ACIS – SIMTROL TECHNOLOGY AGREEMENT
EXHIBIT
10.1
THIS
TECHNOLOGY AGREEMENT (“Agreement”) is made this March 5, 2009 (the “Effective
Date”) by and between ACIS, Inc., a Texas corporation, having principal offices
at 0000 Xxxxxx Xxxxx, Xxxxx 000, Xxx Xxxxxxx, Xxxxx 00000 (“ACIS”), and Simtrol,
Inc., having principal offices at 000 Xxxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxxx, XX
00000 (“Simtrol”).
For good
and valuable consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties agree as follows:
1. DEFINITIONS. All
capitalized terms used herein shall have the meanings set forth
below.
1.1 CycleFreeTM Kernel means the
Xxxxxx-event-kernel and any implementation thereof (including single or multiple
stack and polling or non-polling), in source and object code forms, as well as
any Derivatives thereof created by or for ACIS or Simtrol during the term of
this Agreement. CycleFreeTM Kernel
means the intellectual property represented by U.S. Patent Number 6,035,321, and
is sometimes referred to herein as the ACIS Kernel, or the
Kernel. The Kernel implements event scheduling by use of an
underlying multi-threading library.
1.2 ACIS/MS Superkernel
means an implementation of the CycleFreeTM Kernel
based on top of an underlying Microsoft Platform that provides threads and
synchronization primitives.
1.3 ACIS Tools means the
tools, class libraries, utilities and other programs developed or acquired by
ACIS relating to the CycleFreeTM Kernel
(including the W++ preprocessor), as well as any Derivatives thereof created by
or for ACIS during the term of this Agreement.
1.4 ACIS Technology means
the ACIS owned CycleFreeTM Kernel,
ACIS Tools, associated programmer and/or user documentation, and all related
Intellectual Property Rights.
1.5 Simtrol Products
means all computer programs developed or marketed by Simtrol incorporating the
ACIS Technology, in whole or part, including applications, operating system
control systems, utilities, or otherwise.
1.6 Simtrol Technology License
Rights means the right to perform CycleFreeTM
Development using implementations of the CycleFreeTM Kernel,
but does not include any other technology, intellectual property or works of
authorship owned by Simtrol or its other suppliers.
1.7 Simtrol Tools means
the tools, class libraries, utilities and other programs developed or acquired
by Simtrol relating to the CycleFreeTM Kernel,
as well as any Derivatives thereof created by or for Simtrol during the term of
this Agreement.
1.8 CycleFreeTM Development means
use of the CycleFreeTM Kernel
and the ACIS Tools for the construction of programs with a cycle-free invocation
structure.
1.9 Derivatives
means: (i) for material subject to copyright protection, any work
that is a modification of one or more pre-existing works of the ACIS Technology,
such as a revision, modification, translation, abridgement, condensation,
expansion, collection, compilation or any other form in which such pre-existing
works may be recast, transformed or adapted; (ii) for patentable or patented
materials, any adaptation, subset, addition, improvement or combination of the
Intellectual Property Rights of the ACIS Technology, and (iii) for any material
subject to trade secret protection, any new material, information or data from
the ACIS Technology, including new material which may be protectable by
copyright, patent or other proprietary rights. Notwithstanding the above,
Derivatives does not mean an application or other work of authorship created by
Simtrol or its other suppliers.
1.10 Intellectual Property
Rights means all worldwide (a) patents, patent applications and patent
rights (including without limitation U.S. Patent No. 6,035,321 (the “321
Patent”) and all foreign counterparts thereto); (b) rights associated with works
of authorship, including copyrights, copyrights applications, copyrights
restrictions, mask work rights, mask work applications and mask work
registrations; (c) rights relating to the protection of trade secrets and
confidential information; (d) rights analogous to those set forth herein and any
other proprietary rights relating to intangible property; (e) any “moral” or
equivalent rights (including, without limitation, rights of attribution,
integrity, disclosure, and withdrawal); and (f) divisions, continuations,
renewals, reissues and extensions of the foregoing (as applicable) now existing
or hereafter filed, issued, or acquired.
1.11 Microsoft Platform
means Windows 2000, Windows XP, Windows CE, Windows NT, Windows Me, VISTA, all
predecessor or successor versions thereof and any other operating system,
embedded operating system or development platform developed or marketed by
Microsoft Corporation prior to or during the term of this
Agreement.
2. INTELLECTUAL PROPERTY
RIGHTS
2.1 Intellectual Property
Rights. The parties agree that, except for a prior license by
ACIS to Simtrol dated September 27, 2001 (“Previous Agreement”), ACIS owns all
of the Intellectual Property Rights, and Derivatives, associated with the ACIS
Technology. The Parties further agree that this Agreement replaces
and supersedes the Previous Agreement as of the Effective Date.
2.2 Partial Grant of
Intellectual Property Rights. Concurrently with the issuance of stock as
set forth in paragraph 4.1, ACIS gives, grants, assigns, transfers and conveys
to Simtrol, and to any entity acquiring Simtrol, the right to use the ACIS
Technology for all current and future Simtrol Products if, and only if, the
CycleFreeTM Kernel
library is statically linked with the code of Simtrol, and not distributed as a
separate dll library. Simtrol may use the CycleFreeTM Kernel
libraries, with the right to modify them, as needed, for portability and bug
fixes, in single and multi-stack implementations, without restrictions regarding
the underlying platform. The CycleFreeTM Kernel
libraries may not be extended or modified to work in a stack-less
implementation. Purchasers of Simtrol Products are sublicensed to use
those Simtrol Products, subject to the limitations stated herein.
2.3 Intent. The intent of
this conveyance is to grant the ACIS Technology to Simtrol as a platform
independent library for the execution of programs on top of an operating system
that provides multi-threading library support. This includes Windows,
Linux, vxWorks and most other O/S platforms, and this limitation will not
significantly encumber Simtrol’s use of the library. ACIS retains its
exclusive claim for enhancements that might render the CycleFree™ methodology
independent of any underlying operating system.
2.4 Preprocessor. The
language preprocessor, that is currently licensed for use to Simtrol, is, and
continues to be available to, Simtrol, without an annual or other license fee or
charge, as well as any acquiring entity.
2.5 Enhancements. Simtrol
agrees not to make any functional enhancement to the CycleFree™ Kernel which
would render the Kernel independent of an underlying multithreaded operating
system (“Independent Enhancements”). Such Independent Enhancements,
along with any and all patentable claims to future enhancements related to the
CycleFree™ methodology, remain the intellectual property of ACIS,
Inc.
2.6 CycleFree™ ACIS
retains exclusive ownership of the term “CycleFree™” and Simtrol shall only use
or refer to that term in any marketing or collateral materials as necessary to
protect ACIS’ intellectual property rights. Further use shall be
specifically licensed under the terms of a separate agreement.
2.7 Future Claims.
Simtrol warrants that it will make no future claims on the CycleFree™
programming language technology, nor will it separately market the tools for use
by third parties as a general purpose programming methodology.
3. DELIVERY
3.1 ACIS Technology.
Simtrol has been provided with source and object code copies of CycleFreeTM Kernel,
ACIS Technology and all related tools, as well as electronic and hardcopy copies
of associated documentation.
3.2 Updates. ACIS will
keep Simtrol informed of all newly-developed ACIS Technology. Except for the
foregoing, ACIS has no obligation to provide support or maintenance to Simtrol
with respect to the ACIS Technology.
4. CONSIDERATION
4.1 Consideration. For
and in consideration and subject to the terms and conditions of this Agreement,
Simtrol agrees to pay and shall grant to ACIS fully-vested options (“Options”)
to acquire One-Hundred Fifty Thousand (150,000) shares (“Shares”) of Simtrol
common stock at an exercise price of $0.15 per Share. The Options are
granted pursuant to Simtrol’s 2002 Equity Incentive Plan
(“Plan”). The grant of the Options to ACIS shall be deemed to be a
nonstatutory stock option (within the meaning of the Plan) granted for the
services performed by ACIS in creating and conveying to Simtrol the right to use
the ACIS Technology pursuant to the terms of this Agreement. ACIS
agrees to sign and deliver to Simtrol such reasonable documentation as shall be
deemed by Simtrol to be reasonably appropriate and necessary in connection with
the grant of the Options. Simtrol’s Compensation Committee of its
Board of Directors has approved the authorization and grant of the Options
pursuant to the requirements of the Plan. ACIS acknowledges and
agrees that an investment in the Options and the Shares issuable upon exercise
of the Options involves a high risk of loss of the entire value of the Shares,
and that Simtrol has made no promise or representation that the Shares issuable
upon exercise of the Options will increase in value.
4.2 Additional
Consideration. Simtrol further agrees that ACIS shall have
access to, and may use, the modifications to the source code of the
CycleFreeTM Kernel
that Simtrol develops, and has developed, for its own purposes, as long as ACIS’
use does not compete with products being marketed by Simtrol at the time ACIS
receives the code.
4.3 Taxes. Each party shall be responsible for any
and all taxes, duties or other government-imposed fees imposed on such party as
a result of the transactions contemplated by this Agreement. Such
taxes shall be the sole responsibility of the party against whom such taxes may
be levied. ACIS understands that the grant and exercise of the
Options, and the sale of Shares obtained through the exercise of the
Options, may result in tax
liability. ACIS represents that it has consulted with, or will
consult with, its tax advisor and further acknowledges that it is not relying on
Simtrol for any tax, financial or legal
advice. ACIS specifically agrees that Simtrol has made no representation as to any
particular tax treatment with respect to the Options or the underlying Shares.
5. PROMOTION
AND PROTECTION OF CYCLEFREETM
TECHNOLOGY
5.1 Publicity
and Promotion. Simtrol will xxxx Simtrol
Products as appropriate to protect ACIS’s CycleFreeTM
trademarks and its U.S. Patent Number 6,035,321.
5.2 Protection
and Enforcement. Simtrol will notify
ACIS of any activities or threatened activities of any third party of which
Simtrol becomes aware that infringes or will infringe any Intellectual Property
Rights in the ACIS Technology, and Simtrol will cooperate with and generally
assist ACIS, at ACIS' expense, in taking such action as may be necessary or
desirable against any such infringement. ACIS may, but shall not be
required to, institute an action against the infringer at ACIS' sole cost and
expense. If ACIS elects not to commence an action against an
infringer, Simtrol may, but shall not be required to, institute such an action
at Simtrol's sole cost and expense on ACIS’s behalf and ACIS will fully
cooperate in any such action. Any recoveries obtained by either ACIS
or Simtrol as a result of instituting an action against such an infringer shall
be first applied to reimburse the out-of-pocket costs and expenses to the party
responsible for initiating such action, and the balance of such recoveries shall
be shared equally by ACIS and Simtrol.
6. PROPRIETARY
NOTICES
6.1 Trademarks. ACIS
grants to Simtrol a nonexclusive, worldwide license to use ACIS’ trademarks,
trade names, and logos (the "ACIS Trademarks"), as updated by ACIS and agreed to
in writing by Simtrol from time to time, in connection with the sale and license
of Simtrol Products as provided in this Agreement, as necessary to protect ACIS
intellectual property rights. If any of the ACIS Trademarks are to
used in conjunction with Simtrol's or another party's trademarks, then the ACIS
Trademarks shall be presented legibly, but nevertheless separated from the
other, so that each appears to be a trademark in its own right, distinct from
the other xxxx.
6.2 Notices. Simtrol
will not remove any proprietary or confidential legends, markings or copyright
or other notices that ACIS has placed upon or within the Simtrol Technology
License Rights and will reproduce such markings on any copies made by Simtrol in
accordance with this Agreement. Without limiting the foregoing, Simtrol agrees
to include in all Simtrol Products incorporating Simtrol Technology License
Rights, that are subject to the 321 Patent and/or any other ACIS patent, a
patent notice in such form as specified by the United States Patent and
Trademark Office.
7. REPRESENTATIONS AND
WARRANTIES
7.1 Representations and
Warranties of ACIS. ACIS hereby represents and warrants to
Simtrol as follows:
(a) ACIS
represents and warrants that all materials and services provided by ACIS
hereunder including, without limitation, the Simtrol Technology License Rights,
are either owned or properly licensed by ACIS and the use thereof by Simtrol,
its contractors or customers do not and will not infringe any proprietary rights
of any third party. As of the date of this Agreement, ACIS represents
that it has not received any notice or claim from a third party alleging that
any of ACIS Technology infringes any Intellectual Property Rights of such third
party.
(b) ACIS represents and warrants that it
has the full power to enter into this Agreement, to carry out its obligations
under this Agreement and to grant the rights and licenses granted to Simtrol in
this Agreement.
7.2 Simtrol
Warranty. Simtrol represents and warrants that it has the full
power to enter into this Agreement and to carry out its obligations under this
Agreement.
8. INDEMNIFICATION
8.1 Infringement. ACIS
shall defend, indemnify and hold harmless Simtrol and its officers, directors,
employees, shareholders, customers, agents, successors and assigns from and
against any and all loss, damage, settlement or expense (including legal
expenses), as incurred, resulting from or arising out of (i) any breach of ACIS’
warranties under this Agreement; or (ii) any claim which alleges that any
Simtrol Technology License Rights provided to Simtrol hereunder, or the exercise
of Simtrol’s rights as provided under this Agreement, infringes upon,
misappropriates or violates any patents, copyrights, trademarks or trade secret
rights or other proprietary rights of any third party. Simtrol will
provide ACIS with prompt written notice of the claim and permit ACIS to control
the defense, settlement, adjustment or compromise of any such
claim. Simtrol may employ counsel at its own expense to assist it
with respect to any such claim; provided, however, that if such counsel is
necessary because of a conflict of interest of either ACIS or its counsel or
because ACIS does not assume control, ACIS will bear the expense of such
counsel. Simtrol shall have no authority to settle any claim on
behalf of ACIS.
8.2 ACIS’
Efforts. If the exercise of Simtrol’s or a customer’s rights
is enjoined or becomes the subject of a claim of infringement, ACIS shall use
all reasonable efforts to make such replacements or modifications, as are
necessary to Simtrol’s and its customers’ continued exercise of its rights
hereunder without infringement. If ACIS is unable to achieve either
of the foregoing within thirty (30) days (or such longer period as determined by
Simtrol in good faith) after the holding of infringement or the entry of the
injunction, as applicable, then Simtrol may cancel Options to purchase that
number of Shares that have an aggregate exercise price equal to or less than the
actual costs or fees incurred by Simtrol in restoring the ability to exercise
its or its customers' rights hereunder without infringement. This
shall be the sole remedy of Simtrol.
8.3 Exceptions. ACIS
shall have no obligation under paragraphs 8.1 and 8.2 to the extent
any claim of infringement or misappropriation results from use of the Simtrol
Technology License Rights in combination with any other unique products, other
than the Simtrol Products, not intended by ACIS, or from any alteration or
modification of the Simtrol Technology License Rights not provided or authorized
by ACIS, if the infringement would not have occurred but for such combination,
alteration or modification.
9. DEFAULT BY
SIMTROL
9.1 Default by
Simtrol. Simtrol shall be in default under this Agreement if
it shall fail to make the required Options transfer to ACIS within 15 business
days of the execution of this Agreement, or Simtrol shall be in default of any
other material term, provision or covenant of this Agreement, and such material
default is not cured within thirty (30) days after written notice thereof to
Simtrol.
9.2 Remedies for Simtrol
Default. Upon the occurrence of any default, ACIS shall have the right to
assert all rights and remedies available under applicable law other than
termination of this Agreement or the Simtrol Technology License Rights of
Simtrol and its customers.
10. TERM AND
TERMINATION
10.1 Effective
Date. This Agreement shall be effective from the Effective
Date, and shall remain in force in perpetuity unless and until terminated by
mutual agreement or otherwise as provided herein.
10.2 Survival. Section
8 and the Simtrol Technology License Rights of Simtrol and its customers shall
survive any termination of this Agreement.
11. MISCELLANEOUS
11.1 Force
Majeure. No party shall be liable to another for delays or
failures in performance resulting from causes beyond the reasonable control of
that party, including, but not limited to, acts of God, labor disputes or
disturbances, material shortages or rationing, riots, acts of war, governmental
regulations, communication or utility failures, or casualties.
11.2 Import and
Export. The parties agree to comply with all applicable export
laws and regulations of the United States. ACIS shall provide all
information under its control necessary or useful for Simtrol to obtain any
export or import licenses required for Simtrol to ship or receive Simtrol
Technology.
11.3 Relationship of
Parties. ACIS and Simtrol are independent entities under this
Agreement and no other relationship is intended, including a partnership,
franchise, joint venture, agency, employer/employee, fiduciary, master/servant
relationship, or other special relationship. Neither party shall act
in a manner that expresses or implies a relationship other than that of
independent entities, nor bind the other party.
11.4 No Third Party
Beneficiaries. Unless otherwise expressly provided, no
provisions of this Agreement are intended or shall be construed to confer upon
or give to any person or entity other than Simtrol and ACIS any rights, remedies
or other benefits under or by reason of this Agreement. However,
Simtrol is entitled to grant sublicenses to its customers that purchase Simtrol
Products.
11.5 Attorneys'
Fees. In addition to any other relief awarded, the prevailing
party in any action arising out of this Agreement shall be entitled to its
reasonable attorneys' fees and costs.
11.6 Notices. Any
notice required or permitted to be given under this Agreement shall be in
writing and shall be personally delivered or sent by a reputable overnight mail
service (e.g., Federal Express), or by facsimile confirmed by first class mail
(registered or certified). Notices will be deemed effective the next
day if sent by overnight mail, or the same day if sent by facsimile and
confirmed as set forth above.
11.7 Assignment. Simtrol
or ACIS may assign its rights or delegate its obligations hereunder, either in
whole or in part, whether by operation of law or otherwise, without the prior
written consent of the other. The rights and liabilities of the
parties under this Agreement will bind and inure to the benefit of the parties'
respective successors and assigns.
11.8 Waiver and
Modification. Failure by any party to enforce any provision of
this Agreement will not be deemed a waiver of future enforcement of that or any
other provision. Any waiver, amendment or other modification of any
provision of this Agreement will be effective only if in writing on paper and
signed by the parties.
11.9 Severability. If
for any reason a court of competent jurisdiction finds any provision of this
Agreement to be unenforceable, that provision of the Agreement will be enforced
to the maximum extent permissible so as to effect the intent of the parties, and
the remainder of this Agreement will continue in full force and
effect.
11.10 Controlling
Law. This Agreement and any action related thereto shall be
governed, controlled, interpreted and defined by and under the laws of the State
of Texas, without regard to the conflicts of laws provisions
thereof.
11.11 Entire
Agreement. This Agreement, including all exhibits which are
incorporated herein by reference, constitutes the entire agreement among the
parties with respect to the subject matter hereof, and supersedes and replaces
all prior and contemporaneous understandings or agreements, written or oral,
regarding such subject matter.
11.12 Duplicates. This
Agreement is executed in duplicate, each of which shall be an original and
together which shall constitute one and the same instrument.
In
witness whereof, the parties have caused this Agreement to be executed by their
duly authorized representatives, who personally warrant their authority to so
act.
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Simtrol,
Inc.
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ACIS,
INC.
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By:
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/s/
Xxxxxx Xxxxxx
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By:
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/s/
Xxxxxx X. Xxxx
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Xxxxxx
Xxxxxx, CEO
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Xxxxxx
X. Xxxx, Xx., President
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| Date: 03/09/2009 | Date: 03/06/2009 | ||
