EXHIBIT 10.9
TECHNOLOGY LICENSE AGREEMENT
THIS TECHNOLOGY LICENSE AGREEMENT (the "Agreement") is made between Iteris,
Inc., a Delaware corporation ("Licensor"), and Odetics, Inc., a Delaware
corporation ("Licensee"), effective as of ______, 2000 (the "Effective Date").
RECITALS
WHEREAS, Licensor is engaged in the business of designing, developing and
marketing software based products and services to improve the safety and
efficiency of vehicle transportation, including, without limitation, video
sensor products and transportation management and traveler information systems
for the intelligent transportation systems industry ("Licensor's Business"); and
WHEREAS, Licensor and Licensee have entered into a Separation and
Distribution Agreement (the "Separation and Distribution Agreement") pursuant to
which Licensee will spin-off its ownership interest in Licensor to Licensee's
stockholders (the "Spin-Off") and has transferred to Licensor all of the assets
relating to Licensor's Business, including, without limitation, all intellectual
property relating to Licensor's business; and
WHEREAS, Licensee desires to obtain and Licensor desires to grant a
nonexclusive perpetual, worldwide, royalty-free license to use, manufacture,
publish, reproduce, publicly display, publicly perform, modify, enhance,
distribute, sell, sublicense, market and otherwise exploit by any means or
methods now or hereafter known, the intellectual property relating to Licensor's
Business, subject to the limitations set forth herein; and
WHEREAS, the parties desire to confirm herein their license arrangements
and their respective ownership rights.
AGREEMENT
NOW THEREFORE, in consideration of the premises hereof, and the mutual
obligations herein, the parties hereto, intending to be legally bound, hereby
agree as follows:
1. License; Delivery.
1.1 License. Subject to the terms and conditions of this Agreement,
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Licensor hereby grants to Licensee, and Licensee accepts from Licensor, a
nonexclusive perpetual, worldwide, royalty-free license to use, manufacture,
publish, reproduce, publicly display, publicly perform, modify, enhance,
distribute, sell, sublicense, market and otherwise exploit by any means or
methods now or hereafter known, all domestic and foreign patents, copyrights,
software (in object code and source code form) mask works, trade secrets,
inventions and other proprietary rights relating to Licensor's Business that
were transferred to Licensor by Licensee pursuant to the Separation and
Distribution Agreement (the "Technology") and all manuals and other related
documentation then prepared by or on behalf of Licensor, under the trade marks
or trade names designated by Licensee, in its sole and absolute discretion. The
Technology specifically excludes all trademarks, service marks and tradenames of
Licensor.
1.2 License Restrictions. Notwithstanding the license granted pursuant
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to Section 1.1 of this Agreement, the license shall not include and Licensee
shall be prohibited from using the
Technology in any manner whatsoever that is related to the Licensor's Business
or the intelligent transportation systems industry, either directly or
indirectly, without the express written consent of Licensor. The license shall
be nonexclusive and Licensor retains the right to use, publish, reproduce,
modify, enhance, distribute, sell, sublicense, market and otherwise exploit the
Technology in any manner whatsoever.
1.3 On a periodic basis to be mutually agreed, Licensee shall report
its utilization of the Technology to Licensor.
2. Title and Ownership Rights. All right, title and interest in and to the
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Technology and all related documentation, and all copyrights, patents,
trademarks, service marks or other intellectual property or proprietary rights
related thereto, are and shall remain solely with Licensor. Licensee
acknowledges that no such title to the Technology and related documentation is
granted under this Agreement, and that no such assertion shall be made by
Licensee. Licensee is granted only licenses and rights to the Technology as set
forth herein.
3. Indemnification; Limitation of Liability.
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3.1 Indemnification. Licensee agrees to indemnify and hold Licensor,
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its subsidiaries and affiliates, harmless against any claim, loss, liability or
damage arising out of any claim, whether now existing or hereinafter arising,
related to the use of the Technology by Licensee or to any enhancements,
modifications, updates or derivative works of the Technology developed by
Licensee, including, but not limited to, claims of product defect, whether or
not under warranty.
3.2 Defense of Claims. The indemnifying party shall have the right to
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have sole control of the defense of any such action and all negotiations for its
settlement or compromise; provided, however, that in the event the indemnifying
party notifies the party to be indemnified that it does not intend to conduct
such defense or the indemnifying party fails to conduct such defense on a
diligent and timely basis, the party to be indemnified may conduct the defense
with counsel of its choosing and shall be indemnified by the indemnifying party
for reasonable expenses related thereto. Neither party shall settle any such
claim without the prior written consent of the other, which will not be
unreasonably withheld. Each party agrees to cooperate with the other in the
defense of any claims.
3.3 Limitation of Liability. EACH PARTY DISCLAIMS ALL WARRANTIES,
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EXPRESS OR IMPLIED, INCLUDING THE IMPLIED WARRANTIES OF MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE AND, WITH RESPECT TO THE TECHNOLOGY EXISTING AS
OF THE DATE HEREOF ONLY, ANY AND ALL WARRANTIES OF INFRINGEMENT OR TITLE.
NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY INDIRECT, SPECIAL, INCIDENTAL
OR CONSEQUENTIAL DAMAGES ARISING OUT OF THIS AGREEMENT OR ANY PERFORMANCE
HEREUNDER, EVEN IF SUCH PARTY HAS ADVANCE NOTICE OF THE POSSIBILITY OF SUCH
DAMAGES.
4. Confidentiality.
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4.1 Protection of Confidential Information. Each party will refrain
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from using the other party's Confidential Information except as contemplated
herein, and from disclosing such Confidential Information to any third party
except to employees who participate directly in the
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performance of the receiving party's obligations hereunder. Each party shall
protect and safeguard the Confidential Information of the other party using at
least the same degree of care such party uses to protect its own Confidential
Information of like importance. Each party agrees that all employees and
subcontractors to whom Confidential Information is disclosed will have signed a
confidentiality agreement in form and substance reasonably acceptable to the
disclosing party, copies of which will be provided upon request. Each party
shall be responsible for any breach of this provision by any of its officers,
directors, employees, representatives or agents.
4.2 Confidential Information Defined. For purposes of this Agreement,
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Confidential Information includes any information and data which is, or should
be reasonably understood to be, confidential or proprietary to the disclosing
party, which may include, without limitation, proprietary technical, financial,
personnel, marketing, pricing, sales and/or commercial information with respect
to the products and services of the parties, as well as ideas, concepts,
designs, computer programs (including source code and object code) and
inventions and all record bearing media containing or disclosing such
Confidential Information which are disclosed pursuant to this Agreement.
Confidential Information does not include information (a) already rightfully
known to the receiving party without an obligation to maintain its
confidentiality, (b) independently developed by the receiving party without the
use of any Confidential Information, as evidenced by the written records of the
receiving party, (c) generally known to the public without restriction through
no fault of the receiving party, (d) obtained without restriction from any third
party rightfully empowered to disclose such information, or (e) required to be
disclosed by court order provided diligent efforts are undertaken to limit
disclosure.
4.3 Irreparable Harm. Each party agrees that the unauthorized use or
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disclosure of the other party's Confidential Information may cause irreparable
injury to the party concerned. Accordingly, both parties agree that the remedy
at law for any breach of this Section may be inadequate and, in recognition
thereof, agree that the party suffering from the unauthorized use or disclosure
shall be entitled to injunctive relief to prevent any such breach or the threat
of such a breach.
5. Term and Termination.
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5.1 Term. The term of this Agreement shall commence on the date hereof
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and continue until terminated by mutual agreement of the parties or by either
party as provided herein.
5.2 Termination for Material Default. Either party may terminate this
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Agreement in the event of a breach by the other party of a material
representation, warranty or covenant made in this Agreement by the other party
and such breach is not cured within thirty (30) days after receipt by the other
party of written notice thereof.
5.3 Effect of Termination. Upon termination of the Agreement, Licensee
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shall promptly return to Licensor any and all tangible forms of the Technology,
including source code and object code, if applicable, and all related
documentation. The provisions of Sections 2, 3, 4 and 5 of this Agreement shall
survive any termination.
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6. Miscellaneous.
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6.1 NOTICES. All notices, requests, claims and other communications
hereunder shall be in writing and shall be given or made (and shall be deemed to
have been duly given or made upon receipt) by delivery by hand, by reputable
overnight courier service, by facsimile transmission, or by registered or
certified mail (postage prepaid, return receipt requested) to the respective
parties at the addresses (or at such other address for a party as shall be
specified in a notice given in accordance with this Section 7.1) listed below:
If to Licensee:
Odetics, Inc.
0000 Xxxxx Xxxxxxxxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxx 00000
Attn: Chief Operating Officer
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
If to Licensor:
Iteris, Inc.
0000 Xxxxx Xxxxxxxxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxx 00000
Attn: Chief Executive Officer
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
or to such other address or person as any party may, from time to time,
designate in a written notice given in a like manner. Notice given by hand shall
be deemed delivered when received by the recipient. Notice given by mail as set
out above shall be deemed delivered five (5) calendar days after the date the
same is mailed. Notice given by reputable overnight courier shall be deemed
delivered on the next following business day after the same is sent. Notice
given by facsimile transmission shall be deemed delivered on the day of
transmission provided telephone confirmation of receipt is obtained promptly
after completion of transmission.
6.2 FURTHER ASSURANCES. Subject to the provisions hereof, the parties
hereto shall make, execute, acknowledge, and deliver such other instruments and
documents, and take all such other actions, as may be reasonably required in
order to effectuate the purposes of this Agreement and to consummate the
transactions contemplated hereby. Subject to the provisions hereof, each of the
parties shall, in connection with entering into this Agreement, performing its
obligations hereunder and taking any and all actions relating hereto, comply
with all applicable laws, regulations, orders, and decrees, and promptly provide
the other parties with all such information as they may reasonably request in
order to be able to comply with the provisions of this Agreement.
6.3 ENTIRETY OF AGREEMENT. This Agreement shall constitute the entire
agreement between the parties hereto with respect to the subject matter hereof
and shall supersede all prior agreements and undertakings, both written and
oral, between the parties with respect to the subject matter hereof. This
Agreement may not be amended or modified except by an instrument in writing
signed by, or on behalf of, the parties.
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6.4 WAIVER. The failure of either party in any one or more instances to
insist upon strict performance of any of the terms and conditions of this
Agreement shall not be construed as a waiver or relinquishment to any extent, of
the right to assert or rely upon any such terms or conditions on any future
occasion.
6.5 DISCLAIMER OF AGENCY. This Agreement shall not constitute either
party the legal representative or agent of the other, nor shall either party
have the right or authority to assume, create, or incur any third-party
liability or obligation of any kind, express or implied, against or in the name
of or on behalf of the other party except as expressly set forth in this
Agreement. The relationship of Licensee and Licensor shall be solely that of
contracting parties and no partnership joint venture or other arrangement of any
nature shall be deemed to be created hereby.
6.6 SEVERABILITY. If any term or other provision of this Agreement is
invalid, illegal or incapable of being enforced by any law or public policy, all
other terms and provisions of this Agreement shall nevertheless remain in full
force and effect so long as the economic or legal substance of the transactions
contemplated hereby is not affected in any manner materially adverse to any
party. Upon such determination that any term or other provision is invalid,
illegal or incapable of being enforced, the parties hereto shall negotiate in
good faith to modify this Agreement so as to effect the original intent of the
parties as closely as possible in an acceptable manner in order that the
transactions contemplated hereby are consummated as originally contemplated to
the greatest extent possible.
6.7 GOVERNING LAW. This Agreement shall be governed by and construed and
interpreted in accordance with the laws of the State of California as to all
matters.
6.8 ASSIGNMENT. Neither of the parties may assign or delegate any of its
rights or duties under this Agreement without the prior written consent of the
other party; provided that either party or any of its sublicensees may assign
its rights and obligations under this Agreement in the event of a sale of all or
substantially all of its assets or a merger in which that party or sublicensee
is not the surviving entity. This Agreement shall be binding upon, and shall
inure to the benefit of, the parties hereto and their respective successors and
permitted assigns, by merger, acquisition of assets or otherwise.
6.9 ATTORNEY'S FEES. In the event of any legal proceeding between the
parties arising under this Agreement, the prevailing party in any action shall
be entitled to recover, in addition to any other relief awarded or grants, its
costs and expenses (including reasonable attorney's fees) incurred in any such
proceeding.
6.10 DISPUTE RESOLUTION. If the parties are unable, after good faith
negotiations, which each hereby covenants to undertake, to resolve any dispute
arising between them within fifteen (15) days after notice is given of such
dispute, then the dispute will be referred to arbitration (which the parties
agree is the exclusive means of resolving any such dispute) before one (1)
arbitrator in Orange County, California, or any other place mutually agreed upon
by the parties hereto, in accordance with the applicable rules then in effect of
the Judicial Arbitration and Mediation Service (or any other form of arbitration
mutually acceptable to the parties). Such arbitrator shall be selected by the
mutual agreement of Licensor and Licensee, or if no mutual agreement can be
reached within ten (10) days after the termination of the fifteen day period
referenced above, then such arbitrator shall be appointed by the arbitration
service. The civil discovery statutes of the State of California shall apply to
such arbitration. The determination made
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in accordance with the rules of JAMS (or such other form of arbitration as the
parties may mutually agree) shall be delivered in writing to the parties hereto
and shall be final, binding and conclusive on the parties hereto, and the amount
of the claim, if any, determined to exist shall be a valid claim and no further
remedy shall be available to either party with respect to such dispute and
judgment may be entered upon such decision in accordance with applicable law in
any court having jurisdiction thereof. The arbitration shall include a provision
that the losing party pay the fees and expenses of the arbitrator.
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This Agreement is executed by the parties as of the date indicated above.
LICENSOR: LICENSEE:
ITERIS, INC. ODETICS, INC.
By:_____________________________ By:________________________________
Name: Xxxx Xxxxxxx Name: Xxxxxxx X. Xxxxx
Title: Chief Executive Officer Title: Chief Operating Officer
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