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Exhibit 10.21    
    


 
  PATENT LICENSE AGREEMENT    
    


        THIS Agreement is between the Board of Regents ("Board") of The University of Texas System ("System"), an agency of the State of Texas, whose address is 201 West
7th Street, Austin, Texas 78701, and NOMOS CORPORATION, a Delaware corporation having a principal place of business located at 2591 Wexford Bayne Road, Sewickley, PA 15143 ("Licensee"). Board and
Licensee shall be hereinafter referred to collectively as the "Parties" and individually as the "Party." 


TABLE OF CONTENTS  



	 	 	RECITALS	 	1
	1.	 	EFFECTIVE DATE	 	1
	2.	 	DEFINITIONS	 	1
	3.	 	WARRANTY, SUPERIOR RIGHTS	 	2
	4.	 	LICENSE	 	3
	5.	 	PAYMENTS AND REPORTS	 	3
	6.	 	TERM AND TERMINATION	 	5
	7.	 	INFRINGEMENT BY THIRD PARTIES	 	6
	8.	 	ASSIGNMENT	 	6
	9.	 	PATENT MARKING	 	6
	10.	 	INDEMNIFICATION	 	6
	11.	 	USE OF BOARD AND COMPONENT'S NAME	 	6
	12.	 	CONFIDENTIAL INFORMATION	 	7
	13.	 	PATENTS AND INVENTORS	 	7
	14.	 	ALTERNATE DISPUTE RESOLUTION	 	7
	15.	 	GENERAL	 	8
	 	 	SIGNATURES	 	9




 
 

EXECUTION COPY    
    
    RECITALS    
    


	A.
	Board
owns certain Patent Rights and Technology Rights related to Licensed Subject Matter, which were developed at The University of Texas Health Science Center at San Antonio
("University"), a component institution of System.



	B.
	Board
desires to have the Licensed Subject Matter developed and used for the benefit of Licensee, Inventor, Board, and the public as outlined in Board's Intellectual Property Policy.



	C.
	Licensee
wishes to obtain a license from Board to practice Licensed Subject Matter. 



NOW,
THEREFORE, in consideration of the mutual covenants and premises herein contained, the parties agree as follows: 



	1.
	EFFECTIVE
DATE 



This
Agreement is effective October 21, 1998 ("Effective Date"). 



	2.
	DEFINITIONS 



As
used in this Agreement, the following terms have the meanings indicated: 



	2.1
	"Affiliate"
means any business entity more than 50% owned by Licensee, any business entity which owns more than 50% of Licensee, or any business entity that is more than 50% owned by
a business entity that owns more than 50% of Licensee.



	2.2
	"Licensed
Field" means all radiation therapy applications deriving from the Patent Rights or Technology Rights. 





 
	2.3
	"Licensed
Product" means any product Sold by Licensee comprising Licensed Subject Matter pursuant to this Agreement.



	2.4
	"Licensed
Subject Matter" means inventions and discoveries covered by Patent Rights or Technology Rights within Licensed Field.



	2.5
	"Licensed
Territory" means world-wide.



	2.6
	"Net
Sales" means the gross revenues received by Licensee from the Sale of Licensed Products less sales and/or use taxes actually paid, import and/or export duties actually paid,
outbound transportation prepaid or allowed, and amounts allowed or credited due to returns (not to exceed the original billing or invoice amount).



	2.7
	"Patent
Rights" means Board's rights in information or discoveries covered by United States Patent Application filed on October 21, 1998 entitled "Couch Mounted Tomotherapy
Treatment Device and Methods of Using the Same" by Bill J. Salter ("Inventor") and all divisions, continuations, continuations-in-part, reissues, reexaminations or extensions
thereof, and any letters patent that issue thereon, whether domestic or foreign.



	2.8
	"Peacock(R)
System" means a system for the delivery of intensity modulated radiation therapy comprising the CORVUS Inverse Treatment Planning System (or its functional equivalent)
and/or the MIMiC Multileaf Collimator (or its functional equivalent), as they may be modified from time to time.



	2.9
	"Sale
or Sold" means the transfer or disposition of a Licensed Product for value to a party other than Licensee.



	2.10
	"Technology
Rights" means Board's rights in technical information, know-how, processes, procedures, compositions, devices, methods, formulas, protocols, techniques,
software, designs, drawings or data created by Inventor at University before or after the Effective Date relating to apparatus and methods for delivering radiation therapy which are not covered by
Patent Rights, but which are necessary for practicing the invention covered by Patent Rights.



	3.
	WARRANTY:
SUPERIOR-RIGHTS



	3.1
	Except
for the rights, if any, of the Government of the United States, as set forth below, Board represents and warrants its belief to the best of its knowledge, after due inquiry,
that (i) it is the owner of the entire right, title, and interest in and to Licensed Subject Matter, (ii) it has the sole right to grant licenses thereunder, and (iii) it has not
knowingly granted licenses thereunder to any other entity that would restrict rights granted to Licensee except as stated herein.



	3.2
	Licensee
understands that the Licensed Subject Matter may have been developed under a funding agreement with the Government of the United States of America (the "Government") and, if
so, that the Government may have certain rights relative thereto. This Agreement is explicitly made subject to the Government's rights under any agreement and any applicable law or regulation. If
there is a conflict between an agreement, applicable law or regulation and this Agreement, the terms of the Government agreement, applicable law or regulation shall prevail. The Board shall be
responsible for any payments or fees of any kind payable to the Government of the United States under any such agreement, law or regulation. To the best of Board's knowledge, this Agreement does not
conflict with or require the approval of the Government.



	3.3
	Licensee
understands and acknowledges that Board, by this Agreement, makes no representation as to the operability or fitness for any use, safety, efficacy, ability to obtain
regulatory approval, patentability, and/or breadth of the Licensed Subject Matter. Board, by this Agreement, also makes no representation as to whether there are any patents now held, or which will be
held, by others or by Board in the Licensed Field, nor does Board make any representation that the inventions 


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contained
in Patent Rights do not infringe any other patents now held or that will be held by others or by Board. 



	3.4
	Licensee,
by execution hereof, acknowledges, covenants, and agrees that it has not been induced in any way by Board, System, University or its employees to enter into this Agreement,
and further warrants and represents that: (i) it has conducted sufficient due diligence with respect to all items and issues pertaining to this Article 3 and all other matters pertaining
to this Agreement; and (ii) Licensee has adequate knowledge and expertise, or has utilized knowledgeable and expert consultants, to adequately conduct the due diligence, and agrees to accept
all risks inherent herein.



	4.
	LICENSE



	4.1
	Board
hereby grants to Licensee a royalty-bearing, exclusive license under Licensed Subject Matter to manufacture, have manufactured, import, offer to sell, and/or sell Licensed
Products within the Licensed Territory for use within Licensed Field. This grant is subject to the payment by Licensee to Board of all consideration as provided herein, and is further subject to
rights retained by Board to:



	a.
	Publish
the general scientific findings from research related to Licensed Subject Matter subject to the terms of Article 12, Confidential Information; and



	b.
	Use
Licensed Subject Matter for research, teaching, and other educationally-related purposes.






	4.2
	Licensee
may extend the license granted herein to any Affiliate if the Affiliate consents to be bound by this Agreement to the same extent as Licensee.



	4.3
	Licensee
may grant sublicenses consistent with this Agreement if Licensee is responsible for the operations of its sublicensees relevant to this Agreement as if the operations were
carried out by Licensee, including the payment of royalties whether or not paid to Licensee by a sublicensee. Licensee must deliver to Board a true and correct copy of each sublicense granted by
Licensee, and any modification or termination thereof, within 30 days after execution, modification, or termination. When this Agreement is terminated, all existing sublicenses granted by
Licensee must terminate as well. This termination right does not apply to products previously sold to third parties for use in the Peacock(R) System.



	5.
	PAYMENTS
AND REPORTS



	5.1
	In
consideration of rights granted by Board to Licensee under this Agreement, Licensee will pay Board the following:



	(a.)
	a
non-refundable license documentation fee in the amount of $25,000 due and payable when this Agreement is executed by Licensee;



	(b.)
	a
royalty of $4,000 for the Sale, in conjunction with the Sale of a Peacock(R) System, of a Licensed Product capable of translating a radiation therapy treatment couch solely via
manual operation (i.e., the motive force for translation is supplied via direct physical manipulation of the Licensed Product by an operator thereof) ("Manual Licensed Product");



	(c.)
	a
royalty of $5,000 for the Sale, in conjunction with the Sale of a Peacock(R) System, of a Licensed Product capable of translating a radiation therapy treatment couch by means other
than or in addition to manual operation ("Self-motive Licensed Product");



	(d.)
	a
running royalty equal to 20% of Net Sales or a royalty of $4,000, whichever is greater, for each Manual Licensed Products Sold independently from the Sale of a Peacock(R) System
and covered by Patent Rights or Technology Rights; 





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	(e.)
	a
running royalty equal to 15% of Net Sales or a royalty of $5,000, whichever is greater, for each Self-motive Licensed Product Sold independently from the Sale of a
Peacock(R) System and covered by Patent Rights or Technology Rights; and



	(f.)
	minimum
yearly royalties of $100,000 due within 30 days of the first anniversary, $125,000 due within 30 days of the second anniversary, and $125,000 due within
30 days of the third anniversary of the first Sale of a Licensed Product.






	5.2
	During
the Term of this Agreement and for 1 year thereafter, Licensee agrees to keep complete and accurate records of its and its sublicensees' Sales and Net Sales of Licensed
Products under the license granted in this Agreement in sufficient detail to enable the royalties payable hereunder to be determined. Licensee agrees to permit Board or its representatives, at Board's
expense, to periodically examine its books, ledgers, and records during regular business hours for the purpose of and to the extent necessary to verify any report required under this Agreement, but
not more than twice in any calendar year. If the amounts due to Board are determined to have been underpaid by more than five (5%) percent of the correct amount due, Licensee will pay the cost of the
examination and accrued interest at the rate of twelve (12%) percent per annum.



	5.3
	Within
30 days after March 31, June 30, September 30, and December 31, beginning immediately after the Effective Date, Licensee must deliver to
Board a true and accurate written report, even if no payments are due Board, giving the particulars of the business conducted by Licensee and its sublicensee(s), if any exist, during the preceding 3
calendar months under this Agreement as are pertinent to calculating payments hereunder. This report will include at least:



	a.
	the
quantities of Licensed Subject Matter that it has produced;



	b.
	the
total Sales;



	c.
	the
calculation of royalties thereon; and



	d.
	the
total royalties computed and due Board. 






Simultaneously
with the delivery of each report, Licensee must pay to Board the amount, if any, due for the period of each report. 



	5.4
	On
or before each anniversary of the Effective Date, irrespective of having a first Sale or offer for Sale, Licensee must deliver to Board a written progress report as to Licensee's
(and any sublicensee's) efforts and accomplishments during the preceding year in diligently commercializing Licensed Subject Matter in the Licensed Territory and Licensee's (and, if applicable,
sublicensee's) commercialization plans for the upcoming year.



	5.5
	All
amounts payable here by Licensee must be paid in United States funds without deductions for taxes, assessments, fees, or charges of any kind, except as required by applicable law.
Checks must be payable to Board of Regents, The University of Texas System, and shall be delivered to: 




R.
B. Price

Executive Vice President for

Administration and Business Affairs

The University of Texas

Health Science Center at San Antonio

San Antonio, Texas 78284-7862 




	5.6
	Upon
receiving a first notice of allowance for a patent application covered under Paragraph 2.7 (Patent Rights), Licensee must reimburse Board for all its
out-of-pocket expenses thus far incurred in filing, prosecuting, enforcing and maintaining exclusively licensed Patent Rights, up to a maximum reimbursement of $10,000 during
the Term. Notwithstanding the $10,000 maximum reimbursement during the Term, if the Term is extended pursuant to Paragraph 6.1, Licensee 


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agrees
to reimburse Board for all its Patent Costs incurred prior to the effective date of the extension, up to a maximum reimbursement of $15,000. 



	6.
	TERM
AND TERMINATION



	6.1
	The
term of this Agreement is from the Effective Date until the third anniversary thereof ("Term"). The Term may be extended for additional periods of 2 years by mutual
agreement of the Parties. However, the Term shall not exceed the term or terms of any patents covered by Patent Rights.



	6.2
	Any
time after 1 year from the Effective Date, Board and University have the right to terminate the exclusivity of this license in any national political jurisdiction in the
Licensed Territory if Licensee, within 90 days after receiving written notice from University of intended termination of exclusivity, fails to provide written evidence reasonably satisfactory
to University that Licensee or its sublicensee has commercialized or is actively attempting to commercialize a licensed invention in such jurisdiction(s).



	6.3
	Any
time after 2 years from the Effective Date, Board and University have the right to terminate this license in any national political jurisdiction in the Licensed Territory
if Licensee, within 90 days after receiving written notice from University of intended termination, fails to provide written evidence reasonably satisfactory to University that Licensee or its
sublicensee has commercialized or is actively attempting to commercialize a licensed invention in such jurisdiction(s).



	6.4
	The
following definitions apply to Article 6: (i) "Commercialize" means having Sales of Licensed Products in such jurisdiction; and (ii) "Active attempts to
commercialize" means having Sales of Licensed Products or an effective, ongoing and active research, development, manufacturing, marketing or sales program as commercially appropriate, directed toward
obtaining regulatory approval, production or Sales of Licensed Products in any jurisdiction, and plans acceptable to University, in its sole discretion, to commercialize licensed inventions in the
jurisdiction(s) that University intends to terminate.



	6.5.
	Licensee
agrees to develop a vigorous sublicensing program to effect commercialization of Licensed Subject Matter in any portion of the Licensed Field that Licensee does not exploit.



	6.6.
	This
Agreement will earlier terminate:



	a.
	automatically
if Licensee becomes bankrupt or insolvent and/or if the business of Licensee is placed in the hands of a receiver, assignee, or trustee, whether by voluntary act of
Licensee or otherwise; or



	b.
	upon
30 days written notice from Board if Licensee breaches or defaults on its obligation to make payments (if any are due) or reports, in accordance with the terms of
Article 5, unless, before the end of the 30 day period, Licensee has cured the default or breach and so notifies Board, stating the manner of the cure; or



	c.
	upon
90 days written notice if Licensee breaches or defaults on any other obligation under this Agreement, unless, before the end of the 90 day period, Licensee has cured
the default or breach or is acting diligently to make such cure, and so notifies Board, stating the manner of the cure; or



	d.
	at
any time by mutual written agreement between Licensee, University, and Board, upon 180 days written notice to all parties listed in Paragraph 15.2 and subject to any
terms herein which survive termination; or



	e.
	under
the provisions of Paragraphs 6.2 and 6.3 if invoked. 





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	6.7.
	If
this Agreement is terminated for any cause:



	a.
	nothing
herein will be construed to release either Party of any obligation matured prior to the effective date of the termination;



	b.
	after
the effective date of the termination, Licensee may sell all Licensed Products and parts therefor it has on hand at the date of termination, if it pays earned royalties thereon
according to the terms of Article 5; and



	c.
	Licensee
will be bound by the provisions of Articles 10 (Indemnification), 11 (Use of Board and Component's Name), and 12 (Confidential Information) of this Agreement.






	7.
	INFRINGEMENT
BY THIRD PARTIES



	7.1
	Licensee,
at its expense, must enforce any patent exclusively licensed hereunder against infringement by third parties and it is entitled to retain recovery from such enforcement.
Licensee must pay Board a royalty on any monetary recovery if the monetary recovery is for damages or a reasonable royalty in lieu thereof. If Licensee does not file suit against a substantial
infringer of a patent within 6 months of knowledge thereof, then Board may enforce any patent licensed hereunder on behalf of itself and Licensee, Board retaining all recoveries from such
enforcement and/or reducing the license granted hereunder to non-exclusive.



	7.2
	In
any infringement suit or dispute, the Parties agree to cooperate fully with each other. At the request and expense of the Party bringing suit, the other Party will permit access to
all relevant personnel, records, papers, information, samples, specimens, etc., during regular business hours.



	8.
	ASSIGNMENT 



Except
in connection with the sale of substantially all of Licensee's assets to a third party, this Agreement may not be assigned by Licensee without the prior written consent of Board, which will not
be unreasonably withheld. 



	9.
	PATENT
MARKING 



Licensee
must permanently and legibly mark all products and documentation manufactured or sold by it under this Agreement with a patent notice as may be permitted or required under Title 35, United
States Code. 



	10.
	INDEMNIFICATION 



Subject
to the terms of this Agreement, Licensee agrees to hold harmless and indemnify Board, System, University, its Regents, officers, employees and agents from and against any claims, demands, or
causes of action whatsoever, including without limitation those arising on account of any injury or death of persons or damage to property caused by, or arising out of, or resulting from, the exercise
or practice of the license granted hereunder by Licensee, its Affiliates, or their officers, employees, agents, or representatives, except for liabilities resulting from the indemnified parties' gross
negligence or willful acts or omissions. 


Subject
to the terms of this Agreement, the Board and System agree, to the extent authorized under the Constitution and laws of the State of Texas, to hold harmless and indemnify Licensee, its
officers, employees and agents from liability resulting from the negligent acts or omissions of Board, System, University, its Regents, officers, employees and agents pertaining to the activities to
be carried out pursuant to the obligations of this Agreement, except for liabilities resulting from the indemnified parties' negligence or willful acts or omissions. 



	11.
	USE
OF BOARD AND COMPONENT'S NAME 



Licensee
may not use the name of University, System, or Board without express written consent. 



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	12.
	CONFIDENTIAL
INFORMATION AND PUBLICATION



	12.1
	Board
and Licensee each agree that all information contained in documents marked "confidential" and forwarded to one by the other are to (i) be received in strict confidence,
(ii) be used only for the purposes of this Agreement, and (iii) not be disclosed by the recipient Party, its agents or employees without the prior written consent of the other Party,
except to the extent that the recipient Party can establish competent written proof that such information:



	(a.)
	was
in the public domain at the time of disclosure;



	(b.)
	later
became part of the public domain through no act or omission of the recipient Party, its employees, agents, successors or assigns;



	(c.)
	was
lawfully disclosed to the recipient Party by a third party having the right to disclose it;



	(d.)
	was
already known by the recipient Party at the time of disclosure;



	(e.)
	was
independently developed by the recipient Party; or



	(f.)
	is
required by law or regulation to be disclosed.






	12.2
	Each
Party's obligation of confidence hereunder shall be fulfilled by using at least the same degree of care with the other Party's confidential information as it uses to protect its
own confidential information. This obligation shall exist while this Agreement is in force and for a period of 3 years thereafter.



	12.3
	University
will submit its manuscript for any proposed publication of research related to Licensed Subject Matter to Licensee at least 30 days before publication, and Licensee
shall have the right to review and comment upon the publication in order to protect Licensee's confidential information. Upon Licensee's request, publication will be delayed up to 60 additional days
to enable Licensee to secure adequate intellectual property protection of Licensee's property that would be affected by the publication.



	13.
	PATENTS
AND INVENTIONS



	13.1
	If
after consultation with Licensee, both Parties agree that a patent application should be filed for Licensed Subject Matter, Board will prepare and, after consultation with
Licensee, file the appropriate patent applications, and Licensee will pay the reasonable cost of searching, preparing, filing, prosecuting, and maintaining same. If Licensee notifies Board that it
does not intend to pay the cost of an application, or if Licensee does not respond or make an effort to agree with Board on the disposition of rights in the subject invention, then Board may file an
application at its own expense and Licensee will have no rights to the invention. Board will provide Licensee a copy of any patent application for which Licensee has paid the cost of filing, as well
as copies of any documents received or filed with the respective patent office during the prosecution thereof.



	14.
	ALTERNATE
DISPUTE RESOLUTION



	14.1
	The
Parties agree that any dispute or controversy arising out of or relating to this Agreement, its construction, or its actual or alleged breach will be decided by mediation, in
accordance with the provisions of TEX. CIV. PRAC. & REM. Codess.ss.154.001- 154.073 (Vernon 1997) and TEX. GOV'T Codess.ss.2008.001- 2008.055 (Vernon 1997 & Supp.
1998). If the mediation does not result in a resolution of such dispute or controversy, it will be decided by another method of alternate dispute resolution in accordance with the provisions of TEX.
CIV. PRAC. & REM. Codess.ss.154.001- 154.073 (Vernon 1997) and TEX. GOV'T Codess.ss.2008.001- 2008.055 (Vernon 1997 & Supp. 1998), including without limitation,
arbitration, conducted in the city of San Antonio, Texas in accordance with the License Agreement Arbitration Rules of the American Arbitration Association. The arbitration panel will include members
knowledgeable in the commercialization 


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and
licensing of medical devices, and intellectual property law. The decision of the arbitration must be sanctioned by a court of law having jurisdiction to be binding upon and enforceable by the
Parties. Judgment upon the award rendered may be entered in the highest court or forum having jurisdiction, state or federal. The provisions of this Article 14 will not apply to decisions on
the validity or enforceability of patent claims or to any dispute or controversy as to which any treaty or law prohibits such arbitration. 



	15.
	GENERAL



	15.1
	This
Agreement constitutes the entire and only agreement between the Parties for Licensed Subject Matter and all other prior negotiations, representations, agreements, and
understandings are superseded hereby. No agreements altering or supplementing the terms hereof may be made except by a written document signed by both Parties.



	15.2
	Any
notice required by this Agreement must be given by prepaid, first class, certified mail, return receipt requested, addressed in the case of Board to: 




Board
of Regents

The University of Texas System

201 West 7th Street

Austin, Texas 78701

ATTENTION: Office of General Counsel

FAX: (512) 499-4523

PHONE: (512) 499-4462 


with
copies to: 


The
University of Texas Health Science Center at San Antonio

7703 Floyd Curl Drive

San Antonio, Texas 78284-7862

ATTENTION: Jack C. Park, Esq.

Executive Director of Legal Affairs and Technology Licensing

FAX: (210) 567-2047

PHONE: (210) 567-2020 


or
in the case of Licensee to:
 NOMOS CORPORATION

2591 Wexford Bayne Road

Sewickley, PA 15143 


ATTENTION:
Anil Rastogi, President and CEO

FAX: (724) 934-5488

PHONE: (724) 934-8200 


or
other addresses as may be given from time to time under the terms of this notice provision. 




	15.3
	Licensee
must comply with all applicable federal, state and local laws and regulations in connection with its activities pursuant to this Agreement.



	15.4
	This
Agreement will be construed and enforced in accordance with the laws of the United States of America and of the State of Texas.



	15.5
	Failure
of Board to enforce a right under this Agreement will not act as a waiver of that right or the ability to later assert that right relative to the particular situation
involved.



	15.6
	Headings
are included herein for convenience only and shall not be used to construe this Agreement. 


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	15.7
	If
any part of this Agreement is for any reason found to be unenforceable, all other parts nevertheless remain enforceable. 



IN
WITNESS WHEREOF, the Parties hereto have caused their duly authorized representatives to execute this Agreement. 



	
BOARD OF REGENTS OF THE NOMOS CORPORATION

UNIVERSITY OF TEXAS SYSTEM
	

By	
 	

/s/ JOHN P. HOWE	
 	

By	
 	

/s/ ANIL RASTOGI
	 	 	
 John P. Howe, III, M.D.
 President
 University of Texas

Health Science Center at San Antonio	 	 	 	
 Anil Rastogi
 President and CEO
	

Approved as to Form:	
 	

 	
 	

 
	

By	
 	

/s/ BETHLYNN MAXWELL    21 Oct. '98	
 	

 	
 	

 
	 	 	
 BethLynn Maxwell
 Office of General Counsel	 	 	 	 
	

Approved as to Content:	
 	

 	
 	

 
	

By	
 	

/s/ R.B. PRICE	
 	

 	
 	

 
	 	 	
 R.B. Price
 Executive Vice President for

Administration and Business Affairs	 	 	 	 




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Exhibit 10.21


PATENT LICENSE AGREEMENT

EXECUTION COPY RECITALS