EXHIBIT 10.3
SETTLEMENT AND RELEASE AGREEMENT
THIS SETTLEMENT AND RELEASE AGREEMENT (the "Agreement") is made and entered
into this the 2nd day of August, 2002 (the "Effective Date"), by and between
Colorado State University Research Foundation ("CSURF" or "Plaintiff"),
CryoLife, Inc. ("CryoLife" or "Defendant"), and Dr. E. Christopher Orton
("Orton").
I. RECITALS
1. The case of Colorado State University Research Foundation v. CryoLife,
Inc., Civil Action No. 01-N-933 (OES) (the "Lawsuit") is pending in the United
States District Court for the District of Colorado between Plaintiff and
Defendant.
2. In the Lawsuit, Plaintiff alleges, among other things, that Defendant
breached a certain Technology License (the "Technology License") dated March 26,
1996 between Plaintiff and Defendant, improperly identified the inventors on
certain patents, and violated the Lanham Act (15 U.S.C. ss. 1125(a)(1)), and
seeks damages, termination of the Technology License, assignment of certain
patents, and other relief from Defendant. Defendant denies all allegations in
the Lawsuit and denies that Plaintiff is entitled to the relief it seeks from
Defendant.
3. Defendant has filed a counterclaim against Plaintiff for declaratory
judgment that it did not breach the Technology License. Plaintiff denies the
allegations contained in Defendant's counterclaim.
4. Orton, the inventor of the ORTON PATENTS (as defined below), who has
assigned to CSURF all of his rights in the ORTON Patents and certain other
technology licensed under the Technology License to CryoLife , is a necessary
party to this Agreement.
Page 1 of 29
5. Plaintiff, Defendant, and Orton desire to compromise and settle all
claims and disputes existing amongst themselves as of the Effective Date of this
Agreement.
II. SETTLEMENT AND RELEASE TERMS
NOW, THEREFORE, in consideration of the foregoing recitals, the payment
described below, and other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, Plaintiff and Defendant, by and
through authorized representatives whose signatures appear below, and Orton do
hereby agree as follows:
A. Definitions
1. ORTON PATENTS shall mean all U.S. and foreign patents and patent
applications filed as of the Effective Date or directed to inventions made as of
the Effective Date naming Orton as inventor or co-inventor together with all
U.S. and foreign future applications, continuations, continued prosecution
applications, continuations-in-part, divisions, or substitutions thereof. ORTON
PATENTS include, but are not limited to, U.S. Patent Nos. 5,192,312; 5,772,695;
5,863,296; 5,855,617, and U.S. Provisional Application Serial No. 60/219,548 as
well as corresponding Non-Provisional Application Serial No. 09/909914 and PCT
Application Serial No. PCT/US01/22018.
2. GOLDSTEIN PATENTS shall mean U.S. Patent Nos. 5,613,982; 5,632,778;
5,843,182; 5,899,936; and all pending and future applications and patents, both
U.S. and foreign, arising from these patents, as well as any continuations,
continued prosecution applications, continuations-in-part, divisions, or
substitutions thereof.
3. TISSUE DECELLULARIZATION PATENT APPLICATIONS shall mean U.S. Application
Serial Nos. 08/838,852 and 09/735,522 and all pending and future applications
Page 2 of 29
and patents, both U.S. and foreign, arising from these patent applications, as
well as any continuations, continued prosecution applications,
continuations-in-part, divisions, or substitutions thereof.
4. TISSUE GRAFT PATENT APPLICATIONS shall mean U.S. Application Serial Nos.
60/178,632 and 09/769,769 and all pending and future applications and patents,
both U.S. and foreign arising from these patents, as well as any continuations,
continued prosecution applications, continuations-in-part, divisions, or
substitutions thereof.
5. UNSTENTED HEART VALVE PATENT APPLICATIONS shall mean U.S. Application
Serial No. 09/540,525 and all pending and future applications and patents, both
U.S. and foreign, arising from these patents, as well as any continuations,
continued prosecution applications, continuations-in-part, divisions, or
substitutions thereof.
6. DECELLULARIZATION PROCESS shall mean any method that removes endogenous
cells or cellular material by methods which include (a) cellular lysis in a
hypotonic solution followed by nuclease digestion utilizing RNAse or DNAse or
other nucleases, or (b) irradiation followed by nuclease digestion utilizing
RNAse and/or DNAse or other nucleases.
7. PROCESSED TISSUE shall mean xenograft and allograft tissue CryoLife
processed or processes using a DECELLULARIZATION PROCESS.
8. NET RECEIPTS FROM XENOGRAFT TISSUE SALES shall mean CryoLife's gross
receipts from the sale of xenograft PROCESSED TISSUE minus any sales tax,
returns, discounts and freight charges attributable to the sale or return of
xenograft PROCESSED TISSUE.
Page 3 of 29
9. ALLOGRAFT STANDARD TISSUE shall mean allograft tissues which have not
undergone a DECELLULARIZATION PROCESS.
10. PROCESSING FEES FOR ALLOGRAFT PROCESSED TISSUE shall mean CryoLife's
gross receipts from processing fees collected with the transfer of allograft
PROCESSED TISSUE minus any sales tax, returns, discounts and freight charges
attributable to the sale or return of allograft PROCESSED TISSUE.
11. PROCESSING FEE FOR ALLOGRAFT STANDARD TISSUE shall mean CryoLife's
gross receipts from processing fees collected with the transfer of ALLOGRAFT
STANDARD TISSUE minus any sales tax, returns, discounts and freight charges
attributable to the sale or return of ALLOGRAFT STANDARD TISSUE.
12. NET INCREASED RECEIPTS FROM ALLOGRAFT TISSUE PROCESSING shall mean all
PROCESSING FEES FOR ALLOGRAFT PROCESSED TISSUE multiplied by the following
fraction (the "Fraction")
(Average Per Unit Processing Fee for Allograft Processed Tissue) -
(Average Per Unit PROCESSING FEE FOR ALLOGRAFT STANDARD TISSUE)
_________________________________________________
Average Per Unit Processing Fee for Allograft Processed Tissue
The Processing Fees used for purposes of calculation of the Fraction shall be
CryoLife's average unit processing receipts during the royalty period (except
only that the Fraction calculated for the royalty period January 1, 2002 to June
30, 2002 shall be applied to determine royalties payable for allograft PROCESSED
TISSUE transferred or sold from March 26, 1996 to and including June 30, 2002).
A calculation of the Fraction for all tissues currently processed using a
DECELLULARIZATION PROCESS is attached hereto as Exhibit "A". The determination
Page 4 of 29
of the Fraction for tissues, if any, processed using a DECELLULARIZATION PROCESS
in the future which are not currently processed using a DECELLULARIZATION
PROCESS will be determined at the end of the first royalty period after such
tissues are first offered by CryoLife on a commercial basis.
B. Payments
1. CryoLife will pay CSURF a royalty as described below on PROCESSED TISSUE
transferred or sold from March 26, 1996 to and including March 28, 2011. Upon
payment of royalties accruing pursuant to this Section B, Cryolife shall have no
further payment obligations whatsoever, but all other provisions of this
Agreement shall remain in full force and effect.
2. CryoLife will pay to CSURF the sum of four hundred thousand dollars
($400,000.00) (the "Advance") as a nonrefundable advance payment of royalties
which have accrued or which will accrue pursuant to paragraphs B(1), B(3), and
B(4) herein. Promptly upon execution of this Agreement, North Star Trust Company
("Escrow Agent") shall be directed, by a letter in the form of the attached
Exhibit "B," to terminate the Escrow Agreement entered into between CSURF and
Cryolife and to transfer to CSURF the accumulated balance of the escrow account
(No. 70 - 4139), pursuant to the Escrow Agreement, as the initial payment of the
Advance. CryoLife will wire transfer to CSURF the remaining portion of the
Advance within ten (10) business days following distribution of the Escrow
funds.
3. The royalty payable with respect to xenograft PROCESSED TISSUE sold
shall be determined by multiplying 0.75% times NET RECEIPTS FROM XENOGRAFT
TISSUE SALES.
Page 5 of 29
4. The royalty payable with respect to allograft PROCESSED TISSUE
transferred shall be determined by multiplying 0.75% times NET INCREASED
RECEIPTS FROM ALLOGRAFT TISSUE PROCESSING.
5. CryoLife will pay royalties to CSURF on a semi-annual calendar basis in
arrears. Payments with respect to each royalty period shall be due before the
end of the following calendar quarter and shall be accompanied by a written
report, signed by a Cryolife officer who certifies the accuracy of the report,
which shows royalties accrued since March 26, 1996 through the end of the
preceding royalty period, royalties accrued in the preceding royalty period, and
royalties payable, if any, after adjustment for the Advance. The written report,
and the information contained therein, shall be kept confidential by CSURF and
Orton and shall not be disclosed to any other person or entity unless disclosure
is required by judicial or administrative process, in which case CSURF and/or
Orton will promptly notify CryoLife in order to allow CryoLife a reasonable time
to oppose such process. The parties acknowledge that no royalty payments shall
be due or payable unless and until the amount of the total accrued royalties
exceeds the amount of the Advance.
6. CSURF shall have the right for a period of three (3) years after
receiving any royalty calculation and/or payment to appoint an independent
certified public accountant, who is acceptable to CryoLife and who shall have
access to CryoLife's records during reasonable business hours, for the purpose
of verifying the royalties payable under this Agreement. This verification right
may not be exercised by CSURF more than once in any calendar year, and the
accountant shall disclose to CSURF only information relating solely to the
Page 6 of 29
accuracy of the royalty calculation and the royalty payments made in accordance
with this Agreement. Such certified public accountant must agree to sign a
confidentiality agreement prior to receiving access to CryoLife's records. Any
information disclosed to CSURF by such certified public accountant shall be kept
confidential by CSURF and shall not be disclosed to any other person or entity.
The failure of CSURF to request verification of any royalty calculation during
said three year period shall be considered acceptance of the accuracy of such
calculation, and CryoLife shall have no obligation to maintain any records
pertaining to such calculation beyond the three year period.
7. Orton and CSURF agree and acknowledge that Orton, by virtue of his
separate agreement(s) with Colorado State University ("CSU"), will receive
financial compensation directly from CSURF as a result of the settlement
contained in this Agreement. Orton hereby acknowledges this as good and valuable
consideration for his entering into this Agreement. CryoLife shall have no
obligation to make any payment to Orton.
C. Termination of Technology License
The Technology License is terminated as of the Effective Date of this
Agreement. All obligations, undertakings and payments contained in the
Technology License are no longer in effect.
D. Disposition of Patent, Other Intellectual Property and Rights to Technology
1. CSURF and Orton hereby assign to CryoLife all rights to the ORTON
PATENTS and their interests in the Unstented Heart Valve Applications.
Simultaneously with the execution of this Agreement, CSURF and Orton will
Page 7 of 29
execute the assignment to CryoLife in the form of the attached Exhibit "C".
2. CSURF and Orton hereby assign to CryoLife all rights to inventions
(whether patentable or not), technology, patents, trade secrets, know-how and
information, owned or controlled by CSURF or Orton, and developed or identified
by Orton or those working with Orton, related to tissue decellularization and/or
recellularization. Simultaneously with the execution of this Agreement, CSURF
and Orton will execute the assignment to CryoLife in the form of the attached
Exhibit "C". Neither CSURF nor Orton shall have any obligation to assign to
Cryolife any inventions (whether patentable or not), technology, patents, trade
secrets, know-how and information, related to tissue decellularization and/or
recellularization which they may create after the Effective Date .
3. CSURF and Orton represent and warrant that the only patent applications
which they have placed on file anywhere and which relate to tissue
decellularization or tissue recellularization are U.S. Patent Serial No.
09/909,914, PCT Application Serial No. PCT/US01/22018, U.S. Provisional
Application Serial No. 60/306,673 and U.S. Provisional Application Serial No.
60/309,454 ("Pending Orton Applications"). Within ten (10) business days of the
Effective Date, CSURF shall expressly abandon the Pending Orton Applications and
shall immediately forward copies of the abandonment documents to counsel for
CryoLife. CSURF further agrees not to file any additional patent applications,
extensions or substitutions thereof claiming priority to any of the
above-referenced applications or the ORTON PATENTS.
Page 8 of 29
4. CSURF and Orton shall not voluntarily take any action to interfere with
or oppose any CryoLife patent applications or future applications related to
tissue decellularization or tissue recellularization or to deter the issuance of
any such patent or patents that might issue therefrom. CSURF and Orton further
agree not to contest the inventorship, enforceability or validity of the
GOLDSTEIN PATENTS, the TISSUE DECELLULARIZATION PATENT APPLICATIONS, the
UNSTENTED HEART VALVE PATENT APPLICATIONS or the TISSUE GRAFT PATENT
APPLICATIONS.
5. Upon reasonable request, payment of a reasonable consulting fee and as
may be reasonably necessary, CSURF and Orton shall provide assistance to and
cooperate with Cryolife in prosecution of patent applications related to or
arising from the ORTON PATENTS, the GOLDSTEIN PATENTS, the TISSUE
DECELLULARIZATION PATENT APPLICATIONS, the TISSUE GRAFT PATENT APPLICATIONS or
the UNSTENTED HEART VALVE PATENT APPLICATIONS.
E. Releases
1. CSURF and Orton, for and in consideration of the payments and other
undertakings of CryoLife set forth in this Agreement, the receipt of which is
hereby acknowledged, do hereby release, acquit, and forever discharge Defendant,
and all of its past and present affiliates, agents, subsidiaries, parent
companies, officers, directors, employees, insurers, attorneys, heirs,
successors, and assigns and the affiliates, agents, partners, principals,
employees, insurers, officers, directors, attorneys, heirs, successors and
assigns of their subsidiaries and parent companies (hereinafter collectively and
individually referred to as "CryoLife Released Parties") of and from any and all
claims, causes of action, suits, torts, fraud, negligence, bad faith,
defamation, accounts, covenants, contracts, agreements, representations,
Page 9 of 29
promises, judgments, damages, expenses, any extra-contractual damages and any
act known or unknown, foreseen or unforeseen, in law or in equity, which CSURF
or Orton have ever had or may have against any of the CryoLife Released Parties
from the beginning of time to the date of the Effective Date of this Agreement,
except as to any obligations or undertakings pursuant to this Agreement.
2. CryoLife, for and in consideration of the assignments and other
undertakings of CSURF and Orton set forth in this Agreement, the receipt of
which is hereby acknowledged, does hereby release, acquit, and forever discharge
Plaintiff and Orton, and all of its past and present affiliates, agents,
subsidiaries, parent companies, officers, directors, employees, insurers,
attorneys, heirs, successors, and assigns and the affiliates, agents, partners,
principals, employees, insurers, officers, directors, attorneys, heirs,
successors and assigns of their subsidiaries and parent companies (hereinafter
collectively and individually referred to as "CSURF Released Parties") of and
from any and all claims, causes of action, suits, torts, fraud, negligence, bad
faith, defamation, accounts, covenants, contracts, agreements, representations,
promises, judgments, damages, expenses, any extra-contractual damages and any
act known or unknown, foreseen or unforeseen, in law or in equity, which
CryoLife has ever had or may have against any of the CSURF Released Parties from
the beginning of time to the date of the Effective Date of this Agreement,
except as to any obligations or undertakings pursuant to this Agreement.
F. Use of Disclosed Technology, Trade Secrets, Know-How
1. CryoLife shall be authorized to freely and forever make, use, sell,
license, sublicense and/or commercialize any inventions (whether patentable or
not), technology patents, trade secrets, know-how and information that Orton or
Page 10 of 29
CSURF disclosed to CryoLife up to the Effective Date of this Agreement.
2. Orton shall have the royalty-free, non-exclusive and non-assignable
right to use the ORTON PATENTS solely for non-commercial, academic research
purposes and solely at an academic institution. Other than this limited right to
use the ORTON PATENTS, neither CSURF nor Orton may disclose, use, sell,
commercialize, license, sublicense or encumber confidential or proprietary
CryoLife technology, patents, information, trade secrets, and/or know-how.
3. Notwithstanding anything to the contrary herein, CSURF and Orton are
free to use any information, whether originally provided by CryoLife or
otherwise, which is otherwise available for use by the public, subject to the
restrictions of 35 U.S.C. ss. 1, et. seq. and related foreign laws. However,
information shall not be deemed to fall within the foregoing exception merely
because it may be embraced within a body of generally available public
information, nor shall any combination of features be deemed to fall within such
exception merely because the individual features thereof are publicly available.
G. Dismissal of Lawsuit
Promptly after the execution of this Agreement, Plaintiff and Defendant
will file a Joint Stipulation of Dismissal With Prejudice in the form of the
attached Exhibit "C".
Page 11 of 29
H. Warranty
1. CSURF hereby represents and warrants that it has not sold, conveyed,
licensed, encumbered, or otherwise transferred all or any portion of the claims
asserted in the Lawsuit or its claimed rights in the ORTON PATENTS, GOLDSTEIN
PATENTS, TISSUE DECELLULARIZATION PATENT APPLICATIONS, TISSUE GRAFT PATENT
APPLICATIONS or UNSTENTED HEART VALVE PATENT APPLICATIONS to any person or
entity.
2. Orton hereby represents and warrants that he has not sold, conveyed,
licensed, encumbered, or otherwise transferred all or any portion of the claims
asserted in the Lawsuit or his claimed rights in the ORTON PATENTS, GOLDSTEIN
PATENTS, TISSUE DECELLULARIZATION PATENT APPLICATIONS, TISSUE GRAFT PATENT
APPLICATIONS or UNSTENTED HEART VALVE PATENT APPLICATIONS to any person or
entity except CSURF.
3. CryoLife hereby represents and warrants that it has not sold, conveyed,
licensed, encumbered, or otherwise transferred all or any portion of the claims
asserted in the Lawsuit.
4. CSURF and CryoLife each hereby represents and warrants that it is duly
authorized to enter into this Agreement and the individuals executing this
Agreement represent and warrant that they are duly authorized to execute this
Agreement on behalf of their respective principals.
5. CryoLife represents and warrants that it currently processes certain of
its allograft tissue products using a DECELLULARIZATION PROCESS.
Page 12 of 29
I. Confidentiality
1. Pursuant to Paragraph 14 of the Protective Order entered in the Lawsuit,
the Protective Order shall remain in full force and effect and survive the entry
of any other order by the Court resulting in the termination of the Lawsuit. The
parties agree, however, that the provisions of the Protective Order shall be
modified by CryoLife's right, pursuant to Paragraph F(1) of this Agreement, to
use information disclosed to it by CSURF or Orton.
2. CSURF and Orton hereby represent and warrant that neither of them has
had access to any CryoLife information or documents designated "Attorneys Eyes
Only" and produced in this lawsuit pursuant to the Protective Order. CSURF and
Orton shall return to their counsel all CryoLife information or documents
designated "Confidential " pursuant to the Protective order for disposition in
accordance with the terms of the Protective Order.
3. CryoLife represents and warrants that it has not had access to any CSURF
or Orton information or documents designated "Attorney's Eyes Only" and produced
in this lawsuit pursuant to the Protective Order.
J. Miscellaneous
1. Each party to this Agreement agrees to pay all of its own costs,
attorney's fees and other expenses related to the Lawsuit. No additional claim
shall be filed by any party, or on its behalf or by its attorneys, for any
additional fees or costs pertaining in any way to the Lawsuit.
2. This Agreement constitutes the entire agreement between the parties with
respect to the resolution and settlement of the Lawsuit and the claims released
by CSURF hereunder, and supersedes all prior or contemporaneous agreements,
promises, or understandings between the parties thereto. Neither CSURF,
Page 13 of 29
CryoLife, nor Orton is relying upon any representations, promises,
understandings or agreements except as expressly set forth herein.
3. This Agreement does not constitute an admission by any party hereto of
liability to the other with respect to any claim asserted in the Lawsuit or
otherwise, but is entered into solely for purposes of compromising and settling
the disputes between the parties and the Lawsuit, and avoiding the time and
expense that would be involved in proceeding with litigation.
4. Each of the parties has fully, finally, and completely compromised
matters involving disputed issues of law and fact as between them. The parties
hereto assume the risk that the facts or law may be otherwise than it believes,
whether through ignorance, oversight, error, negligence, or otherwise, and
which, if known, would materially affect its decision to enter into this
Agreement.
5. The parties hereto each have been represented by competent legal counsel
of its or his own choosing in the negotiation, preparation and execution of this
Agreement. The parties further agree that they each have participated fully and
freely in the negotiation and drafting of this Agreement and that as a result,
this Agreement shall not be construed in favor of or against either party
hereto.
6. It is further understood and agreed that should any portion of this
Agreement be held invalid by operation of law or otherwise, the remaining
portion shall be given full force and effect and shall not in any way be
affected thereby.
Page 14 of 29
7. This Agreement may be executed in multiple counterparts and, when
executed by each of the parties, shall constitute a single agreement.
8. Facsimile signatures are acceptable to bind the parties hereto.
9. Venue for any action filed to enforce this Agreement shall be in the
United States District Court for the District of Colorado. Any disputes arising
out of or related to this Agreement shall be governed by Colorado law.
IN WITNESS WHEREOF, Colorado State University Research Foundation,
CryoLife, Inc., and Dr. E. Christopher Orton have hereunder set their hands and
seals on this the 2nd day of August, 2002.
[SIGNATURES ON NEXT PAGE]
Page 15 of 29
PLEASE READ CAREFULLY BEFORE SIGNING
I HAVE READ, UNDERSTAND AND
AGREE TO THE FOREGOING.
Colorado State University Research
Foundation
By: /s/ Kathleen Henry
------------------------------
Its: President/CEO
------------------------------
With express authority to enter
this agreement on behalf of Colorado
State University Research Foundation
STATE OF COLORADO )
COUNTY OF LARIMER )
I, Dian Marie Kammeyer, a Notary Public in and for said county and state,
hereby certify that Kathleen Henry, President/CEO of Plaintiff Colorado State
University Research Foundation, whose name is signed to the foregoing Settlement
and Release Agreement, and who is known to me, acknowledged before me on this
day that, being informed of the contents of such instrument, he executed the
same voluntarily on the day the same bears date.
Given under my hand and seal, this 2nd day of August, 2002.
/s/ Dian Marie Kammeyer
--------------------------------------
(SEAL) Notary Public
My Commission Expires: 4-9-04
------------------
Page 16 of 29
PLEASE READ CAREFULLY BEFORE SIGNING
I HAVE READ, UNDERSTAND AND
AGREE TO THE FOREGOING.
CryoLife, Inc.
By: /s/ Steven G. Anderson
---------------------------------------
Its: President/CEO
---------------------------------------
With express authority to enter this
agreement on behalf of CryoLife, Inc.
STATE OF GEORGIA )
--------------------
COUNTY OF COBB )
-------------------
I, Suzanne K. Gabbert, a Notary Public in and for said county and state,
hereby certify that Steven G. Anderson, President & CEO of Defendant CryoLife,
Inc., whose name is signed to the foregoing Settlement and Release Agreement,
and who is known to me, acknowledged before me on this day that, being informed
of the contents of such instrument, he executed the same voluntarily on the day
the same bears date.
Given under my hand and seal, this 30th day of July, 2002.
/s/ Suzanne K. Gabbert
-------------------------------------
(SEAL) Notary Public
My Commission Expires: 9-13-04
---------------
Page 17 of 29
PLEASE READ CAREFULLY BEFORE SIGNING
I HAVE READ, UNDERSTAND AND
AGREE TO THE FOREGOING.
Dr. E. Christopher Orton
/s/ Dr. E. Christopher Orton
---------------------------------------
STATE OF COLORADO )
----------------
COUNTY OF LARIMER )
----------------
I, Dian Marie Kammeyer, a Notary Public in and for said county and state,
hereby certify that Dr. E. Christopher Orton, whose name is signed to the
foregoing Settlement and Release Agreement, and who is known to me, acknowledged
before me on this day that, being informed of the contents of such instrument,
he executed the same voluntarily on the day the same bears date.
Given under my hand and seal, this 5th day of August, 2002.
/s/ Dian Marie Kammeyer
--------------------------
(SEAL) Notary Public
My Commission Expires: 4-9-04
----------
Page 18 of 29
EXHIBITS
A. Paragraph A(8) Calculation of the "Fraction."
B. Paragraph B(2) Joint letter to Escrow Agent authorizing release of funds
and termination of Escrow Agreement.
C. Paragraph D(1, 2) Assignment of ORTON PATENTS and all of Orton's and
CSURF's technology related to decellularization and recellularization to
CryoLife.
D. Paragraph G Joint Stipulation of Dismissal with Prejudice.
Page 19 of 29
EXHIBIT A
Average Service
Fees as of
6/30/02 Fraction
------------------ --------------
AV 6,863
AV-SG 8,764 21.69%
PV 6,376
PV-SG 8,640 26.20%
NVC/P 1,973
NVC/P-SG 2,303 14.33%
FV 2,714
FV-SG 3,203 15.27%
SFA 2,634
SFA-SG 2,934 10.22%
Page 19 of 29
EXHIBIT B
Ms. Kathleen Henry Mr. Steven G. Anderson
Colorado State University Research Foundation CryoLife, Inc.
4100 University Services Center 1655 Roberts Boulevard
Fort Collins, Colorado 80523 Kennesaw, Georgia 30144
August 1, 2002
E. Via Federal Express
Andrew Dobzyn, Esq.
North Star Trust Company
500 West Madison Street
Suite 3800
Chicago, Illinois 60661
Re: Escrow Account No. 70 - 4139
Termination of Escrow Agreement
Dear Mr. Dobzyn:
This letter is to inform you that Colorado State University Research
Foundation ("CSURF") and CryoLife, Inc. ("CryoLife"), the parties to the
December 4, 2001 Escrow Agreement appointing North Star Trust Company as Escrow
Agent and funding Escrow Account No. 70 - 4139, have settled the dispute between
them.
Under the terms of the settlement entered into between CSURF and CryoLife,
the Escrow Agreement has been terminated. Please immediately wire the remaining
balance of Escrow Account No. 70 - 4139 to CSURF. CSURF's wire transfer
information is as follows:
Bank: First National Bank, Fort Collins, Colorado
ABA Routing Number: 107000262
Account Number: 00 9050 1
Account Name: CSURF
As of Friday, June 21, 2002, there was approximately $192,416.00 held in the
Escrow Account. Pursuant to Paragraph 7(b) of the Escrow Agreement, upon your
delivery of the remaining balance to CSURF, North Star Trust Company shall be
released and discharged from all further obligations under the Escrow Agreement.
Finally, if there are any outstanding expenses pursuant to Paragraph 8 of
the Escrow Agreement, please send an invoice to CryoLife for payment. Likewise,
if CryoLife is due a refund of its expenses under the Escrow Agreement, please
send the refund to CryoLife.
Thank you for your prompt cooperation.
Sincerely,
COLORADO STATE UNIVERSITY CRYOLIFE, INC.
RESEARCH FOUNDATION
____________________________ _________________________________
Kathleen Henry Steven G. Anderson
President President and CEO
cc: Robert R. Brunelli, Esq.
Kevin B. Getzendanner, Esq.
EXHIBIT C
ASSIGNMENT
In consideration of other good and valuable consideration, of which
receipt is acknowledged, Colorado State University Research Foundation, a
corporation formed under the laws of the state of Colorado, and E. Christopher
Orton each hereby sell and assign to CryoLife, Inc., a corporation of Florida,
its and his entire right, title, and interest in and to all inventions (whether
patentable or not), technology, patents, trade secrets, know-how and
information, owned or controlled by Colorado State University Research
Foundation or E. Christopher Orton, and developed or identified by E.
Christopher Orton or those working with E. Christopher Orton, related to tissue
decellularization and recellularization to be held and enjoyed by CryoLife Inc.,
its successors, and assigns, as fully and entirely as the same would have been
held and enjoyed by the Colorado State University Research Foundation or E.
Christopher Orton had this assignment and sale not been made. The Colorado State
University Research Foundation and E. Christopher Orton further agree to execute
all further papers and do all further acts appropriate to fully vest in
CryoLife, Inc. the rights herein conveyed.
In testimony whereof, the Colorado State University Research Foundation and
E. Christopher Orton have caused this assignment to be signed by its duly
authorized officers and its seal to be attached and by E. Christopher Orton this
__________ day of _________, 2002.
________________________________
COLORADO STATE UNIVERSITY
RESEARCH FOUNDATION
Attest
________________________________
By: Kathleen Henry, President
(CORPORATE SEAL)
__________________________
Secretary
State of Colorado
ss
County of ______________
On this the ____ day of ___________, 2002, before me personally appeared
Kathleen Henry, who acknowledged herself to be the President of Colorado State
University Research Foundation, a corporation, that she knows the seal of said
corporation, that the seal affixed to the foregoing instrument is that seal,
that it was so affixed by authority of the Board of Directors of the
corporation, and that, by like authority, she executed the instrument for the
purposes stated in it by signing the name of the corporation by herself as
President.
In witness whereof I hereunto set my hand and the seal of my office.
________________________________________
Notary Public
________________________________________
E. CHRISTOPHER ORTON
State of Colorado
ss
County of ______________
On this the ____ day of ___________, 2002, before me personally appeared E.
Christopher Orton, who executed the instrument for the purposes stated in it by
signing his name.
In witness whereof I hereunto set my hand and the seal of my office.
_________________________________________
Notary Public
ASSIGNMENT
In consideration of other good and valuable consideration, of which receipt
is acknowledged, Colorado State University Research Foundation, a corporation
formed under the laws of the state of Colorado, owner of the entire right,
title, and interest in the following United States Letters Patents and patent
applications:
1. Letters Patent No. 5,192,312, granted in the name of E. Christopher
Orton, on March 3, 1993, by assignment recorded in the U.S. Patent and Trademark
Office on Reel 006169, Frame 0272,
2. Letters Patent No. 5,772,695, granted in the name of E. Christopher
Orton, on June 30, 1998, by assignment recorded in the U.S. Patent and Trademark
Office on Reel 009128, Frame 0392,
3. Letters Patent No. 5,863,296, granted in the name of E. Christopher
Orton, on January 26, 1999, by assignment recorded in the U.S. Patent and
Trademark Office on Reel _____________, Frame __________,
4. Letters Patent No. 5,855,617, granted in the name of E. Christopher
Orton, on January 5, 1999, by assignment recorded in the U.S. Patent and
Trademark Office on Reel 009128, Frame 0392,
5. U.S. Non-Provisional Patent Application No. 09/909,914, naming E.
Christopher Orton as inventor, by assignment recorded in the U.S. Patent and
Trademark Office on Reel 012269, Frame 0694.
6. U.S. Provisional Application Serial No. 60/219,545, naming E.
Christopher Orton as inventor, by assignment recorded in the U.S. Patent and
Trademark Office on Reel ____, Frame _____.
7. PCT Application Serial No. PCT/US01/22018, naming E. Christopher Orton
as inventor, by assignment recorded in the U.S. Patent and Trademark Office on
Reel ____, Frame _____.
8. U.S. Application Serial No. 09/540,525, naming E. Christopher Orton,
inter alia, as an inventor, by assignment of E. Christopher Orton's rights
solely, recorded in the U.S. Patent and Trademark Office on Reel ____, Frame
_____.
and E. Christopher Orton, inventor of the above-listed Letters Patents and
patent applications, hereby sell and assign to CryoLife, Inc., a corporation of
Florida, its and his entire right, title, and interest in the said Letters
Patents, together with all reissues or reexaminations of said Letters Patents,
all divisions and continuations of said applications, and all applications and
patent rights for said inventions set forth in these applications in foreign
countries, to be held and enjoyed by CryoLife Inc., its successors, and assigns,
as fully and entirely as the same would have been held and enjoyed by the
Colorado State University Research Foundation or E. Christopher Orton had this
assignment and sale not been made. The Colorado State University Research
Foundation and E. Christopher Orton further agree to execute all further papers
and do all further acts appropriate to fully vest in CryoLife, Inc. the rights
herein conveyed.
In testimony whereof, the Colorado State University Research Foundation and
E. Christopher Orton have caused this assignment to be signed by its duly
authorized officers and its seal to be attached and by E. Christopher Orton this
__________ day of _________, 2002.
_______________________________
COLORADO STATE UNIVERSITY
RESEARCH FOUNDATION
Attest
_______________________________
By: Kathleen Henry, President
(CORPORATE SEAL)
___________________________
Secretary
State of Coloardo
ss
County of ______________
On this the ____ day of ___________, 2002, before me personally appeared
Kathleen Henry, who acknowledged herself to be the President of Colorado State
University Research Foundation, a corporation, that she knows the seal of said
corporation, that the seal affixed to the foregoing instrument is that seal,
that it was so affixed by authority of the Board of Directors of the
corporation, and that, by like authority, she executed the instrument for the
purposes stated in it by signing the name of the corporation by herself as
President.
In witness whereof I hereunto set my hand and the seal of my office.
____________________________________
Notary Public
____________________________________
E. CHRISTOPHER ORTON
State of Coloardo
ss
County of ______________
On this the ____ day of ___________, 2002, before me personally appeared E.
Christopher Orton, who executed the instrument for the purposes stated in it by
signing his name.
In witness whereof I hereunto set my hand and the seal of my office.
____________________________________
Notary Public
EXHIBIT D
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Civil Action No. 01-N-0933 (OES)
COLORADO STATE UNIVERSITY
RESEARCH FOUNDATION, a Colorado
non-profit corporation,
Plaintiff/ Counterclaim Defendant,
vs.
CRYOLIFE, INC., a Florida corporation,
Defendant/Counterclaimant.
________________________________________________________________________________
JOINT STIPULATION OF DISMISSAL WITH PREJUDICE
________________________________________________________________________________
WHEREAS Plaintiff/Counterclaim Defendant Colorado State University Research
Foundation ("Plaintiff") and Defendant/Counterclaimant CryoLife, Inc.
("Defendant") having settled all claims pending the above-referenced action, and
it being the intent of Plaintiff and Defendant that all claims and actions be
dismissed with prejudice, pursuant to their mutual consents set forth below;
COMES NOW Plaintiff, by and through its undersigned attorneys of record,
and pursuant to F.R.C.P. 41(a), dismisses with prejudice its Complaint and all
claims and actions it has asserted or instituted in the above-referenced action;
and
COMES NOW Defendant, by and through its undersigned attorneys of record,
and pursuant to F.R.C.P. 41(a, c), dismisses with prejudice its Counterclaim and
all claims and actions it has asserted or instituted in the above-referenced
action.
The parties will bear their own costs and attorneys' fees.
This 2nd day of August, 2002.
___________________________________ ____________________________________
Robert R. Brunelli Kevin B. Getzendanner
Joseph. E. Kovarik Stephen M. Dorvee
Scott R. Bialecki Aaron M. Danzig
SHERIDAN ROSS P.C. ARNALL GOLDEN GREGORY LLP
1560 Broadway, Suite 1200 1201 W. Peachtree Street, Suite 2800
Denver, Colorado 80202-5141 Atlanta, Georgia 30309-3450
(303) 863-9700 (404) 873-8500
Attorneys for Plaintiff CSURF HOLME ROBERTS & OWEN LLP
Richard L. Gabriel
Katheryn Jarvis Coggon
1700 Lincoln, Suite 4100
D.C. Box No. 07
Denver, Colorado 80203
Telephone: (303) 861-7000
BRINKS HOFER GILSON & LIONE
Jeffery M. Duncan
Helen A. Odar
455 North Cityfront Plaza Drive
Suite 3600
Chicago, Illinois 60611
(312) 321-4200
Attorneys for Defendant
Cryolife, Inc.
1474312