Exhibit 10.1
Asset Sale and License Agreement
This agreement ("Agreement") is between Xxx Research Corporation, a Delaware
Corporation headquartered in Fremont, California ("Xxx") and Aspect Systems, 000
Xxxx Xxxxxxx Xxxx, Xxxxxxxx, Xxxxxxx 00000 ("Aspect"). The effective date of
this Agreement is ____________________ (the "Effective Date").
WHEREAS Xxx is willing to sell Aspect certain assets and provide certain
licenses under Xxx'x patents, copyrights, trade secrets and know-how
(collectively, "Intellectual Property") that would be useful to Aspect in the
manufacture, refurbishment, servicing and repair of AutoEtch(R) and Drytek(R)
machines (the "Licensed Products" ).
WHEREAS Aspect is willing to purchase such assets and pay Xxx a royalty in
partial consideration for the required licenses;
The parties agree as follows:
1. Sale of Assets. Aspect agrees to purchase all the assets defined in
Exhibit A (the "Assets"). Xxx shall update Exhibit A within thirty (30)
days of the Effective Date to reflect actual quantities of the Assets
purchased by Aspect and a total Purchase Price for such Assets purchased.
Aspect may return any Assets that it finds to be defective within thirty
(30) days of the Effective Date of this Agreement for a proportionate
reduction in the purchase price of the Assets (the "Purchase Price"). Any
Assets that are not returned to Xxx within that thirty-day period will be
deemed accepted by Aspect without return right. Aspect and Xxx will share
equally any shipping costs required in respect of the sale of the Assets.
2. No Warranty on Assets. THE ASSETS SOLD UNDER THIS AGREEMENT ARE SOLD "AS
IS" AND "WHERE IS". THE ASSETS HAVE NO WARRANTY, EXPRESS OR IMPLIED,
INCLUDING (WITHOUT LIMITATION) ANY WARRANTY OF MERCHANTABILITY OR FITNESS
FOR A PARTICULAR PURPOSE. XXX MAKES NO WARRANTIES OF ANY KIND WITH REGARD
TO INFRINGEMENT OF THIRD PARTY RIGHTS RELATED TO ITS SALE OF THE ASSETS.
3. Representations by Xxx. Xxx represents:
(a) That it has been using the Assets in the manufacture, service or
repair of the AutoEtch and Drytek machines;
(b) That is has no actual knowledge that the Assets are defective or
infringe the patents or other intellectual property rights of any
third parties.
4. Representations by Aspect. Aspect represents
(a) That it is capable of inspecting the Assets purchased hereunder
without assistance from Xxx;
(b) That it is not relying upon any representation or warranty of Xxx in
making its decision to purchase the Assets;
(c) That it will not hold Xxx responsible for any latent or patent
defects discovered in the Assets; and
(d) That it is competent to accept the Assets on the terms set forth
herein.
5. Payment of Purchase Price. Aspect shall pay the Purchase Price to Xxx
according to the following table:
(a) 10 % of the Purchase Price shall be paid on or before March 20,
2002.
(b) 10 % of the Purchase Price shall be paid on or before June 20, 2003.
(c) The remainder of the Purchase Price shall be paid in twelve (12)
equal monthly installments commencing July 31, 2003, and each
payment is due on or before the end of each month.
(d) All payments under this Section are payable in U.S. Dollars and
shall be wired to Xxx'x bank account <>. Any late
payments shall constitute breach of a material obligation under this
Agreement, as described herein.
6. Security Interest. Aspect hereby grants Xxx a purchase money, first
security interest in all the Assets as well as the proceeds of all Assets
sales and the proceeds of all equipment, tools and products made with the
Assets to secure payment of Aspect's obligations hereunder. Aspect hereby
appoints Xxx as its agent to execute any security instruments that Xxx may
desire with respect to the perfection of such security interest. Aspect
will also xxxxx Xxx access to its warehouses and other facilities at any
time should Xxx need such access to repossess the Assets or proceeds in
case of Aspect's default.
7. Supplier Relationship and Performance.
(a) Sole Supplier. Subject to the conditions and performance measures
set forth herein, Xxx agrees to purchase AutoEtch and DryTek parts
and assemblies solely from Aspect Systems and solely for the support
of Xxx service contracts or service personnel.
(b) Supplier Performance. Aspect agrees that all parts and assemblies
sold to Xxx hereunder will comply with the following performance
measures:
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(i) Delivery time: Aspect agrees that 95% of all parts and
assemblies scheduled to be delivered within a given calendar
quarter will be delivered within that quarter. If this
performance measure is not met, Aspect agrees to deliver a
curative plan within 15 days of notice by Xxx of Aspect's
failure under this provision. Failure of Aspect to cure the
delivery time performance measure within 90 days of Xxx'x
notice shall constitute grounds for Xxx to immediately
terminate this Agreement and all licenses granted hereunder
for cause without further notice to Aspect;
(ii) Quality: Aspect agrees that all parts and assemblies delivered
to Xxx shall have a defect rate no greater than one percent
(1%). If this performance measure is not met, Aspect agrees to
deliver a curative plan within 15 days of notice by Xxx of
Aspect's failure under this provision. Failure of Aspect to
cure the delivery time performance measure within 90 days of
Xxx'x notice shall constitute grounds for Xxx to immediately
terminate this Agreement for cause without further notice to
Aspect.
(iii) Cost: Aspect agrees to sell all parts and assemblies purchased
by Xxx hereunder at a price not greater than ten percent (10%)
above that charged by Xxx'x vendors for such parts and
assemblies as of the date of sale of the Assets. Aspect agrees
to not change the selling price, to the customer, of the
Assets specified in Exhibit A for a period of one year
commencing upon shipment of said Assets to Aspect systems.
8. Licenses.
(a) In partial consideration for the royalty payments set forth herein,
Xxx hereby grants Aspect:
(i) a world-wide, non-exclusive non-transferable license under
Xxx'x patents identified in Exhibit B 1 to make, have made,
offer to sell, sell, import, repair and distribute the
Licensed Products;
(ii) a world-wide, non-exclusive non-transferable license under
Xxx'x copyrights to reproduce and distribute copies of Xxx'x
specifications and drawings for parts identified in Exhibit A,
but only to its vendors or other suppliers to the extent
necessary to enable Aspect to make or have made components and
assemblies for incorporation into the Licensed Products;
(iii) a world-wide, non-exclusive non-transferable license under
Xxx'x trade secrets and know-how encompassed in Xxx'x
specifications and drawings for parts identified in Exhibit A
or utilized in the products
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identified in Exhibit A to make or have made components and
assemblies for incorporation into the Licensed Products;
(b) The licenses granted in this Section 8 do not include the right to
sublicense and terminate under the following circumstances:
(i) Automatically and immediately, if Aspect declares bankruptcy
or becomes insolvent. Should Xxx reasonably become concerned
about Aspect's financial condition, Xxx may request that
Aspect provide reasonable assurances of its ability to fulfill
the obligations of this Agreement. Xxx may immediately
terminate the licenses set forth herein if Aspect is unable to
provide such reasonable assurance within ten days.
(ii) Upon notice by Xxx for cause for Aspect's default other than
as provided in Section 7.b above. Defaults under this Section
8.b.ii include non-payment of royalties or breach of any term
of this agreement; however, except as provided below, Xxx
shall provide notice of any such default and termination shall
only be effective if Aspect fails to cure the default within
ten calendar days of Xxx'x delivery of such notice. Exception
to notice requirement: If Aspect is late on royalty payment
three times during any two-year period, Xxx may terminate the
licenses immediately without providing any additional cure
period.
(iii) By either party for convenience, on twelve months' notice, but
such notice may not be given prior to January 1, 2003. Any
such convenience notice on the part of Aspect shall not
relieve Aspect's obligation to make payments under Sections 5
and 16 of this Agreement. Any such convenience notice on the
part of Xxx shall excuse Aspect from all installments of the
royalty otherwise payable under Section 9 below and falling
due on a date subsequent to the date of such convenience
notice by Xxx.
(c) Upon termination of this Agreement or the licenses for cause, Aspect
has no further right to manufacture, sell, repair or refurbish the
Licensed Products. Upon termination of this Agreement or the
licenses for the convenience of Xxx, Xxx agrees to grant Aspect a
perpetual, worldwide immunity from suit under Xxx'x Intellectual
Property coextensive with the licenses granted Aspect in this
Section 8 ASPECT SHALL HAVE NO RIGHTS TO ANY OF XXX'X INTELLECTUAL
PROPERTY EXCEPT AS EXPRESSLY SET FORTH HEREIN WITH RESPECT TO THE
LICENSED PRODUCTS, AND NO LICENSE OR OTHER RIGHT SHALL ARISE FROM
THE CONSUMMATION OF THIS AGREEMENT OR FROM ANY ACTS, STATEMENTS OR
DEALINGS LEADING TO SUCH CONSUMMATION.
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(d) Additional Licensees. Should Xxx in its sole judgment determine that
Aspect's performance fails to meet any condition or performance
measure set forth in this Agreement, or any other condition or
performance measure the parties mutually develop while this
Agreement is in effect, then Xxx shall have the right to license
additional licensees to make and sell to Xxx and its customers any
part or assembly listed on Exhibit A. Should Xxx exercise its right
under this provision, then the royalty payment due Xxx from Aspect
shall be reduced by 15% of the sales price of any such part or
assembly sold by Xxx or such additional licensee.
9. Royalty. In partial consideration of the rights and licenses granted
herein, Aspect shall pay Xxx a royalty in the amount of Five Million Three
Hundred Seventy-Six Thousand Dollars ($5,376,000.00). The royalty shall be
paid in ninety-six (96) equal monthly installments of Fifty-six Thousand
dollars ($56,000.00) each commencing thirty (30) days after the date
Aspect begins shipping the Licensed Products as referenced in Xxx'x letter
to its customers and due on or before the end of each calendar month. All
payments under this Agreement are payable in U.S. Dollars and shall be
wired to Xxx'x bank account <>.
10. Indemnity
(a) by Xxx. Xxx makes no representations or warranties regarding the
licenses set forth herein whether or infringement or otherwise. Xxx
disclaims any obligation to defend or hold harmless Aspect, its
customers, or anyone claiming through them against any third party
claims, whether of infringement or other nature, except that if any
challenge to the title or ownership of the Assets is not resolved by
Xxx within a reasonable time, Aspect may return the Assets impacted
by that claim for a refund of the amount actually paid by Aspect for
those Assets.
(b) by Aspect. Aspect shall defend, indemnify and hold harmless Xxx, and
its officers, agents and representatives from and against any claim,
suit or damage by or to third parties as a result of the actions of
Aspect or any of its officers, employees, agents or representatives,
including its (or their) use of the Assets or Intellectual Property
in connection with the Licensed Products.
11. Insurance. Aspect shall name Xxx as an additional insured under its
General Liability Insurance Policy. Aspect shall carry General Liability
Insurance in the amount of at least $1,000,000 per occurrence and shall
also carry workers compensation insurance in every jurisdiction in which
it has employees. This obligation shall terminate upon Aspect's payment in
full of the Purchase Price of the Assets set forth in Exhibit A hereto.
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12. Relationship of the Parties. Nothing in this contract shall create any
joint venture or partnership between the parties. Aspect at all times
shall be an independent contractor to Xxx.
13. Publicity. Xxx and Aspect shall mutually agree in advance upon any press
release or other announcement by Aspect regarding this Agreement. Except
for the foregoing, Aspect shall not make any other public statement
regarding its relationship with Xxx without the prior written approval by
an authorized Xxx representative.
14. Confidential Information.
(a) All disclosures of information marked as Confidential Information
occurring under this Agreement, or if disclosed visually or orally
and identified at the time of disclosure as comprising or including
confidential information, shall be deemed to be confidential to the
discloser. If information is not marked as confidential at the time
of disclosure, the discloser may nevertheless provide written notice
to the recipient within thirty (30) days following the date of such
disclosure, whereafter the recipient shall in good faith treat such
information as the discloser's Confidential Information. All
Confidential Information disclosed in a tangible form, including
electronic transmissions of documents comprising or Confidential
Information, will be accompanied by a letter describing the contents
of the disclosure and that such disclosure was made pursuant to this
Agreement.
(b) Notwithstanding anything herein to the contrary, all Xxx know-how
transferred to Aspect by Xxx hereunder is deemed to be, without any
further action by Xxx, Xxx Confidential Information and a trade
secret of Xxx.
(c) Subject to the provisions of this Section, for a period of ten (10)
years from the date of disclosure of Confidential Information, the
recipient agrees to use the same degree of care to not disclose,
publish, or disseminate the Confidential Information as the
recipient employs with similar information of its own which it does
not desire to publish, disclose or disseminate, but in no case less
than a reasonable degree of care; provided however, Aspect may
disclose Xxx'x Confidential Information to its vendors and suppliers
for the express purpose of this Agreement set forth above and
consistent with the licenses granted in Section 7 of this Agreement.
(i) The obligations imposed upon the parties do not apply to
information which the recipient can show:
(ii) is already lawfully in the possession of or known by the
recipient before receiving the information from the discloser;
(iii) is or becomes publicly known through no violation of this
Agreement;
(iv) is lawfully received by the recipient from any third party
without restriction on disclosure or use;
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(v) is independently developed without violating this Agreement by
the recipient's employees who have not had access to, relied
upon or received any of the discloser's Confidential
Information as confirmed by satisfactory evidence;
(vi) is required to be disclosed by court order following notice
sufficient to allow discloser to contest such order; or
(vii) is expressly approved in writing, by an authorized
representative of the discloser for release or other use by
the recipient.
15. Competition and Hiring. Aspect agrees not to compete against Xxx in using,
making, having made, offering for sale, selling, importing or distributing
any multichamber etch tool except upon mutual agreement of the parties, in
writing, amending this agreement. Aspect shall not solicit or recruit,
directly or indirectly, any Xxx employee or contractor. These obligations
shall extend until twelve months after the termination of this Agreement.
16. Governing Law. This contract has been negotiated under and shall be
construed in accordance with the laws of the State of California without
regard to its conflict of laws provisions.
17. Compliance with Laws. Aspect agrees to comply with all laws, rules and
regulations or any governmental agency or authority of any country
applicable to the Agreement or the activities occurring hereunder.
18. Entire Agreement. This Agreement is the complete and full agreement and
understanding of Aspect and Xxx, and shall supersede all prior agreements
and understandings, oral or written, between them in respect of the
subject matter of this Agreement. This Agreement may not be amended or
terminated orally by or on behalf of either Aspect of Xxx. Any amendments
to or terminations of this Agreement shall be in writing and signed by
authorized representatives of Aspect and Xxx.
IN WITNESS WHEREOF, each of the parties has caused this Agreement to be executed
in duplicate originals by its duly authorized representatives on the dates
entered below:
Xxx Research Corporation
By:
Signature /s/ Xxxxx Xxxxxxx Date 11/1/2002
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Xxxxx Xxxxxxx Vice President, Customer Support Business Group
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Aspect Systems
Signature /s/ Xxxxx Xxxxxx Date 11/8/02
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Xxxxx Xxxxxx Chief Operating Officer
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