EXHIBIT 10.23
[***] Certain information in this document has been excluded pursuant to Regulation S-K, Item 601(b)(10). Such excluded information is not material and is the type that the registrant treats as private or confidential.
Exhibit 10.23
Settlement Agreement
This Settlement Agreement (the “Agreement”), effective as of November 28, 2022 (the “Effective Date”), is made by and between Wright Medical Technology, Inc., with an address at 1023 Cherry Road, Memphis, Tennessee 38117 (“Wright”) and Stryker Corp., with an address at 2825 Airview Blvd., Kalamazoo, Michigan 49002 (collectively referred to as “Stryker”) on the one hand and Paragon 28, Inc., with an address at 14445 Grasslands Drive, Englewood, Colorado 80112 (“Paragon”) on the other hand. Stryker and Paragon are collectively referred to as the “Parties.”
Whereas, Stryker and/or one or more of its Affiliates own U.S. Patent Nos. 7,771,457; 8,100,954; 8,118,846; 8,118,848; 9,144,443; 9,259,251; 9,259,252; 9,259,253; and 9,545,278 (the “Plating System Patents”), 9,078,710 (the “Instrument Patent”), and 9,907,561 and 10,888,336 (the “TAR Patents”).
Whereas, Paragon manufactures and sells medical device products, including foot and ankle plating systems and instruments and total ankle repair (“TAR”) systems and instruments.
Whereas, on or about March 23, 2018, Wright filed a lawsuit in the United States District Court for the District of Colorado (the “Colorado Court”) under Civil Action No. 1:18-cv-00691-PAB, for infringement by Paragon of the Plating System Patents and the Instrument Patent; on or about August 8, 2018, amended its complaint to add Misappropriation of Trade Secrets under the Federal Defend Trade Secrets Act 18 U.S.C. § 1836; Misappropriation of Trade Secrets under the Colorado Uniform Trade Secrets Act C.R.S. § 7-74-102(4), Federal Unfair Competition under the Lanham Act 15 U.S.C. § 1125(A)(1), Common Law Unfair Competition, Intentional Interference with Contracts, Civil Theft C.R.S. § 18-4-405, and Conversion causes of action; and Paragon counterclaimed asserting non-infringement and invalidity of the Plating System Patents and the Instrument Patent, Abuse of Process, and Tortious Interference with Prospective Business Advantage (the “Colorado Lawsuit”);
Whereas, on or about December 23, 2021, Wright filed a lawsuit in the United States District Court for the District of Delaware (the “Delaware Court”) under Civil Action No. 1:21-cv-01809-MN, for infringement by Paragon of the TAR Patents (the “Delaware Lawsuit”);
Whereas, on or about October 4, 2022, Paragon filed Requests for Inter Partes Review with the Patent Trial and Appeal Board (“PTAB”) challenging the validity of the TAR Patents (the “PTAB Litigations”); and
Whereas, the Parties wish to settle all disputes raised in the Colorado Lawsuit, the Delaware Lawsuit, and the PTAB Litigations (collectively, “the Lawsuits”) to avoid the necessity, expense, inconvenience and uncertainty of additional and continued proceedings in the Lawsuits, and wish to obtain a resolution of the disputes to allow a more predictable business environment for each Party;
1
Now, Therefore, in consideration of the foregoing, the covenants contained herein, and of other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties do hereby agree as follows:
For avoidance of doubt, reference to patent applications in this Section 1.04 includes all patents issuing at any time from such patent applications.
Further, Paragon denies that it has misappropriated the Alleged Technical Trade Secrets but agrees to undertake its best efforts to protect the confidentiality of the Alleged Technical Trade Secrets in the manner it does its own trade secrets.
Paragon denies that it has misappropriated the Alleged Technical Trade Secrets but agrees to undertake its best efforts to protect the Alleged Technical Trade Secrets in the manner it does its own technology.
2
Beneficiary Name: | Stryker Corporation |
Beneficiary Address: | 2825 Airview Boulevard Kalamazoo, Michigan 49002 |
Bank Name: | [ ] |
Account Number: | [ ] |
ACH Routing Number: | [ ] |
Wire Routing Number: | [ ] |
Reference | [ ] |
Bank Address: | [ ] |
3
4
5
6
7
and in each case shall be addressed as provided in Section 12.02. Such notices shall be deemed to have been served when received by addressee.
[ ]
Stryker Corp.
2825 Airview Blvd.
Kalamazoo, MI 49002
With a copy to:
[ ]
Duane Morris LLP
1330 Post Oak Blvd., Suite 800
Houston, TX 77056
[ ]
Bartlit Beck LLP
54 W. Hubbard St., Suite 300
Chicago, IL 60654
Jonathan Friedman, General Counsel
Paragon 28
14445 Grasslands Dr.
Englewood, CO 80112
With a copy to:
Luke Dauchot
Kirkland & Ellis LLP
555 South Flower Street, Suite 3700
Los Angeles, CA 90071
8
9
10
In Witness Whereof, the Parties have caused this Agreement to be signed below by their respective duly authorized representatives.
Stryker Corporation
By: /s/ Michael H. Panos
Name: Michael H. Panos
Title: Authorized Representative
Date Signed: 11/28/22
Wright Medical Technology, Inc.
By: Michael H. Panos
Name: Michael H. Panos
Title: Authorized Representative
Date Signed: 11/28/22
| Paragon 28, Inc.
By: /s/ Jonathan Friedman
Name: Jonathan Friedman
Title: General Counsel
Date Signed: 11/28/22
|
11