EXHIBIT 10.20
AMENDMENT NO. 2
TO
LICENSE AGREEMENT
This Amendment No. 2 to License Agreement is made and entered into as
of April 1, 1999 by and between Toshiba Corporation, a corporation of Japan,
having its principal office at 1-1, Xxxxxxxx 0-Xxxxx, Xxxxxx-Xx, Xxxxx 000-0000
Xxxxx (hereinafter called "TOSHIBA") and SmartDisk Corporation, a corporation of
the State of Delaware, the United States, having its principal office at 0000
Xxxxxxxxxx Xxxxxx, Xxxxxx, Xxxxxxx 00000 (hereinafter called "SDC").
WITNESSETH:
WHEREAS, Toshiba and SDC wish to further amend that certain License
Agreement between them dated May 26, 1998, as subsequently amended by Amendment
No. 1 dated September 23, 1998 (the "LICENSE AGREEMENT").
NOW, THEREFORE, in consideration of the premises and mutual covenants
hereinfafter contained, the parties agree as follows:
1. Section 2.1 of Article 2 "Licenses" of the License Agreement shall
be amended and restated to read in its entirety as follows:
2.1 Toshiba hereby grants to SDC, during the term of this Agreement, a
fully-paid, non- exclusive, non-transferable and non-assignable license
under the Licensed Patents, without the right to grant sublicenses, to
make, have made, use, offer for sale, sell, have sold or otherwise
dispose of the Licensed Products in all countries of the world.
2. Article 3 "Compensation" of the License Agreement shall be amended
and restated to read in its entirety as follows:
3.1 In consideration of the license granted to SDC hereunder, SDC shall
issue to Toshiba two hundred thousand (200,000) shares of Common Stock
of SDC (the "STOCK"). Upon its issuance, the Stock shall be fully paid
and nonassessable and shall be issued free and clear of all liens and
other encumbrances.
3.2 Toshiba hereby agrees that, during the period of duration (up to,
but not exceeding, one hundred eighty (180) days) as specified by SDC
and an underwriter of Common Stock or other securities of SDC,
following the date of the final prospectus distributed in connection
with a registration statement of SDC filed under the Securities Act of
1933, as amended (the "ACT"), it shall not, to the extent requested by
SDC and such underwriter, directly or indirectly sell, offer to sell,
contract to sell (including, without limitation, any short sale), grant
any option to purchase or otherwise transfer or dispose of (other than
to donees who agree to be similarly bound) any securities of SDC held
by it at any time during such period except Common Stock included in
such registration.
SmartDisk Corporation
Amendment No. 2 to License Agreement
Page 2
3.3 In order to enforce the foregoing covenant, SDC may impose
stop-transfer instructions with respect to the Common Stock held by
Toshiba (and the shares or securities of every other person subject to
the foregoing restriction) until the end of such period, and Toshiba
agrees that, if so requested, it will execute an agreement in the form
provided by the underwriter containing terms which are essentially
consistent with the provisions of Section 3.2.
3.4 The Stock being acquired by Toshiba hereunder is being acquired for
investment for Toshiba's own account, not as a nominee or agent, and
not with a view to the resale or distribution of any party thereof, and
Toshiba does not have any contract, undertaking, agreement or
arrangement with any person to sell, transfer or grant participations
in, or otherwise distribute the Stock or any present intention to do
the same.
3.5 Toshiba acknowledges and agrees that the Stock being acquired by
Toshiba shall be subject to the restrictions on transfer set forth in
the Joint Venture Agreement entered into by Toshiba, Phoenix House
Investments, LLC and SDC as of February 24, 1998 and Toshiba hereby
consents to a legend on the certificates evidencing the Stock to such
effect, together with other legends required by the Act and the
securities laws of any other jurisdiction.
3. Except as amended hereby, all terms and provisions of the License
Agrement remain in full force and effect.
IN WITNESS WHEREOF, each of the parties hereto has caused this
agreement to be executed in duplicate as of the date first above written by its
duly authorized officer or representative.
TOSHIBA CORPORATION SMARTDISK CORPORATION
By: /s/ Xxxxxxx Xxxxxx By: /s/ Xxxxxxx X. Xxxxxxxxx
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Name: Xxxxxxx Xxxxxx Name: Xxxxxxx X. Xxxxxxxxx
Title: General Manager, Strategic
Marketing Div. Semiconductor Title: President and Chief Executive
Company Officer
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