University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 1 of 43
`
`

`

`
`
`MASTER LICENSE AGREEMENT
`TABLE OF CONTENTS
`
`
`
`Article 1. BACKGROUND .........................................................................................................1
`Article 2. DEFINITIONS .............................................................................................................1
`Article 3. GRANT OF LICENSE ................................................................................................6
`Article 4. DILIGENCE REQUIREMENTS ..............................................................................13
`Article 5. CONSIDERATION ...................................................................................................14
`Article 6. PATENT PROSECUTION ........................................................................................16
`Article 7. CONFIDENTIALITY................................................................................................18
`Article 8. REPORTS, PAYMENTS, AND ACCOUNTING ....................................................21
`Article 9.
`INFRINGEMENT......................................................................................................22
`Article 10. TERM AND TERMINATION ..................................................................................25
`Article 11. OTHER AGREEMENTS ..........................................................................................26
`Article 12. REPRESENTATIONS AND WARRANTIES ..........................................................28
`Article 13. INSURANCE AND INDEMNIFICATION ..............................................................29
`Article 14. DISPUTE RESOLUTION .........................................................................................31
`Article 15. NOTICES AND INVOICES .....................................................................................32
`Article 16. ASSIGNMENT ..........................................................................................................33
`Article 17. MISCELLANEOUS ..................................................................................................34
`Schedules
`PATENT RIGHTS
`A
`COMMERCIALIZATION PLAN
`B
`C MILESTONES
`D MILESTONE PAYMENTS
`
`
`
`{00019318-15}
`
`
`
`University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 2 of 43
`
`

`

`
`
`MASTER LICENSE AGREEMENT
`This Master License Agreement (“Agreement”) is effective as of the date of the last
`signature on the signature page (“Effective Date”) and is made by and between the University
`of Maryland, Baltimore (“University”), a constituent institution of the University System of
`Maryland (which is a public corporation and an instrumentality of the State of Maryland), and
`Harpoon Medical, Inc., a Delaware corporation (“Company”).
`ARTICLE 1. BACKGROUND
`Valuable inventions (the “Inventions”) have been made by James S. Gammie,
`1.1
`
`M.D., Seyed Mohammad Mehrdad Ghoreishi, M.D., and Rahul S. Patel, M.D (University
`Inventors”), which are generally known as follows:
` Methods and Devices for Performing Cardiac Valve Repair (UMB Docket#: JG-2006-060)
` Devices for Transapical Mitral Valve Repair (UMB Docket#: JG-2011-034)
` Transapical Mitral Repair with Pre-formed Knot (UMB Docket#: JG-2011-083)
`1.2
`Under USM policy (a) University owns the Inventions and Patent Rights (as
`defined below) relating to the Inventions, and (b) University is the record owner of the
`Inventions and Patent Rights, which has been confirmed by the execution of assignments to
`University from the University Inventors. University is responsible for administration and
`marketing of the Patent Rights.
`Research described in the Inventions was funded in part by a grant to the
`
`1.3
`University from the Maryland Biotechnology Center (a unit of the State of Maryland’s
`Department of Business and Economic Development), pursuant to a Translational Research
`Reimbursable Grant Agreement dated as of June 30, 2010.
`1.4
`As a public research and education institution, University is interested in licensing
`the Inventions and the Patent Rights to Company to benefit the public by the development and
`marketing of new and useful products and methods. Company desires to license the Inventions
`and Patent Rights on the terms and conditions set forth in this Agreement. University and
`Company have entered into this Agreement of their own free will. The terms of this Agreement
`were agreed upon in an arm’s length transaction.
`ARTICLE 2. DEFINITIONS
`In this Agreement, the following terms have the meanings set forth in this Article.
`“Acquisition”: Any one of the following (but excluding any of the same in connection
`with a Bankruptcy): (a) a sale, lease or other disposition of all or substantially all of the assets of
`the Company; (b) a sale or other disposition in a single transaction or series of related
`transactions of more than fifty percent (50%) of the combined voting power of all classes of
`stock of the Company entitled to vote, including without limitation a public offering of stock; or
`(c) a merger, consolidation, reorganization, recapitalization, share exchange, business
`combination or similar form of corporate transaction involving the Company (a “Corporate
`Transaction”), unless securities representing at least fifty one percent (51%) of the combined
`voting power of the then outstanding voting securities entitled to vote generally in the election of
`directors of the Company or the entity resulting from that Corporate Transaction (or the parent of
`that entity) are held subsequent to that transaction by the Person or Persons who were the
`beneficial holders of the outstanding voting securities entitled to vote generally in the election of
`directors of the Company immediately prior to that Corporate Transaction, in substantially the
`same proportions as their ownership immediately prior to that Corporate Transaction.
`
`{00019318-15}
` 
`
`1
`
`University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 3 of 43
`
`

`

`
`
`Notwithstanding the foregoing, a venture capital financing or other similar financing and any
`resulting change in ownership shall not constitute an “Acquisition.”
`“Affiliate”: Any Person which controls, is controlled by, or is under common control
`with another Person. For purposes of this definition only, “control” means (a) to possess, directly
`or indirectly (through one or more intermediaries), the power to direct the management or
`policies of a Person, whether through ownership of voting securities or by contract relating to
`voting rights or corporate governance, or (b) to own, directly or indirectly, more than fifty
`percent (50%) of the outstanding voting securities or other ownership interest of such Person.
`“Bankruptcy”: As defined in Section 10.2.3.
`“Business Day”: A day other than a Saturday, Sunday, federal holiday, holiday observed
`by University, or any day on which the University campus is closed.
`“CE Marking”: A mandatory conformity mark for products placed on the market in the
`European Economic Area, evidencing compliance of a Licensed Product with “essential
`requirements” as described in Annex I of Directive 93/42/EEC.
`“Clinical Investigation”: A human clinical trial of a Licensed Product that satisfies the
`requirements of 21 C.F.R. Part 812, or its foreign equivalent. A Clinical Investigation shall be
`considered to have commenced when the Licensed Product has been administered to the first
`subject in the study.
`“Combination Product”: A Licensed Product that contains at least one (1) Covered
`Component and at least one (1) Non-Covered Component.
`“Commercialization Plan”: As defined in Section 4.1.1.
`“Commercially Reasonable Efforts”: With respect to the commercialization of a
`product, efforts that are consistent with those utilized by companies of size and type similar to
`Company (or, if applicable, a Sublicensee), for products with similar commercial potential at a
`similar stage, taking into consideration their safety and efficacy, their cost to develop, the
`competitiveness of alternative products, the nature and extent of their market exclusivity, the
`likelihood of regulatory approval, their profitability, and all other relevant factors.
`“Company Affiliate”: Any Affiliate of Company.
`“Company Improvement”: (a) An Improvement which was invented solely by one or
`more Company Personnel without using University resources and owned solely by Company; or
`(b) an Improvement in which Company otherwise has an ownership interest, and University has
`no ownership interest, and Company has the right to grant a license to University.
`“Company Personnel”: Officers, directors, employees of Company and any Company
`Affiliate. Company Personnel shall also include independent contractors, agents, and
`representatives, when those individuals are acting in such capacity.
`“Confidential Information”: Information (including without limitation documents,
`notes, drawings, models, designs, data, results, memoranda, tapes, records, hardware, software,
`formulae and algorithms, marketing data, business planning or financial information, in hard
`copy form or in electronic form) which is disclosed by a party to the other party in connection
`with this Agreement, including without limitation information that: (a) is related to, results from,
`or arises out of use of the Inventions, the Improvements, or practice of the Patent Rights, or (b) is
`reasonably necessary for the use of the Inventions or practice of the Patent Rights, or for the
`development or commercialization of Licensed Products.
`
`{00019318-15}
` 
`
`2
`
`University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 4 of 43
`
`

`

`
`
`“Covered Component”: A component of a Combination Product which is covered by
`one or more Valid Claims.
`“CP Net Revenues”: As defined in Section 5.4.1(b).
`“Distributor”: A third party which has entered into an agreement with Company solely
`for the purpose of selling Licensed Products on behalf of Company (but not to make, use, or
`import Licensed Products), where such third party promotes, markets, and sells such Licensed
`Products under one or more Company trademarks on behalf of and/or with permission from
`Company.
`“Distributor Rights Payment”: Consideration in any form received by Company or
`Company Affiliates from a Distributor in consideration of the right to be a Distributor, including
`without limitation option fees, up-front fees, signing fees, maintenance fees, success fees, and
`any other consideration paid by or on behalf of the Distributor. “Distributor Rights Payment”
`shall not include any payments received by Company from a Distributor for the sale of Licensed
`Products to such Distributor or sales to end users by a Distributor; amounts paid for equity of
`Company by a Distributor (up to fair market value); loans or extensions of credit by a Distributor
`to Company; or consideration for the right to sell other products besides Licensed Products.
`“Dollar” means a U.S. dollar, and “$” shall be interpreted accordingly.
`“Effective Date”: The date of the last signature on the Signature Page.
`“EPC Member States” means member states of the European Patent Convention (EPC)
`regional patent system and designated as “EP” in the request of an international patent
`application filed under the Patent Cooperation Treaty (PCT), but excluding the extension states
`and Hong Kong.
`“Export Control Laws”: The Arms Export Control Act; the Export Administration Act
`of 1979; the International Traffic in Arms Regulations; the Export Administration Regulations;
`or any other rules or regulations pertaining to restrictions on use or disclosure of goods,
`information, or technology, of any applicable governmental agency.
`“FDA”: The U.S. Food and Drug Administration, or any successor agency thereto.
`“First Commercial Sale”: The initial sale of a Licensed Product to a third party end
`
`
`
`user.
`
`“Improvement”: An invention which: (a) is made after the Effective Date; (b) is directly
`related to the Patent Rights, but is not included within the definition of Patent Rights; (c) is or
`may be patentable or otherwise protected or protectable under law as intellectual property; and
`(d) either cannot be practiced without infringing one or more Valid Claims of the Patent Rights,
`or would itself be infringed by the practicing of the Patent Rights.
`“Infringe,” “infringe,” “infringement,” or any correlative term: Any infringement
`(whether direct, indirect, contributory or otherwise) of the intellectual property rights of
`University (including without limitation under the doctrines of claim construction or
`differentiation, literal overlap or equivalents); or any misuse, misappropriation, theft, or breach
`of confidence related to the Inventions and/or the Patent Rights.
`“Inventions”: As defined in Section 1.1.
`“Joint Improvement”: Any Improvement which was jointly invented: (a) by one or
`more Company Personnel and by one or more University Personnel; or (b) by one or more
`Company Personnel using University’s resources.
`
`{00019318-15}
` 
`
`3
`
`University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 5 of 43
`
`

`

`
`
`
`
`“Licensed Field”: The use of the Inventions and Patent Rights in all fields.
`“Licensed Improvement”: As defined in Section 3.6.5.
`“Licensed Product”: Any product, service, or process, the making, use, offer for sale,
`sale, importation, or providing of which uses the Inventions or any technology disclosed in the
`Patent Rights, including a Combination Product.
`“Licensed Territory”: Worldwide.
`“Net Revenues”: The gross revenues received by Company or a Company Affiliate from
`sales of Licensed Products, less the following: (a) commercially reasonable trade, quantity and
`cash discounts, chargebacks, credits and allowances actually allowed and taken; (b) sales or use
`taxes, excise taxes, customs duties, and other governmental charges; (c) amounts invoiced to the
`customer for outbound transportation, shipping, handling, and insurance; and (d) amounts
`actually allowed or credited on returns or rejections of Licensed Products or billing errors. In
`computing Net Revenues, no deductions from gross invoiced amounts and fees shall be made for
`commissions payable to individuals (whether they are with independent sales agencies or
`employed by Company or a Company Affiliate) or for cost of collections. “Net Revenues” shall
`also include any recovery of compensatory or actual damages in an infringement action, as set
`forth in Section 9.4. “Net Revenues” shall not include (a) any consideration designated
`specifically and solely for research and development of a Licensed Product (e.g. pursuant to a
`sponsored research agreement), (b) Sublicense Income, or (c) Distributor Rights Payments.
`“Non-Commercial Organization”: As defined in Section 3.2.2.
`“Non-Commercial Uses”: As defined in Section 3.2.1.
`“Non-Covered Component”: A component of a Combination Product which is not
`
`covered by one or more Valid Claims.
`“Option”: As defined in Section 3.6.4.
`“Option Term”: As defined in Section 3.6.5.
`“OTT”: The Office of Technology Transfer in University’s Office of Research and
`Development, and any successor to its responsibilities.
` “Patent Challenge”: Any action which disputes the validity or enforceability of, or
`otherwise opposes or interferes adversely with the prosecution of, any of the claims of the Patent
`Rights (including without limitation filing an action under the Declaratory Judgment Act, 28
`U.S.C. §2201(a)).
`“Patent Expenses”: All fees, charges, expenses, and costs incurred before and after the
`Effective Date in connection with the preparation, filing, prosecution (including without
`limitation any issuance, reissuance, reexamination, interference, or opposition), and/or
`maintenance of patents or patent applications relating to the Patent Rights, including without
`limitation all fees and charges of outside patent counsel. Patent Expenses shall be considered to
`be incurred when the fee, charge, expense, or cost is actually incurred (rather than when it is
`invoiced). For example, charges of outside patent counsel are considered to be incurred as of the
`date on which the professional services are rendered.
`“Patent Rights”: (a) U.S. and foreign patents and patent applications listed in Schedule
`A, as it may be amended from time to time by mutual agreement of the parties or to add Licensed
`Improvements pursuant to Section 3.6.5; (b) all patents and patent applications related to clause
`(a), whether filed before or after the Effective Date, which claim priority under 35 U.S.C. §119
`or the benefit of the filing date under 35 U.S.C. §120 or §371 (but only to the extent of subject
`
`
`
`{00019318-15}
` 
`
`4
`
`University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 6 of 43
`
`

`

`
`
`matter in a patent or patent application for which priority or benefit is claimed); (c) any
`substitution, divisional, continuation, and continuation-in-part (but only to the extent a claim in
`the continuation-in-part is directed to subject matter contained in a patent or patent application
`described in clause (a) or (b)); (d) any patent issuing from any patent or patent application
`described in clause (a), (b), or (c); (e) any reissue, renewal, reexamination, or extension of any
`patent or patent application described in clause (a), (b), (c), or (d); and (f) any foreign
`counterpart or equivalent of any patent or patent application described in clause (a), (b), (c), (d),
`or (e).
`
`“Person”: An individual, sole proprietorship, partnership, limited partnership, limited
`liability partnership, corporation, limited liability company, business trust, joint stock company,
`trust, incorporated association, joint venture or similar entity or organization, including a
`government or political subdivision, department or agency of a government.
`“Provider”: As defined in Section 7.1.1.
`“Recipient”: As defined in Section 7.1.1.
`“Sale,” “sale,” “sell,” or any correlative term: The sale, lease, license, transfer, or other
`disposition of a Licensed Product in return for any type of consideration. Licensed Products shall
`be considered sold when shipped or invoiced, whichever is first.
`“Sublicense”: A license, grant of rights to, or other similar permission to use all or some
`of the rights licensed under this Agreement in accordance with Section 3.4
`“Sublicensee”: A Person (other than a Company Affiliate) which receives a Sublicense.
`“Sublicense Income”: Consideration in any form receivable by Company or Company
`
`Affiliates from a Sublicensee (other than a Distributor) for use of the Inventions and Patent
`Rights or otherwise in consideration of its rights as a Sublicensee, including without limitation
`option fees, up-front fees, license signing fees, license maintenance fees, milestone payments,
`success fees, any royalties based on sales of Licensed Products by any Sublicensee, and any
`other consideration paid by or on behalf of the Sublicensee for the Sublicense. “Sublicense
`Income” shall not include any payment or consideration received by Company or Company
`Affiliates from a Sublicensee in consideration for anything other than a Sublicense, including
`without limitation: amounts paid for equity of Company by a Sublicensee (up to fair market
`value); loans or extensions of credit by a Sublicensee to Company; consideration for a license
`granted under technology other than the Inventions and Patent Rights; or consideration
`designated specifically and solely for research and development by Company of a Licensed
`Product (e.g. pursuant to a sponsored research agreement). “Sublicense Income” shall also not
`include any payment received from a Distributor, including without limitation payments based
`on sales of Licensed Products to a Distributor by Company or by a Distributor to end users, or
`Distributor Rights Payments.
`“Sublicensee Personnel”: Officers, directors, employees, agents, and representatives of
`a Sublicensee.
`“Term”: The period commencing as of the Effective Date, and ending upon the
`expiration of termination of this Agreement.
`“University Improvement”: (a) An Improvement which was invented solely by one or
`more University Personnel without using Company resources; or (b) an Improvement in which
`University otherwise has an ownership interest, and Company has no ownership interest.
`“University Inventors”: As defined in Section 1.1.
`
`{00019318-15}
` 
`
`5
`
`University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 7 of 43
`
`

`

`
`
` “University Personnel”: The following individuals if they use University resources and
`are subject to the USM IP Policy: University Inventors within the scope of employment by
`University; and University faculty members, research fellows, students, technicians, scientists,
`and/or other individuals working under the supervision or direction of University Inventors.
`“University Related Organizations”: USM, any constituent institution of USM,
`University of Maryland Medical System Corporation, faculty practice organizations of
`University, and the Baltimore Veterans Administration Medical Center.
`
`“USM”: The University System of Maryland, a public corporation and an instrumentality
`of the State of Maryland.
`“USM IP Policy”: The University System of Maryland Policy on Intellectual Property,
`effective July 1, 2002, as amended (http://www.usmd.edu/regents/bylaws/SectionIV/IV320.html), and any
`predecessor or successor policy adopted by USM regarding intellectual property and applicable
`to the Inventions and/or the Patent Rights.
`“USPTO”: The U.S. Patent and Trademark Office.
`“Valid Claim”:
`
`(a) Any claim of a pending patent application included within the Patent Rights
`which has been pending for less than five (5) years from the date of the first substantive action
`by the patent office in the country of interest, but only to the extent that such claim has not: been
`irrevocably withdrawn, canceled, or abandoned; or been determined to be unallowable by the
`final decision of the applicable governmental authority of competent jurisdiction (and from
`which no appeal or refiling is or can be taken); and
`
`(b) Any claim of an issued and unexpired patent set forth in the Patent Rights, but
`only to the extent that such claim has not: lapsed; been irrevocably withdrawn, cancelled, or
`abandoned; been held permanently revoked, unenforceable or invalid by a final decision of a
`court or other governmental authority of competent jurisdiction; or been held unappealable or
`unappealed within the time allowed for appeal, and which has not been admitted to be invalid or
`unenforceable through reissue or disclaimer or otherwise.
`
`ARTICLE 3. GRANT OF LICENSE
`
`License.
`3.1
`3.1.1 University grants to Company, and Company accepts, an exclusive
`
`license, but only during the Term, within the Licensed Field, and in the Licensed Territory: (a) to
`make, have made, use, sell, offer to sell, and import the Licensed Products; (b) otherwise to use
`the Inventions; and (c) to practice the Patent Rights.
`
`3.1.2 However, the license is subject to the terms and conditions of this
`Agreement, including without limitation Section 3.2.
`3.2
`University’s Reservation of Rights. Notwithstanding anything contained in this
`Agreement to the contrary, University specifically reserves for itself and University Related
`Organizations the following rights:
`
`3.2.1 To use the Inventions, to practice under the Patent Rights, and to make
`and use Licensed Products on a royalty-free basis for research, scholarly use, teaching,
`education, patient care incidental to the foregoing, and other similar uses, including without
`limitation sponsored research and collaborations with Non-Commercial Organizations (“Non-
`Commercial Uses”);
`
`{00019318-15}
` 
`
`6
`
`University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 8 of 43
`
`

`

`
`
`3.2.2 To license government agencies, universities or other educational
`
`institutions, organizations of the type described in §501(c)(3) of the Internal Revenue Code,
`scientific or educational organizations qualified under a state nonprofit organization statute (or
`foreign equivalents of the foregoing) (“Non-Commercial Organizations”) to use the
`Inventions, to practice under the Patent Rights, and to make and use Licensed Products on a
`royalty-free basis solely for Non-Commercial Uses; and to provide material and information
`(excluding Confidential Information of Company and Company Affiliates) to Non-Commercial
`Organizations solely for Non-Commercial Uses;
`
`
`3.2.3 Subject to Article 7 (Confidentiality), to disseminate and publish scientific
`findings from research related to the Inventions, the Patent Rights, and/or Licensed Products and
`to permit University Personnel to do the same.
`
`
`3.2.4
`It is understood and agreed that, notwithstanding anything in this
`Agreement to the contrary, Company shall have no liability for the use of Licensed Products by
`University, University Related Organizations, or other Non-Commercial Organizations and
`Company shall have no indemnity obligations relating to the foregoing.
`
`3.3
`Company Affiliates.
`
`3.3.1 Company may not assign, sublicense, grant, or otherwise convey any
`rights or obligations under this Agreement to a Company Affiliate, without obtaining
`University’s prior written consent. Such consent shall not be unreasonably withheld, delayed, or
`conditioned. No license is conveyed under this Agreement to any Company Affiliate, except
`pursuant to this Section 3.3.
`
`3.3.2
`In the event of a permitted assignment, sublicense, grant, or other
`conveyance to a Company Affiliate:
`(a) The terms and conditions of the assignment, sublicense, grant, or other
`conveyance must be consistent with this Agreement;
`
`
`
`(b)
`Company shall identify to University by name and address of any
`such Company Affiliate, and shall promptly provide to University a true and complete copy of
`each relevant agreement or document;
`
`
`(c)
`The Company Affiliate shall be bound by all of Company’s duties,
`obligations, and responsibilities under this Agreement;
`
`
`(d)
`Company and that Company Affiliate shall be jointly and severally
`liable for all of their respective duties, obligations, and responsibilities under this Agreement,
`including without limitation the payment of royalties and Sublicense Income, whether or not paid
`to Company by Company Affiliate; and
`
`
`(e)
`Unless the context specifically indicates otherwise, the definition
`of “Company” as used in this Agreement shall be construed to mean “Harpoon Medical, Inc. and
`those Company Affiliates as to which University has consented to an assignment, sublicense,
`grant, or other conveyance pursuant to Section 3.3, as the case may be.”
`
`3.4
`Sublicenses.
`
`
`3.4.1 Generally.
`
`
`(a)
`Company may grant Sublicenses of some or all of the rights
`granted by this Agreement, provided that there is no uncured material default or breach of this
`Agreement by Company at the time of the grant, and that the grant complies with the terms and
`
`{00019318-15}
` 
`
`7
`
`University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 9 of 43
`
`

`

`
`
`conditions of this Section 3.4. Company shall be and remain responsible for the performance by
`each Sublicensee of the Company’s obligations under this Agreement.
`
`
`(b)
`Prior to entering into any Sublicense, Company shall provide
`University a draft of the proposed sublicense in substantially final form. University shall provide
`Company with comments as soon as practicable (but not later than fifteen (15) Business Days
`after receipt of the draft agreement). University’s comments shall be limited to ensuring that the
`Sublicense satisfies the requirements of Section 3.4.2. Company shall use reasonable efforts to
`make revisions to accommodate any such University comments. If Company disputes any
`University comment, it shall advise University prior to finalizing the Sublicense, and the parties
`shall negotiate in good faith to resolve any disagreement. Company shall promptly provide to
`University a true and complete copy of each executed Sublicense and any amendments. Any
`documents provided under this Section shall be subject to Article 7 (Confidentiality).
`
`
`
`(c)
`Any purported Sublicense entered into by Company in violation of
`the requirements of this Section 3.4 shall be null and void and without effect.
`(d)
` Company shall be responsible to ascertain, compute, audit, and
`collect all consideration that is payable by the Sublicensee, and to enforce the performance by
`the Sublicensee of its obligations under the Sublicense.
`
`
`(e)
`To the extent required by this Agreement, Company shall establish
`standards regarding the quality of Licensed Products made or sold by the Sublicensee, and to
`monitor and enforce those standards.
`
`
`(f)
`To the extent required by this Agreement, Company shall be
`responsible to protect the sublicensed rights.
`
`
`(g)
`Company shall be required to pay Sublicense Income pursuant to
`Section 5.5.
`3.4.2 Required Terms of Sublicenses. Any Sublicense shall be consistent with
`
`and subject to the terms and conditions of this Agreement, and shall incorporate terms and
`conditions sufficient to enable Company to comply with this Agreement. In addition, any
`Sublicense shall:
`the benefit of University
`include provisions for
`Expressly
`(a)
`
`
`substantially similar to this Section 3.4 (Sublicenses), Section 3.7 (Patent Challenges), Section
`5.6 (Royalty Stacking), Article 7 (Confidentiality), Article 8 (Reports, Payments, and
`Accounting), Article 11 (Other Agreements), and Section 12.2 (Disclaimer of Warranties by
`University);
`Require the Sublicensee to maintain insurance consistent with the
`(b)
`
`
`requirements of Section 13.1, and to defend, indemnify, and hold harmless the State of
`Maryland, the University System of Maryland, University, University Related Organizations,
`and each of their respective current and future regents, directors, trustees, officers, faculty,
`medical and professional staff, employees, students, trainees, and agents, and their respective
`successors, heirs, and assigns consistent with Section 13.2;
`
`
`(c)
`Prohibit further sublicensing by Sublicensee without the prior
`written consent of University (which consent shall not be unreasonably withheld), and require
`that any permitted Sublicense from a Sublicensee satisfy the requirements of this Section; and
`
`
`(d)
`Require that any dispute between Sublicensee and University
`which may arise upon termination or expiration of this Agreement shall be subject to dispute
`resolution on the terms and conditions set forth in Article 14 (Dispute Resolution) of this
`Agreement.
`
`{00019318-15}
` 
`
`8
`
`University of Maryland, Baltimore
`IPR2016-00208
`
`Exhibit 2015
`Page 10 of 43
`
`

`

`
`
`3.4.3 Direct License to Sublicensee.
`
`
`
`(a)
`In the event of termination of this Agreement prior to expiration of
`
`
`the Term, Company or any Sublicensee, as the case may be, may request that University grant a
`direct license to a Sublicensee of the Patent Rights sublicensed by Company under the terms of
`its Sublicense (a “Direct License”). Any such request must be submitted no later than thirty (30)
`days following the effective date of termination of this Agreement. Any such request must be
`submitted in writing, accompanied by a true, complete, and non-redacted copy of the Sublicense
`and all amendments, and any other related agreements between Company and Sublicensee.
`University shall have fifteen (15) Business Days after receipt of the notice and all requested
`documents to notify Company or the Sublicensee in writing of its determination as to whether to
`agree to grant the Direct License.
`
`
`
`(b)
`University shall grant a Direct License, if:
`(1) Sublicensee is not in material default or breach under the
`Sublicense as of the date of termination of this Agreement;
`(2) The Sublicensee, as of the date of the request for a Direct
`License and the effective date of the Direct License: (i) is not in material default or breach under
`its Sublicense or under any agreement with University, USM, or the State of Maryland, and is
`current on all of its financial obligations to University, USM, or the State of Maryland (including
`without limitation taxes); (ii) is not an adverse party in any litigation, arbitration, administrative
`or other similar proceeding with University, USM, or the State of Maryland; (iii) has sufficient
`financial capacity and resou