exv10w15



 







Exhibit 10.15



*[***]: Confidential
information in this document has been
omitted and filed separately with the Commission. Confidential treatment has been requested with respect to the
omitted portions.


AGREEMENT




     THIS AGREEMENT, made and entered into by and between NovaRay, Inc., a company organized under
the laws of California (“NovaRay”), and NRCT LLC, a limited liability company organized under the
laws of California (each a “Party” and collectively the “Parties”), is made as of October 23, 2006
(the “Effective Date”).



     WHEREAS, NovaRay is the owner of certain inventions and technical information described below;
and



     WHEREAS, NRCT wishes to acquire the right to make, sell, offer to sell, import and use such
technical information and inventions described below;



     NOW THEREFORE, for valuable consideration, as evidenced by the mutual covenants herein
contained and intending to be legally bound hereby, the Parties agree as follows:


1. DEFINITIONS. When used in this Agreement, the following terms shall have the meanings
set forth below:




     “Affiliate” shall mean any person that controls, is controlled by or is under control with,
any other person by virtue of the ownership by the controlling person of more than fifty percent
(50%) of the outstanding voting securities of the person that is deemed controlled.



     “Exclusive License Field of Use” means all closed-gantry, healthcare-related applications,
including but not limited to Closed-Gantry CT and Vascular applications and Closed-Gantry life
science applications.



     “Field of Use” means the Exclusive License Field of Use together with the Non-Exclusive
License Field of Use.



     “Licensed Products” means any product the manufacture, use, importation, distribution, sale or
offer for sale of which would be prohibited but for the licenses granted by licensor to licensee
herein.



     “Licenses” means the licenses described in Section 2 below.



     “Non-Exclusive License Field of Use” means (1) all open-gantry healthcare applications, except
Open-Gantry Cardiac, Electrophysiology, Neurological, CT and Peripheral applications and (2)
industrial applications (security, industrial inspection and non-destructive testing).



     “Novaray Improvement Patents” means any U.S. or foreign patents, any reissues, reexamination
certificates, substitute patents, continuations, continuations-in-part, divisional and/or other
patents acquired by or assigned to Novaray after the Effective Date wherein practicing the
invention in any claim of any such patent right would necessarily infringe any claims of any of the
Patents.



     “NRCT” means NRCT LLC and its wholly owned subsidiaries.



 










 





     “NRCT Improvement Patents” means any U.S. or foreign patents, any reissues, reexamination
certificates, substitute patents, continuations, continuations-in-part, divisional and/or other
patents acquired by or assigned to NRTC after the Effective Date wherein practicing the invention
in any claim of any such patent right would necessarily infringe any claims of any of the Patents.



     “NRCT Sublicensee” shall mean any party to which NRCT shall grant a sublicense pursuant to
Section 2 hereof.



     “Patents” means any U.S. or foreign patents, any reissues, reexamination certificates,
substitute patents, continuations, continuations-in-part, divisional and/or other patents issuing
from or claiming priority to the U.S. Patent Nos. listed in Exhibit A.



     “Practicing the Inventions” or “Practice the Inventions” means the making, having made, using,
offering to sell, importing and selling any of the methods or articles of manufacture, described
and claimed in the Patents.



     “Retained Fields of Use” means any applications, uses or markets that are not included in the
Field of Use.


2. PATENT LICENSES.




     (a) NovaRay hereby grants to NRCT: (i) a fully paid, worldwide, exclusive license to use,
offer to sell, sell, import and make or have made any invention claimed in the Patents and
Improvements within the Exclusive License Field of Use, and (ii) a worldwide, exclusive right to
sublicense to third parties the Patents and Improvements within the Exclusive License Field of Use.



     (b) NovaRay hereby grants to NRCT: (i) a fully paid, worldwide, non-exclusive license to use,
offer to sell, sell, import and make or have made any invention claimed in the Patents and NovaRay
Improvement Patents within the Non-Exclusive License Field of Use, and (ii) a worldwide,
non-exclusive right to sublicense to third parties the Patents and the NovaRay Improvement Patents
within the Non-Exclusive License Field of Use.



     (c) NRCT acknowledges and agrees that the Licenses contained in this Section 3 shall not
authorize NRCT or any NRCT Sublicensee to Practice the Inventions within the Retained Field of Use
or to authorize any NRCT Sublicensee or customer of NRCT (or any NRCT Sublicensee) to use, make,
have made or sell any of the methods or articles of manufacture described in the Patents that is
designed for any application or use within the Retained Field of Use.



     (d) NRTC hereby grants to NovaRay: (i) a fully paid, worldwide, non-exclusive license to use,
offer to sell, sell, import and make or have made any invention claimed in the NRTC Improvement
Patents for any application, use or market other than the Exclusive Field of Use, and (ii) a
worldwide, non-exclusive right to sublicense to third parties the NRTC Improvement Patents for any
application, use or market other than the Exclusive Field of Use.



2









 





     (e) NovaRay and NRCT agree to negotiate in good faith as to the grant by NovaRay to NRCT of
additional rights and licenses as are consistent with the licenses granted in Sections 3(a) and
3(b) above and as reasonably requested by NRCT that in NRCT’s reasonable judgment would facilitate
maximizing the commercial benefit to be realized to the LLC through sublicenses (or to be able to
enter into sublicenses) in the Field of Use.



     (f) NRCT Sublicensees shall be permitted to exercise all of NRCT’s license rights hereunder
subject to the terms of such sublicense agreements that NRCT shall enter into with each NRCT
Sublicensee, provided that no NRCT Sublicensee shall be permitted to grant further sublicenses or
to transfer or assign such sublicense rights, other than: (i) sublicensings to subcontractors to
manufacture Licensed Products for such NRCT Sublicensee, (ii) sublicensings to Affiliates of such
NRCT Sublicensee, or (iii) transfers of such sublicense rights in connection with a sale or
exchange of substantially all of the assets or equity interests for the business unit of such NRCT
Sublicensee that is utilizing any sublicense granted by NRCT. As a condition to the grant of any
sublicense by NRCT to any NRCT Sublicensee, such NRCT Sublicensee shall agree in writing to: (i)
Practice the Inventions only with the Field of Use as provided in Section 3(b) above; (ii) comply
with the further sublicensing and transferability restrictions on such NRCT Sublicensee as set
forth in this Section 3(f); (iii) be bound by confidentiality provisions no less restrictive than
Section 8 hereof as to the disclosure and use by such NRCT Sublicensee of any NovaRay Confidential
Information; and (v) be fully responsible and liable for compliance by any Affiliate of such NRCT
Sublicensee that is granted any such further sublicense pursuant to this Section 3(f).



     (g) The term of any licenses granted pursuant to this Section 3 shall be perpetual and
continue until the patent rights so licensed shall expire or otherwise terminate.


3. CONSIDERATION. As partial consideration for the granting of the Licenses and the sale
of components pursuant to Section 4 below, NovaRay will receive a 10% membership interest in NRCT
in accordance with the Operating Agreement for NRCT, executed of even date, a copy of which is
attached hereto as Exhibit B.



4. PURCHASE OF COMPONENTS. NovaRay agrees to sell to NRCT components at the prices listed
and up to the quantities listed in Exhibit C. NovaRay aggress to repair, refurbish or replace
components purchased by NRCT in accordance with and as described in Exhibit C. All payment terms
for components are 60 days after delivery.



5. DOCUMENTATION TRANSFER. NovaRay will provide NRCT with one copy all of the
documentation described in Exhibit D within a reasonable after the documentation becomes available.



6. PATENT MAINTENANCE. NovaRay will pay all the costs of any patents and/or patent
applications that NovaRay determines, in its sole discretion, to file and/or maintain. Should
NovaRay decide not to file a patent application in the United States, or any other country, and
NRCT becomes aware of the invention as part of NovaRay’s obligations under the license, NRCT may
instruct NovaRay to file a patent application in one or more of those countries and NRCT will
reimburse NovaRay for its costs and fees involved in pursuing patent protection, unless NovaRay
determines the invention is a trade secret or has another reasonable bona fide


3









 






business reason for declining patent protection and the action is not contrary to NRCT business
interests. However, for such patents and applications, NovaRay may only enforce such patents
against third parties if NRCT or any sublicensed party has first declined to do so, and only if it
is not against NRCT or any sublicensed party’s business interests. Further, should any enforcement
by NRCT or any sublicensed party’s of such patents result in a monetary settlement or award, all
such amounts will go directly to NRCT or any sublicensed party’s after paying the related costs of
both Parties.



7. REPRESENTATIONS.




     (a) NovaRay represents to NRCT that, to its actual knowledge, the Patents are not dominated by
any third party patents, that NovaRay has title to the Patents and the right to convey this license
and that NovaRay has not granted and will not grant any rights or license to any third party
inconsistent with this license.



     (b) NRCT acknowledges and agrees that there are no warranties, guarantees, conditions,
covenants or representations by NovaRay as to the design, marketability, attributes, whether
expressed or implied, in law or in fact, oral or written with regard to the Patents licensed
hereunder, other than those expressly set forth in this Agreement.



     (c) NRCT further acknowledges and agrees that NovaRay does not warrant: (i) that the Patents
are valid; (ii) that Practicing the Inventions will not infringe a third party’s intellectual
property; and (iii) the accuracy, safety or usefulness for any purpose, of the Patents.


8. LITIGATION. Each Party agrees that if it becomes aware of activities or articles that
potentially infringe one or more of the Patents during the term of this Agreement it shall notify
the other Party. NovaRay will have the first option to contact the potential infringing party
and/or institute legal action against the potential infringer, including but not limited to suing
for damages and other appropriate relief. NRCT may, subject to NovaRay’s consent, contribute to the
cost of the litigation. If NRCT contributes to the cost of the litigation it will be entitled to
receive a percentage of the damages recovered in excess of the cost of litigation equal to the
percentage of its contribution.



9. CONFIDENTIALITY. The terms of this Agreement will be deemed to be confidential to both
Parties, provided that each party shall have the right to disclose this Agreement: (i) as may be
required by applicable law or as otherwise deemed advisable in the good faith opinion of such Party
to comply with such applicable laws, including, without limitation, any state or federal securities
laws; and (ii) to any third party that is bound by confidentiality provisions no less restrictive
than Section 8 hereof in connection with any due diligence or other investigation by such third
party related to any bonafide, proposed financing, acquisition or other business transaction
involving such third party and the disclosing Party. Each Party agrees that it will not disclose
to any third party or use any confidential information for purposes other than those anticipated by
the Licenses and that it will take reasonable measures commensurate with the manner in which the
Party protects its own confidential information, to maintain the confidentiality of all
confidential information of the other Party in its possession unless otherwise required by law.




4









 








     (a) Subject to the limitations set forth in this Section, all information in any form,
tangible or intangible, disclosed in any manner by NovaRay to NRCT and NRCT to NovaRay bearing the
legend “Confidential Information” shall be deemed to be proprietary and confidential (“Confidential
Information”) of the party revealing the Confidential Information (“Disclosing Party”). The party
receiving such Confidentiality Information shall be referred to hereinafter as the “Receiving
Party.” Confidential Information does not include information which the Receiving Party can
demonstrate by competent written proof: (a) is now, or hereafter becomes generally known or
available to the general public, through no act or failure to act on the part of the Receiving
Party, (b) is hereafter furnished to the Receiving Party by a third party without breach of this
Agreement and otherwise not in violation of any other confidentiality obligation or of the
Disclosing party’s rights, or (c) was known to or in the possession of the Receiving Party prior to
any disclosure made by the Disclosing Party.



     (b) The Receiving Party shall hold all Confidential Information in trust and confidence. In
preserving disclosed Confidential Information, the Receiving Party will use efforts that are
commensurate with its own efforts to preserve its own confidential information, but in any event
with not less than a reasonable standard of care to secure and safeguard the Confidential
Information. Receiving Party shall not disclose any Confidential Information to any third party
without ensuring that the third party has executed a confidentiality agreement with terms at least
as restrictive as those set forth in this section. Notwithstanding the foregoing, disclosure of
Confidential Information shall not be precluded if such disclosure is in response to a valid order
of a court or other governmental body of the United States or any political subdivision thereof;
provided, however, that the Receiving Party shall first have given notice to the Disclosing party
and shall have made a reasonable effort (in cooperation with the Disclosing Party) to obtain a
protective order or take other measures in order to minimize the disclosure and require that the
Confidentiality Information so disclosed be used only for the purposes for which the order was
issued.


10. SEVERABILITY. The Parties agree that if any part, term, or provision of this Agreement
shall be found illegal or in conflict with any valid controlling law, the validity of the remaining
provisions shall not be affected thereby.



11. WAIVER AND ALTERATION.




     (a) The waiver of a breach hereunder may be effected only by a writing signed by the waiving
Party and shall not constitute a waiver of any other breach.



     (b) A provision of this Agreement may be altered only by a writing signed by both Parties.


12. IMPLEMENTATION. Each Party shall execute any instruments reasonably believed by the
other Party to be necessary to implement the provisions of this Agreement.



13. GOVERNING LAW. This Agreement shall be construed and governed in accordance with the
laws of the State of California.



14. DISPUTE RESOLUTION. Should there be a dispute concerning the interpretation of this
Agreement, compliance with this Agreement, and/or the scope of the claims in the Licensed


5









 






Patents, the Parties will first negotiate to settle the dispute, and if they are unable to resolve
the dispute, submit to non-binding mediation in San Francisco, California before any binding
arbitration takes place. If the Parties are unable to resolve the matter through mediation, they
will resolve the dispute through binding arbitration before a three member panel in accordance with
the rules of the American Arbitration Association, to be heard in San Francisco, California.



15. ENTIRE UNDERSTANDING. This Agreement represents the entire understanding between the
Parties, and supersedes all other agreements, express or implied, oral or written, between the
Parties concerning the subject matter of this Agreement.



16. ADDRESSES.




     For the purpose of all written communications between the Parties, their addresses shall be:



     [Address of NRCT LLC]



     [Address of NovaRay]


or any other addresses of which either Party shall notify the other Party in writing.




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



	 	 	 	 	 
	NOVARAY, INC.	 	 
	 
	 	 	 	 
	By:
	 	/s/ Jack Price, President	 	 
	 

	 	 

	 	 
	Date:
	 	 	 	 
	 

	 	 

	 	 
	 
	 	 	 	 
	NRCT LLC	 	 
	 
	 	 	 	 
	By:

	 	/s/ David Dantzker	 	 
	 

	 	 

	 	 
	Date:
	 	 	 	 
	 

	 	 

	 	 






6









 






EXHIBIT A




Issued U.S. Patents




	 	 	 	 	 	 	 
	US Pat. No./Title/Filing	 	 	 	 	 	 
	& Issue Dates	 	Inventor(s)	 	W&C Ref.	 	Next Due Date* / Expiry Date
	Patent No. 5,550,378

X-Ray Detector

Filed: February 10, 1995

Issued: August 27, 1996

	 	Skillicorn et al.
	 	1617878-0046

(1629409-0034)
	 	3rd Maintenance Fee Due 2/27/08


Patent Expires February 10, 2015
	 
	 	 	 	 	 	 
	Patent No. 5,610,967

X-Ray Grid Assembly

Filed: April 10, 1995

Issued: March 11, 1997

	 	Moorman et al.
	 	1617878-0045

(1629409-0032)
	 	3rd Maintenance Fee Due 09/11/08


Patent Expires April 10, 2015
	 
	 	 	 	 	 	 
	Patent No. 5,644,612

Image Reconstruction
Methods

Filed: April 10, 1995

Issued: July 1, 1997

	 	Moorman et al.
	 	1617878-0047

(1629409-0033)
	 	3rd Maintenance Fee Due 01/01/09


Patent Expires April 10, 2015
	 
	 	 	 	 	 	 
	Patent No. 5,651,047

Maneuverable and Locateable
Catheters

Filed: February 10, 1995

Issued: July 22, 1997

	 	Moorman et al.
	 	1617878-0051

(1629409-0040)
	 	3rd Maintenance Fee Due 01/22/09


Patent Expires February 10, 2015
	 
	 	 	 	 	 	 
	US Patent No. 5,682,412f

X-Ray Source

Filed: September 20, 1996

Issued: October 28, 1997

	 	Skillicorn et al.
	 	1617878-0021

(1629409-0006)
	 	3rd Maintenance Fee Due 4/28/09


Patent Expires 9/20/2016
	 
	 	 	 	 	 	 
	U.S. Patent No. 5,751,785

Image Reconstruction Methods

Filed: November 12, 1996

Issued: May 12, 1998

	 	Moorman et al.
	 	1617878-0019

(1629409-0030)
	 	3rd Maintenance Fee Due 11/12/09


Patent Expires November 12, 2016
	 
	 	 	 	 	 	 
	U.S. Patent No. 5,729,584

Scanning Beam X-Ray Imaging
System

Filed: September 20, 1996

Issued: March 17, 1998

	 	Moorman et al.
	 	1617878-0020

(1629409-0029)
	 	3rd Maintenance Fee Due 9/17/09


Patent Expires September 20, 2016
	 
	 	 	 	 	 	 
	Patent No. 5,808,306

X-Ray Detector

Filed: August 26, 1996

Issued: September 15, 1998

	 	Skillicorn et al.
	 	1617878-0034

(1629409-0024)
	 	3rd Maintenance Fee Due 3/15/10


Patent Expires August 26, 2016
	 
	 	 	 	 	 	 
	Patent No. 5,835,561

Scanning Beam X-Ray Imaging
System 

Filed: April 10, 1995

Issued: November 10, 1998

	 	Moorman et al.
	 	1617878-0044

(1629409-0031)
	 	3rd Maintenance Fee Due 5/10/10


Patent Expires November 10, 2015 (17 years
from grant)






7









 






	 	 	 	 	 	 	 
	US Pat. No./Title/Filing	 	 	 	 	 	 
	& Issue Dates	 	Inventor(s)	 	W&C Ref.	 	Next Due Date* / Expiry Date
	Patent No. 5,859,893

X-Ray Collimation Assembly

Filed: May 31, 1996

Issued: January 12, 1999

	 	Moorman et al.
	 	1617878-0043

(1629409-0037)
	 	3rd Maintenance Fee Due 7/12/10


Patent Expires May 31, 2016
	 
	 	 	 	 	 	 
	Patent No. 6,060,713

X-Ray Detector

Filed: September 11, 1998

Issued: May 9, 2000

	 	Skillicorn et al.
	 	1617878-0011

(1629409-0039)
	 	2nd Maintenance Fee Due 11/09/07

3rd Maintenance Fee Due 11/9/11


Patent Expires September 11, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,118,853

X-Ray Target Assembly

Filed: October 6, 1998

Issued: September 12, 2000

	 	Hansen et al.
	 	1617878-0039

(1629409-0022)
	 	2nd Maintenance Fee Due
3/12/08.

3rd Maintenance Fee Due 3/12/12


Patent Expires October 6, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,118,854

Method of Making X-Ray Beam
Hardening Filter and
Assembly

Filed: October 6, 1998

Issued: September 12, 2000

	 	Solomon et al.
	 	1617878-0010

(1629409-0035)
	 	2nd Maintenance Fee Due 3/12/08

3rd Maintenance Fee Due 3/12/12


Patent Expires October 6, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,157,703

Beam Hardening Filter and
Actuator for X-Ray Source

Filed: October 6, 1998
Issued: December 5, 2000

	 	Solomon et al.
	 	1617878-0012

(1629409-0018)
	 	2nd Maintenance Fee Due 6/5/08

3rd Maintenance Fee Due 6/5/12


Patent Expires October 6, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,175,611

Tiered Detector Assembly

Filed: October 6, 1998

Issued: January 16, 2001

	 	Melen et al.
	 	1617878-0030

(1629409-0025)
	 	2nd Maintenance Fee Due 7/16/08

3rd Maintenance Fee Due 7/16/12


Patent Expires October 6, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,178,223

Image Reconstruction Method
and Apparatus

Filed: October 6, 1998

Issued: January 23, 2001

	 	Solomon et al.
	 	1617878-0038

(1629409-0023)
	 	2nd Maintenance Fee Due 7/23/08

3rd Maintenance Fee Due 7/23/12


Patent Expires October 6, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,181,764

Image Reconstruction for
Wide Depth of Field Images

Filed: October 6, 1998

Issued: January 30, 2001

	 	Solomon et al.
	 	1617878-0018

(1629409-0019)
	 	2nd Maintenance Fee Due 7/30/08

3rd Maintenance Fee Due 7/30/12


Patent Expires October 6, 2018






8









 






	 	 	 	 	 	 	 
	US Pat. No./Title/Filing	 	 	 	 	 	 
	& Issue Dates	 	Inventor(s)	 	W&C Ref.	 	Next Due Date* / Expiry Date
	Patent No. 6,183,139

X-Ray Scanning Method and
Apparatus

Filed: October 6, 1998

Issued: February 6, 2001

	 	Solomon et al.
	 	1617878-0026

(1629409-0026)
	 	2nd Maintenance Fee Due 8/6/08
3rd
Maintenance Fee Due 8/6/12


Patent Expires October 6, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,198,802 

Scanning Beam X-Ray Source
and Assembly 

Filed: October 6, 1998

Issued: March 6, 2001

	 	Elliott et al.
	 	1617878-0017

(1629409-0020)
	 	2nd Maintenance Fee Due 9/6/08

3rd Maintenance Fee Due 9/6/12


Patent Expires October 6, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,208,709

Detection Processing System

Filed: October 6, 1998

Issued: March 27, 2001

	 	Melen
	 	1617878-0022

(1629409-0041)
	 	2nd Maintenance Fee Due 9/27/08

3rd Maintenance Fee Due 9/27/12


Patent Expires October 6, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,234,671

X-Ray System with Scanning
Beam X-Ray Source Below
Object Table

Filed: October 6, 1998

Issued: May 22, 2001

	 	Solomon et al.
	 	1617878-0007

(1629409-0042)
	 	2nd Maintenance Fee Due
11/22/08

3rd Maintenance Fee Due 11/22/12


Patent Expires October 6, 2018
	 
	 	 	 	 	 	 
	Patent No. 6,649,914

Scanning Beam X-Ray Imaging
System 

Filed: January 7, 1999

Issued: November 18, 2003

	 	Moorman et al.
	 	1617878-0016

(1629409-0038)
	 	1st Maintenance Fee Due 05/18/07

2nd Maintenance Fee Due 5/18/11


Patent Expires January 7, 2019






9









 






Issued Foreign Patents




	 	 	 	 	 	 	 
		 	 	 	 	 	 
	Country/Patent No./Title/Issue Date	 	Inventor(s)	 	W&C Ref.	 	Next Due Date
	JP Patent No. 3569526

X-Ray Detector for Low Dosage
Scanning Beam Digital X-Ray
Imaging System

Filed: April 5, 1994

	 	Wilent et al.
	 	1617878-0061
	 	Next Annuity Due 6/25/07
	 
	 	 	 	 	 	 
	EP Patent No. 0808465

Scanning Beam X-Ray Imaging System

Filed: February 6, 1996

Issued: August 13, 2003

	 	Moorman et al.
	 	1617878-0054

(1629409-0004)
	 	Next Annuity Due 2/6/07






10









 






Pending Foreign Applications




	 	 	 	 	 	 	 
		 	 	 	 	 	 
	Application No./Title/Filing Date	 	Inventor(s)	 	W&C Ref.	 	Next Due Date
	[***]

	 	Moorman et al.
	 	[***]	 	Response to Second Office Action due
11/16/06

(Response prepared and sent to
Japanese Associate).
	 
	 	 	 	 	 	 
	[***]

	 	Melen et al.
	 	[***]	 	Response to Office Action filed
04/20/06


Annuity Due 9/30/07
	 
	 	 	 	 	 	 
	[***]

	 	Solomon et al.
	 	[***]	 	Supplemental Search Report Issued
08/29/06;

Notice of Intent to Proceed due
11/08/06


Annuity Due 9/30/07
	 
	 	 	 	 	 	 
	[***]

	 	Moorman et al.
	 	[***]
	 	Response to OA filed 4/25/06


Awaiting for 2nd Office Action from
Japanese Patent Office
	 
	 	 	 	 	 	 
	[***]

	 	Melen et al.
	 	[***]	 	Request for Examination filed
09/30/2006.


Awaiting First Office Action.
	 
	 	 	 	 	 	 
	[***]

	 	Solomon et al.
	 	[***]
	 	Request for Examination filed
09/30/2006.


Awaiting First Office Action.
	 
	 	 	 	 	 	 
	[***]

	 	Moorman et al.
	 	[***]
	 	Divisional application of
524388/1996 (1617878-0053).


Awaiting 1st Office Action
	 
	 	 	 	 	 	 





11









 






EXHIBIT B




12









 








EXHIBIT C




	 	 	 	 	 	 	 	 	 
	Component	 	Unit price	 	Quantity limit
	X-ray source
	 	$	[***]	 	 	 	3	 
	High voltage boards
	 	$	[***]	 	 	 	4	 
	X-ray detector
	 	$	[***]	 	 	 	3	 
	Detector Sticks
	 	$	[***]	 	 	 	4	 
	High-voltage power supply
	 	$	[***]	 	 	 	3	 
	Deflection system
	 	$	[***]	 	 	 	3	 
	Image reconstruction board
	 	$	[***]	 	 	 	4	 
	Heat exchanger
	 	$	[***]	 	 	 	3	 
	Control computer
	 	$	[***]	 	 	 	3	 
	Vacuum cart
	 	$	[***]	 	 	 	3	 







	 	•	 	Acceptance testing of Components will consist of meeting
NovaRay’s existing product performance specifications using a single plane
image capability.
	 
	 	•	 	NovaRay will transfer ownership of these components to NRCT at
NovaRay’s facility in Palo Alto and upon the required Payment.
	 
	 	•	 	Once acceptance testing and title transfer are completed,
NovaRay will allow NRCT or sub-licensee’s researchers access for testing at the
NovaRay facility. NRCT or NRCT’s sub-licensee will be able to schedule up to
20hrs / week test time for a period of 12 months.
	 
	 	•	 	Timing of the physical transfer of the equipment will be performed at NRCT’s
discretion.
	 
	 	•	 	All such purchases shall be completed by NRCT within ___days of the
Effective Time.




Replacement Components will be provided on an exchange basis, as described in Exhibit C




13









 








EXHIBIT C



Replacement Components will be provided as follows:





	 	•	 	Replacement Components will be provided on an exchange basis. Due to the limited supply
of parts, non-functioning subsystems must be returned to NovaRay for possible refurbishing.
	 
	 	•	 	The price to NRCT to exchange or refurbish a specific non-functioning subsystem is
listed below.
	 
	 	•	 	NovaRay will provide NRCT with as many exchanges as is reasonably possible, with a
guaranteed minimum of two exchanges for any particular subsystem and for a minimum period
of two years from the date of this agreement.





	 	 	 	 	 
	 	 	Replacement price
	 	 	(with exchange of non-functioning
	Replaceable components	 	subsystem)
	X-ray source assembly
	 	$	[***]	 
	High voltage boards
	 	$	[***]	 
	X-ray detector assembly
	 	$	[***]	 
	Detector sticks
	 	$	[***]	 
	High-voltage power supply unit
	 	$	[***]	 
	Deflection system
	 	$	[***]	 
	Data capture and reconstruction computer
	 	$	[***]	 
	Image reconstruction board
	 	$	[***]	 
	Heat exchanger
	 	$	[***]	 
	Control computer
	 	$	[***]	 
	Vacuum cart
	 	 	N/A	 






14









 






EXHIBIT D





	1.	 	NovaRay will provide existing documentation to NRCT






	 	i.	 	Existing Design Documentation






	 	•	 	Software source code
	 
	 	•	 	Design and architecture docs
	 
	 	•	 	Software development tools used.
Inventory of S/W library, configuration management, compilers,
etc. NRCT or sub-licensee to purchase SW tools license for these
	 
	 	•	 	Mechanical design drawings
	 
	 	•	 	System and Subsystem
Specifications
	 
	 	•	 	Schematics and interface
documents
	 
	 	•	 	Machine readable preferred and
printed as needed






	 	ii.	 	Existing Service Docs






	 	•	 	Technical Service Manuals
provided
	 
	 	•	 	Installation Requirements
provided






	2.	 	Existing Knowledge and Information Transfer






	 	•	 	Existing Bill of Materials will be provided
	 
	 	•	 	Existing Mfg Procedures, And detail specifications and drawings
for fixtures and tools machine readable engineering and manufacturing
documentation
	 
	 	•	 	Existing Service Procedures, calibration and characterization
procedures documentation
	 
	 	•	 	NovaRay will allow NRCT or NRCT’s sub-licensee to approach UW
for access to the NovaRay equipment for as long as it is available at that
site. However the decision to allow NRCT or NRCT’s sub-licensee access to the
system and terms for access is at the discretion of UW. There is no guarantee
that that system will continue to be housed there. Access is primarily for
simple experiments and reviewing NovaRay technology. The operation of the
system cannot be disrupted; the cost of using, damage and maintenance must be
covered by NRCT.
	 
	 	•	 	Existing Design and assembly documentation will be provided for
the following:






	 	a)	 	X-ray source including gun, bell, target,
collimator, and deflection electronics.
	 
	 	b)	 	Detector including readout ASIC and associated
electronics. NovaRay will identify key vendors and necessary
manufacturing documentation for the detector tiles and flip-chip
assembly procedures
	 
	 	c)	 	Data-acquisition software and firmware






	 	•	 	Process transfer






	 	a)	 	X-ray source: NovaRay will identify key vendors
for source components.
	 
	 	b)	 	Detector: NovaRay will identify key vendors and
necessary manufacturing documentation for the detector tiles and
flip-chip assembly procedures. NovaRay will provide existing design
documentation for necessary test equipment.






	 	•	 	Design reviews will be conducted to explain top level and
component design.






	 	•	 	Existing FDA submitted test data






	 	•	 	Existing GMP documentation on components and system






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