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

Exhibit 10.8

Amendment No. 3 to

EXCLUSIVE LICENSE AGREEMENT

between

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

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”).

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

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;

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:

1.

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

2.

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

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.

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.


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

ICAHN SCHOOL OF MEDICINE AT

MOUNT SINAI

By:

/s/ Erik Lium

Name:

Erik Lium

Title:

President

Date:

11/18/2020 | 3:47 PM EST

COMPANY

By:

/s/ Benjamin Sexson

Name:

Benjamin Sexson

Title:

CEO

Date:

11/29/2020


Exhibit A

Licensed Patents

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

Natl Phase

16/153,334

Pending

2018-10-05

APPARATUS, METHOD AND

SYSTEM FOR PROVIDING

CUSTOMIZABLE BONE

IMPLANTS

Europe

Natl Phase

17779938.4

Pending

2017-04-07

APPARATUS, METHOD AND

SYSTEM FOR PROVIDING

CUSTOMIZABLE BONE

IMPLANTS

2019-02-13

EP 3439584A

Australia

Natl Phase

2017248357

Pending

2017-04-07

APPARATUS, METHOD AND

SYSTEM FOR PROVIDING

CUSTOMIZABLE BONE

IMPLANTS

Canada

Natl 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


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