Case 3:18-cv-00347-CAB-MDD Document 253-5 Filed 01/18/20 PageID.22440 Page 1 of 15
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`EXHIBIT 5
`
`
`TO THE DECLARATION OF BRIAN J. NISBET
`IN SUPPORT OF DEFENDANTS’ MOTION
`FOR SUMMARY JUDGMENT OR, IN THE
`ALTERNATIVE, SUMMARY ADJUDICATION
`
`
`
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`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. v. NUVASIVE INC.
`IPR2019-00362, Ex. 1063, p. 1 of 15
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`

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`Case 3:18-cv-00347-CAB-MDD Document 253-5 Filed 01/18/20 PageID.22441 Page 2 of 15
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`\ 1 NUVASIVE*
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`Sp©©d of ISnnoi/mtion™
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`|
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`Consulting Agreement Memo
`
`Date:
`To:
`CC:
`
`RE:
`
`October 26, 2017
`Matt Link
`File
`SPS (Global) Consulting Agreement for Jim Youssef, M.D. (contracting as
`Durango Spine, LLLP)
`
`Dr. Youssef (contracting as Durango Spine, LLLP) has submitted a new consulting agreement
`that covers his engagement for services relating to lateral spine surgery and/or single position
`spine surgery.
`
`Services:
`
`Educational Lecturing Services for NuVasive
`Employees, Agents and Contractors
`
`Preceptorships
`
`Educational Lecturing Services for Health Care
`Professionals
`
`Proctoring/Product Training Services
`
`Product Evaluation Services
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`Product Development Services
`
`Market Assessment Services
`
`M&A, Joint Venture and Investment Services
`
`Strategic Planning Services
`
`Cash Compensation:
`
`$1,250,000, paid quarterly over five years
`
`Equity Compensation:
`
`Five grants of PRSUs occurring on January 2, 2018,
`2019, 2020, 2021 and 2022, each for a target number
`of shares calculated by dividing $600,000 by the
`closing price per share of NuVasive’s common stock
`on the respective grant date.
`
`Each PRSU award shall vest on the five-year
`anniversary of the applicable grant date. The number
`of shares of common stock payable upon vesting of
`each PRSU award shall be equal to 0-100% of the
`target number of shares for such award based on the
`level of achievement of Cumulative Global Revenue of
`products incorporating Consultant’s developments.
`
`Term:
`
`Ten years
`
`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. v. NUVASIVE INC.
`IPR2019-00362, Ex. 1063, p. 2 of 15
`
`

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`Case 3:18-cv-00347-CAB-MDD Document 253-5 Filed 01/18/20 PageID.22442 Page 3 of 15
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`CONSULTING AGREEMENT
`
`This CONSULTING AGREEMENT {the "Agreement") is dated as of QtA-ihiS Z0-, 2017 (the "Effective Date"), by
`and between NuVasive, Inc., a Delaware corporation (“NuVasive"), and Durango Spine, LLLP (“Consultant").
`
`WHEREAS, NuVasive is a medical device company that develops, manufactures and supplies certain surgical
`products and procedurally-integrated solutions for the spine and, in connection therewith, consults with licensed
`medical professionals for assistance in a variety of areas in order to improve spine surgery and patient outcomes;
`and
`
`WHEREAS, Consultant, through the personal services of Jim A. Youssef, M.D, a licensed physician and agent of
`Consultant (“HCP" and together with Consultant, jointly and severally, "Provider"), has the appropriate expertise
`and qualifications to consult with NuVasive regarding certain of its products and procedures; and
`
`WHEREAS, NuVasive and Consultant are parties to that certain General Consulting and Services Agreement, dated
`April 1, 2009, as amended April 8, 2010, June 1,2011 and August 30, 2017 (the “Prior Agreement”), and the parties
`desire that the Prior Agreement remain in full force and effect in accordance with its terms; and
`
`WHEREAS, NuVasive and Consultant are parties to that certain Surgeon Advisory Board Consulting Agreement,
`dated as of February 8, 2017 (the "SAB Agreement"), and the parties now wish to terminate the SAB Agreement
`and further desire that this Agreement supersede and replace the SAB Agreement in its entirety; and
`
`WHEREAS, NuVasive and Consultant wish to enter into this Agreement, to, among other things, establish a long­
`term exclusive consulting arrangement whereby Provider agrees to provide Consulting services related to the field
`of spine surgery only to NuVasive.
`
`NOW, THEREFORE, the parties hereby agree as follows:
`
`1.
`
`Term; Services.
`
`NuVasive hereby engages Provider, and Provider accepts such engagement, to provide Services
`(a)
`(as defined below) to NuVasive for a period of ten years from and after the Effective Date hereof (as such period
`may be earlier terminated in accordance with the terms of this Agreement, the “Term”). During the Term, on
`average. Consultant agrees to perform no less than 20 hours of Services per month. It is expected that Provider,
`in performing the Services, will create Developments (as defined below) that will provide substantial and valuable
`long-term benefits to NuVasive.
`
`During the Term, Consultant shall provide the services (the "Services”) set forth on the Scope(s) of
`(b)
`Work (each, an “SOW”) entered into under this Agreement from time to time by the parties. Consultant agrees that
`all Services under this Agreement shall be performed exclusively by HCP unless otherwise agreed in writing by
`NuVasive. Consultant covenants, acknowledges and agrees that it shall be responsible for (i) HCP's compliance
`with the terms and conditions applicable to HCP and Provider hereunder and (ii) all acts and omissions of HCP
`hereunder. In addition, HCP covenants, acknowledges and agrees that HCP is personally responsible for
`complying with the terms and conditions applicable to HCP and Provider hereunder.
`
`The initial SOWs are attached hereto as Exhibit A-1 and Exhibit A-2, and, as additional Services
`(c)
`may be requested of Consultant by NuVasive, such additional Services will be documented by additional SOWs to
`be acknowledged by NuVasive, Consultant and HCP. Each SOW shall be deemed a part of this Agreement and
`subject to the same terms and conditions set forth herein. For purposes of clarity, any reference to “Agreement’’
`herein shall be interpreted to include this Agreement and any applicable SOW. In addition to describing the Services
`of a respective engagement by NuVasive of Consultant, each SOW may also contain certain terms and conditions
`applicable with respect to each such engagement.
`
`In performing the Services under this Agreement, Provider shall report and be responsible to
`(d)
`Matthew Link and/or such other employee designated in the applicable SOW and/or such other person(s) as may
`be subsequently designated by NuVasive (the “NuVasive Designee(s)”). Provider shall be responsible for recording
`the number of hours associated with performing the Services hereunder and documenting the Developments.
`NuVasive shall facilitate these efforts and provide reasonable assistance and support in furtherance thereof.
`
`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. v. NUVASIVE INC.
`IPR2019-00362, Ex. 1063, p. 3 of 15
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`

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`Case 3:18-cv-00347-CAB-MDD Document 253-5 Filed 01/18/20 PageID.22443 Page 4 of 15
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`Provider shall provide all Services in a professional, skilled, and efficient manner, consistent with
`(e)
`pertinent industry standards. Provider shall also use commercially reasonable efforts and such working time and
`energy as may be required for the satisfactory performance of the Services in accordance with NuVasive’s requests
`and instructions.
`
`2.
`
`Consideration.
`
`As compensation for the provision of all Services provided hereunder by Consultant, including the
`(a)
`exclusivity of the consulting arrangement established pursuant to Section 5 hereof, as well as consideration for
`Consultant’s assignment to NuVasive of all worldwide right, title and interest in and to all Developments pursuant
`to Section 8 hereof, NuVasive agrees to pay to Consultant certain quarterly cash payments (the "Cash
`Consideration”) and to grant HCP annual equity-based awards in the form of performance restricted stock units
`("PRSUs”) (together with the Cash Consideration, the "Consideration”), as follows:
`
`(i)
`Subject to Provider's continued provision of Services and compliance with the terms of this
`Agreement, within 45 days of the end of each calendar quarter, beginning with the calendar quarter ending March
`30,2018 through and including the calendar quarter ending March 30, 2023, NuVasive shall make a cash payment
`to Consultant equal to the amount of $62,500.
`
`Subject to Provider’s continued provision of Services and compliance with the terms of this
`(ii)
`Agreement, on each of January 2, 2018, 2019, 2020, 2021 and 2022 (each such date, a "Grant Date"), NuVasive
`shall grant HCP a PRSU award, which shall, in each case, vest on the five-year anniversary of the respective Grant
`Date (each such date, a "Vesting Date”).
`
`Each PRSU award shall be granted with respect to a target number of shares of Company
`(iii)
`common stock (the “Target"), calculated by dividing $600,000 by the closing price per share of the Company’s
`common stock on the respective Grant Date. The number of shares of common stock payable upon vesting of
`each PRSU award shall be equal to 0%-100% of the Target for such award based on the level of achievement of
`Cumulative Global Revenue (as defined below) of Products (as defined below) incorporating the Developments.
`On an annual basis, the Company shall calculate the amount of Cumulative Global Revenue of Products as of the
`end of the fiscal quarter ending September 30 of such year (commencing with the fiscal quarter ending September
`30, 2022) (each such date, a "Measurement Date”). If the Cumulative Global Revenue as of the applicable
`Measurement Date for a PRSU award meets or exceeds the Cumulative Global Revenue Target for such PRSU
`award as set forth in the table below, the number of shares of common stock payable upon vesting of such PRSU
`award shall be equal to 100% of the Target number of shares for such PRSU award. If the Cumulative Global
`Revenue as of the applicable Measurement Date for a PRSU award does not meet the Cumulative Global Revenue
`Target for such PRSU award as set forth in the table below, the number of shares of common stock payable upon
`vesting of such PRSU award shall be equal to (a) the Target number of shares for such PRSU award multiplied by
`(b) the percentage achievement of the Cumulative Global Revenue Target for such PRSU award, determined by
`linear interpolation and rounded to the nearest tenth of a percent; provided, however, that if the Cumulative Global
`Revenue Minimum as of the applicable Measurement Date for a PRSU award is not achieved, then no shares of
`common stock shall be payable upon vesting of such PRSU award.
`
`Grant Date
`
`Jan.2, 2018
`
`Jan. 2, 2019
`
`Jan. 2, 2020
`
`Jan. 2,2021
`
`Jan. 2, 2022
`
`Measurement
`Date
`Cumulative
`Global Revenue
`T arget
`Cumulative
`Global Revenue
`Minimum
`Vesting
`Date
`
`Sept 30, 2022
`
`Sept 30, 2023
`
`Sept 30, 2024
`
`Sept 30, 2025
`
`Sept 30, 2026
`
`$100.0 million
`
`$200.0 million
`
`$300.0 million
`
`$400.0 million
`
`$500.0 million
`
`$10.0 million
`
`$20.0 million
`
`$30,0 million
`
`$40.0 million
`
`$50.0 million
`
`Jan. 2, 2023
`
`Jan. 2, 2024
`
`Jan. 2, 2025
`
`Jan. 2, 2026
`
`Jan. 2, 2027
`
`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. v. NUVASIVE INC.
`IPR2019-00362, Ex. 1063, p. 4 of 15
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 253-5 Filed 01/18/20 PageID.22444 Page 5 of 15
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`As used herein, “Products" shall mean any NuVasive products related to lateral spine
`(iv)
`surgery and/or single position spine surgery for which Consultant provides strategic input and guidance and/or for
`which Consultant's Developments provide a novel, significant or innovative contribution to the development thereof
`pursuant to this Agreement and which were commercialized during the term of this Agreement, in each case, as
`determined by NuVasive in its sole discretion. The parties agree that NuVasive shall unilaterally create a list of
`such Products, to be attached as Schedule 1 to this Agreement, and that from time to time, such Schedule 1 may
`be updated unilaterally by NuVasive upon its determination (in its sole discretion) that it has commercialized a
`Product to which Consultant’s Developments have provided a novel, significant and/or innovative contribution.
`NuVasive agrees that in creating such list and making determinations with respect thereto, NuVasive shall use an
`approach consistent with that used for other providers providing consulting services related to lateral spine surgery
`and/or single position spine surgery.
`
`As used herein, "Cumulative Global Revenue" as of a Measurement Date shall mean the
`(v)
`revenue recognized by NuVasive under Li.S. GAAP for all Products billed to hospitals or other professional end-
`users (excluding Products purchased by HCP, Consultant, HCP’s practice group or hospital, or any other entity
`affiliated with HCP or Consultant) for commercial sale following full commercial launch of the Products (as
`determined by NuVasive in its sole discretion) and through and including the applicable Measurement Date, in the
`aggregate. It is understood and agreed between the parties that NuVasive shall have no obligation whatsoever to
`achieve, or use any efforts to achieve, any commercialization, development, or promotion of the Products nor any
`obligation to maximize the amount of Cumulative Global Revenue with respect thereto. NuVasive agrees to provide
`Provider with its calculation of Cumulative Global Revenue as of each Measurement Date no later than thirty (30)
`days after the expiration of the accounting and audit close of the NuVasive fiscal quarter ending on each
`Measurement Date (but in no event later than one hundred twenty (120) days after the last day of each such fiscal
`quarter), which shall include the determination as to the number of shares of common stock payable upon vesting
`of each PRSU award.
`
`Each PRSU award will be subject to approval by the Compensation Committee of
`(vi)
`NuVasive's Board of Directors and evidenced by, and subject to the terms and condition of, a performance restricted
`stock unit agreement between HCP and NuVasive, substantially in the form attached hereto as Annex I (the “PRSU
`Agreement”), if any PRSU award is not granted to HCP because it was not approved by the Compensation
`Committee of NuVasive's Board of Directors, and if Provider has fulfilled its obligations pursuant to this Agreement
`and has not breached the terms and conditions of this Agreement, failure to grant such PRSU award shall be
`considered a termination by Provider for "good reason" (as set forth in the PRSU Agreement) and Provider shall be
`entitled to (A) vesting of any outstanding PRSU awards pursuant to the terms of Section 12 hereof and (B) liquidated
`damages pursuant to the terms of Section 14 hereof.
`
`The parties acknowledge and agree that Consultant shall not be entitled to, nor receive,
`(vii)
`any royalties, milestones or other payments from NuVasive with respect to Developments and the Consideration
`represents fair market value for the Services to be provided during the Term of the Agreement, including the
`Developments to be created hereunder. The parties acknowledge and agree that the Consideration has not been
`determined in a manner that takes into account the volume or value of any referrals or business otherwise generated
`between Provider and NuVasive, and shall not obligate Provider to purchase, utilize, recommend, or arrange for
`the use of any NuVasive products. Consultant agrees to document all Services Provider provides, which shall
`include the date the Services were provided, a detailed description of the Services provided (e.g., preparation time,
`research time, speaking time, etc.) and the amount of time spent providing the Services. Consultant shall provide
`NuVasive with copies of such documentation, in form and substance as may be reasonably requested by NuVasive,
`on a monthly basis or as may reasonably be requested by NuVasive.
`
`(b) No part of the Consideration will be subject to payroll tax withholding and payment by NuVasive
`including, but not limited to, federal income tax, state income tax, federal and state employment taxes, federal social
`security tax, and federal Medicare tax. Consultant and HCP agree to complete and return to NuVasive a completed
`W-9 form and to report to the appropriate taxing authorities any and all Consideration received from NuVasive
`hereunder and shall be solely responsible for the payment of any and all taxes respective thereto, NuVasive will
`report the Consideration as required by applicable federal, state or local tax law or regulations. Upon receipt by
`NuVasive of copies of receipts or other appropriate evidence of expenditures by Consultant, NuVasive shall
`reimburse Consultant for pre-approved, reasonable travel expenses incurred by Consultant at the request of
`NuVasive in the course of rendering Services hereunder in accordance with NuVasive’s travel and expense policies.
`
`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. v. NUVASIVE INC.
`IPR2019-00362, Ex. 1063, p. 5 of 15
`
`

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`Case 3:18-cv-00347-CAB-MDD Document 253-5 Filed 01/18/20 PageID.22445 Page 6 of 15
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`NuVasive shall report the Consideration paid to Consultant and HCP hereunder as required by
`(c)
`federal and state transparency laws, including, without limitation, the Federal Physician Payments Sunshine Act.
`
`3.
`
`Relationship of Parties: Compliant Provision of Services.
`
`Provider's relationship with NuVasive will be that of an independent contractor, and nothing in this
`(a)
`Agreement is intended to, or should be construed to, create a partnership, agency, joint venture or employment
`relationship. NuVasive will not be responsible for Provider's acts while performing the Services, whether on
`NuVasive's premises or elsewhere, and Provider will not have authority to speak for, represent, or obligate
`NuVasive in any way. Provider will not be entitled to any of the benefits that NuVasive may make available to its
`employees, including, but not limited to, group health, life insurance, profit-sharing or retirement benefits, paid
`vacation, holidays or sick leave. Provider will not be authorized to make any representation, contract or commitment
`on behalf of NuVasive unless specifically requested or authorized in writing to do so by an authorized officer or
`employee of NuVasive. Provider will be solely responsible for obtaining any business or similar licenses required
`by any federal, state or local authority. In addition, NuVasive shall not provide any insurance coverage of any kind
`for Provider.
`
`Provider represents and warrants that Provider has the requisite expertise, ability, and legal right
`(b)
`to provide the Services and will perform the Services in an efficient manner and in accordance with the terms of this
`Agreement. Provider warrants that Provider will abide by all laws, rules, and regulations that apply to the
`performance of the Services and will comply with all of NuVasive’s policies and procedures with respect to
`appropriate conduct, including, without limitation, federal and state anti-fraud and anti-kickback laws, the Federal
`Food, Drug, and Cosmetic Act, and any law, order, or regulatory provision related to the advertising and promotion
`of medical device products and/or NuVasive's policies and procedures relating to those laws, including, without
`limitation, NuVasive's policy against the improper promotion of products with off-label information and NuVasive's
`policy prohibiting offers or solicitation of kickbacks. In addition, Provider agrees to undergo and certify to any
`compliance-related training required by NuVasive and shall maintain the high standards of ethics and integrity by
`which NuVasive conducts business. Provider shall have the right to control the performance of the Services, as the
`result of the work is the primary factor bargained for in this consultancy, and not the manner, method or means by
`which the result is obtained.
`
`(c)
`Provider agrees and acknowledges that any payments or other reimbursement made under this
`Agreement are made solely for services rendered to NuVasive, and that no payments or any other reimbursement
`provided by NuVasive to Provider are to be construed as compensation for activities that Provider performs in
`connection with membership in any professional society ("Society(ies)"). With respect to proctoring or other activities
`Provider performs in connection with Society memberships, Provider acknowledges and agrees that such activities
`are not in any way at the request or for the benefit of NuVasive, and that Provider is not in any way acting as
`NuVasive's agent or representative in connection with such Society activities. Provider further acknowledges and
`agrees that when conducting Society activities, Provider is in no way expected or obligated to discuss, mention,
`recommend or endorse NuVasive products, and Provider may freely and openly discuss any subject Provider
`deems relevant, including competitor products. Provider further understands that any statements or representations
`made by Provider in connection with Society activities are not in any way endorsed or authorized by NuVasive.
`
`4.
`
`CONFIDENTiALITY,
`
`During discussions leading up to this Agreement and during the course of providing the Services,
`(a)
`it is anticipated that Provider will learn confidential and/or proprietary information of NuVasive. Provider will keep
`confidential and not use, except in connection with the performance of the Services hereunder, any and all
`information provided to Provider by NuVasive and/or developed by Provider while performing Services, including,
`without limitation, information concerning NuVasive’s products, manufacturing processes, customers, product
`pricing, and technical know-how, (i) unless and until NuVasive consents to disclosure in writing, or (ii) unless such
`information otherwise was previously known by Provider at the time of disclosure, as documented by Provider in
`writing at the time of disclosure or thereafter, or {ill) unless such information is generally available to or known by
`the public or becomes generally available to the public through no fault of Provider. Unless the information provided
`by NuVasive is on its face not confidential (e.g., general education materials, product literature, or other information
`intended for general circulation or disclosure), all information provided by NuVasive to Provider shall be treated by
`Provider as confidential hereunder. Provider further represents that any and all information disclosed to NuVasive,
`or used for the benefit of NuVasive, by Provider does not and will not include any confidential, trade secret, or
`proprietary information of others. Except as required by Provider Disclosure Obligations {as defined below),
`
`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. v. NUVASIVE INC.
`IPR2019-00362, Ex. 1063, p. 6 of 15
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 253-5 Filed 01/18/20 PageID.22446 Page 7 of 15
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`Provider will not disclose to others, without NuVasive's written consent, any of the terms or conditions of this
`Agreement. The foregoing obligations of nonuse and confidentiality shail survive the expiration or termination of this
`Agreement. Upon termination of the Services set forth on an applicable SOW, Provider will return to NuVasive all
`copies of drawings, specifications, manuals, and other printed or reproduced material (including information stored
`on machine readable media) provided to Provider by NuVasive or developed by Provider during the performance
`of Services under this Agreement. In the event of a breach or threatened breach by Provider of any of the provisions
`hereof, Provider hereby consents and agrees that NuVasive shail be entitled to pre-judgment injunctive relief or
`similar equitable relief to restrain Provider from committing or continuing any such breach or threatened breach.
`
`Provider acknowledges that (i) any NuVasive information being furnished hereunder may contain
`(b)
`material, non-public information regarding NuVasive or its business partners, and (ii) United States securities laws
`may prohibit any persons who have material, non-public information regarding NuVasive or its business partners
`from purchasing or selling securities of NuVasive in reliance upon such information, or from communicating such
`information to any person under circumstances in which it is reasonably foreseeable that such person is likely to
`purchase or sell such securities of NuVasive or its business partners in reliance upon such information.
`
`5.
`
`Exclusivity; Conflicts of Interest.
`
`During the Term of this Agreement, and fora period of 12 months after the expiration or termination
`(a)
`hereof, Consultant agrees not to engage in Competition (as defined below) without the prior written consent of the
`NuVasive. For purposes of this Agreement, "Competition" means providing consulting or other services or
`otherwise accepting employment ’with or serving as an advisor to any company or business (other than NuVasive
`and its subsidiaries) that is engaged in the design, development, manufacture, marketing, distribution or sale of
`products or services for or related to spine surgery or that is otherwise competitive with NuVasive or its business (a
`"Competitor"). In no way shall the foregoing exclusivity restrict in any way HCP’s practice of medicine or impose
`limitations on HCP's ability to make clinical decisions with respect to patient care. Further, in no way shall this
`Agreement require HCP to remain engaged in the practice of medicine; the parties agree that this Agreement shall
`remain in effect in accordance with its items notwithstanding the retirement of HCP or other decision by HCP to
`cease the practice of medicine.
`
`Provider represents that Provider has no relationships with any third party, including any
`(b)
`Competitor, which does or could present a conflict of interest with the Services, which does or could result in
`Competition, or which does or could prevent Provider from carrying out the terms of this Agreement. Within 15
`days following the execution of this Agreement, Provider shall inform NuVasive of all existing agreements and
`arrangements with Competitors, including all consulting agreements, development agreements and royalty
`agreements, and provide written summaries thereof and descriptions of Provider’s obligations thereunder to
`NuVasive, which Provider represents and warrants shall be accurate and complete. NuVasive shall promptly review
`such written summaries and descriptions and make a determination as to whether any of such agreements and
`arrangements provide for Consultant's engagement in activities that would constitute Competition and that present
`such a potential conflict of interest that they warrant termination ("Competitor Agreements"). NuVasive shall provide
`notice to Provider of its determination with respect thereto within 15 days of the receipt of the written summaries
`and descriptions thereof. Provider shall thereafter terminate any such Competitor Agreements within 15 days of
`receipt of such notice. In the event Provider does not terminate any such Competitor Agreements in accordance
`herewith, this Agreement shall automatically terminate and be of no further force and effect. The parties agree that
`such a termination will serve as a rescission and termination of this Agreement ab initio, with no ongoing rights or
`obligations of either party hereunder. Notwithstanding the foregoing, Consultant may continue to receive payments,
`including royalty payments, under Competitor Agreements for services performed prior to the Effective Date of this
`Agreement.
`
`Provider agrees that it shall be a material breach of this Agreement if Provider, during the Term
`(c)
`and for a period of 12 months thereafter, engages in Competition or enters into an agreement with respect thereto.
`Upon learning of the existence of any such relationship, NuVasive will have the option to terminate this Agreement
`and any Services set forth on an SOW without further liability. Provider shall have no recourse against NuVasive
`for termination under this Section 5(c). In addition, in the event Provider’s relationship with NuVasive hereunder
`creates a conflict of interest between Provider and a third party (whether as of the Effective Date or during the term
`of this Agreement), Provider acknowledges and agrees that it shall be Provider’s obligation to inform any such third
`party of such conflict of interest to the extent disclosure is required and to promptly terminate the relationship with
`such third party.
`
`ALPHATEC HOLDINGS, INC., ALPHATEC SPINE INC. v. NUVASIVE INC.
`IPR2019-00362, Ex. 1063, p. 7 of 15
`
`

`

`Case 3:18-cv-00347-CAB-MDD Document 253-5 Filed 01/18/20 PageID.22447 Page 8 of 15
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`6.
`
`Disclosures To Third-Parties,
`
`Notwithstanding the confidentiality obligations contained in this Agreement, including but not limited
`(a)
`to those set forth in Section 4, Provider may have obligations to disclose information regarding the existence of this
`Agreement and the terms hereof and/or any payment made hereunder {"Provider Disclosure Obligations”) pursuant
`to (i) federal, state or local lav/s, rules or regulations, (ii) requirements of, or obligations to, hospitals, academic
`institutions, professional organizations, or other entities relating to conflicts of interests, or (iii) other obligations
`Provider has to disclose potential conflicts of interest created by Provider’s relationship with NuVasive hereunder
`to third parties, including patients or employers. Provider acknowledges and agrees that Provider is solely
`responsible for identifying and complying with such Provider Disclosure Obligations.
`
`(b)
`NuVasive may have obligations to disclose information regarding the existence of this Agreement
`and the terms hereof and/or any payment hereunder pursuant to federal, state or local laws, rules or regulations
`('‘NuVasive Disclosure Obligations"). NuVasive acknowledges and agrees that NuVasive is solely responsible for
`identifying and complying with such NuVasive Disclosure Obligations.
`
`Non-Interference with Business. Provider hereby agrees to take no action that is likely to be detrimental
`7.
`to the reputation or business of NuVasive or any of its affiliates and/or subsidiaries, whether while performing the
`Services or otherwise. Additionally, during the Term of this Agreement, and for a period of 12 months after the
`expiration or termination hereof, Provider agrees that Provider shall not, for any or no reason, whether directly on
`Provider's own behalf or as an employee, independent contractor, partner, owner, officer, director of any entity or
`in any other capacity or indirectly, employ, solicit or offer work to any of NuVasive’s employees, agents or
`representatives, without the express, written consent of NuVasive.
`
`8.
`
`Developments.
`
`Provider agrees that any and all Developments {as defined below) shall be the sole and exclusive
`(a)
`property of NuVasive. Provider hereby irrevocably assigns to NuVasive all of Provider’s worldwide right, title and
`interest in and to any ideas, concepts, processes, discoveries, developments, formulae, information, materials,
`improvements, designs, artwork, content, software programs, other copyrightable works, and any other work
`product created, conceived, reduced to practice or developed by Provider (whether alone or jointly with others) (i)
`in the course of performing the Services hereunder, and/or (ii) based on any information received by Provider from
`NuVasive (each, a “Development” and together, the "Developments"), in each case, whether before the Effective
`Date or during the Term of this Agreement. Each copyrightable work, to the extent permitted by law, will be
`considered a work made for hire and the authorship and copyright of the work shall be in NuVasive's name. Provider
`agrees to hold all Developments confidential in accordance with Section 4 of this Agreement. Provider shall
`promptly disclose to NuVasive each Development. Provider agrees that, upon NuVasive's request, it will provide
`NuVasive (or anyone it designates) with all reasonable assistance and cooperation, and execute documents and
`take such further actions to confirm and enforce NuVasive's right, title and interest in and to the Developments, and
`to enable NuVasive to maintain, perfect, and/or enforce NuVasive's rights in the Developments, including, without
`limitation, by assisting NuVasive in recording, prosecuting, renewing and/or registering its right, title and interest in
`the Developments, including any and all intellectual property rights, all at NuVasive's cost and expense. If for any
`reason Provider’s interest in a Development is subordinate to another party’s interest, or if Provider's interest in
`such Development has been released to another party pursuant to a