exv10w1



 





Exhibit 10.1




INNOVATION, PROPRIETARY INFORMATION

AND CONFIDENTIALITY AGREEMENT




     As a condition of becoming employed or retained as a consultant by Xcorporeal, Inc., a
Delaware corporation (together with any of its current or future affiliates, successors or assigns,
collectively, the “Company”), and in consideration of my employment or consulting relationship with
the Company and my receipt of the compensation paid to me by the Company, I agree to the following:



Recitals




     A. The Company is dedicated to a policy of exerting a significant influence in its chosen
fields through technical innovation and creative administration and marketing. The competitive
success of this policy depends to a large extent on the Company’s ability to maintain a free flow
of pertinent information among its employees and consultants.



     B. All key employees and consultants are required to sign this standard Agreement, under
which: (i) requirements are specified for avoiding conflicting outside activities while
associated with the Company, (ii) the Company is assured of disclosure of, and exclusive rights to,
my inventions, ideas and works which relate to Company business, and (iii) the Company is protected
against unauthorized disclosure of confidential information of the Company or other persons and
against retention of Company records.



Agreement




     1. Confidential Information.



          (a) I agree at all times during the term of my relationship with the Company and thereafter,
to hold in strictest confidence, and not to (i) use, except for the benefit of the Company, (ii)
disclose to any person or entity without written authorization of the Board of Directors of the
Company, or (iii) make copies of, except as authorized by Company, any of the following:
confidential or proprietary information, inventions, trade secrets, know-how, theories, research,
data, plans, products, services, suppliers, customers, prices, costs, markets, software, hardware,
developments, improvements, processes, formulas, methods, technology, machines, apparatus, designs,
drawings, engineering, configurations, laboratory notebooks, licenses, finances, budgets or
projections, directly or indirectly created, conceived, invented, made, discovered, developed,
worked on, learned by or disclosed to me during the course of my relationship with the Company,
either orally, in writing, or by observation, whether or not during working hours (all of the
foregoing, collectively, “Confidential Information”).




          (b) Confidential Information includes, but is not limited to, information pertaining to any
aspect of the Company’s business or any use or application arising out of or relating to any: (i)
portable or continuous dialysis method or device, specifically including any wearable artificial
kidney, or related device, (ii) portable or continuous ultra-filtration method or device,
specifically including any congestive heart failure device, or related device, (iii) device, method
or treatment for kidney failure or congestive heart failure, (iv) “Technology” or “Licensed
Product” as defined in the Company’s September 1, 2006 License Agreement, or (v)


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medical device, treatment or method substantially similar in functionality to any of the
foregoing; (all of the foregoing, collectively, the “Products”).




          (c) Confidential Information does not include any information that is publicly and widely
known and made generally available through no wrongful act of mine or of others who were under
confidentiality obligations. In these regards, although certain information or technology may be
generally known in the relevant industry, the fact that the Company uses same, and how the Company
uses same, may not be so known and therefore is Confidential Information. Furthermore, the fact
that various fragments of information or data may be generally known in the relevant industry does
not mean that the manner in which the Company combines them and the results obtained thereby are so
known and in such instance are also Confidential Information. Confidential Information also does
not include information that I can show be clear and convincing documentary evidence was known to
me prior to its disclosure to me by the Company.




          (d) I recognize that the Company has received and in the future will receive from third
parties their confidential or proprietary information subject to a duty on the Company’s part to
maintain the confidentiality of such information and to use it only for certain limited purposes. I
agree to hold all such confidential or proprietary information in the strictest confidence and not
to disclose it to any person or entity, or to use it except as necessary in carrying out my work
for the Company, consistent with the Company’s agreement with such third party.




     2. Conflicts of Interest.



          (a) During the term of my employment or consulting relationship with Company, I will not,
without the prior written approval of the President or Chief Executive Officer of the Company,
directly or indirectly, participate in or assist any person or business that is a current or
potential competitor, customer or supplier of the Company. For these purposes, a current or
potential competitor of the Company is any person or entity that has developed, is developing, is
seeking to develop, or is selling, marketing or distributing any Products. I understand that the
purpose of these restrictions is to avoid conflicts of interest and to avoid inadvertent trade
secret disclosure during periods I am most likely to retain valuable Company trade secrets.




          (b) I represent that my performance of all the terms of this Agreement and my work for the
Company does not and will not breach any invention assignment, proprietary information,
confidentiality or other agreement with any former employer or other party, or create any conflict
of interest with anyone. I will not disclose to the Company or use for the benefit of the Company
any confidential information derived from sources other than employment or consultation with the
Company. I agree that if I am in doubt as to the confidential status of any information, I will
refer to an executive officer of the Company the question of whether such information is available
for disclosure and use for the benefit of the Company.




          (c) I have not and will not enter into any other agreement with any other person or entity,
either written or oral, in conflict with the terms of this Agreement.




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     3. Inventions.



          (a) Disclosure. I will immediately disclose to the Company all discoveries,
inventions, ideas, improvements, works of authorship, developments, concepts, trade secrets,
Confidential Information, and other intellectual property, whether or not patentable or
copyrightable (collectively, “Work Product”), that I create, conceive, invent, make, discover,
develop, work on, or reduce to practice, in whole or in part, during the term of my employment or
consulting relationship with Company, either solely or jointly with others, whether or not in the
course of my employment, whether or not reduced to drawings, written description, documentation,
models, or other tangible form.




          (b) Work for Hire. I further acknowledge that all Work Product other than Personal
Inventions is “work made for hire” to the greatest extent permitted by applicable law and are
compensated by my salary (if I am an employee) or by such amounts paid to me under any applicable
consulting agreement or consulting arrangements (if I am a consultant), unless regulated otherwise
by mandatory applicable law.




          (c) Assignment. I will hold in trust for the sole right and benefit of the Company
all Work Product other than Personal Inventions, and all such Work Product will forthwith and
without further consideration become and be the exclusive property of the Company. I hereby
absolutely, unconditionally and irrevocably assign, transfer and convey to the Company all Work
Product and all rights in, to, arising out of, or relating to any Work Product, including without
limitation all patents, copyrights, trademarks, mask works and other statutory and common law
protections in all countries, except Personal Inventions and inventions that qualifies fully for
exemption under California Labor Code Section 2870 or any other applicable law. I hereby appoint
the Company’s Secretary or any other officer of the Company as my attorney-in-fact and agent to
execute all documents required or appropriate to perfect or enforce all rights assigned under this
Agreement.




          (d) Sole Exception. The assignment requirement of the preceding section will not
apply to Work Product for which all of the following conditions are met: (i) no equipment,
supplies, facilities, or trade secret information of the Company was used, (ii) was developed
entirely on my own time, (iii) does not arise out of or relate in any way to the Products, the
business of the Company, or the Company’s actual or demonstrably anticipated research or
development, and (iv) does not result, in whole or in part, from any work performed by me for the
Company. Work Product satisfying all of these conditions is hereinafter referred to as “Personal
Inventions.” I agree that if I am in doubt as to whether any given Work Product must be disclosed
to the Company by the terms of this Agreement, I will refer such question to the management of the
Company.




          (e) Assistance. I will assist the Company in every reasonable way, including without
limitation (i) signing of all papers, authorizations, applications and assignments, (ii) making and
keeping proper records of all Work Product, (iii) giving evidence and testimony (all at the
Company’s reasonable expense), to obtain and to maintain for the use and benefit of the Company or
its nominees all patents, copyrights, mask works and other protections, in all countries, for all
Work Product. My obligations under this Section will extend beyond the termination of my
employment or consulting relationship with the Company.






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          (f) Schedule A. I have attached hereto, as Schedule A, a list describing with
particularity all Work Product, including Personal Inventions, that (i) was made by me prior to the
commencement of my relationship with the Company, (ii) belongs solely, or jointly with others, to
me or an entity in which I own or control a direct, indirect or beneficial interest, (iii) relates
in any way to any of the Products or any application or use thereof, and (iv) is not assigned to
the Company hereunder (collectively, the “Prior Inventions”); or, if no such list is attached, I
represent that there are no Prior Inventions.




          (g) If, in the course of my relationship with the Company, I incorporate into a Company
product, process or machine a Prior Invention owned by me (or, to the extent I have the ability to
do so, in which I have an interest), the Company is hereby granted and shall have a non-exclusive,
royalty-free, irrevocable, perpetual, worldwide license (with the right to sublicense) to make,
have made, copy, modify, make derivative works of, use, sell and otherwise distribute such Prior
Invention as part of or in connection with such product, process or machine.




     4. Records.



          (a) I will keep and maintain adequate and current written records of all Work
Product made by me (solely or jointly with others) during the term of my relationship with the
Company. The records may be in the form of notes, sketches, drawings, flow charts, electronic data
or recordings, laboratory notebooks, and any other format. The records will be available to and
remain the sole property of the Company at all times. I will not remove such records from the
Company’s place of business except as expressly permitted by Company policy for the purpose of
furthering the Company’s business.




          (b) All data and records coming into my possession or kept by me in connection with the
Company are the exclusive property of the Company. Any property situated on the Company’s premises
or owned by the Company, including disks and other storage media, filing cabinets or other work
areas, is subject to inspection by Company personnel at any time, with or without notice.




          (c) I will return to the Company all originals and copies of such data and records upon
termination of my relationship for any reason, unless specific written consent is obtained from an
executive officer of the Company to retain any such data or records. In the event of the
termination of the relationship, I agree to sign and deliver the “Termination Certification”
attached hereto as Schedule B.




     5. Non-Solicitation. During my relationship with the Company and for a period one
year thereafter, I will not, without the express prior written permission of an executive officer
of the Company, solicit or encourage (nor will I direct or encourage anyone under my authority or
control to solicit or encourage) any of the Company’s employees or full-time consultants to work
elsewhere.



     6. Equitable Relief. The Company will have the right to enforce this Agreement and
any of its provisions by injunction, specific performance or other equitable relief, without bond
and without prejudice to any other rights or remedies the Company may have, because a breach of
this Agreement will cause irreparable harm for which there is no adequate remedy at law.



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     7. Insider Trading. I am aware that the United States securities laws prohibit any
person who has material, non-public information concerning the Company from purchasing or selling
securities of the Company or from communicating such information to any other person under
circumstances in which it is reasonably foreseeable that such person is likely to purchase or sell
such securities.



     8. At Will Relationship. Except as set forth in a written agreement signed by the
Chairman, President or CEO of the Company, by employment or consulting relationship with the
Company is at will, and may be terminated by me or the Company at any time. Except as otherwise
provided herein, the provisions of this Agreement will survive termination of my relationship with
the Company.



     9. General.



          (a) This Agreement will not be terminated or altered by changes in duties compensation, or
other terms of my employment or consulting arrangement.




          (b) Disclosure. I hereby authorize the Company to disclose this Agreement and my
responsibilities hereunder to any person or entity, including without limitation, my future
employers or clients.




          (c) Severability. The invalidity or unenforceability of any provisions of this
Agreement under particular facts and circumstances will not affect the validity or enforceability
either of other provisions of this Agreement or, under other facts and circumstances, of such
provisions. In addition, such provisions will be reformed to be less restrictive if under such
facts and circumstances they would then be valid and enforceable.




          (d) Governing Law. The validity, construction and performance of this Agreement will
be governed by the laws, without regard to the laws as to choice or conflict of laws, of the State
of California.




          (e) Arbitration. Any dispute, controversy or claim arising out of or relating to this
Agreement, or my employment or consulting relationship with the Company, including without
limitation the issue of arbitrability, will be resolved by final and binding arbitration before a
retired judge at JAMS or its successor in Santa Monica, California. To the maximum extent
permitted by applicable law he prevailing party will be awarded its arbitration, attorney and
expert witness fees, costs and expenses. Judgment on any interim or final award of the arbitrator
may be entered in any court of competent jurisdiction.




          (f) Headings. The Section and other headings contained in this Agreement are for
reference purposes only and will not affect in any way the meaning or interpretation of this
Agreement.




          (g) Waiver. No waiver by either party of a breach of any provision of this Agreement
will be construed as a waiver of any subsequent or different breach, and no forbearance by a party
to seek a remedy for noncompliance or breach by the other party will be construed as a waiver of
any right or remedy with respect to such noncompliance or breach.




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          (h) Amendment. This Agreement may be amended, modified or supplemented only by a
writing executed by the Chairman, President or CEO of the Company.




          (i) Entire Agreement. This Agreement is the only agreement and understanding between
the parties pertaining to the subject matter of this Agreement, and supersedes all prior
agreements, summaries of agreements, descriptions of compensation packages, discussions,
negotiations, understandings, representations or warranties, whether verbal or written, between the
parties pertaining to such subject matter.




	 	 	 
	________________________________

	 	________________________________
	Signature

	 	Date
	 
	 	 
	________________________________
	 	 
	Printed Name
	 	 







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Schedule A




LIST OF PRIOR INVENTIONS




	 	 	 
	___

	 	I have no Prior Inventions as defined in the Innovation, Proprietary Information And
Confidentiality Agreement.
	 
	 	 
	___

	 	I have the following Prior Inventions:






	 	 	 	 	 	 	 	 	 
	No.	 	Title	 	 	Description	 
	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 




Number of Prior Inventions listed (if any): ___



Number of additional pages attached (if any): ___





	 	 	 
	________________________________

	 	________________________________
	Signature

	 	Date
	 
	 	 
	________________________________
	 	 
	Printed Name
	 	 







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Schedule B




TERMINATION CERTIFICATION




     This is to certify that I do not have in my possession, nor have I failed to return, any
devices, records, data, notes, reports, proposals, lists, correspondence, specifications, drawings,
blueprints, sketches, laboratory notebooks, flow charts, materials, equipment, other documents or
property, or copies or reproductions of any aforementioned items belonging to Xcorporeal, Inc., its
affiliates, successors or assigns (together the “Company”).



     I further certify that I have complied with all the terms of the Innovation, Proprietary
Information And Confidentiality Agreement (“Agreement”) signed by me, including the reporting of
any inventions and Work Product (as defined therein), conceived or made by me (solely or jointly
with others) covered by the Agreement, and the return do all Company documents and records.




	 	 	 
	________________________________

	 	________________________________
	Signature

	 	Date
	 
	 	 
	________________________________
	 	 
	Printed Name
	 	 






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