INTELLECTUAL PROPERTY AGREEMENT
This
Agreement, effective as of this 30th day
of
May, 2007, (the "Effective
Date")
is by
and between Xxxxxxx Kodak Company ("Kodak"), a New Jersey corporation and eMagin
Corporation (formerly FED CORPORATION), ("Seller"), a Delaware corporation
with
its principal office at 00000 XX 0xx Xxxxxx, Xxxxx 0000, Xxxxxxxx, XX 00000
("Seller").
RECITALS:
WHEREAS
Seller has acquired under Kodak's patents and know-how related to organic
light-emitting diode ("OLED") technology the "NONEXCLUSIVE FIELD OF USE LICENSE
AGREEMENT RELATING TO OLED TECHNOLOGY FOR MINIATURE, HIGH RESOLUTION DISPLAYS"
dated March 29, 1999, as amended, (hereinafter referred to as the "License
Agreement") and desires to reduce certain of its current and future license
payments to Kodak under the License Agreement in order to have financial
stability and to continue and grow its business; and
WHEREAS
Seller has acquired certain of its own patents in OLED technology and one
of
those
patents, U.S. Patent 6,337,492 B l, entitled "Serially-Connected Organic Light
Emitting Diode
Stack Having Conductors Sandwiching Each Light Emitting Layer" issued January
8,
2002 is
of
interest to Kodak, and this Agreement is intended to assign to Kodak the
ownership rights in such
patent subject to and in accordance with the terms, conditions and Iimitations
set forth in this
Agreement.
In
consideration of these premises and of the mutual promises set forth below,
the
Parties
agree as
follows:
ARTICLE
1
DEFINITIONS
For
the
purposes of this Agreement, the terms used herein shall have the meaning
specifically defined below and shall
be
applicable both to the singular and plural forms.
1
1.01
"Affiliate"
means
any company, partnership, joint venture, or other entity which directly or
indirectly controls, is controlled by or is under common control with a Party.
Control shall mean the possession of fifty percent (50%) or more of the voting
share capital or the power to direct or cause the direction of the management
and policies of the controlled entity, whether through the
ownership
of shares, by contract or otherwise, but only for so long as such control shall
exist.
1.02
"Agreement"
or
"Intellectual
Property Agreement"
means
this Intellectual Property Agreement and the Exhibits hereto, and any other
agreements or instruments entered into by the parties hereto on the date hereof
in connection with the subject matter hereof, as the same may from time to
time
be amended by mutual written agreement of the Parties.
1.03 "Assigned
Patent"
means
the invention disclosures, if available, patent applications and patents
(including letters patent, industrial designs, process patents and inventor's
certificates) related to U.S. Patent 6,337,492 B1, entitled "Serially-Connected
Organic Light Emitting Diode Stack Having Conductors Sandwiching Each Light
Emitting Layer" issued January 8, 2002 and any inventions disclosed therein
and
all patents and applications claiming priority thereto or sharing priority
therewith, and any and all rights to any of the foregoing anywhere in the world,
including any provisional applications, substitutions, extensions, supplementary
patent certificates, reissues, reexaminations, renewals, divisions,
continuations in part or in whole, continued prosecution applications, requests
for continued examination, and other similar filings or notices provided for
under the laws of the United States or of any other country and all rights
and
remedies against past, present and future infringement, misappropriation, or
other violation of
any of
the foregoing.
1.04
"Assignment
of Invention of Patent"
means
the Assignment of Invention of Patent in substantially
the form attached as Exhibit
A
to this
Agreement, pursuant to which Seller confirms it
is
selling, assigning, and transferring to Kodak the right, title, and interest
in
and to the Assigned
Patent.
1.05
"Breaching
Party"
has the
meaning set forth in Section 10.01 of this Intellectual Property
Agreement.
2
1.06
"Encumbrance"
means
any lien, charge, title retention, claim, license, conditional sale,
obligation
to license or sell, or other encumbrances including any liens imposed by any
third party.
1.07
"including"
and
"include"
shall
mean including without limitation and include without limitation,
respectively.
1.08"Kodak"
has the
meaning set forth in the preamble to this Intellectual Property
Agreement.
1.09
"Party"
means
Seller or Kodak, as the case may be.
1.10
"Patent"
means
the Assigned Patent.
1.11"Seller"
has the
meaning set forth in the preamble to this Intellectual Property
Agreement.
ARTICLE
2
INTELLECTUAL
PROPERTY TRANSFER
2.01
In
consideration for the significantly reduced payments made to Kodak as set forth
in Article 3, Seller hereby assigns to Kodak all rights, title and interest
to
the Assigned Patent.
ARTICLE
3
CONSIDERATION
3.01
In
consideration to Seller for the transfer of rights to Kodak hereunder, Kodak
agrees that:
(1) Each
of
Seller's quarterly royalty payments owed to Kodak under Section 4.2 of the
License Agreement for the second half (from July 1 through December 31) of
calendar year 2007 shall be reduced by fifty percent (50%); and
(2) Each
of
Seller's quarterly royalty payments owed to Kodak under Section 4.2 of the
License Agreement for the calendar year 2008 shall be reduced by fifty percent
(50%).
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ARTICLE
4
PATENT
PROSECUTION
4.01
As
of the Effective Date of this Agreement and with respect to the Assigned Patent,
the Party owning such Assigned Patent after the transactions contemplated herein
shall at its sole discretion be entitled to file, prosecute, issue and maintain
(or abandon as the case may be) the Assigned Patent.
4.02
EXCEPT TO THE EXTENT EXPRESSLY PROVIDED FOR IN THIS INTELLECTUAL PROPERTY
AGREEMENT, WITH RESPECT TO THE APPLICATION, PROSECUTION OR MAINTENANCE OF ANY
PATENT ASSIGNED OR LICENSED AT ANY TIME, WHETHER PRIOR TO, ON OR FOLLOWING
THE
EFFECTIVE DATE: KODAK SHALL HAVE NO LIABILITY TO SELLER OR ANY ENTITY RECEIVING
AN INTEREST IN ANY PATENT FROM SELLER, FOR ANY ACTION OR INACTION TAKEN
OR
NOT
TAKEN BY KODAK. THIS LIMITATION OF LIABILITY INCLUDES BUT IS NOT LIMITED
TO ANY FILINGS, EXAMINATIONS, AMENDMENTS, RESPONSES, APPEALS, ARGUMENTS,
PAYMENTS, MAINTENANCE FEES OR ANNUITIES RELATING TO ANY
OF THE
INTELLECTUAL PROPERTY RIGHTS ASSIGNED
TO
KODAK
UNDER THIS INTELLECTUAL PROPERTY AGREEMENT.
ARTICLE
5
TRANSITION
OF IP EFFORTS
5.01
As
of the Effective Date and with respect to the Assigned Patent, Seller will
reasonably cooperate with KODAK in the prosecution and transition of files.
Without limitation to the foregoing, Seller will (a) provide the documentation
and information set forth in the Patent Transfer Procedures set forth in Exhibit
B and (b) provide reasonable access to (i) inventors who are Seller employees
for consultation concerning patent prosecution and enforcement and (ii) Seller's
U.S. and non-US patent counsel. Ultimate prosecution and enforcement control
(including decisions to prepare, file, prosecute, maintain, abandon, terminate
or otherwise handle the
Assigned Patent) will reside with Kodak. Kodak at its own discretion and expense
may contact
inventors who are not in Seller's employ. In such case, Seller hereby waives
any
surviving
4
confidentiality
obligations that inventors may have to Seller for patent prosecution
and
enforcement consultation with respect to the Assigned Patent.
ARTICLE
6
CONFIDENTIAL
INFORMATION
6.01
Each
Party shall keep confidential, and shall not disclose to any third party, any
information relating to this Agreement, any information provided or transmitted
to it by the other Party or its Affiliates, that the receiving Party has a
reasonable basis to believe is confidential to the transmitting Party or that
is
treated by the transmitting Party as confidential (including with respect
to Seller any confidential information contained within the patent application,
file histories
and
related documents (if any) transferred to Kodak in connection with the
assignment of the Assigned Patent), until such information is publicly disclosed
through no fault of either Party. Notwithstanding the foregoing, a Party may
disclose the existence and terms of this Agreement (except
for the amount of payment to be made pursuant to Section 3.01) on a confidential
basis to any
actual or potential buyer of any business to which the patent rights assigned
hereunder pertain, and
additionally to any actual or potential buyer of any Assigned Patent or any
actual or potential
licensee
of any Assigned Patent in the case of Kodak. The foregoing obligations in
Paragraph 6.01, shall not apply when and to the extent such
information:
(1) was
known
by the receiving Party prior to disclosure or was independently developed
thereafter (provided however that to the extent that any information provided
to Kodak
or
its Affiliates hereunder relates to any Assigned Patent such information shall
be
considered the confidential information of Kodak as of and following the
Effective Date);
(2) is
lawfully available to the trade or to the public prior to the Effective
Date;
(3) through
no act on the part of the receiving Party thereafter becomes lawfully available
to the trade or to the public; or
(4) is
required to be disclosed to a third party pursuant to law or legal process,
provided that
the
receiving Party takes reasonable steps to inform the other Party of such
disclosure,
to the
extent that the receiving Party is permitted to do so by law, before such
disclosure takes place and provides the other Party an opportunity to object
or
otherwise act.
5
ARTICLE
7
ENFORCEMENT
OF INTELLECTUAL PROPERTY
RIGHTS
For
the
Assigned Patent, Kodak has the sole and exclusive right to institute any
lawsuits or other proceedings
against any third party with respect to such patents, including any claim for
past, present
or future infringement, misappropriation, or violation of any intellectual
property rights assigned
to Kodak hereunder, and Seller shall at Kodak's expense reasonably cooperate
with Kodak
in
connection with any such lawsuit or other proceeding. The decisions of whether
and when
to
institute, to settle or to continue the prosecution of any such lawsuits or
other proceedings against
any third party with respect to such patents shall be determined at Kodak's
sole
discretion.
ARTICLE
8
REPRESENTATIONS
AND WARRANTIES
8.01
EXCEPT AS EXPRESSLY SET FORTH HEREIN, NO RIGHTS WITH RESPECT TO ANY PATENTS
OR
OTHER INTELLECTUAL PROPERTY RIGHTS ARE TRANSFERRED OR GRANTED. EXCEPT AS
OTHERWISE EXPRESSLY PROVIDED FOR IN THIS AGREEMENT, NEITHER PARTY NOR ITS
AFFILIATES MAKE ANY WARRANTIES, EXPRESS OR IMPLIED, REGARDING ANY OF THE
INTELLECTUAL PROPERTY OR RIGHTS TRANSFERRED TO THE OTHER PARTY, INCLUDING
WARRANTIES AS TO THE FITNESS, MERCHANTABILITY, VALIDITY, NONINFRINGEMENT,
FREEDOM FROM ERRORS, OR CONDITION OF THE INTELLECTUAL PROPERTY, MATERIAL, RIGHTS
OR TECHNICAL INFORMATION OR AS TO ANY OTHER MATTER. NOTWITHSTANDING THE
FOREGOING, SELLER REPRESENTS AND WARRANTS {i) THAT IT IS THE SOLE AND EXCLUSIVE
OWNER OF THE ASSIGNED PATENT, AND HAS THE RIGHT TO ASSIGN THE ENTIRE RIGHT,
TITLE AND INTEREST IN THE ASSIGNED PATENT EXCEPT THE PARTIES ACKNOWLEDGE THAT
THE ASSIGNED PATENT MAY BE SUBJECT TO CERTAIN SECURITY INTERESTS AS MORE
PARTICULARLY SET FORTH AND DESCRIBED IN ATTACHED EXHIBIT C, THE ENTIRETY OF
WHICH SECURITY INTERESTS SHALL TERMINATE AND BE RELEASED ON OR BEFORE THE
EFFECTIVE DATE AS DESCRIBED IN EXHIBIT C; (ii) TO THE KNOWLEDGE OF SELLER,
THE
ASSIGNED PATENT HAS BEEN FILED,
6
PROSECUTED
AND MAINTAINED IN ACCORDANCE WITH ALL LEGAL REQUIREMENTS; (iii) AND THE ASSIGNED
PATENT IS NOT SUBJECT TO ANY LICENSES OR ANY OTHER ENCUMBRANCES EXCEPT AS
PROVIDED IN THE LICENSE AGREEMENT TO KODAK AND IN CLAUSE (i) ABOVE; (iv) THE
CONSUMATION OF THE TRANSACTION CONTEMPLATED BY THIS AGREEMENT WILL NOT CONFLICT
WITH ANY CONTRACTS OR AGREEMENTS OR ANY OTHER INSTRUMENTS TO WHICH SELLER OR
ANY
OF ITS AFFILIATES IS A PARTY; (v) THERE ARE NO PENDING OR THREATENED PATENT
LITIGATIONS RELATING TO THE ASSIGNED PATENT OR ANY CHALLENGES TO THE VALIDITY,
OWNERSHIP, INVENTORSHIP OR ENFORCEMENT OF THE ASSIGNED PATENT, AND TO THE
KNOWLEDGE OF SELLER THERE IS NO SUBSTANTIAL BASIS THEREFOR; (vi) NO PAYMENT
OTHER THAN THE PAYMENT SET FORTH IN SECTION 3.01 HEREOF IS DUE TO SELLER OR,
TO
THE KNOWLEDGE OF SELLER, ANY OTHER ENTITY, WITH RESPECT TO THE RIGHT TO USE
OF
THE ASSIGNED PATENT; AND (viii) THE ASSIGNED PATENT IS NOT SUBJECT TO ANY RIGHTS
OF ANY U.S. OR NON-U.S. GOVERNMENT.
ARTICLE
9
INDEMNIFICATION
9.01
Seller shall indemnify, defend and hold Kodak or any of its Affiliates harmless
against any and all claims asserted within twelve (12) months after the
Effective Date and related liabilities, losses, damages, fines, judgments and
penalties, including related costs and expenses (including reasonable attorneys'
fees and disbursements) (collectively "Damages")
arising
directly or indirectly
from Seller's breach of any representation, warranty or obligation under this
Agreement,
provided
that Kodak shall give Seller prompt notice of any such action, Kodak shall
cause
its employees and agents to reasonably cooperate with Seller and its legal
representatives in the investigation or defense of such action, and Kodak shall
permit Seller to settle any such action, claim or liability and agrees to the
control of such defense or settlement by
Seller,
provided, that such settlement does not materially adversely affect Kodak's
rights hereunder or impose any material
obligations on Kodak in addition to those set forth herein. Kodak shall have
the
right, but
not the
obligation, to be represented by counsel of its own selection at its own
expense.
7
Notwithstanding
anything to the contrary contained in this Agreement, the rights set forth
in
this Paragraph 9.01 shall be Kodak's sole and exclusive remedies against Seller
with respect to third party claims arising directly or indirectly from Seller's
breach of any representation, warranty or obligation under this
Agreement.
ARTICLE
10
TERM
AND TERMINATION
10.01
This Agreement shall expire or terminate only under the following circumstances:
(a) expiration of its own accord upon the expiration of the last right assigned
hereunder; or (b) in the event that a Party (the "Breaching Party") is in breach
of a material term or condition of this Agreement and fails to cure such breach
within sixty (60) days after receiving written notice specifying the nature
of
the alleged breach. If Seller is the Breaching Party, ownership of the Assigned
Patent shall remain vested in Kodak, and any license to the Seller under the
Licensed Patent may be terminated immediately at the election of
Kodak.
10.02
Articles 5, 7, 8, 9, and 10 shall survive any termination or expiration of
this
Agreement as shall all Articles and Paragraphs in which and to the extent
survival is expressly provided for in this Agreement.
ARTICLE
11
MISCELLANEOUS
11.01
This Agreement may not be amended or waived except in a writing executed by
the
Party against which such amendment or waiver is sought to be enforced. No course
of dealing between or
among
any Parties having any interest in this Agreement will be deemed effective
to
modify or
amend
any part of this Agreement or any rights or obligations of any Party under
or by
reason of this Agreement.
11.02
All
notices, demands and other communications to be given or delivered under or
by
reason of the provisions of this Agreement will be in writing and will be deemed
to have been given when personally delivered or ten (10) business days after
being mailed by first class mail, return
receipt requested, three (3) business days if sent by an international courier
express service,
or when
receipt is acknowledged, if sent by facsimile, telecopy or other electronic
transmission
8
device.
Notices, demands and communications to Seller and Kodak will, unless another
address is
specified in writing, be sent to the address indicated below, or to such other
person, address or telecopy number as any of the foregoing may have designated
by giving notice hereunder:
If to Seller: | eMAGIN
CORPORATION
00000 XX 0xx Xxxxxx Xxxxx 0000
Xxxxxxxx,
XX 00000 Attention: Xxxx Xxxxxxx
Title:
Chief Financial Officer
Tel.
(000) 000-0000 FAX (000) 000-0000
|
|
And to: | Xxxxxxx
Xxxxxxxx, Esq.
Sichenzia
Xxxx Xxxxxxxx Xxxxxxx LLP 00 Xxxxxxxx
Xxx
Xxxx, Xxx Xxxx 00000
Tel.
(000) 000-0000
Fax
(000) 000-0000
|
|
If to Kodak: | XXXXXXX
KODAK COMPANY
0000
Xxxx Xxxxxx
Xxxxxxxxx,
Xxx Xxxx 1.4650-2142
Attention:
General Manager, OLED Systems Tel. (000) 000-0000
FAX
(000) 000-0000
|
|
And to: | XXXXXXX
KODAK COMPANY 000 Xxxxx Xxxxxx
Xxxxxxxxx,
Xxx Xxxx 00000
Attention:
General Counsel
Tel.
(000) 000-0000
FAX
(000) 000-0000
|
9
11.03
This Agreement and all of the provisions hereof will be binding upon and inure
to the benefit
of the Parties and their respective successors and permitted assigns. Subject
to
the terms of this
Agreement, either Party may freely assign or transfer the rights or licenses
granted to it under this
Agreement, provided that any such assignee agrees in writing to be bound by
this
Agreement
as if it
were a Party hereto and shall not relieve the assignor of any of its obligations
under this Agreement.
11.04
This Agreement is for the benefit of the Parties and their permitted assigns
and
nothing herein
expressed or implied shall give or be construed to give any Person, other than
the Parties
and such
assigns, any legal or equitable rights under this Agreement.
11.05
Whenever possible, each provision of this Agreement will be interpreted in
such
manner as to
be
effective and valid under applicable law, but if any provision of this Agreement
is held to be prohibited
by or invalid under applicable law, such provision will be ineffective only
to
the extent
of such
prohibition or invalidity, without invalidating the remainder of such provision
or the
remaining
provisions of this Agreement.
11.06
This Agreement and the exhibits hereto contain the complete agreement between
the Parties
and supersede any prior understandings, agreements or representations by or
between the
Parties,
whether written, oral, or implied, which relate to the subject matter
hereof.
11.07
This Agreement may be executed by exchange of one or more counterparts, any
one
of which need not contain the signatures of more than one Party, but all such
counterparts taken together will constitute one and the same
instrument.
11.08
The
internal law, without regard to conflicts of laws principles, of the State
of
New York will
govern all questions concerning the construction, validity and interpretation
of
this Agreement
and the
performance of the obligations imposed by this Agreement. Each of the Parties
hereby irrevocably consents to the jurisdiction of the Supreme Court of New
York
in Monroe County, New York and U.S. Federal Courts for the Western District
of
New York, and hereby agree that process
may be served in the manner provided herein for giving of notices or otherwise
as allowed
by New
York state or U.S. federal law. Either Party may seek injunctive or other forms
of equitable relief at any time from any court of competent
jurisdiction.
10
11.09
The
headings in this Agreement are inserted for convenience only and shall not
be
used in the interpretation of this Agreement.
11.10
No
Party has relied on any representation or warranty of any kind in entering
into
this Agreement, except for those representations and warranties expressly set
forth herein.
11.11
No
rights or licenses are granted except as expressly set forth in this
Agreement.
11.12
Kodak and Seller represents and warrants that it has been fully advised and
represented by legal
counsel during the negotiation, drafting, and execution of this Agreement and
this Agreement
shall be
deemed to have been drafted equally by the Parties.
11.13
Seller agrees to, at no charge to Kodak, execute further conveyance instruments
as may be necessary or desirable to evidence the transfer of ownership of the
Assigned Patent to Kodak, or the original ownership of the Assigned Patent
on
the part of Seller.
IN
WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed
by
their
duly
authorized representatives.
eMAGIN
CORPORATION
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|
|
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By: | /s/ K.C. Park | |
K.C. Park |
||
Title: CEO / President |
XXXXXXX
KODAK COMPANY
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By: | /s/ Xxxxx X. Xxxxxxx | |
Name:Xxxxx
X. Xxxxxxx
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Title: Vice President |
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