Exhibit 10.2


 


***Text Omitted and Filed Separately


with the Securities and Exchange Commission.


Confidential Treatment Requested


Under 17 C.F.R. Sections 200.80(b)(4)


and 240.24b-2.


 


INTELLECTUAL PROPERTY PURCHASE AGREEMENT ADDENDUM


 


THIS
Agreement Addendum (“Addendum”) is entered into as of August 12, 2005 (the
“Addendum Date”) by and between by and between NuVasive, Inc., a Delaware
corporation (“Buyer” or “NuVasive”) and Spine Partners, LLC, an Ohio limited
liability company (“Seller”) with the purpose of amending that certain Intellectual
Property Purchase Agreement dated October 10, 2002 between Seller and
NuVasive (“IP Purchase Agreement”) as follows:


 


1.             Recitals.
The Recitals Section of the IP Purchase Agreement is superseded and
replaced by the following new Recitals Section:


 


Recitals


 


1.             Seller
is the owner of the entire right, title, and interest in and to certain
intellectual property, including US Patent Application Ser. No. 10/105,971
and International Patent Application PCT/US02/11301 (both entitled “Spinal
Alignment Apparatus and Methods”), US Patent Application Ser. No. 60/384,966
(entitled “Anterior Cervical Plate”), and US Patent Application Ser. No. 10/108,287
and International Patent Application Ser. No. PCT/US02/09168 (both
entitled “Hinged Anterior Thoracic/Lumbar Plate”) (collectively “Patent
Applications”), and know-how and any specifications, test and/or regulatory
test data, and prototypes involving the systems described in the Patent
Applications, collectively “Intellectual Property Rights.”


 


2.             Subject
to the terms and conditions of this Agreement, Buyer wishes to purchase the
Intellectual Property Rights from Seller, and Seller wishes to sell, transfer,
convey, and irrevocably assign the Intellectual Property Rights to Buyer.  Buyer agrees and acknowledges that the
intellectual property set forth in the Schedule of Exclusions attached
hereto as Exhibit A are not part of the Intellectual
Property Rights being irrevocably assigned to Buyer from Seller under this
Agreement.


 


2.             Quarterly Royalty Payments.  Section 2.2 of the IP Purchase Agreement
entitled “Quarterly Royalty Payments” is superseded and replaced by the
following new Section 2.2:


 


2.2          Quarterly Royalty Payments. 
Separate and apart from IP Purchase Payment and Warrant under Section 1
and the Minimum Annual Royalty Payments under Section 2.1, and subject to Section 2.3
below, Buyer shall provide royalty payments to Seller, payable on a quarterly
basis (“Quarterly Royalty Payments”), based on Net Sales by Buyer (or its
affiliates, licensees, or subsidiaries) of any device or system developed, in
whole or in part, by Dr. Bret Ferree under that certain Clinical Advisor
and Development Agreement between NuVasive and Dr. Bret Ferree dated October 10,
2002, or otherwise enabled by the assignment of the Intellectual Property
Rights under Section 1 (“Assigned Technology”), but only to the extent the
Quarterly Royalty Payments due Seller during each twelve (12) month period
following the Effective Date exceed the Minimum Annual Royalty Payment,
according to the following terms:


 


(a)           For sales in the United States: (i)          ***          %
of Net Sales of fixed axis pedicle screws, single balled rods, and dual balled
rods falling under the Assigned Technology; and (ii)          ***          %
of Net Sales of multi-axial pedicle screws falling under the Assigned
Technology;


 


(b)           For direct international sales in countries where patent
protection is obtained for the Assigned Technology: (i)           ***          % of Net Sales of fixed axis pedicle screws, single balled
rods, and dual balled rods falling under the Assigned Technology; and (ii)           ***           %
of Net Sales of multi-axial pedicle screws falling under the Assigned
Technology;


 


(c)           For discounted indirect international dealer sales where
patent protection is obtained for the Assigned Technology: (i)           ***           
% of Net Sales of fixed axis pedicle screws, single balled rods, and dual
balled rods falling under the Assigned


 










***         Material
omitted pursuant to a request for confidential treatment.


 


1





















 


Technology; and (ii)           ***           %
of Net Sales of multi-axial pedicle screws falling under the Assigned
Technology; and


 


(d)           For international sales in countries where patent
protection is not obtained for the Assigned Technology: (i)           ***           %
of Net Sales of fixed axis pedicle screws, single balled rods, and dual balled
rods falling under the Assigned Technology; and (ii)           ***           %
of Net Sales of multi-axial pedicle screws falling under the Assigned
Technology.


 


For
purposes of this Agreement, “Net Sales” shall be defined as the actual invoiced
price billed to the hospital and/or other professional end-users of the Assigned
Technology, net of: sales commissions, returns, transportation charges and any
applicable taxes.


 


3.             Third Party Intellectual Property
Payments. Section 2.3 of the IP Purchase Agreement entitled “Effect of
Third Party Licensing or Acquiring Third Party Intellectual Property” is
superseded and replaced by the following new Section 2.3:


 


2.3          Third Party Intellectual Property Payments.  In the instance Buyer is required to make any
payment to a third-party to license, acquire, or otherwise compensate for the
intellectual property rights owned by said third party (“Third Party IP Payment”)
relating to the practice the Intellectual Property Rights (including rights to
make, use, sell or offer for sale any of the Assigned Technology products),
such licensure, acquisition, or compensation shall have the following effect:


 


(a)   If
the Third Party IP Payment represents an amount that is at or below          ***          %
of Net Sales, Buyer shall bear this expense solely and the Quarterly Royalty
Payments to Seller shall not be modified; and


 


(b)   To
the extent the Third Party IP Payment represents an amount that exceeds          ***          %
of Net Sales, Buyer and Seller shall bear this additional expense equally, with
Buyer paying one-half (1/2) of this additional Third
Party IP Payment and Seller receiving Quarterly Royalty Payments under Sections
2.2(a) and 2.2(b) decreased by one-half (1/2)
of this additional Third Party IP Payment; provided, however:


 


a.     In
no event shall the Quarterly Royalty Payments under Section 2.2(a)(i) drop
below          ***          %
of Net Sales;


 


b.     In
no event shall the Quarterly Royalty Payments under Section 2.2(a)(ii) drop
below          ***          %
of Net Sales;


 


c.     In
no event shall the Quarterly Royalty Payments under Section 2.2(b)(i) drop
below          ***          %
of Net Sales; and


 


d.     In
no event shall the Quarterly Royalty Payments under Section 2.2(b)(ii) drop
below          ***          %
of Net Sales.


 


4.             All Other Provisions in Full Force and
Effect.  Other than the
above-identified amendments and additions, all sections, terms, obligations,
and provisions of the IP Purchase Agreement shall remain unchanged and in full
force and effect as originally executed on October 10, 2002.


 


IN WITNESS WHEREOF, the
parties agree to the above amendments and have executed this Addendum to the
Clinical Advisor Agreement as of the day and year first above written.


 


	
  NuVasive, Inc.

  	
  Advisor

  
	
   

  	
   

  
	
   

  	
   

  
	
  By

  	
  /s/ Alexis V.
  Lukianov

  	
   

  	
  By

  	
  /s/ Bret Ferree,
  M.D.

  	
   

  
	
   

  	
  Alexis V.
  Lukianov

  	
   

  	
   

  	
  Bret Ferree,
  M.D.

  	
   

  



 










***         Material
omitted pursuant to a request for confidential treatment.


 


2





















 


	
   

  	
  Chairman and CEO

  	
   

  	
   

  	
   

  
	
   

  	
  NuVasive, Inc.

  	
   

  	
   

  	
   

  
	
   

  	
  4545 Towne Centre Court

  	
   

  	
   

  	
   

  
	
   

  	
  San Diego, CA 92121

  	
   

  	
   

  	
   

  
	
   

  	
   

  
	
  Date: August 12,
  2005

  	
  Date: August 12,
  2005

  
						



 


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