Exhibit 10.1


 


***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


 


THIS
INTELLECTUAL PROPERTY PURCHASE AGREEMENT (“IP Purchase Agreement”) is entered
into as of August 12, 2005 (“Effective Date”), by and between NuVasive, Inc.,
a Delaware corporation (“Buyer” or “NuVasive”) and RiverBend Design, LLC, an
Ohio limited liability company (“Seller”). 
Buyer and Seller agree as follows:


 


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.       ***       (entitled “       ***       (“Patent Application”), and know-how
and any specifications, trade secrets, test and/or regulatory test data, and
prototypes involving the spinous process spacing described in the Patent
Application (collectively, with the Patent Application, the “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.


 


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


 


Agreement


 


Section 1


Purchase and Sale of the Intellectual Property
Rights


 


Subject
to the terms and conditions of this Agreement, Seller agrees to and hereby does
sell, transfer, convey, and irrevocably assign the Intellectual Property Rights
to Buyer in consideration of Seller’s receipt, on the Effective Date, which by
execution hereof Seller acknowledges to have received Fifty One Thousand Three
Hundred and Eight (51,308) shares of the Common Stock of Buyer (with a value of
One Million Dollars ($1,000,000) based on the closing price of Buyer’s Common
Stock on the day preceding the Effective Date) (“IP Purchase Payment”).


 


Section 2


Additional Payments


 


2.1           Milestone Payment.  Separate and apart from the IP Purchase Payment,
within 30 days following the achievement of        
***         Dollars ($       ***       )
of Net Sales by NuVasive of       ***       products
resulting from or directly enabled the by Intellectual Property Rights (“       ***       
Products,” including “       ***       Products”
and “       ***       Products”
as defined in Section 2.2(a) below), Buyer shall pay to Seller the
sum of Two Hundred Fifty Thousand Dollars ($250,000).  “Net Sales” means the total amount of gross
receipts of Buyer in connection with sales of the Products in question to third
parties less deduction of all of the following to the extent applicable to such
sales: (a) all trade and quantity credits, discounts, charge backs from
wholesalers, refunds or rebates which are actually allowed and taken; (b) all
amounts of insurance and freight expenses included in any invoice; (c) all
allowances or credits for returns or rejected products to the extent such
amounts are included in the original gross receipts; and (d) all sales
taxes (including value added taxes), duties or other governmental charges
incurred.


 










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


 


1





















 


2.2           Quarterly Royalty
Payments.  Separate and apart from IP Purchase Payment of
Section 1 and the Milestone Payment of 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 August 12,
2005 (the “Advisor Agreement”), or otherwise resulting from or directly enabled
by the assignment of the Intellectual Property Rights under Section 1 (“Assigned
Technology”), according to the following terms:


 


(a)   For sales
in the United States: (i)         ***         %
of Net Sales of         ***         Products
manufactured from any synthetic material (including but not limited to poly-ether-ether-keytone)
(“         ***         Products”);
and (ii)          ***         %
for         ***         Products
manufactured from bone allograft (“         ***         Products”);


 


(b)   For
direct international sales in countries where patent protection is obtained for
the Intellectual Property Rights: (i)         ***         %
of Net Sales of         ***         Products;
and (ii)         ***         %
of Net Sales of         ***         Products;


 


(c)   For
discounted indirect international sales in counties where patent protection is
obtained for the Intellectual Property Rights: (i)          ***         %
of Net Sales of         ***         Products;
and (ii)         ***         %
of         ***         Products;
and


 


(d)   For
international sales in countries where no patent protection is obtained for the
Intellectual Property Rights: (i)         ***         %
of Net Sales of         ***         Products;
and (ii)         ***         %
of Net Sales of         ***         Products.


 


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         ***         ),
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 which 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 Section 2.2
decreased by one-half (1/2) of this additional Third
Party IP Payment; provided, however:


 


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


 


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


 


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


 










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


 


2





















 


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


 


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


 


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


 


Section 3


Manner of Payment and Inspection of
Records


 


3.1           Quarterly Royalty Payments.  Any payment due to Seller under Section 2.2
shall be made by Buyer within thirty (30) days after the end of each calendar
quarter and shall be accompanied by an accurate statement of Net Sales of the         ***         
Products and any reduction in Quarterly Royalty Payments based on Section 2.3.  The Quarterly Royalty Payments under Section 2.2 shall remain payable and due
Seller for the period during which all patent claims covering Intellectual
Property Rights, or any later acquired patent rights to the Intellectual Property Rights developed under the Advisor
Agreement, remain valid and enforceable.


 


3.2           Inspection
of Records. The acceptance by
Seller of any of the statements furnished or payments under Section 3.1
shall not preclude Seller questioning the correctness of any payments or
statements.  Upon reasonable notice and
during regular business hours, Buyer shall from time to time (but no more
frequently than twice a year) make available its records of Net Sales and its
calculations of payments to Seller (including its records of returns,
transportation charges and any applicable taxes) for audit at Seller’s expense
by independent representatives selected by Seller to verify the accuracy of the
payments provided to Seller.  If such
inspection reveals an underpayment of payments to Seller, Buyer shall
immediately pay to Seller the amount owing to Seller in accordance with the
results of the inspection.  Upon
discovery of an understatement in the payments of ten percent (10%) or more,
Buyer shall reimburse Seller for expenses connected with such inspection,
including but not limited to, reasonable accounting, auditing, and legal fees
and costs, as well as interest on the unreported and unpaid payment.


 


Section 4


Delivery


 


4.1           By Buyer.  On
the Effective Date, Buyer will deliver to Seller the IP Purchase Payment as set
forth in Section 1.


 


4.2           By Seller.  On
the Effective Date, Seller shall deliver to Buyer a fully executed Assignment
of Intellectual Property Rights as found in Exhibit A
attached hereto (the “IP Assignment”).


 


Section 5


Representations, Warranties, and Covenants of Seller


 


Seller
hereby represents, warrants, and covenants to Buyer as follows:


 










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


 


3





















 


5.1           Authorization.  Seller
represents that it has the full right, power, and authority to enter into and
perform its obligations under this Agreement, the IP Assignment, and the
Advisor Agreement (collectively, the “Agreements”).  Seller agrees that the Agreements, when
executed and delivered by Seller, will constitute valid and binding conveyances
and obligations of Seller, enforceable in accordance with their terms, subject
to the laws of general application relating to bankruptcy, insolvency, and the
relief of debtors, rules of law governing specific performance, and
injunctive relief.


 


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


 


5.3           Ownership of the Intellectual Property Rights.  Seller is the owner of the entire right, title, and interest in the
Intellectual Property Rights, and Seller has not previously assigned or
licensed the Intellectual Property Rights and is not aware of any infringement
issues or adverse claims of ownership to the Intellectual Property Rights.  The Intellectual
Property Rights are not subject to any lien or encumbrance and no third party
has asserted any ownership rights in, or the invalidity of, the Intellectual
Property Rights.


 


5.4           Seller’s Investor
Representations.


 


(a) The issuance of the
shares of Buyer Common Stock as the IP Purchase Payment (the “Shares”) is made
in reliance upon Seller’s representation to Buyer, which by Seller’s execution
of this IP Purchase Agreement Seller hereby confirms, that the Shares to be
received by Seller will be acquired for investment for Seller’s own account,
not as a nominee or agent, and not with a view to the sale or distribution of
any part thereof and that Seller has no present intention of selling, granting
any participation in, or otherwise distributing any of the Shares.  By executing this IP Purchase Agreement,
Seller further represents that it has no present contract, undertaking,
agreement or arrangement with any person to sell, transfer or grant
participation to such person or to any third person, with respect to any of the
Shares.


 


(b) Seller understands
and acknowledges that the issuance and sale of the Shares pursuant to this
Agreement will not be registered under the Securities Act on the grounds that
the offering and sale of securities contemplated by this Agreement are exempt
from registration pursuant to Section 4(2) of the Securities Act and
that the Shares may not be resold except upon their subsequent registration or
pursuant to an exemption from the registration requirements, and that Buyer’s
reliance upon such exemption is predicated upon Seller’s representations as set
forth in this Agreement.


 


(c) Seller represents
that: (i) it has such knowledge and experience in financial and business
matters as to be capable of evaluating the merits and risks of its prospective
investment in the Shares; (ii) it believes it has received all the
information it has requested from Buyer and considers necessary or appropriate
for deciding whether to obtain the Shares; (iii) it has had the opportunity
to discuss Buyer’s business, management, and financial affairs with Buyer’s
management; (iv) it has the ability to bear the economic risks of its
prospective investment; and (v) it is able, without


 


4





















 


materially impairing its financial condition, to
hold the Shares for an indefinite period of time and to suffer a complete loss
on its investment.


 


(d) Seller qualifies as
an “accredited investor” within the meaning of Regulation D of the rules and
regulations promulgated under the Securities Act.


 


Section 6


Buyer’s Conditions to Closing


 


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


 


6.1           Representations.  The
representations made by Seller in Section 5 hereof shall be true and
correct when made, and shall be true and correct on the Effective Date.


 


6.2           Execution and Delivery of Agreements. 
On the Effective
Date, Seller shall have executed and delivered to Buyer each of the
Agreements.


 


6.3           Board Approval.  The
Board of Directors of Buyer shall have approved the the IP Purchase Payment .


 


Section 7


Miscellaneous


 


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


 


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


 


7. 3          Indemnification by Buyer.  Buyer agrees to indemnify, defend and hold
Seller harmless from any third party liability, losses, damages, or costs
(including reasonable attorneys’ fees and costs) arising out of or related to
any action arising out of: (a) subject to Section 2.3, a claim that
the manufacture or sale of any device or product based on the Intellectual
Property Rights violates the patent, trademark, or trade name rights of any
third party; (b) any alleged defects or failures to perform of any device
or product based on the Intellectual Property Rights; (c) any product
liability claims or use of any device or product based on the Intellectual
Property Rights; or (d) the advertising, distribution or marketing of any
device or product based on the Intellectual Property Rights.  Seller agrees to assist Buyer in the defense
of any such action set forth in 7.3(a) through 7.3(d).


 


7.4           Enforcement.  In
the event that Buyer wishes to enforce Intellectual Property Rights against a
third party (including but not limited to a patent infringement action), Seller
will provide reasonable cooperation and assistance in that effort, including
being available for witness


 


5





















 


and deposition testimony,
making documents available, and complying with any other reasonable request.


 


7.5           Insurance. 
Buyer agrees to maintain product liability insurance coverage of at
least $3 million per occurrence and to name Dr. Bret A. Ferree as an
additional insured thereunder.


 


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


 


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


 


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


 


The foregoing
Intellectual Property Purchase Agreement is hereby executed by Buyer and Seller
as of the date first above written.


 


	
  Buyer:

  	
   

  	
  Seller:

  
	
   

  	
   

  	
   

  
	
  NuVasive, Inc.

  	
   

  	
  RiverBend Design, LLC

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
  By:

  	
  /s/Alexis V. Lukianov

  	
   

  	
   

  	
  By:

  	
  /s/Bret A. Ferree

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
  ALEXIS V. LUKIANOV

  	
   

  	
   

  	
  BRET A. FERREE

  	
   

  
	
   

  	
  Chairman &
  CEO

  	
   

  	
   

  	
  President

  	
   

  
	
   

  	
  NuVasive, Inc.

  	
   

  	
   

  	
  RiverBend Design, LLC

  	
   

  
	
   

  	
  4545 Towne Centre
  Court

  	
   

  	
   

  	
  1238 Cliff Lane

  	
   

  
	
   

  	
  San Diego, California
  92121

  	
   

  	
   

  	
  Cincinnati, Ohio 45208

  	
   

  



 


6





















 


EXHIBIT A


 


Assignment of Intellectual Property
Rights


 


In
consideration of the mutual obligations set forth in that Intellectual Property
Purchase Agreement dated August     , 2005 by and
between NuVasive, Inc. (“NuVasive”) and RiverBend Design, LLC (“RiverBend”),
the adequacy and receipt of which is hereby acknowledged, RiverBend, which owns
the entire right, title, and interest in and to certain intellectual property,
including Patent
Application Ser. No.       ***       (entitled “       ***       ”) (“Patent Application”),
and know-how and any specifications, trade secrets, test and/or
regulatory test data, prototypes involving the systems described in the Patent
Applications, and any and all improvements thereto (“Intellectual Property
Rights”), hereby sells and irrevocably assigns to NuVasive the entire right,
title and interest in and to the Intellectual Property Rights and any and all
patent future applications based upon the Intellectual Property Rights, including
but not limited to all related PCT and/or national applications (foreign and
domestic), continuation applications, continuations-in-part applications,
divisional applications, and applications upon which the Intellectual Property
Rights claim priority, to be held and enjoyed by NuVasive, its successors and
assigns, as fully and entirely as the same would have been held and enjoyed by Dr. Ferree
and RiverBend had this assignment and sale not been made.


 


In
testimony whereof, I, Dr. Bret A. Ferree, individually and on behalf of RiverBend,
sign this Assignment of Intellectual Property Rights this 12th day
of August, 2005.


 


 


	
  For:
  RiverBend Design, LLC

  	
   

  
	
  By:

  	
  /s/Bret A. Ferree

  	
   

  	
   

  
	
  Its:

  	
   

  
	
  BRET
  A. FERREE

  	
   

  
	
  1238
  Cliff Lane

  	
   

  
	
  Cincinnati,
  Ohio 45208

  	
   

  	
   

  
	
   

  	
  [Notary Seal]

  	
   

  
					



 










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


 


7