EX-10.8 15 tmb-20230331xex10d8.htm EX-10.8

Exhibit 10.8

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Amendment No. 3 to

EXCLUSIVE LICENSE AGREEMENT

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between

Icahn School of Medicine at Mount Sinai
And Monogram Orthopedics Inc.

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This Amendment No.3 (the “Amendment”), effective as of September 17, 2020, is entered into by and between Icahn School of Medicine at Mount Sinai, a New York not-for-profit education corporation, having a principal place of business at One Gustave L. Levy Place, New York, NY 10029 (“Mount Sinai”) and Monogram Orthopedics Inc., a Delaware corporation with a principal place of business at 3913 Todd Lane, Suite 307, Austin, TX 78744 (“Monogram”).

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WHEREAS, Mount Sinai and Company entered into an exclusive license agreement with an effective date of October 3, 2017 (the “Agreement”);

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WHEREAS, the parties intend to amend the Agreement for the purpose of amending Exhibit A to introduce additional Licensed Patents and to provide compensation to Mount Sinai for the addition of such Licensed Patents;

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NOW THEREFORE, in consideration of the mutual obligations in this Amendment and for other good consideration, the receipt and sufficiency of which are hereby acknowledged, Mount Sinai and Company hereby agree as follows:

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| 1. | All capitalized terms used but not defined herein shall have the respective meanings ascribed to such terms in the Agreement.

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| 2. | Exhibit A shall be deleted and hereby replaced in its entirety with the Exhibit A attached to this Amendment.

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| 3. | As consideration for the Licensed Patents added by Section 2 of this Amendment, Monogram agrees to pay Mount Sinai $1,000 within 30 days of the effective date of this Amendment.

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| 4. | All other terms and conditions to the Agreement remain unchanged and in full force and effect except to the extent modified by the terms and conditions of this Amendment. The Agreement, as modified by this Amendment, contains the entire understanding of the parties with respect to the subject matter contemplated herein.

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IN WITNESS WHEREOF, the parties have caused their duly authorized representatives to execute this Amendment.

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ICAHN SCHOOL OF MEDICINE AT

MOUNT SINAI

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By: | /s/ Erik Lium | ​
​ | ​ | ​
Name: | Erik Lium | ​
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Title: | President | ​
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Date: | 11/18/2020 | 3:47 PM EST | ​

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COMPANY

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By: | /s/ Benjamin Sexson | ​
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Name: | Benjamin Sexson | ​
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Title: | CEO | ​
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Date: | 11/29/2020 | ​

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Exhibit A

Licensed Patents

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Country | App Type | Serial No. | Status | File Date | Title | Publication Date | Publication No.
United States | Provisional | 62/319,710 | Expired | 2016-04-07 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | ​ | ​
United States | PCT | PCT/US2017/26681 | Pending | 2017-04-07 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | 2017-10-12 | WO 2017/177182
United States | Nat’l Phase | 16/153,334 | Pending | 2018-10-05 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | ​ | ​
Europe | Nat’l Phase | 17779938.4 | Pending | 2017-04-07 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | 2019-02-13 | EP 3439584A
Australia | Nat’l Phase | 2017248357 | Pending | 2017-04-07 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | ​ | ​
Canada | Nat’l Phase | 3,020,362 | Pending | 2017-04-07 | APPARATUS, METHOD AND SYSTEM FOR PROVIDING CUSTOMIZABLE BONE IMPLANTS | ​ | ​
United States | Provisional | 62/811,855 | Expired | 2019-02-28 | CUSTOMIZED TIBIAL TRAYS CONTACTABLE WITH AN UNDERLYING CORTICAL BONE, METHODS, AND SYSTEMS FOR KNEE REPLACEMENT | ​ | ​
United States | Provisional | 62/879,800 | Expired | 2019-07-29 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT | ​ | ​
United States | PCT | PCT/US2020/020279 | Pending | 2020-02-28 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT | 2020-09-03 | WO 2020/176824

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​ ​ | ​ | ​ | ​ | ​ | ​ ​ | ​ | ​
United States | Provisional | 63/027,098 | Pending | 2020-05-19 | CUSTOMIZED TIBIAL TRAYS, METHODS,AND SYSTEMS FOR KNEE REPLACEMENT (with screws) | ​ | ​
United States | Provisional | 62/834,692 | Expired | 2019-04-16 | CUSTOM HIP DESIGN AND INSERTABILITY ANALYSIS | ​ | ​
United States | PCT | PCT/US2020/028499 | Pending | 2020-04-15 | CUSTOM HIP DESIGN AND INSERTABILITY ANALYSIS | ​ | ​
United States | Provisional | 62/854,648 | Pending | 2019-05-30 | ROBOT MOUNTED CAMERA REGISTRATION AND TRACKING SYSTEM FOR ORTHOPEDIC AND NEUROLOGICAL SURGERY | ​ | ​
United States | PCT | PCT/US2020/035408 | Pending | 2020-05-29 | ROBOT MOUNTED CAMERA REGISTRATION AND TRACKING SYSTEM FOR ORTHOPEDIC AND NEUROLOGICAL SURGERY | ​ | ​
United States | Provisional | 62/850,050 | Expired | 2019-05-20 | A SYSTEM AND METHOD FOR INTERACTION AND DEFINITION OF TOOL PATHWAYS FOR A ROBOTIC CUTTING TOOL | ​ | ​
United States | PCT | PCT/US2020/033810 | Pending | 2020-05-20 | A SYSTEM AND METHOD FOR INTERACTION AND DEFINITION OF TOOL PATHWAYS FOR A ROBOTIC CUTTING TOOL | ​ | ​
United States | Provisional | 62/990,827 | Pending | 2020-03-17 | REGISTRATION AND/OR TRACKING OF A PATIENT'S BONE EMPLOYING A PATIENT SPECIFIC BONE JIG | ​ | ​

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