EXHIBIT 10.1
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED BY TERAFORCE TECHNOLOGY CORPORATION
FOR CERTAIN PORTIONS OF THIS DOCUMENT. CONFIDENTIAL PORTIONS HAVE BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. OMITTED PORTIONS ARE
INDICATED IN THIS AGREEMENT WITH "***".
TECHNOLOGY LICENSE AND MARKETING AGREEMENT
THIS TECHNOLOGY LICENSE AND MARKETING AGREEMENT (this "License
Agreement") is made and entered into as of November 13, 2003 (the "Effective
Date") by and between VISTA CONTROLS, INC., a California corporation, with
offices at 00000 Xxxxxx Xxxx, Xxxxx Xxxxxxx, XX 00000 ("VISTA"), and DNA
COMPUTING SOLUTIONS, INC., a Delaware corporation with offices at 0000 Xxxx
Xxxxxxxx Xxxx, Xxxxxxxxxx, Xxxxx 00000 ("DNA").
RECITALS
WHEREAS, DNA is the owner or licensee of certain digital signal
processing technologies for use in connection with commercial digital signal
processing applications for radar, sonar, software radio, electronic warfare,
and signal intelligence, including the VQG4 and EAGLE I platforms and Wingspan
technologies;
WHEREAS, VISTA has developed certain proprietary methods, designs and
processes related to the ruggedization, fortification and reinforcement of
circuit card assemblies so as to enable them to withstand various types of
adverse conditions, including, by way of example, adverse instability or
temperature conditions;
WHEREAS, DNA desires to grant to VISTA and VISTA desires to obtain from
DNA a license to use and combine certain DNA digital signal processing
technologies with VISTA's proprietary methods, designs and processes for the
purpose of developing, manufacturing and selling certain types of ruggedized
circuit card assemblies upon the terms and conditions set forth herein;
WHEREAS, VISTA and DNA desire to jointly market and promote such VISTA
ruggedized circuit card assemblies utilizing the licensed DNA technologies upon
the terms and conditions set forth herein;
WHEREAS, as of even date herewith, VISTA and DNA are entering into a
Technology Transfer and Support Agreement (the "Transfer Agreement"), a copy of
which is attached hereto as Exhibit B, pursuant to which DNA agrees to transfer
the licensed DNA technologies to VISTA and agrees to perform certain consulting,
engineering support and technical assistance to VISTA related to the licensed
DNA technologies on the terms and conditions set forth therein; and
WHEREAS, as of even date herewith, VISTA and DNA are entering into a
Distribution Agreement (the "Distribution Agreement"), a copy of which is
attached hereto as Exhibit C, pursuant to which VISTA agrees to develop and sell
to DNA, on an non-exclusive basis, and DNA agrees to procure from VISTA, certain
ruggedized circuit card assemblies utilizing the DNA technologies on the terms
and conditions set forth therein.
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AGREEMENT
NOW, THEREFORE, for and in consideration of the foregoing and of the
mutual promises, covenants, conditions, and undertakings hereinafter set forth,
the sufficiency of which is hereby acknowledged, and for other good and valuable
consideration, it is agreed by and between the parties as follows:
ARTICLE 1
DEFINITIONS
Capitalized terms used herein shall have the meanings set forth in
Exhibit A.
ARTICLE 2
LICENSE RIGHTS; TRANSFER OF THE LICENSED TECHNOLOGY
2.1 License Grant. DNA hereby grants the Licensee Group a
worldwide, perpetual and irrevocable (except to the extent terminated by DNA
pursuant to Section 7.2(d)), transferable, fully paid up right and license (with
right to sublicense) to make, have made, develop, use, import, offer to sell,
sell, import, copy, reproduce, distribute, transfer, license, vend, compile,
modify, translate, adapt, perform, prepare derivatives based on, publicly
display and exploit the Licensed Technology in the Field of Use as part of the
Combined Technology (the "License"). The License granted in the immediately
preceding sentence shall be exclusive in the Field of Use (the "Exclusive
License") for a period of *** following the Effective Date (the "Exclusive
Period"). Unless otherwise agreed in writing by the parties, the License
includes all third party software and materials to the extent necessary for
VISTA to use the Licensed Technology as contemplated by this Agreement, and DNA
agrees to procure for and pass through to VISTA on VISTA's behalf all such
rights and licenses from all such third parties necessary to grant the License.
2.2 Exclusion of DNA; Grant of Limited Sublicense to DNA. Except
as otherwise expressly set forth in Section 6.2(c) of this License Agreement,
the grant of the Exclusive License set forth in Section 2.1 is to the exclusion
of DNA and its Affiliates, successors and assigns and all third Persons taking
by or through DNA except the Licensee Group; provided, however, that, subject to
the terms and conditions of this License Agreement, the Transfer Agreement and
Distribution Agreement (individually and/or collectively, the "Agreements"),
VISTA hereby grants to DNA a limited, revocable, non-exclusive,
non-transferable, fully paid up license (without right to sublicense) to the
Combined Technology, and a limited, non-exclusive, non-transferable, fully paid
up sublicense (without right to further sublicense) to the Licensed Technology
included in the Combined Technology, within the Field of Use solely as may be
necessary to perform its marketing, support, transfer and distribution
obligations in connection with the Products in accordance with the terms,
conditions and restrictions of the Agreements, and for no other purpose.
2.3 License to Use Marks.
(a) DNA grants VISTA a limited, non-exclusive,
non-transferable (except as set forth in Section 11.3), fully paid up license
(without right to sublicense) to use the Licensed Marks solely in connection
with the advertising, promotion, sale, offer for sale and distribution of the
Products and exploitation of the Combined Technology in the Field of Use. VISTA
acknowledges and agrees that all use of such Licensed Marks shall be subject to
DNA's prior written approval and any goodwill arising therefrom shall inure to
the benefit of DNA. VISTA shall at all times comply with DNA's trademark and
usage policies, guides and procedures, including any updates thereto, which
shall be provided to VISTA in writing from time to time. DNA may from time to
time discontinue or modify the Licensed Marks or add
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*** CONFIDENTIAL TREATMENT HAS BEEN REQUESTED BY TERAFORCE TECHNOLOGY
CORPORATION FOR CERTAIN PORTIONS OF THIS DOCUMENT. CONFIDENTIAL PORTIONS HAVE
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
2
new Licensed Marks, and in such cases, VISTA shall adopt the modified or new
Licensed Marks as directed by DNA.
(b) Subject to the terms and conditions of this License
Agreement, VISTA grants DNA a limited, revocable, non-exclusive,
non-transferable, fully paid up license (without right to sublicense) to use the
VISTA Marks solely in connection with the advertising, promotion, sale, offer
for sale and distribution of the Products and the transfer of the Licensed
Technology, as provided for under the terms of the Agreements. DNA acknowledges
and agrees that all use of such VISTA Marks shall be subject to VISTA's prior
written approval and any goodwill arising therefrom shall inure to the benefit
of VISTA. DNA shall at all times comply with VISTA's trademark and usage
policies, guides and procedures, including any updates thereto, which shall be
provided to DNA in writing from time to time. DNA shall obtain VISTA's prior
written approval prior to any use of the VISTA Marks that has not been expressly
approved in writing by VISTA. VISTA may from time to time discontinue or modify
the VISTA Marks or add new VISTA Marks, and in such cases, DNA shall adopt the
modified or new VISTA Marks as directed by VISTA.
2.4 Survival of License Upon Bankruptcy. All rights and licenses
granted under or pursuant to this License Agreement by DNA to the Licensee Group
are, and shall otherwise be deemed to be, for purposes of Section 365(n) of the
United States Bankruptcy Code (as now constituted or hereafter amended, the
"Code"), licenses to rights to "intellectual property" as defined under the
Code. The parties hereto agree that the Licensee Group, as licensee of such
rights under this License Agreement, shall retain and may fully exercise all of
its rights and elections under the Code. The parties hereto further agree that,
in the event of the commencement of bankruptcy proceedings by or against DNA
under the Code, the Licensee Group shall be entitled to retain all of its rights
and licenses under this License Agreement.
2.5 Transfer of the Licensed Technology. DNA agrees to transfer
the Licensed Technology and all know-how, information and materials relating
thereto to VISTA, and agrees to provide the certain consulting, engineering
support and technical assistance to VISTA related to the Licensed Technology, in
accordance with the terms and conditions of the Transfer Agreement.
ARTICLE 3
MARKETING, DISTRIBUTION AND SUPPORT EFFORTS
3.1 Marketing Obligations. Subject to the terms and conditions of
this License Agreement, each party agrees to use commercially reasonable efforts
and proceed earnestly and diligently to jointly advertise, market, promote,
display, perform the Combined Technology and Products and otherwise exploit
every opportunity available to commercialize the Products. Each party shall be
entitled to market, advertise and promote the Products in the manner it deems
most advantageous for the commercialization thereof, provided, however that all
such efforts by DNA shall be subject to VISTA's prior written approval, which
approval shall not be unreasonably withheld, conditioned or delayed. The
Products and Combined Technology shall at all times be marketed and promoted
under such VISTA Marks, as VISTA shall require, and, in addition, to the extent
and in the manner mutually agreed between the parties, under the DNA Marks.
Subject to the foregoing, DNA agrees to cooperate with VISTA in connection with,
and participate in, any and all marketing programs, initiatives and plans
undertaken by VISTA, including without limitation, meeting with potential
Customers of the Products in an effort to promote the Products for sale to such
potential Customers. DNA agrees not to promote, advertise, market, demonstrate
or otherwise offer for sale the Products to any potential or prospective
Customers without notifying VISTA reasonably in advance thereof, complying with
its obligations under this Section 3.5 below and allowing VISTA to fully
participate in such promotion, advertising, marketing, demonstration or offer
for sale of the Products to such potential Customer. The parties acknowledge
that it is their intention to collaborate in the formulation of a mutually
acceptable annual marketing plan ("Marketing Plan") which will, among other
things, define specific objectives, markets and customers for which each party
will have primary marketing and sales responsibility for the Products,
consistent with the terms and conditions set forth in this Article 3. To the
extent such Marketing Plan deviates from the Agreements, the Marketing Plan
shall control; provided, however, in the absence of any such Marketing Plan, the
Agreements shall apply in all respects.
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3.2 Marketing Materials. Unless otherwise agreed pursuant to a
Marketing Plan or otherwise in writing, VISTA shall be responsible for the
design and creation of all advertising and promotional materials, sales
literature, press releases or other items used in connection with promoting,
advertising, marketing, demonstrating, offering for sale and/or selling the
Products (the "Promotional Materials"), and the preparation of all copies of the
Promotional Materials. DNA shall, at its expense and at VISTA's request,
cooperate with VISTA in preparing such advertising and promotional materials
related to the Licensed Technology. DNA shall not use any Promotional Materials
or any other materials which have not been provided or approved in writing by
VISTA, and shall not use, fail to use or modify any such materials in a manner
which has not been expressly authorized in writing by VISTA. DNA shall not
propose terms or claims to potential customers of the Products with respect to
the Products which have not been previously approved in writing by DNA, and
shall not modify any of the Promotional Materials or Documentation in any manner
without VISTA's prior written consent.
3.3 Distribution. DNA shall offer for sale, promote, sell and
distribute the Products in accordance with the terms and conditions set forth in
the Distribution Agreement.
3.4 Support. DNA shall be responsible for providing Customers and
end users of the Products with all reasonable technical and operational support,
maintenance and assistance regarding the features, uses and functionalities of
the Products relating to the Licensed Technology. VISTA shall be responsible for
providing end users of the Products with all reasonable technical and
operational support, maintenance and assistance regarding the features, uses and
functionalities of the Products related to the VISTA Technology and Combined
Technology (other than the Licensed Technology). The terms and conditions of the
support and maintenance obligations with respect to the Products shall be as set
forth in the Distribution Agreement or as otherwise mutually agreed by VISTA and
DNA from time to time.
3.5 Marketing and Customer Reports.
(a) On a monthly basis, DNA shall prepare and deliver to
VISTA a detailed report of all matters and information related to the
promotional, advertising, marketing, demonstration and offering for sale
activities undertaken or contemplated to be undertaken by DNA in the exercise of
its rights and performance of its obligations under this Article 3, which report
shall include, without limitation, the names and all contact information for
potential Customers for the Products, identification of applications and market
opportunities for the Products and the specific marketing initiatives
contemplated or undertaken by DNA and the actual and anticipated results
therefrom. DNA shall make available to VISTA DNA's sales representatives and
other personnel as reasonably requested by VISTA for interviews by VISTA
regarding such marketing reports, all such matters addressed therein and all
other matters related to DNA's exercise of its rights and performance of its
obligations under this Article 3.
(b) Without limiting DNA's obligations under Section
3.5(a) above, together with such monthly reports, or on a more frequent basis as
necessary to comply with its obligations hereunder, DNA shall provide to VISTA a
list of all potential or prospective Customers of the Products identified by DNA
or that have otherwise come to the knowledge of DNA and all information relating
thereto, including without limitation, information regarding the appropriate
contact person with such potential Customer, details regarding any relationship
between DNA and such potential Customer, suggestions regarding the needs of such
potential Customer for the Products and the preferred methods of approaching or
marketing the Products to the potential Customer.
3.6 Compliance. At all times in the performance of its obligations
under this License Agreement, each party agrees to: (a) comply with any
policies, procedures and instructions relating to the marketing and distribution
of the Products as may be mutually established in writing by the parties from
time to time; (b) comply with the highest industry standards and all applicable
international, federal, state and local laws, and rules and regulations
thereunder respecting the performance of its obligations under the Agreements;
(c) secure from the appropriate authorities, at its own cost and expense, all
permits, concessions or other documents required by law for the performance of
its obligations hereunder; (d) avoid deceptive, misleading or unethical
practices; and (e) conduct its business and perform its obligations under
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the Agreements in a manner that reflects favorably at all times on the other
party and its goodwill and reputation.
ARTICLE 4
FEES AND PAYMENT
4.1 License and Transfer Fees. Subject to the terms and
conditions\ of this License Agreement and the Transfer Agreement and in
consideration of the performance by DNA of its obligations in accordance with
this License Agreement and the Transfer Agreement, VISTA shall pay DNA the fees
(the "License and Transfer Fees") identified in the Transfer Agreement in the
manner set forth therein and according to the delivery schedule milestones and
satisfaction of the acceptance criteria set forth therein. The licenses and
rights granted to VISTA herein shall not be affected or contingent upon VISTA's
nonpayment of any fees due under the Transfer Agreement as a result of DNA's
failure to comply with its obligations under the Transfer Agreement.
4.2 Residual Rights Fees.
(a) In addition to all other payments due and owing from
DNA hereunder, DNA shall pay to VISTA a residual rights fee equal to *** percent
(***%) of the Product Premium from DNA's Sales of the Products (the "DNA
Residual Rights Fee").
(i) Except as otherwise agreed herein, the term
"Product Premium" shall roughly approximate the difference between (A) the
retail sales price of the Product sold by DNA and (B) the retail sales price for
DNA's standard, commercially equivalent product, as agreed between the parties.
On an annual basis or as more frequently as the parties may agree, the parties
shall mutually determine, in good faith, the calculation of the Product Premium.
Notwithstanding the foregoing, for the initial twelve-month period of the Term
(and for so long at the parties are unable to agree otherwise) the Product
Premium shall be equal to *** percent (***%) of the retail sales price of the
Product sold by DNA.
(ii) As used herein, the term "Sales" shall mean
the sale or license of rights in the Products by a party, whether sold or
licensed directly by a party or indirectly through such party's third party
sales channels; provided, however, that Sales shall include only direct sales or
licenses to a single Person and shall not include subsequent re-sales or
licenses of the same Products by such Person to any other Person.
(b) In addition to the License and Transfer Fees, subject
to DNA's compliance with its obligations under the Transfer Agreement and during
the Exclusive Period, VISTA shall pay to DNA a residual rights fee equal to ***
percent (***%) of the Profits from the Licensee Group's Sales of the Products;
provided, that at such time as such aggregate residual rights fees reach ***
Dollars ($***), the percentage shall be reduced from *** percent (***%) to ***
percent (***%) of the Licensee Group's Profits from such Sales (the "VISTA
Residual Rights Fee" and together with the DNA Residual Rights Fee, the
"Residual Rights Fees").
(i) As used herein, the term "Profits" shall
mean the Net Selling Price payable to a party in connection with such party's
Sales less the Fully Burdened Cost.
(ii) As used herein, the term "Net Selling Price"
shall mean the gross revenues received by a party for a Sale of the Product less
any taxes, commissions, government or third
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*** CONFIDENTIAL TREATMENT HAS BEEN REQUESTED BY TERAFORCE TECHNOLOGY
CORPORATION FOR CERTAIN PORTIONS OF THIS DOCUMENT. CONFIDENTIAL PORTIONS HAVE
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
5
party fees, freight costs, insurance, brokerage fees or other costs related to
the distribution or Sale of the Product.
(iii) As used herein, the term "Fully Burdened
Cost" shall mean the cost to manufacture and distribute the Products, including
all material, labor, overhead, sales, general and administrative, cost of money,
fee and warranty fee. Subject to Section 5.1 of the Distribution Agreement, on
an annual basis or as more frequently as the parties may agree, the parties
shall as mutually determine the Fully Burdened Cost to be applied to future
Sales at agreed quantity breaks. The parties agree that the labor rates,
overhead rates, and sales, general and administrative rates used in the
calculation of the Fully Burdened Cost shall be the applicable Defense
Contractors Audit Agency (DCAA) approved rates or in the absence of DCAA audited
rates for the applicable time period, the rates shall be those generally used by
VISTA for its government funded contracts during that time period .
4.3 Expenses. Except as otherwise explicitly set forth in this
License Agreement or as otherwise agreed to by the parties in writing, each
party shall bear all of its own expenses incurred in performing its obligations
under this License Agreement. A party will reimburse the other party for
reasonable out-of-pocket costs and expenses required and actually incurred by
such party in performing its obligations hereunder only if the performing party
has (a) obtained the other party's prior written consent to reimburse the
performing party for such expenses, which consent may be given or withheld in
the non-performing party's sole discretion, (b) detailed such expenses on a form
acceptable to the other party, and (c) submitted supporting documentation
reasonably satisfactory to the other party.
4.4 Payment; Reporting. VISTA shall pay the License and Transfer
Fee in accordance with the terms and conditions set forth in the Transfer
Agreement. Each party shall report and make its Residual Rights Fee payments to
the other party on a monthly basis no later than thirty (30) days following the
end of each calendar month during the Term. Any amounts due and not paid
hereunder by their applicable due day shall bear interest at the lesser of the
rate of ten percent (10%) per annum, or highest lawful rate, such interest to
accrue daily and be compounded monthly.
4.5 Books and Records; Audit. Each party shall maintain during the
Term and for three (3) years thereafter, complete and accurate books and records
sufficient to determine the Residual Rights Fee payments due hereunder. In the
event that the other party does not agree with the determination by the paying
party of the Residual Rights Fee payments due hereunder, the parties shall use
their reasonable efforts to reach agreement on the disputed items or amounts. At
the request of the non-paying party, the paying party shall allow a reputable
independent public accounting firm or representatives of the non-paying party,
at the non-paying party's expense, to verify the accuracy of any Residual Rights
Fee calculations. The non-paying party shall give the paying party thirty (30)
days written notice prior to beginning such audit. Such audit shall be
reasonably conducted during regular business hours in a non-disruptive manner,
and the party performing such audit must agree to be bound to a reasonable
non-disclosure agreement. The only information to be reviewed during the course
of such an audit shall be that necessary to verify the Residual Rights Fee due
hereunder. Such audit may review the Licensee Group's Sales, the direct material
and labor costs, and that the applicable DCAA approved rates or equivalent rates
per Section 4.2(b)(iii) were applied to the calculation of the Residual Rights
Fee. The audit shall specifically not review the data that makes up VISTA's
overhead, sales, general or administrative rates. If any such audit discloses
that any Residual Rights Fees were understated, the paying party shall pay the
amount of such understated Residual Rights Fees plus interest as set forth above
and if the audit discloses that the amounts paid hereunder were understated by
more than five percent (5%) in any calendar quarter, the paying party shall
reimburse the nonpaying party for its reasonable and actual costs and expenses
incurred in connection with performing such audit. No more than one audit may be
performed within a one (1) year period, except if the preceding audit discloses
an understated, in which even the nonpaying party shall be entitled perform a
quarterly audit during the successive one year period.
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ARTICLE 5
OWNERSHIP; PATENT RIGHTS AND LITIGATION
5.1 DNA Property. Except as otherwise set forth in Section 5.2 or
5.3 below, VISTA acknowledges and agrees that DNA and its Affiliates and/or
their respective licensors owns exclusively, and throughout the world, all
right, title and interest in and to (a) the Licensed Technology and Licensed
Marks, and all Intellectual Property Rights therein or relating thereto, (b) all
modifications, revisions, changes, copies, partial copies, translations,
compilations, improvements, enhancements, modifications, alterations or
derivative works to the Licensed Technology designed, developed, created,
invented, conceived of or reduced to practice by DNA or its Affiliates or any
other Person acting on their behalf (except to the extent otherwise set forth in
Section 5.2 below), and (c) all Pre-Existing Materials (collectively, the "DNA
Property"). To the extent VISTA assists with or contributes to the creation or
development any portion of the DNA Property, all such portions of the DNA
Property resulting therefrom shall be deemed to be "works made for hire" and
made in the course of services rendered and will belong exclusively to DNA, with
DNA having the right to obtain, and to hold in its name all Intellectual
Property Rights as may be appropriate to the subject matter. To the extent that
exclusive title and/or ownership rights may not originally vest in DNA as
contemplated hereunder in any DNA Property, VISTA hereby agrees to irrevocably
assign, transfer and convey to DNA all right, title and interest therein and all
Intellectual Property Rights relating thereto. VISTA and its personnel shall, at
DNA's expense, give DNA and/or any DNA designee all reasonable assistance and
execute all documents necessary to assist and/or enable DNA to perfect, protect,
preserve, register and/or record its rights in such DNA Property, and all
Intellectual Property Rights therein. VISTA shall, promptly upon request of DNA,
or upon the termination, cancellation or expiration of this License Agreement,
turn over to DNA all DNA Property obtained by VISTA or prepared or developed as
a result of this License Agreement, and any DNA documents or other materials
held by or on behalf of VISTA, together with all copies thereof.
5.2 VISTA Property. DNA acknowledges and agrees that, except as
set forth in Section 5.3 below, VISTA and its Affiliates and/or their respective
licensors own exclusively, and throughout the world, all right, title and
interest in and to (i) the VISTA Technology, Combined Technology, Promotional
Materials, Products and VISTA Marks and all Intellectual Property Rights therein
or relating thereto, (ii) all modifications, revisions, changes, copies, partial
copies, translations, compilations, improvements, enhancements, modifications,
alterations or derivative works to the VISTA Technology, Combined Technology
(except as set forth in subsection (iii) below), Promotional Materials and/or
Products (except as set forth in subsection (iii) below) designed, developed,
created, invented, conceived of or reduced to practice by or on behalf of DNA,
VISTA, their respective Affiliates or any other person acting on their behalf,
and (iii) all modifications, revisions, changes, copies, partial copies,
translations, compilations, improvements, enhancements, modifications,
alterations or derivative works to the Licensed Technology designed, developed,
created, invented, conceived of or reduced to practice (A) by VISTA or its
Affiliates or any other Person acting on their behalf and (B) by DNA or its
Affiliates or any other Person acting on their behalf made or created in
response to or in order to operate or function in conjunction with the VISTA
Technology or Combined Technology (collectively, the "VISTA Property"). To the
extent DNA assists with or contributes to the creation or development any
portion of the VISTA Property, all such portions of the VISTA Property resulting
therefrom shall be deemed to be "works made for hire" and made in the course of
services rendered and will belong exclusively to VISTA, with VISTA having the
right to obtain, and to hold in its name all Intellectual Property Rights as may
be appropriate to the subject matter. To the extent that exclusive title and/or
ownership rights may not originally vest in VISTA as contemplated hereunder in
any VISTA Property, DNA hereby agrees to irrevocably assign, transfer and convey
to VISTA all right, title and interest therein and all Intellectual Property
Rights relating thereto. DNA and its personnel shall, at VISTA's expense, give
VISTA and/or any VISTA designee all reasonable assistance and execute all
documents necessary to assist and/or enable VISTA to perfect, protect, preserve,
register and/or record its rights in such VISTA Property, and all Intellectual
Property Rights therein. DNA shall, promptly upon request of VISTA, or upon the
termination, cancellation or expiration of this License Agreement, turn over to
VISTA all VISTA Property obtained by DNA or prepared or developed as a result of
this License Agreement, and any VISTA documents or other materials held by or on
behalf of DNA, together with all copies thereof.
5.3 Pre-Existing Materials. If the VISTA Property, or the use,
sale, or manufacture thereof, includes or requires the use of any inventions or
materials previously made, developed, or copyrighted by or on behalf of DNA
(including, without limitation, the Licensed Technology), or any third party,
and not originated or developed under the Agreements ("Pre-existing Materials"),
then DNA grants and agrees to
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grant to VISTA and its Affiliates an unrestricted, non-exclusive, worldwide,
non-assignable (except as set forth in Section 11.3), perpetual (except to the
extent terminated by DNA pursuant to Section 7.2(d)), royalty-free license to
make, have made, develop, use, import, offer to sell, sell, import, copy,
reproduce, distribute, transfer, license, vend, compile, modify, translate,
adapt, perform, prepare derivatives based on, publicly display and exploit such
Pre-existing Materials as part of and together with the VISTA Property. The
license so granted to VISTA includes the right to grant to any of VISTA's
Affiliates unrestricted, non-exclusive, non-assignable, perpetual, royalty-free
licenses to use, copy, and modify, the inventions and information, and other
aspects of the Pre-existing Materials, but only to the extent necessary to use,
copy, and modify the VISTA Property originated or developed as a result of the
work performed under or in anticipation of the Agreements.
5.4 Acknowledgement; Prohibited Actions.
(a) DNA shall not use any VISTA Property, materials or
information obtained under the Agreements to the detriment or adverse interest
of VISTA or any licensors and shall use reasonable efforts to prevent the
unauthorized use of any VISTA Property and any limitations thereof. DNA
acknowledges the existence, validity, enforceability, and VISTA's ownership
and/or rights in and to the VISTA Property, and agrees not to contest or oppose
in any fashion the existence, validity, enforceability, or ownership of the
VISTA Property, any portion thereof, or any rights therein or related thereto,
or initiate or participate in any challenge to the scope, enforceability,
validity or ownership of, or any reexamination, reissue or cancellation of any
VISTA Property. DNA further acknowledges that any unauthorized use of the VISTA
Property, or any rights therein or related thereto, by DNA, or its agents or
representatives, will result in irreparable harm to VISTA, and VISTA will be
entitled to injunctive relief from any such unauthorized use by DNA, or its
agents or representatives.
(b) VISTA shall not use any DNA Property, materials or
information obtained under the Agreements to the detriment or adverse interest
of DNA or any licensors and shall use reasonable efforts to prevent the
unauthorized use of any DNA Property and any limitations thereof. VISTA
acknowledges the existence, validity, enforceability, and DNA's ownership and/or
rights in and to the DNA Property and agrees not to contest or oppose in any
fashion the existence, validity, enforceability, or ownership of the DNA
Property, any portion thereof, or any rights therein or related thereto, or
initiate or participate in any challenge to the scope, enforceability, validity
or ownership of, or any reexamination, reissue or cancellation thereof. VISTA
further acknowledges that any unauthorized use of the DNA Property or any rights
therein or related thereto, by VISTA, or its agents or representatives, will
result in irreparable harm to DNA, and DNA will be entitled to injunctive relief
from any such unauthorized use by VISTA, or its agents or representatives.
5.5 Patent Filing, Prosecution and Maintenance. Subject to the
terms and conditions of this Agreement, DNA shall have the primary right and
responsibility to prepare, register, record, file, prosecute and maintain in the
name and for the benefit of DNA (subject to the licenses and rights granted in
this License Agreement) all Licensed Technology (including all Intellectual
Property Rights included therein) using counsel of its choice at its expense.
DNA shall consult with VISTA and keep VISTA informed and apprised of the
preparation, registration, recordation, filing, prosecution and maintenance of
the Licensed Technology and/or any challenges by third Persons to the validity
or enforceability of the Licensed Technology. DNA shall provide or cause its
counsel to promptly provide to VISTA and its counsel timely copies of all files,
papers, notices, actions and correspondence related to the preparation,
registration, recordation, filing, prosecution and maintenance of the Licensed
Technology. DNA shall not permit any action, application or registration with
respect to any of the Licensed Technology to become abandoned without giving
VISTA the opportunity to pursue the prosecution thereof as soon as possible,
which shall not be less than sixty (60) days prior to the date on which the same
would otherwise become abandoned. Notwithstanding the foregoing, in the event
DNA, in VISTA's reasonable discretion, fails to take all such necessary or
appropriate action to prepare, register, record, file, prosecute, maintain or
otherwise protect the Licensed Technology hereunder, VISTA shall be entitled to
(a) undertake, in its own name, any or all such actions and efforts upon notice
to DNA, and/or (b) appoint successor intellectual property counsel, after
consultation with DNA, if the counsel appointed by DNA has failed to diligently
pursue such actions. At no additional expense to VISTA, DNA agrees to cooperate
with VISTA and to cause its employees and former
8
employees to cooperate with VISTA, as VISTA may reasonably request, in the
exercise of VISTA's rights under this Section 5.5, including, without
limitation, (i) meeting with and being interviewed by counsel for VISTA, (ii)
promptly executing all applications, documents, instruments, powers of attorney,
affidavits or writings reasonably requested by VISTA, (iii) promptly informing
VISTA of matters that may affect the preparing, registering, recording, filing,
prosecution, or maintenance of any such Patent Rights (such as becoming aware of
an additional inventor who is not listed as an inventor in a patent
application)and/or (iv) giving truthful testimony as reasonably requested by
VISTA.
5.6 Infringement.
(a) Notice. In the event that either party to this
License Agreement shall learn of the infringement by a third party of any of the
Licensed Technology, VISTA Technology, Combined Technology or Products, that
party shall call the attention thereto of the other party in writing and shall
provide the other party with reasonable evidence of such infringement.
(b) Investigation. Both parties shall use their best
efforts in cooperating with each other to investigate and/or terminate such
infringement without litigation. Upon their determination that infringement of
the Licensed Technology exists, DNA shall have the primary right, but not the
obligation, to formally notify the infringing party that infringement of the
Licensed Technology exists. Unless otherwise agreed between the parties, VISTA
shall have the sole right to investigate, pursue and resolve any infringement or
misappropriation claims relating to the VISTA Technology or Combined Technology,
other than with respect to the Licensed Technology included therein which shall
be subject to Sections 5.6(c) through (f) below. DNA shall have the sole right
to investigate, pursue and resolve any infringement or misappropriation claims
relating to the Licensed Technology, except as it relates solely to the Combined
Technology or Products.
(c) VISTA's Election to Pursue. If the efforts of the
parties are not successful in abating the infringement of the Licensed
Technology within ninety (90) days after the infringer has been formally
notified of infringement by DNA, VISTA shall have the right to (i)(A) to bring
suit in its own name or in DNA's name for infringement of the Licensed
Technology; (B) in any such suit to enjoin infringement and to collect and
retain all damages, profits, and awards of whatever nature recoverable for such
infringement for its own use; and (C) to settle any claim or suit for
infringement of the Licensed Technology by granting the infringing party a
sublicense under the provisions of this License Agreement; or (ii) decline to
initiate or participate actively in any suit, and VISTA shall give notice in
writing to DNA within sixty (60) days after said ninety (90) day period of
VISTA's election. DNA hereby consents to and authorizes VISTA (to the exclusion
of DNA) to assert and enforce against any and all third Persons all legal and/or
equitable rights granted under the Licensed Technology with regard to
infringements or misappropriations of the Licensed Technology on or after the
Effective Date.
(d) DNA's Right to Pursue. In the event VISTA declines to
initiate or participate actively in any suit in accordance with the provisions
of Section 5.6(c), DNA is then empowered: (i) to bring suit in its own name or
if required by law jointly with VISTA for infringement of the Licensed
Technology; (ii) in any such suit to enjoin infringement and to collect and
retain all damages, profits, and awards of whatever nature recoverable for such
infringement for its own use; and (iii) to settle any claim or suit for
infringement of the Licensed Technology by granting the infringing party a
sublicense under the provisions of this License Agreement.
(e) Expenses and Recoveries. Such legal action as is
decided upon shall be at the expense of the party on account of whom suit is
brought. Each party will bear its own expenses in connection to any legal action
brought jointly by DNA and VISTA, and fully participated in by both. Any
recovery, award or judgment obtained in or resulting from any such action shall
be the property of the party on whose behalf the action is brought, or the joint
property of VISTA and DNA if the action is brought jointly.
9
(f) Cooperation and Control. Each party shall cooperate
with the other in litigation proceedings instituted hereunder, including,
without limitation, joining in any action or proceeding if requested by the
party instituting the proceedings, but at the expense of the party on account of
whom suit is brought. Such litigation shall be controlled by the party bringing
the suit.
5.7 Release and Covenant Not to Xxx. DNA hereby releases and
covenants not to xxx the Licensee Group, the respective officers, directors and
agents of each Person of Licensee Group and any Person taking rights under this
License Agreement by, through or under Licensee Group, and their respective
officers, directors and agents, from any claims, liability or obligations, known
or unknown, for or in respect of infringements or misappropriations of the
Licensed Technology and Pre-Existing Materials in the Field of Use or as part of
the Combined Technology, whether occurring on, before or after the Effective
Date. Each party hereby represents and warrants to the other that to the best of
its actual knowledge, without any obligation of inquiry or investigation, VISTA
has not infringed or misappropriated the Licensed Technology or Pre-Existing
Materials, or any Intellectual Property Rights related thereto, in any respect.
5.8 License Notice Matters. VISTA may, from time to time, prepare,
file and/or record at its expense such notices and other documents (such as
memoranda of exclusive license) with such state, province, national and/or
foreign governmental offices and agencies as VISTA reasonably deems necessary or
appropriate to place third Persons on constructive notice of this License
Agreement and the licenses, rights, transactions and matters contemplated herein
and, upon the request of VISTA, DNA agrees to (i) promptly subscribe to,
acknowledge, execute and deliver to VISTA such notices and other documents for
such filings and recordations, and (ii) take such other actions as VISTA may
reasonably request in order to permit, accommodate and facilitate such filings
and recordations.
5.9 Appointment of VISTA as Attorney-In-Fact. DNA agrees that if
DNA is unable because of DNA's unavailability, dissolution or for any other
reason, to secure DNA's signature to apply for or to pursue any application for
any United States of America or foreign patents or copyright registrations or
other filings or submissions covering the Intellectual Property Rights licensed
or assigned to VISTA herein, then DNA hereby irrevocably designates and appoints
VISTA and VISTA's duly authorized officers and agents as DNA's agent and
attorney-in-fact, to act for an in DNA's behalf and stead to execute and file
any such applications, filings or submissions and to do all other lawfully
permitted acts to further the prosecution and issuance of patents, copyright
registrations and other Intellectual Property Rights thereon with the same legal
force and effect as if executed by DNA.
ARTICLE 6
CONFIDENTIALITY AND NON-COMPETITION
6.1 Confidentiality.
(a) Restrictions. Each party's Confidential Information
disclosed by such party to the other party or otherwise obtained by the
receiving party hereunder is acknowledged to have actual or potential economic
value from not being generally known or readily ascertainable and to be the
subject of efforts by the disclosing party to maintain its secrecy. Except as
expressly set forth in the Agreements and except as may be performed by a party
in the exercise of its rights hereunder, the receiving party will not, without
the express written consent of the disclosing party, directly or indirectly, (i)
disclose to any person or entity, or make use of for itself or any other person
or entity, any Confidential Information of the disclosing party during the Term
of this License Agreement and for a period of five (5) years immediately
following expiration of this License Agreement and any extensions thereof (or
with respect to any particular trade secrets included in such Confidential
Information, for so long as such trade secret retains its status as a trade
secret), or (ii) copy, reproduce, create derivative works, divulge, transfer,
distribute, sell, offer for sale, license, lease or otherwise use or disclose
the other party's Confidential Information or reverse engineer, disassemble or
decompile any prototypes, software or other tangible objects that embody the
other party's Confidential Information. The protection afforded to the party's
Confidential Information by this provision is not intended to limit in any way
any protection provided to any such information under any applicable federal,
state or local law.
10
(b) Employees. Each party warrants that any employees,
agents or representatives, who have or may have access to the other party's
Confidential Information have or otherwise agreed to preserve the
confidentiality of the Confidential Information in content substantially similar
to the provisions hereof, prior to any disclosure of the Confidential
Information to such employees.
(c) Ownership. Except as otherwise provided herein, all
documents and other tangible objects containing or representing Confidential
Information of the disclosing party, and all copies thereof which are in the
possession of the receiving party, shall be and remain the property of the
disclosing party and shall be promptly returned to the disclosing party or, if
stored on an electronic media, shall be destroyed or permanently deleted upon
the expiration or termination of this License Agreement.
(d) Remedies. Any use or disclosure of the other party's
Confidential Information for any purpose other than as expressly provided for in
this License Agreement shall be deemed a material breach of this License
Agreement by the breaching party. Each party agrees that any violation or
threatened violation of this Section will cause irreparable injury to the
disclosing party, entitling the disclosing party to injunctive relief in
addition to all legal remedies.
(e) Confidential Information Defined. As used herein, the
term "Confidential Information" means all tangible or intangible information
which a party considers to be confidential information, is the subject of
reasonable efforts to keep it confidential, including, without limitation, the
trade secrets of the disclosing party and all information regarding such party's
products or services, research and development efforts, product manufacture and
installation, product or service cost or pricing, personnel allocation or
organizational structure, development and expansion or contraction plans, and
legal or financial affairs of the disclosing party.
(f) Exclusions. The obligations of confidentiality with
respect to Confidential Information contained in this Section 6.1(a) shall not
apply to information for which the receiving party can substantiate, as
established by documentary evidence: (i) that was known to the receiving party
at the time it was disclosed by the disclosing party to the receiving party;
(ii) that was, or has become, publicly known and made generally available in the
public domain through no wrongful act of the receiving party; (iii) that was or
is rightfully received from a third party without any breach of this License
Agreement or such third party's obligations of confidentiality; (iv) that is
approved for release by prior written authorization of the disclosing party; or
(v) that the receiving party is required by law to disclose pursuant to court
order or other governmental requirement, but only after giving the disclosing
party notice and a reasonable opportunity to seek a protective order.
6.2 Noncompetition.
(a) Restrictions. DNA agrees that, during the Term of
this License Agreement and for a period of five (5) years hereafter, none of DNA
or its Affiliates or any of their respective directors, officers, employees,
agents, representatives or contractors (the "Restricted Persons") shall do, or
cause or permit the doing of, any of the following except to the extent
expressly provided for in this License Agreement:
(i) design, research, development, manufacture,
import, export, market, advertise, promote, display, perform, offer for sale,
sell, license, sublicense, distribute or exploit products or technologies that
are the same or substantially the same as, functionally equivalent to, or in
substantial competition with the Products, Licensed Technology in the Field of
Use, Combined Technology (other than the portion of the Combined Technology
constituting Pre-Existing Materials, and then, only outside the Field of Use and
to the extent it existed prior to the Effective Date) or VISTA Technology or
that are based upon, incorporate or are derivative works of any the foregoing
(collectively, the "Restricted Activities"); or
(ii) own, manage, operate, join, control or
participate in the ownership, management, operation or control of, any business,
whether in corporate, proprietorship or partnership form
11
or otherwise where such business is engaged in the Restricted Activities;
provided, however, that nothing herein shall preclude any Restricted Persons
from holding not more than five percent (5%) of the outstanding shares of any
publicly held company irrespective of its activities.
(b) Acknowledgement. DNA acknowledges and agrees that the
covenants contained in this Section 6.2 are reasonably necessary to protect the
legitimate interests of VISTA, are reasonable with respect to time and
territory, and do not interfere with the interests of VISTA in any unreasonably
manner or the public. DNA further acknowledges and agrees that the description
of the covenants contained in this Section 6.2 are sufficiently accurate and
definite to inform it of the scope of the covenants. The parties hereto
specifically acknowledge and agree that the remedy at law for any breach of the
foregoing will be inadequate and that VISTA, in addition to any other relief
available to it, shall be entitled to temporary and permanent injunctive relief
without the necessity of proving actual damages. In the event that the
provisions of this Section 6.2 should ever be deemed to exceed the limitation
provided by applicable law, then the parties hereto agree that such provisions
shall be reformed to set forth the maximum limitations permitted.
(c) Exceptions. Notwithstanding anything in this Section
6.2 to the contrary, the Restricted Persons may engage in the Restricted
Activities to the extent expressly set forth below:
(i) Rejected Good Faith Orders. In the event
VISTA has actively participated with DNA in pursuing the sale of Products to a
Customer and thereafter fails to accept in all material respects the terms and
conditions of an Order (as defined in the Distribution Agreement) that is
submitted in good faith by DNA and accurately and completely represents the
terms and conditions negotiated between DNA and such potential Customer
regarding such purchase and sale of Products and is approved in writing by VISTA
(the "Rejected Good Faith Order"), then DNA shall have the limited right to
manufacture, or have manufactured, such type and quantity of substitute products
which use, in whole or part, the VISTA Technology or the Combined Technology,
including, without limitation, any Intellectual Property Rights in or related to
the VISTA Technology or Combined Technology (other than the Licensed Technology
incorporated therein) solely for the purpose of completing the sale to such
Customer on the terms and conditions set forth in, or no more favorable that
those terms and conditions set forth in, the Rejected Good Faith Order. In the
event DNA fails to complete the manufacture and sale of such non-infringing
substitute products to the intended Customer within ninety (90) days following
the date on which such Rejected Good Faith Order was first submitted to VISTA
for its approval pursuant to Section 5.2 of the Distribution Agreement, DNA
shall be required to re-offer such Order to VISTA for its approval pursuant to
Section 5.2 of the Distribution Agreement.
(ii) Product Discontinuations. In the event VISTA
expressly discontinues providing any Authorized Product for distribution by DNA
pursuant to the Distribution Agreement which has been in marketed, sold and
distribution by DNA for at least three (3) consecutive months prior thereto
(each, a "Discontinued Product") and DNA desires to continue distributing such
Discontinued Product to its customers to whom DNA previously sold the
Discontinued Products, DNA shall be entitled to manufacture, or have
manufactured, such type and quantity of substitute products which do not use, in
whole or part, the VISTA Technology or the Combined Technology, including,
without limitation, any Intellectual Property Rights in or related to the VISTA
Technology or Combined Technology (other than the Licensed Technology
incorporated therein) solely for the purpose of promoting, advertising,
marketing, selling and distributing such non-infringing substitute products.
(iii) Permitted Products. DNA shall retain the
right to continue marketing, selling and distributing the Permitted Products in
the Field of Use in the same manner and to the same extent DNA marketed, sold
and distributed such Permitted Products immediately prior to the Effective Date,
which manner and extent DNA represents and warrants to be in the ordinary course
of its business and consistent with its past practices. In the event DNA
proposes to develop, market, sell or distribute any Permitted Products alone, or
incorporating or embodying any improvements, enhancements, updates, new
versions, increased functionality or capabilities ("New Products") in the Field
of Use, DNA hereby agrees to offer such New Products and all technology related
thereto to VISTA for inclusion as part of the Licensed Technology under this
License Agreement. DNA shall offer such New Products and related
12
technology to VISTA hereunder on terms and conditions consistent with this
License Agreement, but in any event no less favorable than DNA would be willing
to offer such New Products and related technology to a third party. VISTA shall
have the right to exercise its right of first offer hereunder within thirty (30)
days following such written offer by DNA.
ARTICLE 7
TERM AND TERMINATION
7.1 Term. The term of this License Agreement (the "Term") shall
commence on the Effective Date and shall continue thereafter in perpetuity,
unless sooner terminated as provided herein.
7.2 Termination.
(a) Mutual. Either party may terminate this License
Agreement upon prior written notice to the other party if:
(i) the other party is in material breach of
this License Agreement and, if such breach is curable, does not cure such breach
within thirty (30) days after the non-breaching party provides the breaching
party with written notice and a reasonable description of such breach; provided,
however, that for purposes of this Section 7.2(a), or
(ii) the other party files a petition in
bankruptcy, is adjudicated a bankrupt or files a petition or otherwise seeks
relief under or pursuant to any bankruptcy, insolvency or reorganization statute
or proceeding, or if a petition in bankruptcy is filed against it or it becomes
insolvent or makes an assignment for the benefit of its creditors or a
custodian, receiver or trustee is appointed for all or a substantial portion of
its business or assets, provided such circumstance are not cured within thirty
(30) days of the commencement of the above-stated event. Nothing contained
herein will be deemed to preclude or impair any rights that VISTA may have as a
creditor in any bankruptcy proceeding.
(b) By VISTA. VISTA may immediately terminate this
License Agreement, in whole or part, by written notice to DNA, and may regard
DNA as in default of this License Agreement, (i) if DNA is in default of its
obligations under the Transfer Agreement or the Distribution Agreement(ii) for
the gross negligence, dishonesty, malfeasance, fraud or misconduct of DNA and/or
its affiliates, employees, directors, agents, representatives or contractors, or
(iii) in the event the right of DNA in the Licensed Technology, or any portion
thereof, are for any reason determined to be void and not the sole property of
DNA.
(c) Consultation. Each party hereto agrees to consult in
advance with the other party hereto and to bring to the attention of the other
party any problems, differences of opinion, disagreement or any other matters
which may lead such party to terminate or seek to terminate this License
Agreement. The purpose and intent of the parties in including this provision is
to ensure that both parties to this License Agreement are made aware of any
problems arising out of or relating to this License Agreement or the
relationship of the parties hereunder, so that the parties hereto may, in good
faith, consult with one another concerning such problems and, where possible,
resolve such problems to the parties' mutual satisfaction, thereby preserving
their contractual relationship and the goodwill and mutual respect presently
existing between the parties to this License Agreement.
(d) Perpetual Nature of Agreement. DNA acknowledges and
agrees that the License, and all rights related thereto, granted herein are
perpetual and irrevocable notwithstanding any termination or expiration of any
of the Agreements; provided, however, that DNA shall have the right to terminate
the License and this License Agreement upon termination of the Transfer
Agreement (i) by DNA (under Section 7.2(a) above as incorporated into the
Transfer Agreement by reference pursuant to Section 8 of the Transfer Agreement)
for VISTA's uncured failure to pay the undisputed License and Transfer Fee
thereunder in consideration for DNA's satisfaction of its obligations under the
Transfer Agreement, or (ii) upon the termination of the Transfer Agreement by
VISTA pursuant to Section 3(c) thereof and the return by DNA of all amounts paid
by VISTA to DNA under the Transfer Agreement.
13
7.3 Rights Upon Expiration or Termination. In addition to those
obligations upon expiration or termination of this License Agreement contained
elsewhere herein or provided by law, the following shall apply in the event of
termination for any reason:
(a) Each party shall promptly, but no later than thirty
(30) days following the effective date of termination, pay to the other party
all amounts due and owing hereunder.
(b) DNA shall provide DNA with a written report certified
by an officer of DNA listing the nature and quantity of the Products and other
items, including all associated packaging, labels, advertising, promotional
material, and displays in DNA's or its Affiliates' possession, custody or
control on the date of termination.
(c) All rights granted to the parties hereunder shall
immediately cease, and each party shall, as directed by the other party, either
deliver to other party or permanently and irretrievably destroy (and certify
such destruction in writing) all physical and electronic evidence of the other
party's Confidential Information; provided, however, that (i) except where this
License Agreement is terminated by DNA pursuant to Section 7.2(a)(i) above,
VISTA shall be entitled to continue exercising its rights hereunder for a period
of one hundred eighty (180) days of such expiration or termination; and (ii)
except where this License Agreement is terminated by VISTA pursuant to Section
7.2(a)(i) or 7.2(b), DNA shall be entitled to continue marketing and
distributing its inventory of the Products that is on hand at the time of such
expiration or termination for a period of one hundred eighty (180) days, after
which DNA shall immediately ship and deliver to VISTA, without charge to VISTA,
all existing inventory of Product, any packaging, labels, advertising,
promotional material, displays, and any other items bearing the Licensed Xxxx
and any related materials.
(d) Termination of the Transfer Agreement or Distribution
shall not operate to terminate this License Agreement; provided, that
termination of this License Agreement shall automatically terminate the Transfer
Agreement and Distribution Agreement.
7.4 Survival; Non-Exclusive Remedies. Notwithstanding anything in
this License Agreement to the contrary, the following provisions of this License
Agreement will survive its expiration or termination: Section 2.1, 2.2 (if
expiration or termination occurs less than *** after the Effective Date), 2.4,
2.5 (assuming the Transfer Agreement is currently in effect), 3.4 (assuming the
Distribution Agreement is currently in effect), 4.1 through 4.4 (to the extent
subject to Section 7.3(a) above), 4.5 and Articles 1, 5 (provided, that Sections
5.5 and 5.6 shall survive only with respect to those activities in effect as of
the date of termination or expiration, and provided, further that, Section 5.8
shall not so survive), 6, 7, 8, 9, 10 and 11. Any such termination shall be in
addition to any other rights or remedies available at law or in equity to the
terminating party and shall not affect any rights or obligations that have
accrued prior to the date of termination. VISTA is under no obligation to
terminate this License Agreement on the occurrence of any or all of the events
set forth in Section 7.2, and its failure to do so in any instance will not be
deemed a waiver of its right to do so.
--------------
*** CONFIDENTIAL TREATMENT HAS BEEN REQUESTED BY TERAFORCE TECHNOLOGY
CORPORATION FOR CERTAIN PORTIONS OF THIS DOCUMENT. CONFIDENTIAL PORTIONS HAVE
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
14
ARTICLE 8
REPRESENTATIONS, WARRANTIES AND COVENANTS
8.1 Mutual. Each party represents, warrants and covenants to the
other as follows:
(a) It has the right, power and authority to enter into
and perform its obligations under this License Agreement, and this License
Agreement constitutes a legal, valid and binding obligation on its part,
enforceable against it in accordance with its terms.
(b) The execution, delivery and performance of this
License Agreement by such party will not result in the breach of any terms of,
or constitute a default under, or conflict with, or cause any acceleration of
any obligation of such party, or violate any applicable law, rule or regulation,
and each party will at all times comply with all applicable federal, state and
local laws, rules and regulations in the performance of its obligations
hereunder and obtain and possess all licenses, consents, permits and other
required or prudent authorizations to perform its obligations hereunder.
8.2 By VISTA. VISTA represents, warrants and covenants to DNA as
follows:
(a) It is the legal and beneficial owner or authorized
licensor of all Intellectual Property Rights in the VISTA Technology.
(b) To the knowledge of the executive officers of VISTA,
the VISTA Technology does not infringe upon or misappropriate any valid United
States Intellectual Property Rights of any third parties, nor are any of the
executive officers of VISTA aware of any threats or claims of infringement made
by any third parties against VISTA or any of the VISTA Technology.
8.3 Disclaimer. EXCEPT AS SPECIFICALLY AND EXPRESSLY REPRESENTED
AND WARRANTED HEREIN, EACH PARTY DISCLAIMS AND EXCLUDES ALL WARRANTIES, EXPRESS,
IMPLIED OR OTHERWISE, INCLUDING WITHOUT LIMITATION ALL IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, FREEDOM FROM INFRINGEMENT OF
ANY INTELLECTUAL PROPERTY OR OTHER PROPRIETARY RIGHTS, AND WARRANTIES BASED ON A
COURSE OF DEALING BETWEEN THE PARTIES OR USAGE OF TRADE. EXCEPT AS SPECIFICALLY
AND EXPRESSLY SET FORTH IN ANY OF THE AGREEMENTS, NEITHER PARTY, ITS EMPLOYEES,
REPRESENTATIVES OR AGENTS WILL NOT BE LIABLE FOR ANY SPECIAL, INDIRECT,
INCIDENTAL OR CONSEQUENTIAL DAMAGES, EVEN IF SUCH PARTY HAS BEEN NEGLIGENT OR
HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
8.4 By DNA. DNA represents, warrants and covenants to VISTA as
follows:
(a) It is the legal and beneficial owner or authorized
licensor of all Intellectual Property Rights in the Licensed Technology, and has
the full power and authority to grant the rights in the Licensed Technology
herein contemplated, without the consent of any other person, and has all
necessary rights, licenses and approvals required to perform its obligations
hereunder, provide the Licensed Technology to VISTA in accordance with this
License Agreement and to otherwise provide the information and other
deliverables contemplated herein and by the Transfer Agreement and Distribution
Agreement;
(b) The Licensed Technology does not infringe upon,
misappropriate or violate any Intellectual Property Rights of any third party,
and no allegation, claim, action, or suit for the infringement, misappropriation
or violation of any Intellectual Property Rights of any third party has been
made or is pending against DNA, any Person from which DNA has obtained rights in
connection therewith or, to the extent related to the Licensed Technology, any
Person to whom DNA has granted rights in the Licensed Technology.
(c) All services and efforts to be performed and taken by
DNA hereunder (including, without limitation and for the avoidance of doubt, the
Support Services, as defined in the Transfer Agreement, for the purpose of
incorporating this representation and warranty therein pursuant to Section 6(b)
thereof) will be performed in a professional, workmanlike manner, in accordance
with industry standards and by reasonably skilled persons who are sufficiently
trained to accomplish their assigned tasks.
15
(d) VISTA shall have the right to use for its own
purposes, any ideas, concepts, processes, methods, techniques, inventions,
materials and information provided to or otherwise obtained or developed by
VISTA (other than the extent to which such was obtained by VISTA directly from
DNA as supported by documentary evidence) as a result of this License Agreement,
without restriction, liability or obligation, except as is expressly specified
herein.
(e) The Licensed Technology will comply, operate, perform
and be capable of being performed in accordance with its applicable
documentation and specifications, including, without limitation, the Information
and Materials in all respects.
(f) All obligations owed to third parties with respect to
the activities contemplated to be undertaken by DNA pursuant to this License
Agreement are or will be fully satisfied by DNA so that VISTA will not have any
obligations with respect thereto.
ARTICLE 9
INDEMNITY AND INSURANCE
9.1 Indemnification by DNA. DNA will defend, indemnify and hold
harmless VISTA and its Affiliates, and their respective directors, officers,
employees, agents, Affiliates, assigns and successors-in-interest (individually
and collectively, the "VISTA Indemnitees") from and against any and all
liabilities, damages, losses, claims, demands, assessments, actions, causes of
action, costs (including attorneys' fees and associated expenses) and any of
them, arising out of or resulting from third party claims with respect to any of
the following:
(a) any acts or omissions of DNA or its Affiliates,
agents or representatives, whether or not constituting, but including, any
breach by DNA of any representation, warranty or covenant of DNA contained in
any of the Agreements; and
(b) the Licensed Technology, DNA Confidential
Information, and DNA's advertising, promotion, sale, offer for sale,
distribution, use or misuse of the Combined Technology or Products (except as
otherwise set forth in Section 9.2 below with respect to the VISTA Technology),
including, without limitation, (i) any claim for injury, death or property
damage or for violation of any Intellectual Property Right of any third party
and any product liability claims relating thereto and (ii) any claims by actual
or potential customers or suppliers of DNA.
9.2 Indemnification by VISTA. VISTA will defend, indemnify and
hold harmless DNA and its Affiliates, and their respective directors, officers,
employees, agents, assigns and successors-in-interest (individually and
collectively, the "DNA Indemnitees") from and against any and all liabilities,
damages, losses, claims, demands, assessments, actions, causes of action, costs
(including attorneys' fees and expenses) and any of them, arising out of or
resulting from third party claims with respect to any of the following:
(a) any acts or omissions of VISTA or its Affiliates,
agents or representatives, whether or not constituting, but including, any
breach by VISTA of any representation, warranty or covenant of VISTA contained
in any of the Agreements; and
(b) any claim of violation of any valid United States
Intellectual Property Rights of any third party based solely upon the VISTA
Technology.
9.3 Indemnification Procedures.
(a) Notice. If any third party makes a claim covered by
Section 9.1 or 9.2 against an indemnitee with respect to which such indemnitee
intends to seek indemnification under this Section, such indemnitee will give
prompt notice of such claim to the indemnifying party, including a brief
description of
16
the amount and basis therefor, if known; provided, however, that the failure to
give such notice promptly will not relieve the indemnifying party of its
obligations hereunder except to the extent prejudiced thereby.
(b) Control of Defense. Upon the giving of such notice,
the indemnifying party will be obligated to defend such indemnitee against such
claim, and will be entitled to assume control of the defense of the claim with
counsel chosen by the indemnifying party; provided, however, that if DNA is the
indemnifying party, VISTA shall be entitled, upon notice to DNA at any time, to
undertake and assume sole control of the defense thereof with counsel of its own
selection, at DNA's expense, if VISTA reasonable determines that DNA is unable,
due to financial reasons or otherwise, to continue actively and diligently
defending against such claim. The non-defending party will, to a commercially
reasonable extent, cooperate fully with, and assist, the defending party in its
defense against such claim in all reasonable respects, at the defending party's
request and expense. The defending party will take commercially reasonable steps
to keep the non-defending party fully apprised at all times as to the status of
the defense. Notwithstanding the foregoing, the non-defending party will have
the right, at its expense, to employ separate counsel in any such action, but
the role of such counsel will only be supportive of the defending party's
counsel. Neither party will be liable for any settlement of action or claim
effected without its consent, which will not be unreasonably withheld.
Notwithstanding the foregoing, the indemnitee will retain, assume, or reassume
sole control over all expenses relating to every aspect of the defense that it
believes is not the subject of the indemnification provided for in this Section.
Following indemnification as provided in this Article 9, the indemnifying party
will be subrogated to all rights of the indemnitee with respect to the matters
for which indemnification has been made.
(c) Satisfaction of Defense Costs. During the pendency of
a suit, proceeding, claim or demand against which DNA is required to indemnify
any of the VISTA Indemnitees pursuant to Section 9.1 above, VISTA may withhold
payments due to DNA under the Agreements or under any other business arrangement
between the parties to the extent reasonably necessary to conduct the defense
thereof and to satisfy any liability therein provided.
9.4 Infringement Remedy. If any portion of the Licensed
Technology, or any part thereof, becomes, or in either party's opinion is likely
to become, the subject of any claim or action covered by Section 9.1(a)(ii),
then, DNA shall at its expense and within thirty (30) days following such notice
or determination either: (a) procure the right to continue using same as
contemplated hereunder; (b) modify same to render same non-infringing (provided
such modification does not adversely affect the Licensed Technology); or (c)
replace same with an equally suitable, functionally equivalent, compatible,
non-infringing Licensed Technology. With respect to any of the foregoing, VISTA
shall be relieved of its payment obligations hereunder with respect to such
Licensed Technology for so long as it was affected thereby. If none of the
foregoing is commercially practicable or are otherwise not consummated within
ten (10) days following VISTA's inability to continue using such Licensed
Technology such that VISTA can continue using the Licensed Technology to the
fullest extent contemplated hereby, then VISTA shall have the right to terminate
this License Agreement and shall be entitled, in addition to all other rights
and remedies at law, in equity or otherwise, to a refund of any fees and charges
paid by DNA for the period following the effective date of termination and for
the period during which the Licensed Technology was affected thereby.
9.5 Limitation. Notwithstanding anything to the contrary elsewhere
in this License Agreement, except for a party's indemnification obligations and
confidentiality obligations under the Agreements, gross negligence or fraud,
neither party's maximum total aggregate liability for any and all claims arising
under or relating to the Agreements, regardless of form and whether based in
contract or tort (including negligence) shall not exceed the amount paid by
VISTA to DNA hereunder.
17
9.6 Insurance. Each party shall, at its sole cost and expense,
obtain and maintain from a reputable insurance company adequate liability
insurance coverage in accordance with customary and prudent business practices
including, without limitation, general liability, completed products and errors
and omissions coverages, , which coverage shall (a) contain coverage limits of
liability of not less than two million dollars ($2,000,000) per occurrence and
five million dollars ($5,000,000) annual aggregate, (b) name the other party as
an additional insureds with respect thereof, (c) contain a waiver of subrogation
against such the other party, and (d) provide for thirty (30) days prior notice
to be given to the other party in the event coverage is substantially changed,
cancelled or not renewed.
ARTICLE 10
DISPUTE RESOLUTION
10.1 Disputes. If any dispute, disagreement, question, claim or
controversy between the parties arising out of, in connection with or relating
to the interpretation or operation of any of the Agreements, any actual, alleged
or anticipated breach thereof or the performance or non-performance by a party
of its obligations hereunder or thereunder (a "Dispute") shall arise during the
term of the Agreements or the term of any survival of any provisions of such
Agreements, the parties shall in good faith attempt to resolve such Dispute
promptly and in an amicable manner under the dispute resolution procedure set
out in this Article 10.
10.2 Internal Dispute Resolution.
(a) Dispute Resolution Committee. If a Dispute arises
which is not resolved by the operational personnel involved, the operational
personnel of either party shall promptly report the Dispute to the project
managers of each party (collectively called the "Dispute Resolution Committee").
The Dispute Resolution Committee shall hold a meeting (in person or otherwise)
within five (5) days following notification in an attempt to resolve the
Dispute.
(b) Senior Executives. In the event that the Dispute
Resolution Committee is unable to resolve the Dispute within five (5) days
following its first meeting, it shall promptly notify the senior executives of
each party (collectively, the "Senior Executives"). The Senior Executives shall
meet (in person or otherwise) in an attempt to resolve the Dispute as promptly
as possible, but in any event no later than five (5) days following notification
thereof. If the Senior Executives cannot resolve the Dispute within five (5)
days following notification thereof (or such longer period as the parties may
agree), either party may submit such Dispute for resolution through the
mediation and arbitration procedures provided below.
(c) Procedures. The Dispute Resolution Committee and
Senior Executives, as applicable, shall meet as often as reasonably necessary in
order to gather and furnish to the other all information with respect to the
matter in issue which they believe to be appropriate and germane in connection
with its resolution. The Dispute Resolution Committee and Senior Executives, as
applicable, shall discuss the Dispute and negotiate in good faith in an effort
to resolve the Dispute without the necessity of any formal proceeding. During
the course of negotiations, all reasonable requests made by one party to another
for non-privileged information, reasonably related to the Agreements, shall be
honored in order that each of the parties may be fully advised of the other's
position.
10.3 Formal Dispute Resolution. Any Dispute not resolved through
the escalation procedure of Section 10.2 will be resolved through mediation or,
if mediation does not resolve the dispute, through binding arbitration. The
language of the mediation or arbitration shall be English, and any in-person
mediation or arbitration will occur in Charlotte, North Carolina.
(a) Mediation. The parties agree to select a mutually
agreeable, neutral third party to help them mediate any Dispute. Costs and fees
associated with the mediation will be shared equally by the parties.
18
(b) Arbitration. Following completion of the mediation,
either party may submit the Dispute for final settlement by binding arbitration
in accordance with the Commercial Arbitration Rules of the American Arbitration
Association; provided, that any discovery conducted thereunder shall be
concluded within thirty (30) days following the submission of the Dispute and
limited to no more than twenty (20) interrogatories and fifty (50) document
requests. The arbitration shall be held before a single arbitrator mutually
selected by the parties, of if they cannot so agree, a panel of three
arbitrators, one to be selected by VISTA, one to be selected by DNA, and the
third by agreement of the two arbitrators selected by the parties. The parties'
consent to the jurisdiction of the Federal District Court or State Court in
Mecklenburg County, North Carolina, for all purposes in connection with
mediation and arbitration, including (i) enforcement of the arbitration award,
and (ii) issuance of provisional remedies to protect rights, interests, assets
or property, including temporary or preliminary injunctive relief, to ensure
ultimate satisfaction of the mediation ruling or arbitration award. The parties
agree that the award made by the arbitrator shall be final and binding on the
parties, and they waive any right to appeal the arbitral award, to the extent an
appeal may be lawfully waived.
10.4 Injunctive Relief. Notwithstanding anything in this Article
10, the parties agree, however, that in order to enforce the provisions of this
Article 10 and/or to preserve the status quo, either party may, within the
exclusive jurisdiction set forth in Section 10.3(b) above, seek and obtain an
injunction or other appropriate relief from a court of law or equity, but no
such application to a court shall in any way be permitted to stay or otherwise
impede the progress of mediation or arbitration as anticipated herein.
ARTICLE 11
MISCELLANEOUS
11.1 Independent Contractor Status. The parties to this License
Agreement are independent contractors and this License Agreement shall not be
construed to create any partnership, franchise or employment relationship. In
addition, nothing in this License Agreement shall be deemed to appoint or
authorize one party to act as an agent or other representative of the other
party or to assume or incur any liability or obligation in the name of or on
behalf of the other party, but this Section shall not be construed to diminish
any licenses or rights granted to VISTA under this License Agreement.
11.2 Force Majeure. Any failure or delay in the performance by
VISTA or DNA of their respective obligations hereunder shall not be a breach of
this License Agreement if such failure or delay arises out of or results
primarily from fire, storm, flood, earthquake, or other acts of God, explosions,
wars, insurrections, strikes, work stoppages or slowdowns, unavailability of
fuel or utilities, epidemic or quarantine restrictions, or inability to obtain
essential raw materials despite commercially reasonable efforts to do so (each,
an "Event of Force Majeure"). In the event that an Event of Force Majeure
materially affects a party's obligations hereunder, then upon notice to the
other party, the party affected thereby shall be relieved of its obligations
hereunder for so long as such Event of Force Majeure continues to have such
affect. Both VISTA and DNA shall use their commercially reasonable efforts to
avoid the occurrence and remove the causes of an Event of Force Majeure and to
continue performance of their respective obligations hereunder promptly
following the removal of such causes.
11.3 Assignments. This License Agreement is binding upon and shall
inure to the benefit of the parties hereto and their respective successors and
assigns. Affiliates of VISTA are intended third party beneficiaries of this
License Agreement to the extent expressly provided herein. DNA shall not assign
or transfer any of its rights under this License Agreement (whether by merger,
operation of law or otherwise) or delegate any of its obligations or duties
hereunder without the prior written consent of VISTA, which may be withheld in
VISTA's sole discretion. VISTA shall be entitled to assign, transfer or delegate
this License Agreement or any rights or duties under this License Agreement upon
prior written notice to DNA. Any assignment of this License Agreement by either
party shall not relieve or release such party from any of its duties or
obligations under this License Agreement.
19
11.4 Notices. Any notice contemplated by or required or permitted
to be given under this License Agreement shall be in writing and (a) sent via
telecopier to the telecopier numbers set forth below, (b) delivered personally,
(c) sent via next day or overnight courier or delivery or (d) mailed by
registered or certified mail, return receipt requested, postage prepaid, to the
parties' respective addresses below (or, in each case, to such other address or
facsimile number as may be specified in writing to the other parties hereto):
DNA: VISTA:
--- -----
DNA Computing Solutions, Inc. VISTA Controls, Inc.
0000 Xxxx Xxxxxxxx Xxxx 00000 Xxxxxx Xxxx
Xxxxxxxxxx, Xxxxx 00000 Xxxxx Xxxxxxx, XX 00000
Attn: President Attn: VP and General Manager
Fax: 000-000-0000 Fax: 000-000-0000
With a copy to: With a copy to:
TeraForce Technology Corporation Xxxxxxx-Xxxxxx Controls, Inc.
0000 Xxxx Xxxxxxxx Xxxx 0000 Xxxxxxxxx Xxxxxxxxx
Xxxxxxxxxx, Xxxxx 00000 Xxxxxxxx, XX 00000
Attn: Chief Financial Officer Attn: Xxxxxx X. Xxxx, General Counsel
Fax: 000-000-0000 Fax: 000-000-0000
Such notices, requests and other communications sent as provided hereinabove
shall be effective: (i) if sent by telecopier on a business day before 6:00
p.m., Eastern Standard time, on such business day, but if sent by telecopier at
any other time, upon the next business day; (ii) upon receipt, when personally
delivered; (iii) the next business day, if sent by overnight courier or
delivery; and (iv) if sent by registered or certified mail, return receipt
requested, upon the expiration of the third business day after being deposited
in the United States mail.
11.5 Expenses. Each party hereto shall pay all of its own
administrative expenses (including without limitation the fees and expenses of
its agents, representatives and counsel) incident to the preparation and
implementation of this License Agreement.
11.6 Waiver. No waiver by either party hereto of any breach or
default of any of the covenants or agreements herein set forth shall be deemed a
waiver as to any subsequent and/or similar breach or default. The failure of any
party hereto to enforce at any time any of the provisions of this License
Agreement shall in no way be construed to constitute a waiver of any such
provision nor in any way to affect the validity of this License Agreement or any
part hereof, including the right of any party thereafter to enforce each and
every provision. The waiver by any party to this License Agreement of any breach
or violation of any provision of this License Agreement by the other party
hereto shall not operate or be construed to be a waiver of any subsequent breach
or violation thereof.
11.7 Governing Laws, Venue, Jurisdiction. This License Agreement
shall be interpreted and construed in accordance with the laws of the State of
North Carolina and the United States of America. Any disputes, controversies or
differences arising out of or in connection with this License Agreement or the
making thereof, Including claims of fraud in the inducement, which cannot be
settled by mutual agreement shall be resolved by the state or federal courts
located in Mecklenburg County, North Carolina. All parties hereby submit to the
jurisdiction of said courts.
11.8 Drafting. All parties hereto have been represented by counsel,
and each voluntarily enters into and agrees to be bound by this License
Agreement as written on the day it is signed. Authorship of this License
Agreement shall be deemed to be joint, and shall not be attributed to one party
or another for the purpose of construing its terms or provisions. The Recitals
to this License Agreement are for reference purposes only and shall not be
binding upon any party or otherwise used by a party to contradict or
20
challenge the terms of this License Agreement.
11.9 Severability. If any provision of this License Agreement is
declared or found to be illegal, unenforceable or void, then both parties shall
be relieved of all obligations arising under such provision, but only to the
extent that such provision is illegal, unenforceable or void. Further, this
License Agreement shall be deemed amended by modifying such provision to the
extent necessary to make it legal and enforceable while preserving its intent
or, if that is not possible, by substituting therefore another provision that is
legal and enforceable and achieves the same intended objective. If the remainder
of this License Agreement shall not be affected by such illegal, unenforceable
or void provision and is capable of substantial performance, then each provision
not so affected shall be enforced to the extent permitted by law.
11.10 Counterparts. This License Agreement and any amendments,
waivers, consents or supplements hereto may be executed in any number of
counterparts, and by different parties in separate counterparts, each of which
when so executed and delivered shall be deemed an original, but all such
counterparts together shall constitute but one and the same agreement. Each such
agreement, document or instrument shall become effective upon the execution of a
counterpart hereof or thereof by each of the parties hereto.
11.11 Media Releases. All media releases, public announcements and
public disclosures by DNA or VISTA, or their respective Affiliates,
representatives, employees or agents, relating to this License Agreement or its
subject matter, but not including any announcement intended solely for internal
distribution by a party or any disclosure required by legal, accounting or
regulatory requirements beyond the reasonable control of a party, shall be
coordinated with and approved in writing by the other party prior to the release
thereof.
11.12 Further Acts. Each party shall do, or cause to be done, all
such further acts, and shall execute, acknowledge and deliver, or cause to be
executed, acknowledged and delivered, any and all such further documentation as
the other party reasonably requires to carry out the purposes of this License
Agreement.
11.13 Entire Agreement; Amendments. This License Agreement and its
Exhibits (and to the extent applicable, the Transfer Agreement and the
Distribution Agreement) constitute the entire agreement between the parties with
respect to the subject matter hereof, and all prior agreements respecting the
subject matter hereof, either written or oral, expressed or implied, shall be
abrogated, canceled, and are null and void and of no effect. All amendments to
this License Agreement must be in writing and signed by the parties. Each party
represents and warrants to the other party that in entering into this License
Agreement it has not relied on any representations, promises or assurances from
the other party or any employee, officer, director, representative, attorney or
Affiliate of the other party not expressly contained in this License Agreement.
Any other terms or conditions shall not be incorporated herein or be binding
upon either party unless expressly agreed to in writing by both parties.
11.14 Export Restrictions. The Licensed Technology is subject to
export regulations of the U.S. Government, including the U.S. Department of
State (International Traffic in Arms Regulations, 22 CFR 120 et seq.) and the
U.S. Department of Commerce (U.S. Export Administration Regulations 15 CFR 730
et seq.) VISTA will not export, re-export, resell, transfer or disclose,
directly or indirectly, any Licensed Technology obtained hereunder without
complying with applicable U.S. export control laws. DNA agrees to procure and
provide to VISTA, at DNA's expense, all export and similar licenses and rights
that are necessary or advisable for the export of the Licensed Technology.
Signatures Appear on Following Page
21
IN WITNESS WHEREOF, the parties have executed and delivered this
License Agreement, in duplicate originals, by their respective persons or
officers hereunto duly authorized, to be effective as of the day and year first
above written.
VISTA CONTROLS, INC.
By: /s/ XXXXX XXXXX
--------------------------------------
Name: Xxxxx Xxxxx
Title: President and GM
DNA COMPUTING SOLUTIONS, INC.
By: /s/ R. XXXXXX XXXXX
--------------------------------------
Name: R. Xxxxxx Xxxxx
Title: Chief Executive Officer
22
EXHIBIT A
DEFINITIONS
"Affiliate" means any Person, directly or indirectly, controlling,
controlled by or under common control with a party.
"Agreements" has the meaning set forth in Section 2.2 of this License
Agreement.
"Code" has the meaning set forth in Section 2.4 of this License
Agreement.
"Combined Technology" means the methods, designs, processes, products,
materials, documentation, data, information, inventions, works of authorship,
trade secrets, software, hardware, technical data, ideas, know-how, concepts,
uses, applications and technologies resulting from the combination of the
Licensed Technology and the VISTA Technology, and all Intellectual Property
Rights therein or related thereto.
"Confidential Information" has the meaning set forth in Section 6.1(f)
of this License Agreement.
"Customer" has the meaning set forth in the Distribution Agreement.
"Discontinued Products" has the meaning set forth in Section 6.2(c) of
this License Agreement.
"Dispute" has the meaning set forth in Section 10.1 of this License
Agreement.
"Dispute Resolution Committee" has the meaning set forth in Section
10.2(a) of this License Agreement.
"Distribution Agreement" has the meaning set forth in the recitals to
this License Agreement.
"DNA" has the meaning set forth in the first paragraph hereof.
"DNA Indemnitees" has the meaning set forth in Section 9.2 of this
License Agreement.
"DNA Property" has the meaning set forth in Section 5.1 of this License
Agreement.
"DNA Residual Rights Fee" has the meaning set forth in Section 4.2(a)
of this License Agreement.
"Effective Date" has the meaning set forth in the first paragraph
hereof.
"Event of Force Majeure" has the meaning set forth in Section 11.2 of
this License Agreement.
"Exclusive License" has the meaning set forth in Section 2.1 of this
License Agreement.
"Exclusive Period" has the meaning set forth in Section 2.1 of this
License Agreement.
"Field of Use" means the applications, processes, practices, products
and methods related to Ruggedized digital signal processing solutions for all
marketplaces and applications worldwide. By way of example and not limitation,
marketplaces and applications includes all military and aerospace applications,
radar, sonar, software radio, electronic warfare, signal intelligence, smart
weapons, unmanned vehicles, avionics and deployed embedded systems for tanks,
unmanned vehicles and naval vessels.
"Fully Burdened Cost" has the meaning set forth in Section 4.2(b)(iii)
of this License Agreement.
"Information and Materials" has the meaning set forth in the Transfer
Agreement.
23
"Intellectual Property Rights" means all (a) proprietary rights
provided anywhere in the world, whether arising pursuant to any foreign or
domestic law, rule, regulation, treaty, statute or at common law or otherwise,
including, without limitation (i) all patent rights and all letters patent,
industrial models, industrial designs, xxxxx patents, patents of importation,
patents of addition, utility models, all applications for any of the foregoing,
Patent Cooperation Treaty applications, United States provisional patent
applications, supplementary protection certificates, certificates of invention
and other government issued or granted indicia of invention ownership including
any reissue, re-examination, extension, renewal, divisional, substitution,
continuation or continuation-in-part applications and patents; (ii) all moral
rights and copyrights in any work of authorship, including all registrations and
applications therefor, together with any renewal or extension thereof, and all
rights deriving therefrom; (iii) all trademarks, service marks, domain names,
trade names and trade dress, and all goodwill relating thereto; (iv) all trade
secrets, trade secret rights, know-how, and confidential information; and (v)
all other intellectual property and proprietary rights protectable, and in each
case where applicable including the right to apply for registrations,
certificates, or renewals with respect thereto and the right to prosecute,
enforce, obtain damages and remedies relating to, settle or release any past,
present, or future infringement or misappropriation thereof; and (b) licenses,
sub-licenses, franchises, assignments, agreements or any other evidence of any
right in any of the foregoing.
"License" has the meaning set forth in Section 2.1 of this License
Agreement.
"License Agreement" shall have the meaning set forth in the
introductory paragraph hereof.
"License and Transfer Fees" has the meaning set forth in Section 4.1 of
this License Agreement.
"Licensee Group" means VISTA and its Affiliates, and their respective
successors and assigns.
"Licensed Marks" means any of DNA's trademarks, service marks, trade
names, trade dress, logos, designs and insignias used or held for use by DNA in
connection with the Licensed Technology, including, without limitation, the
VQG4, EAGLE and WINGSPAN marks.
"Licensed Technology" means the DNA digital signal processing
technologies for the VQG4, EAGLE platforms and, to the extent used on these
platforms, the Wingspan technologies and (a) all hardware designs, board support
software, manufacturing data, DNA's portfolio of Wingspan libraries, all related
source code, documentation, any research and development information, unpatented
inventions, know-how, trade secrets, software programs and technical data,
ideas, concepts, uses and applications, and (b) upgrades, improvements,
enhancements, modifications, alterations and derivative works based thereon or
relating to any of the foregoing, provided that such items are used or held for
use by DNA in connection with the VQG4 or EAGLE I platforms, and (c) all
Intellectual Property Rights in any of the foregoing. The term Licensed
Technology shall not include the Licensed Marks, but shall include all
Information and Materials related to the Combined Technology.
"Marketing Plan" has the meaning set forth in Section 3.1 of this
License Agreement.
"Net Selling Price" has the meaning set forth in Section 4.2(b)(ii) of
this License Agreement.
"New Products" has the meaning set forth in Section 6.2(c) of this
License Agreement.
"Permitted Products" means the following products in the form and with
the features and functionality marketed, sold and distributed by DNA immediately
prior to the Effective Date: (a) ***, as
--------------
*** CONFIDENTIAL TREATMENT HAS BEEN REQUESTED BY TERAFORCE TECHNOLOGY
CORPORATION FOR CERTAIN PORTIONS OF THIS DOCUMENT. CONFIDENTIAL PORTIONS HAVE
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
24
more specifically defined, and the agreed-upon specifications for which, are set
forth on Schedule 1 to this Exhibit A, and (b) ***, as more specifically
defined, and the agreed-upon specifications for which, are set forth on Schedule
2 to this Exhibit A; provided, however, that such features and functionality do
not use, in whole or part, the VISTA Technology or the Combined Technology,
including, without limitation, any Intellectual Property Rights in or related to
the VISTA Technology or Combined Technology (other than the Licensed Technology
incorporated therein).
"Person" means an individual, trust, estate, domestic corporation,
foreign corporation, professional corporation, partnership, limited partnership,
limited liability company, foreign limited liability company, unincorporated
association, or another entity.
"Pre-Existing Materials" has the meaning set forth in Section 5.3(b) of
this License Agreement.
"Product Premium" has the meaning set forth in Section 4.2(a)(i) of
this License Agreement.
"Products" means the products incorporating, resulting from and/or
developed based on the Combined Technology.
"Profits" has the meaning set forth in Section 4.2(b)(i) of this
License Agreement.
"Promotional Materials" has the meaning set forth in Section 3.2 of
this License Agreement.
"Rejected Good Faith Order" has the meaning set forth in Section 6.2(c)
of this License Agreement.
"Restricted Activities" has the meaning set forth in Section 6.2(a)(i)
of this License Agreement.
"Restricted Persons" has the meaning set forth in Section 6.2(a) of
this License Agreement.
"Ruggedized" means any applications, processes, practices, products and
methods to strengthen, fortify, reinforce, protect and/or preserve the integrity
of an object and/or the operation and/or use thereof in any manner from and/or
against, and otherwise enable an object to withstand and endure, in whole or
part, any adverse or opposing conditions, environments, situations, atmospheres,
factors and circumstances, including, without limitation temperature, humidity,
air quality, wind resistance, velocity, turbulence, vibrations, sound, light,
moisture, precipitation, extended or infrequent use, physical or electronic
stress, shock, abuse, resistance, interference and/or impedance.
"Sales" has the meaning set forth in Section 4.2(a)(ii) of this License
Agreement.
"Senior Executives" has the meaning set forth in Section 10.2(b) of
this License Agreement.
"Term" has the meaning set forth in Section 7.1 of this License
Agreement.
"Transfer Agreement" has the meaning set forth in the recitals to this
License Agreement.
"VISTA" has the meaning set forth in the first paragraph hereof.
"VISTA Indemnitees" has the meaning set forth in Section 9.1 of this
License Agreement.
--------------
*** CONFIDENTIAL TREATMENT HAS BEEN REQUESTED BY TERAFORCE TECHNOLOGY
CORPORATION FOR CERTAIN PORTIONS OF THIS DOCUMENT. CONFIDENTIAL PORTIONS HAVE
BEEN FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
00
"XXXXX Xxxxx" means any of VISTA's trademarks, service marks, trade
names, copyrights, trade dress, logos, designs and insignias related to the
VISTA Technology, Combined Technology or Products.
"VISTA Property" has the meaning set forth in Section 5.2 of this
License Agreement.
"VISTA Residual Rights Fee" has the meaning set forth in Section 4.2(b)
of this License Agreement.
"VISTA Technology" means VISTA's proprietary methods, designs,
products, materials, documentation, data, information, inventions, works of
authorship, trade secrets, software, hardware, technical data, ideas, know-how,
concepts, uses, applications and processes for Ruggedization of systems, boards
or circuit card assemblies or any device incorporating digital signal
processing, including without limitation, so as to enable them to withstand
various types of adverse conditions, including without limitation, environmental
conditions required for military and aerospace applications, radar, sonar,
software radio, electronic warfare, signal intelligence, smart weapons, unmanned
vehicles, avionics and deployed embedded systems for tanks, unmanned vehicles
and naval vessels, and any improvements, enhancements, modifications,
alterations and derivative works thereto, and all Intellectual Property Rights
in any of the foregoing.
26
SCHEDULE 1 TO EXHIBIT A
***
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED BY TERAFORCE TECHNOLOGY CORPORATION
FOR CERTAIN PORTIONS OF THIS DOCUMENT. CONFIDENTIAL PORTIONS HAVE BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION.
27
SCHEDULE 2 TO EXHIBIT A
***
CONFIDENTIAL TREATMENT HAS BEEN REQUESTED BY TERAFORCE TECHNOLOGY CORPORATION
FOR CERTAIN PORTIONS OF THIS DOCUMENT. CONFIDENTIAL PORTIONS HAVE BEEN FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION. THE REDACTED
CONFIDENTIAL INFORMATION CONTAINED IN THIS PORTION OF THE DOCUMENT CONSISTED OF
TWO PAGES.
28
EXHIBIT B
TRANSFER AGREEMENT
29
EXHIBIT C
DISTRIBUTION AGREEMENT
30
