exv10w37



 






EXHIBIT 10.37




Confidential Treatment Requested




Settlement and Amendment to License Agreement




This Settlement and Amendment to License Agreement (the “Agreement”), effective October 1, 2004
(the “Effective Date”), is by and between SurModics, Inc. (successor in interest to Bio-Metric
Systems, Inc.), a Minnesota corporation, which has an office at 9924 West 74th Street, Eden
Prairie, MN 55344 (hereinafter referred to as SURMODICS), and Spectranetics Corporation, a
Delaware corporation, which has an office at 96 Talamine Court, Colorado Springs, CO 80907
(hereinafter referred to as SPECTRANETICS).




WHEREAS, SURMODICS and SPECTRANETICS are parties to a certain Vascular Laser Angioplasty Catheter
License Agreement, dated April 7, 1992 as amended (the “License”);




WHEREAS, the parties desire to resolve facts and matters alleged in the pending litigation titled
SurModics, Inc. v. Spectranetics Corporation, Civil File No. 04-3963 ADM/AJB on the terms and
conditions set forth in this Agreement, which includes amending the License; and




WHEREAS, SPECTRANETICS desires to add new rights to the License under SURMODICS’ know-how and
patent rights.




NOW, THEREFORE, in consideration of the mutual covenants and agreements set forth below and for
other good and valuable consideration of which receipt is acknowledged, the parties agree as
follows:




Part A: Settlement of Dispute





	1.  	Effective Date
	 
	   	Effective October 1, 2004, the License is amended and shall be governed by the terms and
conditions set forth in this Agreement.
	 
	2.  	Amounts Owing
	 
	   	In settlement of amounts which SURMODICS claims to be owing to SURMODICS under the License
through September 30, 2004, SPECTRANETICS shall pay SURMODICS $275,000 by wire transfer on
the date on which SPECTRANETICS signs this Agreement, as set forth on the signature page
hereof.
	 
	3.  	Spectranetics’ Representation
	 
	   	SPECTRANETICS represents that it has disclosed all past due royalties to SURMODICS claimed to
be owed and that no other past royalties or payment of any kind are due SURMODICS prior to
September 30, 2004.








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	4.  	Stipulation of Dismissal
	 
	   	Upon SPECTRANETICS’ payment of the amount set forth in section 2 above, counsel for SURMODICS
shall promptly execute and file with the United States District Court for the District of
Minnesota all papers that are necessary to effectuate a dismissal, with prejudice, of the
claims asserted by SURMODICS against SPECTRANETICS in the matter of SurModics, Inc. v.
Spectranetics Corporation, Civil File No. 04-3963 ADM/AJB.
	 
	5.  	SurModics’ Limited Release
	 
	   	For the consideration recited herein, including the amended License terms included in this
Agreement and SPECTRANETICS’ payment of the amount set forth in section 2 above, SURMODICS
and its successors, assigns, attorneys, agents, executors and representatives hereby release
and forever discharge SPECTRANETICS and its past, present and future successors, assigns,
attorneys, agents, executors, officers, directors, and representatives from any and all
claims, demands, obligations, losses, causes of action, costs, expenses, attorneys’ fees,
liabilities and indemnities, whether known or unknown, relating to the facts and matters
alleged in the matter of SurModics, Inc. v. Spectranetics Corporation, Civil File No. 04-3963
ADM/AJB.
	 
	6.  	Spectranetics’ Limited Release
	 
	   	For the consideration recited herein, including the amended License terms included in this
Agreement, SPECTRANETICS and its successors, assigns, attorneys, agents, executors and
representatives hereby release and forever discharge SURMODICS and its past, present and
future successors, assigns, attorneys, agents, executors, officers, directors, and
representatives from any and all claims, demands, obligations, losses, causes of action,
costs, expenses, attorneys’ fees, liabilities and indemnities, whether known or unknown,
relating to the facts and matters alleged in the matter of SurModics, Inc. v. Spectranetics
Corporation, Civil File No. 04-3963 ADM/AJB.





Part B: Amendment to License Agreement





	1.  	Section 1(b) of the License is amended in its entirety to read as follows:
	 
	   	“Patent Rights” means the patents identified in Attachment A hereof, together with all
foreign counterparts, divisions, and continuation applications based thereon, any patent
issuing on any of said applications, and any reissues or extensions based on any of such
patents.
	 
	2.  	Section 1(c) of the License (entitled Improvement Patents), is deleted in its entirety.
	 
	3.  	Section 1(d) of the License is amended in its entirety to read as follows:








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	   	“Licensed Products” means each of the separately sold Licensed Products specifically
described in Attachments B1 and B2 and which:






i. but for the license granted herein the manufacture, use, or sale would infringe (or
a surface treatment process employed to produce a product or a reagent used in such
process would infringe), any claim of Patent Rights, or




ii. are produced through the use of SURMODICS’ Know-how.




	4.  	Section 1(h) of the License is amended in its entirety to read as follows:
	 
	   	“Net Sales” means the total actual billing for sales of Licensed Products, less the following
deductions where they are applicable with respect to such billings and when separately shown
on invoices:






i. discounts actually allowed and taken specific to Licensed Products;




ii. any customs duties, taxes, or other governmental excise or charge upon or measured
by the production, sale, transportation, delivery, or use of Licensed Product and
actually invoiced and paid by SPECTRANETICS;




iii. amounts allowed or credited on rejections or returns of Licensed Products;




iv. transportation charges prepaid or allowed for Licensed Products; and




v. sales commissions paid to employees of SPECTRANETICS for sales of Licensed Products,
such commissions not to exceed six percent (6%) of actual invoiced amounts of Licensed
Products.




	   	The total deductions (the sum of the deductions (i)-(v) above), from total actual billings
for sales of Licensed Products shall not exceed [*****] of such actual billings for sales of
Licensed Products. Except as expressly provided in subsections (i)-(v) above, no deductions
from sales of Licensed Products shall apply.
	 
	   	Notwithstanding the above, if any Licensed Product is sold both separately and as a kit with
an integral part of a combination product containing one or more integral components or
service in addition to that Licensed Product, then Net Sales of that Licensed Product
resulting from sales of that combination product will be calculated by multiplying the Net
Sales for the combination product as calculated above by the fraction A/B, where A is the
invoice price of the Licensed Product as sold separately and B is the invoice price of the combination product. For example, the
foregoing mechanism will apply to Licensed Products sold as an integral part of a combination
product that includes SPECTRANETICS’ depreciation, repair, and







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	   	maintenance of a laser system
so long as (i) Licensed Products are sold both separately and as an integral part of a
combination system, and (ii) SPECTRANETICS’ reports (under section 5(a) herein), the average
selling prices for (a) the separately sold Licensed Products, and (b) the combination product
(or products), that includes Licensed Product. Conversely, the foregoing mechanism shall not
apply to Licensed Products that are sold as part of a kit but are not and have never been
separately sold (in which case, Net Sales of Licensed Product will be determined based solely
on the sales price of the combination product that includes the Licensed Product).
	 
	5.  	Section 1(j) of the License is amended in its entirety to read as follows:
	 
	   	A Licensed Product shall be considered sold when it is shipped or when it is invoiced,
whichever is earlier. To assure SURMODICS the full royalty payment contemplated in this
Agreement, SPECTRANETICS agrees that if any Licensed Product is sold to an Affiliate for
purposes of resale, Earned Royalties for that Licensed Product shall be computed upon the
selling price at which such Licensed Product would ordinarily be sold to a non-Affiliate,
rather than on the selling price of SPECTRANETICS to the Affiliate.
	 
	6.  	Section 2 of the License is amended in its entirety to read as follows:
	 
	   	License Subject to the conditions and limitations provided in this Agreement,
SURMODICS grants SPECTRANETICS a worldwide non-exclusive license under SURMODICS’ Patent
Rights and Know-how to make, have made for it, use, and sell Licensed Products. The license
granted herein is expressly limited to the specific Licensed Products defined herein, and
does not include the right to sublicense except to an Affiliate. Subject to the limited
license granted herein, SURMODICS shall retain all rights to the Patent Rights and Know-how.
	 
	7.  	Section 4 of the License is amended in its entirety to read as follows:
	 
	   	Royalties SPECTRANETICS shall pay SURMODICS a royalty for the Patent Rights and
Know-how licensed under Attachment B1 and Attachment B2, such royalty will be the greater of
(a) the earned royalty set forth for each such Attachment, and (b) the minimum royalty
obligation set forth in such Attachment.
	 
	8.  	Section 5(a) of the License is amended in its entirety to read as follows:
	 
	   	During the term of this Agreement, SPECTRANETICS will make written reports and payments to
SURMODICS for each license granted in Attachments B1 and B2 within thirty (30) days after the
last day of each calendar quarter ending March 31, June 30, September 30, and December 31. Such quarterly written reports shall include an
itemized account by SPECTRANETICS’ product tradename and model number (in the form of Exhibit
1 attached to this Agreement), of (i) unit volumes







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	   	and average selling prices of Licensed
Product sales, (ii) the applicable earned royalty, (iii) the permitted deductions from sales
of Licensed Product set forth in Paragraph 1(h), and (iv) Net Sales. Each such report shall
also include corrections of error in prior royalty payments, data, and calculations used by
SPECTRANETICS to determine such payments for each of the licenses corresponding to
Attachments B1 and B2. Each report shall be accompanied by payment in full of the royalty
due SURMODICS for that quarter. The December 31 quarterly report shall also include a
nonbinding summary forecast of projected sales of Licensed Products and a nonbinding forecast
of reagent usage for the next calendar year. SPECTRANETICS reports shall be considered
Confidential Information.
	 
	9.  	The following section 5(f) is added to the License:
	 
	   	If any amount owing SURMODICS is not paid when due, each unpaid amount shall bear interest
after its due date at the monthly rate of one/twelfth of the sum of the then-existing prime
interest rate plus two percent (2%). In any future lawsuit for recovery, if it prevails,
SURMODICS shall be entitled to recover all of its reasonable costs and expenses incurred in
any action to collect amounts owing, including attorneys’ fees.
	 
	10.  	Section 8(c) of the License is amended in its entirety to read as follows:
	 
	   	Regardless to the extent, if any, to which Licensed Products are or become covered or
continue to be covered by any valid patent of Patent Rights, regardless of which any valid
patents of Patent Rights actually issue, and regardless of the provisions of Paragraph 8(b),
the Earned Royalty percentages set out in Paragraph 4 of this Agreement shall never be
reduced by more than fifty percent (50%). Prior to January 1, 2020, the provisions of
Paragraphs 8(b) shall not apply to SPECTRANETICS’ payment of Quarterly Minimum Royalties as
provided in Paragraph 4. Beginning January 1, 2020, SPECTRANETICS’ Quarterly Minimum Royalty
obligation to SURMODICS will be reduced by fifty percent (50%) if the Licensed Products
described in Attachments B1 and B2 are no longer covered by a claim of Patent Rights.





11. Attachment A of the License is amended in its entirety to read as set forth in Attachment A
attached to this Agreement.




12. Attachments B1 and B2 are added to the License as set forth in Attachments B1 and B2 attached
to this Agreement.




13. Exhibit 1 is added to the License as set forth in Exhibit 1 attached to this Agreement.






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Part C: Full Force and Effect




Except as amended by this Agreement, the License is unchanged and remains in full force and effect.




IN WITNESS WHEREOF, the parties hereto execute this Agreement by their duly authorized employees.




	 	 	 
	  Accepted by:

	 	  Accepted by:
	  SurModics, Inc.

	 	  Spectranetics Corporation
	 
	 	 
	  /s/ Bruce J. Barclay

	 	  /s/ Guy A. Childs
	 

	 	 
	  Signature

	 	  Signature
	 
	 	 
	  Bruce J. Barclay

	 	  Guy A. Childs
	 

	 	 
	  Printed Name

	 	  Printed Name
	 
	 	 
	  President/COO

	 	  Chief Financial Officer
	 

	 	 
	  Title

	 	  Title
	 
	 	 
	  February 17, 2005

	 	  February 16, 2005
	 

	 	 
	  Date

	 	  Date








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Attachment A




SurModics, Inc. U.S. Patents




	 	 	 
	1.

	 	METHOD OF IMPROVING THE BIOCOMPATIBILITY OF SOLID SURFACES
	

	 	U.S. Patent No. 4,973,493 issued 11/27/1990
	 
	 	 
	2.

	 	BIOCOMPATIBLE COATINGS FOR SOLID SURFACES
	

	 	U.S. Patent No. 4,979,959 issued 12/25/1990
	 
	 	 
	3.

	 	PREPARATION OF POLYMERIC SURFACES VIA COVALENTLY ATTACHING POLYMERS
	

	 	U.S. Patent No. 5,002,582 issued 3/26/1991
	 
	 	 
	4.

	 	BIOCOMPATIBLE DEVICE WITH COVALENTLY BONDED BIOCOMPATIBLE AGENT
	

	 	U.S. Patent No. 5,263,992 issued 11/23/1993
	 
	 	 
	5.

	 	RESTRAINED MULTIFUNCTIONAL REAGENT FOR SURFACE MODIFICATION
	

	 	U.S. Patent No. 5,414,075 issued 5/9/1995
	 
	 	 
	6.

	 	SUBSTRATE SURFACE PREPARATION
	

	 	U.S. Patent No. 5,512,329 issued 4/30/1996
	 
	 	 
	7.

	 	RESTRAINED MULTIFUNCTIONAL REAGENT FOR SURFACE MODIFICATION
	

	 	U.S. Patent No. 5,637,460 issued 6/10/1997
	 
	 	 
	8.

	 	PHOTOACTIVATABLE CROSS-LINKING AGENTS CONTAINING CHARGED GROUPS FOR WATER SOLUBILITY
	

	 	U.S. Patent No. 6,077,698 issued 06/20/2000
	 
	 	 
	9.

	 	SURFACE COATING AGENTS
	

	 	U.S. Patent No. 6,278,018 B1 issued 08/21/2001
	 
	 	 
	10.

	 	SURFACE COATING AGENTS
	

	 	U.S. Patent No. 6,603,040 B1 issued 8/5/2003
	 
	 	 
	11.

	 	SILANE COATING COMPOSITION
	

	 	U.S. Patent No. 6,706,408 B2 issued 3/16/2004









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Attachment B1

Laser Angioplasty Catheters





	1.  	MEDICAL PRODUCTS
	 
	   	“Medical Products” means excimer laser angioplasty catheters specifically adapted for
coronary and peripheral use. Medical Products includes SPECTRANETICS’ chronic total
occlusion laser angioplasty catheters.
	 
	2.  	LICENSED PRODUCT
	 
	   	“Licensed Products” means Medical Products that are surface-treated with photoreactive
polyvinylpyrrolidone copolymer, non-photoreactive polyvinylpyrrolidone, photoreactive
polyacrylamide copolymer, one or more of the photoreactive crosslinking agents known to the
parties as [*****], a compound for promoting polymer-to-metal adhesion known to the parties
as [*****], or any combination of these compounds, for the purpose of providing a lubricious
surface to the Medical Products.
	 
	3.  	GRANT OF LICENSE
	 
	   	The license granted under this Attachment B1 is non-exclusive. The license granted in this
Attachment B1 is non-cancelable by SPECTRANETICS during the period from the Effective Date
through June 30, 2009.
	 
	4.  	ROYALTY PAYMENTS
	 
	   	SPECTRANETICS shall pay SURMODICS a royalty for the Patent Rights and Know-how license
granted in this Attachment B1, which will be the greater of Paragraphs 4(a) and 4(b) as
follows:
	 
	   	a. Earned Royalties of [*****] on Net Sales ($U.S.) of Attachment B1 Licensed Products sold
in each calendar quarter.
	 
	   	b. Quarterly Minimum Royalties for all Attachment B1 and B2 Licensed Products during the
periods specified as follows:





	 	 	 	 	 	 
	 	 	 	 	 	 
	 	

Quarterly Minimum Royalty Period

	 	 	SPECTRANETICS’ Attachment

B1 & B2 Quarterly Minimum

Royalty Obligation	 
	 	 	 	 	 	 
	 	Each calendar quarter during the period

	 	 	 	 
	 	from the Effective Date to June 30, 2005
	 	 	$25,000 per calendar quarter	 
	 	 	 	 	 	 
	 	For the calendar quarter beginning July 1,

	 	 	 	 
	 	2005 and each calendar quarter thereafter
	 	 	$50,000 per calendar quarter	 
	 	 	 	 	 	 






	   	SPECTRANETICS’ Quarterly Minimum Royalty Obligation set forth in the table above shall
survive expiration or termination of the licenses granted under this Agreement until June 30,
2009. For the calendar quarter that begins on July 1, 2009







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	   	and for each calendar quarter thereafter, SPECTRANETICS’ $50,000 Quarterly Minimum Royalty
Obligation shall remain in effect unless and until the licenses under both Attachments B1 and
B2 expire or are terminated, (subject to Paragraph 8(c)).
	 
	5.  	PERFORMANCE
	 
	   	If there are four (4) consecutive quarters after June 30, 2009 in which SPECTRANETICS fails
to generate Earned Royalties under Paragraph 4 of this Attachment B1, then SURMODICS may
terminate this Attachment B1 license upon thirty (30) days written notice.





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Attachment B2

Non-Laser Functioning Catheters and Guidewires

for use with Spectranetics Laser Therapy Systems





	1.  	MEDICAL PRODUCTS
	 
	   	“Medical Products” means the following Spectranetics-labeled non-laser functioning catheters
and guidewires for SPECTRANETICS’ laser therapy system that are specifically designed and
labeled for use solely with laser angioplasty catheters: (i) [*****], (ii) support
catheters, (iii) cardiac lead locking device, and (iv) [*****]. Medical Products does not
include catheters for (i) infusion of diagnostic, therapeutic, or embolic agents in the
neurovascular region, or (ii) insertion of therapeutic embolic devices in the neurovascular
region. Medical Products does not include catheters used to deliver stents of any type.
	 
	2.  	LICENSED PRODUCT
	 
	   	“Licensed Products” means Medical Products that are surface-treated with photoreactive
polyvinylpyrrolidone copolymer, non-photoreactive polyvinylpyrrolidone, photoreactive
polyacrylamide copolymer, one or more of the photoreactive crosslinking agents known to the
parties as [******], a compound for promoting polymer-to-metal adhesion known to the parties
as [*****], or any combination of these compounds, for the purpose of providing a lubricious
surface to the Medical Products.
	 
	3.  	GRANT OF LICENSE
	 
	   	The license granted under this Attachment B2 is non-exclusive.
	 
	4.  	ROYALTY PAYMENTS
	 
	   	SPECTRANETICS shall pay SURMODICS a royalty for the Patent Rights and Know-how license
granted in this Attachment B2, which will be the greater of Paragraphs 4(a) and 4(b) as
follows:
	 
	   	a. Earned Royalties of [*****] on Net Sales ($U.S.) of Attachment B2 Licensed Products sold
in each calendar quarter.
	 
	   	b. Quarterly Minimum Royalties for all Attachment B1 and B2 Licensed Products during the
periods specified as follows:





	 	 	 	 	 	 
	 	 	 	 	 	 
	 	

Quarterly Minimum Royalty Period

	 	 	SPECTRANETICS’ Attachment

B1 & B2 Quarterly Minimum

Royalty Obligation	 
	 	 	 	 	 	 
	 	Each calendar quarter during the period

	 	 	 	 
	 	from the Effective Date to June 30, 2005
	 	 	$25,000 per calendar quarter	 
	 	 	 	 	 	 
	 	For the calendar quarter beginning July 1,

	 	 	 	 
	 	2005 and each calendar quarter thereafter
	 	 	$50,000 per calendar quarter	 
	 	 	 	 	 	 








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	   	SPECTRANETICS’ Quarterly Minimum Royalty Obligation set forth in the table above shall
survive expiration or termination of the licenses granted under this Agreement until June 30,
2009. For the calendar quarter that begins on July 1, 2009 and for each calendar quarter
thereafter, SPECTRANETICS’ $50,000 Quarterly Minimum Royalty Obligation shall remain in
effect unless and until the licenses under both Attachments B1 and B2 expire or are
terminated, (subject to Paragraph 8(c)).
	 
	5.  	PERFORMANCE
	 
	   	If there are four (4) consecutive quarters after June 30, 2009 in which SPECTRANETICS fails
to generate Earned Royalties under Paragraph 4 of this Attachment B2, then SURMODICS may
terminate this Attachment B2 license upon thirty (30) days written notice.





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Spectranetics

SurModics Royalty Report



*****Confidential portions of the material have been omitted and filed separately

with the Securities and Exchange Commission.





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