EXH 10.50
PATENT ASSIGNMENT AGREEMENT
This agreement ("Agreement"), which shall be effective as of November
23, 2001, is between: TEXON UK LIMITED whose registered office is at 000 Xxxx
Xxxx, Xxxxxxxx, Xxxxxxxxx, XX0 0XX Xxxxxx Xxxxxxx ("Texon") and XXXXXX
TECHNOLOGIES, INC., a Delaware corporation, with its principal place of business
at 0000 Xxxxxx Xxxx Xxxxxxxxx, Xxxxxxx-Xxxxx, Xxxxx Xxxxxxxx Xxxxxx Xxxxxx of
America 27107 ("Xxxxxx").
RECITALS
WHEREAS, Texon has an ownership interest in certain patent applications
relating to temperature regulation in nonwovens within the field of footwear,
comprising PCT/GB01/03453 filed August 1st, 2001 and U.S. application nos.
09/750,212 filed on December 28th, 2000 and US01/41497 filed on July 31, 2001
each claiming priority from its U.K. counterpart, patent application numbered
0019142.9 filed August 5th, 2000; and
WHEREAS, Texon desires to withdraw all pending patent applications with
the exception of U.S. application no. US01/41497 filed on July 31, 2001 before
or immediately following execution of this Agreement; and
WHEREAS, Xxxxxx wishes to acquire, and Texon is willing to assign,
under the terms and conditions set forth herein, all rights, title and interest
in and to such surviving pending applications;
NOW, THEREFORE, in consideration of the mutual covenants herein and for
good and valuable consideration, the adequacy and receipt of which are hereby
acknowledged, the parties hereto agree to the following terms and conditions:
ARTICLE 1
DEFINITIONS
1.1 "AFFILIATE" shall mean, with respect to any person or entity, any other
person or entity directly or indirectly controlling, controlled by, or under
common control with such person or entity. For the purposes of this definition,
"control," when used with respect to any person or entity, means the possession,
directly or indirectly, of the power to cause the direction of the management
and policies of such person or entity, whether through the ownership of voting
securities, by contract or otherwise; and the terms "controlling" and
"controlled" have meanings correlative to the foregoing. 1.2 "ASSIGNED PATENTS"
shall mean U.S. application no. US01/41497 filed on July 31, 2001 and any
continuations, divisionals, continuations-in-part, reexaminations, reissues and
extensions of any of the applications thereof, and any patent applications or
patents on Future Improvements or Existing Technology.
1.3 "ASSIGNED PROPERTY" shall mean the Assigned Patents, Future Improvements and
Existing Technology.
1.4 "EFFECTIVE DATE" shall mean the date first written above.
1.5 "EXISTING TECHNOLOGY" shall mean any and all inventions, developments,
existing improvements, and proprietary information in existence, owned by Texon
as of the Effective Date, other than any such inventions, developments,
improvements and proprietary information described within the Assigned Patents,
relating to the use of phase change materials for temperature regulation in
Nonwoven Materials.
1.6 "FUTURE IMPROVEMENTS" shall mean any new enhancements, modifications,
improvements, inventions or developments relating to the use of phase change
materials for
temperature regulation in Nonwoven Materials conceived or reduced to practice by
Texon during the Term.
1.7 "NET SELLING PRICE" shall mean money or any other consideration, exclusive
of sales taxes, custom duties, value added taxes, transportation, insurance and
reasonable allowances for returns if any, received by Xxxxxx for the sale or
other disposition or Protected Products. The term "sale" as used herein shall
mean "final sale" as used in Article 1.11.
1.8 "NONWOVEN MATERIAL" shall mean as defined under ASTM D 1117-80, namely a
textile structure produced by bonding or interlocking of fibers, or both,
accomplished by mechanical, chemical, thermal, or solvent means and combinations
thereof, but not including paper, or fabrics that are woven, knitted or tufted".
1.9 "PARTY" or "PARTIES" shall mean Texon or Xxxxxx or both as the context may
require.
1.10 "PROPRIETARY INFORMATION" shall mean any and all information relating to
(i) this Agreement and, in specific, any amounts paid by Xxxxxx pursuant to this
Agreement, (ii) any financial information provided by Xxxxxx pursuant to this
Agreement, and (iii) the Assigned Property, including without limitation files
and correspondence relating to the Assigned Property, in each case whether in
writing, verbal, recorded or in some other physical or non-physical form.
1.11 "PROTECTED PRODUCT" shall mean (i) any nonwoven footwear component material
sold by Xxxxxx or its Affiliates covered by at least one Valid Claim, and (ii)
any MicroPCM materials sold by Xxxxxx and its Affiliates used to create a
nonwoven footwear component material covered by at least one Valid Claim,
provided, however, that Xxxxxx shall only be required to pay royalties pursuant
to Article 3 once with respect to any materials used to create such a nonwoven
footwear component material covered by at least one Valid Claim. If, for
example, any such
materials (i) are sold by Xxxxxx, or its respective Affiliates, and (ii) are
re-acquired by Xxxxxx or its respective Affiliates as part of a created nonwoven
footwear component material, and (iii) the created nonwoven footwear component
material is then re-sold under circumstances in which a royalty will be paid
under Article 3, no royalty shall be paid with respect to the initial sale of
the materials used to create the nonwoven footwear component materials, but
royalties shall be paid on the final sale of the created nonwoven footwear
component material.
1.12 "TERM" shall mean the period commencing on the Effective Date and ending at
the earlier of (a) the first date on which there are no Valid Claims covering
Protected Products or (b) December 31, 2009.
1.13 "VALID CLAIM" shall mean any claim of the Assigned Patents that has not
been held invalid or unenforceable by a final unappealed or unappealable
decision of a court of competent jurisdiction or the appropriate administrative
agency.
ARTICLE 2
DELIVERABLES AND INFORMATION RETENTION
2.1 ASSIGNMENT. Subject to the terms and conditions in this Agreement, Texon
hereby sells, assigns and transfers to Xxxxxx, and Xxxxxx hereby accepts, all of
Texon's rights, title and interests in and to the Assigned Property to Xxxxxx.
The Parties agree that Texon's rights, title and interests in and to the
Assigned Property are limited to the field of footwear. Texon retains no rights
in the Assigned Property, except as specifically set forth in this Agreement.
2.2 RETENTION OF DOCUMENTS. Texon shall preserve all of its files relating to
the Assigned Patents during the Term.
ARTICLE 3
PAYMENTS AND ROYALTIES
3.1 ROYALTIES. Commencing as of the Effective Date and continuing throughout the
Term, Xxxxxx shall pay patent use royalties to Texon in accordance with the
following: (a) for
Protected Products with a total weight up to and including 300 grams per square
meter (gsm) ("Category 1"): Xxxxxx shall pay Texon a royalty equal to 2.5% of
the Net Selling Price on the first $500,000 USD in cumulative Category 1
Protected Product sales. Once cumulative sales of Category 1 Protected Products
exceed $500,000, Xxxxxx shall pay a royalty of 1% of the Net Selling Price of
Category 1 Protected Products; (b) for Protected Products with a total weight in
excess of 300 gsm ("Category 2"), Xxxxxx shall pay Texon a royalty equal to 5%
of the Net Selling Price on the first $500,000 USD in cumulative Category 2
Protected Product sales. Once cumulative sales of Category 2 Protected Products
exceed $500,000, Xxxxxx shall pay a royalty of 1.5% of the Net Selling Price of
Category 2 Protected Products.
Payments of monies owed under these Articles 3.1(a) and 3.1(b) shall be made
within 45 days following the close of each calendar year. If for any reason any
payments owing to Texon are not paid when due, then interest shall begin
accruing on the due date and shall be payable on the unpaid balance at a rate of
0.5% per month. All payments owing under these Articles 3.1(a) and 3.1(b) shall
be made by wire-transfer to:
Account no. Texon UK - USDA
Royal Bank of Scotland plc
Corporate Banking Xxxxxx
X.X. Xxx 000
0-00 Xxxxx Xxxxx Xxxxxx
Xxxxxx XX0X 0XX
Sortcode: 16-04-00
Swift: XXXXXX0X
3.2 MINIMUM CUMULATIVE ROYALTIES. Notwithstanding anything herein to the
contrary, if Xxxxxx'x royalty payments pursuant to Articles 3.1(a) and 3.1(b)
herein do not total, in sum, at least $25,000 by December 31, 2004, then the
difference between $25,000 and the amount actually paid to Texon shall be paid
to Texon by Xxxxxx in cash or an alternative form of
compensation acceptable to Texon. This guarantee is regardless of whether or not
Valid Claims exist at December 31, 2004. Any payments due pursuant to this
Article 3.2 shall be paid before February 15, 2005. If for any reason any
payments owing to Texon are not paid when due, then interest shall begin
accruing on the due date and shall be payable on the unpaid balance at a rate of
0.5% per month. All payments owing under this Article 3.2 shall be made by
wire-transfer to:
Account no. Texon UK - USDA
Royal Bank of Scotland plc
Corporate Banking Xxxxxx
X.X. Xxx 000
0-00 Xxxxx Xxxxx Xxxxxx
Xxxxxx XX0X 0XX
Sortcode: 16-04-00
Swift: XXXXXX0X
3.3 EFFECT OF VALID CLAIM. The patent use royalties as set forth in Articles
3.1(a) and 3.1(b) shall apply throughout the Term so long as there is at least
one Valid Claim covering the Protected Product in question. Neither Xxxxxx nor
its Affiliates will challenge the validity or enforceability of the Assigned
Patents following execution of this Agreement.
ARTICLE 4
RECORD KEEPING AND REPORTING
4.2 RECORDS. Xxxxxx shall keep, at its principal place of business, complete and
accurate records and books of account showing quantities of each Protected
Product sold or otherwise disposed of by that Party and its respective
Affiliates, the Net Selling Price of each such Protected Product. Xxxxxx shall
also keep, at its principal place of business, sufficient information to enable
Texon to determine whether any product sold by Xxxxxx or its Affiliates is a
Protected Product.
4.3 ANNUAL REPORTS. Starting with the year 2001, and not later than 45 days
after the close of each calendar year thereafter, Xxxxxx shall render written
reports to Texon, signed by a duly authorized officer and certified by such
officer as accurate, to the best of his or her knowledge,
for each quarter in the preceding year of the following: (i) the quantity of
each Protected Product sold or otherwise disposed of by Xxxxxx and its
respective Affiliates, (ii) the Net Selling Price of each Protected Product sold
or otherwise disposed of by Xxxxxx and its respective Affiliates, and (iii) the
calculation of the royalties owed to Texon under Article 3.1 of this Agreement.
4.4 INSPECTION. All records of Xxxxxx pertaining to this Agreement, including
those identified in Article 4.1, shall be available for annual inspection by
Texon. Such inspections shall be conducted during normal business hours at
Xxxxxx'x primary place of business upon reasonable advance notice and not more
than once per calendar year.
4.5 DISCREPANCIES. If, in any given year of this Agreement, Texon discovers a
discrepancy between the royalties calculated and paid by Xxxxxx and the
royalties Texon determines are owed based on Texon's inspection of Xxxxxx'x
records, Texon shall promptly provide written notice of the discrepancy (the
"Discrepancy Notice") to Xxxxxx. Xxxxxx shall then have thirty (30) days from
the date of such Discrepancy Notice to dispute Texon's calculations. If, at the
end of such thirty (30) day period, Texon has received no written notice from
Xxxxxx disputing the discrepancy, or Xxxxxx has confirmed the discrepancy, the
amount of the discrepancy shall then become due as a payment from Xxxxxx to
Texon. If the amount of the discrepancy is greater than $25,000 USD, Xxxxxx
shall pay, in addition to the amount of the discrepancy, the costs of Texon's
inspection that year. Any payment made under this Article 4.4 shall be paid to
Texon by Xxxxxx in cash or an alternative form of compensation acceptable to
Texon, and shall be paid within sixty (60) days from date of the Discrepancy
Notice. If for any reason any payments owing to Texon are not paid when due,
interest shall begin accruing on the due date and shall be payable on the unpaid
balance at a rate of 0.5% per month. All payments owing under this Article 4.4
shall be made by wire-transfer to
Account no. Texon UK - USDA
Royal Bank of Scotland plc
Corporate Banking Office
X.X. Xxx 000
0-00 Xxxxx Xxxxx Xxxxxx
Xxxxxx XX0X 0XX
Sortcode: 16-04-00
Swift: XXXXXX0X
ARTICLE 5
PATENT PROSECUTION AND MAINTENANCE
5.1 PATENT PROSECUTION. Xxxxxx shall assume the prosecution of the Assigned
Patents, including all costs, expenses, filing fees and attorney's fees
associated therewith, including the costs associated with the proper recording
of this assignment with the United States Patent and Trademark Office (USPTO).
Xxxxxx shall control, in its sole discretion, all aspects of such prosecution,
including without limitation any decision to continue or abandon any such
prosecution. Texon shall bear no costs related to any such prosecution, but
Texon shall cooperate in any such prosecution and shall provide such information
and assistance as is reasonable.
5.2 MAINTENANCE. Xxxxxx shall assume responsibility for the maintenance of the
Assigned Patents, including payment of all maintenance fees. Xxxxxx shall
control, in its sole discretion, all aspects of such maintenance, including
without limitation any decision to continue or abandon any such maintenance.
5.3 SUITS IN DEFENSE OF ASSIGNED PROPERTY. Each Party shall notify the other
Party in writing not more than thirty (30) days after learning of any claim by a
third party with respect to the validity or enforceability of the Assigned
Patents, or that the Assigned Property infringes the rights of any third party.
Xxxxxx shall have the right in its sole discretion to defend any legal
proceedings brought by a third party which affects in any way the validity or
enforceability of
the Assigned Patents, except that Xxxxxx shall have the obligation to defend any
legal proceedings brought by a third party against Texon that relates in any way
to such claims. Patent use royalties owed to Texon pursuant to paragraph 3.1 of
this Agreement will not accrue for the time period that such a proceeding is
active; however, such proceedings will have no affect on Xxxxxx'x requirements
pursuant to paragraph 3.2 of this Agreement. Texon shall not be responsible in
any way for defending any such third party claims. Xxxxxx shall control, in its
sole discretion, all aspects of any such proceedings, including without
limitation any decision to continue, settle or abandon any such proceedings.
Xxxxxx shall be responsible for all costs related to bringing any such
proceedings. Texon shall provide information and assistance to Xxxxxx in
defending against any challenge to the validity and enforceability of the
Assigned Patents
ARTICLE 6
FUTURE DISCOVERIES AND INVENTIONS
6.1 TOTALITY OF INTEREST. Texon represents and warrants that, as of the
Effective Date, it has no right, title or interest whatsoever in, and has not
previously transferred any right, title or interest whatsoever in: (i) any
United States and/or foreign patents or patent applications relating to the use
of phase change materials in Nonwoven Materials for temperature regulation,
including without limitation any continuation, continuation-in-part or
divisional patent applications or any reexamination or reissue patents or any
extensions thereof, other than the Assigned Patents, or (ii) any Existing
Technology.
6.2 FUTURE IMPROVEMENTS. Texon shall notify Xxxxxx in writing, as soon as
practicable, of any Future Improvements. Each such notice shall include a
complete description of the Future Improvement. To the extent that under
applicable law, the transfer by Texon of any Future Improvement pursuant to this
Agreement is invalid or unenforceable, or to the extent that Xxxxxx agrees that
such transfer should not be made, Texon hereby grants to Xxxxxx a worldwide,
exclusive, perpetual license to use such Future Improvements to make, have made,
use and sell products, including the exclusive right to grant sub-licenses to
third parties.
6.3 PROSECUTION OF PATENT APPLICATIONS. Xxxxxx shall have the right in its sole
discretion to determine whether or not patent protection is to be sought for any
Existing Technology or Future Improvement. Xxxxxx shall control, in their sole
discretion, all aspects of any such prosecution, including without limitation
any decision to continue or abandon any such prosecution. Xxxxxx shall pay all
costs related to any such prosecution. Texon shall cooperate in any such
prosecution and shall provide such information and assistance as is reasonably
available. If Xxxxxx elects not to seek patent protection for any Future
Improvement, it shall notify Texon of such decision in writing within sixty (60)
days after Texon has notified Xxxxxx of the Future Improvement, in which event
Texon shall have the right, at its sole discretion and expense, to file a patent
application on such Future Improvement. If Xxxxxx decides to abandon the
prosecution of a patent application on any Future Improvement, they shall notify
Texon of such decision in writing at least thirty (30) days before such
abandonment, in which event Texon shall have the right, at its sole discretion
and expense, to continue or abandon such prosecution. Any such prosecution of
Future Improvements by Texon shall have no effect upon ownership of the Assigned
Property under this Agreement.
ARTICLE 7
DEFAULTS AND TERMINATION
7.1 DEFAULT BY XXXXXX UNDER ARTICLES 3.1 OR 3.2. Texon shall have the sole right
to terminate this Agreement by written notice to Xxxxxx if Xxxxxx has failed to
make all payments required pursuant to Articles 3.1(a), 3.1(b), and 3.2,
provided: (i) Texon gives Xxxxxx written notice describing such default and
specifying the amount then due pursuant to those Articles, and (ii) Xxxxxx fails
to cure the default within sixty (60) days after such notice has been given and
for
no other reason. Xxxxxx shall be entitled to cure the default by paying the
amount then due pursuant to those Articles.
7.2 EFFECT OF TERMINATION. Upon termination of Xxxxxx'x rights pursuant to
Article 7.1: (i) Texon shall be granted a royalty-free, fully-paid up,
non-exclusive license to make, sell, and use Protected Products; (ii) Xxxxxx
shall immediately cease to enjoy any rights with respect to Protected Products,
and (iii) any licenses granted by Xxxxxx or its Affiliates for the production,
marketing or sale of Protected Products shall immediately terminate. Xxxxxx and
its Affiliates and their respective sublicensees shall have six (6) months to
use or dispose of their then-existing Protected Products in accordance with the
terms of this Agreement, which disposition shall be reported to Texon in
accordance with Article 4, accompanied by remittance in full of royalties under
Article 3.1.
7.3 RETENTION OF RIGHTS. Article 7.2 describes the only circumstances under
which Texon shall be entitled to terminate the rights of Xxxxxx under this
Agreement. In the case of any other default by Xxxxxx under this Agreement,
Texon shall retain the right to pursue any rights and remedies available under
this Agreement or by operation of law other than termination of this Agreement.
ARTICLE 8
ADDITIONAL REPRESENTATIONS AND WARRANTIES
8.1 DISCLAIMER OF REPRESENTATIONS AND WARRANTIES. Xxxxxx acknowledges and agrees
that except as explicitly set forth herein, Texon makes no representations or
warranties of any kind or nature, either express or implied, concerning the
Assigned Property. In particular, nothing contained in this Agreement shall be
construed as (i) a warranty or representation by Texon as to the validity, scope
or enforceability or noninfringement of any Assigned Patents or (ii) the
patentability of any claim in any Assigned Patent. Texon disclaims all liability
and
responsibility for any damages, including property damage, personal injury, and
consequential damages, whether or not foreseeable that may result from the
manufacture use, lease or sale of products incorporating the inventions
disclosed or claimed in the Assigned Property.
8.2 EXECUTION AND AUTHORITY. Each of the Parties, solely with respect to herself
or itself, represents and warrants that (i) this Agreement has been duly
executed and delivered by such Party and constitutes the legal, valid and
binding obligation of such Party, enforceable against such Party in accordance
with its terms, and (ii) execution, delivery and performance by such Party of
this Agreement have been duly authorized by all requisite corporate and
individual action, as the case may be, of such Party and, to the best of their
knowledge, will not violate any provision of law, any order of any court or
other agency of government, any of such Party's organizational documents, if
any, or any provision of any agreement or instrument to which such Party is
bound, or conflict, result in a breach of, or constitute (with due notice or
lapse of time or both) a default under any such agreement or instrument.
8.3 ASSIGNED PATENTS. Texon represents and warrants that (i) it has the right to
make the transfers and grant the rights herein granted free and clear of any
lien, encumbrance, restriction or, to its knowledge, any adverse claim; (ii) it
has not granted to any other person or entity any right or license with respect
to the Assigned Patents, (iii) neither it nor, to the best of its knowledge, any
entity under its direction or control, publicly used or sold any product
embodying the claims of the Assigned Patents or disclosed any claims of the
Assigned Patents in a printed publication, in each case more than one year
before the application filing date of the applicable Assigned Patent; and (iv)
to its knowledge, there are no claims or proceedings with respect to the title,
invalidity, unenforceability or infringement of the Assigned Patents.
ARTICLE 9
CONFIDENTIALITY
9.1 NON-USE OF PROPRIETARY INFORMATION. Each Party shall use its best efforts to
maintain confidential the Proprietary Information of other Parties and shall not
make use thereof, in whole or in part, except for the express purposes
authorized in this Agreement. Except as specifically provided in this Agreement,
each of the Parties shall not communicate any portion of the Proprietary
Information of any other Party to any third party. Exceptions. No Party shall be
obligated or required to maintain in confidence any Proprietary Information of
another Party which it can demonstrate with written records: (i) is in the
public domain or known to the receiving Party prior to disclosure by the
disclosing Party; (ii) becomes known to the receiving Party from a source other
than the disclosing Party without breach of any obligation or confidence; (iii)
is or has been furnished to the disclosing Party by a third party without
restriction on the disclosing Party's right to disclose; (iv) is reasonably
necessary to be disclosed in performance of this Agreement; (v) is required to
be disclosed by law or the rules of NASDAQ or any national stock exchange
applicable to a Party; or (vi) is compelled to be disclosed by a court of law of
competent jurisdiction, provided, however, that the receiving Party shall notify
the disclosing Party in writing at least 10 days prior to any such disclosure.
9.3 RELEASE OF INFORMATION. Xxxxxx shall be the only party with the right to
publicly release information relating to this Agreement, including but not
limited to the description of the products covered by the Agreement and the
financial terms contained herein. In the event Xxxxxx makes public disclosure of
the execution of this Agreement, such announcement shall then be submitted to
Texon in advance of publication for review and approval. Texon shall forward any
media inquiries concerning this Agreement directly to Xxxxxx. Subsequent press
releases that pertain to Category 2 Protected Products shall properly credit
Texon as the "co-inventor" or "co-
developer" of such products, and Xxxxxx shall provide Texon with a courtesy copy
of such press releases. In addition, Xxxxxx may make any disclosure related to
this Agreement in its financial statements and regulatory filings that it deems
prudent without notice of any kind to Texon.
ARTICLE 10
MISCELLANEOUS PROVISIONS
10.1 STATUS OF PARTIES. Nothing contained in this Agreement shall be deemed or
construed as creating a joint venture or partnership between the Parties. None
of the Parties shall have the power to control the activities and operations of
another and their status is, and at all times will continue to be, that of
independent contractors with respect to each other. None of the Parties shall
hold itself out as having any authority or relationship in contravention of this
Article 10.1, and no Party shall act on behalf of the other Party or enter into
any contracts, warranty, or representation as to any other matter on the behalf
of the other Party.
10.2 EFFECT OF WAIVER. No waiver whether express or implied, of any breach of
any term, condition or obligation of this Agreement shall be construed as a
waiver of any subsequent breach of that same term, condition or obligation, or
any other term, condition or obligation of this Agreement of the same or
different nature.
10.3 NOTICES. All notices or other communications which are required to be given
or may be given to the Parties pursuant to the terms of this Agreement shall be
given in writing and delivered personally or by registered or certified mail,
postage prepaid. Notice shall be deemed given on the date of delivery in the
case of personal delivery or on the delivery date as specified in the return
receipt in the case of registered or certified mail. Notices to be given to
Texon shall be addressed to Texon at the address first set forth above, with a
copy to Peabody & Xxxxxx LLP, 00 Xxxxx Xxxxx, Xxxxxx, Xxxxxxxxxxxxx, 00000,
Attn: Xxxxxx Xxxxxxx. Copies need not be sent in the case of communication to
Texon that consist of royalty payments and reports made by
Xxxxxx in the ordinary course. Notices to be given to Xxxxxx shall be addressed
to Xxxxxx at the address first set forth above, with a copy to Womble, Carlyle,
Xxxxxxxxx & Rice LLC, 000 Xxxx Xxxxxx Xxxxxx, Post Office Drawer 84,
Winston-Salem, NC, Attn: Xxxxx Xxxx. Either Party hereto may at any time, by
thirty (30) days written notice to the others, designate any other person or
address in place of those provided in this Article 10.3.
10.4 SEVERABILITY. The Parties acknowledge and agree that, should any provision
of this Agreement be determined to violate or contravene any law, such provision
shall be severed or modified to the extent necessary to comply with the
applicable law, and such modified provision and the remainder of the provisions
hereof shall continue in full force and effect.
10.5 SUCCESSORS AND ASSIGNS. None of the Parties may assign her or its rights,
duties or obligations under this Agreement without written consent from the
other Parties, which consent shall not be unreasonably withheld; provided,
however, that (i) Xxxxxx shall be entitled to assign this Agreement to any
parent or wholly-owned subsidiary of Xxxxxx or in connection with a merger,
consolidation, or sale of all or substantially all of Xxxxxx'x assets or equity
interests and (ii) Texon shall be entitled to assign its rights, but not its
obligations, under this Agreement upon not less than 30 days prior written
notice to Xxxxxx. Any purported assignment in violation of this Agreement shall
be null and void.
10.6 FURTHER ASSURANCES. Each Party agrees to cooperate fully with the other
Parties and to execute such further instruments, documents and agreements and to
give such further written assurances, as may be reasonably requested by the
others to better evidence and reflect the transactions described herein and
contemplated hereby, and to carry into effect the intents and purposes of this
Agreement.
10.7 MODIFICATION. Except as specifically provided otherwise herein, this
Agreement shall only be modified by written agreement of each of the Parties.
10.8 INJUNCTIVE RELIEF. The Parties acknowledge that the Assigned Property
possesses a special, unique, and extraordinary character that makes difficult
the assessment of the monetary damage which would be sustained as a result of a
breach of this Agreement, and that irreparable injury would be caused to the
non-breaching Parties by such breach. Accordingly, each of the Parties shall
have the right to seek and obtain immediate and permanent injunctive and other
equitable relief, without the necessity of posting a bond, cash or otherwise. In
the event of a breach of this Agreement, in addition to any and all rights or
remedies otherwise available at law or in equity.
10.9 HEADINGS AND CAPTIONS. The headings or captions in this Agreement are
inserted for convenience and identification only and are in no way intended to
describe, interpret, define or limit the scope, extent or intent of this
Agreement or any provisions hereof.
10.10 ENTIRE AGREEMENT. The Parties agree that this Agreement contains the
entire understanding and Agreement between the Parties and supersedes all
previous communications, proposals, representations, and agreements, whether
oral or written, excepting the duly signed Confidentiality Agreement With
Specified Objective between the Parties dated May 8th, 2000. This Agreement is
binding upon the Parties and no Party shall challenge its validity. This
Agreement shall not be construed against the drafting Party solely because of
the submission of the Agreement to another Party. Each Party has had an
opportunity to consult with its own legal counsel and has not relied upon
representations or warranties of the other Parties except as set forth in this
Agreement.
10.11 COUNTERPARTS. This Agreement may be executed in one or more counterparts,
each of which shall be deemed an original but all of which shall constitute one
and the same instrument.
10.12 CHOICE OF LAW AND JURISDICTION. This Agreement shall be governed by, and
construed and enforced in accordance with the laws of the United States of
America, State of North Carolina, without regard to the conflicts of laws
principles of such State, except as to the patentability, validity,
enforceability, scope or infringement of patents and patent applications, which
shall be governed by the law of the granting jurisdiction. Any suit commenced by
either Party to enforce any provision of this Agreement, or arising out of or
based upon this Agreement, shall only be brought in the United States District
Court for the District of North of Carolina or the Court in and for the County
of Forsyth, North Carolina. Each Party hereby agrees that such courts shall have
in personam jurisdiction and venue with respect to such party, and each party
hereby submits to the in personam jurisdiction and venue of such courts.
10.13 SURVIVAL. Except as otherwise provided herein, the provisions of this
Agreement that by their sense and context are intended to survive performance by
the Parties shall also survive the expiration or termination of this Agreement.
IN WITNESS WHEREOF, the undersigned have caused this Agreement to be
duly executed as of the Effective Date. TEXON UK LIMITED
BY: /s/ Xxxxx Xxxxxxx Selkirk
---------------------------------------------
NAME:
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(Print) Xxxxx Xxxxxxx Selkirk
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TITLE: Director
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DATE: November 23, 2001
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XXXXXX TECHNOLOGIES, INC.
BY: /s/ Xxxxxxx X. Xxxxxx
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NAME:
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(Print) Xxxxxxx X. Xxxxxx
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TITLE: Chairman & CEO
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DATE: November 23, 2001
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