EXH2-4
PURCHASE & SALE AGREEMENT
BETWEEN ALT AND NORSCAN
AGREEMENT, made as of this 7th day of September, 1986, by and between
Norscan Instruments, Ltd., a Canadian corporation having its principal place of
business at Winnipeg, Manitoba, Canada (hereinafter "Norscan") and Automated
Light Technologies, Inc. a Delaware corporation, having its principal place of
business at Xxxxxxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter "ALT").
WITNESSETH:
WHEREAS, FOCMS, a fiber optic cable monitoring system, is a new and
useful technology and all the uses of FOCMS have not been identified or fully
explored;
WHEREAS, ALT is a recently formed corporation;
WHEREAS, it is the desire of ALT to engage in R&D, Engineering,
Manufacturing, and Sales activities with respect to applications for FOCMS
worldwide (except Canada);
WHEREAS, ALT expects that such activities will result in specially
constructed or developed FOCMS; WHEREAS, Norscan owns patents relating to FOCMS
in the United Kingdom and the United States (see Appendix);
WHEREAS, ALT plans to investigate and manufacture specialized FOCMS
which may be impeded in the absence of patented inventions and related know-how
technology from Norscan;
WHEREAS, Norscan desires that FOCMS know-how technology be advanced as
quickly as possible and its patented inventions be used to promote, and not
hinder, such advancement;
WHEREAS, Norscan's know-how technology may assist ALT to develop
specially constructed FOCMS; and
WHEREAS, for the foregoing reasons, ALT has offered to purchase patents
and know-how from Norscan for worldwide sale and use (except Canada), under
Norscan patents and know-how technology whereby ALT may pursue its plans and
desires and Norscan is willing to sell such patents and know-how.
NOW, THEREFORE, in consideration of the grants, covenants, and promises
herein contained, Norscan and ALT agree as follows
ARTICLE I - DEFINITIONS
The following terms, whenever used in this Agreement, shall have the
meaning set forth below:
A. "FOCMS" shall mean all methods and apparatus for fiber optic cable
monitoring systems developed or acquired, by Norscan. Such FOCMS instruments,
components, or systems may be leased, sold, and used in any appropriate
application including but not limited to the fields of Telecommunications and
Data communica-tions.
B. "Norscan Patents" shall mean each foreign patent (non-Canadian)
filed or acquired by Norscan which relates to FOCMS and which has a filing date
or acquisition date prior to September 1, 1991.
C. "Norscan Know-How" shall mean technical information of any kind
relating to the manufacture, use or sale of FOCMS and which is owned by Norscan.
ARTICLE II - PATENT ASSIGNMENT
A. Norscan assigns to ALT all rights, title and interest to each of the
foreign "Norscan Patents" and foreign Patent Applications filed and unfiled in
consideration for which ALT grants to Norscan 150 shares of common stock of ALT.
(At present, there are 3,000 shares of ALT common stock issued.) Executed
Assignments of U.K. Patent 2,082,406 and U.S. Patent 4,480,251 are being
prepared by Norscan for prompt transmittal to ALT. All "Norscan Patents" having
a filing date or acquisition date prior to September 1, 1991 will be promptly
assigned to ALT at the time of filing or acquisition.
B. All future costs for (a) maintaining issued foreign patents and (b)
filing, prosecuting and maintaining future foreign applications shall be paid by
ALT . Norscan will provide ALT with all necessary assistance from the inventors
in the filing and prosecution of all foreign patent applications .
ARTICLE III - KNOW-HOW
A. NORSCAN KNOW-HOW
It is in the interest of ALT, Norscan and the public that the
development work of ALT not be impeded because ALT does not possess certain
know-how. To avoid such impediment, the parties agree that Norscan shall provide
to ALT all technical know-how information required to develop and manufacture
all components and related products defined as FOCMS. This technical know-how
information includes but is not limited to drawings, blueprints, part lists,
vendor's lists, etc. . Furthermore, the parties agree that their representatives
shall meet periodically for the purpose of discussing current development work
at ALT and Norscan with respect to FOCMS. ALT and Norscan agree that: (1) When
such meetings are convened, each party shall be free to designate its respective
representative or representatives; and (2) Each party shall be free to require
that such discussions shall be subject to and conditioned upon conventional
non-disclosure agreements, copies of which are attached hereto. Either as a
result of such discussions or otherwise, (1) ALT may request that Norscan
provide to ALT such know-how as Norscan may have with respect to a particular
FOCMS, or (2) Norscan may offer to supply to ALT such know-how as Norscan has
and wishes to provide with respect to a particular FOCMS.
ARTICLE IV - ASSIGNMENT
This Agreement can be assigned by ALT to its subsidiaries.
ARTICLE V - TERMS AND CONDITIONS
A. Norscan shall not provide know-how, patent rights or in any way
directly or indirectly compete with ALT worldwide (except Canada) in the FOCMS
products and applications as covered under the Norscan Patents (defined in
Article I-C).
B. Norscan shall obtain clearance from the ALT corporate counsel or Xx.
Xxxx X. Xxxxxx and Xx. Xxxxxxx XxXxxx (jointly) prior to the sale of any of its
shares in ALT that it has met all of its obligations under this purchase and
sale agreement, for sales prior to September 1, 1991. For sale after September
1, 1991 , Norscan stall obtain only ONE clearance from ALT corporate counsel or
Xx. Xxxx X. Xxxxxx and Xx. Xxxxxxx XxXxxx (jointly) that Norscan has met all its
obligations to ALT under this Purchase and Sale Agreement up to September 1,
1991. If Norscan's request for clearance to sell shares in ALT either prior to
or after September 1, 1991 is withheld by ALT corporate counsel or Xxxx Xxxxxx
and Xxxxxxx XxXxxx as provided herein, then the clearance request shall be
submitted for resolution to arbitration subject to the rules of the American
Arbitration Association.
C. Xx. Xxxxx Xxxxx of Xxxxx 0, Xxxxxxx, X.X. 00000, a co-inventor of
Norscan patents and a principal stockholder of Norscan agreed to join ALT at its
request under a mutually and reasonably agreed upon compensation plan.
D. Xx. Xxx Xxxxxx of 00 Xxxxxxxxx Xxxx, Xxxxxxxx, Xxxxxxxx, Xxxxxx
R2C-2Z2, a principal stockholder of Norscan agrees to join ALT at its request
(within one month) under a mutually and reasonably agreed upon compensation
plan.
ARTICLE VI - COMMUNICATIONS
All notices and reports to be delivered to ALT and Norscan under the
terms of this Agreement shall be considered as so delivered when sent to the
other party by registered mail, postage prepaid, at the address hereinafter set
forth, or to such other addresses as may subsequently be designated in writing:
Norscan Instruments, Ltd.
X.X. Xxx 00
Xxxxxxxx, Xxxxxxxx
Xxxxxx X0X-0X0
Attention: President
ALT, Inc.
X.X. Xxx 000
Xxxxxxxxxx, Xxxxxxxxxxxxx 01S66
Attention: President
ARTICLE VII - MISCELLANEOUS
A. Nothing in this Agreement is to be construed as, nor is there any
other agreement between the parties which is to be construed as, an undertaking
by either party to refrain from doing any act as to which a patent right is not
granted by this Agreement.
B. This Agreement has been entered into in, and shall be construed in
accordance with the laws of the State of Massachusetts.
C. This Agreement may not be waived, altered or modified except by
written agreement of the parties.
D. A waiver or any breach of any portion of this Agreement shall not
constitute a waiver of a prior, concurrent or subsequent breach of the same or
any other provision hereof and a waiver shall not be effective unless in
writing. In the event that any provision of this Agreement shall be declared
unenforceable, such provision shall be severed and the balance of the Agreement
shall continue in full force and effect.
E. Neither Norscan nor ALT shall make any press or public release
concerning this Agreement except in form agreed to in writing by the other
party; provided, however, neither party shall be precluded from making any
disclosure concerning this Agreement which is deemed necessary to comply with
the law. Any reference to or description of this Agreement which ALT desires to
appear in any registration statement or offering by or on behalf of ALT shall be
an accurate reference or description, consisting of material information. ALT
and Norscan shall not otherwise disclose the terms and conditions of this
Agreement to any third party without the prior written consent of the other;
provided, however, that: (a) ALT may, in connection with any public offering or
private placement by ALT, disclose the terms and conditions of this Agreement to
underwriters and placement agencies associated therewith, and (b) Norscan, after
providing written notice to ALT, shall have the right to disclose the terms and
conditions of this Agreement to a third party, with whom it is having licensing
negotiations and subject to a non-disclosure agreement, that lasts as long as
this agreement is confidential, and shall have the right to produce this
Agreement in connection with any litigation to which it is a party, provided
that such production is subject to a protective order, that lasts as long as
this Agreement is confidential, entered by the Court.
F. The headings of this Agreement are intended solely for convenience
of reference and shall be given no effect in the construction or interpretation
of this Agreement.
ARTICLE VIII - ENTIRE AGREEMENT
The terms and provisions herein contained constitute the entire
agreement between the parties relating to the patent rights and know-how granted
herein and supersede all previous communications, representations, agreements or
understandings, either oral or written, between the parties with respect
thereto. Any modifications of this Agreement shall not be effective unless
signed by duly authorized officers or representatives of the parties.
ARTICLE IX - FORCE MAJEURE
If the performance of any obligation under this Agreement is prevented
by any cause beyond the reasonable control of a party, such party shall be
excused from such performance for so long as is reasonable. The party so
prevented shall use all practical efforts to perform its obligations as soon as
possible.
IN WITNESS THEREOF, the parties have caused this Agreement to be signed
by their respective authorized officers as of the day and year first above
written.
Norscan Instruments, Ltd. Norscan Instruments, Ltd.
By__/S/____________ _____ By___/S/___________ _____
Secretary Date President Date
ALT, Inc.
By__/S/____________ _____ By___/S/___________ _____
Secretary Date President Date
APPENDIX
Norscan Foreign Patents
(1) U.K. Patent 2,082,406B entitled -
MONITORING ELECTRICAL CABLES AND JOINTS
FOR THE INGRESS OF MOISTURE
by Xxxxx Xxxxxx Xxxxx
Xxxx Xxxx XxXxxxxxxx
Xxxxx Xxxxxx Domenco
(2) U.S. Patent 4,480,251 issued October 30, 1984 entitled -
APPARATUS TO MONITOR ELECTRICAL CABLES, INCLUDING SPLICE
JOINTS AND THE LIKE, FOR THE INGRESS OF MOISTURE
by Xxxx X. XxXxxxxxxx
Xxxxx X. Domenco
Xxxxx X. Xxxxx
(3) Norscan Foreign Patent Applications relating to FOCMS acquired or filed
prior to September 1, 1991.
NORSCAN INSTRUMENTS LTD., 00 Xxxxxxxxx Xxxx, Xxxxxxxx, Xxxxxxxx, Xxxxxx in
consideration of One Dollar ($1.00) and other good and valuable consideration,
the receipt of which is hereby acknowledged, do hereby sell and assign to
AUTOMATED LIGHT TECHNOLOGIES INC., 0 Xxxxxx Xxxx Xxxx, Xxxxxxxxxx,
Xxxxxxxxxxxxx, XXX, hereinafter called the assignee, the entire, right, title
and interest in and to the invention entitled "APPARATUS TO MONITOR ELECTRICAL
CABLES, INCLUDING SPLICE JOINTS AND THE LIKE, FOR THE INGRESS OF MOISTURE " as
disclosed in the United States Patent No. 4,480,251 issued the 13th day of June,
1984 and in and to any and all reissues and extensions thereof, in and for the
United Kingdom, and all other countries in the world save and except Canada, the
same to be held and enjoyed by the said assignee, its successors, assigns, or
legal representatives to the full ends of the terms for which all Letters Patent
therefor are granted, as fully and entirely as the same would have been held and
enjoyed by us if this assignment and sale had not been made, this assignment
including the right to take action and recover in respect of any infringement of
the patent that took place prior to the date of this assignment.
SIGNED at the City of Winnipeg, in the Province of Manitoba, Canada, this 13th
day of February, 1987.
NORSCAN INSTRUMENTS LTD.
PER:___/S/______________ Pres.
PER:___/S/______________ Sec.
NORSCAN INSTRUMENTS LTD., 00 Xxxxxxxxx Xxxx, Xxxxxxxx, Xxxxxxxx, Xxxxxx in
consideration of One Dollar ($1.00) and other good and valuable consideration,
the receipt of which is hereby acknowledged, do hereby sell and assign to
AUTOMATED LIGHT TECHNOLOGIES INC., 0 Xxxxxx Xxxx Xxxx, Xxxxxxxxxx,
Xxxxxxxxxxxxx, XXX, hereinafter called the assignee, the entire, right, title
and interest in and to the invention entitled "APPARATUS TO MONITOR ELECTRICAL
CABLES, INCLUDING SPLICE JOINTS AND THE LIKE, FOR THE INGRESS OF MOISTURE" as
disclosed in the United Kingdom Patent No. 2082406 issued the 13th day of June,
1984 and in and to any and all patents of confirmation and extensions thereof,
in and for the United Kingdom, and all other countries in the world save and
except Canada, the same to be held and enjoyed by the said assignee, its
successors, assigns, or legal representatives to the full ends of the terms for
which all Letters Patent therefor are granted, as fully and entirely as the same
would have been held and enjoyed by us if this assignment and sale had not been
made, this assignment including the right to take action and recover in respect
of any infringement of the patent that took place prior to the date of this
assignment.
SIGNED at the City of Winnipeg, in the Province of Manitoba, Canada, this 13th
day of February, 1987.
NORSCAN INSTRUMENTS LTD.
PER:___/S/______________ Pres.
PER:___/S/______________ Sec.
