Neither this Agreement, nor any terms and conditions contained
herein, will be deemed or construed to create a partnership, joint venture, other form of business
enterprise or association or cooperative arrangement, agency relationship, or franchise
relationship between the Parties or otherwise to create any liability for either Party whatsoever
with respect to the indebtedness, liabilities, and obligations of the other Party.



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-16-









 





     11.14 Counterparts. This Agreement may be executed in any number of counterparts and
will be effective when each Party to this Agreement has executed at least one counterpart, with the
same effect as if all signing parties had signed the same document. All counterparts will be
construed together and evidence only one agreement, which, notwithstanding the actual date of
execution of any counterpart, will be deemed to be dated the day and year first written above. In
making proof of this Agreement, it will not be necessary to account for a counterpart executed by
any Party other than the Party against whom enforcement is sought or to account for more than one
counterpart executed by the Party against whom enforcement is sought.



     11.15 Facsimile Signatures. The manual signature of any Party to this Agreement that
is transmitted to any other Party or counsel to any other Party by facsimile will be deemed for all
purposes to be an original signature.



[NEXT PAGE IS SIGNATURE PAGE]



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-17-









 





     IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed in duplicate
originals by its duly authorized representatives on the respective dates entered below.



	 	 	 	 	 
	 	Z-KAT, Inc.

 	 
	 	By:  	/s/ Maurice R. Ferré
 	 
	 	 	Name:  	Maurice R. Ferré 	 
	 	 	Title:  	President
 	 
	 	 	Date:  	12-17-04	 
	 
	 	MAKO Surgical Corp.

 	 
	 	By:  	/s/ Maurice R. Ferré
 	 
	 	 	Name:  	Maurice R. Ferré 	 
	 	 	Title:  	President
 	 
	 	 	Date:  	12-17-04 	 



 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-18-









 







SCHEDULE 1.8




LICENSED PATENTS




Z-KAT OWNED PATENTS





	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	Application	 	 	 	 	 	Grant	 	 	 	 
	 	Ref No.	 	 	Ctry	 	 	Status	 	 	Short Title	 	 	Application No.	 	 	Date	 	 	Grant No.	 	 	Date	 	 	EXP Date	 
	 	 	 	 	US
	 	 	PEN
	 	 	Image Guided
Interventional
Method and
Apparatus

	 	 	 	60/409,339	 	 	 	09-Sep-02
	 	 	 	 	 	 	 	 	 	2022	 	 
	 	Temp
	 	 	US
	 	 	PEN
	 	 	Digital Minimally
Invasive Surgery
System

	 	 	 	09/978,599	 	 	 	16-Oct-01
	 	 	 	 	 	 	 	 	16-Oct-2021
	 
	 	15-2
	 	 	MY
	 	 	PEN
	 	 	System and Method
for Using a Haptic
Device in
Combination with a
Computer Assisted
Surgery System

	 	 	PI 20030792
	 	 	06-Mar-03
	 	 	 	 	 	 	 	 	06-Mar-2022
	 
	 	15-3
	 	 	TW
	 	 	PEN
	 	 	System and Method
for Using a Haptic
Device in
Combination with a
Computer Assisted
Surgery System

	 	 	 	92104819	 	 	 	06-Mar-03
	 	 	 	 	 	 	 	 	06-Mar-2022
	 
	 	15-4
	 	 	WO
	 	 	PEN
	 	 	System and Method
for Using a Haptic
Device in
Combination with a
Computer Assisted
Surgery System

	 	 	PCT/US03/07063
	 	 	06-Mar-03
	 	 	 	 	 	 	 	 	 	2023	 	 
	 	17-1
	 	 	US
	 	 	PEN
	 	 	System and Method
for Intra-Operative
Haptic Planning of
a Medical Procedure

	 	 	 	10/384,077	 	 	 	06-Mar-03
	 	 	 	 	 	 	 	 	06-Mar-2023
	 
	 	18-1
	 	 	US
	 	 	PEN
	 	 	System and Method
for Using a Haptic
Device as an Input
Device

	 	 	 	10/384,078	 	 	 	06-Mar-03
	 	 	 	 	 	 	 	 	06-Mar-2023
	 
	 	19-1
	 	 	US
	 	 	PEN
	 	 	System and Method
for Haptic Sculting
of Physical Objects

	 	 	 	10/384,072	 	 	 	06-Mar-03
	 	 	 	 	 	 	 	 	06-Mar-2023
	 
	 	23-1
	 	 	US
	 	 	PEN
	 	 	System and Method
for Interactive
Haptic Positioning
of a Medical Device

	 	 	 	10/384,194	 	 	 	06-Mar-03
	 	 	 	 	 	 	 	 	06-Mar-2023
	 
	 	38-1
	 	 	US
	 	 	PEN
	 	 	Guidance System and
Method for Surgical
Procedures with
Improved Feedback

	 	 	 	10/621,119	 	 	 	16-Jul-03	 	 	 	 	 	 	 	 	 	 	 	 
	 	29-2
	 	 	US
	 	 	NAT
	 	 	Interactive
Computer-Assisted
Surgery System and
Method

	 	 	 	10/772,083	 	 	 	04-Feb-04	 	 	 	 	 	 	 	 	 	 	 	 
	 	29-3
	 	 	WO
	 	 	PCT
	 	 	Interactive
Computer-Assisted
Surgery System and
Method

	 	 	PCT/US04/03066
	 	 	04-Feb-04	 	 	 	 	 	 	 	 	 	 	 	 
	 	37-2
	 	 	US
	 	 	NAT
	 	 	Portable,
Low-Profile
Integrated
Computer, Screen
and Keyboard for
Computer Surgery
Applications

	 	 	 	10/772,137	 	 	 	04-Feb-04	 	 	 	 	 	 	 	 	 	 	 	 
	 	37-3
	 	 	WO
	 	 	PCT
	 	 	Portable,
Low-Profile
Integrated
Computer, Screen
and Keyboard for
Computer Surgery
Applications

	 	 	PCT/US04/03067
	 	 	04-Feb-04	 	 	 	 	 	 	 	 	 	 	 	 
	 	38-2
	 	 	WO
	 	 	PEN
	 	 	Guidance System and
Method for Surgical
Procedures with
Improved Feedback

	 	 	PCT/US04/22978
	 	 	16-Jul-2004	 	 	 	 	 	 	 	 	 	 	 	 
	 












 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-19-









 








Patents and Patent Applications Exclusively Licensed from Z-KAT (as co-owner)






	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	Application	 	 	 	 	 	 	 	Grant	 	 	 	 
	 	Ref. No.	 	 	Ctry	 	 	Status	 	 	Short Title	 	 	Application No.	 	 	Date	 	 	Grant No.	 	 	Date	 	 	EXP Date	 
	 	7-1
	 	 	US
	 	 	PEN
	 	 	Tool Position Indicator

	 	 	 	08/756,257	 	 	 	25-Nov-96
	 	 	 	 	 	 	 	 	 	 	25-Nov-2016	 
	 	6-2
	 	 	US
	 	 	PEN
	 	 	Fluoroscopic Registration Artifact
with Optical and/or Magnetic
Markers

	 	 	 	09/963,873	 	 	 	25-Sep-01
	 	 	 	 	 	 	 	 	 	 	25-Sep-2021	 
	 	6-4
	 	 	AU
	 	 	PEN
	 	 	Fluoroscopic Registration Artifact
with Optical and/or Magnetic
Markers

	 	 	 	2001294718	 	 	 	25-Sep-01
	 	 	 	 	 	 	 	 	 	 	25-Sep-2021	 
	 	6-5
	 	 	CA
	 	 	PEN
	 	 	Fluoroscopic Registration Artifact
with Optical and/or Magnetic
Markers

	 	 	 	2,422,950	 	 	 	22-Sep-01
	 	 	 	 	 	 	 	 	 	 	25-Sep-2021	 
	 	6-6
	 	 	CN
	 	 	PEN
	 	 	Fluoroscopic Registration Artifact
with Optical and/or Magnetic
Markers

	 	 	 	1816221.5	 	 	 	25-Sep-01
	 	 	 	 	 	 	 	 	 	 	25-Sep-2021	 
	 	6-7
	 	 	EP
	 	 	PEN
	 	 	Fluoroscopic Registration Artifact
with Optical and/or Magnetic
Markers

	 	 	 	1975384.7	 	 	 	25-Sep-01
	 	 	 	 	 	 	 	 	 	 	25-Sep-2021	 
	 	6-8
	 	 	JP
	 	 	PEN
	 	 	Fluoroscopic Registration Artifact
with Optical and/or Magnetic
Markers

	 	 	 	2002-538364	 	 	 	25-Mar-03
	 	 	 	 	 	 	 	 	 	 	25-Sep-2021	 
	 	6-9
	 	 	KR
	 	 	PEN
	 	 	Fluoroscopic Registration Artifact
with Optical and/or Magnetic
Markers

	 	 	 	2003-7004328	 	 	 	25-Mar-03
	 	 	 	 	 	 	 	 	 	 	25-Sep-2021	 
	 	12-2
	 	 	US
	 	 	PEN
	 	 	Tool Calibrator and Tracker System

	 	 	 	10/062,842	 	 	 	30-Jan-02
	 	 	 	 	 	 	 	 	 	 	30-Jan-2022	 
	 	12-4
	 	 	CN
	 	 	PEN
	 	 	Tool Calibrator and Tracker System

	 	 	 	2807775.X	 	 	 	30-Jan-02
	 	 	 	 	 	 	 	 	 	 	30-Jan-2022	 
	 	12-5
	 	 	JP
	 	 	PEN
	 	 	Tool Calibrator and Tracker System

	 	 	 	2002-561895	 	 	 	07-30-03
	 	 	 	 	 	 	 	 	 	 	30-Jan-2022	 
	 	12-3
	 	 	EP
	 	 	PEN
	 	 	Tool Calibrator and Tracker System

	 	 	 	2707675.1	 	 	 	30-Jan-02
	 	 	 	 	 	 	 	 	 	 	30-Jan-2022	 
	 	6-10
	 	 	HK
	 	 	PEN
	 	 	Fluoroscopic Registration Artifact
with Optical and/or Magnetic
Markers

	 	 	 	3106125.2	 	 	 	26-Aug-03	 	 	 	 	 	 	 	 	 	 	 	 
	 	16-1
	 	 	US
	 	 	PEN
	 	 	Image Guided Interventional Method
and Apparatus

	 	 	 	10/658,110	 	 	 	09-Sep-03	 	 	 	 	 	 	 	 	 	 	 	 
	 	16-2
	 	 	WO
	 	 	PCT
	 	 	Image Guided Interventional Method
and Apparatus

	 	 	PCT/US03/28161
	 	 	09-Sep-03	 	 	 	 	 	 	 	 	 	 	 	 
	 	24-2
	 	 	US
	 	 	NAT
	 	 	Microscope Calibrator*

	 	 	 	08/938,116	 	 	 	26-Sep-1997
	 	 	 	6,081,336	 	 	 	 	 	 	26-Sep-2017	 
	 	24-3
	 	 	US
	 	 	NAT
	 	 	Tool Calibrator*

	 	 	 	08/938,210	 	 	 	26-Sep-1997
	 	 	 	5,987,960	 	 	 	 	 	 	26-Sep-2017	 
	 	24-4
	 	 	US
	 	 	NAT
	 	 	Localizing and Orienting Probe for
View Devices*

	 	 	 	08/938,209	 	 	 	26-Sep-1997
	 	 	 	5,999,837	 	 	 	 	 	 	26-Sep-2017	 
	 	6-3
	 	 	WO
	 	 	PCT/NAT
	 	 	Fluoroscopic Registration Artifact
with Optical and/or Magnetic
Markers

	 	 	PCT/US01/30038
	 	 	25-Sep-2001	 	 	 	 	 	 	 	 	 	 	 	 
	 	12-6
	 	 	EP
	 	 	PEN
	 	 	Tool Calibrator and Tracker System

	 	 	 	2707675.1	 	 	 	30-Jan-2002
	 	 	 	 	 	 	 	 	 	 	30-Jan-2022	 
	 	12-7
	 	 	HK
	 	 	PEN
	 	 	Tool Calibrator and Tracker System

	 	 	 	4103792	 	 	 	27-May-2004	 	 	 	 	 	 	 	 	 	 	 	 
	 	41-2
	 	 	EP
	 	 	DIV/PEN
	 	 	Microscope Calibration

	 	 	 	4005670.7	 	 	 	10-Mar-2004	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	US
	 	 	GRA
	 	 	Microscope Calibrator

	 	 	 	08/938,116	 	 	 	26-Sep-97
	 	 	 	6,081,336	 	 	 	27-Jun-00
	 	 	26-Sep-2017	 
	 






 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-20-









 





	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	Application	 	 	 	 	 	 	 	Grant	 	 	 	 
	 	Ref. No.	 	 	Ctry	 	 	Status	 	 	Short Title	 	 	Application No.	 	 	Date	 	 	Grant No.	 	 	Date	 	 	EXP Date	 
	 	 	 	 	US
	 	 	GRA
	 	 	Tool Calibrator

	 	 	 	08/938,210	 	 	 	26-Sep-97
	 	 	 	5,987,960	 	 	 	23-Nov-99
	 	 	26-Sep-2017	 
	 	 	 	 	US
	 	 	GRA
	 	 	Localizing and Orienting Probe for
View Devices

	 	 	 	08/938,209	 	 	 	26-Sep-97
	 	 	 	5,999,837	 	 	 	07-Dec-99
	 	 	26-Sep-2017	 
	 	24-5
	 	 	US
	 	 	PEN
	 	 	Method and Apparatus for
Calibrating a Surgical Tool*

	 	 	 	09/437,564	 	 	 	10-Nov-99
	 	 	 	 	 	 	 	 	 	 	10-Nov-2019	 
	 	24-6
	 	 	US
	 	 	GRA
	 	 	Auto Positioner*

	 	 	 	09/429,127	 	 	 	27-Oct-99
	 	 	 	6,187,018	 	 	 	13-Feb-01
	 	 	27-Oct-2019	 
	 	24-7
	 	 	JP
	 	 	PEN
	 	 	Microscope Calibrator*

	 	 	 	10-273883	 	 	 	28-Sep-98
	 	 	 	 	 	 	 	 	 	 	28-Sep-20 18	 
	 	24-8
	 	 	EP
	 	 	PEN
	 	 	Tool Calibration*

	 	 	 	98306678.8	 	 	 	20-Aug-98
	 	 	 	 	 	 	 	 	 	 	20-Aug-2018	 
	 	24-9
	 	 	JP
	 	 	PEN
	 	 	Tool Calibrator*

	 	 	 	10-273884	 	 	 	28-Sep-98
	 	 	 	 	 	 	 	 	 	 	28-Sep-2018	 
	 	40-1
	 	 	EP
	 	 	PEN
	 	 	Microscope Calibrator Probe

	 	 	 	98307430.3	 	 	 	14-Sep-98
	 	 	 	 	 	 	 	 	 	 	14-Sep-2018	 
	 	24-11
	 	 	JP
	 	 	PEN
	 	 	Microscope Calibrator Probe*

	 	 	 	10-271276	 	 	 	25-Sep-98
	 	 	 	 	 	 	 	 	 	 	25-Sep-2018	 
	 	41-1
	 	 	EP
	 	 	PEN
	 	 	Microscope Calibration

	 	 	 	98306677.0	 	 	 	20-Aug-98
	 	 	 	 	 	 	 	 	 	 	20-Aug-2018	 
	 	42-1
	 	 	US
	 	 	PEN
	 	 	Interpolation in Transform Space
for Multiple Rigid Object
Registration

	 	 	 	09/419,949	 	 	 	18-Oct-99
	 	 	 	 	 	 	 	 	 	 	18-Oct-2019	 
	 	26-26
	 	 	EP
	 	 	PEN
	 	 	Position Tracking

	 	 	 	97307554.2	 	 	 	26-Sep-97
	 	 	 	 	 	 	 	 	 	 	26-Sep-2017	 
	 	42-1
	 	 	US
	 	 	GRA
	 	 	Interpolation in Transform Space
for Multiple Rigid Object
Registration**

	 	 	 	09/419,949	 	 	 	18-Oct-1999
	 	 	 	6,674,916	 	 	 	 	 	 	18-Oct-2019	 
	 









[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-21-








 








Patents
Exclusively Sub-Licensed from Z-KAT (Licensor: Dr. Allen/Marker, LLC)






	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	Application	 	 	 	 	 	 	 	 	 	 
	 	Ctry	 	 	Status	 	 	Short Title	 	 	Application No.	 	 	Date	 	 	Grant No.	 	 	Grant Date	 	 	EXP Date	 
	 	US
	 	 	GRA
	 	 	Method and Apparatus for Providing
Related Images Over Time of a Portion
of the

	 	 	 	07/223,975	 	 	 	18-Jul-88
	 	 	 	4,945,914	 	 	 	07-Aug-90
	 	 	18-Jul-2008	 
	 	US
	 	 	GRA
	 	 	Method and Apparatus for Providing
Related Images Over Time of a Portion

	 	 	 	07/119,353	 	 	 	10-Nov-87
	 	 	 	4,991,579	 	 	 	12-Feb-91
	 	 	12-Feb-2008	 
	 	US
	 	 	GRA
	 	 	Localization Cap for Fiducial Markers

	 	 	 	08/909,990	 	 	 	12-Aug-97
	 	 	 	5,916,164	 	 	 	29-Jun-99
	 	 	12-Aug-2017	 
	 	US
	 	 	GRA
	 	 	Apparatus for Imaging the Anatomy

	 	 	 	07/467,242	 	 	 	19-Jan-90
	 	 	 	5,094,241	 	 	 	10-Mar-92
	 	 	19-Jan-2010	 
	 	US
	 	 	GRA
	 	 	Interactive Image-Guided Surgical
System

	 	 	 	07/677,083	 	 	 	29-Mar-91
	 	 	 	5,142,930	 	 	 	01-Sep-92
	 	 	29-Mar-201 1	 
	 	US
	 	 	GRA
	 	 	Method of Locating a Target on a
Portion of Anatomy

	 	 	 	07/677,088	 	 	 	29-Mar-91
	 	 	 	5,211,164	 	 	 	18-May-93
	 	 	29-Mar-201 1	 
	 	US
	 	 	GRA
	 	 	Method for Implanting a Fiducial
Implant into a Patient

	 	 	 	07/677,096	 	 	 	29-Mar-91
	 	 	 	5,178,164	 	 	 	12-Jan-93
	 	 	29-Mar-201 1	 
	 	US
	 	 	GRA
	 	 	Method and Apparatus for Imaging the
Anatomy

	 	 	 	07/859,256	 	 	 	26-Mar-92
	 	 	 	5,222,499	 	 	 	29-Jun-93
	 	 	26-Mar-2012	 
	 	US
	 	 	GRA
	 	 	Interactive Image-Guided Surgical 

System

	 	 	 	07/873,535	 	 	 	22-Apr-92
	 	 	 	5,230,338	 	 	 	27-Jul-93
	 	 	22-Apr-2012	 
	 	US
	 	 	GRA
	 	 	Localization Cap for Fiducial Markers

	 	 	 	08/186,946	 	 	 	27-Jan-94
	 	 	 	5,575,794	 	 	 	19-Nov-96
	 	 	27-Jan-2014	 
	 	US
	 	 	GRA
	 	 	Method and Apparatus for Imaging the
Anatomy

	 	 	 	08/026,223	 	 	 	26-Feb-93
	 	 	 	5,397,329	 	 	 	14-Mar-95
	 	 	26-Feb-2013	 
	 	US
	 	 	GRA
	 	 	Automatic Ultrasonic Localization of
Targets Implanted in a Portion of the
Anatomy

	 	 	 	08/139,139	 	 	 	21-Oct-93
	 	 	 	5,394,875	 	 	 	07-Mar-95
	 	 	21-Oct-2013	 
	 	US
	 	 	GRA
	 	 	Method for Providing Medical Images

	 	 	 	08/427,634	 	 	 	21-Apr-95
	 	 	 	5,590,215	 	 	 	31-Dec-96
	 	 	21-Apr-2015	 
	 	US
	 	 	GRA
	 	 	Tool for Implanting a Fiducial Marker

	 	 	 	08/471,451	 	 	 	06-Jun-95
	 	 	 	5,595,193	 	 	 	21-Jan-97
	 	 	06-Jun-2015	 
	 	US
	 	 	GRA
	 	 	Localization Cap for Fiducial Markers

	 	 	 	08/459,549	 	 	 	02-Jun-95
	 	 	 	5,730,130	 	 	 	24-Mar-98
	 	 	02-Jun-2015	 
	 	US
	 	 	GRA
	 	 	Method for Relating Image Space to
Physical Space

	 	 	 	08/459,873	 	 	 	02-Jun-95
	 	 	 	5,551,429	 	 	 	03-Sep-96
	 	 	02-Jun-2015	 
	 	US
	 	 	GRA
	 	 	Automatic Technique for Localizing
Externally Attached Fiducial Markers
in CT and MR Volume Images of the
Head

	 	 	 	08/471,456	 	 	 	06-Jun-95
	 	 	 	5,799,099	 	 	 	25-Aug-98
	 	 	25-Aug-2015	 
	 	US
	 	 	GRA
	 	 	Biopsy Guide

	 	 	 	08/723,402	 	 	 	30-Sep-96
	 	 	 	5,984,930	 	 	 	16-Nov-99
	 	 	30-Sep-2016	 
	 	US
	 	 	GRA
	 	 	Automatic Technique for Localizing
Externally Attached Fiducial Markers
in Volume Images of the

	 	 	 	09/111,114	 	 	 	06-Jun-98
	 	 	 	6,052,477	 	 	 	18-Apr-00
	 	 	06-Jun-2018	 
	 	US
	 	 	GRA
	 	 	Method and Apparatus for Imaging the
Anatomy

	 	 	 	07/467,243	 	 	 	19-Jan-90
	 	 	 	5,119,817	 	 	 	09-Jun-92
	 	 	19-Jan-2010	 
	 	US
	 	 	GRA
	 	 	Automatic Technique for Localizing
Externally Attached Fiducial Markers
in MR and CT Volume Images of the
Head

	 	 	 	08/840,533	 	 	 	22-Apr-97
	 	 	 	5,769,789	 	 	 	23-Jun-98
	 	 	22-Apr-2017	 
	 








[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-22-











 







	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	Application	 	 	 	 	 	 	 	 	 	 
	 	Ctry	 	 	Status	 	 	Short Title	 	 	Application No.	 	 	Date	 	 	Grant No.	 	 	Grant Date	 	 	EXP Date	 
	 	US
	 	 	GRA
	 	 	Method for Determining the Location
in Physical Space of a Point of FID
Marker that is Selectively Detachable
to a Base

	 	 	 	09/296,342	 	 	 	22-Apr-99
	 	 	 	6,073,044	 	 	 	06-Jun-00
	 	 	22-Apr-2019	 
	 	JP
	 	 	PEN
	 	 	Interactive Image-Guided Surgical
System

	 	 	 	303753/90	 	 	 	08-Nov-90
	 	 	 	 	 	 	 	 	 	 	08-Nov-2010	 
	 	JP
	 	 	PEN
	 	 	Automatic Ultrasonic Localization of
Targets Implanted in a Portion of the
Anatomy

	 	 	 	257188/94	 	 	 	21-Oct-94
	 	 	 	 	 	 	 	 	 	 	21-Oct-2014	 
	 	EP
	 	 	PEN
	 	 	Method for Providing Medical Images

	 	 	 	94116088.9	 	 	 	12-Oct-94
	 	 	 	 	 	 	 	 	 	 	12-Oct-2014	 
	 	JP
	 	 	PEN
	 	 	Method for Providing Medical Images

	 	 	 	251011/94	 	 	 	17-Oct-94
	 	 	 	 	 	 	 	 	 	 	17-Oct-2014	 
	 	EP
	 	 	PEN
	 	 	Localization Cap for Fiducial Markers

	 	 	 	94909815.6	 	 	 	10-Feb-99
	 	 	 	 	 	 	 	 	 	 	10-Feb-2019	 
	 	JP
	 	 	PEN
	 	 	Localization Cap for Fiducial Markers

	 	 	 	6-518402	 	 	 	14-Aug-95
	 	 	 	 	 	 	 	 	 	 	14-Aug-2015	 
	 	EP
	 	 	PEN
	 	 	Localization Cap for Fiducial Markers

	 	 	 	95904841.4	 	 	 	05-Jun-96
	 	 	 	 	 	 	 	 	 	 	05-Jun-2016	 
	 	IT
	 	 	GRA
	 	 	Automatic Technique for Localizing
Externally Attached Fiducial Markers
in MR and CT Volume Images of the
Head

	 	 	 	95904833.1	 	 	 	08-Dec-94
	 	 	 	732899	 	 	 	16-Oct-02
	 	 	08-Dec-2014	 
	 	FR
	 	 	GRA
	 	 	Automatic Technique for Localizing
Externally Attached Fiducial Markers
in MR and CT Volume Images of the
Head

	 	 	 	95904833.1	 	 	 	08-Dec-94
	 	 	 	732899	 	 	 	10-Oct-02
	 	 	08-Dec-2014	 
	 	DE
	 	 	GRA
	 	 	Automatic Technique for Localizing
Externally Attached Fiducial Markers
in MR and CT Volume Images of the
Head

	 	 	 	98904833.1	 	 	 	08-Dec-94
	 	 	 	732899	 	 	 	10-Oct-02
	 	 	08-Dec-2014	 
	 	GB
	 	 	GRA
	 	 	Automatic Technique for Localizing
Externally Attached Fiducial Markers
in MR and CT Volume Images of the
Head

	 	 	 	95904833.1	 	 	 	08-Dec-94
	 	 	 	732899	 	 	 	10-Oct-02
	 	 	08-Dec-2014	 
	 	SE
	 	 	GRA
	 	 	Automatic Technique for Localizing
Externally Attached Fiducial Markers
in MR and CT Volume Images of the
Head

	 	 	 	95904833.1	 	 	 	08-Dec-94
	 	 	 	732899	 	 	 	10-Oct-02
	 	 	08-Dec-2014	 
	 	EP
	 	 	PEN
	 	 	Biopsy Guide

	 	 	 	97307600.3	 	 	 	26-Sep-97
	 	 	 	 	 	 	 	 	 	 	26-Sep-2017	 
	 	JP
	 	 	PEN
	 	 	Biopsy Guide

	 	 	 	9-267299	 	 	 	30-Sep-97
	 	 	 	 	 	 	 	 	 	 	30-Sep-2017	 
	 	DE
	 	 	GRA
	 	 	Method and Apparatus for Imaging the
Anatomy

	 	 	 	P3838011.0	 	 	 	09-Nov-88
	 	 	 	P3838011.0	 	 	 	10-Sep-98
	 	 	09-Nov-2008	 
	 	JP
	 	 	GRA
	 	 	Method and Apparatus for Imaging the
Anatomy

	 	 	 	310112/90	 	 	 	15-Nov-90
	 	 	 	3016396	 	 	 	24-Dec-99
	 	 	15-Nov-2010	 
	 	JP
	 	 	GRA
	 	 	Method and Apparatus for Imaging the
Anatomy

	 	 	 	284811/88	 	 	 	10-Nov-88
	 	 	 	119353	 	 	 	10-Nov-87
	 	 	10-Nov-2008	 
	 	GB
	 	 	GRA
	 	 	Method and Apparatus for Imaging the
Anatomy

	 	 	 	9113229	 	 	 	25-Oct-88
	 	 	 	2246936	 	 	 	02-Sep-92
	 	 	25-Oct-08	 
	 	FR
	 	 	GRA
	 	 	Method and Apparatus for Imaging the
Anatomy

	 	 	 	8814653	 	 	 	09-Nov-88
	 	 	 	8814653	 	 	 	30-May-97
	 	 	09-Nov-08	 
	 	US
	 	 	PEN
	 	 	Localization Cap for Fiducial Markers

	 	 	 	08/480,709	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	US
	 	 	PEN
	 	 	Localization Cap for Fiducial Markers

	 	 	 	09/742,411	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 








[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-23-







 


Patents and Patent Applications Exclusively Sub-Licensed
from Z-KAT (Licensor: Cleveland Clinic Foundation)




	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	Application	 	 	 	 	 	 	 	 	 	 
	 	Ctry	 	 	Status	 	 	Short Title	 	 	Application No.	 	 	Date	 	 	Grant No.	 	 	Grant Date	 	 	EXP Date	 
	 	US
	 	 	GRA
	 	 	Trackable Guide Block

	 	 	 	08/938,299	 	 	 	26-Sep-97
	 	 	 	5,904,691	 	 	 	18-May-99
	 	 	26-Sep-2017	 
	 	US
	 	 	GRA
	 	 	Apparatus for Anatomical Tracking

	 	 	 	08/935,796	 	 	 	23-Sep-97
	 	 	 	5,980,535	 	 	 	09-Nov-99
	 	 	23-Sep-2017	 
	 	US
	 	 	GRA
	 	 	Frameless Stereotaxy System

	 	 	 	07/983,390	 	 	 	30-Nov-92
	 	 	 	5,309,913	 	 	 	10-May-94
	 	 	30-Nov-2012	 
	 	US
	 	 	GRA
	 	 	Frameless Stereotaxy System for
Indiating the Position and Axis
of a Surgical Probe

	 	 	 	08/650,312	 	 	 	20-May-96
	 	 	 	5,776,064	 	 	 	07-Jul-98
	 	 	20-May-2016	 
	 	US
	 	 	GRA
	 	 	Stereotaxy Wand and Tool Guide

	 	 	 	08/224,955	 	 	 	08-Apr-94
	 	 	 	5,517,990	 	 	 	21-May-96
	 	 	08-Apr-2014	 
	 	US
	 	 	GRA
	 	 	Magnetic Resonance Stereotactic
Surgery with Exoskeleton

	 	 	 	08/378,511	 	 	 	26-Jan-95
	 	 	 	5,682,890	 	 	 	04-Nov-97
	 	 	26-Jan-2015	 
	 	US
	 	 	GRA
	 	 	Fiducial Positioning Cup

	 	 	 	08/986,863	 	 	 	08-Dec-97
	 	 	 	6,011,987	 	 	 	04-Jan-00
	 	 	08-Dec-2017	 
	 	US
	 	 	PEN
	 	 	Tool Guide for a Surgical Tool

	 	 	 	09/087,370	 	 	 	29-May-98
	 	 	 	 	 	 	 	 	 	 	29-May-2018	 
	 	US
	 	 	GRA
	 	 	Noninvasive Spine and Bone
Registration for Frameless
Stereotaxy

	 	 	 	08/987,406	 	 	 	09-Dec-97
	 	 	 	5,967,982	 	 	 	19-Oct-99
	 	 	09-Dec-2017	 
	 	EP
	 	 	PEN
	 	 	Trackable Guide Block

	 	 	 	97307576.5	 	 	 	26-Sep-97
	 	 	 	 	 	 	 	 	 	 	26-Sep-2017	 
	 	FR
	 	 	GRA
	 	 	Frameless Stereotaxy System

	 	 	 	93308694.4	 	 	 	01-Nov-93
	 	 	 	600610	 	 	 	03-Jun-98
	 	 	01-Nov-2013	 
	 	GB
	 	 	GRA
	 	 	Frameless Stereotaxy System

	 	 	 	93308694.4	 	 	 	01-Nov-93
	 	 	 	600610	 	 	 	03-Jun-98
	 	 	01-Nov-2013	 
	 	DE
	 	 	GRA
	 	 	Frameless Stereotaxy System

	 	 	 	93308694.4	 	 	 	01-Nov-93
	 	 	 	69318944.4	 	 	 	03-Jun-98
	 	 	01-Nov-2013	 
	 	JP
	 	 	PEN
	 	 	Frameless Stereotaxy System

	 	 	 	315798/93	 	 	 	24-Nov-93
	 	 	 	 	 	 	 	 	 	 	24-Nov-2013	 
	 	EP
	 	 	PEN
	 	 	Fiducial Positioning Cup

	 	 	 	98310069.4	 	 	 	08-Dec-98
	 	 	 	 	 	 	 	 	 	 	08-Dec-2018	 
	 	DE
	 	 	PEN
	 	 	Apparatus for Orientating and
Guiding the Applications of Tools

	 	 	 	95301778.7	 	 	 	16-Mar-95
	 	 	 	 	 	 	 	 	 	 	16-Mar-2015	 
	 	FR
	 	 	PEN
	 	 	Apparatus for Orientating and
Guiding the Applications of Tools

	 	 	 	95301778.7	 	 	 	16-Mar-95
	 	 	 	 	 	 	 	 	 	 	16-Mar-2015	 
	 	GB
	 	 	PEN
	 	 	Apparatus for Orientating and
Guiding the Applications of Tools

	 	 	 	95301778.7	 	 	 	16-Mar-95
	 	 	 	 	 	 	 	 	 	 	16-Mar-2015	 
	 	JP
	 	 	PEN
	 	 	Apparatus for Orientating and
Guiding the Applications of Tools

	 	 	 	94437/95	 	 	 	28-Mar-95
	 	 	 	 	 	 	 	 	 	 	28-Mar-2015	 
	 	NL
	 	 	PEN
	 	 	Apparatus for Orientating and
Guiding the Applications of Tools

	 	 	 	95301778.7	 	 	 	16-Mar-95
	 	 	 	 	 	 	 	 	 	 	16-Mar-2015	 
	 	DE
	 	 	GRA
	 	 	Stereotaxy Systems

	 	 	 	95309062.8	 	 	 	13-Dec-95
	 	 	 	69515288.2	 	 	 	01-Mar-00
	 	 	13-Dec-2015	 
	 	FR
	 	 	GRA
	 	 	Stereotaxy Systems

	 	 	 	95309062.8	 	 	 	13-Dec-95
	 	 	 	728446	 	 	 	01-Mar-00
	 	 	13-Dec-20 15	 
	 	GB
	 	 	GRA
	 	 	Stereotaxy Systems

	 	 	 	95309062.8	 	 	 	13-Dec-95
	 	 	 	728446	 	 	 	01-Mar-00
	 	 	13-Dec-2015	 
	 	NL
	 	 	GRA
	 	 	Stereotaxy Systems

	 	 	 	95309062.8	 	 	 	13-Dec-95
	 	 	 	728446	 	 	 	01-Mar-00
	 	 	13-Dec-2015	 
	 	US
	 	 	GRA
	 	 	Stereotaxy Wand and Tool Guide

	 	 	 	08/650,455	 	 	 	20-May-96
	 	 	 	5,732,703	 	 	 	31-Mar-98
	 	 	20-May-2016	 
	 	US
	 	 	GRA
	 	 	Voice Control

	 	 	 	605,372	 	 	 	30-Oct-90
	 	 	 	5,303,148	 	 	 	12-Apr-94
	 	 	30-Oct-2010	 
	 	US
	 	 	PEN
	 	 	Frameless Stereotaxy System
for Indicating the Position
and Axis of a Surgical Probe
	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-24-








 




Patents and Patent Applications Exclusively Sub-Licensed
from Z-KAT (Licensor: Northwestern University)









	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	Filing	 	 	 	 	 	 	 	 	 	 
	 	Ctry	 	 	Status	 	 	Short Title	 	 	Application No.	 	 	Date	 	 	Grant No.	 	 	Grant Date	 	 	EXP Date	 
	 	US
	 	 	GRA
	 	 	Apparatus and
Method for Planning
a Stereotactic
Surgical Procedure
Using Coordinated
Fluoroscopy

	 	 	 	08/649,798	 	 	 	17-May-96
	 	 	 	5,799,055	 	 	 	25-Aug-98
	 	 	17-May-2016	 
	 	US
	 	 	GRA
	 	 	Apparatus and
Method for Planning
a Stereotactic
Surgical Procedure
Using Coordinated
Fluoroscopy

	 	 	 	09/020,767	 	 	 	09-Feb-98
	 	 	 	6,069,932	 	 	 	30-May-00
	 	 	09-Feb-2018	 
	 	TW
	 	 	GRA
	 	 	Apparatus and
Method for Planning
a Stereotactic
Surgical Procedure
Using Coordinated
Fluoroscopy

	 	 	 	86106479	 	 	 	15-May-97
	 	 	NI-112390
	 	 	11-Mar-00
	 	 	15-May-2017	 
	 	AU
	 	 	PEN
	 	 	Stereotactic
Surgical Procedure
Apparatus and
Method

	 	 	 	57823/01	 	 	 	06-Aug-01
	 	 	 	 	 	 	 	 	 	 	06-Aug-2021	 
	 	CA
	 	 	PEN
	 	 	Stereotactic
Surgical Procedure
Apparatus and
Method

	 	 	 	2,255,041	 	 	 	14-May-97
	 	 	 	 	 	 	 	 	 	 	14-May-2017	 
	 	IL
	 	 	PEN
	 	 	Stereotactic
Surgical Procedure
Apparatus and
Method

	 	 	 	127027	 	 	 	14-May-97
	 	 	 	 	 	 	 	 	 	 	14-May-2017	 
	 	JP
	 	 	PEN
	 	 	Apparatus and
Method for Planning
a Stereotactic
Surgical Procedure
using Coordinated
Fluoroscopy

	 	 	 	541086/97	 	 	 	14-May-97
	 	 	 	 	 	 	 	 	 	 	14-May-2017	 
	 	KR
	 	 	PEN
	 	 	Stereotactic
Surgical Procedure
Apparatus and
Method

	 	 	 	709294/98	 	 	 	14-May-97
	 	 	 	 	 	 	 	 	 	 	14-May-2017	 
	 	NZ
	 	 	GRA
	 	 	Stereotactic
Surgical Procedure
Apparatus and
Method

	 	 	 	332764	 	 	 	14-May-97
	 	 	 	332764	 	 	 	07-Dec-00
	 	 	14-May-2017	 
	 	EP
	 	 	PEN
	 	 	Apparatus and
Method for Planning
a Stereotactic
Surgical Procedure
Using Coordinated
Fluoroscopy

	 	 	 	97925562.7	 	 	 	14-May-97
	 	 	 	 	 	 	 	 	 	 	14-May-2017	 
	 	US
	 	 	GRA
	 	 	Apparatus and
Method for Planning
a Stereotactic
Surgical Procedure
Using Coordinated
Fluoroscopy

	 	 	 	09/483,107	 	 	 	14-Jan-00
	 	 	 	6,198,794	 	 	 	06-Mar-01
	 	 	14-Jan-2020	 
	 	HK
	 	 	PEN
	 	 	Apparatus and Method
for Planning a
Stereotactic Surgical
Procedure
Using Coordinated
Fluoroscopy

	 	 	 	102906.9	 	 	 	16-May-00
	 	 	 	 	 	 	 	 	 	 	16-May-2020	 
	 	NZ
	 	 	PEN
	 	 	Apparatus and Method
for Planning a
Stereotactic Surgical
Procedure
using Coordinated
Fluoroscopy

	 	 	 	505171	 	 	 	14-Jun-00
	 	 	 	 	 	 	 	 	 	 	14-Jun-2020	 
	 	US
	 	 	PEN
	 	 	Apparatus and Method
for measuring
Anatomical Objects
Coordinated Using
Fluoroscopy

	 	 	 	09/484,809	 	 	 	18-Jan-00
	 	 	 	 	 	 	 	 	 	 	18-Jan-2020	 
	 	US
	 	 	PEN
	 	 	Apparatus and Method for
measuring
Anatomical Objects Using
Coordinated Fluoroscopy

	 	 	 	10/384,179	 	 	 	06-Mar-03	 	 	 	 	 	 	 	 	 	 	 	 
	 	CA
	 	 	PEN
	 	 	Apparatus and Method for
Measuring
Anatomical Objects Using
Coordinated Fluoroscopy

	 	 	 	2,360,572	 	 	 	16-Jul-01
	 	 	 	 	 	 	 	 	 	 	16-Jul-2021	 
	 	IL
	 	 	PEN
	 	 	Apparatus and Method for
Measuring
Anatomical Objects Using
Coordinated Fluoroscopy

	 	 	 	144320	 	 	 	15-Jul-01
	 	 	 	 	 	 	 	 	 	 	16-Jul-2021	 
	 	JP
	 	 	PEN
	 	 	Apparatus and Method for
Measuring
Anatomical Objects Using
Coordinated Fluoroscopy

	 	 	 	2000-593243	 	 	 	16-Jul-01
	 	 	 	 	 	 	 	 	 	 	16-Jul-2021	 
	 	KR
	 	 	PEN
	 	 	Apparatus and Method
for Measuring
Anatomical Objects Using
Coordinated Fluoroscopy

	 	 	 	2001-7008976	 	 	 	16-Jul-01
	 	 	 	 	 	 	 	 	 	 	16-Jul-2021	 
	 	EP
	 	 	PEN
	 	 	Apparatus and Method
for Measuring
Anatomical Objects Using
Coordinated Fluoroscopy

	 	 	 	902434	 	 	 	18-Jan-00
	 	 	 	 	 	 	 	 	 	 	18-Jan-2020	 
	 	HK
	 	 	PEN
	 	 	Apparatus and Method
for Measuring
Anatomical Objects Using
Coordinated Fluoroscopy

	 	 	 	2104250.5	 	 	 	05-Jun-02
	 	 	 	 	 	 	 	 	 	 	05-Jun-2022	 
	 







[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-25-







 


Patents and Patent Applications Exclusively Sub-Licensed from Z-KAT (Licensor: Barrett Technologies)








	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	Filing	 	 	 	 	 	 	 	 	 	 
	 	Ctry	 	 	Status	 	 	Short Title	 	 	Application No.	 	 	Date	 	 	Grant No.	 	 	Grant Date	 	 	EXP Date	 
	 	US
	 	 	GRA
	 	 	PRETENSIONING MECHANISM 

FOR
TENSION -ELEMENT DRIVE
SYSTEMS

	 	 	 	 	 	 	 	 	 	5,388,480	 	 	 	2/14/1995	 	 	 	 
	 	US
	 	 	GRA
	 	 	ROBOTIC WRIST

	 	 	 	 	 	 	 	 	 	D352,050	 	 	 	11/01/1994	 	 	 	 
	 	US
	 	 	GRA
	 	 	ROBOTIC SHOULDER

	 	 	 	 	 	 	 	 	 	D351,849	 	 	 	10/25/1994	 	 	 	 
	 	US
	 	 	GRA
	 	 	COMPACT CABLE TRANSMISSION 

WITH CABLE DIFFERENTIAL

	 	 	 	 	 	 	 	 	 	5,207,114	 	 	 	05/04/1993	 	 	 	 
	 	US
	 	 	GRA
	 	 	COMPACT CABLE TRANSMISSION 

WITH CABLE DIFFERENTIAL

	 	 	 	 	 	 	 	 	 	5,046,375	 	 	 	09/10/1991	 	 	 	 
	 	US
	 	 	GRA
	 	 	COMPACT CABLE TRANSMISSION 

WITH CABLE DIFFERENTIAL

	 	 	 	 	 	 	 	 	 	4,903,536	 	 	 	02/27/1990	 	 	 	 
	 






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-26-











 


Patents and Patent Applications Nonexclusively Sub-Licensed from Z-KAT (Licensor:
Cedara Software Corp)




	 	 	 	 	 	 
	 
	 	Patents	 	 	ID/Status	 
	 	Apparatus, System and Method of
Calibrating Medical Imaging Systems
[Beadless C-arm calibration patent]

	 	 	CA Ref # 08-887635CA

US Ref# 08-887635US	 
	 	Computer-Assisted Positioning Method and
System [Patent for Minimal Invasive Hip
replacement system: acetabular side]

	 	 	CA 2,334,495

PCT/CA02/00128	 
	 	Computer Assisted System and Method for
Minimal Invasive Hip, Uni Knee and Total

	 	 	Provisional U.S. Patent
Application Number:	 
	 	Knee Replacement [Method to help replace
hip acetabular and femoral components and
unicondylar or total knee replacement]

	 	 	60/390,188	 
	 






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-27-






 


Patents Nonexclusively Sub-Licensed from Z-KAT, Inc. (Licensor: Biomet Manufacturing Corp.)




	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	Patent Application	 	 	Application	 
	 	Ref No.	 	 	Ctry	 	 	Status	 	 	Patent Short Title	 	 	No.	 	 	Date	 
	 	30-2
	 	 	US
	 	 	NAT
	 	 	Providing Computer
Assistance with
Spinal Fixation

	 	 	10/771,850
	 	 	04-Feb-04	 
	 	30-3
	 	 	WO
	 	 	PCT
	 	 	Providing Computer 

Assistance with 

Spinal Fixation

	 	 	PCT/US04/03132
	 	 	04-Feb-04	 
	 	31-2
	 	 	US
	 	 	NAT
	 	 	Computer-Assisted
Knee Replacement
Apparatus and
Method

	 	 	10/772,139
	 	 	04-Feb-04	 
	 	31-3
	 	 	WO
	 	 	PCT
	 	 	Computer-Assisted
Knee Replacement
Apparatus and
Method

	 	 	PCT/US04/02994
	 	 	04-Feb-04	 
	 	32-2
	 	 	US
	 	 	NAT
	 	 	Computer-Assisted
External Fixation
Apparatus and
Method

	 	 	10/772,142
	 	 	04-Feb-04	 
	 	32-3
	 	 	WO
	 	 	PCT
	 	 	Computer-Assisted
External Fixation
Apparatus and
Method

	 	 	PCT/US04/02993
	 	 	04-Feb-04	 
	 	33-2
	 	 	US
	 	 	NAT
	 	 	Computer-Assisted
Knee Replacement
Apparatus and
Method

	 	 	10/772,085
	 	 	04-Feb-04	 
	 	33-3
	 	 	WO
	 	 	PCT
	 	 	Computer-Assisted
Knee Replacement
Apparatus and
Method

	 	 	PCT/US04/03130
	 	 	04-Feb-04	 
	 	34-2
	 	 	US
	 	 	NAT
	 	 	Computer Assistance
with Total Hip
Replacement
Procedure

	 	 	10/772,092
	 	 	04-Feb-04	 
	 	34-3
	 	 	WO
	 	 	PCT
	 	 	Computer Assistance 

with Total Hip 

Replacement 

Procedure

	 	 	PCT/US04/031 33
	 	 	04-Feb-04	 
	 	35-2
	 	 	US
	 	 	NAT
	 	 	Computer Assistance
with Intramedullary
Nail Procedure

	 	 	10/771,851
	 	 	04-Feb-04	 
	 	35-3
	 	 	WO
	 	 	PCT
	 	 	Computer Assistance
with Intramedullary
Nail Procedure

	 	 	PCT/US04/03068
	 	 	04-Feb-04	 
	 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-28-








 








EXHIBIT A




[
CCF LICENSE AGREEMENT]


 




[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit R.B. to such Asset Contribution
Agreement Addendum (i.e., the License Agreement between Z-KAT, Inc. and MAKO Surgical Corp.) did
not and does not include this exhibit.]






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-29-









 








EXHIBIT B




[
CEDARA LICENSE AGREEMENT]



  





[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit R.B. to such Asset Contribution
Agreement Addendum (i.e., the License Agreement between Z-KAT, Inc. and MAKO Surgical Corp.) did
not and does not include this exhibit.]






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-30-









 








EXHIBIT C




[
NWU LICENSE AGREEMENT]



  





[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit R.B. to such Asset Contribution
Agreement Addendum (i.e., the License Agreement between Z-KAT, Inc. and MAKO Surgical Corp.) did
not and does not include this exhibit.]






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-31-









 








EXHIBIT D




[ALLEN
LICENSE AGREEMENT]



  




[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit R.B. to such Asset Contribution
Agreement Addendum (i.e., the License Agreement between Z-KAT, Inc. and MAKO Surgical Corp.) did
not and does not include this exhibit.]






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-32-









 








EXHIBIT E




[BARRETT LICENSE AGREEMENT]


 




[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit R.B. to such Asset Contribution
Agreement Addendum (i.e., the License Agreement between Z-KAT, Inc. and MAKO Surgical Corp.) did
not and does not include this exhibit.]






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-33-









 








EXHIBIT F




[BIOMET CROSS LICENSE AGREEMENT]



 




[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit R.B. to such Asset Contribution
Agreement Addendum (i.e., the License Agreement between Z-KAT, Inc. and MAKO Surgical Corp.) did
not and does not include this exhibit.]






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



-34-









 








EXHIBIT G




[BIOMET SUBLICENSE AGREEMENT]



 




[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit R.B. to such Asset Contribution
Agreement Addendum (i.e., the License Agreement between Z-KAT, Inc. and MAKO Surgical Corp.) did
not and does not include this exhibit.]






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




-35-











 






Exhibit R.
C.




EXECUTION VERSION




LICENSE AGREEMENT




     THIS LICENSE AGREEMENT (this “Agreement”) is made and entered into this 24th day of
March, 2006 (the “Effective Date”), by and among Z-KAT, INC., a Florida corporation
(“Z-KAT”), and MAKO Surgical Corp., a Delaware corporation (“MAKO”). Z-KAT and
MAKO are each referred to as a “Party” and collectively as “Parties.”



     WHEREAS, Z-KAT and MAKO have entered that certain License Agreement, dated as of December 17,
2005 (the “Original License”), in which MAKO granted to Z-KAT a fully paid, royalty-free,
non-exclusive, irrevocable, non-terminable license in the Z-KAT Field (as defined herein) to make,
have made, use, sell, offers for sale, copy, publicly distribute, perform, display and transmit
(except as otherwise limited in the Original License, prepare derivatives, disclose and make
available, publish arising from any Improvements (as such term is defined in the Original License
Agreement) owned, invented, created or discovered either solely or jointly with others by MAKO or
its employees, or otherwise licensable by MAKO without payment to an unrelated third party (the
“MAKO Improvement Sublicense”);



     WHEREAS, also pursuant to the Original License MAKO agreed to negotiate with Z-KAT in good
faith to grant to Z-KAT on commercially reasonable, but mutually agreeable terms, a royalty-bearing
license to Z-KAT in the Z-KAT Field, in addition to the MAKO Improvements Sublicense, under any IP
Rights (as defined below) to any inventions (whether or not patentable), works of authorship
(including software), or technical information conceived of, reduced to practice, created,
developed or discovered, either solely or jointly with others, by MAKO, its employees and
contractors;



     WHEREAS, contemporaneous herewith, MAKO and Z-KAT are entering in a certain License Agreement
with International Business Machines Corp. (“IBM”), whereby both Z-KAT and MAKO shall grant certain
rights to IBM in exchange for a grant back to MAKO of certain rights by IBM (the “IBM License”);
and



     WHEREAS, in consideration for Z-KAT’s contribution of a license to IBM under the IBM License,
the Parties hereto are entering into this Agreement.



AGREEMENT




     NOW, THEREFORE, for and in consideration of the premises, the mutual representations,
warranties and covenants herein contained and other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties hereby agree as follows:



ARTICLE 1

DEFINITION




     1.1 An “Affiliate” of a party means an entity directly or indirectly controlling,
controlled by or under common control with that party, where control means the ownership or
control, directly or indirectly, of more than fifty percent of all of the voting power of the
shares


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



 









 




(or other securities or rights) entitled to vote for the election of directors or other
governing authority, as of the date of this Agreement or hereafter during the term of this
Agreement. However, the entity will be considered an Affiliate only for the time during which such
control exists.




     1.2 “IP Rights” mean patents and patent applications, including provisional patents,
design patents and registrations, utility patents, utility models, petty patents; any continuation,
continuations-in-part, divisional, extension, provisional application, substitute, reissue,
reexamination, renewal, or extension (including any supplementary protection certificate) of any
such patent or patent application; any confirmation patent or registration patent or patent of
addition based on any such patent; all foreign counterparts of any of the foregoing, and any patent
claiming priority to any such patent or patent application (collectively “Patents”); U.S.
and foreign copyrights and copyright registrations, database protection rights, mask works and mask
work registrations, and all renewals, continuations, and extensions thereof (collectively
“Copyrights”); ownership and all rights to control possession, use and/or disclosure of
trade secrets and other confidential information; all causes of action relating to any of the
forgoing, including the right to collect and receive past damages; all applicable rights under all
international and transnational treaties and conventions relating to protection of intellectual or
industrial property arising from any of the forgoing, and all other legal rights (whether they
arise under contract, statute or common law) for the protection of intellectual or industrial
property throughout the world. Specifically excluded from IP Rights are trademarks, trade dress,
trade names, and similar rights in indicia of origin.



     1.3 “License” has the meaning given to it in Section 2.1.



     1.4 “Licensed IP Rights” means (a) all the Licensed Patents and (b) all IP Rights,
excluding however Patents, throughout the world that, as of the Effective Date, may not, by their
terms be licensed by MAKO to Z-KAT.



     1.5 “Licensed Patents” means those Patents shall mean all patents, including utility
models and typeface design patents and registrations (but not including any other design patents or
registrations): (a) issued or issuing on patent applications entitled to an effective filing date
prior to March 31, 2011; and (b) under which patents or the applications therefor MAKO or any of
its Affiliates has as of the Effective Date, or thereafter obtains, the right to grant licenses to
Z-KAT. Licensed Patents shall include said patent applications, continuations-in-part,
divisionals, and continuations of said patent applications, and all reissues, reexaminations, and
extensions of any of the aforesaid patents or issuing from the aforesaid patent applications.



     1.6 “MAKO Field” means the medical specialty of orthopedic surgery, which includes,
without limitation, the preservation, restoration, development, repair and correction of the
musculoskeletal system and associated structures, including, without limitation, the spine and
neck, but which expressly excludes non-bone oncology, blood vessels and vital organs, neurology
(which is the medical specialty concerned with the brain, spinal cord and nervous system),
non-spine neurosurgery, cranial neurosurgery, ENT and otolaryngology.



     1.7 “Technical Information” means, collectively, all technical information, including
without limitation software, documentation, files, data and information contained therein, in


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



2









 




MAKO’s possession relating to the Z-KAT Field, to the extent is owned or otherwise licensable
(including sub-licensable) by MAKO to others.




     1.8 “Z-KAT Field” means all fields other than the MAKO Field.



ARTICLE 2

GRANTS OF LICENSE




     2.1 Grant of License to Z-KAT. Subject to all of the terms and conditions of this
Agreement, and in particular the limitations of Section 2.3, MAKO grants to Z-KAT, to the extent it
has a right to do so, a worldwide, fully transferable, perpetual, royalty-free and fully paid-up
license (or sublicenses, as the case may be) under the Licensed IP Rights within, and limited to,
the Z-KAT Field (the “License”). The License granted hereunder (a) shall not include the right to
sublicense, (b) is irrevocable and cannot be terminated for any reason (including material breach
of this Agreement) except as expressly provided herein, and (c) is not transferable.



     2.2 Scope of Grant.



          (a) The License is non-exclusive within the Z-KAT Field, but only to the extent that the
Licensed IP Rights are possessed or licensable by MAKO in the Z-KAT Field.




          (b) The License includes, unless it is otherwise expressly stated in this Agreement, and
subject specifically to the limitations of Section 2.3, the following rights:




               (i) with respect to Patents, to make, have made, use, lease, sell, offer to sell, and import
machines and articles of manufacture for use within the Z-KAT Field; and to make, have made, use
and import machines, tools, materials and other instrumentalities, insofar as such machines, tools,
materials and other instrumentalities are involved in or incidental to the development,
manufacture, testing or repair of products for use within the Z-KAT Field, which are made or
imported under the authority of the licensee;



               (ii) with respect to Technical Information, to make, use, sell, lease, distribute, publicly
display, and make available products solely within the Z-KAT Field incorporating or embodying the
Technical Information; and



               (iii) to convey to any purchaser, lessee, or user of any product for use within the Z-KAT
Field, which is made under authority of Z-KAT or its sublicensee, rights to use and resell the
product.



     2.3 Limitations on and Exclusions from Grant.



          (a) Notwithstanding section 2.1, Z-KAT may not, without the consent of or notice to MAKO,
grant further sublicenses under the License, and, even with consent, only to the extent and within
the scope of the License that it has been granted under this Agreement.




          (b) Notwithstanding section 2.2(a), Z-KAT may not, and will not, make available to third
parties any part or portion of software that is included with or that contains



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



3









 







Technical Information except pursuant to a license that obligates the licensee not to disclose the software
or use it except as permitted by this Agreement, and subject to all the terms and conditions of
this Agreement.




          (c) For the avoidance of any doubt, and notwithstanding anything to the contrary in this
Agreement, MAKO is not granting to Z-KAT a license or sublicense that it is not otherwise permitted
to grant under the Licensed IPRights, or that extends beyond the scope of, or otherwise constitutes
a breach of, any agreement to which MAKO is a party as of the Effective Date. MAKO’s foregoing
grant of a License to Z-KAT under this Article 2 is subject to all of the limitations of the
license agreements to which MAKO is now and shall become a party.




     2.4 No Other Licenses; No Assignments. Other than the licenses expressly set forth
above or in other written agreements, MAKO is not granting any other license or sublicense, whether
by implication, estoppel or otherwise. Except as otherwise expressly stated, nothing in this
Agreement is intended to transfer title to, or other ownership interest in, any IP Right. Nothing
contained herein shall impair or alter the rights and obligations resulting from the Original
License Agreement, which shall be unaffected by the terms hereof.



ARTICLE 3

PUBLICITY AND CONFIDENTIALITY




     3.1 Confidentiality of Technical Information Exchanged by the Parties. Each Party
will hold any technical or other information that is disclosed to it by the other Party, and that
is owned, and not licensed to, such other Party (“Confidential Information”) in confidence
and take reasonable precautions to maintain and protect the confidentiality of the Confidential
Information, but in no event less than reasonable care that it would take to protect its own
confidentiality and proprietary information. Technical Information that is owned, and not licensed
to, MAKO will be treated as Confidential Information. Technical Information that is licensed to
MAKO and sublicensed to Z-KAT herein will be treated pursuant to Section 3.3. A receiving Party
may disclose Confidential Information of the disclosing Party to, and share the Confidential
Information of the disclosing Party with, its employees, contractors, representatives, and others
who have a need to know it, so long as each such person is obligated not to disclose such
information to others and to use it only for the purposes for which access is being given. Parties
other than employees having access to software or to Confidential Information must be licensed to
use the Confidential Information, and may only use it to the same extent as the receiving Party is
licensed to use it under this Agreement.



     3.2 Exceptions. Notwithstanding the forgoing obligations of confidentiality,



          (a) The receiving Party may, except with respect to software, make available to third parties
products and related user documentation incorporating or made using the Confidential Information.
The receiving Party may only distribute to third parties Software that is part of, or that includes
the Confidential Information, pursuant to a written agreement that obligates each third party not
to disclose the software and not to use the software except as
expressly permitted by this Agreement, and that expressly forbids use of the software beyond
the limits of the licenses granted to the receiving Party in this Agreement.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



4









 








          (b) The receiving Party may disclose Confidential Information as required by law, but only to
the extent required by law, and also in response to a valid order of a court or other government
body or any political subdivision thereof, but only if the receiving Party has taken reasonable
action to seek a protective order limiting the scope of the disclosure and has promptly notified
the disclosing Party of the requirement to disclose the Confidential Information.




          (c) Confidential Information does not include information that (i) is or becomes publicly
known through no unauthorized act of a receiving Party or those that it has licensed or given
access to the Confidential Information, (ii) is rightfully received by the receiving Party from a
third party without obligation of confidentiality, or (iii) is approved by the disclosing Party for
public disclosure.




     3.3 Confidentiality of Technical Information of Licensors. Z-KAT’s obligations under
this Agreement with respect to any Technical Information licensed to MAKO and sublicensed to MAKO
under this Agreement are the same as the obligations placed by the respective licensors on MAKO
with respect to such Technical Information, and in no event less than the obligations imposed on a
receiving Party by Sections 3.1 and 3.2. Z-KAT may disclose to others, use and permit others to
use any of Technical Information licensed to MAKO by a licensor only to the extent the subject
license agreement of the licensor under which the Technical Information is licensed to MAKO permits
disclosure and use.



     3.4 Publicity and Trademarks. Nothing in this Agreement will be construed as
conferring upon either Party or its Affiliates any right to include in advertising, packaging or
other commercial activities related to a product, any reference to the other Party (or any of its
Affiliates), its trade names, trademarks or service marks in a manner which would be likely to
cause confusion or to indicate that such product is in any way certified by the other Party hereto
or its Affiliates.



ARTICLE 4

PATENTING; MAINTENANCE OF PATENTS; PAYMENTS




     4.1 Patent Prosecution and Maintenance.



          (a) MAKO will retain the sole right to prosecute, control prosecution of, and maintain the
Licensed Patents.




          (b) MAKO shall have no duty to consult or cooperate with Z-KAT in determining the best course
of action for prosecuting each patent application that is included in the Licensed Patents.




          (c) Should MAKO decide to give up control and responsibility for prosecution of a patent
application, or decide to abandon such application with the intent not to continue examination of
the claimed invention in another application, it must give Z-KAT
reasonable notice of its intentions and take all reasonable steps to cooperate with Z-KAT and
to transfer to it control of the application without loss of rights.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



5









 








     4.2 Maintenance Fees and Prosecution Costs.



          (a) MAKO shall have the sole obligation to pay any costs associated with prosecution and
issuance of each patent or patent application and all maintenance, renewal fees or annuities and
other periodic fees and taxes that must be paid to maintain a patent or patent application.




     4.3 Running Royalties. For activities undertaken by, on behalf of, or under the
authority of Z-KAT, its affiliates, and its sublicensees, Z-KAT will pay all royalties and other
amounts of money that, if these activities were undertaken by MAKO, MAKO would otherwise be
obligated to pay under any license agreement as a consequence of the activities (“Running
Royalties”).



     4.4 Payments.



          (a) Z-KAT will pay all amounts due under this Agreement to any licensor directly to the
licensor if the licensor agrees to accept such payments directly from Z-KAT and to relieve MAKO
from all obligations or responsibilities for collecting and paying amounts due from Z-KAT (as a
sublicensee) and for providing reports. Otherwise, Z-KAT will pay to MAKO all such amounts and
provide to MAKO any reports required of MAKO or a sublicensee under the subject license agreement.
MAKO will immediately pay those amounts to the respective Licensors.




          (b) Unless Z-KAT comes to a different agreement with any licensor, all of Z-KAT’s payments
will be due and payable on the same schedules as MAKO’s payments are due under any license
agreement. If Z-KAT must pay Running Royalties to MAKO pursuant to section 4.3, Z-KAT must pay to
MAKO any and all amounts within 15 days after receipt of written notice from MAKO that such payment
is due. Z-KAT must also deliver to MAKO any reports on the activities of Z-KAT and those under its
authority that are due under any subject license agreement.




          (c) In the event MAKO fails to make any payment when due and payable under any license
agreement and Z-KAT makes the payment MAKO is otherwise obligated to pay, Z-KAT may, at its option,
pay to such licensor the amount due, in which case it may seek reimbursement from MAKO for MAKO’s
share of the payment that was due.




          (d) In the event Z-KAT fails to make any payment which it is obligated to make under this
Agreement with respect to any sublicense granted hereunder, to MAKO or to any particular licensor
within thirty (30) days after receiving written notice by MAKO of Z-KAT’s failure to make such
payment, then such sublicense granted to Z-KAT hereunder for which such payment was due shall
terminate; provided, that this Agreement shall remain in full force and effect. However, if there
is a genuine dispute between Z-KAT and a licensor under a license agreement regarding any amount
due, Z-KAT’s failure to pay such amount will not give rise to termination of the sublicense granted
hereunder, though Z-KAT will remain obligated to
reimburse MAKO for Z-KAT’s share of any amounts paid by MAKO to such Licensor within 15 days
of resolution of such dispute.


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.




6









 








     4.5 Renunciation of License. Z-KAT may give up its license with respect to any one or
more Licensed Patents by giving written notice to MAKO of its intention to do so, which will be
effective immediately.



     4.6 Records and Audit. Unless Z-KAT otherwise comes to an agreement with a licensor,
Z-KAT will keep all books, records and other information necessary for MAKO to comply with its
obligations under any license agreement with respect to sublicensees. In the event Z-KAT pays MAKO
Running Royalties, Z-KAT (including related companies and sublicensees) will keep full, clear and
accurate records with respect to all Licensed Products (as such term is defined in any subject
license agreement) necessary for determining the amounts due to MAKO under this Agreement, and will
furnish any information which MAKO may reasonably prescribe from time to time to enable MAKO to
ascertain the amounts due. MAKO may, not more than once per calendar year and only through
accredited auditors, make an examination, following advance notice and during normal business
hours, of all records and accounts bearing upon the amount of royalty payable to it hereunder. The
auditors may disclose only the amounts due and may not disclose any records or other information of
Z-KAT and their customers. Payments must be made within 60 days to compensate for any errors or
omissions disclosed by such examination. If such audit discloses under-reporting of 5 percent or
greater with respect to the reported sums paid to MAKO by Z-KAT during the applicable period
subject to such audit, Z-KAT will fully reimburse MAKO within 60 days after demand, for the
reasonable fees and disbursements for completing such audit. Otherwise, MAKO will be responsible
for payment of the actual costs (including professional fees and disbursements) for each such
audit.



ARTICLE 5

OTHER OBLIGATIONS OF Z-KAT




     5.1 Marking. Z-KAT will place a patent notice in accordance with 35 U.S.C. §287 on
any products made by or on behalf of Z-KAT, which are covered by, or made with a process covered
by, a US patent included within the Licensed IP Rights. Z-KAT will also require that each such
product made under its authority (other than a product made by, on behalf of, or under authority of
the other Party) will also be marked with a notice in accordance with 35 U.S.C. §287. Otherwise,
Z-KAT shall not have any obligation to mark any product.



     5.2 Sublicensee Obligations under License Agreements. Notwithstanding anything to the
contrary in this Agreement, Z-KAT will, with respect to its sublicense under any license agreement
subject to this Agreement, assume each obligation that a sublicensee must have under such license
agreement in order to avoid breach of the license agreement and warrants that it comply with all
terms and conditions of each license agreement that apply to sublicensees.



ARTICLE 6

ENFORCEMENT




     6.1 No Right to Enforce; Cooperation. Z-KAT will not enforce any of the Licensed IP
Rights either inside or outside the Z-KAT Field without the prior consent of MAKO. MAKO may
enforce the Licensed IP Rights inside or outside the MAKO Field without the prior consent of Z-KAT.
In the event MAKO desires to bring a legal action to enforce any of the Licensed IP


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



7









 




Rights, Z-KAT will act promptly and in good faith to cooperate with MAKO, subject to the rights of the relevant
licensor of each of the Licensed IP Rights to be enforced.




ARTICLE 7

LIMITED WARRANTIES; REPRESENTATIONS AND COVENANTS




     7.1 Each Party covenants that it will not terminate or knowingly take any action that would
cause or permit termination of any license agreement subject to this Agreement.



     7.2 To the knowledge of MAKO, practice of the Licensed IP Rights, within the scope of the
License granted in this Agreement (including all of its limitations), does not infringe any third
party IP Rights.



     7.3 EXCEPT AS EXPRESSLY SET FORTH HEREIN, NEITHER PARTY MAKES ANY REPRESENTATIONS OR
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO MARKETABILITY, USE OR FITNESS FOR ANY
PARTICULAR PURPOSE, AND NON-INFRINGEMENT.



ARTICLE 8

BANKRUPTCY




     Z-KAT and MAKO each acknowledges and agrees that this Agreement (i) constitutes a license of
Intellectual Property (as such term is defined in the United States Bankruptcy Code, as amended
(the “Code”)), and (ii) is an executory contract, with significant obligations to be
performed by Z-KAT and MAKO. The parties hereto agree that each may fully exercise all of its
rights and elections under the Code following any event of bankruptcy affecting the other,
including, without limitations, those set forth in Section 365(n) of the Code. If requested by
Z-KAT, Z-KAT shall be entitled to (a) enjoy all of the rights, benefits and use granted hereunder
for the remaining duration of the terms plus any renewal periods and (b) MAKO shall immediately
make available to Z-KAT all product, source code, formulas, information, documents and raw
materials as may be necessary for Z-KAT to continue to utilize the License and sublicenses granted
hereunder following a rejection of the License and/or the sublicenses set forth in this Agreement
in a MAKO bankruptcy.



ARTICLE 9

INDEMNIFICATION




     9.1 Indemnification.



          (a) Subject to the provisions of this Article 9, including, without limitation, Section 9.2,
MAKO will indemnify in respect of, and hold Z-KAT and its officers, directors,
employees and agents harmless against, any and all damages, claims, deficiencies, losses,
including taxes, and all expenses (including interest, penalties, and reasonable attorneys’ and
accountants’ fees and disbursements but reduced by any tax savings, benefits or offsets to which
any party shall be entitled directly or indirectly by reason thereof) (collectively “Damages”),
resulting from a third party claim of any misrepresentation, breach of warranty or failure to
perform any covenant or agreement on the part of MAKO under this Agreement. MAKO further agrees to
indemnify in respect of, and hold Z-KAT, its officers, directors, employees and agents



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



8









 







harmless against, all Damages, injuries and deaths claimed by a third party resulting directly or indirectly
from production, manufacture, sale, marketing, lease, use of a product or service by MAKO or its
Affiliates, except to the extent such Damages, injury or death results from the negligence, gross
negligence or intentional misconduct of Z-KAT, its employees, officers and directors.




          (b) Subject to the provisions of this Article 9, including, without limitation, Section 9.2,
Z-KAT agrees to indemnify in respect of, and hold MAKO and its officers, directors, employees and
agents harmless against, any and all Damages resulting from a third party claim of: (i) any
misrepresentation, breach of warranty, or (ii) failure to perform any covenant or agreement on the
part of Z-KAT under this Agreement, except to the extent such Damages result from the negligence,
gross negligence or intentional misconduct of MAKO or its respective employees, officers and
directors. Z-KAT further agrees to indemnify in respect of, and hold MAKO, the Licensors, and
their respective offices, directors, employees and agents harmless against, all Damages, injuries
and deaths claimed by a third party resulting directly or indirectly from production, manufacture,
sale, marketing, lease, use of a product or service by Z-KAT or its Affiliates, except to the
extent such Damages, injury or death results from the negligence, gross negligence or intentional
misconduct of MAKO, any licensor hereunder, or their respective employees, officers and directors.




     9.2 Method of Asserting Claims, Etc. The Party or Parties claiming indemnification
under this Article (whether one or more) are hereinafter collectively referred to as the
“Indemnified Party” and the party against whom such claims are asserted hereunder is
hereinafter referred to as to the “Indemnifying Party.” All claims for indemnification by
any Indemnified Party under this Article 9 will be asserted and resolved as follows:



          (a) MAKO shall have the right to enforce all claims in connection with the use of the Licensed
Patents in the MAKO Field and Z-KAT shall have the right to enforce all claims in connection with
the use of the Licensed Patents in the Z-KAT Field.




          (b) In the event that any claim or demand for which an Indemnifying Party would be liable to
an Indemnified Party hereunder is asserted against or sought to be collected from such Indemnified
Party by a third party (a “Third Party Claim”), such Indemnified Party will with reasonable
promptness notify the Indemnifying Party of such claim or demand, specifying the nature of and
specific basis for such claim or demand and the amount or the estimated amount thereof to the
extent then feasible (which estimate will not be conclusive of the final amount of such claim and
demand (the “Claim Notice”)). The Indemnifying Party will not be obligated to indemnify
such Indemnified Party with respect to any such claim or demand to the extent the failure of such
Indemnified Party to promptly notify the Indemnifying Party of such a claim or demand materially
prejudices the Indemnifying Party’s ability to defend against
the claim or demand. The Indemnifying Party will have 30 days from the personal delivery or
mailing of the Claim Notice (the “Notice Period”) to notify such Indemnified Party (i)
whether or not it disputes the liability of the Indemnifying Party to such Indemnified Party
hereunder with respect to such claim or demand and (ii) whether or not it desires at the sole cost
and expense of the Indemnifying Party, to defend such Indemnified Party against such claim or
demand; provided, however, that such Indemnified Party is hereby authorized prior to and during the
Notice Period to file any motion, answer or other pleading which it deems necessary or



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



9









 







appropriate to protect its interests or those of the Indemnifying Party and not materially prejudicial to the
Indemnifying Party. In the event that the Indemnifying Party notifies such Indemnified Party
within the Notice Period that it desires to defend such Indemnified Party against such claim or
demand, except as hereinafter provided, the Indemnifying Party will have the right to defend by all
appropriate proceedings. If such Indemnified Party desires to participate in, but not control, any
such defense or settlement it may do so at its sole cost and expense. If requested by the
Indemnifying Party, such Indemnified Party agrees to cooperate with the Indemnifying Party and its
counsel in contesting any claim or demand which the Indemnifying Party elects to contest, and, if
appropriate and related to the claim in question, in making any counterclaim against the person
asserting the third party claim or demand, or any cross-complaint against any person. No claim may
be settled by the Indemnifying Party without the consent of such Indemnified Party, which consent
will not be unreasonably withheld. Notwithstanding the foregoing, in connection with a Third Party
Claim asserted against both such Indemnified Party and the Indemnifying Party, if (x) such
Indemnified Party has available to it defenses which are in addition to those available to the
Indemnifying Party, (y) such Indemnified Party has available to it defenses which are inconsistent
with the defenses available to the Indemnifying Party or (z) a conflict exists or may reasonably be
expected to exist in connection with the representation of both such Indemnified Party and the
Indemnifying Party by the legal counsel chosen by the Indemnifying Party, such Indemnified Party
will have the right to select its own legal counsel. If such Indemnified Party selects its own
legal counsel pursuant to the immediately preceding sentence and the underlying Third Party Claim
is otherwise subject to the scope of the indemnification obligations of the Indemnifying Party
pursuant to this Article 9, the reasonable fees and expenses of such legal counsel will be included
within the indemnification obligations of the Indemnifying Party; provided that under no
circumstances will the Indemnifying Party be obligated to indemnify such Indemnified Party against
the fees and expenses of more than one legal counsel selected by such Indemnified Party in
connection with a single claim (notwithstanding the number persons against whom the Third Party
Claim may be asserted).




          (c) In the event any Indemnified Party should have a claim against any Indemnifying Party
hereunder which does not involve a claim or demand being asserted against or sought to be collected
from it by a third party, such Indemnified Party will send a Claim Notice with respect to such
claim to such Indemnifying Party. If such Indemnifying Party does not notify such Indemnified
Party within the Notice Period that such Indemnifying Party disputes such claim, the amount of such
claim will be conclusively deemed a liability of such Indemnifying Party hereunder.




ARTICLE 10

TERM AND TERMINATION




     10.1 Term. This Agreement will become effective as of the Effective Date and will
continue until terminated according to its terms or until all of the Licensed IP Rights have
expired.



     10.2 Voluntary Termination By Z KAT. Z-KAT may voluntarily terminate this Agreement
upon 60 days written notice to MAKO.


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



10









 





     10.3 Survival.



          (a) To the extent permitted under any subject license agreement, or to the extent Z-KAT and
the respective licensor agree, MAKO’s grant of sublicense to Z-KAT under this Agreement will
survive termination of this Agreement. Otherwise, the sublicense will terminate with respect to
any terminated license agreement.




          (b) If a grant of sublicense to Z-KAT is terminated (or does not survive termination of the
license agreement under which it is granted), Z-KAT will cease all use of the Technical Information
that is sublicensed pursuant to the terminated sublicense and either destroy all copies of it or
return it to MAKO, as directed by MAKO or the licensor of the Technical Information.




          (c) Articles l, 3 and 9 will survive and continue after termination. Any amounts due under
Article 4 prior to termination will remain due and become immediately payable.




ARTICLE 11

MISCELLANEOUS PROVISIONS




     11.1 Registration and Recordation of License Agreement. Notwithstanding the
obligations of confidentiality of Article 3, each Party consents to registration of this Agreement
if required by law, for the grants of licenses to be effective, or to make it effective against
subsequent assignees or licensees. Specifically, and without limiting the foregoing, each Party
consents to recordation of this Agreement in connection with any patents or copyright registrations
included in the Licensed IP Rights. However, Exhibits to this Agreement must be removed or
redacted to show only the patents and copyright registrations and no additional information.



     11.2 Assignment. Z-KAT may assign this Agreement, but only upon (a) a written notice
to MAKO specifying the assignee, (b) the assignee agrees to be bound by all of the terms and
conditions of this Agreement as applicable to such assignee, and, if applicable, (c) a prior
written consent from the third party Licensor as required under the applicable License Agreement.
This Agreement will be binding on successors in interest and permitted assigns. MAKO may assign
this Agreement with the prior written consent of Z-KAT, which shall not be unreasonably withheld
only if the assignee agrees to be bound by all of the terms and conditions of the Agreement.



     11.3 Notices. All notices and other communications which are required or which may be
given under the provisions of this Agreement will be in writing and may be delivered (a)
personally, (b) by facsimile transmission, (c) expedited delivery service with proof of delivery or
(d) sent by United States Mail, postage prepaid, registered or certified, return receipt requested,
addressed as follows:


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



11









 





	 	 	 	 	 
	 

	 	If to MAKO:
	 	 
	 
	 	 	 	 
	 

	 	MAKO Surgical Corp.	 	 
	 

	 	2901 Simms Street	 	 
	 

	 	Hollywood FL 33020	 	 
	 

	 	Phone: (954) 927-2044	 	 
	 

	 	Facsimile: (954) 927-0446	 	 
	 

	 	Attention: Chief Financial Officer	 	 
	 
	 	 	 	 
	 

	 	With copy (which shall not constitute notice) to:	 	 
	 

	 	Foley & Lardner LLP	 	 
	 

	 	3000 K Street, N.W., Suite 500	 	 
	 

	 	Washington, D.C. 20007-5109	 	 
	 

	 	Phone: 202-672-5300	 	 
	 

	 	Fax: 202-672-5399	 	 
	 

	 	Attention: Thomas L. James, Esq.	 	 
	 
	 	 	 	 
	 

	 	If to Z-KAT:	 	 
	 
	 	 	 	 
	 

	 	Z-KAT, Inc.	 	 
	 

	 	2903 Simms Street	 	 
	 

	 	Hollywood FL 33020	 	 
	 

	 	Phone: (954) 927-2044	 	 
	 

	 	Facsimile: (954) 927-0446	 	 
	 

	 	Attention: Chief Financial Officer	 	 
	 
	 	 	 	 
	 

	 	With copy (which ,shall not constitute notice) to:	 	 
	 
	 	 	 	 
	 

	 	Hogan & Hartson L.L.P.	 	 
	 

	 	555 Thirteenth Street, NW	 	 
	 

	 	Washington, DC 20004	 	 
	 

	 	Telephone: 202-637-5600	 	 
	 

	 	Fax: 202-637-5910	 	 
	 

	 	Attention: Christopher J. Hogan, Esq.	 	 





or to such other address designated by the parties as provided above. Any such notice will be
deemed to have been given either at the time of personal delivery or, in the case of delivery
service or mail, as of the date of first attempted delivery at the address and in the manner
provided herein.




     11.4 Choice of Law. THIS AGREEMENT WILL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE
WITH THE LAWS OF THE STATE OF DELAWARE (EXCLUSIVE OF CONFLICTS OF LAW PRINCIPLES).



     11.5 Captions. The captions, headings, and arrangements used in this Agreement are
for convenience only and do not in any way affect, limit, amplify, or modify its terms and
provisions.



     11.6 No Strict Construction. This Agreement is the result of substantial negotiations
among the Parties and their counsel and has been prepared by their joint efforts. Accordingly,


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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the fact that counsel to one Party or another may have drafted this Agreement or any portion of this
Agreement is immaterial and this Agreement will not be strictly construed against any Party.




     11.7 Severability and reformation. Wherever possible, each provision of this
Agreement will be interpreted in such manner as to be effective. If any provision of this
Agreement is held to be illegal, invalid, or unenforceable under present or future laws effective
during the term of this Agreement, such provision will be fully severable and this Agreement will
be construed and enforced as if such illegal, invalid, or unenforceable provision had never
comprised a part of this Agreement, and the remaining provisions of this Agreement will remain in
full force and effect. Furthermore, in lieu of each such illegal, invalid, or unenforceable
provision, there will be added automatically as a part of this Agreement a provision as similar in
terms to such illegal, invalid, or unenforceable provision as may be possible and be legal, valid,
and enforceable; provided, however, that, if any such change will materially diminish the practical
realization of the benefits intended to be conferred to any party to this Agreement, such party may
terminate this Agreement upon written notice to each other party within 30 days after learning such
change has been effected.



     11.8 Consents; Waivers. Any consent or approval required as a condition to an action
under this Agreement will be effective only (a) if in writing and signed by the Party whose consent
is sought, (b) with respect to the specific matter made the subject to such consent or approval
(and no other matter), and (c) for the specific instance(s) expressly set forth in such consent or
approval (and no earlier or subsequent instances). Any Party may waive any condition, covenant,
term, or provision of this Agreement, but any such waiver will be effective only (a) if in writing
and signed by the Party sought to be bound by such waiver, (b) with respect to the specific
condition, covenant, term, or provision expressly made the subject to such waiver (and no other
condition, covenant, term, or provision), and (c) for the specific instances) expressly set forth
in such waiver (and no earlier or subsequent instances). Without limiting the foregoing sentence,
none of the following will constitute a waiver of the rights of a Party to this Agreement to demand
exact compliance with the conditions, covenants, terms, and provisions of this Agreement: (a) a
failure of such Party to exercise any power reserved to it in this Agreement; (b) a failure of such
Party to insist upon compliance by any other Party to this Agreement with any condition, covenant,
term, or provision in this Agreement; (c) a delay, forbearance, or omission of such Party to
exercise any power; or (d) any custom or practice of the Parties at variance with the terms of this
Agreement. The consent or approval of any Party to this Agreement with respect to the act of any
other Party to this Agreement will not be deemed to waive or render unnecessary consent to or
approval of any subsequent similar act. Subsequent acceptance by a Party to this Agreement of any
performance due to it under this Agreement will
not be deemed to be a waiver by such first Party of any preceding breach by any other Party of
any terms, provisions, covenants, or conditions of this Agreement.



     11.9 Force Majeure. Neither party will be in default or otherwise liable for any
delay in or failure of its performance under this Agreement if such delay or failure arises by any
reason beyond its reasonable control, including any act of God, any acts of the common enemy, the
elements, earthquakes, floods, fires, epidemics, riots, failures or delay in transportation or
communications, or any act or failure to act by the other party or such other party’s employees,
agents, or independent contractors or representatives; provided, however, that lack of funds will
not be deemed to be a reason beyond a party’s reasonable control. The parties will promptly


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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inform and consult with each other as to any of the above causes that in their judgment may or could be
the cause of a delay in the performance of this Agreement.




     11.10 Legal Costs. If any action is brought to enforce or interpret the terms of this
Agreement (including through arbitration), the prevailing Party will be entitled to reasonable
legal fees, costs, and disbursements in addition to any other relief to which such Party may be
entitled.



     11.11 Equitable Remedies. Each Party to this Agreement recognizes that the
obligations imposed on it in Articles 2 and 3 are special, unique, and of extraordinary character.
Accordingly, each Party to this Agreement agrees and declares that it is impossible to measure in
money the damages that will accrue by reason of its failure to perform any of its obligations under
Articles 2 and 3 and that, in the event of breach by it of any such obligation, the remedy at law
for such breach will be inadequate. Therefore, each Party to this Agreement, by execution of this
Agreement, waives the claim or defense that there is an adequate remedy at law and agrees it will
not urge in any action or proceeding to which it is a party that relates to Articles 2 and 3 the
claim or defense that such remedy at law exists. Furthermore, the parties, by execution of this
Agreement, agree that each other Party is entitled (without proving damages or posting bond) to
equitable remedies, including specific performance and injunctive relief (in addition to damages)
as a remedy for the enforcement of Articles 2 and 3.



     11.12 Integration. This Agreement sets forth the entire agreement and understanding
between the Parties as to the subject matter hereof and merges all prior discussions between them.
Neither of the Parties shall be bound by any warranties, understandings or representations with
respect to such subject matter other than as expressly provided herein or in a writing signed with
or subsequent to execution hereof by an authorized representative of the Party to be bound thereby.



     11.13 No Partnership. Neither this Agreement, nor any terms and conditions contained
herein, will be deemed or construed to create a partnership, joint venture, other form of business
enterprise or association or cooperative arrangement, agency relationship, or franchise
relationship between the Parties or otherwise to create any liability for either Party whatsoever
with respect to the indebtedness, liabilities, and obligations of the other Party.



     11.14 Counterparts. This Agreement may be executed in any number of counterparts and
will be effective when each Party to this Agreement has executed at least one counterpart, with the
same effect as if all signing parties had signed the same document. All counterparts will
be construed together and evidence only one agreement, which, notwithstanding the actual date
of execution of any counterpart, will be deemed to be dated the day and year first written above.
In making proof of this Agreement, it will not be necessary to account for a counterpart executed
by any Party other than the Party against whom enforcement is sought or to account for more than
one counterpart executed by the Party against whom enforcement is sought.



     11.15 Facsimile Signatures. The manual signature of any Party to this Agreement that
is transmitted to any other Party or counsel to any other Party by facsimile will be deemed for all
purposes to be an original signature.


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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[NEXT PAGE IS SIGNATURE PAGE]



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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     IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed in duplicate
originals by its duly authorized representatives on the respective dates entered below.



	 	 	 	 	 	 	 	 	 
	 	 	MAKO Surgical Corp.	 	 
	 
	 	 	 	 	 	 	 	 
	 

	 	By:	 	 	 	 	 	 
	 

	 	 	 	 	 	 

	 	 
	 	 	Name:	 	 
	 

	 	 	 	 	 	 

	 	 
	 	 	Title:	 	 
	 

	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 	 	Date:	 	 
	 

	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 	 	Z-KAT, Inc.	 	 
	 
	 	 	 	 	 	 	 	 
	 

	 	By:	 	 	 	 	 	 
	 

	 	 	 	 	 	 

	 	 
	 	 	Name:	 	 
	 

	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 	 	Title:	 	 
	 

	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 	 	Date:	 	 
	 

	 	 	 	 	 	 	 	 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



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Exhibit 1.1(a)




LICENSE AGREEMENT




     THIS LICENSE AGREEMENT, made and dated as of the 31st day of August, 2001, by and
between George S. Allen, M.D., Ph.D., an individual having offices at 4405 Warner Place, Nashville,
TN 37205 (“Dr. Allen”) and Z-KAT, Inc., a Florida corporation having offices at 2901 Simms Street,
Hollywood, Florida 33020 (“Z-KAT”).



Witnesseth




     WHEREAS, Dr. Allen, as owner, previously granted exclusive rights under certain patents and
registration software copyrights to Picker International, Inc. a/k/a Marconi Medical Systems
(“Picker” or “Marconi”); and



     WHEREAS, Z-KAT purchased certain image guided surgery assets from Marconi in September 2000;
and



     WHEREAS, Z-KAT, by its purchase of the Marconi image guided surgery assets and rights took on
certain obligations of Marconi with respect to the License Agreement of September 9, 1997 with Dr.
Allen (the “Original Agreement”) as provided herein; and



     WHEREAS, as described more fully below, Z-KAT desires to retain certain modified rights and
obligations under the Original Agreement and Dr. Allen wishes to continue the grant of such rights
and obligations in a modified format, including those relating to the patents and registration
software.



1 — Definitions





	 	1.1	 	Affiliate when used in connection with Z-KAT shall mean any person or entity
directly or indirectly controlling, controlled by, or under common control with Z-KAT.
For the purpose of the preceding sentence, control shall mean ownership of fifty
percent (50%) or more of the outstanding voting shares.
	 
	 	1.2	 	Asset Purchase Agreement shall mean a certain asset purchase agreement between
Dr. Allen, Acustar, L.L.C. and Picker dated September 9, 1997, and attached





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


 









 






	 	 	 	hereto as Exhibit 1.2. Through Z-KAT’s purchase of certain Marconi assets, it has
certain rights respective of such agreement.
	 
	 	1.3	 	Trigger Date shall mean the earlier of the first commercial sale by Z-KAT of a
Licensed Temporary or Permanent Marker or October 1, 2001.
	 
	 	1.4	 	Extended Royalty Period shall mean the period of time beginning upon expiration
of the Initial Royalty Period and continuing until the last of the Licensed Patents to
expire.
	 
	 	1.5	 	Fiducial Marker shall mean a marking device placed on or in the body to provide
a reference, including Permanent and Temporary Markers, and further including related
fixation, implantation, removal, and protection tools and devices.
	 
	 	1.6	 	Field shall mean:






	 	1.6.1	 	navigational apparatus and methods for human or animal body
parts, including the head, which utilize Fiducial Markers or define the
location of any point in or on the body, including the research, design,
evaluation, development, or improvement of such devices, apparatus, and
methods;
	 
	 	1.6.2	 	Fiducial Markers and methods of use, including the research,
design, evaluation, development, or improvement of devices, apparatus and
methods; and
	 
	 	1.6.3	 	Surgical Guides, including the research, design, evaluation,
development, or improvement of devices, apparatus and methods.






	 	1.7	 	Image Guided Surgery System shall mean a frameless stereotaxic surgical system
comprising a stand-alone workstation, infrared localizer and application software for
real time and intra-operative revisualization of medical diagnostic images. Image
Guided Surgery System shall not mean or include an MR, CT, or other diagnostic imaging
system or any components or subsystems thereof with which an Image Guided Surgery
System may be sold or used.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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	 	1.8	 	Improvement shall mean any invention or discovery (including copyrightable
material) in the Field, provided that the manufacture, use or sale of such invention or
discovery, either alone or in connection with a Licensed Product or a Licensed Process,
if unlicensed, would infringe one or more claims of one or more Licensed Patents.
	 
	 	1.9	 	Improvement Patent shall mean any patent or patent application which Dr. Allen
during the term of this Agreement acquires title or otherwise the right to grant
licenses thereunder and relating to any Improvement, together with any divisionals,
continuations, continuations-in-part, or reissues thereof and any corresponding foreign
applications or patents.
	 
	 	1.10	 	Initial Royalty Period shall mean the period of time beginning on the Trigger
Date and continuing for the average term of the issued U.S. Patents listed in Schedule
1.13 and U.S. Patents issuing from U.S. Appl. Ser. No. [***] and U.S. Appl. Ser. No.
[***], not including any patent issuing from a continuation in part application. An
example of the calculation of the average term is attached as Schedule 1.10. The
Original Agreement determined for the purpose of the foregoing calculation, any patent
issuing from U.S. Appl. Ser. No. [***] shall be deemed to have issued the earlier of
(i) its issue date; or (ii) three years from the Original Agreement. Schedule 1.13
reflects a date for this patent application of September 8, 2000 as determined by
subsection (ii).
	 
	 	1.11	 	Licensed Surgical Guides shall mean Surgical Guides manufactured substantially
in accordance with certain designs covered by one or more claims of one or more
Licensed Patents.
	 
	 	1.12	 	Licensed Temporary Marker shall mean a Temporary Marker covered by one or more
claims of one or more Licensed Patents.
	 
	 	1.13	 	Licensed Patents shall mean the patents and patent applications listed in
Schedule 1.13 attached hereto and incorporated by reference herein and any patents
resulting therefrom, together with any divisionals, continuations,





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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	 	 	 	continuations-in-part, or reissues thereof and any corresponding foreign
applications or patents, and any and all Improvement Patents and Permanent Marker
Patents.
	 
	 	1.14	 	Licensed Permanent Markers shall mean Permanent Markers covered by one or more
claims of one or more Permanent Marker Patents.
	 
	 	1.15	 	Licensed Process shall mean any process that practices a method covered by one
or more of the claims of one or more Licensed Patents.
	 
	 	1.16	 	Licensed Products shall means any Z-KAT or sublicensee product covered by one
or more claims of one or more Licensed Patents.
	 
	 	1.17	 	Licensed Registration Software shall mean certain software for the registration
of Fiducial Markers in physical space and image space, including software for locating
a Fiducial Marker in image space, the copyright interest which resides in Dr. Allen;
but not including certain software purchased by Picker as part of the Asset Purchase
Agreement and subsequently sold to Z-KAT.
	 
	 	1.18	 	Minimum Royalty shall mean the following for each year (12 consecutive month
period, not a calendar year) beginning on the Trigger Date: year 1 — $[***]; year 2 -
$[***]; year 3 — $[***]; year 4 — $[***]; and years 5 to the end of the Initial Royalty
Period — $[***]; provided that, in the last year of the Initial Royalty Period, the
Minimum Royalty shall be multiplied by a fraction whose numerator is the number of days
between the starting date of the last year (determined in relation to the Trigger Date)
and the end of the Initial Royalty Period and whose denominator is three hundred sixty
five (365).
	 
	 	1.19	 	Net Sales shall mean the aggregate price at which products or processes are
sold or leased by Z-KAT or an Affiliate, as charged or invoiced, whether by staggered
payments or otherwise, to end-users, dealers, or distributors, after deducting any
allowances expressly granted such as trade discounts, and after deducting commissions
and royalties paid to third parties, sales and other taxes, tariffs and custom duties,
freight and associated insurance costs, installation costs to the





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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	 	 	 	extent such costs are included in the price of the product or process, warranty
costs to the extent such costs are included in the price of the product or process,
insurance costs, and customs or excise duties, and in connection with sales of
Registration Software, Z-KAT’s actual reasonable out-of-pocket expenses for the
development of an integrator’s package for use in connection with the Registration
Software. If a product is leased, the selling price shall not be the price as
charged but shall be the lease payments as they are made. Net Sales shall not be
less than [***] percent of the aggregate invoiced price for domestic sales and not
less than [***] percent than the aggregate invoiced price for international
(non-U.S.) sales.
	 
	 	1.20	 	Permanent Marker shall mean a Fiducial Marker designed for substantially
permanent attachment to the body. Permanent Marker includes related tools and devices,
including fixation, implantation, location, removal, and protection tools and devices,
includes tools and devices designed for use with Temporary Markers, but in no event
would the royalty be duplicative. A requirement by the U.S. Food and Drug
Administration or like foreign regulatory agency which limits the implant period of the
Fiducial Marker which otherwise satisfies the requirements of this Section 1.20 shall
not prevent a Fiducial Marker from being deemed a Permanent Marker.
	 
	 	1.21	 	Permanent Marker Patent shall have the meaning ascribed to it in Section 5.7 of
this Agreement.
	 
	 	1.22	 	Permanent Marker Royalty Period shall mean the period of time beginning on the
first commercial sale by Z-KAT of a Licensed Permanent Marker and extending until the
earlier of (i) fourteen (14) years from the date of such commercial sale; or (ii)
expiration of the last to expire of the Permanent Marker Patents.
	 
	 	1.23	 	Surgical Guides shall mean apparatus usable in connection with an Image Guided
Surgery System for controlling the trajectory and/or the penetration of diagnostic or
therapeutic medical instruments.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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	 	1.24	 	Temporary Marker shall mean a Fiducial Marker other than a Permanent Marker,
together with related tools and devices, including fixation, implantation, location,
removal, and protection tools and devices. All implantable markers, by example the
current Acustar kits, that are not Permanent Markers are also considered Temporary
Markers.
	 
	 	1.25	 	Surface Marker may be either Temporary Markers or Permanent Markers, but have
some portion on or above the surface of the tissue and is not attached to a bony
structure.
	 
	 	1.26	 	Call Option shall mean the right of Dr. Allen to terminate this Agreement and
regain control over the Licensed Patents and Licensed Process within the Call Option
Period for the Call Option Price. Those rights that would transfer upon Dr. Allen’s
exercise of the Call Option would include the transfer of ownership, title or other
rights from Z-KAT to Dr. Allen for all Licensed Temporary Markers, Licensed Surgical
Guides, Licensed Permanent Markers, Acustar production and related assets related to
the Licensed Process and Patents, Acustar regulatory materials and termination of
Z-KAT’s rights to any of the Licensed Patents and Licensed Process, except a
world-wide, non-exclusive royalty free license to Z-KAT for the Licensed Registration
Software for the use with Licensed Temporary or Permanent Markers; otherwise the
parties will negotiate in good faith a royalty on the Net Sales value of the Licensed
Registration Software. Dr. Allen’s exercise of the Call Option would waive and release
Z-KAT of any obligation under this Agreement and only obligate Z-KAT to assist for
sixty (60) days in transitioning the installed base and regulatory components of
Licensed Products. Additionally, Dr. Allen will assume all distribution obligations
for the Licensed Products.
	 
	 	1.27	 	Call Option Period shall mean the period of time starting on the date that Dr.
Allen first provides Notice to Z-KAT of his intention to exercise his Call Option, and
expiring 180 days later.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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	 	1.28	 	Call Option Price shall be equal to all obligations of Z-KAT associated with
the exercise of the Call Option (for example, the amount outstanding to the
manufacturer for inventory of Temporary Markers) and expenses directly related to such
transfer (for example, delivery and removal, regulatory fees), provided that Dr. Allen
shall be entitled to all revenues associated with the expenses included in the Call
Option Price, or such other amounts as the parties may agree. The Call Option Price
shall be due in immediately available funds at the earlier of the transfer of the
subject assets under the Call Option or 180 days from Dr. Allen’s first Notice to Z-KAT
of his intention to exercise his Call Option.





2 — Grant



Dr. Allen hereby grants to Z-KAT the following licenses:





	 	2.1	 	An exclusive, world-wide license to make, have made, use, sell, and otherwise
dispose of Licensed Products and Licensed Processes.
	 
	 	2.2	 	An exclusive, world-wide right to sublicense the Licensed Patents and Licensed
Processes to third parties to make, have made, use, sell, lease, and otherwise dispose
of (at a royalty reflecting their fair market value) Licensed Products and Licensed
Processes; provided, however, that Dr. Allen will have the right of approval with
respect to sublicenses for the manufacture of such Licensed Products by third parties,
which approval shall not be unreasonably withheld. Dr. Allen and Marconi identified to
Z-KAT that Medsource f/n/a Act Medical could be an acceptable sublicensee to
manufacture. Both parties understand that Medsource has not produced certain Licensed
Products prior to its introduction by Dr. Allen and Marconi to Z-KAT. Dr. Allen
acknowledges and agrees with Z-KAT’s hiring of Medsource to determine Medsource’s
ability to properly manufacture certain Licensed Products. If Medsource is able to
properly produce one or more Licensed Products according to the Z-KAT specifications,
including good manufacturing practices, and such end-product meets Z-KAT’s
specifications and Dr. Allen’s review, then Medsource will be an acceptable sublicensee
to manufacture such one or more Licensed Products. In the event





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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	 	 	 	that a sublicense for the manufacture of Licensed Products includes a provision
allowing the sublicensee to have Licensed Products manufactured on its behalf by a
third party, the sublicense shall include a provision which grants Dr. Allen a right
of approval with respect to such third-party manufacturer(s) and any changes
thereof, which approval shall not be unreasonably withheld. No such approvals shall
be required for sublicenses granted to Affiliates of Z-KAT.
	 
	 	2.3	 	An exclusive, world-wide license to use, reproduce, modify (including the right
to prepare derivative works), perform, display, and distribute the Licensed
Registration Software, including the right to sublicense.





3 — Compensation



In consideration of the licenses granted hereunder, Z-KAT agrees to pay Dr. Allen royalties as
follows:





	 	3.1	 	For the Initial Royalty Period, [***] percent ([***]%) of the Net Sales of the
Licensed Temporary Markers.
	 
	 	3.2	 	If Z-KAT sells the Licensed Registration Software as a separate line item in
its invoice having a separate designated price, or as a stand alone product, then [***]
percent ([***]%) of the Net Sales of the Licensed Registration Software is due to Dr.
Allen. In any other event, no royalty shall be due for Licensed Registration Software
to Dr. Allen as long as the Licensed Registration Software is used with the Licensed
Fiducial Markers. However, the parties acknowledge that Z-KAT may be required to give
away (free of charge) Licensed Registration Software to increase potential distribution
of Fiducial Markers. Unless otherwise agreed by the parties, Z-KAT shall not
sublicense, sell or otherwise provide Licensed Registration Software for use with
Fiducial Markers other than Licensed Temporary or Permanent Markers.
	 
	 	3.3	 	For the Extended Royalty Period, [***] percent ([***]%) of the Net Sales of the
Licensed Temporary Markers.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


8









 






	 	3.4	 	For the Initial Royalty Period, [***] percent ([***]%) of the Net Sales of the
Licensed Surgical Guides.
	 
	 	3.5	 	For the Permanent Marker Royalty Period, [***] percent ([***]%) of the Net
Sales of the Licensed Permanent Markers less any royalty or other payment required to
be paid by Z-KAT to a third party (including Vanderbilt University) in order to
exercise its license rights in the Permanent Markers. The parties agree to negotiate
in good faith an appropriate downward adjustment in the foregoing royalty, if any,
consistent with licenses of similar inventions or discoveries and the scope of the
available patent protection. In any event, the royalty to Dr. Allen shall not be less
than [***]%.
	 
	 	3.6	 	For Licensed Temporary Markers in the Initial Royalty Period and Licensed
Permanent Markers in the Permanent Marker Royalty Period, the royalty as described
above in sections 3.1 and 3.5, respectively, unless Z-KAT in good faith believes it is
necessary to license additional intellectual property from a third party in order to
enhance the marketability, manufacturability, safety, efficacy or reliability of the
respective marker. For every percentage point that Z-KAT must pay for such other
intellectual property, it shall be entitled to reduce the royalty due to Dr. Allen by
[***]% of the percentage amount paid. By example, if Z-KAT pays [***]% royalty for
additional intellectual property, it shall be entitled to reduce Dr. Allen’s royalty by
[***]% to a [***]% royalty for Surface Markers. In any event, the royalty to Dr. Allen
shall not be less than [***]%.
	 
	 	3.7	 	All royalties resulting from sublicenses for the manufacture of Licensed
Products shall be shared equally by Dr. Allen and Z-KAT, subject to a reasonable credit
for expenses incurred by Z-KAT in obtaining the sublicense.
	 
	 	3.8	 	Reflecting the grant of exclusive rights under Section 2 above, the licenses
granted under Section 2 above shall be subject to the Minimum Royalty. If the royalty
paid to Dr. Allen in a given year exceeds the Minimum Royalty, the excess will be
credited toward the Minimum Royalty obligation in succeeding





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


9









 






	 	 	 	years. The above potential credit against the Minimum Royalty obligation in
succeeding years shall not include the legal fee credit under Section 5.4.
	 
	 	 	 	Satisfaction of the Minimum Royalty is considered complete satisfaction of any duty,
whether express or implied, imposed upon Z-KAT to commercially exploit its rights
under this Agreement, and is accepted by Dr. Allen in lieu of any best efforts
obligation on the part of Z-KAT.
	 
	 	 	 	Within sixty (60) days after the first days of January, April, July and October in
each year that royalties are due, Z-KAT shall render a written report to Dr. Allen
stating the quantity and Net Sales of all royalty bearing products sold or otherwise
disposed of during the preceding three calendar months. The report for the quarter
ending September 30 shall be deemed the final report for the year. Each report
shall be accompanied by a remittance in full covering the royalties shown therein to
be due. Royalties paid on royalty bearing products that are returned by customers
may be credited against future royalty payments provided royalties are paid on such
returned royalty bearing products that are later sold. Royalties need not be paid
on royalty bearing products furnished to customers without charge to replace
returned royalty bearing products on which royalties had previously been paid
provided no credit is taken against royalty payments for such returned royalty
bearing products. Royalty shall not be due for any royalty bearing products
transferred to third party without charge for clinical testing, research or
validation. Z-KAT shall be entitled to a royalty credit in instances where,
contrary to the terms of sale or lease, payment has not been received within one
hundred eighty (180) days of such sale despite reasonable efforts by Z-KAT to
collect the amount due, provided that any such royalty credit shall be remitted to
Dr. Allen if and when payment is received by Z-KAT.
	 
	 	3.9	 	Z-KAT shall keep true books of account containing an accurate and complete
record of all data relating to the sales of royalty bearing products as necessary for
the computation of royalties payable to Dr. Allen hereunder. Dr. Allen, at his
expense, shall have the right to nominate an independent certified public





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


10









 






	 	 	 	accountant, satisfactory to Z-KAT, who shall have access with one (1) month’s
Notice, during reasonable business hours, to such of Z-KAT’s records as are
reasonably necessary to verify the accuracy of the royalty payments required to be
made and made under this Agreement, but this right may not be exercised more than
once during each calendar year. Notwithstanding the foregoing, Z-KAT may, as a
condition to granting access to its records, require the certified public accountant
enter into an agreement not to disclose any information other than his determination
of the royalty due hereunder to any person, except Dr. Allen. It being understood
that information regarding customers, and marketing and other such information are
confidential to Z-KAT and are not to be disclosed to third parties and Dr. Allen.
	 
	 	3.10	 	On the effective date of this Agreement, Z-KAT shall grant Dr. Allen or his
designees an option to purchase 185,200 common shares of Z-KAT with an exercise price
of $1.35 exercisable at any time for a period of 10 years after the date of this
Agreement. This grant shall be governed by the provisions of the Stock Option Plan and
attached hereto as Exhibit 3.10.





4 — Duties





	 	4.1	 	At all times during the term of this Agreement, Dr. Allen will cooperate with
Z-KAT in satisfying the requirements of all federal, state and local laws and
regulations, and particular in relation to the requirements of the United States Food
and Drug Laws and such other applicable laws and regulations as they relate to
obtaining and retaining approval and/or clearance for the use of the items licensed
hereunder.
	 
	 	4.2	 	Dr. Allen and Z-KAT agree that each party will not disclose to any third party,
publish in any way, use for his own benefit or for the benefit of others without the
prior written agreement of the parties as may be provided in this Agreement or
otherwise, during or after the term of this Agreement, any information, ideas,
conceptions, developments, processes, products, instrumentation, inventions or





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


11









 






	 	 	 	commercial, financial or marketing information, except that there shall be no
obligation as to such information which:






	 	4.2.1	 	is or becomes part of the public domain or of public knowledge
through no act or omission of the receiving party;
	 
	 	42.2	 	was in the possession of the receiving party prior to the
disclosure by the other;
	 
	 	4.2.3	 	is disclosed to the public by a patent or in a patent
application filed pursuant to this Agreement;
	 
	 	4.2.4	 	is independently developed without reference to confidential
information disclosed hereunder;
	 
	 	4.2.5	 	is disclosed pursuant to discovery obligations in a
litigation, subject to a protective order designed to preserve the
confidentiality of the information so disclosed, and provided that both Dr.
Allen and Z-KAT are provided with Notice of such disclosure prior to
disclosure.






	 	 	 	4.2.6   is used by Z-KAT, to the same extent that Z-KAT does not keep its own similar
information confidential, in conjunction with its ability to market, sell or perform
a product launch of a royalty bearing product.
	 
	 	4.3	 	Z-KAT, through the Marconi asset purchase, shall have no obligation of
confidentiality with respect to those Assets purchased pursuant to the Asset Purchase
Agreement. Use of the Licensed Registration Software pursuant to the licenses granted
in the Agreement shall not be subject to this Section 4.2.
	 
	 	4.4	 	The obligation of confidence set forth in this Section 4 shall endure
permanently and shall survive expiration or termination of this Agreement.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


12









 











5 — Inventions, Patents, and Copyrights





	 	5.1	 	Effective as of September 7, 2000, Z-KAT will assume responsibility, at its
expense, for prosecution of pending Licensed Patent applications and maintenance of the
Licensed Patents. In the event that Z-KAT should elect not to maintain or prosecute a
Licensed Patent, Z-KAT shall so advise Dr. Allen in writing, and Dr. Allen may do so at
his expense, provided that Z-KAT’s license under said Licensed Patent shall become
non-exclusive. Z-KAT’s election not to maintain or prosecute a Licensed Patent shall
not be without reasonable basis.
	 
	 	5.2	 	Z-KAT shall have full and complete control over the prosecution of Licensed
Patent applications but shall consult in good faith with and keep Dr. Allen advised as
to such patent prosecution, including timely supplying to Dr. Allen copies of Official
Actions, amendments and responses, and copies of any patents or other material provided
therewith.
	 
	 	5.3	 	Upon request of Z-KAT, Dr. Allen will, alone or with others, execute all proper
papers and cooperate to the fullest degree with Z-KAT in securing and maintaining the
Licensed Patents and related copyrights.
	 
	 	5.4	 	Z-KAT assumed responsibility for reasonable legal fees and expenses incurred by
Dr. Allen in connection with the Liebinger Interference beginning on September 7, 2000.
The Original Agreement contemplated that, in the event that the cumulative expenses
incurred in connection with the Liebinger Interference exceed [***] dollars ($[***]),
any excess would be a credit toward future royalties due Dr. Allen in excess of the
Minimum Royalty. Accordingly, such fees and expense paid by Picker plus those paid by
Z-KAT, as detailed in Schedule 5.4, in connection with the Leibinger Interference in
excess of [***] dollars ($[***]) shall be available for credit toward future royalties
due Dr. Allen in excess of the Minimum Royalty.
	 
	 	5.5	 	In the event that one or more claims of one or more Licensed Patents is
adjudicated invalid, the parties agree to negotiate in good faith appropriate





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


13









 






	 	 	 	downward adjustments to the royalties and Minimum Royalties. In the event that the
parties are unable to agree on an appropriate adjustment, the matter shall be
subject to Section 10.1 of the Agreement. The arbitrator shall establish an
appropriate downward adjustment, if any. The parties agree that the McCory claims
involved in the Liebinger Interference were not material for purposes of such
downward adjustment. The parties further agree that one or more claims of the
Licensed Patents, other than the McCory claims involved in the Liebinger
Interference, may be material for purposes of such downward adjustment.
	 
	 	5.6	 	In the event that Z-KAT does not elect to maintain or prosecute a Licensed
Patent or Licensed Patent application pursuant to Section 5.1 above, at Dr. Allen’s
option, he will assume responsibility for such Licensed Patents and Licensed Patent
applications, including the responsibility for associated legal fees and expenses.
	 
	 	5.7	 	It is agreed that any inventions or discoveries (whether patentable or
otherwise and including copyrightable material) in the Field conceived or first reduced
to practice by Dr. Allen or by those working under this direction, solely or jointly
with others, during the term of this Agreement will be disclosed to Z-KAT within forty
five (45) days of the earlier of such conception or reduction to practice. For
inventions or discoveries comprising Permanent Markers or Temporary Markers, Z-KAT may
assume responsibility, at its expense, for prosecution of appropriate U.S. and foreign
patent application(s), and any resulting patent(s) shall be deemed Permanent Marker
Patents or Temporary Marker Patents, respectively. For inventions or discoveries
comprising an Improvement or an improvement to the Licensed Registration Software, but
not comprising Permanent Markers or Temporary Markers, Z-KAT may assume responsibility,
at its expense, for prosecution of appropriate U.S. and foreign patent applications(s),
and any resulting patent(s) shall be deemed an Improvement Patent; provided that in the
event that Z-KAT does not elect to assume such responsibility, Dr. Allen may do so at
his expense, and any resulting patent(s) shall be deemed an Improvement Patent, except
that Z-KAT’s license therein shall be non-exclusive.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


14









 






	 	 	 	Z-KAT shall have the right of first refusal to negotiate an exclusive or
non-exclusive, as may be desired by Z-KAT, license in all other inventions or
discoveries in the Field under reasonable terms and conditions, including royalties,
consistent with the terms, conditions, and royalties for licenses of similar
inventions or discoveries. Dr. Allen is required to properly document his work,
including conception, attempts to reduce to practice and all other records related
to reduction to practice, through use of an engineering laboratory notebook (bound
notebook having numbered pages) written in ink, dated and signed by a witness.
	 
	 	5.8	 	The parties agree and acknowledge that Z-KAT will offer consulting agreements
to Dr. Allen, and at its option, other members of the Vanderbilt faculty and staff.
Z-KAT and Dr. Allen agree that the results of work performed under the consulting
agreements (the “Results”) shall be the property of Z-KAT. Notwithstanding the
foregoing, the parties agree that, to the extent the Results comprise a Permanent
Marker or Temporary Marker an Improvement, or an improvement to the Licensed
Registration Software, any such items shall be subject to the payment of the royalty by
Z-KAT to Dr. Allen which would otherwise be due pursuant to this Agreement, it being
understood that such royalty shall not be additive to the royalties otherwise payable,
subject to Section 3.5 regarding Vanderbilt University for Permanent Markers.





6 — Representations, Warranties, and Covenants





	 	6.1	 	Z-KAT warrants to the best of its knowledge that it has obtained all of
Picker’s rights and assumed those Picker obligations due subsequent to the acquisition
of the subject rights, as described in the Original Agreement. The parties acknowledge
and agree that the subject rights and obligations, per the September 9, 1997 agreement,
are not duplicative or additional.
	 
	 	6.2	 	Each party hereto represents and warrants that it has the requisite power and
authority to enter into this Agreement and to perform each and every term, provision
and obligation of this Agreement, and that neither the execution nor





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


15









 






	 	 	 	delivery of this Agreement will conflict with, or result in, a breach of the terms,
provisions or obligations, or constitute a default under, any other agreement or
instrument under which the party is obligated.
	 
	 	6.3	 	Dr. Allen further represents and warrants that, except as set forth in Schedule
6.3, no third party, including without limitation an academic institution (including
Vanderbilt University), member of an academic institution, corporation or other entity,
or any local state or federal government holds any property rights in the subject
matter licensed hereunder and that Dr. Allen is able to consummate this Agreement in
the capacity of a free agent.
	 
	 	6.4	 	Dr. Allen expressly represents and warrants that he holds record title, free
and clear of all liens and encumbrances, in the Licensed Patents and that he holds
title to the Registration Software, including the copyright interests therein, free and
clear of all liens and encumbrances. The Licensed Patents have not been pledged or
used as collateral in any respect whatsoever. There exists no condition affecting
title to or use of any part of the Licensed Patents, which would prevent Z-KAT from
exercising the rights granted hereunder.
	 
	 	6.5	 	Dr. Allen expressly represents and warrants that no claim of misappropriation
or infringement related to the subject matter of the Licensed Patents or the
Registration Software have been made by any third party, nor to Dr. Allen’s actual
knowledge, have any such claims been threatened.
	 
	 	6.6	 	To Dr. Allen’s actual knowledge, the manufacture, use, performance or sale of
products or services incorporating or in connection with the Licensed Patents does not
infringe any intellectual property right of any third person.
	 
	 	6.7	 	Dr. Allen expressly represents and warrants that all tax returns, reports and
declarations (the “Tax Returns”) required by any governmental authority to be filed in
connection with the Licensed Patents and the Licensed Registration Software,
properties, business, income, expenses, and net worth of Dr. Allen have been filed or
will be filed when due, and such returns are or will be correct and





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


16









 






	 	 	 	complete in all material respects. All tax due in connection with such properties,
business, income, expenses, and net worth has been paid, or will be paid when due.
There are no liens on Dr. Allen’s assets in respect of outstanding taxes.
	 
	 	6.8	 	Dr. Allen expressly represents and warrants that the patents listed in Exhibit
A are valid and in full force and effect and, except as set forth in Schedule 6.7, are
not subject to any taxes, maintenance fees or actions falling due within the next three
months. Except in connection with the Leibinger Interference (Interference No.
103,657), there have been no interference actions, oppositions, requests for
reexamination or other judicial, arbitration, or other adversary proceedings concerning
the patents or patent applications listed in Schedule 1.13. Each patent application
listed in Exhibit A is awaiting action by its respective patent office, or has recently
been subject to such action and a timely response is being prepared.
	 
	 	6.9	 	Dr. Allen provided to Picker a favorable Opinion of Counsel as to the matters
addressed in Sections 6.2, 6.3, 6.4, 6.5, 6.6, 6.7 and 6.8, and the same have been
provided by Picker to Z-KAT.
	 
	 	6.10	 	Dr. Allen covenants and agrees that he will (i) pay any and all taxes, when
due, on payments made by Z-KAT hereunder to Dr. Allen or his designee; (ii) not assign,
encumber, or otherwise transfer, excluding sublicenses, the Licensed Patents without
Z-KAT’s prior written consent, which consent shall not be unreasonably withheld; and
(iii) not take any action which may impair Z-KAT’s exercise and engagement of the
rights and licenses granted hereunder.





7 — Indemnity





	 	7.1	 	Dr. Allen shall indemnify Z-KAT, its Affiliates, shareholders, directors,
employees, officers and agents (against and hold them harmless from all liability loss,
damage, or deficiency resulting from or arising out of any (i) inaccuracy in or breach
of any representation or warranty by Dr. Allen in connection with this





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


17









 






	 	 	 	Agreement; or (ii) breach by Dr. Allen of any covenants or obligations under this
Agreement.
	 
	 	7.2	 	Z-KAT shall indemnify Dr. Allen against and defend and hold him harmless from
all liability, loss, damage, or deficiency asserted by a third party insofar as such
liability, loss, damage, or deficiency arises from (i) defects in design, material or
workmanship of Licensed Products or Licensed Processes sold or otherwise disposed of by
Z-KAT; (ii) Z-KAT’s advertising or promotional materials; (iii) inaccuracy in or breach
of any representation or warranty by Z-KAT in connection with this Agreement; or (iv)
breach by Z-KAT of any covenants or obligations under this Agreement. This indemnity
does not include claims against Dr. Allen or any other physician for medical
malpractice.
	 
	 	7.3	 	Each party shall notify the other in writing within a reasonable time after
initiation or threat of any claim, suit, action, or legal proceeding to which it may be
entitled to indemnity under this Section 7. Subject to Section 7.1, Dr. Allen and
Z-KAT agree to negotiate in good faith to determine whether Dr. Allen or Z-KAT shall
undertake the defense of the Indemnitees (“Indemnitees” includes Dr. Allen or Z-KAT,
its Affiliates, shareholders, directors, employees, officers and agents).
	 
	 	 	 	In the event that Z-KAT undertakes the defense of the Indemnitees as provided in
Section 7.3 and Z-KAT is entitled to indemnification, then Z-KAT’s out-of-pocket
costs and expenses in defending such suit (for the purposes of this Section 7.1, the
“Defense Costs”) shall be a credit against payments which are or may be due Dr.
Allen. In the event that Dr. Allen undertakes the defense of the Indemnitees, the
cost and expense of such defense shall be borne be Dr. Allen.
	 
	 	 	 	The party undertaking the defense of the Indemnitees shall receive from the other
the full and complete authority (after due consultation with the indemnified party),
information, and assistance to the extent reasonably necessary to defend or settle
any claim, suit, or proceeding. In the event Z-KAT undertakes such defense, Dr.
Allen agrees to provide such information and assistance at his cost and expense.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


18









 






	 	 	 	In the event Dr. Allen undertakes such defense, Z-KAT agrees to provide such
information and assistance at its cost and expense. The party undertaking the
defense of the Indemnitees agrees to consult with the other prior to selecting
counsel for the purpose of discharging his obligations under this section. The
parties agree to engage in such consultation in good faith, to give due
consideration in good faith to the comments of the other, and to refrain from
engaging any counsel who has or may have a conflict with the other. Each Indemnitee
hereunder reserves and shall have the right to be represented by and to participate
actively through his or her own counsel in any suit, action, or proceeding
identified in this section, at his or her cost and expense. Z-KAT shall receive
timely notification of any settlement agreement relating to claims of infringement
prior to the execution thereof. No such settlement shall include any term or
condition which would restrict, limit, impair, or otherwise affect any rights which
Z-KAT (or any Indemnitee) otherwise may enjoy under this License without first
receiving the prior written consent specifically agreeing to such restriction,
limitation, impairment, or other effect.
	 
	 	7.4	 	Subject to the limitations contained in this Section 7.4, all payments which
are or may be due to Dr. Allen, if any, shall be subject, as Z-KAT’s sole and exclusive
remedy, to setoff in the amount of (i) any indemnification, including Defense Costs, to
which Z-KAT may be entitled under this Agreement; or (ii) except for those royalties
identified in Section 3.6 and Schedule 6.3, the amount of any royalty required to be
paid by Z-KAT to a third party in order to exercise the license rights granted under
this Agreement.
	 
	 	 	 	Z-KAT may setoff against all payments which are or become due Dr. Allen a reserve
adequate to cover any reasonably anticipated liability resulting from a settlement,
judgment, order or the like (the “Reserve Setoff”) with respect to any claim, suit,
action, or proceeding to which Z-KAT (or any Indemnitee) may be entitled to
indemnity under this Agreement. In any given quarter, the Reserve Setoff maybe
taken only to the extent that the sum of the Defense Costs and the Reserve Setoff
does not exceed fifty percent (50%) of the payments which would





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


19









 






	 	 	 	otherwise be due to Dr. Allen during such quarter. The Reserve Setoff shall be
deposited by Z-KAT in escrow until such time as the amount of the settlement,
judgment, order or the like is finally determined. Any excess shall be returned to
Dr. Allen; any shortfall may be setoff against any and all payments which are or may
be due Dr. Allen under this Agreement.
	 
	 	 	 	Upon making any deduction for the Reserve Setoff, Z-KAT shall provide Dr. Allen with
written Notice of same which written Notice shall set forth in reasonable detail the
basis for such deduction. The parties shall attempt to resolve the issues giving
rise to the deduction for the Reserve Setoff during the thirty (30) day period from
and after the date of such written Notice. If the parties are unable to resolve
such issues, the parties shall subject the dispute to non-binding mediation in Ft.
Lauderdale or Miami, Florida with a mutually agreeable mediator, otherwise the local
office of Ernst & Young, which shall seek to mediate a resolution for a sixty (60)
day period from and after the expiration of the thirty (30) day period. If the
parties are still unable to reach a resolution, either party may submit the matter
to arbitration pursuant to Section 10.1 of this Agreement.





8 — Term and Termination





	 	8.1	 	Unless otherwise terminated as provided herein, the Agreement shall remain in
force until the expiration of the last to expire of the patents under which Z-KAT is
licensed pursuant to this Agreement for each country where the patent has been
obtained.
	 
	 	8.2	 	Upon termination of the Agreement for any cause, nothing herein shall be
construed to release either party from any obligation accrued prior to the date of such
termination. Z-KAT shall have the right to make, have made, use, and sell, at any time
after termination, any products and processes licensed under this Agreement that are in
inventory or being manufactured at the time of termination subject only to the
obligation to pay royalties as provided in this Agreement.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


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	 	8.3	 	In the event that the Minimum Royalty for a given year has not been satisfied
and after giving Z-KAT thirty (30) days written Notice to cure, or after Z-KAT provides
written Notice that it will not satisfy the Minimum Royalty, Dr. Allen may, upon
written Notice to Z-KAT within thirty (30) days from Dr. Allen’s receipt Z-KAT’s
anticipatory Notice or after its failure to cure, as his sole and exclusive remedy,
inform Z-KAT of his intention to act in the following manner:






	 	(i)	 	Waive the Minimum Royalty for that given year, accept
the amount paid as satisfaction, and continue under the Agreement as if the
complete and full payment has been satisfied for that given year; or
	 
	 	(ii)	 	Exercise his Call Option within the Call Option Period
for the Call Option Price, less the amount of any actual unpaid royalty,
excluding the balance of any Minimum Royalty, due to Dr. Allen.






	 	8.4	 	In the event Z-KAT no longer desires to maintain this exclusive license or
practice under the Licensed Patents and this Agreement, it shall notify Dr. Allen in
writing of such event and Dr. Allen may, upon written Notice to Z-KAT within thirty
(30) days from Dr. Allen’s receipt of such Notice, as his sole and exclusive remedy,
inform Z-KAT of his intention to act in the following manner:






	 	(i)	 	Waive the Minimum Royalty obligations for two (2) years
or more years, as negotiated, and accept any amounts paid as satisfaction
of Minimum Royalty obligations for at least those two (2) years, and
continue under the Agreement as if the complete and full payment of Minimum
Royalty obligations for at least those two (2) years; or
	 
	 	(ii)	 	Exercise his Call Option within the Call Option Period
for the Call Option Price, less the amount of any actual unpaid royalty,
excluding the balance of any Minimum Royalty, due to Dr. Allen.






	 	8.5	 	If Dr. Allen exercises his Call Option, to the extent the Fiducial Markers are
subsequently available for sale, Dr. Allen will ensure the Z-KAT’s customers have
access on terms and conditions reasonably similar to non-Z-KAT customers.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


21









 











9 — Patent Litigation





	 	9.1	 	If, at any time during which Z-KAT has exclusive rights under this Agreement
pursuant to Section 2 above, Z-KAT or Dr. Allen becomes aware of infringement of one or
more the Licensed Patents, Z-KAT or Dr. Allen, as the case may be, shall give to the
other party to this Agreement written Notice identifying the person, firm, corporation
or other entity thought to be infringing the Licensed Patent and the circumstances of
such infringement. Within one hundred twenty (120) days of receiving or giving the
Notice, Z-KAT may, at its own expense and in the manner and to the extent provided
below (i) take action to cause the cessation of such infringement or initiate legal
action against the alleged infringer; or (ii) undertake to negotiate a sublicense to
the Licensed Patent on terms agreeable to both Dr. Allen and Z-KAT.
	 
	 	 	 	In the event that Z-KAT receives a recovery from an infringer pursuant to clause (i)
above or receives royalties from a sublicense negotiated pursuant to clause (ii)
above, in excess of the costs and expenses of procuring such sublicense or recovery,
Z-KAT shall pay to Dr. Allen forty (40%) percent of any such recovery. In the event
Z-KAT files suit to enforce a Licensed Patent, Z-KAT may join Dr. Allen as a party
in such suit, if it pays for all related expenses, as a party in such suit. In the
event Dr. Allen files suit to enforce a Licensed Patent, Dr. Allen may join Z-KAT,
if he pays for all related expenses, as a party in such suit. In the event that
Z-KAT elects not take action against the identified infringer within the one hundred
twenty (120) day period from receiving/providing the Notice, Z-KAT shall timely
notify Dr. Allen. Dr. Allen and Z-KAT will consult with one another in an effort to
determine whether a reasonably prudent licensor would institute such action to
enforce the Licensed Patent(s) in question in light of all relevant legal, business,
and economic factors (including, but not limited to, the projected costs of such
litigation, the likelihood of success on the merits, the probable amount of any
damage award, the prospects for satisfaction of any judgment against the alleged
infringer, the possibility of counterclaims, the diversion of Dr. Allen’s and
Z-KAT’s human and economic resources, and the





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


22









 






	 	 	 	impact of any possible adverse outcome on Dr. Allen’s and Z-KAT’s respective
reputations and goodwill). After such consultation, if Z-KAT and Dr. Allen have not
reached agreement and Z-KAT does not file suit forthwith against the identified
infringer, then Dr. Allen shall have the right to enforce the Licensed Patents
against the infringer at his costs and expense, join Z-KAT as a co-plaintiff in such
suit and Dr. Allen shall pay to Z-KAT fifty (50%) percent of any such recovery in
excess of the costs and expense of procuring such recovery.
	 
	 	 	 	The parties recognize that each benefits from the continued sale by Z-KAT of
Registration Software and Licensed Fiducial Markers, therefore, the parties
recognize that Z-KAT shall have broad latitude, subject to good faith consultation
with Dr. Allen, to enter into cross-licenses without additional compensation as may
be necessary to allow the continued sale of Licensed Products and Licensed Processes
by Z-KAT.
	 
	 	9.2	 	In any suit or dispute involving an infringer, the parties shall cooperate
fully, and upon the request and at the expense of the party bringing suit, each party
shall make available to the other at reasonable times and under appropriate conditions
all relevant personnel, records, papers, information, samples, specimens and the like
which are in its possession. If the subject matter is confidential or proprietary in
nature, the party wishing to disclose such material must obtain a sufficient protective
order.





10 — Miscellaneous





	 	10.1	 	Dr. Allen and Z-KAT will attempt to settle any claim or controversy arising out
of this Agreement through consultation and negotiation in good faith and in a spirit of
mutual cooperation. The parties acknowledge that Sections 3.5, 5.5, 7.3, 7.4 and 9.2
in particular require consultation and cooperation among them. In the event that,
after consultation, the parties are unable to reach agreement, any claim or controversy
arising out of Sections 3.5, 5.5, 7.3, 7.4 and 9.2 shall be settled by arbitration
administered by the American Arbitration Association under its then-current Commercial
Arbitration Rules, and judgment on any award rendered





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


23









 






	 	 	 	by or finding of the arbitrator may be entered in any court having jurisdiction
thereof. The site of the arbitration will be Ft. Lauderdale or Miami, Florida.
	 
	 	10.2	 	Subject to certain provisions of Sections 5.1 and 5.7, the failure of Z-KAT or
Dr. Allen at any time or from time to time to exercise any of their respective rights
under this Agreement shall not be deemed to be a waiver of any such rights or in any
way to prevent Z-KAT or Dr. Allen from subsequently exercising any such rights.
	 
	 	10.3	 	All notices, elections, communications, and deliveries provided for in this
Agreement shall be given in writing and shall be effective when either served by
personal delivery, overnight delivery with signature or when actually received as shown
by United States postal service receipt for registered or certified mail addressed to
the party at their respective addresses or addresses as either party may later specify
by written notice to the other (“Notice”);





	 	 	 	 	 
	 

	 	Z-KAT:
	 	Z-KAT, Inc.
	 

	 	 	 	2901 Simms Street
	 

	 	 	 	Hollywood, Florida 33020
	 

	 	 	 	Attn: Paul K. Silverberg, Vice President and General Counsel
	 
	 	 	 	 
	 

	 	 	 	With a copy to: Rony Abovitz, CEO
	 
	 	 	 	 
	 

	 	Dr. Allen:
	 	George S. Allen, M.D., Ph.D.
	 

	 	 	 	4405 Warner Place
	 

	 	 	 	Nashville, TN 37205







	 	10.4	 	Neither party shall assign or transfer its rights or privileges under this
Agreement without the prior written consent of the other party; however, Z-KAT may
assign or transfer its rights and privileges in connection with the transfer of
substantially all of the assets of this product line or its Image Guided Surgery
business or to an Affiliate. Any attempted assignment in contravention of the
foregoing shall be void. This Agreement shall inure to the benefit of and be binding
on the heirs, legal representatives, executors, administrators, successors and
permitted assigns of the parties hereto.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


24









 






	 	10.5	 	During the term of this Agreement, as to any claims, litigation, arbitrations,
governmental investigations or audits of any sort related to the licenses granted
hereunder, the parties shall cooperate with and assist each other in making available
such records and other information, which are related to such claims, litigation,
arbitrations, government investigations and audits as either party may reasonably
request. The party requesting assistance hereunder shall reimburse the other party for
its reasonable out-of-pocket expenses incurred in connection with the request.
	 
	 	10.6	 	Each party acknowledges that it has retained and utilized its own legal counsel
in the negotiation and completion of this Agreement. Each party hereto shall pay its
own expenses incurred in the completion of this transaction.
	 
	 	10.7	 	This Agreement constitutes the entire understanding between the parties hereto
with respect to the subject matter hereto and supersedes all previous understandings,
agreements and representations between the parties. Any modification of this Agreement
shall be in writing and shall be signed by a duly authorized representative of each
party. There are no understandings, representations, or warranties except as herein
expressly set forth, and no rights are granted hereunder except as expressly set forth
herein.
	 
	 	10.8	 	This Agreement shall be interpreted and construed in accordance with the laws
of the State of Florida, United States of America, notwithstanding principles of
conflict of laws. Venue for any matters between the parties shall be in Broward County
Florida. Both parties agree to and waive any object to personal jurisdiction in the
State of Florida and this County.
	 
	 	10.9	 	The parties hereto agree that the terms of this Agreement shall remain
confidential, and that neither party shall disclose the terms hereof to any third party
without first securing the other party’s prior written consent except that either party
may disclose this Agreement to any of its affiliates and representatives as defined in
the Confidentiality Agreement executed between the Parties on October 20, 2000 attached
hereto as Exhibit 10.9, its auditors or attorneys or pursuant to obligations





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


25









 






	 	 	 	of law. In the event this document is described referenced, identified or subject
to any legal process requiring disclosure thereof, the party on whom such legal
process is served shall notify the other party hereto as soon as practicable of the
pendency of such legal proceedings.
	 
	 	10.10	 	Neither party shall be liable to the other for punitive, special or
consequential damages of any kind arising out of this Agreement or any related action
or for any cause of action whatsoever, whether based in contract or tort including
negligence.
	 
	 	10.11	 	If any part of this Agreement or the application thereof in the circumstances
is declared invalid or inoperative, the application thereof in other circumstances and
the remainder of this Agreement, shall not be effected thereby provided the basic
intent of the parties has not been thus rendered incapable of achievement. It is
agreed and understood between the parties that where any provisions of this Agreement
are in violation of any of the laws and/or regulations of the United States
government/or State of Florida, such provisions shall be automatically rendered null
and void and the parties agree to negotiate in good faith an acceptable substitute
where possible to such provisions.
	 
	 	10.12	 	Headings used in this Agreement are for reference purposes only and shall not
be deemed part of this Agreement. This Agreement may be executed in any number of
counterparts, each of which shall be deemed to be an original and all of which shall
constitute one in the same agreement.
	 
	 	10.13	 	This Agreement may be signed by the parties in counterparts which together
shall constitute one and the same agreement among the parties. Delivery of an executed
counterpart of a signature page to this Agreement by facsimile transmission shall be
effective as delivery of a manually executed counterpart of this Agreement.
	 
	 	10.14	 	Nothing in this Agreement shall be construed to create relationship of
partners or joint venturers or principal and agent, or employer and employee, or master
or





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


26









 






	 	 	 	servant, and neither party shall have the power to obligate or bind the other in any
manner whatsoever.
	 	 	 
	 	10.15	 	Neither Dr. Allen nor Z-KAT shall be responsible for and the terms of this
Agreement shall be inapplicable to any defaults or delays which are due to causes
beyond Dr. Allen’s or Z-KAT’s control including, without limitation, acts of God or
public enemy, acts or any order of a government, fire, flood or other natural
disasters, embargoes, accidents, explosions, strikes or other labor disturbances
(regardless of the reasonableness of the demands of labor), shortages of fuel, power or
raw materials, inability to obtain or delay of transportation facilities, incidents or
war, or other events causing the inability of Dr. Allen or Z-KAT acting in good faith
with due diligence, to perform its obligations under this Agreement.




IN WITNESS WHEREOF the undersigned parties represent that they have carefully read the foregoing
terms of this Agreement on behalf of their respective interests, and that they know the contents of
this Agreement, and that they have signed the same as their own respective free acts.




	 	 	 	 	 
	Z-KAT, INC.

	 	GEORGE S. ALLEN, M.D., Ph.D.
	 	 
	 
	 	 	 	 
	/s/ Rony Abovitz

	 	/s/ George S. Allen	 	 
	 

	 	 	 	 
	Rony Abovitz

	 	George S. Allen, M.D., Ph.D.	 	 
	CEO
	 	 	 	 
	 
	 	 	 	 
	Date:   8-31-2001

	 	Date:   9-10-2007	 	 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



27











 





Schedule 1.2



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this schedule.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




28









 








Schedule 1.10




Replace with existing spreadsheet



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this schedule.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




29









 








Schedule 1.13



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this schedule.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




30








 








Schedule 5.4



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this schedule.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.



31









 







Schedule 6.3



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this schedule.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.





32









 








Schedule 6.7



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this schedule.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




33









 








Exhibit A



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this exhibit.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




34









 








Exhibit 1.2



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this exhibit.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




35









 








Exhibit 3.10



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this exhibit.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




36









 








Exhibit 10.9



[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated December
28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(a) to such Asset Contribution
Agreement Addendum (i.e., the Agreement, between Z-KAT and George S. Allen) did not and
does not include this exhibit.] 



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




37









 








George S. Allen, M.D., Ph.D.                                                            




VIA FACSIMILE and U.S. MAIL




February 06, 2004




Maurice Ferré

President & CEO

Z-KAT Corporation

2001 Simms Street

Hollywood, Florida 33020





			
	Re:	 	Amendment Of 31 August License Agreement





Dear Maurice:



I am writing to confirm the details of an amendment to the agreement between George S. Allen, M.D.,
Ph.D. (“Allen”) and Z-KAT, Inc. (“Z-KAT”) dated 31 August, 2001 (“License Agreement”). The changes
are reflected for applicable sections and paragraphs, with text elimination and additions
represented by strike-thrus and underline respectively.



• Paragraph 1.10: Initial Royalty Period shall mean the period of time beginning on the Trigger
Date and continuing for the average term of the issued U.S. Patents listed in Schedule 1.13 and
U.S. patents issuing from U.S. Appl. Ser. No. [***] and U.S. Appl. Ser. No. [***], not including
any patent issuing from a continuation in part application. Pursuant to agreement between the
parties as of 01, January 2004, the Initial Royalty Period shall include and mean a period of one
year after the average term (“the Extended Average Term”) as such average term is determined by the
methods established by the provisions of the License Agreement between the parties dated 31, August
2001. An example of the calculation of the average term and the Extended Average Term is attached*
as Schedule 1.10. The Original Agreement determined........”



• Paragraph 1.18: Minimum Royalty shall mean the following for each year (12 consecutive month
period, not a calendar year) beginning on the Trigger Date: year 1 — $[***]; year 2 -$[***]; year
3 — $[***]; year 4 — $[***]; year 5 — $[***]; and year 6 to the end of the Initial Royalty Period
- $[***]; provided that, in the last year.......”.



If this letter accurately reflects your understanding of the amendments as set forth above, please
sign the two copies of this letter as included herein, retain one for your files, and return one
copy to the undersigned.




Best regards,




George S. Allen, M.D., Ph.D.

GSA/rd

Enclosures



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.



 









 







George S. Allen, M.D., Ph.D.




For George S. Allen




	 	 	 	 	 	 	 
	For George S. Allen, M.D., Ph.D.

	 	 
	 	For Z-KAT, Inc.:
	 	 
	 
	 	 	 	 	 	 
	/s/ George Allen

	 	 	 	/s/ Fritz LaPorte	 	 
	 

	 	 	 	 	 	 
	George S. Allen, M.D., Ph.D.

	 	 	 	Fritz LaPorte, CFO	 	 
	 
	 	 	 	 	 	 
	2/27/04

	 	 	 	2/24/07	 	 
	 

	 	 	 	 	 	 
	Date

	 	 	 	Date	 	 





* A revised Schedule 1.10 will be prepared and attached to this amendment at a later date.



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




 









 








FIRST AMENDMENT TO LICENSE AGREEMENT




     THIS FIRST AMENDMENT TO LICENSE AGREEMENT (this “Amendment”) is entered into as of the 18th
day of August, 2004 (the “Effective Date”), by and between Z-KAT, Inc., a Florida corporation
having an office at 2901 Simms Street, Hollywood, Florida 33020 (“Z-KAT”), and George S. Allen,
M.D., Ph.D., with an address at 4405 Warner Place, Nashville, Tennessee 37205 (“Dr. Allen”).



WITNESSETH:




     WHEREAS, Z-KAT and Dr. Allen entered into that certain License Agreement dated as of August
31, 2001, with respect to the grant of a license to certain patents owned by Dr. Allen to Z-KAT to
make, have made, use, sell, lease and otherwise dispose of any product covered by one or more
claims in the patents identified therein in consideration for royalties to be paid by Z-KAT to Dr.
Allen in accordance with the terms thereof (the “License Agreement”); and



     WHEREAS, the parties desire to reflect the assignment of the License Agreement from Dr. Allen
to Marker, LLC, a Tennessee limited liability company; and



     WHEREAS, Z-KAT and Dr. Allen desire to enter into this Amendment for the purpose of amending
the License Agreement and evidencing said assignment and assumption, all as more particularly
hereinafter set out; and



     WHEREAS, Marker, LLC is a party to this Amendment for the sole purpose of assuming the
obligations of Dr. Allen under the License Agreement.



     NOW, THEREFORE, in consideration of the covenants and agreements contained herein and other
good and valuable consideration, the receipt and sufficiency of which hereby are acknowledged, the
parties hereto, intending to be legally bound, agree as follows:



     1. Defined Terms. Capitalized terms used in this Amendment and not otherwise defined
in this Amendment have the meanings given to them in the License Agreement.



     2. Amendment of Licensing Agreement. Dr. Allen hereby conveys, grants, transfers and
assigns to Marker, LLC his entire right, title and interest in the License Agreement. Marker, LLC
accepts the foregoing assignment and hereby assumes, and agrees to perform, all the terms,
covenants and conditions to be performed on the part of Dr. Allen under the License Agreement to
the extent such obligations accrue from and after the Effective Date hereof. The reference to
“George S. Allen, M.D., Ph.D., an individual having offices at 4405 Warner Place, Nashville, TN
37205” in the first paragraph of the License Agreement shall be changed to “Marker, LLC, a
Tennessee limited liability company” and all references to “Dr. Allen” under the terms of the
License Agreement shall be changed to “Marker, LLC”.



     3. Acknowledgement of Assignment by Z-KAT. Z-KAT hereby acknowledges, consents and
agrees to the assignment of the License Agreement by Dr. Allen to Marker, LLC. Z-KAT acknowledges
(a) Marker, LLC as a party to the License Agreement and as the licensor of the Licensed Patents;
and (b) Marker, LLC’s right, title and interest in and to the Licensed Patents. Pursuant to the
terms of the License Agreement, Marker, LLC shall be entitled to


[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.




 









 







receive, and Z-KAT shall pay to Marker, LLC, the Minimum Royalty and royalties based on
Z-KAT’s Net Sales in accordance with the terms thereof.




     4. License Agreement in Full Force and Effect. Except as amended by this Amendment,
the License Agreement, as originally executed by Z-KAT and Dr. Allen, shall continue in full force
and effect and is hereby ratified and confirmed.



     5. Governing Law. This Amendment shall be governed by and construed and enforced in
accordance with the laws of the State of Tennessee, without regard to the choice of law provisions
thereof.



     6. Counterparts. This Amendment may be executed in any number of counterparts, all of
which together shall constitute one and the same instrument.



     7. Entire Agreement; Modification. This Amendment is hereby incorporated into the
License Agreement by reference. This Amendment together with License Agreement contains the
complete expression of the agreement between the parties with respect to the matters addressed
herein and there are no promises, representations, or inducements except as herein provided. The
terms and provisions of this Amendment may not be modified, supplemented, or amended except in
writing signed by all parties hereto. All teams of this Amendment shall be binding upon and inure
to the benefit of and be enforceable by the respective successors and permitted assigns of the
parties hereto.



[Signature Page Follows.]



[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.



 









 







     IN WITNESS WHEREOF, the parties hereto have caused this Amendment to be executed by their duly
authorized representatives as of the Effective Date first above written.



	 	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	Z-KAT, INC.	 	 	 	GEORGE S. ALLEN, M.D., Ph.D.	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	By:	 	/s/ Maurice R. Ferre	 	 	 	 	 	By:	 	/s/ G.S. Allen	 	 
	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	(Authorized Signature)
	 	 	 	 	 	 	 	(Authorized Signature)	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	Maurice R. Ferre’	 	 	 	G.S. Allen	 	 
	 	 	 	 	 	 	 
	 

	 	 	 	Printed Name
	 	 	 	 	 	 	 	Printed Name	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	President & CEO	 	 	 	8/09/04	 	 
	 	 	 	 	 	 	 
	 

	 	 	 	Title
	 	 	 	 	 	 	 	Date	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	Aug. 18, 2004	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	Date	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	 	 	 	 	MARKER, LLC	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	By:
	 	 	 	/s/ G. S. Allen	 	 
	 	 	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 	 	(Authorized Signature)	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 	 	G. S. Allen	 	 
	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 	 	Printed Name	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 	 	President	 	 
	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 	 	Title	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 	 	8/09/04	 	 
	 	 	 	 	 	 	 	 	 	 	 
	 

	 	 	 	 	 	 	 	 	 	 	 	Date	 	 





[***] Confidential treatment has been requested for
portions of this exhibit. The copy filed herewith
omits the information subject to the confidentiality
request. Omissions are designated as [***]. A
complete version of this exhibit has been filed
separately with the Securities and Exchange
Commission.





 











 






Exhibit 1.1(b)(A)



MANUFACTURING AND TECHNOLOGY SUBLICENSE AGREEMENT




     This Manufacturing and Technology Sublicense Agreement (the “Agreement”), is made and entered
into as of the last date of execution appearing on the signature page hereto (the “Effective
Date”), by and between Z-Kat, Inc. (Z-Kat, Inc., together with its Affiliates, being hereafter
referred to as “Z-Kat”), a Florida corporation, having an office at, 2901 Simms Street, Hollywood
FL 33020, and Image-Guided Neurologics, Inc., a Delaware corporation, having its principal place of
business at 2290 W. Eau Gallie Blvd., Melbourne, FL 32935 (Image-Guided Neurologics, Inc., together
with its Affiliates, being hereafter referred to as “IGN”). Z-Kat and IGN are sometimes referred
to herein individually as a “Party” and collectively as the “Parties.”



Recitals




     A. The Parties were parties to that certain Distribution Agreement, made and entered into
April 27, 2004 (the “Distribution Agreement”);



     B. The Parties have agreed to terminate the Distribution Agreement; and



     C. Z-Kat has agreed to grant to IGN a limited, non-exclusive sublicense under that certain
License Agreement granted to Z-Kat by George S. Allen, M.D., Ph.D. (“Allen”) and assigned to
Marker, LLC, a Tennessee limited liability company (“Marker”), as successor in interest to Allen.



     NOW, THEREFORE, in consideration of the foregoing and the mutual covenants and undertakings
set forth herein, and other valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the Parties agree as follows:



ARTICLE I.

Definitions




     1.1 “Activation Date” means the earlier of (a) the date of the first documented sale of a
Licensed Product that was manufactured by or for IGN and transferred by IGN to a third party; and
(b) January 1, 2005.



     1.2 An “Affiliate” of a party means an entity directly or indirectly controlling, controlled
by or under common control with that party, where control means the ownership or control, directly
or indirectly, of more than fifty percent of all of the voting power of the shares (or other
securities or rights) entitled to vote for the election of directors or other governing authority,
as of the date of this Agreement or hereafter during the Effective Period of this Agreement.
However, the entity will be considered an Affiliate only for the time during which such control
exists.



     1.3 “Bone Fiducial” means bone-implantable, fiducial markers and accessories for implanting
and removing such markers and probes to be used solely for registering the markers. Any item that
is not expressly included in this definition is excluded. For the avoidance of any doubt, Bone
Fiducials specifically excludes computer-based surgical navigation system.



     1.4 “Effective Date” has the meaning given in the preamble.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 1









 





     1.5 “Field” means cranial neurosurgical procedures, excluding however external beam
radiotherapy.



     1.6 “Kit” means a surgical kit that includes Licensed Products and an IGN Product that is
sold, leased or otherwise distributed or transferred as a single unit, and a surgical kit that
contains only Licensed Products to be sold, leased or otherwise distributed for use with an IGN
Product.



     1.7 “IGN Products” mean any trajectory guidance products and components, tools and procedures
for use in performing patient registration that require the use of an external intra-operative
position tracking system to align the physical trajectory guide with an intra-operative or
pre-operative surgical plan.



     1.8 “License Agreement” means that certain License Agreement by and between Z-Kat and Allen,
effective as of August 31, 2001, as amended, a copy of which is attached hereto as Exhibit
A, which Allen has validly assigned to Marker, LLC.



     1.9 “Licensed Product” means Bone Fiducials, the manufacture, use or sale of which would
infringe one or more of the claims of the Sublicensed IP Rights.



     1.10 “Licensor” refers to Marker, LLC.



     1.11 “Sublicensed IP Rights” means the “Licensed Patents” as defined in Section 1.13 of the
License Agreement, specifically including those patents set forth on Exhibit B, together
with (a) any inventions owned or under development by Z-Kat, or which Z-Kat has the right to
license or sublicense, on the Effective Date of this Agreement that relate to Bone Fiducials, and
(b) any additional patents and patent rights relating to Bone Fiducials that are in existence as of
the Effective Date of this Agreement to which Z-Kat acquires ownership after the Effective Date
(including any divisionals, continuations, continuations-in-part, or reissues thereof), but, with
respect to this clause (b), only to the extent Z-Kat has the right to license such patents within
the Field for Bone Fiducials, and only to the extent Z-Kat is not required by a third Party to pay
or collect any amounts in consideration for licensing to IGN the patents or patent right that is
not assumed and performed by IGN.



ARTICLE II.

Grants of License




     2.1 Grant of License to IGN. Subject to all of the terms and conditions of this Agreement,
Z-Kat grants to IGN a non-transferable (except as expressly permitted under Section 10.1),
non-exclusive, royalty-bearing, worldwide sublicense under the Sublicensed IP Rights within, and
limited to, the Field to make Licensed Products, to lease, sell, offer to sell, and import the
Licensed Products sold as part of Kits for use in solely in combination with IGN Products in the
Field, and to use, and to sublicense its customers to use, such Licensed Products, when sold as
part of Kits and for which a Running Royalty will be paid, in combination with the IGN Products
solely as part of a registration process carried out in combination with a computer-based
navigation system in the Field (the “Sublicense”).



     2.2 Sublicensing. The sublicense granted to IGN under Section 2.1 does not include



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 2









 







any right to IGN to grant further sublicenses, except that IGN may grant limited,
non-transferable sublicenses, which must terminate upon sale of all Licensed Product previously
manufactured at the date of termination of the grant of sublicense to IGN, under the Sublicensed IP
Rights (i) to its vendors for the sole and limited purposes of having components made, and/or
Licensed Products assembled on behalf of IGN, to IGN’s original specifications; and (ii) to its
sales representatives, distributors and other sales agents to market and sell Licensed Products
solely for use in combination with IGN Products.



     2.3 Limitations on Grant.




     (a) The grant of sublicense does not include any right or license to make, use, sell or
offer for sale Licensed Products for use outside the Field or for use with any trajectory
guide other than IGN Products. Furthermore, for the avoidance of any doubt, the sublicense
granted to IGN in this Agreement does not include, and no rights may be conveyed to any
party, with respect to making, selling, or offering for sale, any apparatus, article or
process, including computer based navigation systems, other than the Licensed Products as
expressly permitted by Section 2.1, or the use of any apparatus, article or process other
than the use of Licensed Products in combination with IGN Products and computer-based
surgical navigation systems, as part of a registration process as expressly permitted under
Section 2.1.




     (b) Z-Kat acknowledges that the Kits, including the IGN Products and Licensed Product
that comprise the Kits, are designed for use with computer-based navigation systems for
surgery manufactured, sold and distributed by third parties. Accordingly, Z-Kat and
Licensor covenant and agree that neither will bring any administrative action, or any action
at law, in equity, or otherwise, against IGN or any third party based on a claim of
infringement, contributory infringement or inducement of infringement of any of the
Sublicensed IP Rights solely as a result of (i) the marketing of a computer based navigation
system for use, as expressly permitted by this Agreement, with Licensed Products, (ii) the
marketing of Licensed Products for use, as expressly permitted by this Agreement, with
computer based navigation systems, or (iii) the bona fide use of a Licensed Product solely
within and as a part of a registration process carried out by a computer-based navigation
system, but, with respect to items (i)-(iii), only if the Licensed Product is sold or
distributed by IGN under the license granted pursuant to Section 2.1 as part of a Kit and
implanted for use with IGN Products. Furthermore, Z-Kat and Licensor covenant and agree
that neither will bring any administrative action, or any action at law, in equity, or
otherwise, against IGN or any third party based on a claim of infringement, contributory
infringement or inducement of infringement of any of the Sublicensed IP Rights solely as a
result of the sale of a computer based navigation system that has been bundled with a
Licensed Product sold or distributed by IGN under the license granted pursuant to Section
2.1 as part of a Kit, for use in registration of IGN Products. However, none of foregoing
covenants extend to any sales or use of computer based navigation systems (whether or not
bundled) to the extent that those systems are sold or used for any purpose other than for
registering IGN Products using Licensed Products sold or distributed by IGN, or to use of a
computer-based navigation system other than as expressly stated above.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 3









 






     (c) Notwithstanding anything to the contrary in this Agreement, except as provided in
Section 9.4(a), the grant of sublicense to IGN does not include rights beyond those licensed
to Z-Kat, or include rights, the granting of which by Z-Kat would breach the License
Agreement. Z-Kat’s foregoing grant of a sublicense to IGN under this Article II is subject
to all of the limitations of the License Agreement.



     2.4 No Other Licenses; No Assignments. Other than the license expressly set forth above,
Z-Kat is not granting any other license or sublicense, whether by implication, estoppel or
otherwise. Except as otherwise expressly stated, nothing in this Agreement is intended to transfer
title to or other ownership interest in any intellectual property right. The foregoing grant of
sublicense does not constitute a non-infringement representation, warranty or covenant.



ARTICLE III.

Publicity and Confidentiality




     3.1 Confidentiality of Agreement. The terms, but not the existence, of this Agreement and the
licenses granted herein will be treated as confidential information by the Parties, and neither
Party may disclose such terms to any third party without the prior written consent of the other
Party, except as follows:




     (a) Each Party may represent to third parties that IGN is sublicensed as provided by
this Agreement.




     (b) Each Party may (i) disclose this Agreement and its terms to potential acquirers of,
investors in or lenders to such Party (including any representatives of the Parties in such
transaction), or disclosures reasonably necessary in connection with the divestiture,
merger, transfer or sale of all or any portion of a Party’s respective businesses, but only
if such disclosure is made pursuant to a written confidentiality agreement binding upon such
potential acquirer, investor, lender or other parties, which obligates such party not to
disclose and to take reasonable precautions against unauthorized disclosure of the Agreement
and its terms; (ii) disclose this Agreement and its terms in any arbitration, mediation or
other official dispute resolution procedure pursuant to a written confidentiality agreement
binding upon the parties, which obligates such parties not to disclose and to take
reasonable precautions against unauthorized disclosure of the Agreement and its terms; (iii)
disclose this Agreement and its terms to its professional advisors who are under an ethical
obligation of confidentiality in order to comply with, or determine compliance with, any
law, rule, regulation, or accounting or similar requirement; and (iv) disclose this
Agreement and its terms, in response to a judicial or governmental request, requirement or
order, or as required by law, on the condition that such Party provides the other Party with
sufficient prior notice in order to contest such request, requirement or order or seek
protective measures. In addition, this Section 3.1 will not prevent a Party from making
disclosures reasonably required by law or as required by a stock exchange.



     3.2 Publicity and Trademarks. Nothing in this Agreement will be construed as conferring upon
either Party or its Affiliates any right to include in advertising, packaging or other commercial
activities related to a Licensed Product, any reference to the other Party (or any



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 4









 







of its Affiliates), its trade names, trademarks or service marks in a manner which would be
likely to cause confusion or to indicate that such Licensed Product is in any way certified by the
other Party hereto or its Affiliates.



     3.3 Obligations of Confidentiality with Respect to Technical Information.




     (a) IGN will hold all technical information (“Technical Information”) provided by Z-Kat
to IGN pursuant to this Agreement in confidence and take reasonable precautions to maintain
and protect the confidentiality of the Technical Information. IGN may disclose and share
the Technical Information to employees, contractors, representatives, and others who have a
need to know it, so long as each such person is obligated in writing not to disclose the
information to others and to use it only for the purposes for which access is being given.
Parties other than employees having access to the Technical Information must be licensed to
use the Technical Information, and may only use it solely in connection with the license
granted in Section 2.1.




     (b) Exceptions. Notwithstanding the forgoing obligations of confidentiality,




     (i) IGN may make available to third parties Bone Fiducials, but only as
permitted by the license of Section 2.1, and related user documentation
incorporating or made using the Technical Information, but only as much as required
by law.




     (ii) IGN may disclose Technical Information as required by law, but only to the
extent required by law, and in response to a valid order of a court or other
government body or any political subdivision thereof, but only if IGN has taken
reasonable action to seek a protective order limiting the scope of the disclosure
and has promptly notified Z-Kat and Licensor of the requirement to disclose the
Technical Information.




     (iii) No Technical Information is required to be treated as confidential if
such information, (i) is or becomes publicly known through no unauthorized act of
IGN or its Affiliates, (ii) is rightfully received by IGN from a third parry without
obligation of confidentiality, or (iii) is approved in writing by Z-Kat and Licensor
for public disclosure.



ARTICLE IV.

Payments




     4.1 Running Royalties. For activities undertaken by, on behalf of, or under the authority of
IGN (and its sublicensees, if any) IGN will pay continuing payments to Z-Kat (or its assignee, if
any) throughout the Effective Period of the Agreement equal to $[***] for each Kit sold, leased or
otherwise distributed or transferred to a third party by IGN (the “Running Royalties”). However,
IGN may distribute a maximum of 250 Kits in the aggregate solely for non-clinical, training
purposes, so long as the Kits are labeled for non-clinical, training use only and are specifically
identified as Kits used for training, including the names of the parties who are trained, in
reports submitted pursuant to Section 4.4. If additional Kits are required for training, IGN may
request Z-Kat for permission to distribute additional Kits without obligation



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 5









 







to pay a Running Royalty, which request will not be unreasonably withheld. For the avoidance
of doubt, no Running Royalty is due on Licensed Products purchased from Z-Kat or purchased from a
third party licensed by Z-Kat (including fiducials purchased by IGN from Streiker-Leibinger prior
to March 31, 2004.)



     4.2 Minimum Royalties. Notwithstanding IGN’s obligations under Section 4.1 hereto, for the
period commencing as of the Activation Date and ending on the fifth (5th) anniversary of
the Activation Date, within 60 days of each Minimum Royalty Payment Date (as defined below), IGN
will pay Z-Kat an annual minimum royalty payment (each a “Minimum Royalty Payment”), which shall be
equal to the difference between (a) the Guaranteed Minimum Royalty Amount for such date (as set
forth in Exhibit C hereto); and (b) the sum of all Running Royalties paid to Z-Kat that accrued
during the prior twelve month period (each a “Minimum Royalty Period”), provided however, that
there shall be no Minimum Royalty Payment due on any Minimum Royalty Payment Date for which the
Running Royalties paid during such applicable Minimum Royalty Period shall exceed the respective
Guaranteed Minimum Royalty Amount and provided further that any such excess of the Running
Royalties over the Guaranteed Minimum Royalty Amount shall be carried forward and shall be
considered, solely for purposes of clause (b) above, Running Royalties for the next successive
twelve month period. For the purposes of this Article IV, a “Minimum Royalty Payment Date” shall
mean each of the five (5) consecutive anniversary dates following the Activation Date.



     4.3 Due Dates.




     (a) Running Royalties. Running Royalties on a Kit will accrue immediately upon the
transfer or distribution (whether by sale, lease or otherwise) of the Kit by IGN to a third
parry and will be due and payable by IGN to Z-Kat or its designee 30 days after the end of
the month in which the transfer occurred. Z-Kat acknowledges that IGN may pay Running
Royalties on Kits that IGN does not believe include Licensed Products in order to avoid
disputes with Z-Kat, and that, therefore, no payment of a Running Royalty with respect to a
Kit shall in any way imply that IGN believes that the Kit contains Licensed Product.




     (b) Minimum Royalties. IGN will pay to Z-Kat or its designee within 30 days of each
Minimum Royalty Payment Date the Minimum Royalty Payment for the immediately preceding
Minimum Royalty Period.



     4.4 Records and Audit. IGN (including related companies and sublicensees, if any) will keep
full, clear and accurate records with respect to all Licensed Products necessary for determining
the amounts due to Z-Kat under this Agreement, and will furnish any information which Z-Kat may
reasonably prescribe from time to time to enable Z-Kat to ascertain the amounts due, including
without limitation reports with the payment of Running Royalties detailing the number of Kits
distributed and the amount of Running Royalty due for each such Kit. Z-Kat and Licensor may each
make, only through accredited auditors, one examination per calendar year, following advance notice
and during normal business hours, of all records and accounts bearing upon the amount of royalty
payable to it hereunder. The auditors may disclose only the amounts due and may not disclose any
records or other information of IGN and their customers. Payments must be made within 30 days to
compensate for any errors or



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 6









 







omissions disclosed by such examination. If such audit discloses under-reporting of 5 percent
or greater with respect to the reported sums paid to Z-Kat by IGN during the applicable period
subject to such audit, IGN will fully reimburse Z-Kat within 30 days after demand, for the
reasonable fees and disbursements for completing such audit. Otherwise, Z-Kat will be responsible
for payment of the actual costs (including professional fees and disbursements) for each such
audit.



     4.5 Termination for Non-Payment. Subject to Section 9.3, failure by IGN to make timely
payment of any amounts due and owing pursuant to this Article IV constitute a material breach of
this Agreement and shall, after written notice by Z-Kat and failure by IGN to cure such breach
within 60 days of service of such notice, render the Agreement (and any license granted hereunder)
terminable by Z-Kat in its sole discretion, immediately upon written notice to IGN.



ARTICLE V.

Other Obligations of the Parties




     5.1 Marking. IGN will place a patent notice in accordance with 35 U.S.C. §287 on any Licensed
Products, or on the packaging of any Licensed Products, made by or on behalf of IGN. IGN will also
require that each such Licensed Product, or the packaging of any Licensed Product, made under its
authority (other than a Licensed Product made by, on behalf of, or under authority of Z-Kat) also
be marked with a notice in accordance with 35 U.S.C. §287. IGN will also provide appropriate
labeling on the Licensed Product as required by the Food and Drug Administration under 21 C.F.R.
Part 801.



     5.2 Marketing. IGN will market Licensed Products only for use with IGN Products. IGN will
also place labels on Kits sold, leased or otherwise distributed by or on behalf of IGN containing a
statement to the effect that the Licensed Products are intended to be, and may only be, used with
an IGN product.



     5.3 Sublicensee Obligations under License Agreement. Notwithstanding anything to the contrary
in this Agreement, IGN will, with respect to its sublicense under the License Agreement, assume
each obligation that a sublicensee must have under the License Agreement in order to avoid breach
of the License Agreement and covenants that it will comply with all terms and conditions of such
License Agreement that apply to sublicensees.



     5.4 Covenants of Z-Kat.




     (a) Z-Kat shall not market for its own account, or license any third parry to market,
any Bone Fiducials for use with any IGN Products. Z-Kat will include a label on packaging
for Licensed Products a statement to the effect that the Licensed Products are not for use
with IGN Products.




     (b) If Z-Kat licenses any unrelated third party to make and distribute Bone Fiducials
under the Sublicensed IP Rights for use with navigation systems in the Field, and for the
specific purpose of use with a physical trajectory guide, that require a payment of royalty
per unit or per surgical procedure that is materially less than the Running Royalties
required in this Agreement, Z-Kat will offer to amend this Agreement with IGN by reducing
Running Royalties under this Agreement to an equivalent royalty



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 7









 







per unit or procedure. An “unrelated third party” includes any person or entity other
than a person or entity (i) in which Z-Kat has a direct or indirect financial interest, (ii)
which has a direct or indirect financial inserts in Z-Kat, or (iii) in which a third party
having a direct or indirect financial interest in Z-Kat also has a direct or indirect
financial interest. For purposes of any license to an unrelated third party under the
Sublicensed IP Rights, for which consideration is promised that does not consist solely of
cash, the Parties agree to value such non-cash consideration in good faith, based on the
entirety of transactions giving rise to the license arrangement with such third party. In
the event the Parties are unable to agree on the appropriate reduction, in any, the
reduction, if any, shall be determined by arbitration as set forth in Section 10.10 of this
Agreement using the standards set forth in this section 5.4.



     5.5 Access and Information. Subject to Article III, during the Effective Period of this
Agreement and at no cost to Z-Kat, Z-Kat agrees to provide IGN access to information relating
solely to Bone Fiducials developed by or under development by or at the direction of Z-Kat as of
the Effective Date, which are covered by or make use of a process covered by the Licensed IP
Rights, including relevant 510(K)s, technical files, know how, test data, product specifications,
drawings, design history files, validations, clinical data, and risk analysis associated with
current or prior Bone Fiducial products designed or manufactured by Z-Kat. However, for the
avoidance of any doubt, Z-Kat has no obligation to provide any information on or relating to
devices other than Bone Fiducials, and in particular including, without limitation, information
relating to software, computer-based surgical systems, and accessories for such systems.



ARTICLE VI.

Representations and Warranties




     6.1 Z-Kat Representations. Z-Kat represents and warrants the following:




     (a) The execution, delivery and performance by Z-Kat of this Agreement do not breach
any term or provision of or constitute a default under any material indenture, mortgage,
deed of trust, contract, agreement, lease or other commitment or instrument to which Z-Kat
is a party or by which Z-Kat or its assets or properties are bound, do not conflict with any
provision of the articles of incorporation or bylaws of Z-Kat and do not constitute an event
which, with the lapse of time or action by a third parry, could result in any default under
any of the foregoing.




     (b) Z-Kat has full power, authority and legal right to enter into this Agreement and
grant the sublicenses and rights set forth in this Agreement and has not made, and will not
make, any commitments to others inconsistent with or in derogation of such rights. Upon
execution and delivery by Z-Kat of this Agreement it will be a valid and binding obligation
of Z-Kat, enforceable in accordance with its terms, except as enforcement may be limited by
bankruptcy, insolvency, reorganization or similar laws effecting the rights of creditors
generally. Notwithstanding the foregoing, no representation or warranty is made regarding
the availability of equitable remedies.




     (c) To the actual knowledge of Z-Kat, the manufacture, sale and use of



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 8









 







bone-implantable fiducial markers distributed by Z-Kat under the mark “Acustar” as of
the Effective Date, and the bone-implantable fiducial markers designed by Stryker-Leibinger
and distributed by Z-Kat as of the Effective Date (the “Leibinger Fiducials”), do not
infringe the patents or copyrights of, or misappropriate information of, a parry other than
Z-Kat or Licensor. To the actual knowledge of Z-Kat, without investigation, Z-Kat is not
required, and IGN would not be required, to obtain any license, other than the license
granted herein, from any parry to distribute the Leibinger Fiducials.




     (d) To the actual knowledge of Z-Kat there are, as of the Effective Date, no
outstanding claims of Marker, LLC that could affect its license in and to the Sublicensed IP
Rights.




     (e) The Sublicensed IP Rights are the only inventions, patents or patent applications
now owned and/or controlled by Z-Kat, which IGN would infringe through the manufacture, use
and sale of Bone Fiducials.




     (f) Z-Kat is not in possession of any information which would, to the knowledge of
Z-Kat, render any claim of the Sublicensed IP Rights invalid and/or unenforceable.




     (g)
Except for those parties listed on the attached Schedule 6.1(g), Z-Kat has no
knowledge of facts sufficient for it to have a good faith belief, formed after
investigation, that there are any third parties infringing, as of the date of this
Agreement, any of the Sublicensed IP Rights by selling Bone Fiducials in the Field. The
listing of parties in Schedule 6.1(g) is not, however, a representation that each is in fact
infringing, or that Z-Kat has a good faith belief that each such party is infringing.




Notwithstanding any of the foregoing in this Section 6.1, the failure by Z-Kat to conduct an
investigation will not be deemed to be a breach of any warranty or representation under this
Section 6.1.



     6.2 IGN Representations and Warranties. IGN represents and warrants the following:




     (a) The execution, delivery and performance by IGN of this Agreement do not breach any
term or provision of or constitute a default under any material indenture, mortgage, deed of
trust, contract, agreement, lease or other commitment or instrument to which IGN is a parry
or by which IGN or its assets or properties are bound, do not conflict with any provision of
the articles of incorporation or bylaws of IGN and do not constitute an event which, with
the lapse of time or action by a third party, could result in any default under any of the
foregoing.




     (b) IGN has full power, authority and legal right to enter into this Agreement. Upon
execution and delivery by IGN of this Agreement it will be a valid and binding obligation of
IGN, enforceable in accordance with its terms, except as enforcement may be limited by
bankruptcy, insolvency, reorganization or similar laws effecting the rights of creditors
generally. Notwithstanding the foregoing, no representation or warranty is made regarding
the availability of equitable remedies.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 9









 





     6.3 Disclaimer.




     (a) Other than the representations, warranties and covenants expressly made in this
Agreement, neither Party, nor any of its Affiliates, nor Licensor, make any representations
or extend any warranties of any kind, express or implied. Z-Kat, Licensor and IGN each
disclaim all implied warranties, including without limitation warranties of merchantability,
fitness for a particular purpose, and non-infringement.




     (b) Without limiting the foregoing disclaimer, nothing contained in this Agreement
shall be construed as:




     (i) a warranty or representation by Z-Kat or Licensor as to the scope of any of
the Sublicensed IP Rights or, except as specifically stated in Section 6.1(c)
solely, as to the validity of the Sublicensed IP Rights;




     (ii) a warranty or representation that any manufacture, offer for sale, sale,
use, lease, importation, or other disposal of any Licensed Product in combination
with any inventions, processes or practices added by IGN will be free from
infringement of any patent or other industrial or intellectual property rights of
any third parry;




     (iii) requiring Z-Kat or Licensor to file or maintain any patent application,
or to secure or maintain in force any patent; or




     (iv) except as set forth in Section 5.5, requiring either Party to furnish any
manufacturing or technical information or assistance to the other Party; conferring
on either Party any right to use, in advertising, publicity or otherwise, any name,
trade name or trademark of the other Party, or any contraction, abbreviation or
simulation thereof.




     (c) EXCEPT IN CONNECTION WITH INDEMNIFICATION FOR THIRD PARTY CLAIMS OF PERSONAL INJURY
PURSUANT TO ARTICLE VIII, BREACH OF SECTIONS 2.1 AND 2.2, OR AS EXPRESSLY PROVIDED OTHERWISE
IN THIS AGREEMENT, IN NO EVENT WILL IGN OR Z-KAT BE LIABLE FOR ANY FOR ANY INDIRECT,
SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND WITH RESPECT TO ANY SUBJECT MATTER
OF THIS AGREEMENT UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER LEGAL OR
EQUITABLE THEORY.




     (d) IN NO EVENT WILL Z-KAT OR LICENSOR BE LIABLE FOR DAMAGES OF ANY TYPE (COMPENSATORY,
INDIRECT, SPECIAL, PUNITIVE OR OTHERWISE), COSTS, CLAIMS OR OTHER AMOUNTS ARISING FROM
CLAIMS OF PERSONAL INJURY ARISING OUT OF OR RELATED IN ANY WAY TO THE MANUFACTURE, SALE,
DISTRIBUTION, ADVERTISEMENT, MARKETING, USE OR EXISTENCE OF LICENSED PRODUCTS DESIGNED,
MADE, DISTRIBUTED, OR MARKETED BY IGN, ITS AGENTS AND LICENSEES AND THEIR RESPECTIVE
SUCCESSORS, ASSIGNS AND HEIRS.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 10









 






     (e) IN NO EVENT WILL LICENSOR OR ALLEN BE LIABLE FOR ANY INDIRECT, SPECIAL, INCIDENTAL,
CONSEQUENTIAL OR PUNITIVE DAMAGES OF ANY KIND WITH RESPECT TO, ARISING OUT OF, OR RELATED TO
THIS AGREEMENT.



ARTICLE VII.

Enforcement of Sublicensed IP Rights




     7.1 Prosecution and Maintenance. Consistent with Section 5.1 of the License Agreement, Z-Kat
and Licensor reserve the right to: (1) file, prosecute and maintain the Sublicensed IP Rights,
including, without limitation, the payment of any applicable maintenance fees; and (2) prosecute
and amend any patent applications included in the Sublicense IP Rights in the normal course during
prosecution thereof before the appropriate patent granting authority in each applicable country.
In the event that neither Z-Kat nor Licensor elect to maintain or prosecute a material US patent or
patent application included in the Sublicensed IP Rights, the Parties agree to negotiate in good
faith a downward adjustment of the Minimum Running Royalties, with the amount of the adjustment
being based on the scope of protection of the abandoned patent or patent application patent,
relative to the Licensed Products, compared to the scope of protections remaining patents included
in the Sublicensed IP Rights for the Licensed Products. A material US patent or patent application
is one that IGN would be, but for the sublicenses granted in this Agreement, infringing by the
manufacture, use or sale of Licensed Products. In the event the Parties are unable to agree on the
appropriate adjustment, the adjustment shall be determined by arbitration as set forth in Section
10.10 of this Agreement, using the standards set forth in this Section 7.1.



     7.2 Enforcement. Z-Kat and Licensor shall have the exclusive right, at their cost and
expense, to enforce the Sublicensed IP Rights. All proceeds obtained due to such enforcement by
Z-Kat and Licensor shall belong to Z-Kat and/or Licensor, with IGN assigning to Z-Kat any rights it
might otherwise have to damages. IGN must promptly notify Z-Kat in writing of any alleged or
suspected third party infringement, misappropriation or violation of the Sublicensed IP Rights.
Neither Z-Kat nor Licensor shall have an obligation to file suit enforce the Sublicensed IP Rights
against such third party infringers.



     7.3 Relief from Minimum Royalty Payments. If Z-Kat or Licensor fails to take legal action
against any continuing, unlicensed infringement within the United States of one or more material,
US patents included within the Sublicensed IP Rights within 180 days after receiving written notice
from IGN of the infringement, and if the infringement causes a material reduction sales of IGN
Products, then (i) IGN will be relieved from any obligation to pay Minimum Royalty Payments under
Section 4.2 unless and until the infringement is stopped, and (ii) the Parties agree to negotiate
in good faith an equitable downward adjustment in the Running Royalties until the infringement
ceases or the infringing parry is licensed. Material US patents are those patents that IGN would
be, but for the sublicenses granted in this Agreement, infringing through the manufacture, use or
sale of Licensed Products. The amount of the adjustment will be based on the relative value of the
infringed patent to all the patents included in the Sublicensed IP Rights with respect to the
Licensed Products and the harm to IGN directly attributable to the infringement. In the event the
Parties are unable to agree on the appropriate adjustment, the adjustment shall be determined by
arbitration as set forth in Section 10.10 of this



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 11









 







Agreement using the standards set forth in this section 7.3. However, notwithstanding the
forgoing, Z-Kat has no obligation under this Section 7.3 unless the notice given by IGN specifies
the third party infringer and the infringing products, and provides evidence sufficient to satisfy
the requirements to investigate and to possess a good faith belief under the Federal Rules of Civil
Procedure prior to bringing suit.



     7.4 Partial Invalidity. In the event that some, but not all, of the material patents included
in the Sublicensed IP Rights are finally adjudged to be invalid by a court of competent
jurisdiction, without any further right to appeal, that, in the reasonable good faith belief of IGN
reduces, but does not eliminate, the value of the Sublicensed IP Rights, then the Parties agree to
negotiate in good faith downward adjustment of the Minimum Running Royalties based on the scope of
coverage of the remaining patents and patent applications relative to the Licensed Products, and
the contribution to the total value of the Sublicensed IP Rights of the subject matter claimed in
the abandoned patents, relative to the Licensed Products. A material US patent or patent
application is one that IGN would be, but for the sublicenses granted in this Agreement, infringing
by the manufacture, use or sale of Licensed Products. In the event the Parties are unable to agree
on the appropriate adjustment, the adjustment shall be determined by arbitration as set forth in
Section 10.10 of this Agreement, using the standards set forth in this Section 7.4. In the event
of a reduction in the Running Royalties, there shall be a proportionate reduction in the Minimum
Royalty Payments in Section 4.2.



ARTICLE VIII.

Indemnification




     8.1 Indemnification.




     (a) Subject to the provisions of this Article VIII, including, without limitation,
Section 8.2, Z-Kat agrees to indemnify in respect of, and hold IGN and its officers,
directors, employees and agents harmless against, any and all damages, claims, deficiencies,
losses, including taxes, and all expenses (including interest, penalties, and attorneys’ and
accountants’ fees and disbursements but reduced by any tax savings, benefits or offsets to
which any party shall be entitled directly or indirectly by reason thereof) (collectively
“Damages”) resulting from any misrepresentation, breach of warranty, or failure to perform
any covenant or agreement on the part of Z-Kat under this Agreement.




     (b) Subject to the provisions of this Article VIII, including, without limitation,
Section 8.2, IGN agrees to indemnify in respect of, and hold Allen, Z-Kat and Licensor, and
their respective officers, directors, members, managers, employees and agents harmless
against, any and all Damages resulting from any misrepresentation, breach of warranty, or
failure to perform any covenant or agreement on the part of IGN under this Agreement. IGN
further agrees to indemnify in respect of, and hold Allen, Z-Kat, Licensor, and their
respective officers, directors, members, managers, employees and agents harmless against,
all Damages resulting from injuries and deaths from the use of a product or service
manufactured, produced, sold or marketed by IGN or its affiliates, except to the extent such
injury or death results from the negligence, gross negligence or intentional misconduct of
Z-Kat and its employees, officers and directors.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 12









 





     8.2 Method of Asserting Claims, etc. The party or parties claiming indemnification under this
Article (whether one or more) are hereinafter collectively referred to as the “Indemnified Party”
and the party against whom such claims are asserted hereunder is hereinafter referred to as to the
“Indemnifying Party.” All claims for indemnification by any Indemnified Party under this Article
VIII will be asserted and resolved as follows:




     (a) In the event that any claim or demand for which an Indemnifying Party would be
liable to an Indemnified Party hereunder is asserted against or sought to be collected from
such Indemnified Party by a third party (a “Third Party Claim”), such Indemnified Party
will, with reasonable promptness, notify the Indemnifying Party of such claim or demand,
specifying the nature of and specific basis for such claim or demand and the amount or the
estimated amount thereof to the extent then feasible (which estimate will not be conclusive
of the final amount of such claim and demand (the “Claim Notice”)). The Indemnifying Party
will not be obligated to indemnify such Indemnified Party with respect to any such claim or
demand to the extent the failure of such Indemnified Party to promptly notify the
Indemnifying Party of such a claim or demand materially prejudices the Indemnifying Party’s
ability to defend against the claim or demand. The Indemnifying Party will have 30 days
from the personal delivery or mailing of the Claim Notice (the “Notice Period”) to notify
such Indemnified Party (i) whether or not it disputes the liability of the Indemnifying
Party to such Indemnified Party hereunder with respect to such claim or demand and (ii)
whether or not it desires at the sole cost and expense of the Indemnifying Party, to defend
such Indemnified Party against such claim or demand; provided, however, that such
Indemnified Party is hereby authorized prior to and during the Notice Period to file any
motion, answer or other pleading which it deems necessary or appropriate to protect its
interests or those of the Indemnifying Party and not materially prejudicial to the
Indemnifying Party. In the event that the Indemnifying Party notifies such Indemnified
Party within the Notice Period that it desires to defend such Indemnified Party against such
claim or demand, except as hereinafter provided, the Indemnifying Party will have the right
to defend by all appropriate proceedings. If such Indemnified Party desires to participate
in, but not control, any such defense or settlement it may do so at its sole cost and
expense. If requested by the Indemnifying Party, such Indemnified Party agrees to cooperate
with the Indemnifying Party and its counsel in contesting any claim or demand which the
Indemnifying Party elects to contest, and, if appropriate and related to the claim in
question, in making any counterclaim against the person asserting the third party claim or
demand, or any cross-complaint against any person. No claim may be settled by the
Indemnifying Party without the consent of the Indemnified Parties, which consent will not be
unreasonably withheld. Notwithstanding the foregoing, in connection with a Third Party
Claim asserted against both such Indemnified Party and the Indemnifying Party, if (i) such
Indemnified Party has available to it defenses which are in addition to those available to
the Indemnifying Party, (ii) such Indemnified Party has available to it defenses which are
inconsistent with the defenses available to the Indemnifying Party or (iii) a conflict
exists or may reasonably be expected to exist in connection with the representation of both
such Indemnified Party and the Indemnifying Party by the legal counsel chosen by the
Indemnifying Party, such Indemnified Party will have the right to select its own legal
counsel subject to the approval of such legal counsel by the Indemnifying Party, such
approval not to be unreasonably withheld. If such



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 13









 







Indemnified Party selects its own legal counsel pursuant to the immediately preceding
sentence and the underlying Third Party Claim is otherwise subject to the scope of the
indemnification obligations of the Indemnifying Party pursuant to this Article VIII, the
reasonable fees and expenses of such legal counsel will be included within the
indemnification obligations of the Indemnifying Party; provided that under no circumstances
will the Indemnifying Party be obligated to indemnify such Indemnified Party against the
fees and expenses of more than one legal counsel selected by such Indemnified Party in
connection with a single claim (notwithstanding the number persons against whom the Third
Party Claim may be asserted).




     (b) In the event any Indemnified Party should have a claim against any Indemnifying
Party hereunder which does not involve a claim or demand being asserted against or sought to
be collected from it by a third party, such Indemnified Party will send a Claim Notice with
respect to such claim to such Indemnifying Party. If such Indemnifying Party does not
notify such Indemnified Party within the Notice Period that such Indemnifying Party disputes
such claim, the amount of such claim will be conclusively deemed a liability of such
Indemnifying Party hereunder.



ARTICLE IX.

Term, Termination and Expiration




     9.1 Term. This Agreement will become effective as of the Effective Date and will continue
until terminated (the “Effective Period”) according to its terms or until expiration of all
Sublicensed IP Rights (the “Expiration”).



     9.2 Voluntary Termination By IGN. IGN may voluntarily terminate this Agreement upon 60 days
written notice to Z-Kat.



     9.3 Material Breach. Z-Kat or, in the even Licensor assumes Article II, Sections 3.1 and
5.4(b) hereof pursuant to Section 9.4(a), Licensor may terminate this Agreement upon a material
breach or default by IGN of the Agreement by giving notice to IGN. If the material breach or
default is not cured within 60 days, the Agreement will automatically terminate. Material breaches
include, but are not limited to, a breach of any obligation to pay money owed and any breach of
Article II or Section 3.3. However, if the breach relates to an alleged failure to pay a Running
Royalty and IGN reasonably disputes in good faith that a Running Royalty is not due or owed and
promptly notifies Z-Kat of the nature of its dispute, then Z-Kat may not terminate this Agreement
unless and until such a determination is made by an arbitrator in accordance with the dispute
resolution procedure in Section 10.10(c). IGN and Z-Kat each agree to submit all such disputes for
arbitration, to be conducted in the manner set forth in Section 10.10(c). IGN must continue to pay
all Minimum Royalty Payments and any undisputed Running Royalties as required under the Agreement,
and otherwise abide by all the terms of this Agreement, during the dispute resolution procedure.



     9.4 Survival.




     (a) Notwithstanding any provision contained, herein to the contrary, in the event the
License Agreement is terminated at any time during the Effective Period of this



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 14









 







Agreement when IGN is not in breach of this Agreement, such termination of the License
Agreement shall cause a notation of this Agreement to the Licensor, but only with respect to
the Sublicensed IP Rights owned by Licensor, such that the obligations of IGN to Z-Kat
hereunder shall become obligations of IGN to Licensor, and the obligations of Z-Kat to IGN
solely under Article II, Sections 3.1 and 5.4(b) shall become obligations of Licensor to
IGN.




     (b) If a grant of sublicense to IGN is terminated (or does not survive termination of
the License Agreement under which it is granted), IGN will cease all use of the Sublicensed
IP Rights; provided, however, that IGN shall be entitled for a period of 1.5 years to sell,
directly or through its agents as provided in Section 2.2(ii), any finished goods inventory
of Licensed Product manufactured prior to such termination, but only on the condition that
IGN pays within 30 days of termination all past due amounts under the License Agreement and
Running Royalties on all such finished goods inventory that would otherwise be due and
payable upon sale of the finished goods as if this Agreement was in effect.




     (c) Articles III, V, VIII and IX, and Sections 6.3(d) and 6.3(e) will survive and
continue after termination. Any amounts due under Articles IV or VI prior to termination
will remain due and become immediately payable.




     (d) Upon termination of this Agreement for any reason prior to the fifth Minimum
Royalty Payment Date, IGN must immediately pay to Z-Kat a prorated Minimum Royalty Payment
equal to the difference between (i) the Guaranteed Minimum Royalty Amount that would
otherwise be due for the Minimum Royalty Period in which the termination occurs, multiplied
by the fraction where A is the day within the Minimum Royalty Period that termination occurs
and B is equal to 365, and (ii) the sum of all Running Royalties accruing during the Minimum
Royalty Period in which the termination occurs and paid to Z-Kat.



     9.5 Rights Upon Expiration. If this Agreement shall terminate due to expiration and absent
any breach of the its terms by IGN during the Effective Period, IGN will continue to have a
perpetual, non-exclusive, royalty-free sublicense to the Sublicensed IP Rights after Expiration to
the extent required for IGN to continue to exercise the sublicense granted by this Agreement.



ARTICLE X.

Miscellaneous Provisions




     10.1 Assignment. Z-Kat and Licensor may assign this Agreement upon notice to IGN. This
Agreement shall not be assignable by IGN absent the written consent of Z-Kat and Licensor, except
that no such consent will be required for succession by merger, consolidation, sale of all or
substantially all of the assets, or change of control of IGN, but only if the assignee, successor
or surviving entity agrees to be bound in writing to all of its terms and conditions. This
Agreement will be binding on successors in interest and permitted assigns. An assignment other
than as expressly permitted by this Section 10.1 will be void.



     10.2 Notices. All notices and other communications which are required or which



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 15









 







may be given under the provisions of this Agreement will be in writing and may be delivered
(a) personally, (b) by facsimile transmission, (c) expedited delivery service with proof of
delivery or (d) sent by United States Mail, postage prepaid, registered or certified, return
receipt requested, addressed as follows:



	 	 	 	 	 
	 

	 	If to Z-Kat:
	 	Z-Kat, Inc.
	 

	 	 	 	2903 Simms Street
	 

	 	 	 	Hollywood FL 33020
	 

	 	 	 	Phone: (954) 927-2044
	 

	 	 	 	Facsimile: (954) 927-0446
	 

	 	 	 	Attention: Chief Financial Officer
	 
	 	 	 	 
	 

	 	If to IGN:
	 	Image-Guided Neurologics, Inc.
	 

	 	 	 	2290 W. Eau Gallie Blvd.
	 

	 	 	 	Melbourne, Florida 32935
	 

	 	 	 	Phone: 321.757.8990
	 

	 	 	 	Fax: 321.757.8616
	 

	 	 	 	Attention: Chief Executive Officer





or to such other address designated by the Parties as provided above. Any such notice will be
deemed to have been given either at the time of personal delivery or, in the case of delivery
service or mail, as of the date of first attempted delivery at the address and in the manner
provided herein.




     10.3 Choice of Law. THIS AGREEMENT WILL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH THE
LAWS OF THE STATE OF FLORIDA (EXCLUSIVE OF CONFLICTS OF LAW PRINCIPLES).



     10.4 Captions. The captions, headings, and arrangements used in this Agreement are for
convenience only and do not in any way affect, limit, amplify, or modify its terms and provisions.



     10.5 No Strict Construction. This Agreement is the result of substantial negotiations among
the Parties and their counsel and has been prepared by their joint efforts. Accordingly, the fact
that counsel to one Party or another may have drafted this Agreement or any portion of this
Agreement is immaterial and this Agreement will not be strictly construed against any Party.



     10.6 Severability and Reformation. Wherever possible, each provision of this Agreement will
be interpreted in such manner as to be effective. If any provision of this Agreement is held to be
illegal, invalid, or unenforceable under present or future laws effective during the term of this
Agreement, such provision will be fully severable and this Agreement will be construed and enforced
as if such illegal, invalid, or unenforceable provision had never comprised a part of this
Agreement, and the remaining provisions of this Agreement will remain in full force and effect.
Furthermore, in lieu of each such illegal, invalid, or unenforceable provision, there will be added
automatically as a part of this Agreement a provision as similar in terms to such illegal, invalid,
or unenforceable provision as may be possible and be legal, valid, and enforceable; provided,
however, that, if any such change will materially diminish the



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 16









 







practical realization of the benefits intended to be conferred to any party to this Agreement,
such party may terminate this Agreement upon written notice to each other party within 30 days
after learning such change has been effected.



     10.7 Consents; Waivers. Any consent or approval required as a condition to an action under
this Agreement will be effective only (a) if in writing and signed by the Party whose consent is
sought, (b) with respect to the specific matter made the subject to such consent or approval (and
no other matter), and (c) for the specific instance(s) expressly set forth in such consent or
approval (and no earlier or subsequent instances). Any Party may waive any condition, covenant,
term, or provision of this Agreement, but any such waiver will be effective only (a) if in writing
and signed by the Party sought to be bound by such waiver, (b) with respect to the specific
condition, covenant, term, or provision expressly made the subject to such waiver (and no other
condition, covenant, term, or provision), and (c) for the specific instance(s) expressly set forth
in such waiver (and no earlier or subsequent instances). Without limiting the foregoing sentence,
none of the following will constitute a waiver of the rights of a Party to this Agreement to demand
exact compliance with the conditions, covenants, terms, and provisions of this Agreement: (a) a
failure of such Party to exercise any power reserved to it in this Agreement; (b) a failure of such
Party to insist upon compliance by any other Party to this Agreement with any condition, covenant,
term, or provision in this Agreement; (c) a delay, forbearance, or omission of such Party to
exercise any power; or (d) any custom or practice of the Parties at variance with the terms of this
Agreement. The consent or approval of any Party to this Agreement with respect to the act of any
other Party to this Agreement will not be deemed to waive or render unnecessary consent to or
approval of any subsequent similar act. Subsequent acceptance by a Party to this Agreement of any
performance due to it under this Agreement will not be deemed to be a waiver by such first Party of
any preceding breach by any other Party of any terms, provisions, covenants, or conditions of this
Agreement. No act or conduct of or by IGN under this Agreement, including any payment of a
royalty, shall be evidence, or deemed an admission or suggestion, that any product manufactured,
licensed, or distributed by IGN infringes the Sublicensed IP Rights or any other intellectual
property right.



     10.8 Force Majeure. Neither party will be in default or otherwise liable for any delay in or
failure of its performance under this Agreement if such delay or failure arises by any reason
beyond its reasonable control, including any act of God, any acts of the common enemy, the
elements, earthquakes, floods, fires, epidemics, riots, failures or delay in transportation or
communications, or any act or failure to act by the other parry or such other party’s employees,
agents, or independent contractors or representatives; provided, however, that lack of funds will
not be deemed to be a reason beyond a parry’s reasonable control. The Parties will promptly inform
and consult with each other as to any of the above causes that in their judgment may or could be
the cause of a delay in the performance of this Agreement.



     10.9 Legal Costs. Each of the Parties will be responsible for its own expenses, including
legal and accounting fees of advisors, incurred in connection with the negotiation and preparation
of this Agreement. If any action is brought to enforce or interpret the terms of this Agreement
(including through arbitration), the prevailing Party will be entitled to reasonable legal fees,
costs, and disbursements in addition to any other relief to which such Party may be entitled.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 17









 






10.10 Dispute Resolution.




     (a) Z-Kat and IGN will attempt to settle any claim or controversy arising out of this
Agreement through consultation and negotiation in good faith and in a spirit of mutual
cooperation. The Parties acknowledge that Sections 5.1, 7.1, 7.2, 7.3, 7.4, and 9.4 require
consultation and cooperation among them.




     (b) In the event that, after reasonable consultation, but within 30 days, the Parties
are unable to reach agreement, any claim or controversy arising out of Sections 5.1, 7.1,
7.2, 7.3, 7.4 or 9.4 shall be settled by arbitration administered by the American
Arbitration Association under its then current Commercial Arbitration Rules, before a single
arbitrator and judgment on any award rendered by or finding of the arbitrator may be entered
in any court having jurisdiction thereof. The arbitrator shall have the authority to award
actual money damages (with interest on unpaid amounts from the date due), temporary
injunctive relief, and reasonable attorney’s fees and expenses, but except as provided in
subsection (c), the arbitrator shall not have the authority to award exemplary or punitive
damages, and the parties expressly waive any claimed right to such damages. Except as set
forth in subsection (c), the costs of arbitration shall be borne by the parties in
accordance with the award of the arbitrator. If a parry fails to proceed with arbitration,
unsuccessfully challenges the arbitration award, or fails to comply with the arbitration
award, the other parry is entitled to costs, including reasonable attorney’s fees, for
having to compel arbitration or defend or enforce the award. Except as otherwise required
by law, the parties and the arbitrator agree to maintain as confidential all information,
documents and other data of any kind or nature whatsoever obtained during the arbitration
process, including the fact that such arbitration is being undertaken and the final award of
the arbitrator.




     (c) In the case of an arbitration brought pursuant to Section 9.3, to settle a genuine
dispute as to payment of Running Royalties arising out of a genuine dispute regarding
whether a product made, used, offered for sale or sold by IGN or IGN’s customers (an “IGN
Disputed Product”) is a Licensed Product (a “Coverage Dispute”), the arbitration procedures
set out above in Section 10.10(b) will be modified as follows. Section 10.10(a) will not
apply. The arbitration shall be before a single arbitrator in Miami, Florida, unless IGN
and Z-Kat agree to a different location. Notwithstanding the ABA Commercial Arbitration
Rules, the arbitrator in any Coverage Dispute shall be an independent attorney skilled in
patent matters jointly selected by the parties within 15 days of commencement of
arbitration. If an arbitrator cannot be agreed to, IGN and Z-Kat will each pick an
arbitrator, and the two arbitrators will pick the arbitrator to hear the matter. The
arbitration hearing shall be scheduled as promptly as possible, and in no event later than
30 days after appointment of the Arbitrator, unless Z-Kat agrees to extend such date. The
arbitrator shall be directed to render a decision as promptly as practical, and in no even
more than 30 days after such hearing. The Coverage Dispute shall be limited solely to the
question of whether the IGN Disputed Product is a Licensed Product, and shall not include
any issues relating to validity or enforceability of any of the Sublicensed Patents. The
decision of the arbitrator will be confidential and based solely on information submitted by
the parties relating to the Sublicensed IP Rights and the IGN Disputed Product. In the
event that the arbitrator determines that the IGN



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 18









 







Disputed Product is a Licensed Product, IGN shall promptly pay Z-Kat all past due
Running Royalties with respect to such IGN Licensed Product, plus the following amounts: (i)
penalty equal to 50% of the Running Royalties to discourage frivolous disputes; (ii)
interest at the rate of 8% per annum from the date such Running Royalties where otherwise
due; and (iii) all of the costs of Z-Kat, including reasonable attorney fees, in conducting
such arbitration. If, however, the arbitrator determines that Z-Kat unreasonably delayed in
giving notice to IGN of its failure to pay Running Royalties on a Disputed Product, which
delay must be at least 90 days from the time Z-Kat has sufficient information, after a
reasonable period for investigation, to make a determination that the Disputed Product is
infringing and that IGN has failed to Running Royalties on it, for purposes of increasing
the amount of the penalty to be paid by IGN under this section 10.10(c), IGN will be
relieved of payment of the penalty for the period of the delay. IGN shall be solely
responsible for any and all fees of the arbitrator and the arbitration proceedings. If IGN
pays such amounts within 15 days of the determination of the arbitrator and the submission
of invoices as to fees, this Agreement shall not terminate but shall continue and shall be
reformed to give effect to the arbitrator’s decision.



     10.11 Equitable Remedies. Each Party to this Agreement recognizes that the obligations
imposed on it in Articles II and III are special, unique, and of extraordinary character.
Accordingly, each Party to this Agreement agrees and declares that it is impossible to measure in
money the damages that will accrue by reason of its failure to perform any of its obligations under
Articles II and III and that, in the event of breach by it of any such obligation, the remedy at
law for such breach will be inadequate. Therefore, each Party to this Agreement, by execution of
this Agreement, waives the claim or defense that there is an adequate remedy at law and agrees it
will not urge in any action or proceeding to which it is a party that relates to Articles II and
III the claim or defense that such remedy at law exists. Furthermore, the Parties, by execution of
this Agreement, agree that each other Party is entitled (without proving damages or posting bond)
to equitable remedies, including specific performance and injunctive relief (in addition to
damages) as a remedy for the enforcement of Articles II and III.



     10.12 Integration. This Agreement sets forth the entire agreement and understanding between
the Parties as to the subject matter hereof and merges all prior discussions between them;
provided, however, that for the avoidance of doubt, this Agreement shall not affect the Parties’
obligations under that certain confidentiality agreement dated August 30, 2002. Neither of the
Parties shall be bound by any warranties, understandings or representations with respect to such
subject matter other than as expressly provided herein or in a writing signed with or subsequent to
execution hereof by an authorized representative of the Party to be bound thereby.



     10.13 No Partnership. Neither this Agreement, nor any terms and conditions contained herein,
will be deemed or construed to create a partnership, joint venture, other form of business
enterprise or association or cooperative arrangement, agency relationship, or franchise
relationship between the Parties or otherwise to create any liability for either Party whatsoever
with respect to the indebtedness, liabilities, and obligations of the other Party.



     10.14 Counterparts. This Agreement may be executed in any number of counterparts and will be
effective when each Party to this Agreement has executed at least one counterpart,



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 19









 







with the same effect as if all signing Parties had signed the same document. All counterparts
will be construed together and evidence only one agreement, which, notwithstanding the actual date
of execution of any counterpart, will be deemed to be dated the day and year first written above.
In making proof of this Agreement, it will not be necessary to account for a counterpart executed
by any Party other than the Party against whom enforcement is sought or to account for more than
one counterpart executed by the Party against whom enforcement is sought.



     10.15 Facsimile Signatures. The manual signature of any Party to this Agreement that is
transmitted to any other Party or counsel to any other Party by facsimile will be deemed for all
purposes to be an original signature.



[NEXT PAGE IS SIGNATURE PAGE]




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



Page 20









 





     IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed in duplicate
originals by its duly authorized representatives on the respective dates entered below.



     Z-KAT, INC.



     By:  /s/ Maurice R. Ferré                



     Name: Maurice R. Ferré, M.D.



     Title: President & CEO



     Date: 10/11/2004



     IMAGE-GUIDED NEUROLOGICS, INC.



     By:  /s/ R. Mazzocciti                      



     Name: R. Mazzocciti



     Title: President / CEO



     Date: 10/12/04



     ACKNOWLEDGEMENT BY MARKER, LLC


By signing below, the undersigned, an authorized officer of Marker, LLC, hereby (1) acknowledges
the existence, pendency and validity of the License Agreement as of the Effective Date, and (2)
expressly acknowledges, ratifies and approves of this Agreement, and in particular the sublicense
granted under Section 2.1 hereof and waives any rights to object to the terms of this Agreement,
including, without limitation, those rights contained in Section 2.2 of the License Agreement, and
(3) agrees to the provisions of Section 2.3(b) and 9.4(a) of the Agreement.



By:  /s/ Dr. George S. Allen                

Dr. George S. Allen

Title: Chief Manager





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



21









 








SCHEDULE 6.1(g)




Calypso Medical Technologies, Inc.

FHC, Inc.

Image-Guided Neurologics, Inc.





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



1









 








EXHIBIT A




LICENSE AGREEMENT





[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated
December 28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(b)(A) to such Asset
Contribution Agreement Addendum (i.e., the Manufacturing and Technology Sublicense
Agreement between Z-KAT, Inc. and Image-Guided Neurologics, Inc.) did not and does not include this
exhibit.]




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



 









 





EXHIBIT B




SUBLICENSED IP RIGHTS




U.S. Patents of Licensor:




	 	 	 	 	 	 
	 
	 	Patent No.	 	 	Issue Date	 
	 	[***]
	 	 	August 7, 1990	 
	 	[***]
	 	 	February 12, 1991	 
	 	[***]
	 	 	March 10, 1992	 
	 	[***]
	 	 	June 9, 1992	 
	 	[***]
	 	 	September 1, 1992	 
	 	[***]
	 	 	January 12, 1993	 
	 	[***]
	 	 	May 18, 1993	 
	 	[***]
	 	 	June 29, 1993	 
	 	[***]
	 	 	March 7, 1995	 
	 	[***]
	 	 	July 27, 1993	 
	 	[***]
	 	 	March 14, 1995	 
	 	[***]
	 	 	September 3, 1995	 
	 	[***]
	 	 	November 19, 1996	 
	 	[***]
	 	 	December 31, 1996	 
	 	[***]
	 	 	January 21, 1997	 
	 	[***]
	 	 	March 24, 1998	 
	 	[***]
	 	 	June 23, 1998	 
	 	[***]
	 	 	August 25, 1998	 
	 	[***]
	 	 	June 29, 1999	 
	 	[***]
	 	 	November 16, 1999	 
	 	[***]
	 	 	April 18, 2000	 
	 	[***]
	 	 	June 6, 2000	 
	 	[***]
	 	 	December 25, 2001	 
	 





Foreign Patents of Licensor:




	 	 	 	 	 	 
	 
	 	Country Patent No.	 	 	Issue Date	 
	 	Japan — [***]

	 	 	December 26, 1997	 
	 	France — [***]

	 	 	May 30, 1997	 
	 	Germany — [***]

	 	 	September 10, 1998	 
	 	Japan — [***]

	 	 	December 24, 1999	 
	 	UK — [***]

	 	 	September 2, 1992	 
	 	EPO — [***]

	 	 	October 1, 2003	 
	 	EPO — [***]

	 	 	October 16, 2002	 
	 





 









 






EXHIBIT B (cont.)




SUBLICENSED IP RIGHTS (cont.)




Patents of Z-Kat:




US[***] of [***] “[***] markers”




US[***] of [***] “[***] system”




US[***] of [***], “[***] calibrator”




US[***] of [***] “[***] registration”




 









 








EXHIBIT C




ANNUAL GUARANTEED ROYALTY PAYMENTS




	 	 	 	 	 
	Anniversary	 	Annual	 
	Following	 	Guaranteed Minimum	 
	Activation Date	 	Royalty Amount	 
	1
	 	$	[***]	 
	2
	 	 	[***]	 
	3
	 	 	[***]	 
	4
	 	 	[***]	 
	5
	 	 	[***]	 
	 
	 	 	 	 
	TOTAL:
	 	$	[***]	 







 












 






Exhibit 1.1(b)(B)




INTERFERENCE AND OPPOSITION

SETTLEMENT AGREEMENT AND CROSS LICENSE




     THIS AGREEMENT is made as of February 9, 2001, by and between Surgical Navigation
Technologies, Inc. (“SNT”), a corporation organized under the laws of the State of Delaware, having
a place of business at 826 Coal Creek Circle, Louisville, Colorado 80027, St. Louis University
(“SLU”), having a place of business at 3556 Caroline Street, St. Louis, Missouri 63104, Z-KAT, lnc.
(“Z-KAT”), a corporation organized under the laws of the State of Florida, having a place of
business at 2903 Simms Street, Hollywood, Florida 33020, and Cleveland Clinic Foundation (“CCF”), a
corporation organized under the laws of the State of Ohio, having a place of business at 9500
Euclid Avenue, Cleveland, Ohio 44195.



     WHEREAS, SNT and SLU are the owners of U.S. Patent Application No. [***], filed [***], in the
names of [***] et al., and certain earlier filed U.S. applications relied upon for filing date
benefit;



     WHEREAS, CCF, is the owner of U.S. Patent No. [***], issued [***], U.S. Patent No. [***],
issued [***], and U.S. Patent No. [***], issued [***], all in the names of [***] et al., and Z-KAT
is the exclusive licensee of these patents;



     WHEREAS, SNT, SLU, CCF, and Z-KAT desire to enter into a cross-licensing agreement relating to
the subject matter of U.S. Patent Application No. [***] and certain claims in U.S. Patent Nos.
[***], [***], and [***];



     WHEREAS, U.S. Patent Application No. [***] and certain claims in U.S. Patent Nos. [***],[***],
and [***] are currently involved in Interference No. [***], pending before the United States Patent
and Trademark Office (“PTO”);



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-1-









 





     WHEREAS, it is the desire of SNT, SLU, CCF, and Z-KAT to resolve the issues presented by
Interference No. 104,545 expeditiously and inexpensively, on the basis of priority determined in
accordance with the laws of the United States and the rules of practice of the PTO;



     NOW, THEREFORE, for and in consideration of the mutual understandings and obligations set
forth herein, SNT, SLU, CCF, and Z-KAT agree as follows:



ARTICLE 1 – DEFINITIONS




     Section 1.1. The “Foley Party” shall refer to SNT and SLU collectively.



     Section 1.2. The “Kalfas Party” shall refer to CCF and Z-KAT collectively.



     Section 1.3. “Parties” shall refer to the Foley Party and the Kalfas Party.



     Section 1.4. “Party” shall refer to either (a) the Foley Party or (b) the Kalfas Party.



     Section 1.5. “Net Sales” shall mean gross revenues received by SNT or Z-KAT, as the case may
be, and/or its permitted sublicensees, from the sale of the Licensed Products, less customary trade
or quantity discounts, credit for the same returned good, and tariffs paid or borne by SNT or
Z-KAT, as the case may be. However, Net Sales shall not be lower than 80% of list price to afford
a minimum royalty regardless of its combination with other products.



     In the event a Licensed Product is sold as a component of a combination product or system and
is not priced separately, the Net Sales price for such Licensed Product shall be the average Net
Sales price of Licensed Products of like kind and quality sold separately during the thirty (30)
days preceding the sale of such combination product or system, or if no such Licensed Product was
sold separately, then the Net Sales price of


 [***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-2-









 







the Licensed Product sold as a component shall be determined in accordance with the following
formula:




NSPLP = NSPCP (List PriceLP ÷ List PriceCP), where


NSPLP is the Net Sales Price of the Licensed Product,

NSPCP is the Net Sales Price of the combination product or system,

List PriceLP is catalog list price of the Licensed Product component, and

List PriceCP is catalog list price of the combination product of system.




     Section 1.6. “Licensed Products” shall mean any (guide devices) apparatus for guiding an
application of a tool to a subject from an entry point along a trajectory having a means for
emitting signals indicative of the guide axis, as defined by the (re-defined) count of Interference
No. 104,545 and any claims designated as corresponding thereto. Licensed Products shall not
include any other apparatus used in conjunction with the guide devices. Exemplary of the guide
devices of the Foley Party are the assembly presently marketed as the Universal Drill Guide System
consisting of a Universal Drill Guide (960-521), Trocar (960-522), Bit Guide (960-523), and Stealth
Fighter (960-525) and the Guide Frame Assembly consisting of a Guide Frame – DT (960-220) and
Stealth Fighter (960-525). The guide devices of the Kalfas Party shall consist of any comparable
assembly of the Kalfas Party.



ARTICLE 2 – CROSS-LICENSE




     Section 2.1. The Foley Party hereby grants to Z-KAT an irrevocable, non-exclusive, worldwide
license, without the right to transfer or sublicense, under the respective interference claims of
U.S. Patent Application No. [***] (attached hereto Exhibit A), and any patent issuing
therefrom, and any continuation, continuation-in-part, division, reissue, reexamination, extension,
or foreign counterpart respective of such claims that are relevant to make, use, offer to sell,
sell, or import Licensed Products.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-3-









 




Notwithstanding the foregoing, Z-KAT shall have the right to grant a sublicense to any party
as part of the normal course of the sale of Licensed Products to an end user, or in the normal
course of an OEM relationship involving the Licensed Products in which Z-KAT provides a
complimentary product. Complimentary product, as used in this Section 2.1, shall mean a software
module or device of greater value than the Licensed Products that is distributed by the OEM partner
in conjunction with the Licensed Product.




     Section 2.2. The Kalfas Party hereby grants to SNT an irrevocable, non-exclusive, worldwide
license, without the right to transfer or sublicense, under the respective interference claims of
U.S. Patent Nos. [***],[***], and [***] (attached hereto as Exhibit A), and any continuations,
continuations-in-part, divisions, reissues, reexaminations, extensions, or foreign counterparts
respective of such claims that are relevant to make, use, offer to sell, sell, or import Licensed
Products. Notwithstanding the foregoing, SNT shall have the right to grant a sublicense to any
party as part of the normal course of the sale of Licensed Products to an end user or in the normal
course of an OEM relationship involving the Licensed Products in which SNT provides a complimentary
product. Complimentary product, as used in this Section 2.2, shall mean a software module or
device of greater value than the Licensed Products that is distributed by the OEM partner in
conjunction with the Licensed Product.



     Section 2.3. SNT or Z-KAT (and/or their respective OEM or sublicense), as the case may be, of
the Party determined not to be the first inventor under the provisions of Article 3, shall pay to
SNT or Z-KAT, as the case may be, of the Party determined to be the first inventor, a royalty in an
amount equal to [***]% of the Net Sales of the Licensed



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-4-









 




Products until the expiration of the last-to-expire of any applicable patent that is the
subject of this Agreement (the “Royalties”). At the time of execution of this Agreement, both
parties shall exchange their standard price list with reference to the Licensed Products and shall
be obligated for the term of this Agreement to promptly notify the other party of the amended to
the standard price list with regard to new, modified or improved Licensed Products. Royalties
shall be payable in US$ within forty-five (45) days of the end of SNT’s or Z-KAT’s, as the case may
be, business quarter, based upon Net Sales of Licensed Products occurring after the date that a
determination of priority is made pursuant to Article 3. Payment of the Royalties shall be
accompanied with a report stating at least: (a) the number of Licensed Products sold, leased or
distributed, including by OEM or sublicense; (b) the gross price charged for each Licensed Product;
(c) calculation of Net Sales; and (d) total royalty payable on Net Sales in U.S. dollars. In the
event Licensed Product revenue accrues in a currency other than U.S. dollars, the revenue shall be
converted using the sell exchange rate as reported in the Wall Street Journal for the last business
day of the calendar quarter in which the Licensed Product revenue accrued. If no amounts are due,
the report shall so state. Late payments are subject to interest accruing at 11/2% per month for a
total of 18% annual, but not to exceed the highest rate allowed by law.




     Section 2.4 SNT or Z-KAT, as the case may be, of the Party determined not to be the first
inventor shall maintain complete and accurate records relating to the rights and obligations under
this Agreement and any amounts payable in relation to this Agreement, which records shall contain
sufficient information to permit the other to confirm the accuracy of any reports delivered and
compliance in other respects with this



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.

-5-









 




Agreement. The relevant report producing party shall retain such records for at least three
(3) years following the end of the calendar year to which they pertain, during which time the
report receiving party or its appointed agents acceptable to the report producing party, shall have
the right, at its own expense, to inspect such records during normal business hours to verify any
reports and payments made or compliance in other respects under this Agreement. In the event that
any audit performed under this Section reveals an underpayment in excess of ten percent (10%) of
any report, the report producing party shall bear the full cost of such audit and shall remit any
amounts due plus late fees to the report receiving party within thirty (30) days of receiving
notice thereof.




     Section 2.5. The licenses granted in Article 2 do not extend to any patents or patent
applications or subject matter other than specified in Sections 2.1 and 2.2.



ARTICLE 3 – DETERMINATION OF PRIORITY




     Section 3.1.



     (a) The Kalfas Party may file a motion to redefine the interference to remove the reference to
the term “light” present in the existing count. The Foley Party agrees not to oppose this motion,
and the Kalfas Party may so inform the Board that the Foley Party will not oppose this motion. The
Parties shall agree to the language stated in such motion. The Parties shall work diligently
together to file such motion within ten (10) days from the execution of this agreement.



     If the motion is granted the Parties will proceed on the basis of the new count and, if the
motion is denied, the Parties will proceed on the basis of the existing count.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-6-









 




The parties agree that Kalfas Party’s motion to redefine the interference shall be the only
preliminary motion filed under 37 C.F.R. § 1.633.




     (b) No later than April 20, 2001, each Party shall present to the other Party all evidence
upon which it intends to rely for priority. No further evidence can be submitted unless requested
by an opposing Party or as a result of cross-examination. The evidence may be in the form of, but
is not limited to, photocopies of records and documents, demonstrative exhibits, and affidavits
and/or declarations of witnesses.



     Section 3.2. On the basis of the evidence so exchanged, the attorneys for the Parties shall
make a conscientious effort, within one (1) month (latest possible date being May 21, 2001) of the
exchange of evidence, to reach agreement as to the proper resolution of priority for the subject
matter of the (re-defined) count in accordance with the applicable laws of the United States and
the rules of the PTO.



     Section 3.3. In the event the Parties reach agreement on the issue of priority within one (1)
month after exchange of evidence and motions, the Party determined not to be the first inventor of
the subject matter defined by the (re-defined) count of the interference shall promptly file in the
PTO a request for entry of adverse judgment under 37 C.F.R.§ 1.662.



     Section 3.4. In the event the Parties do not reach agreement on the issue of priority within
one (1) month after exchange of evidence, and neither Party is willing to concede priority and file
a request for entry of adverse judgment, then within an additional fifteen (15) days each Party
shall provide to the other Party a written statement explaining the basis of the Party’s refusal to
concede priority and position that it is the first inventor of the subject matter.


 [***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-7-









 





     Section 3.5. If within ten (10) days after the exchange of written statements under Section
3.4, neither Party is willing to concede priority and file a request for entry of adverse judgment,
the Parties shall submit their evidence to the PTO and the priority issue shall be decided by the
PTO in accordance with the applicable rules.



     Section 3.6. if the Parties submit evidence to the PTO in accordance with Section 3.5, the
Parties (a) shall not be entitled to rely on evidence that was not previously submitted under
Section 3.1 of this Agreement, (b) the Parties may exercise the right of cross-examination of any
affiant, declarant, or inventor of the subject patents or application, not to exceed five
cross-examination depositions per party (c) agree the decision of the PTO on the issue of priority
shall be final, binding, and nonappealable.



     Section 3.7. The parties shall jointly propose the time schedule set forth in Article 3. If
the PTO does not agree with the time schedule set forth in this Article 3, the Parties shall accept
whatever schedule the PTO imposes.



ARTICLE 4 – FILING OF AGREEMENT




     Section 4.1. The Party determined to be the first inventor of the subject matter of the
(re-defined) count shall be obligated to file this Agreement with the PTO, in compliance with 35
U.S.C. § 135(c), and shall serve a copy of such filing on the other Party. Notwithstanding this
obligation to file the Agreement, nothing contained herein will prevent the other Party from filing
a copy of this Agreement, or any other ancillary agreements.



     Section 4.2. Any Party filing this “Agreement,” or any ancillary agreements, with the PTO
shall request that the agreements be kept separate from the file of this


 [***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-8-









 




interference and not be made available to Non-Parties except as permitted by 35 U.S.C. §
135(c).




ARTICLE 5 – PATENT PROSECUTION




     Section 5.1. The Foley Party shall prepare, file, prosecute, and maintain U.S. Patent
Application No. [***], and any patent issuing therefrom, and any continuation,
continuation-in-part, division, reissue, reexamination, extension, or foreign counterpart. The
Kalfas Party shall prepare, file, prosecute, and maintain the respective designated interference
claims of U.S. Patent Nos. [***],[***], and [***], and any continuations, continuations-in-part,
divisions, reissues, reexaminations, extensions, or foreign counterparts respective of such claims.



     Section 5.2. The Parties shall be solely responsible for their respective fees and costs,
including attorneys’ fees, relating to the filing, prosecution and maintenance.



ARTICLE 6 – INFRINGEMENT




     Section 6.1. Each Party agrees to provide written notice to the other party promptly after
becoming aware of any infringement of any patent that is the subject of the cross-license granted
under Article 2 of this Agreement.



     Section 6.2 Right to Prosecute Infringements.



     (a) The Foley Party shall have the right to prosecute infringement on U.S. Patent Application
No. [***], and any patent issuing therefrom, and any continuation, continuation-in-part, division,
reissue, reexamination, extension, or foreign counterpart. The Kalfas Party shall have the right
to prosecute infringement on the respective designated interference claims of U.S. Patent Nos.
[***],[***], and [***], and any continuations, continuations-in-part, divisions, reissues,
reexaminations, extensions, or


 [***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.

-9-









 




foreign counterparts respective of such claims. If required by law, the Parties shall permit
any action under this Section to be brought in its name, including being joined as a
party-plaintiff, provided that the original Party holds the added Party harmless from, and
indemnifies it against, any costs, expenses, or liability that incurs in connection with such
action.




     (b) Prior to commencing any such action, the commencing Party shall consult with the other
Party and shall consider its views regarding the advisability of the proposed action and its effect
on the public interest. The Foley Party does not have the right to enter any settlement,
sublicense or other compromise regarding the respective designated interference claims of U.S.
Patent Nos. [***],[***], and [***], and any continuations, continuations-in-part, divisions,
reissues, reexaminations, extensions, or foreign counterparts respective of such claims. The
Kalfas Party does not have the right to enter any settlement, sublicense or other compromise
regarding U.S. Patent Application No. [***], and any patent issuing therefrom, and any
continuation, continuation-in-part, division, reissue, reexamination, extension, or foreign
counterpart.



     Section 6.3 Cooperation. Each Party agrees to cooperate in any action under this
Article, which is controlled by the other Party, provided that the controlling Party reimburses the
cooperating Party promptly for any costs and expenses incurred by the cooperating Party in
connection with providing such assistance. Otherwise, the Parties bear their own costs.



     Section 6.4 This Agreement will be executed by each party in quadruplicate originals, each of
which shall be deemed an original, but all four originals together will constitute only one and the
same instrument. Each Party may execute this Agreement


 [***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.

-10-









 




in counterparts, and this Agreement will be deemed executed when all Parties have received (by
fax or otherwise) one or more copies of the signature page that collectively contain signatures
from all Parties.


[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-11-









 








     IN WITNESS WHEREOF, the Parties hereto have executed this Agreement effective as of the date
first written above.



	 	 	 	 	 	 	 	 	 	 	 	 	 
	Surgical Navigation Technologies, Inc.	 	Cleveland Clinic Foundation	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	By:

	 	/s/
	 	 	 	By:
	 	/s/	 	 	 	 
	 	 	 	 	 	 	 	 	 
	 	 	Title:	 	President	 	 	 	Name: Mr. Frank L. Lordeman	 	 
	 	 	Date:	 	2-09-07	 	 	 	Title: Chief Operating Officer	 	 
	 	 	 	 	 	 	 	 	Date: February 9, 2001	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	St. Louis University	 	Z-Kat	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	By:

	 	/s/
	 	 	 	By:
	 	/s/	 	 	 	 
	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	 

	 	Title:
	 	 	 	 	 	Title:
	 	CEO	 	 
	 

	 	Date:
	 	 

2-9-01
	 	 
	 	Date:
	 	2-09-01	 	 






	 	 	 	 	 
	APPROVED AS TO FORM	 	 
	    CCF – OFFICE OF	 	 
	  GENERAL COUNSEL	 	 
	 
	 	 	 	 
	By:

	 	/s/	 	 
	Date:

	 	 

2/9/01
	 	 
	 
	 	 	 	 
	Approved by:	 	 
	 
	 	 	 	 
	By:

	 	/s/	 	 
	Name:

	 	 

Christopher M. Coburn
	 	 
	Title:

	 	Executive Director	 	 
	 

	 	CCF Innovations	 	 
	Date:

	 	February 9, 2001	 	 
	 
	 	 	 	 
	Approved as to Form for Execution (not a signatory	 	 
	 
	 	 	 	 
	By: 

Name:

	 	/s/
 

Mark G. Bloom, Esq.
	 	 
	Title:

	 	Manager of Technology Licensing	 	 
	 

	 	CCF Innovations	 	 
	Date:

	 	February 9, 2001	 	 




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-12-









 





EXHIBIT A



The claims of the Parties, which correspond to the count are:




	 	 	 	 	 	 	 	 	 
	 
	 	Kalfas ‘990	 	16-18	 	 	 	 
	 
	 	Kalfas ‘703	 	11, 14, 15, and 19-21	 	 	 	 
	 
	 	Kalfas ‘064	 	1-24	 	 	 	 
	 
	 	Foley	 	37-64	 	 	 	 





The claims of the Parties, which do not correspond to the count are:




	 	 	 	 	 	 	 
	 

	 	Kalfas ‘990
	 	1-15 and 19-23
	 	 
	 

	 	Kalfas ‘703
	 	1-10, 12, 13 and 16-18	 	 
	 

	 	Kalfas ‘064
	 	none	 	 
	 

	 	Foley
	 	none	 	 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


-13-











 





Exhibit 1.1(c)



SUBLICENSE AGREEMENT




     This Sublicense Agreement (the “Agreement”), effective as of October 1, 2004 (“Effective
Date”) is made by and between Z-Kat, Inc. (“Z-Kat”), a Florida corporation, having an office at,
2901 Simms Street, Hollywood FL 33020, and Biomet Manufacturing Corp. (“Biomet”), and Indiana
Corporation with offices at 56 E. Bell Drive, Warsaw, IN 46582. Z-Kat and Biomet are sometimes
referred to herein individually as a “Party” and collectively as the “Parties”.



Recitals




     A. The Parties were parties to that certain Product Development and Distribution Agreement,
made and entered into April 22, 2002 (“The Product Development Agreement”)



     B. The Parties have agreed in that certain Asset Purchase Agreement (the “Asset Purchase
Agreement”) to terminate the Product Development Agreement as of the closing of the Asset
Purchase Agreement.



     C. As part of the Asset Purchase Agreement, Z-Kat has also agreed to grant to Biomet
sublicenses under certain licenses granted to Z-Kat by Northwestern University (“NWU”), The
Cleveland Clinic Foundation (“CCF”), Cedara Software Corp. (“Cedara”), and George S. Allen
(“Allen”), who has subsequently assigned his interests to Marker, LLC, a Tennessee limited
liability company (“Marker”) (Allen and/or Marker, as the case may be, hereinafter referred to as
“Allen”).



     The Parties therefore agree as follows:



ARTICLE I.

Definitions




     1.1 “Acumen Business”
has the meaning given to it in the Asset Purchase Agreement.



     1.2  An “Affiliate”
of a party means an entity directly or indirectly controlling, controlled by or under common
control with that party, where control means the ownership or control, directly or indirectly, of
more than fifty percent of all of the voting power of the shares (or other securities or rights)
entitled to vote for the election of directors or other governing authority, as of the date of this
Agreement or hereafter during the term of this Agreement. However, the entity will be considered
an Affiliate only for the time during which such control exists.



     1.3 “Biomet Field”
means the medical specialty concerned with the preservation, restoration, development, repair
and correction of the musculoskeletal system and associated structures. For avoidance of doubt,
products that may be used in the Biomet Field include, but are not limited to, the following:
(a) reconstructive including orthopaedic joint replacement, bone cements and accessories, dental
reconstructive products and platelet systems; (b) fixation products including electrical bone
growth stimulation, internal and external orthopaedic fixation, craniomaxillofacial devices and
bone growth substitute materials; (c) spinal products including spinal stimulation, spinal
hardware, pain therapy, and orthobiologics; (d) arthroscopy,



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.












 







diagnostics, softgoods, and bracing. However, notwithstanding the forgoing, the following
medical specialties are, to the extent that they may otherwise come within the scope of the
definition given above, specifically excluded from the Biomet Field:




     (a) Non-bone oncology;




     (b) Blood vessels and vital organs;




     (c) Neurology, which is the medical specialty concerned with the brain, spinal cord and
nervous system and including neurosurgery; and




     (d) Cranial neurosurgery, ENT and Otolaryngology.



     1.4 “License Agreements”
mean, collectively, that certain Master Agreement by and between Z-Kat and CCF, effective as
of January 1, 2003 (the “CCF License Agreement”), a copy of which is attached hereto as
Exhibit A; that certain Agreement by and between Z-Kat and Cedara, made effective as of
September 19, 2003 (the “Cedara License Agreement”), a copy of which is attached hereto as
Exhibit B; and that certain License Agreement, by and between Z-Kat and NWU, made July 30,
1997 (the “NWU License Agreement”), a copy of which is attached hereto as
Exhibit C, and that certain License Agreement by and between Z-Kat and George S. Allen,
made August 31, 2001 (the “Allen License Agreement”), a copy of which is attached hereto as
Exhibit D.



     1.5 “Licensors”
refer to CCF, Cedara, NWU, and Allen, collectively. “Licensor” refers to each of
them.



     1.6 “Robotic Devices”
means a machine or device, which includes mechanical components, logic circuitry, computing
components, software and/or other specialized components, that (i) operates automatically,
semi-automatically, interactively or by remote control, in which desired and/or measured force,
torque, position, orientation, velocity, and/or angular velocity information is processed by a
computing source and such computing source is used to control the force, torque, position,
orientation, velocity, angular velocity, and/or physical configuration of the device; or (ii)
senses force and/or torque information, provides tactile, force and/or torque information to the
user, applies a force and/or torque to a medical instrument, and/or fully or partially constrains
the position, velocity, orientation, or angular velocity of a medical instrument. Robotic Devices
also include those types of devices listed in Section 2.3(b).



     1.7 “Robot Enabled CAS”
are computer aided surgery systems that are configured such that a Robotic Device must be
utilized in at least one step or portion of a medical procedure, including software and hardware
components for, as well as instruments, tools and other materials and items used with, for such
systems, processes performed by such systems and process of using such systems. For the avoidance
of doubt, a Robot Enabled CAS does not include a Robotic Device. A “computer aided surgery
system” means intra-operative computer hardware and software, both with and without an
intra-operative tracking system and tracked surgical instruments, tools and other trackable
objects, that correlates physical space to medical images or models (including without limitation
geometric, graphical and mathematical models), as well as components for such systems and tools,
instruments, and other items used in connection with such systems.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


2









 





     1.8 “Robotic CAS”
are combinations of Robot Enabled CAS and one or more Robotic Devices.



     1.9 “Sublicensed IP Rights”
means certain patents, patent applications, copyrights and other IP rights (other than
Technical Information) identified on Exhibit E that have been licensed to Z-Kat by CCF (the
“CCF Sublicensed IP Rights”), Cedara (the “Cedara Sublicensed IP Rights”),
and NWU (the “NWU Sublicensed IP Rights”), and patents and patent application that have
been licensed to Z-Kat by Allen (the “Allen Sublicensed IP Rights”) pursuant to the
respective License Agreements.



     1.10 “Technical Information”
means, collectively, the technical information, including without limitation software,
documentation and information contained therein, that has been licensed to Z-Kat by CCF, Cedara,
and NWU and that is identified on Exhibit E, specifically excluding, however, technical
information licensed to Z-Kat by Allen and technical information relating to Robotic Devices.



     1.11 “Z-Kat Field”
means all fields other than the Biomet Field.



ARTICLE II.

Grants of License




     2.1 Grant of License to Biomet.
Subject to all of the terms and conditions of this Agreement, and in particular the
limitations of Section 2.3, Z-Kat grants to Biomet exclusive (even as to Z-Kat) worldwide
sublicenses under the Sublicensed IP Rights and Technical Information within, and limited to, the
Biomet Field (the “Sublicenses”) including the right to grant sublicenses to others.



     2.2 Scope of Grant.



     (a) The grant of sublicense in this Agreement includes, unless it is otherwise expressly
stated in this Agreement, including without limitation in Section 2.3, the following rights:




     (i) with respect to patents, to make, have made, use, lease, sell, offer to
sell, and import machines and articles of manufacture solely for use within the
Biomet Field; and to make, have made, use and import machines, tools, materials and
other instrumentalities, insofar as such machines, tools, materials and other
instrumentalities are involved in or incidental to the development, manufacture,
testing or repair of products for use solely within the Biomet Field, which are made
or imported under the authority of the licensee;




     (ii) with respect to Technical Information, to make, use, sell, lease,
distribute, publicly display, and make available products solely within the Biomet
Field incorporating or embodying the Technical Information;




     (iii) with respect to copyrights, to copy, publicly distribute, publicly
perform, publicly display, prepare derivatives, and digitally transmit the work in
which the copyright exists, solely for use within the Biomet Field; and



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


3









 






     (iv) to convey to any purchaser, lessee, or user of any product for use within
the Biomet Field, which is made under authority of Biomet or its sublicensee, rights
to use and resell the product.




     (v) the right to make, copy, and have made any product covered by any
Sublicensed IP Rights licensed to Z-Kat under the Allen License Agreement is subject
to written approval of Allen. Z-Kat shall diligently work with Allen, and Biomet
shall cooperate as required, to obtain such approval within a reasonable period of
time after the Effective Date of this Agreement. Until Allen has provided written
approval for Biomet to make, copy and have made products covered by the Sublicensed
IP Right licensed to Z-Kat under the Allen License Agreement, Biomet may purchase
from Z-Kat, and Z-Kat will sell to Biomet on commercially reasonable terms and
conditions, fiducial markers and other products that come within the scope of the
Sublicensed IP Rights licensed to Z-Kat pursuant to the Allen License Agreement that
meet the specifications agreed to by Biomet and Z-Kat. All fiducial markers and
other products purchased by Biomet from Z-Kat that are covered by Sublicensed IP
Rights under the Allen License Agreement shall be manufactured by an entity approved
by Biomet, which approval will not be unreasonably withheld. The price to be paid
by Biomet to Z-Kat for such fiducial members and other products shall be the cost
charged by the manufacturer, plus any direct costs incurred by Z-Kat, taxes due on
the sale to Z-Kat and, any royalty due under the Allen License Agreement on the sale
of such fiducial members or other products.




     (b) Biomet may, without the consent of or notice to Z-Kat, grant further sublicenses
under the sublicenses granted to it, but only to the extent that it has been sublicensed
under this Agreement. However, if any of the License Agreements require notice of grant of
sublicense, Biomet must provide notice to the Licensor in accordance with the License
Agreement.



     2.3 Limitations on and Exclusions from Grant.




     (a) Notwithstanding section 2.2(a), Biomet will not make available to third parties
software that is included with or that contains Technical Information except pursuant to a
license that obligates the licensee not to disclose the software or use it except as
permitted by this Agreement, and subject to all the terms and conditions of this Agreement.




     (b) Notwithstanding section 2.1, the grant of sublicense to Biomet under section 2.1
excludes any right to make, use, offer for sale, sell, import, publicly display, publicly
distribute, or publicly perform, or disclose information relating to, Robotic Devices, Robot
Enabled CAS and Robotic CAS, which rights are reserved to Z-Kat. However, beginning 2-1/2
years from the Effective Date Biomet may begin making and using Robot Enabled CAS and
Robotic CAS for use solely within the Biomet Field under the Sublicensed IP Rights and
Technical Information solely for purposes of internal development, and not clinical use, of
Robot Enabled CAS. Beginning 4 years from the Effective Date, Biomet’s license under
section 2.1 will include a non-exclusive



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


4









 







sublicense, subject to all the terms and conditions of this Agreement, to make, use,
offer for sale, sell, import, publicly display, publicly distribute, or publicly perform, or
disclose information relating to, Robot Enabled CAS and Robotic CAS solely for use within
the Biomet Field. Furthermore, Biomet will have as of the Effective Date a non-exclusive,
irrevocable, non-terminable, fully-paid, royalty-free, fully transferable, worldwide
license, with the right to sublicense, under the Sublicensed IP Rights and Technical
Information for making, using, selling, offering for sell, importing, publicly displaying,
publicly performing, and publicly distributing in the Biomet Field the following types of
Robotic Devices, Robot Enabled CAS and Robotic CAS solely for these types of Robotic
Devices: (i) tensors used for soft tissue balancing of joint replacements, arthroscopy
ligament loading, and the like; (ii) mechanical cutting blocks having only manually operated
components (as opposed to electro-mechanically actuated components) utilized for orthopaedic
surgery and that are not in direct communication with a computing source; (iii) mechanisms
having only manually operated components and no electro-mechanically actuated components
utilized in devices for the alignment of cutting tools, rails, sliding mechanisms, and the
like, and that are utilized for musculoskeletal surgery and that are not in communication
with a computing source; and (iv) parallel architecture, electromechanical devices for
orienting surgical tools for use solely with procedures on the spine.




     (c) Notwithstanding section 2.1, the grant to Biomet of the sublicense in section 2.1
under the Allen Sublicensed IP Rights is non-exclusive and is subject to the following
additional limitations: fiducials and instruments relating to their implantation, use and
removal, which are sold under the Allen Sublicensed IP Rights must be labeled only for use
with Biomet products, used solely within the Biomet Field, but specifically excluding
cranial applications, in connection with surgical procedures for Biomet implants, and work
only in conjunction with computer assisted surgery systems made by or on behalf of, and sold
by, Biomet. Furthermore, to the extent that it is commercially feasible, Biomet will take
commercially reasonable measures to ensure that computer aided surgical systems that are
made or sold by Biomet may interact with fiducials that come within the scope of the Allen
Sublicensed IP Rights only if such fiducials are made by Biomet or Z-Kat.




     (d) Notwithstanding anything to the contrary in this Agreement, Z-Kat is not granting
to Biomet a sublicense that it is not otherwise permitted to grant under the Licensed
Agreements, or that extends beyond the scope of, or otherwise constitutes a breach of, any
of the License Agreements. Z-Kat’s foregoing grant of a sublicense to Biomet under this
Article II is subject to all of the limitations of License Agreements. In particular, and
without limiting the generality of this Section 2.3(d), the scope of the sublicenses granted
by this Agreement under the licenses granted in the Cedara License Agreement are
non-exclusive and are limited to the right to make, have made, use, sell, copy, modify,
prepare derivatives, adapt, transmit, perform, and reproduce apparatus, processes, software
and other works of authorship and information with respect to “CAOS Applications” and “CAOS
Platforms,” as those terms are defined in the Cedara License Agreement.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


5









 





     2.4 No Other Licenses; No Assignments.
Other than the licenses expressly set forth above or in other written agreements, Z-Kat is not
granting any other license or sublicense, whether by implication, estoppel or otherwise. Except as
otherwise expressly stated, nothing in this Agreement is intended to transfer title to or other
ownership interest in any intellectual property right. The foregoing grant of Sublicenses does not
constitute a non-infringement representation, warranty or covenant.



     2.5 Further Assurances.
In the event that either Z-Kat or Biomet identifies any patent, copyright or technical
information licensed to Z-Kat as of the Effective Date, which is not sublicensed by this Agreement,
and which would otherwise be infringed by or required for the conduct of the Acumen Business as
conducted as of the Effective Date, Z-Kat will cooperate with Biomet in identifying such patent,
copyright or technical information and granting, to the extent permitted under the applicable
license agreement, a non-exclusive sublicense within the Biomet Field, subject to all the terms of
this Agreement and the applicable license agreement. However, notwithstanding the foregoing, and
except otherwise set forth in this Agreement, Z-Kat has no obligation to grant sublicenses under
any patents, patent applications, copyrights or technical information pertaining to Robotic
Devices, including without limitation those sublicensed to Z-Kat by Barrett Technology, or to the
assets identified on Schedule 1.2 of the Asset Purchase Agreement.



ARTICLE III.

Publicity and Confidentiality




     3.1 Confidentiality of Technical Information.
Biomet will hold all Technical Information in confidence, and will take reasonable precautions
to maintain and protect the confidentiality of the Technical Information, to the same extent Z-Kat
is required by the respective Licensors of the Technical Information under the License Agreements.
Biomet will not disclose or use any Technical Information except to the extent permitted by the
Licensor of the Technical Information in the applicable one of the License Agreements. Biomet may
disclose to others, use and permit others to use any of Technical Information only to the extent
the License Agreement under which the Technical Information is licensed to Z-Kat permits
disclosure.



     3.2 Publicity and Trademarks.
Nothing in this Agreement will be construed as conferring upon either Party or its Affiliates
any right to include in advertising, packaging or other commercial activities related to a product,
any reference to the other Party (or any of its Affiliates), its trade names, trademarks or service
marks in a manner which would be likely to cause confusion or to indicate that such product is in
any way certified by the other Party hereto or its Affiliates.



ARTICLE IV.

Payments




     4.1 Running Royalties.
For activities undertaken by, on behalf of, or under the authority of Biomet and its
sublicenees, Biomet will pay all royalties and other amounts of money that, if these activities
were undertaken by Z-Kat, Z-Kat would otherwise be obligated to pay under the respective License
Agreements as a consequence of the activities (“Running



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


6









 




Royalties”), except that for the sublicense granted under the Cedara License Agreement
Biomet will pay royalties to Z-Kat in accordance with Section 4.2.




     4.2 Cedara Royalty Payments.




     (a) For activities undertaken by, on behalf of, or under the authority of Biomet and
its sublicensees pursuant to the sublicense granted to Biomet under the Cedara License
Agreement, Biomet shall advance to Z-Kat royalties payable by Z-Kat to Cedara under the
Cedara License Agreement. Royalties shall be payable by Z-Kat to Cedara on the basis of Net
Revenues (as that term is defined in the Cedara License Agreement) that, but for the
termination of that certain Product Development and Distribution Agreement dated April 22,
2002 between Biomet and Z-Kat, would have been received or receivable by Z-Kat if Z-Kat had
sold to Biomet the Products sold by Biomet or its Affiliates (“Imputed Revenue Payments”).
For the avoidance of any doubt, royalties are payable by Z-Kat to Cedara only if Products
include “CAOS Applications,” as that term is defined in the Cedara License Agreement. The
Imputed Revenue Payments shall be calculated at the end of each calendar quarter according
to the following formula and schedule:



	 	 	 	 	 	 	 	 	 
	 

	 	Margin
	 	=
	 	(ASP – COGS – SFC)
 

	 	 
	 

	 	 	 	 	 	ASP	 	 






	 	 	 
	Margin	 	Imputed Revenue Payment
	0.00< Margin<0.60

	 	.25 x (ASP – COGS – SFC)
	 
	 	 
	0.60< Margin<0.675

	 	.30 x (ASP – COGS – SFC)
	 
	 	 
	0.6750<Margin<.75

	 	.35 X (ASP – COGS – SFC)
	 
	 	 
	0.75<Margin

	 	.40 x (ASP – COGS – SFC)







     (b) Beginning with the first full calendar year following the Specific Kit Distribution
by Biomet, if the aggregate Imputed Revenue Payments do not equal or exceed the amounts for
the periods specified below, then within forty-five (45) days following the end of such
period, the Imputed Revenue Payments shall be increased by the difference between the amount
of the actual Imputed Revenue Payments for such period and the amounts specified below
(“Minimum Imputed Revenue Payment”).



	 	 	 	 	 
	Time Period Following Specific Kit Distribution	 	Minimum Amount	 
	1st year 
	 	$	500,000.00	 
	2nd year 
	 	$	750,000.00	 
	3rd year (first 6 months only) 
	 	$	750,000.00	 






     (c) Notwithstanding the provisions of this Section 4.2, in the event Biomet is required
to pay a non-affiliated third party in connection with the licensing of additional patent
rights or know-how necessary to make, use or sell Products as the result of a claim
of infringement of such third party’s patent rights or know-how by Z-Kat or Biomet and



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


7









 




provided further that if the claim is based on activities or components of Z-Kat and Z-Kat
is unable to resolve such third party claim within sixty (60) days of receiving notice of
such claim, then Biomet may reduce any Imputed Revenue Payments in connection with the sale
of the Products under this Section 4.2 by an amount of monies equal to the amount actually
paid by Biomet to such third party; provided, however, that in no event shall the Imputed
Revenue Payments be reduced by more than fifty percent (50%). Biomet and Z-Kat agree to
notify each other of any such third party claim within ten (10) business days after becoming
aware of such claim.





     (d) For purposes of this Section 4.2, the following terms shall be defined as follows:




     (i) “Affiliates” means the current and future subsidiary companies ultimately
under the control of Biomet, Inc. including, but not necessarily limited to,
Arthrotek, Inc., EBI, L.P., Implant Innovations, Inc. (3i), Walter Lorenz Surgical,
Inc., and Biomet Europe.




     (ii) “ASP” means the average net selling price per unit for each individual
Product which shall be determined by the “Net Sales” (as defined in herein) received
by Biomet (including its Affiliates) from the sale of such Products during a
calendar quarter divided by the number of units sold in that calendar quarter.




     (iii) “COGS” means fully allocated costs of goods sold determined by the Direct
Costs (as defined herein) incurred by Biomet in its manufacturing function (and
related procurement, inventory and shipping activities) with respect to the
Products.




     (iv) “Direct Costs” means costs that can be directly identified with the
manufacture of the Products, including third party expenses incurred by Biomet and
costs that vary in direct proportion to changes in the volume of the Products
produced, and which costs are traceable to such activities, including direct labor,
materials, cost of carrying inventory, and subcontracting costs.




     (v) “Generic Kits” shall mean Products intended for use with products and/or
procedures in one or more of the Business Fields other than products and/or
procedures distributed by Biomet and its Affiliates.




     (vi) “Net Sales” shall mean gross revenues received by Biomet, its Affiliates
and/or its licensees from the sale of the Products, less trade or quantity
discounts, credit for returned or recalled goods, and delivery expenses paid or
borne by Biomet, its Affiliates and/or its licensees.




     (vii) “Products” shall mean any and all digital, minimally invasive,
surgery-integrated software, single use, disposable kits that embody or are made
with substantial Technology, including, but not necessarily limited to, “Generic
Kits” and “Specific Kits” (as defined herein).



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


8









 






     (viii) “SFC” shall mean sales force compensation, including salaries (directly
and solely attributable to the Products) and commissions, paid to sales
representatives for Biomet and its Affiliates in the sale of the Products.




     (ix) “Specific Kits” shall mean Products intended for use specifically with
products and/or procedures sold by Biomet and its Affiliates.




     (x) “Specific Kit Distribution” means Biomet has distributed all six (6) of the
Specific Kits identified in Section 2.1(a)(iii) of that certain Product Development
and Distribution Agreement, dated June 22, 2002, by and between Biomet and Z-Kat.




     (xi) “Technology” shall mean the past, present and future knowledge and work
product of Z-KAT relating to any and all digital minimally invasive surgery
software-integrated systems and components associated with same, including, without
limitation, past, present and future formulation, fabrication, design, manufacturing
processes and techniques, formulas, ideas, inventions, innovations, discoveries,
concepts, know-how, engineering and research data, preclinical and clinical data
material specification, drawings, diagrams, descriptions, reports and records.
Technology shall also include all advancements, developments, improvements, and/or
modifications of the Technology made by Z-KAT during the term of this Agreement, and
all patent applications and patents relating thereto that Z-KAT now owns or
controls, or hereafter shall own or control. Technology shall include past or
present knowledge and work product of Z-KAT relating to digital minimally invasive
surgery software-integrated systems, whether or not such knowledge or work product
has been disclosed or delivered to BIOMET. Technology shall include all past,
present and future intellectual property rights associated with the Technology that
are owned or controlled by Z-KAT at any time.



     4.3 Minimum Royalties.
Biomet will pay, in addition to Running Royalties, a portion of all minimum royalties and
other amounts due under the License Agreements (other than the Allen License Agreement) after the
Effective Date that are necessary to maintain a grant of license or exclusivity under a grant of
license (“Minimum Royalties”). Except for the minimum payments payable to Z-Kat under
Section 4.2, the portion of the Minimum Royalties that Biomet must pay under a given one of the
License Agreements is one-half of the difference between the sum of any amounts actually paid by
Biomet pursuant to Section 4.1 and by Z-Kat under the License Agreement, and the Minimum Royalty
that is otherwise due under the License Agreement.



     4.4 Maintenance Fees and Prosecution Costs.
For those patents, patent applications and other rights included the Sublicensed IP Rights,
for which Z-Kat is obligated under the respective License Agreements to pay renewal fees,
maintenance fees or other taxes (“Maintenance and Prosecution Costs”), Biomet will pay to
Z-Kat one-half of all Maintenance and Prosecution Costs, as provided in Section 4.5(b).



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


9









 





     4.5 Payments.




     (a) Except for Maintenance and Prosecution Costs that Z-Kat incurs, Biomet will pay all
amounts due under this Agreement to a particular Licensor directly to the Licensor if the Licensor
agrees to accept such payments directly from Biomet and to relieve Z-Kat from all obligations or
responsibilities for collecting and paying amounts due from Biomet (as a sublicensee) and for
providing reports. Otherwise, Biomet will pay to Z-Kat all such amounts and provide to Z-Kat any
reports required of Z-Kat or a sublicensee under the respective License Agreements. Z-Kat will
immediately pay those amounts to the respective Licensors.




     (b) Except for Maintenance and Prosecution Costs, and unless Biomet comes to a
different agreement with the Licensor as permitted under section 4.5(a), all of Biomet’s
payments will be due and payable on the same schedules as Z-Kat’s payments are due under the
respective License Agreements. If Biomet must pay Running Royalties and Minimum Royalties
to Z-Kat pursuant to section 4.5(a), Biomet must pay to Z-Kat any and all amounts within 15
days after receipt of written notice from Z-Kat that such payment is due. Biomet must also
deliver to Z-Kat any reports on the activities of Biomet and those under its authority that
are due under the License Agreement.




     (c) One half of Maintenance and Prosecution Costs incurred by Z-Kat will, to the extent
they are reasonable, be reimbursed by Biomet within 45 days of presentation of an invoice or
other document requesting payment. Z-Kat will, at Biomet’s request, supply any available
additional documentation to substantiate the costs.




     (d) In the event Z-Kat fails to make any payment when due and payable under any one of
the License Agreements (other than the Allen License Agreement) and Biomet makes the payment
Z-Kat is otherwise obligated to pay, Biomet may, at its option, pay to the Licensor the
amount due, in which case it may seek reimbursement from Z-Kat for Z-Kat’s share of the
payment that was due, and Z-Kat shall grant to Biomet an exclusive sublicense in addition to
the exclusive license granted in Section 2.1 in all fields outside the Biomet Field under
the particular patent or patent application in connection with which payment was due if
Z-Kat does not reimburse Biomet the amount owned by Z-Kat within 30 days of notice from
Biomet of its payment. However, if there is a genuine dispute with a licensor under a
License Agreement regarding any amount due, Z-Kat’s failure to pay such amount will not give
rise to any obligation to grant to Biomet any additional license, though Z-Kat will remain
obligated to reimburse Biomet for Z-Kat’s share of the amounts paid by Biomet within 45 days
of notice by Biomet of such payment.




     (e) In the event Biomet fails to make any payment which it is obligated to make under
this Agreement to Z-Kat or to any particular Licensor within thirty (30) days after
receiving written notice by Z-Kat of Biomet’s failure to make such payment, then Biomet’s
sublicense under the particular patent or patent application for which such payment was due
shall terminate. However, if there is a genuine dispute between Biomet and a licensor under
a License Agreement regarding any amount due, Biomet’s failure to pay such amount will not
give rise to termination, though Biomet will remain obligated to



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


10









 






reimburse Z-Kat for
Biomet’s share of any amounts paid by Z-Kat within 45 days of notice by Biomet of such
payment.



     4.6 Records and Audit.
Unless Biomet otherwise comes to an agreement with the Licensor pursuant to Section 4.5(a),
Biomet will keep all books, records and other information necessary for Z-Kat to comply with its
obligations under each License Agreement with respect to sublicensees. In the event Biomet pays
Z-Kat Running Royalties and Minimum Royalties pursuant to Section 4.5(a), Biomet (including related
companies and sublicensees) will keep full, clear and accurate records with respect to all Licensed
Products necessary for determining the amounts due to Z-Kat under this Agreement, and will furnish
any information which Z-Kat may reasonably prescribe from time to time to enable Z-Kat to ascertain
the amounts due. Z-Kat may, not more than once per calendar year and only through accredited
auditors, make an examination, following advance notice and during normal business hours, of all
records and accounts bearing upon the amount of royalty payable to it hereunder. The auditors may
disclose only the amounts due and may not disclose any records or other information of Biomet and
their customers. Payments must be made within 60 days to compensate for any errors or omissions
disclosed by such examination. If such audit discloses under-reporting of 5 percent or greater
with respect to the reported sums paid to Z-Kat by Biomet during the applicable period subject to
such audit, Biomet will fully reimburse Z-Kat within 60 days after demand, for the reasonable fees
and disbursements for completing such audit. Otherwise, Z-Kat will be responsible for payment of
the actual costs (including professional fees and disbursements) for each such audit.



ARTICLE V.

Other Obligations of Biomet




     5.1 Marking.
Biomet will comply with any obligations under any one of the License Agreements to place a
patent notice in accordance with 35 U.S.C. §287 on any products made by or on behalf of Biomet,
which are covered by, or made with a process covered by, a US patent included within the
Sublicensed IP Rights. To the extent of any obligation under any License Agreement, Biomet will
also require that each such product made under its authority (other than a product made by, on
behalf of, or under authority of the other Party) will also be marked with a notice in accordance
with 35 U.S.C. §287. Otherwise, Biomet shall not have any obligation to mark any product.



     5.2 Sublicensee Obligations under License Agreements.
Notwithstanding anything to the contrary in this Agreement, Biomet will, with respect to its
sublicense under each of the License Agreements, assume each obligation that a sublicensee must
have under the License Agreement in order to avoid breach of the License Agreement and warrants
that it will comply with all terms and conditions of each License Agreement that apply to
sublicensees.



ARTICLE VI.

Enforcement




     6.1 No Obligation to Enforce; Cooperation.
Subject to the rights of the Licensors of the Sublicensed IP Rights and Technical Information,
neither Party has an obligation to enforce through a legal proceeding any Sublicensed IP Rights or
to join the other Party (and in the case of Biomet, Licensor) in enforcing the Sublicensed IP
Rights or rights in Technical Information



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


11









 




when it would be potentially prejudiced or harmed or when
such enforcement or joinder subject it to substantial, potential liability. Biomet has no right to
enforce any of the Sublicensed IP Rights or rights in Technical Information outside the Biomet
Field. Z-Kat has no right to enforce
the Sublicensed IP Rights or rights in Technical Information inside the Biomet Field. In the
event one Party desires to bring a legal action to enforce any of the Sublicensed IP Rights or
rights in Technical Information, the Parties will act promptly and in good faith, subject to the
rights of the relevant Licensor of each of the Sublicensed IP Rights or rights in Technical
Information to be enforced, to negotiate terms and conditions under which one or both of the
Parties may bring the action.




ARTICLE VII.

Limited Warranties




     7.1
Z-Kat warrants that it has the right and authority to grant the sublicenses it has granted to
Biomet in this Agreement.



     7.2
Each Party warrants that it will comply in all materials respects with all federal, state,
local or other laws, statutes, ordinances, regulations and any applicable orders or demands of any
court, commission, board, agency or other governmental authority.



     7.3
Each Party covenants that it will not terminate or take any action that would cause or permit
termination of the License Agreements. Z-Kat covenants that it will not amend the License`
Agreements or take any other actions that would limit the sublicenses granted under this Agreement.



ARTICLE VIII.

Bankruptcy




     Z-Kat and Biomet each acknowledges that this Agreement is an “executory contract” as provided
in Section 365(n) of Title 11, United States Code (the “Bankruptcy Code”). Z-Kat acknowledges that
if it as a debtor in possession or a trustee in Bankruptcy in a case under the Bankruptcy Code
rejects this Agreement, Biomet, as licensee, may elect to retain its rights under this Agreement as
provided in Section 365(n) of the Bankruptcy Code. Upon written request of the Biomet, as
licensee, to Z-Kat as a debtor in possession or the Bankruptcy Trustee, Z-Kat or such Bankruptcy
Trustee shall not interfere with the rights of Biomet, as licensee, as provided in this Agreement.



ARTICLE IX.

Indemnification




     9.1 Indemnification.




     (a) Subject to the provisions of this Article IX, including, without limitation,
Section 9.2, Z-Kat will indemnify in respect of, and hold Biomet and its officers,
directors, employees and agents harmless against, any and all damages, claims, deficiencies,
losses, including taxes, and all expenses (including interest, penalties, and attorneys’ and
accountants’ fees and disbursements but reduced by any tax savings, benefits or offsets to
which any party shall be entitled directly or indirectly by reason



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


12









 






thereof) (collectively
“Damages”), resulting from (i) any misrepresentation, breach of warranty or failure
to perform any covenant or agreement on the part of Z-Kat under this Agreement or (ii)
failure to maintain any of the License Agreements. Z-Kat further
agrees to indemnify in respect of, and hold Biomet, its officers, directors, employees
and agents harmless against, all Damages, injuries and deaths resulting directly or
indirectly from production, manufacture, sale, marketing, lease, use of a product or service
by Z-Kat or its Affiliates, except to the extent such Damages, injury or death results from
the negligence, gross negligence or intentional misconduct of Biomet, its employees,
officers and directors.




     (b) Subject to the provisions of this Article IX, including, without limitation,
Section 9.2, Biomet agrees to indemnify in respect of, and hold Z-Kat and its officers,
directors, employees and agents harmless against, any and all Damages resulting from any
misrepresentation, breach of warranty, or failure to perform any covenant or agreement on
the part of Biomet under this Agreement. Biomet further agrees to indemnify in respect of,
and hold Z-Kat, the Licensors, and their respective offices, directors, employees and agents
harmless against, all Damages, injuries and deaths resulting directly or indirectly from
production, manufacture, sale, marketing, lease, use of a product or service by Biomet or
its affiliates, except to the extent such Damages, injury or death results from the
negligence, gross negligence or intentional misconduct of Z-Kat, the Licensors, or their
respective employees, officers and directors.



9.2 Method of Asserting Claims, Etc.
The party or parties claiming indemnification under this Article (whether one or more) are
hereinafter collectively referred to as the “Indemnified Party” and the party against whom such
claims are asserted hereunder is hereinafter referred to as to the “Indemnifying Party.” All claims
for indemnification by any Indemnified Party under this Article V will be asserted and resolved as
follows:




     (a) In the event that any claim or demand for which an Indemnifying Party would be
liable to an Indemnified Party hereunder is asserted against or sought to be collected from
such Indemnified Party by a third party (a “Third Party Claim”), such Indemnified Party will
with reasonable promptness notify the Indemnifying Party of such claim or demand, specifying
the nature of and specific basis for such claim or demand and the amount or the estimated
amount thereof to the extent then feasible (which estimate will not be conclusive of the
final amount of such claim and demand (the “Claim Notice”)). The Indemnifying Party will
not be obligated to indemnify such Indemnified Party with respect to any such claim or
demand to the extent the failure of such Indemnified Party to promptly notify the
Indemnifying Party of such a claim or demand materially prejudices the Indemnifying Party’s
ability to defend against the claim or demand. The Indemnifying Party will have 30 days
from the personal delivery or mailing of the Claim Notice (the “Notice Period”) to notify
such Indemnified Party (i) whether or not it disputes the liability of the Indemnifying
Party to such Indemnified Party hereunder with respect to such claim or demand and (ii)
whether or not it desires at the sole cost and expense of the Indemnifying Party, to defend
such Indemnified Party against such claim or demand; provided, however, that such
Indemnified Party is hereby authorized prior to and during the Notice Period to file any
motion, answer or other pleading which it deems necessary or appropriate to protect its
interests or those of the



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


13









 






Indemnifying Party and not materially prejudicial to the
Indemnifying Party. In the event
that the Indemnifying Party notifies such Indemnified Party within the Notice Period
that it desires to defend such Indemnified Party against such claim or demand, except as
hereinafter provided, the Indemnifying Party will have the right to defend by all
appropriate proceedings. If such Indemnified Party desires to participate in, but not
control, any such defense or settlement it may do so at its sole cost and expense. If
requested by the Indemnifying Party, such Indemnified Party agrees to cooperate with the
Indemnifying Party and its counsel in contesting any claim or demand which the Indemnifying
Party elects to contest, and, if appropriate and related to the claim in question, in making
any counterclaim against the person asserting the third party claim or demand, or any
cross-complaint against any person. No claim may be settled by the Indemnifying Party
without the consent of such Indemnified Party, which consent will not be unreasonably
withheld. Notwithstanding the foregoing, in connection with a Third Party Claim asserted
against both such Indemnified Party and the Indemnifying Party, if (i) such Indemnified
Party has available to it defenses which are in addition to those available to the
Indemnifying Party, (ii) such Indemnified Party has available to it defenses which are
inconsistent with the defenses available to the Indemnifying Party or (iii) a conflict
exists or may reasonably be expected to exist in connection with the representation of both
such Indemnified Party and the Indemnifying Party by the legal counsel chosen by the
Indemnifying Party, such Indemnified Party will have the right to select its own legal
counsel. If such Indemnified Party selects its own legal counsel pursuant to the
immediately preceding sentence and the underlying Third Party Claim is otherwise subject to
the scope of the indemnification obligations of the Indemnifying Party pursuant to this
Article IV, the reasonable fees and expenses of such legal counsel will be included within
the indemnification obligations of the Indemnifying Party; provided that under no
circumstances will the Indemnifying Party be obligated to indemnify such Indemnified Party
against the fees and expenses of more than one legal counsel selected by such Indemnified
Party in connection with a single claim (notwithstanding the number persons against whom the
Third Party Claim may be asserted).




     (b) In the event any Indemnified Party should have a claim against any Indemnifying
Party hereunder which does not involve a claim or demand being asserted against or sought to
be collected from it by a third party, such Indemnified Party will send a Claim Notice with
respect to such claim to such Indemnifying Party. If such Indemnifying Party does not
notify such Indemnified Party within the Notice Period that such Indemnifying Party disputes
such claim, the amount of such claim will be conclusively deemed a liability of such
Indemnifying Party hereunder.



ARTICLE X.

Term and Termination




     10.1 Term.
This Agreement will become effective as of the Effective Date and will continue until
terminated according to its terms or until all of the License Agreements terminate.



     10.2 Voluntary Termination By Biomet.
Biomet may voluntarily terminate this Agreement upon 60 days written notice to Z-Kat.



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


14









 





     10.3 Survival.




     (a) To the extent permitted by the respective License Agreements, or to the extent
Biomet and the respective Licensor agree, Z-Kat’s grant of sublicense to Biomet under the
License Agreement will survive termination of the License Agreement. Otherwise, the
sublicense will terminate with respect to any terminated License Agreement.




     (b) If a grant of sublicense to Biomet is terminated (or does not survive termination
of the License Agreement under which it is granted), Biomet will cease all use of the
Technical Information that is sublicensed pursuant to the terminated sublicense and either
destroy all copies of it or return it to Z-Kat, as directed by Z-Kat or the Licensor of the
Technical Information.`




     (c) Articles I, III and IX will survive and continue after termination. Any amounts
due under Article IV prior to termination will remain due and become immediately payable.



ARTICLE XI.

Miscellaneous Provisions




     11.1 Registration and Recordation of License Agreement.
Notwithstanding the obligations of confidentiality of Article III, each Party consents to
registration of this Agreement if required by law, for the grants of licenses to be effective, or
to make it effective against subsequent assignees or licensees. Specifically, and without limiting
the foregoing, each Party consents to recordation of this Agreement in connection with any patents
or copyright registrations included in the Sublicensed IP Rights. However, Exhibits A-E must be
removed or redacted to show only the patents and copyright registrations and no additional
information.



     11.2 Assignment.
Either party may assign this Agreement, but only upon notice to the other party specifying the
assignee and only if the assignee agrees to be bound by all of the terms and conditions of the
Agreement. This Agreement will be binding on successors in interest and permitted assigns.



     11.3 Notices.
All notices and other communications which are required or which may be given under the
provisions of this Agreement will be in writing and may be delivered (a) personally, (b) by
facsimile transmission, (c) expedited delivery service with proof of delivery or (d) sent by United
States Mail, postage prepaid, registered or certified, return receipt requested, addressed as
follows:



	 	 	 	 	 
	 

	 	If to Z-Kat:
	 	Z-Kat, Inc.
	 

	 	 	 	2903 Simms Street
	 

	 	 	 	Hollywood FL 33020
	 

	 	 	 	Phone: (954) 927-2044
	 

	 	 	 	Facsimile: (954) 927-0446
	 

	 	 	 	Attention: Chief Financial Officer






[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


15









 






	 	 	 	 	 
	 

	 	 	 	With a copy (which will not constitute notice) to:
	 
	 	 	 	 
	 

	 	 	 	Munsch, Hardt, Kopf & Harr, P.C.
	 

	 	 	 	4000 Fountain Place
	 

	 	 	 	1445 Ross Avenue
	 

	 	 	 	Dallas, Texas 75202-2790
	 

	 	 	 	Attn: Marc Hubbard, Esq.
	 

	 	 	 	Phone: (214) 855-7571
	 

	 	 	 	Fax: (214) 855-7584
	 
	 	 	 	 
	 

	 	If to Biomet:
	 	Biomet Manufacturing Corp.
	 

	 	 	 	56 E. Bell Drive
	 

	 	 	 	Warsaw, IN 46582
	 

	 	 	 	Attn: Daniel P. Hann General Counsel
	 

	 	 	 	Phone: 574-372-1539
	 

	 	 	 	Fax: 574-372-1960
	 
	 	 	 	 
	 

	 	 	 	With a copy (which will not constitute notice) to:
	 
	 	 	 	 
	 

	 	 	 	Bose McKinney & Evans, LLP
	 

	 	 	 	135 North Pennsylvania Street, Ste. 2700
	 

	 	 	 	Indianapolis, Indiana 46204
	 

	 	 	 	Attn: Jim Coles, Esq.
	 

	 	 	 	Phone: (317) 684-5251
	 

	 	 	 	Fax: (317) 223-0251





or to such other address designated by the parties as provided above. Any such notice will be
deemed to have been given either at the time of personal delivery or, in the case of delivery
service or mail, as of the date of first attempted delivery at the address and in the manner
provided herein.




     11.4 Choice of Law.
THIS AGREEMENT WILL BE GOVERNED BY AND CONSTRUED IN ACCORDANCE WITH THE LAWS OF THE STATE OF
FLORIDA (EXCLUSIVE OF CONFLICTS OF LAW PRINCIPLES).



     11.5 Captions.
The captions, headings, and arrangements used in this Agreement are for convenience only and
do not in any way affect, limit, amplify, or modify its terms and provisions.



     11.6 No Strict Construction.
This Agreement is the result of substantial negotiations among the Parties and their counsel
and has been prepared by their joint efforts. Accordingly, the fact that counsel to one Party or
another may have drafted this Agreement or any portion of this Agreement is immaterial and this
Agreement will not be strictly construed against any Party.



     11.7 Severability and reformation.
Wherever possible, each provision of this Agreement will be interpreted in such manner as to
be effective. If any provision of this



[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


16









 






Agreement is held to be illegal, invalid, or unenforceable
under present or future laws effective during the term of this Agreement, such provision will be
fully severable and this Agreement will be construed and enforced as if such illegal, invalid, or
unenforceable provision had never comprised a part of this Agreement, and the remaining provisions
of this Agreement will remain in full force and effect. Furthermore, in lieu of each such illegal,
invalid, or unenforceable provision, there will be added automatically as a part of this Agreement
a provision as similar in terms to such illegal, invalid, or unenforceable provision as may be
possible and be legal, valid, and enforceable; provided, however, that, if any such change will
materially diminish the practical realization of the benefits intended to be conferred to any party
to this Agreement, such party may terminate this Agreement upon written notice to each other party
within 30 days after learning such change has been effected.



     11.8 Consents; Waivers.
Any consent or approval required as a condition to an action under this Agreement will be
effective only (a) if in writing and signed by the Party whose consent is sought, (b) with respect
to the specific matter made the subject to such consent or approval (and no other matter), and (c)
for the specific instance(s) expressly set forth in such consent or approval (and no earlier or
subsequent instances). Any Party may waive any condition, covenant, term, or provision of this
Agreement, but any such waiver will be effective only (a) if in writing and signed by the Party
sought to be bound by such waiver, (b) with respect to the specific condition, covenant, term, or
provision expressly made the subject to such waiver (and no other condition, covenant, term, or
provision), and (c) for the specific instance(s) expressly set forth in such waiver (and no earlier
or subsequent instances). Without limiting the foregoing sentence, none of the following will
constitute a waiver of the rights of a Party to this Agreement to demand exact compliance with the
conditions, covenants, terms, and provisions of this Agreement: (a) a failure of such Party to
exercise any power reserved to it in this Agreement; (b) a failure of such Party to insist upon
compliance by any other Party to this Agreement with any condition, covenant, term, or provision in
this Agreement; (c) a delay, forbearance, or omission of such Party to exercise any power; or (d)
any custom or practice of the Parties at variance with the terms of this Agreement. The consent or
approval of any Party to this Agreement with respect to the act of any other Party to this
Agreement will not be deemed to waive or render unnecessary consent to or approval of any
subsequent similar act. Subsequent acceptance by a Party to this Agreement of any performance due
to it under this Agreement will not be deemed to be a waiver by such first Party of any preceding
breach by any other Party of any terms, provisions, covenants, or conditions of this Agreement.



     11.9 Force Majeure.
Neither party will be in default or otherwise liable for any delay in or failure of its
performance under this Agreement if such delay or failure arises by any reason beyond its
reasonable control, including any act of God, any acts of the common enemy, the elements,
earthquakes, floods, fires, epidemics, riots, failures or delay in transportation or
communications, or any act or failure to act by the other party or such other party’s employees,
agents, or independent contractors or representatives; provided, however, that lack of funds
will not be deemed to be a reason beyond a party’s reasonable control. The parties will promptly
inform and consult with each other as to any of the above causes that in their judgment may or
could be the cause of a delay in the performance of this Agreement.



     11.10 Legal Costs.
If any action is brought to enforce or interpret the terms of this Agreement (including
through arbitration), the prevailing Party will be entitled to reasonable




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



17









 








legal fees, costs, and
disbursements in addition to any other relief to which such Party may be entitled.



     11.11 Equitable Remedies.
Each Party to this Agreement recognizes that the obligations imposed on it in Articles II and
III are special, unique, and of extraordinary character. Accordingly, each Party to this Agreement
agrees and declares that it is impossible to measure in money the damages that will accrue by
reason of its failure to perform any of its obligations under Articles II and III and that, in the
event of breach by it of any such obligation, the remedy at law for such breach will be inadequate.
Therefore, each Party to this Agreement, by execution of this Agreement, waives the claim or
defense that there is an adequate remedy at law and agrees it will not urge in any action or
proceeding to which it is a party that relates to Articles II and III the claim or defense that
such remedy at law exists. Furthermore, the parties, by execution of this Agreement, agree that
each other Party is entitled (without proving damages or posting bond) to equitable remedies,
including specific performance and injunctive relief (in addition to damages) as a remedy for the
enforcement of Articles II and III.



     11.12 Integration.
This Agreement sets forth the entire agreement and understanding between the Parties as to the
subject matter hereof and merges all prior discussions between them. Neither of the Parties shall
be bound by any warranties, understandings or representations with respect to such subject matter
other than as expressly provided herein or in a writing signed with or subsequent to execution
hereof by an authorized representative of the Party to be bound thereby.



     11.13 No Partnership.
Neither this Agreement, nor any terms and conditions contained herein, will be deemed or
construed to create a partnership, joint venture, other form of business enterprise or association
or cooperative arrangement, agency relationship, or franchise relationship between the Parties or
otherwise to create any liability for either Party whatsoever with respect to the indebtedness,
liabilities, and obligations of the other Party.



     11.14 Counterparts.
This Agreement may be executed in any number of counterparts and will be effective when each
Party to this Agreement has executed at least one counterpart, with the same effect as if all
signing parties had signed the same document. All counterparts will be construed together and
evidence only one agreement, which, notwithstanding the actual date of execution of any
counterpart, will be deemed to be dated the day and year first written above. In making proof of
this Agreement, it will not be necessary to account for a counterpart executed by any Party other
than the Party against whom enforcement is sought or to account for more than one counterpart
executed by the Party against whom enforcement is sought.



     11.15 Facsimile Signatures.
The manual signature of any Party to this Agreement that is transmitted to any other Party or
counsel to any other Party by facsimile will be deemed for all purposes to be an original
signature.



[NEXT PAGE IS SIGNATURE PAGE]




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


18









 








     IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed in duplicate
originals by its duly authorized representatives on the respective dates entered below.



	 	 	 	 	 	 	 
	 	 	Z-Kat, Inc.	 	 
	 
	 

	 	By:	 	 	 	 
	 

	 	 	 	 

	 	 
	 
	 	 	 	 	 	 
	 

	 	Name:	 	 	 	 
	 

	 	 	 	 

	 	 
	 
	 	 	 	 	 	 
	 

	 	Title:	 	 	 	 
	 

	 	 	 	 

	 	 
	 
	 	 	 	 	 	 
	 

	 	Date:	 	 	 	 
	 

	 	 	 	 

	 	 
	 
	 	 	 	 	 	 
	 	 	Biomet Manufacturing Corp.	 	 
	 
	 	 	 	 	 	 
	 

	 	By:	 	 	 	 
	 

	 	 	 	 

	 	 
	 
	 	 	 	 	 	 
	 

	 	Name:	 	 	 	 
	 

	 	 	 	 

	 	 
	 
	 	 	 	 	 	 
	 

	 	Title:	 	 	 	 
	 

	 	 	 	 

	 	 
	 
	 	 	 	 	 	 
	 

	 	Date:	 	 	 	 
	 

	 	 	 	 

	 	 





[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.



19









 






EXHIBIT A




[CCF LICENSE AGREEMENT]





[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated
December 28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(c) to such Asset
Contribution Agreement Addendum (i.e., the Sublicense Agreement between Z-KAT, Inc. and
Biomet Manufacturing Corp.) did not and does not include this exhibit.]




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


20









 








EXHIBIT B




[CEDARA LICENSE AGREEMENT]





[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated
December 28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(c) to such Asset
Contribution Agreement Addendum (i.e., the Sublicense Agreement between Z-KAT, Inc. and
Biomet Manufacturing Corp.) did not and does not include this exhibit.]





[***] Confidential treatment has been requested for portions of this exhibit. The copy filed herewith omits the information subject to the confidentiality request. Omissions are designated as [***]. A complete version of this exhibit has been filed separately with the Securities and Exchange Commission.




59









 








EXHIBIT C




[NWU LICENSE AGREEMENT]





[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated
December 28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(c) to such Asset
Contribution Agreement Addendum (i.e., the Sublicense Agreement between Z-KAT, Inc. and
Biomet Manufacturing Corp.) did not and does not include this exhibit.]





[***] Confidential treatment has been requested for portions of this exhibit. The copy filed herewith omits the information subject to the confidentiality request. Omissions are designated as [***]. A complete version of this exhibit has been filed separately with the Securities and Exchange Commission.





79











 





EXHIBIT D

[ALLEN LICENSE AGREEMENT]





[Both now and at the time of execution, the Asset Contribution Agreement Addendum, dated
December 28, 2006, between MAKO Surgical Corp. and Z-KAT, Inc., Exhibit 1.1(c) to such Asset
Contribution Agreement Addendum (i.e., the Sublicense Agreement between Z-KAT, Inc. and
Biomet Manufacturing Corp.) did not and does not include this exhibit.]




[***] Confidential treatment has been requested for portions of this exhibit.
The copy filed herewith omits the information subject to the confidentiality request.
Omissions are designated as [***]. A complete version of this exhibit has been filed
separately with the Securities and Exchange Commission.


96









 





EXHIBIT E




SUBLICENSED IP RIGHTS




Patents



All patents and patent applications licensed to Z-Kat under the Cedara License Agreement, the CCF
Agreement, the NWU Agreement, and the Allen License Agreement.



Copyrights



All copyrights and copyright registrations licensed to Z-Kat under the Cedara License Agreement,
the CCF Agreement, and the NWU Agreement.



Technical Information



All Technical Information, including without limitation know-how and software, licensed to

Z-Kat under the Cedara License Agreement, the CCF Agreement, and the NWU Agreement.