EXHIBIT 10.1
AMENDED AND RESTATED
LICENSE AGREEMENT
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AMENDED AND RESTATED LICENSE AGREEMENT dated as of the 20th day of August,
1996 by and between Xxx Acquisition Corp. d/b/a Xxx Technologies, a
Massachusetts corporation having its principal place of business at 000 Xxxx
Xxxxxx, Xxxxx, Xxxxxxxxxxxxx 00000 ("Licensor") and Viisage Technology, Inc., a
Delaware corporation having its principal place of business at 000 Xxxx Xxxxxx,
Xxxxx, Xxxxxxxxxxxxx 00000 ("Licensee").
W I T N E S S E T H:
- - - - - - - - - -
WHEREAS, Licensor is the current owner of the Business of the Imaging
Division and the owner or licensee of certain proprietary technology for
products, systems and services relating to the verification, recognition or
identification of human faces and other biometrics; and
WHEREAS, Licensee desires to obtain an exclusive worldwide license from
Licensor to use the proprietary technology except as it relates to access
control systems and services for federal governments which are described below;
WHEREAS, Licensor is contributing substantially all of the assets and
liabilities of its identification systems division to Licensor and this
agreement is to take effect on the date of that transfer (the "Contribution
Date");
WHEREAS, Licensee desires to develop, revise, enhance, modify, and/or
create derivatives with respect to such proprietary technology for use in
connection with Licensee's products, systems and services; and
WHEREAS, the parties desire to amend and restate the license agreement
entered into by them on June 24, 1996.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
covenants set forth below, and for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, the parties agree as
follows:
SECTION I - DEFINITIONS.
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As used herein, the following capitalized terms shall have the respective
meanings set forth below:
1.1 "Access Control Field" shall mean the control of human entry through
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doorways, gates, turnstiles or similar thresholds in and to buildings or
facilities located on properties owned or controlled by the United States
federal government, or any other national government (but not political
subdivisions thereof) which is a member of the United Nations, using apparatus
at the entry
point which may involve the use of facial recognition and/or other biometric
technologies, identification documents or cards, databases, communications
equipment and/or digital system components.
1.2 "Business of the Imaging Division" shall mean the business of the
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Viisage Technology Division of Licensor as conducted on or before the
Contribution Date, including without limitation as it is described in the
registration statement on Form S-1 filed with the Securities and Exchange
Commission in connection with Licensee's initial public offering of securities.
1.3 "Documentation" shall mean user manuals, notes, diagrams, drawings,
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reports, publications and technical specifications including without limitation
descriptions of manufacturing processes and technical drawings, all computer
programs in both object and source code format and any other physical embodiment
of the Technology and Improvements owned or controlled by Licensor.
1.4 "Improvements" shall mean any Technology that is discovered,
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developed, or otherwise owned or controlled by Licensor at any future time as
further set forth in Section 2.4 of this Agreement but shall specifically
exclude Modifications made by or on behalf of Licensee pursuant to Section 4.1
of this Agreement, which shall be owned solely by Licensee.
1.5 "Licensee" shall mean Viisage and its permitted successors and
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assigns.
1.6 "Licensor" shall mean Xxx and its permitted successors and assigns.
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1.7 "Owned or controlled" shall include Technology and/or Improvements
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which the Licensor owns, hereafter acquires or under which the Licensor is
licensed or becomes licensed and has the right to grant sublicenses.
1.8 "Modifications" shall include any developments, modifications,
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enhancements, revisions or derivatives to the Technology made by or on behalf of
Licensee as further provided in Section 4.1 of this Agreement.
1.9 "Proprietary Information" shall mean all trade secrets and
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confidential information disclosed in writing by one party (the "Disclosing
Party") to the other (the "Receiving Party").
The definition of "Proprietary Information" herein shall not include
information which
(a) is at the time of disclosure or later becomes known within the relevant
industry under circumstances involving no breach of this Agreement;
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(b) is lawfully and in good faith made available to the Receiving Party by a
third party;
(c) is required to be disclosed by the Receiving Party by a governmental
authority or by order of a court of competent jurisdiction, provided that
such disclosure is subject to all applicable governmental or judicial
protection available for similar material and reasonable advance notice is
given to the Disclosing Party;
(d) is independently developed or otherwise rightfully known by the Receiving
Party following the date of this Agreement; or
(e) is inherently disclosed in the use, lease, sale or other distribution of,
or publicly available supporting documentation for, any present or future
product or service licensed hereunder.
1.10 "Technology" includes the copyright and patent rights listed on
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Exhibit A which is attached hereto and incorporated herein by reference, and
includes all rights worldwide that relate to the Business of the Imaging
Division and that are owned or controlled by Licensor as of, and following, the
date of the execution of this Agreement, said rights including (a) all
inventions (whether patentable or unpatentable and whether or not reduced to
practice), all improvements thereto, and all patents, patent applications and
patent disclosures, together with all continuation, continuation-in-part,
divisional, reissue, reexamination, revision and extension patents and patent
applications, (b) all copyrightable works, all copyrights, and all copyright
registrations, applications and renewals, (c) all trade secrets and confidential
information including ideas, concepts, discoveries, formulas, formulations,
processes, techniques, compositions, data, designs, drawings, specifications,
research and development, know-how, customer and supplier lists, pricing and
cost information, business and marketing plans and proposals, (d) software and
computer programs (in all forms and formats including without limitation source,
object, and executable code), (e) all other intellectual property or proprietary
rights, (f) Documentation, and (g) Proprietary Information; provided that the
Technology shall not include any of the technology or any other rights licensed
by Licensor from Facia Reco Associates, L.P., it being understood that Licensee
is entering into a license directly with Facia Reco Associates, L.P.
SECTION II - TERMS OF LICENSE.
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2.1 Grant of License.
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(a) Subject to Sections 2.3 and 2.4 below, effective as of the Contribution
Date, the Licensor hereby grants to Licensee and the Licensee hereby
accepts from Licensor an exclusive,
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perpetual, irrevocable, paid-up, royalty-free, worldwide license to use all
of Licensor's rights, now existing or hereafter acquired, direct or
indirect, in the Technology, including without limitation the right: (1) to
copy and distribute copies, utilize, develop, perform and display publicly,
prepare derivative works, improve, modify, revise and enhance the
Technology or any portion or component thereof as Licensee shall determine
appropriate, (2) to make, have made, use, lease, rent, sell, offer to sell,
import, (3) to sublicense pursuant to Section 2.2 below, or (4) to cause
its subcontractors, representatives or agents to perform the same for
Licensee's benefit. Licensor shall not for itself or authorize or appoint
any third party to engage in any action by which would conflict with such
license except in the Access Control Field.
(b) On the Contribution Date, Licensor shall deliver to Licensee all
Documentation in existence on the date hereof regarding the Technology,
including without limitation, computer programs listed on Exhibit A in both
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object and source code format and user documentation related thereto.
2.2 Right to Grant Sublicenses. The Licensee shall have the right to
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grant sublicenses, and such sublicensees shall have the right to grant
sublicenses, of equal or lesser scope under the license set forth in Section
2.1.
2.3 Limitations on License Grant. Notwithstanding the generality of
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Section 2.1 above, Licensee acknowledges that certain of the Technologies are
subject to third party proprietary rights which have been licensed to Licensor
and, accordingly, this Agreement and the license granted hereunder may be
subject to all such third party's restrictions included in the contracts
furnished to Licensee pursuant to the Amended and Restated Asset Transfer
Agreement between the parties of even date herewith or as Licensor may notify
Licensee in writing from time to time. Further, Licensee may not use the
Technology in the Access Control Field.
2.4 Improvements.
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(a) If, during the term of this Agreement, the Licensor shall develop, improve,
make, acquire, control or obtain the right to use (by license or otherwise)
any discovery, invention or Improvement (whether patentable or
unpatentable), or new method, system, technique or device or any technical
information, knowledge, technique, data or practice used in or relating to
the Business of the Imaging Division (including, without limitation any
such developments provided by Licensor to any of its other permitted
sublicensees), the Licensor shall promptly disclose the same to the
Licensee in writing and the same shall be and become, without the necessity
of any further action by the Licensor or the Licensee, a part of and
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be included in the Technology licensed pursuant to this Agreement.
(b) In connection with Section 2.4(a), the Licensor agrees promptly to provide
the Licensee with copies of all Documentation of such Improvements acquired
by Licensee including without limitation, computer programs in both object
and source code format and user documentation related thereto. Licensor
also agrees that it shall provide Licensee with such consulting services as
the Licensee may reasonably request to enable Licensee to fully understand
and utilize such Improvements at Licensor's standard commercial rates for
such services.
SECTION III - REPRESENTATIONS, WARRANTIES AND COVENANTS.
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3.1 Licensee. Licensee represents, warrants and covenants to Licensor as
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follows:
(a) Licensee is a corporation duly organized, validly existing and in good
standing under the laws of the State of Delaware and all necessary action,
corporate or otherwise, has been taken by it to execute, deliver and
perform this Agreement.
(b) The execution, delivery and performance of this Agreement does not violate
nor conflict with the Certificate of Incorporation, the by-laws, any
existing material agreement of the Licensee with any third party or any
laws to which Licensee is subject.
3.2 Licensor. Licensor represents, warrants and covenants to Licensee as
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follows:
(a) Licensor is a corporation duly organized, validly existing and in good
standing under the laws of The Commonwealth of Massachusetts and all
necessary action, corporate or otherwise, has been taken by it to execute,
deliver and perform this Agreement.
(b) The execution, delivery and performance of this Agreement does not violate
nor conflict with the Articles of Organization, the by-laws, any existing
material agreement of the Licensor with any third party or any laws to
which Licensor is subject.
(c) Licensor has not granted any rights to any third party relating to the
Technology except (i) pursuant to the customer contracts which the Licensor
is assigning to the Licensee pursuant to the Asset Transfer Agreement or
(ii) with respect to security interests granted by Licensor in general
intangibles under certain of Licensor's financing arrangements. Licensor
has delivered to Licensee each pending patent application which relates to
the Technology.
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(d) Licensor has not received any charge, complaint, claim, demand, or notice
alleging any interference, infringement, misappropriation, or violation of
any rights of third parties which relate to the Technology which has not
been disclosed to Licensee in writing.
(e) Licensor will file a notice with respect to this Agreement with the Patent
and Trademark Office promptly following the Contribution Date.
SECTION IV - MODIFICATIONS
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4.1 Licensee and any of Licensee's duly authorized agents,
representatives, sublicensees or subcontractors, may develop, modify, enhance,
revise or prepare derivatives of the Technology as Licensee in its sole
discretion shall deem necessary or expedient for its own use or for use by any
third party who has contracted with the Licensee or any of its sublicensees (a
"Modification"). Any such Modification shall be deemed to be the sole and
exclusive property of Licensee and shall constitute part of Licensee's
Proprietary Information as that term is defined herein.
4.2 Licensee agrees to grant Licensor an exclusive, paid-up, royalty-
free, perpetual license to use the Modifications in the Access Control Field.
During the term of this Agreement, disclosure of Modifications shall be made by
Licensee to Licensor no later than thirty (30) days after their release for
external use in a patent or copyright application, in a customer proposal or in
a system or product licensed, leased or sold to a License's customer.
SECTION V - PROPRIETARY INFORMATION.
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5.1 Except with the prior written consent of the Disclosing Party or as
provided in this Agreement, the Receiving Party shall not directly or indirectly
disclose to any third party any of the Proprietary Information from the
Disclosing Party within three (3) years of the receipt of such Proprietary
Information. The Receiving Party agrees to use the same care and discretion to
avoid disclosure, publication, or dissemination outside of itself of received
Proprietary Information as the Receiving Party employs with similar information
of its own which it does not desire to publish, disclose or disseminate. The
Receiving Party may also disclose Proprietary Information received from the
Disclosing Party hereunder to any third party in the ordinary course of
business, including in the development, marketing, distribution or maintenance
of products or services, provided such third party has executed a written
agreement obligating the third party to limit use of such information in the
field of use permitted to the Receiving Party hereunder (or a more restrictive
subset of such field of use) and prohibiting such third party from further
disclosure of information so received outside of itself and its
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affiliated entities for the same period applicable to the Receiving Party
hereunder. Notwithstanding the foregoing, Licensor acknowledges that the
Licensee may release or otherwise disclose Proprietary Information to the extent
required in responding to requests for proposals from potential customers, in
the furtherance of the performance of any awarded contracts, or to other
entities which participate in such proposals or awarded contracts. Any required
disclosure or use of the Licensor's Proprietary Information by the Licensee or
other entities including without limitation its sublicensees shall not
constitute a breach of any term of this Agreement or any other rights of the
Licensor in the Proprietary Information.
SECTION VI - INFRINGEMENT OF LICENSED TECHNOLOGY OR IMPROVEMENTS.
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6.1 Notification of Infringement. Each party shall notify the other of
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any infringement of any Technology or Modifications of which it has knowledge
and shall provide the other with the available evidence, if any, of such
infringement.
6.2 Enforcement. If Licensor has not, within thirty (30) days after the
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date on which it is notified or otherwise becomes aware of an alleged
infringement of Technology (a) terminated such infringement or (b) initiated
legal action against the infringer, then Licensor shall, upon the written
request of Licensee, grant the Licensee the right to prosecute the infringer.
6.3 Expenses; Proceeds. The party which prosecutes the infringement shall
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bear the costs and expenses of bringing such action, except as provided in
Section 6.2. All amounts recovered in any enforcement action brought by
Licensor, whether by judgment or settlement, shall be retained by Licensor. All
amounts recovered by Licensee in any enforcement action brought by Licensee,
whether by judgment or settlement, shall be retained by Licensee.
6.4 Other. The Licensee and Licensor shall fully cooperate with each
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other in the planning and execution of any enforcement action. Neither the
Licensee, its sublicensees nor the Licensor shall enter into any settlement that
includes the grant of a license under, agreement not to enforce, or any
statement prejudicial to the validity or enforceability of any Technology or
this Agreement without the prior written consent of the other.
6.5 Declaratory Actions. In the event that a declaratory judgment action
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alleging invalidity or non-infringement of any of the Technology shall be
brought against the Licensee or Licensor at such entity's option, shall have the
right, within thirty (30) days after commencement of such action, to intervene
and take over the sole defense of that action at its expense subject to the
aforesaid Section 6.4 of this Article VI.
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SECTION VII -- INDEMNIFICATION
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7.1 Indemnification.
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(a) General. Each party agrees to indemnify and hold harmless the other party,
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its sublicensees, subcontractors, representatives, agents, employees,
officers and directors, successors and assigns from and against any and all
liabilities, losses, damages, claims, suits and expenses, including
reasonable legal fees and costs and all liabilities of whatsoever kind or
nature imposed on, incurred by, or asserted against the other party, its
sublicensees, subcontractors, representatives, agents, employees, officers
and directors, successors and assigns relating to or arising out of any
failure of the defaulting party to perform or comply with the terms of this
Agreement, including without implied limitation any breach of the
representations and warranties contained herein.
SECTION VIII - PRODUCT LIABILITY
--------------------------------
8.1 Licensee shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold Licensor, directors, officers, employees
and affiliates (other than Licensee), harmless against all claims, proceedings,
demands and liabilities of any kind whatsoever, including reasonable legal
expenses and reasonable attorneys' fees, arising out of the death of or injury
to any person or persons or out of any damage to property, resulting from the
production, manufacture, sale, use, lease, consumption or advertisement of a
product utilizing the Technology or arising from any obligation of Licensee
hereunder, except that this indemnification shall not apply to claims that the
Technology infringes third party intellectual property rights. Notwithstanding
the foregoing, Licensee's obligation to indemnify the Licensor as previously
stated, shall be further limited to claims, proceedings, demands and liabilities
arising solely out of acts or omissions of Licensee.
8.2 Licensee shall obtain and carry in full force and effect commercial,
general liability insurance which shall protect Licensor with respect to events
covered by Section 8.1 above. Such insurance shall be written by a reputable
insurance company authorized to do business in the Commonwealth of
Massachusetts, shall list Licensor as one of the additional named insured
thereunder, shall be endorsed to include product liability coverage and shall
require thirty (30) days written notice to be given to Licensor prior to any
cancellation or material change thereof. The limits of such insurance shall not
be less than One Million Dollars ($1,000,000.00) per occurrence with an
aggregate of Three Million Dollars ($3,000.000.00) for personal injury or death,
and One Million Dollars ($1,000,000.00) per occurrence with an aggregate of
Three Million Dollars ($3,000,000.00) for property damage.
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Licensee shall provide Licensor with Certificates of Insurance evidencing the
same.
8.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, LICENSOR,
ITS DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES MAKE NO REPRESENTATIONS AND
EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE ABSENCE OF LATENT
OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. EXCEPT AS OTHERWISE EXPRESSLY
SET FORTH IN THIS AGREEMENT, INCLUDING WITHOUT LIMITATION SECTION 7.1, LICENSOR
MAKES NO REPRESENTATION OR WARRANTY THAT THE PRACTICE BY LICENSEE OF THE LICENSE
GRANTED HEREUNDER SHALL NOT INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY.
8.4 IN NO EVENT SHALL EITHER PARTY OR THEIR RESPECTIVE DIRECTORS,
OFFICERS, EMPLOYEES AND AFFILIATES BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL
DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO PROPERTY AND LOST
PROFITS, REGARDLESS OF WHETHER LICENSOR OR LICENSEE SHALL BE ADVISED, SHALL HAVE
OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY.
SECTION IX - MARKINGS.
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9.1 Licensee agrees to xxxx all products utilizing the Technology sold in
the United States with all applicable United States patent numbers and copyright
notices of which it has been informed of by Licensor.
SECTION X - EXPORT CONTROLS.
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10.1 It is understood that the Technology may be subject to United States
laws and regulations controlling the export of technical data, computer
software, laboratory prototypes and other commodities (including the Arms Export
Control Act, as amended, and the Export Administration Act of 1979), and that
each's obligations hereunder are contingent on compliance with application
United States export laws and regulations. The transfer of certain technical
data and commodities may require a license from the cognizant agency of the
United States Government and/or written assurances by Licensee that Licensee
shall not export data or commodities to certain foreign countries without prior
approval of such agency.
SECTION XI - NON-USE OF NAMES.
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11.1 Licensee shall not use the names or trademarks of Xxx Technologies
(other than those names or trademarks assigned by Licensor to Licensee pursuant
to the Asset Transfer Agreement), nor any adaptation thereof, nor the names of
any of its employees, in any advertising, promotional or sales literature
without prior
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written consent obtained from Xxx Technologies, or said employee, in each case,
except that Licensee may state that it is sub-licensed under one or more of the
patents and/or applications comprising the Technology.
SECTION XII - TERM AND TERMINATION.
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12.1 General. This Agreement shall automatically terminate and be of no
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further force and effect if the transfer of substantially all of the assets and
liabilities of Licensor's identification systems division to Licensee does not
occur pursuant to the Asset Transfer Agreement between the parties of even date
herewith on or before September 30, 1997.
12.2 Termination by the Licensee. The Licensee shall have the right to
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terminate this Agreement, effective immediately, upon written notice of
termination to Licensor.
12.3 Survival. In the event of any termination of this Agreement by
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Licensee, the following shall survive termination and continue to be binding on
parties: (1) the provisions of Sections V (proprietary information), VII
(indemnification), VIII (product liability), X (export control), XI (non-use of
names) and this Section 12.3; and (2) any sublicense to an end user of products
previously granted by Licensee or its sublicensees. Licensor may continue to
use the Modifications in the Access Control Field following the termination of
this Agreement.
SECTION XIII - MISCELLANEOUS.
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13.1 Force Majeure. In the event that any party is unable to perform any
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of its obligations under this Agreement because of natural disaster, actions or
decrees of governmental bodies or electrical, communication or delivery failure
not the fault of the affected party (hereafter referred to as a "Force Majeure
Event"), the party who has been so affected shall immediately give notice to the
other party and shall do everything possible to resume performance. Upon
receipt of such notice, all obligations under this Agreement shall be
immediately suspended. If the period of nonperformance exceeds fifteen (15)
days from the receipt of notice of the Force Majeure Event, the party whose
ability to perform has not been so affected may by giving notice terminate this
Agreement.
13.2 Further Assistance. Each party agrees to duly execute and deliver, or
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cause to be duly executed and delivered, such further instruments and do and
cause to be done such further acts and things, including, without limitation,
the filing of such additional assignments, agreements, documents and
instruments, that may be necessary or as the other party hereto may at any time
and from time to time reasonably request in connection with this Agreement or to
carry out effectually the provisions and purposes of, or to better assure and
confirm unto such other party its
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rights and remedies under, this Agreement.
13.3 Notice. All notices, including approvals, that any party hereto is
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required or may desire to give to the other shall be in writing and shall be
given by addressing the same to the other at the address or facsimile number set
forth in this Section, or at such other address or facsimile number as either
may specify in writing to the other. All notices shall become effective when
deposited in the United States Mail with proper postage for first class
registered or certified air mail prepaid, return receipt requested, or when
delivered personally, or, if promptly confirmed by mail as provided above, when
dispatched by telegram, telex, facsimile or other written telecommunications,
addressed:
If to the Licensor: Xxx Technologies
000 Xxxx Xxxxxx
Xxxxx, XX 00000
Attn: President
Telephone: (000) 000-0000
Telecopier: (000) 000-0000
If to Licensee: Viisage Technology, Inc.
000 Xxxx Xxxxxx
Xxxxx, XX 00000
Attn: President
Telephone: (000) 000-0000
Telecopier: (000) 000-0000
13.4 Waiver. No failure on the part of the either party to exercise, and
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no delay in exercising, any right, remedy, power or privilege hereunder, and no
course of dealing between the parties, shall operate as a waiver thereof, nor
shall any single or partial exercise of any right, remedy, power or privilege
preclude any other or further exercise thereof, or the exercise of any other
right, remedy, power or privilege.
13.5 Assignment. Neither party may assign this Agreement or any rights or
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obligations hereunder except as expressly set forth in this Agreement, provided,
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however, that either party may fully assign its rights and interests, and
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delegate its obligations, hereunder, effective upon written notice thereof (a)
to an entity controlled by such party if such entity assumes all of the
obligations of such party hereunder and this Agreement remains binding upon such
party; or (b) to any entity which acquires all or substantially all of the
assets of either party or which is the surviving entity in a merger or
consolidation with such party, if such entity assumes all of the obligations of
the assigning party hereunder.
13.6 Injunctive Relief. Any breach of this Agreement by a party to this
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Agreement could cause irreparable damage to the non-breaching party. In the
event of such breach, the non-breaching
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party shall have, in addition to any and all remedies of law, the right to seek
an injunction, specific performance or other equitable relief to prevent a
violation of this Agreement.
13.7 Entire Agreement. This Agreement sets forth the entire understanding
----------------
of the parties with respect to their subject matter.
13.8 No Modification. This Agreement may be changed only by a writing
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signed by duly-authorized representatives of both parties hereto.
13.9 Severability. In the event that any one or more of the provisions
------------
contained herein shall, for any reason, be held to be invalid, illegal or
unenforceable in any respect, such invalidity, illegality or unenforceability
shall not affect any other provisions of this Agreement, but this Agreement
shall be construed as if such invalid, illegal or unenforceable provisions had
never been contained herein, unless the deletion of such provision or provisions
would result in such a material change so as to cause completion of the
transactions contemplated herein to be unreasonable.
13.10 Succession. This Agreement shall be binding upon and shall inure to
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the benefit of the parties hereto and their respective successors and other
legal representatives and, to the extent that any assignment hereof is permitted
hereunder, their assignees.
13.11 Applicable Law; Dispute Resolution.
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(a) This Agreement shall in all events and for all purposes be governed by,
construed in accordance with, the law of The Commonwealth of Massachusetts
without regard to any choice of law principle that would dictate the
application of the law of another jurisdiction.
(b) Except for the right of either party to apply to a court of competent
jurisdiction for injunctive relief as provided in Section 13.6 above, any
and all claims, disputes or controversies arising under, out of, or in
connection with the Agreement, including any dispute relating to patent
validity or infringement, which the parties shall be unable to resolve
within sixty (60) days shall be mediated in good faith. The party raising
such dispute shall promptly advise the other party of such claim, dispute
or controversy in a writing which describes in reasonable detail the nature
of such dispute. By not later than five (5) business days after the
recipient has received such notice of dispute, each party shall have
selected for itself a representative who shall have the authority to bind
such party, and shall additionally have advised the other party in writing
of the name and title of such representative. By not later than ten (10)
business days
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after the date of such notice of dispute, the party against whom the
dispute shall be raised shall select a mediation firm in the Boston area
and such representatives shall schedule a date with such firm for a
mediation hearing. The parties shall enter into good faith mediation and
shall share the costs equally. If the representatives of the parties have
not been able to resolve the dispute within fifteen (15) days after such
mediation hearing, the parties shall have the right to pursue any other
remedies legally available to resolve such dispute in either the Courts of
the Commonwealth of Massachusetts or in the United States District Court
for the District of Massachusetts, to whose jurisdiction for such purposes
Licensor and Licensee each hereby irrevocably consents and submits.
(c) Notwithstanding the foregoing, nothing in this Article shall be construed
to waive any rights or timely performance of any obligations existing under
this Agreement.
13.12 Counterparts. This Agreement may be executed in counterparts. Each
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counterpart, including a signature page executed by each of the parties hereto,
shall be an original counterpart of this Agreement, but all of such counterparts
together shall constitute one instrument.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed under seal and delivered as of the date set forth in the preamble
hereto.
XXX TECHNOLOGIES
By: /s/ Xxxxxx X. Xxx
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Title: President
--------------------------------
VIISAGE TECHNOLOGY, INC.
By: /s/ Xxxxxx X. Xxxxxx
-----------------------------------
Title: President
--------------------------------
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EXHIBIT A
XXX TECHNOLOGIES
PATENT DOCKET REPORT
June 15, 1996
DOCKET CTY. TITLE STATUS APPLN. NO. FILING DATE
-------------- ---- -------------------------- ------ -------------- -----------
LTH-0001 USA APPARATUS FOR COUPLING F 08/262552 2DJE1994
MULTIPLE DATA SOURCES ONTO
A PRINTED DOCUMENT
LTH-0001CP USA APPARATUS FOR COUPLING F 486958 07JE1995
MULTIPLE DATA SOURCES ONTO
A PRINTED DOCUMENT
LTH-0001CPPC PCT APPARATUS FOR COUPLING F PCT/US95/07815 19JE1995
MULTIPLE DATA SOURCES ONTO
A PRINTED DOCUMENT
LTH-0004 USA SYSTEMS AND METHODS FOR F 08/316041 30SE1994
RECORDING DATA
LTH-0004PC PCT SYSTEMS AND METHODS FOR F PCT/US95/12742 29SE1995
RECORDING DATA
LTH-0009 USA SYSTEMS AND METHODS FOR F 08/408517 20MR1995
RECORDING DATA
LTH-0009PC PCT SYSTEMS AND METHODS FOR F PCT/US96/02977 04MR1996
RECORDING DATA
"PCT" -- Patent Cooperation Treaty
14
XXX TECHNOLOGIES COPYRIGHTS
CONTROL NO. DESCRIPTION DATE OF REGISTRATION NO.
------------- ----------------------------- -------- ----------------
REG.
-------------
20000032 MA Robot Control S/W 09/26/94 TXu 650-972
20000039 XXX Image Capture Application 09/26/94 TXu 650-855
20000073 MA Network Job Builder 09/26/94 TXu 650-889
20000075 Image Server 10/17/94 TXu 652-723
20000051 Vision Inspection System 10/24/94 TXu 657-465
15
