No. TCL-698-93
Revised 1/10/94
LICENSE AGREEMENT
For
ULTRA-WIDEBAND (UWB) IMPULSE RADAR-BASED TECHNOLOGY
FOR AUTOMOTIVE FIELD OF USE
Between
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
and
AMERIGON, INCORPORATED
LLNL Case No. TCL-698-93
Xxxxxxxx Livermore National Laboratory
University of California
X.X. Xxx 000, X-000, Xxxxxxxxx, XX 00000
Technology Transfer Initiatives Program
1-24, 1994
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No. TCL-698-93
TABLE OF CONTENTS
1. Background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
2. Definitions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4
3. License Grant. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7
4. Royalties and Payments . . . . . . . . . . . . . . . . . . . . . . . . . 10
5. Due Diligence. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
6. Progress and Royalty Reports . . . . . . . . . . . . . . . . . . . . . . 13
7. Books and Records. . . . . . . . . . . . . . . . . . . . . . . . . . . . 15
8. Life of the Agreement. . . . . . . . . . . . . . . . . . . . . . . . . . 15
9. Disputes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
10. Termination by THE REGENTS . . . . . . . . . . . . . . . . . . . . . . . 16
11. Termination by the Licensee. . . . . . . . . . . . . . . . . . . . . . . 17
12. Disposition of Licensed Products on Hand upon Termination. . . . . . . . 17
13. Patent Prosecution and Maintenance . . . . . . . . . . . . . . . . . . . 17
14. Use of Names and Trademarks and Nondisclosure of Agreement . . . . . . . 19
15. Limited Warranty . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
16. Patent Infringement. . . . . . . . . . . . . . . . . . . . . . . . . . . 21
17. Waiver . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
18. Assignability. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23
19. Indemnification and Insurance. . . . . . . . . . . . . . . . . . . . . . 23
20. Late Payments. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
21. Notices. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
22. Governing Laws . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
23. Patent Marking . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
24. Government Approval or Registration. . . . . . . . . . . . . . . . . . . 26
25. Export Control Laws. . . . . . . . . . . . . . . . . . . . . . . . . . . 26
26. Force Majeure. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
27. Miscellaneous. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
Exhibit A: "The Regents Intellectual Property Rights". . . . . . . . . . 29
Exhibit B: License Fees and Royalty Rates . . . . . . . . . . . . . . . 30
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LICENSE AGREEMENT FOR
ULTRA-WIDEBAND (UWB) IMPULSE RADAR-BASED TECHNOLOGY
FOR AUTOMOTIVE FIELD OF USE
This Limited Exclusive Agreement is made this 20 day of January, 1994 (the
"Effective Date") between THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
(hereinafter referred to as "THE REGENTS"), a corporation organized and existing
under the laws of the State of California and having its statewide
administration address at 000 Xxxxxxxx Xxxxx, Xxxxxxx, Xxxxxxxxxx 00000-0000,
and AMERIGON, INCORPORATED (hereinafter referred to as "Licensee"), a
corporation duly organized under the laws of California, and having its
principal place of business at 0000 Xxxxxx Xxxxxx, Xxxxxxx, XX 00000. Both
Parties to this Agreement are hereinafter jointly referred to as the "Parties".
This Agreement and the resulting license is subject to overriding obligations to
the Federal Government pursuant to the provisions of THE REGENTS' Contract No.
W-7405-ENG 48 with the United States Department of Energy (DOE) for the
operation of the Xxxxxxxx Livermore National Laboratory ("LLNL"), and the
license grant is subject to XXX xxxxx of rights in THE REGENTS' Intellectual
Property Rights to THE REGENTS.
1. BACKGROUND
1.1 Certain inventions related to the UWB Impulse Radar are described in
LLNL Invention Disclosures IL-9092, "Ultra Wideband Radar Motion
Sensor," (U.S. Patent Application No. 08044717); IL-9091, "A
Differential Receiver for Ultra-Wideband Signals," (U.S. Patent
Application No. 08044745); and IL-9318: "Two Terminal Micropower Radar
Sensor" [hereinafter collectively referred to as "THE REGENTS'
Intellectual Property Rights"] which were made in the course of LLNL
research.
WHEREAS, THE REGENTS is the owner of certain intellectual property rights
described herein;
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No. TCL-698-93
WHEREAS, THE REGENTS desires to have THE REGENTS' Intellectual Property
Rights (as later defined herein) utilized in the public interest and is
willing to grant a license thereunder;
WHEREAS, Licensee has represented to THE REGENTS to induce THE REGENTS to
enter into this Agreement, that Licensee is experienced in the
development, production, manufacture, marketing and sale of products
similar to the "Licensed Product(s)" (as later defined herein), and
that it shall commit itself to a thorough, vigorous and diligent
program of exploiting the THE REGENTS' Intellectual Property Rights
commercially so that public utilization and royalty income to THE
REGENTS shall result therefrom; and
WHEREAS, Licensee desires to obtain a license under THE REGENTS' Intellectual
Property Rights upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
2. DEFINITIONS
2.1 "Affiliate(s)" of a party means any entity which, directly or
indirectly, controls such party, is controlled by such party or is
under common control with such party, "control" for these purposes
being defined as the actual, present capacity to elect a majority of
the directors of such Affiliate, or if not, the capacity to elect at
least half of the members that control at least fifty percent (50%) of
the outstanding stock or other voting rights entitled to elect
directors; provided, however, that in any country where the local law
shall not permit foreign equity participation of a majority, then an
"Affiliate" shall include any company in which Licensee shall own or
control, directly or indirectly, the maximum percentage of such
outstanding stock
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No. TCL-698-93
or voting rights permitted by local law. Each reference to Licensee
herein shall be meant to include its Affiliate(s).
2.2 "Field-of-Use" shall mean use of the Licensed Product in the following
three applications for passenger vehicles, trucks, minivans, and buses:
(a) Application: Intelligent Cruise Control.
Broad band radar sensors for use as part of an intelligent
cruise control system. An example is a forward looking radar sensor
that measures the distance and/or velocity to a car in the direction of
travel and is part of a system that regulates the spacing between cars.
(b) Application: Airbag Crash Systems.
Broad band radar sensors that sense a crash and sensors that
activate, monitor, arm and modify the deployment of driver and
passenger airbag systems, seat belt pretensioning systems, and seat
belt systems. Examples are frontal, side and rear collision sensors
used to deploy these airbags.
(c) Application: Position Sensors.
Sensor and control devices that employ position sensing in
their function, and that measure attributes within and external to the
vehicle (e.g., throttle position, occupant sensors, blind spot,
suspension system sensing, seat position, steering wheel position, and
vehicle height sensing).
All applications not specifically set forth above are excluded from
this license including, but not limited to, collision warning,
collision avoidance, fuel tank fill status, and car alarm systems.
2.3 "Licensed Patent(s)" shall mean any and all of THE REGENTS Patent
Rights granted to Licensee under this Agreement.
2.4 A "Licensed Product" shall mean any product or part thereof which:
(a) is covered in whole or in part by an issued, unexpired claim or a
pending claim contained in THE REGENTS'
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No. TCL-698-93
Intellectual Property Rights in the country in which any Licensed
Products are made, used or sold;
(b) is derived from THE RIGHTS' Intellectual Property Rights related to
or described in patents and disclosures in Exhibit A; and
(c) is sold, manufactured or used in any country under this Agreement.
2.5 "Net Selling Price" as used in this Agreement for the purpose of
computing royalties shall mean gross invoice selling price of the
Licensed Product, f.o.b. factory, after deduction of normal and
customary trade, quantity and cash discounts and allowances or credits
to customers on account of returns, but before deduction of any other
items, including but not limited to, freight allowances, packing costs,
costs of insurance or agents' commissions.
2.6 "Net Sales" shall mean LICENSEE'S xxxxxxxx for Licensed Products
produced hereunder, less the sum of the following:
(a) discounts allowed in amounts customary in the trade;
(b) sales taxes, customs and tariff duties, and/or use taxes which are
directly imposed and are with reference to particular sales;
(c) outbound transportation prepaid or allowed; and
(d) amounts allowed or credited on returns.
Net sales shall not include sales to the U.S. Government. No
deductions shall be made for commissions paid to individuals whether
they be with independent sales agencies or regularly employed by
LICENSEE and on its payroll, or for cost of collections.
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No. TCL-698-93
Licensed Products shall be considered "sold" when billed out or invoiced.
2.7 "Patent Right(s)" shall mean all of the following of THE REGENTS'
Intellectual Property Rights:
(a) the United States and foreign patents and/or patent applications
listed in Exhibit A;
(b) United States and foreign patents issued from the applications
covered by the technology listed in Exhibit A and from divisionals
and continuations of these applications;
(c) claims of U.S. and foreign continuation-in-part applications, and of
the resulting patents, which are directed to subject matter
specifically described in the U.S. and foreign applications listed in
Exhibit A;
(d) any reissues of United States patents described in (a), (b), or (c)
above.
2.8 "THE REGENTS' Intellectual Property Rights" shall mean patent rights to
subject matter claimed in or disclosed in Exhibit A, which is attached
and incorporated herein.
2.9 "Territory": Worldwide, for countries covered by Licensed Patents.
3. LICENSE GRANT
3.1 Subject to certain conditions stated herein, THE REGENTS hereby grants
to the Licensee a nontransferable (except as expressly provided herein)
limited exclusive, royalty-bearing license under THE REGENTS Patent
Rights to make, have made, use, lease and sell the Licensed Products in
the Territory for the
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No. TCL-698-93
Field-of-Use set forth under Article 2.2 for the term set forth under
Article 8, unless sooner terminated according to the terms hereof.
3.2 THE REGENTS also grants to LICENSEE the right to issue royalty-bearing
sublicenses to third parties, only in said Field of Use (set forth in
Article 2.2), to make, use, and sell Licensed Products, provided
LICENSEE has current rights in said Field of Use herein under this
Agreement at the time of such sublicenses.
However, the LICENSEE shall notify THE REGENTS in writing in advance of
final license negotiations and prior to execution of a sublicense with
all potential sublicensees.
LICENSEE agrees to require its sublicensees to give preference that any
Licensed Products for applications, use or sale shall be manufactured
substantially in the United States.
The LICENSEE hereby agrees that every sublicensing agreement to which
it shall be a party and which shall relate to the rights, privileges
and license granted hereunder shall contain a statement setting forth
the date upon which the LICENSEE's exclusive rights, privileges and
license hereunder shall terminate.
The LICENSEE agrees that any sublicenses granted by it shall provide
that the obligations to THE REGENTS of this Agreement shall be binding
upon the sublicensee as if it were a party to this Agreement. The
LICENSEE further agrees to attach copies of this Agreement to
sublicense agreements.
The LICENSEE shall not receive from sublicensees anything of value in
lieu of cash payments in consideration for any sublicense under this
Agreement, without the express prior written permission of THE REGENTS,
which shall not be unreasonably withheld.
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No. TCL-698-93
3.3 Any sublicenses granted by LICENSEE shall include all of the rights and
obligations due THE REGENTS that are contained in this Agreement.
3.4 LICENSEE shall provide THE REGENTS with a copy of each sublicense
issued hereunder within thirty (30) days of the execution of such
sublicense agreement; collect payment of all royalties due THE REGENTS
from the sale of Licensed Product by any sublicensees; pay THE REGENTS
the amounts due and collected from sublicensees in a timely manner; and
summarize and deliver all reports due TO REGENTS from sublicensees
according to the schedule set forth in Article 6 (PROGRESS AND ROYALTY
REPORTS) of this Agreement.
3.5 The license granted hereunder shall not be construed to confer any
rights upon the LICENSEE by implication, estoppel or otherwise as to
any technology not specifically set forth herein.
3.6 THE REGENTS expressly reserve the right to use THE REGENTS'
Intellectual Property Rights, Licensed Product(s), and associated
technology for educational and research purposes.
3.7 Any license granted hereunder shall be subject to the prior license
retained by the Federal Government which consists of a nonexclusive,
nontransferable, irrevocable, paid-up license to practice the Licensed
Patent(s) or have the Licensed Patent(s) practiced for or on behalf of
the United States throughout the world.
3.8 The parties acknowledge that the Federal Government has certain
march-in rights to THE REGENTS' Intellectual Property Rights in
accordance with 35 USC 203.
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No. TCL-698-93
3.9 Nothing in this License Agreement shall cause LICENSEE to give up or
transfer to Licensor any rights to improvements or developments made by
LICENSEE.
4. ROYALTIES AND PAYMENTS
4.1 The license-issue fee and royalty rate for the license that is the
subject of this Agreement shall be in accordance with this Article 4.
4.2 Royalties and fees due hereunder shall accrue and be paid to THE
REGENTS according to this Article 4 and the attached Exhibit B which is
incorporated herein as if fully set forth.
4.3 Where Licensed Products are not sold, but are otherwise disposed of or
used, the Net Selling Price of such products and/or processes for the
purposes of computing royalties shall be the selling price at which
products of similar kind and quality, sold in similar quantities, are
currently being offered for sale by the LICENSEE. Where such products
are not currently being offered for sale by the LICENSEE, the Net
Selling Price of products otherwise disposed of or used, for the
purpose of computing royalties, shall be the average selling price at
which products of similar kind and quality, sold in similar quantities,
are then currently being offered for sale by other manufacturers.
Where such products are not currently sold or offered for sale by
others, then the Net Selling Price, for the purpose of computing
royalties, shall be the LICENSEE's cost of manufacture determined by
the LICENSEE's customary accounting procedures, plus the LICENSEE's
standard xxxx-up. Nothing in this paragraph shall require licensee to
keep track of or account for Licensed Products used internally by
LICENSEE for process development, test, demonstration, prototype
samples for the purpose of creating customer interest or acceptance, or
Licensed Products manufactured but unsold and unused.
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No. TCL-698-93
4.4 Under this Agreement, Licensed Products shall be considered to be sold
when invoiced, or if not invoiced, when delivered for use or lease to a
third party, except that upon expiration of any patent covering such
Licensed Products, or upon any termination of license, all shipments
made on or prior to the day of such expiration or termination which
have not been billed out prior thereto shall be considered as sold (and
therefore subject to royalty). Royalties paid on Licensed Products
which are not accepted or paid by the customer shall be credited to
the LICENSEE.
4.5 The LICENSEE shall pay to THE REGENTS a minimum annual royalty as
defined in Exhibit B. This minimum annual royalty shall be paid to THE
REGENTS by January 1 of each year and shall be credited against the
earned royalty due and owing for that calendar year.
4.6 The LICENSEE shall pay THE REGENTS an earned royalty, as defined in the
attached Exhibit B, which is incorporated herein as if fully set forth,
on all Licensed Products sold or used by Licensee and any sublicensee.
4.7 Earned royalties for Licensed Products sold under this Agreement in any
country outside the United States shall accrue to THE REGENTS for the
duration of THE REGENTS' patent rights in that country.
4.8 Earned royalties accruing to THE REGENTS shall be paid to THE REGENTS
by February 28, May 31, August 31, and November 30. Each such payment
to THE REGENTS will be for any and all royalties which accrued to THE
REGENTS within the most recently completed calendar quarter, less any
credits for minimum royalties paid per Article 4.5 above.
4.9 All monies due THE REGENTS shall be payable in United States funds
collectible at par in San Francisco, California. When
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No. TCL-698-93
Licensed Products are sold for monies other than United States dollars,
the earned royalties will first be determined in the foreign currency
of the country in which Licensed Products were sold and then converted
into equivalent United States Funds. The exchange rate will be that
established by the Bank of America in New York, New York on the last
business day of the reporting period and will be quoted in the
Continental terms methods of quoting exchange rates (local currency per
U.S. dollar).
4.10 Royalties earned with respect to sales occurring in any country outside
the United States shall not be reduced by any value-added taxes, fees,
or other charges imposed by the government of such country on the
remittance of royalty income. The LICENSEE shall be responsible for
all bank transfer charges.
4.11 If at any time legal restrictions prevent the prompt remittance by the
LICENSEE of part or all royalties due with respect to any country
outside the United States where a Licensed Product is sold, the
LICENSEE shall have the right and option to make such payments by
depositing the amount thereof in local currency to THE REGENTS' account
in a bank or other depository in such country.
4.12 No royalties shall be collected or paid hereunder on Licensed Products
distributed to or used by the United States Government including any
agency thereof and the amount charged for such sales to the United
States Government will be reduced by an amount equal to the royalty
otherwise due THE REGENTS.
4.13 Notwithstanding any other provision of this agreement, no royalty payments
are due or payable on any products not covered by outstanding patent
filing(s) or then currently valid Licensed Patent(s).
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No. TCL-698-93
5. DUE DILIGENCE
5.1 The LICENSEE, upon execution of this Agreement, shall diligently
proceed with the development, manufacture and sale of Licensed Products
and shall earnestly and diligently endeavor to market the same within a
reasonable time after execution of this Agreement and in quantities
sufficient to meet the market demands therefor, and comply with the
minimum royalties specified in Part C of Exhibit B.
In addition, LICENSEE, as a condition to maintain the exclusive license
for each of the three applications identified in Article 2.1, the
LICENSEE must achieve commercial sales of products by the end of 1998.
Commercial sales are defined as sales or non-prototype products to at
least one original equipment manufacturer. Failure to achieve
commercial sales for a particular application will result in the loss
of exclusivity of the license for that application, in which event THE
REGENTS will have the right to grant other entities a non-exclusive
license for that application at terms no more favorable than those of
the LICENSEE.
5.2 The LICENSEE shall be entitled to exercise prudent and reasonable
business judgment in meeting its due diligence obligations in
accordance with this Agreement.
6. PROGRESS AND ROYALTY REPORTS
6.1 Prior to the first sale of Licensed Product(s) anywhere in the world,
the LICENSEE shall submit a progress report covering the LICENSEE's
activities related to the development and testing of the Licensed
Product(s). After the first such sale and/or commercial use, the
LICENSEE shall submit a quarterly royalty report by February 28, May
31, August 31, and November 30 of each calendar year for the most
recently completed calendar
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No. TCL-698-93
quarter, giving such particulars of the business conducted by the
LICENSEE under this Agreement as shall be pertinent to a royalty
accounting hereunder. These shall include at least the following:
(a) number of Licensed Products in each application manufactured and
sold;
(b) the gross sales and Net Selling Price of Licensed Products sold by
LICENSEE during the most recently completed calendar quarter;
(c) the royalties, in U.S. dollars, payable hereunder with respect to
such sales;
(d) the names and addresses of the sublicenses, if any, granted, and
royalty consideration received, and the number, description, and
aggregate Net Selling Price of Licensed Products sold or otherwise
disposed of during the preceding three (3) calendar months and upon
which royalty is payable as provided in Article 4 above. (The first
royalty report shall include such sublicenses and/or Licensed
Products sold or otherwise disposed of, between the date of patent
application filing and the date of such report); and
(e) with each such report submitted, the LICENSEE shall pay to THE
REGENTS the royalties due and payable under this Agreement. If no
royalties shall be due, the LICENSEE shall so report.
6.2 On or before the sixtieth (60th) day following the close of the
LICENSEE's fiscal year, the LICENSEE shall provide THE REGENTS with the
LICENSEE's certified financial statements for the preceding fiscal year
including, at a minimum, a Balance Sheet and an Operating Statement.
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No. TCL-698-93
6.3 If no acquisition of Licensed Product(s) has been made during any
reporting period, a statement to that effect shall be required in the
royalty report filed for that period.
7. BOOKS AND RECORDS
7.1 The LICENSEE shall keep books and records accurately showing all
Licensed Product(s) developed, manufactured, used, and/or acquired
under the terms of this Agreement. Such books and records shall be
preserved for at least five (5) years from the date of the royalty
payment to which they pertain and shall be open to inspection by
representatives or agents of THE REGENTS at all reasonable times,
provided that reasonable notice is given.
7.2 The fees and expenses incurred by THE REGENTS' representatives or
agents to perform an examination of the royalty reports shall be borne
by THE REGENTS. However, if an error in the royalty accounting of more
than five percent (5%) of the total royalties due for any year is
discovered, then the fees and expenses incurred by THE REGENTS'
examination shall be borne by the LICENSEE.
8. LIFE OF THE AGREEMENT
8.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this Agreement
shall be in force from the Effective Date and shall remain in effect
for the life of the last-to-expire issued Licensed Patent(s) licensed
under this Agreement. As patents expire, Licensed Product(s) covered by
an expired patent but not by other Licensed Patent(s) will not be
subject to further royalty payments.
8.2 Any termination of this Agreement shall not affect the rights and
obligations set forth in the following Articles:
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No. TCL-698-93
Article 7 Books and Records
Article 13 Patent Prosecution and Maintenance
Article 14 Use of Names and Trademarks
Article 19 Indemnification and Insurance
Article 25 Export Control Laws
9. DISPUTES
9.1 The Parties shall attempt to jointly resolve all disputes (such joint
resolution may include non-binding arbitration) arising from this
Agreement. If the Parties are unable to jointly resolve a dispute
within a reasonable time, then the Parties or either of them shall have
the right to commence proceedings in a court of competent jurisdiction.
U.S. Federal law is to govern the Agreement to the extent there is
such law. To the extent that there is no applicable U.S. Federal law,
this Agreement and performance thereunder shall be governed by the law
of the State of California without reference to that state's conflicts
of law provisions.
10. TERMINATION BY THE REGENTS
10.1 The right to terminate this Agreement, if exercised by THE REGENTS,
supersedes the rights granted in Article 3 (LICENSE GRANT). If the
LICENSEE should fail to perform any material term or covenant of this
Agreement, then THE REGENTS may give written notice of such default
("Notice of Default") to the LICENSEE. If the LICENSEE should fail to
remedy such default or initiate satisfactory action toward the remedy
with satisfaction and tangible evidence that the deficiency has been
cured within sixty (60) days of the effective date of such Notice of
Default, THE REGENTS shall have the right to terminate this Agreement
and the licenses granted herein by a second written notice ("Notice of
Termination"). If Notice of Termination is sent to the LICENSEE, this
Agreement shall automatically terminate on the effective date of such
notice. The LICENSEE's failure to pay any royalty or other fee by the
date required under Exhibit B shall be considered to be a material
breach subject to termination of the license.
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No. TCL-698-93
10.2 Termination of this Agreement shall not relieve the LICENSEE of any
obligation or liability accrued hereunder prior to such termination, or
rescind any payments due or paid to THE REGENTS hereunder prior to the
time such termination becomes effective. Such termination shall not
affect, in any manner, any rights of THE REGENTS arising under this
Agreement prior to such termination.
11. TERMINATION BY THE LICENSEE
11.1 The LICENSEE shall have the right at any time to terminate this
Agreement in whole or as to any portion of THE REGENTS' Intellectual
Property Rights by giving notice in writing to THE REGENTS.
Termination of this Agreement by the LICENSEE shall be effective ninety
(90) days from the effective date of such notice. Any termination of
this Agreement shall not affect the rights and obligations set forth in
Article 8.2.
12. DISPOSITION OF LICENSED PRODUCTS
ON HAND UPON TERMINATION
12.1 Upon termination of this Agreement for any reason other than expiration
of Licensed Patent(s), LICENSEE shall provide THE REGENTS within
forty-five (45) days following the effective date of termination with
written inventory of all Licensed Products in process of manufacture or
in stock, and shall dispose of such Licensed Products within one
hundred and twenty (120) days of the effective date of termination,
provided, however, that the sales of all such Licensed Products shall
be subject to the terms of this Agreement.
13. PATENT PROSECUTION AND MAINTENANCE
13.1 THE REGENTS shall diligently pursue and maintain the United States
patents for Licensed Patent(s) using counsel of its choice,
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No. TCL-698-93
and such patents will be held in the name of THE REGENTS. THE REGENTS
shall provide the LICENSEE with copies of all relevant documentation so
that the LICENSEE may be informed and apprised of the continuing
prosecution and to comment on and/or make suggestions, and the LICENSEE
agrees to keep this documentation confidential.
13.2 THE REGENTS may, at its option, amend any patent application to include
claims reasonably requested by the LICENSEE to protect the products
contemplated to be sold or methods used under this Agreement.
13.3 The cost of preparing, filing, prosecuting and maintaining existing
United States and foreign patents filed as of the Effective Date of
this Agreement shall be borne by THE REGENTS.
13.4 The LICENSEE shall have the right to request that THE REGENTS obtain
patent protection on THE REGENTS' Intellectual Property Rights in
foreign countries if available and if it so desires. The LICENSEE must
notify THE REGENTS within seven (7) months of the filing of the
corresponding United States application of its decision to obtain
foreign patents. This notice concerning foreign filing shall be in
writing and identify the countries desired. The absence of such a
notice to THE REGENTS shall be considered an election not to secure
foreign rights.
13.5 The cost of preparation, filing and prosecution of foreign patent
applications filed at the LICENSEE's request, as well as the
maintenance of all resulting patents, shall be borne by the LICENSEE,
so long as the LICENSEE has an exclusive license in at least one
application. Such patents shall be held in the name of THE REGENTS and
shall be obtained using counsel of THE REGENTS' choice.
13.6 The LICENSEE's obligation to underwrite and to pay patent prosecution
costs shall continue for so long as this Agreement
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No. TCL-698-93
remains in effect, provided, however, that the LICENSEE may terminate
its obligations with respect to any given patent application or patent
upon ninety (90) days' written notice to THE REGENTS. THE REGENTS may
continue prosecution and/or maintenance of such application(s) or
patent(s) at its sole discretion and expense; provided, however, that
the LICENSEE shall have no further rights or licenses thereunder.
13.7 THE REGENTS shall have the right to file patent applications at its own
expense in any country in which the LICENSEE has not elected to secure
patent rights.
14. USE OF NAMES AND TRADEMARKS
AND NONDISCLOSURE OF AGREEMENT
14.1 Nothing contained in this Agreement shall be construed as conferring
any right to use in advertising, publicity or other promotional
activities any name, trade name, trademark, or other designation of
either party hereto (including any contraction, abbreviation, or
simulation of any of the foregoing). The use of the name "LLNL" or
"the Regents of the University of California" or the name of any
University of California campus is expressly prohibited.
It is understood that THE REGENTS shall be free to release to the
inventors the terms and conditions of this Agreement upon request of
the inventors. If such release is made, THE REGENTS shall request that
the inventors not disclose such terms and conditions to others. It is
further understood that should a third party inquire whether a license
to Licensed Patents is available, THE REGENTS may disclose the
existence of this Agreement and the extent of the grant in Article 3
(GRANT) to such third party, but shall not disclose the terms of this
Agreement or the name of the LICENSEE, except where THE REGENTS is
required to release information under either the California Public
Records Act or other applicable law.
19
No. TCL-698-93
15. LIMITED WARRANTY
15.1 THIS LICENSE AND THE ASSOCIATED THE REGENTS' INTELLECTUAL PROPERTY
RIGHTS ARE PROVIDED WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR
A PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. THE
REGENTS MAKES NO REPRESENTATION OR WARRANTY THAT THE REGENTS'
INTELLECTUAL PROPERTY RIGHTS, LICENSED PATENT(S), OR LICENSED
PRODUCT(S) WILL NOT INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT.
15.2 IN NO EVENT WILL THE REGENTS BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE
USE OF THE REGENTS' INTELLECTUAL PROPERTY RIGHTS, LICENSED PATENT(S),
OR LICENSED PRODUCT(S).
15.3 NEITHER THE UNITED STATES DEPARTMENT OF ENERGY, NOR ANY OF ITS
EMPLOYEES, MAKES ANY WARRANTY, EXPRESS OR IMPLIED, OR ASSUMES ANY LEGAL
LIABILITY OR RESPONSIBILITY FOR THE ACCURACY, COMPLETENESS, OR
USEFULNESS OF ANY INFORMATION, APPARATUS, OR PRODUCT DISCLOSED, OR
REPRESENTS THAT ITS USE WOULD NOT INFRINGE PRIVATELY OWNED RIGHTS.
15.4 Nothing in this Agreement shall be construed as:
15.4a A warranty or representation by THE REGENTS as to the validity or
scope of any of THE REGENTS' Intellectual Property Rights,
Licensed Patent(s) or Patent Rights;
15.4b A warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in
20
No. TCL-698-93
this Agreement is or will be free from infringement of patent(s)
of third parties;
15.4c Any obligation to bring or prosecute actions or suits against
third parties for patent infringement;
15.4d Conferring by implication, estoppel or otherwise any license or
rights under any patents of THE REGENTS, other than Licensed
Patent(s) as defined herein, regardless of whether such patents
are dominant or subordinate to Licensed Patent(s); or
15.4e An obligation to furnish any know-how not provided in Licensed
Patent(s).
16. PATENT INFRINGEMENT
16.1 In the event that the LICENSEE shall learn of the substantial
infringement of any Licensed Patent(s), the LICENSEE shall call THE
REGENTS' attention thereto in writing and shall provide THE REGENTS
with reasonable evidence of such infringement. Both parties shall use
their best efforts in cooperation with each other to terminate such
infringement without litigation.
16.2 The LICENSEE may request that THE REGENTS take legal action against the
infringement of THE REGENTS' Patent Rights. Such request shall be made
in writing and shall include reasonable evidence of such infringement
and damages to the LICENSEE. If the infringing activity has not been
abated within ninety (90) days following the effective date of such
request, THE REGENTS shall have the right to:
16.2a Commence suit on their own account; or
16.2b Refuse to participate in such suit, and THE REGENTS shall give
notice of their election in writing to the
21
No. TCL-698-93
LICENSEE by the end of the one-hundredth (100th) day after
receiving notice of such request from the LICENSEE. The LICENSEE
may thereafter bring suit for patent infringement, if and only
if, THE REGENTS elect not to commence suit (other than as nominal
party plaintiff) and if the infringement occurred during the
period and in a jurisdiction where the LICENSEE has rights under
this Agreement. However, in the event the LICENSEE elects to
bring suit in accordance with this Article, THE REGENTS may
thereafter join such suit at its own expense.
16.3 Such legal action as is decided upon shall be at the expense of the
party on account of whom suit is brought and all recoveries thereby
shall belong to such party, provided, however, the legal action brought
jointly by THE REGENTS and the LICENSEE and fully participated in by
both shall be at the joint expense of the parties and all recoveries
shall be shared jointly by them in proportion to the share of expense
paid by each party.
16.4 Each party agrees to cooperate with the other in litigation proceedings
instituted hereunder 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, except that THE REGENTS at its expense may be
represented by counsel of its choice pursuant to THE REGENTS'
determination in any suit brought by the LICENSEE.
17. WAIVER
17.1 It is agreed that 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.
22
No. TCL-698-93
18. ASSIGNABILITY
18.1 This Agreement is binding upon and shall inure to the benefit of THE
REGENTS, its successors and assigns, but shall be personal to the
LICENSEE and assignable by the LICENSEE only with the written consent
of THE REGENTS.
19. INDEMNIFICATION AND INSURANCE
19.1 The LICENSEE agrees to indemnify, hold harmless and defend THE REGENTS
and DOE, their officers, employees, and agents; the inventors of the
inventions disclosed in the patents and patent applications in Licensed
Patent(s) against any and all claims, suits, losses, damage, costs,
fees, and expenses resulting from or arising out of exercise of this
license. The LICENSEE shall pay any and all costs incurred by THE
REGENTS in enforcing this indemnification, including reasonable
attorney fees.
19.2 The LICENSEE, at its sole cost and expense, shall insure its activities
in connection with the work under this Agreement and obtain, keep in
force, and maintain insurance with an insurance company acceptable to
THE REGENTS, which acceptance shall conform to reasonable business
standards, as follows: A minimum level of two million dollars
($2,000,000) of Comprehensive or Commercial Form General Liability
Insurance (including contractual liability and products liability).
The coverages referred to in this Article 19 shall not in any way limit
the liability of the LICENSEE. The LICENSEE shall furnish THE REGENTS
with certificates of insurance, including renewals, evidencing
compliance with all requirements at least thirty (30) days prior to the
first commercial sale, or distribution of Licensed Product.
19.2a If such insurance is written on a claims-made form, coverage
shall provide for a retroactive date of placement
23
No. TCL-698-93
prior to or coinciding with the effective date of this License
Agreement.
19.2b The LICENSEE shall maintain the general liability insurance
specified herein during (a) the period that the Licensed Product
is being commercially distributed or sold (other than for the
purpose of obtaining regulatory approvals) by the LICENSEE or by
a sublicensee, affiliate, or agent of the LICENSEE, and (b) a
reasonable period thereafter, but in no event less than one (1)
year.
19.3 Insurance coverage as required under Article 19.2 above shall:
(a) Provide for thirty (30) days advance written notice to THE REGENTS of
cancellation or of any modification.
(b) Indicate that DOE, THE REGENTS and its officers, employees, students,
and agents, have been endorsed thereon as additional insureds.
(c) Include a provision that the coverages will be primary and will not
participate with, nor will be excess over, any valid and collectible
insurance or program or self-insurance carried or maintained by THE
REGENTS.
19.4 The provisions of this Article 19 shall survive the term of this
Agreement.
20. LATE PAYMENTS
20.1 In the event royalty payments or fees are not received by THE REGENTS
when due, LICENSEE shall pay to THE REGENTS interest charges at the
rate of five percent (5%) plus the rate of interest that is charged by
the San Francisco Federal Reserve Bank to member banks twenty-five (25)
days prior to the date the payment was due.
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No. TCL-698-93
21. NOTICES
21.1 Any royalty payment, royalty report, notice or other communication
required or permitted to be given to either party hereto shall be in
writing and shall be deemed to have been properly given and to be
effective on (a) the date of delivery if delivered in person, or (b)
the fifth day after mailing if mailed by first-class certified mail,
postage paid, to the respective address given below, or to such other
address as shall be designated by written notice given to the other
party as follows:
In the case of the LICENSEE: AMERIGON, INCORPORATED
0000 Xxxxxx Xxxxxx
Xxxxxxx, XX 00000
Attn: President
In the case of THE REGENTS: XXXXXXXX LIVERMORE
NATIONAL LABORATORY
Technology Transfer Initiatives Program
X.X. Xxx 000, X-000
Xxxxxxxxx, XX 00000
Attention: Program Leader, TTIP
22. GOVERNING LAWS
22.1 This Agreement shall be interpreted and construed in accordance with
the University of California/DOE Contract No. W-7405-ENG-48 and the
laws of the State of California, USA, without regard to the doctrine of
the conflict of laws.
23. PATENT MARKING
23.1 When Licensed Product(s) are made, used, and/or sold under Licensed
Patent(s), the LICENSEE agrees to xxxx all Licensed Product(s), and
their containers, in accordance with the applicable patent marking laws.
25
No. TCL-698-93
24. GOVERNMENT APPROVAL OR REGISTRATION
24.1 If this Agreement or any associated transaction is required by the law
of any nation to be approved or registered with any governmental
agency, the LICENSEE shall assume all associated costs and legal
obligations to do so.
25. EXPORT CONTROL LAWS
25.1 The LICENSEE shall observe all applicable United States and foreign
laws and regulations with respect to the International Traffic in Arms
Regulations (ITAR) and the Export Administration Regulations.
26. FORCE MAJEURE
26.1 No failure or omission by The Regents or LICENSEE in the performance of
any obligation under this agreement shall be deemed a breach of this
agreement or create any liability if the same shall arise from any
cause or causes beyond the control of The Regents or LICENSEE,
including but not limited to the following: Acts of God, acts or
omission of any government or agency thereof, compliance with
requirements, rules, regulations, or orders of any governmental
authority or any office, department, agency, or instrumentality
thereof, fire, storm, flood, earthquake, accident, acts of the public
enemy, war rebellion, insurrection, riot, sabotage, invasion,
quarantine, restriction, transportation embargoes, or failures or
delays in transportation if beyond the control of the party in question.
27. MISCELLANEOUS
27.1 The headings of the several sections are inserted for convenience of
reference only and are not intended to be a part of or to affect the
meaning or interpretation of this Agreement.
26
No. TCL-698-93
27.2 This Agreement will be binding upon the parties when it has been
executed by each of the parties hereto as of the date of execution by
the last signing party.
27.3 No amendment or modification hereof shall be valid or binding upon the
parties unless made in writing and signed on behalf of each party.
27.4 This Agreement embodies the entire understanding of the parties and
shall supersede all previous communications, representations, or
understandings, either oral or written, between the parties relating to
the subject matter hereof.
27.5 In case any of the provisions contained in this Agreement shall be held
to be invalid, illegal or unenforceable in any respect, such
invalidity, illegality, or unenforceability shall not affect any other
provisions hereof, but this Agreement shall be construed as if such
invalid or illegal or unenforceable provisions had never been contained
herein.
27.6 This Agreement may be executed in counterparts.
27
No. TCL-698-93
IN WITNESS WHEREOF, both THE REGENTS and the LICENSEE have executed this
Agreement, in duplicate originals, by their respective officers hereunto
duly authorized, on the day and year hereinafter written.
THE REGENTS OF THE AMERIGON, INCORPORATED
UNIVERSITY OF CALIFORNIA
By: /s/ Xxxxxx X. Xxxxxxx By: /s/ Xxx X. Xxxx
-------------------------------- --------------------------------
(Signature) (Signature)
Name: Xxxxxx X. Xxxxxxx Name: Xxx X. Xxxx
------------------------------ ------------------------------
Title: Laboratory Executive Officer Title: President
----------------------------- -----------------------------
Date: January 20, 1994 Date: 11-January 1994
------------------------------ ------------------------------
28
No. TCL-698-93
EXHIBIT A
"THE REGENTS' INTELLECTUAL PROPERTY RIGHTS"
"THE REGENTS' Intellectual Property Rights" shall mean the intellectual property
covering technology described by the following invention disclosure(s):
INVENTION DISCLOSURES:
Certain inventions related to the UWB Impulse Radar Technology as described
in the following LLNL Invention Disclosures: IL-9092, "Ultra-Wideband Radar
Motion Sensor," dated September 3, 1992, (U.S. Patent Application No.
08044717), by Xxxxxx Xxxxxx XxXxxx; IL-9091, "A Differential Receiver for
Ultra-Wideband Signals," dated September 1, 1992 (U.S. Patent Application No.
08044745), by Xxxxxx Xxxxxx XxXxxx; and IL-9318, "Two Terminal Micropower
Radar Sensor," dated July 16, 1993, by Xxxxxx Xxxxxx XxXxxx.
29
No. TCL-698-93
EXHIBIT B
LICENSE FEES AND ROYALTY RATES
NOTICE
This Exhibit B contains financial and commercial information deemed Business
Confidential and the parties hereby agree not to use or to disclose the terms
agreed to herein to any third party without the express written consent of the
other party hereto except as necessary to enable the parties to perform under
this Agreement or as may be required by the Regents' contract with the U.S.
Department of Energy under the same restrictions.
A. *
B. *
----------------------------
* Confidential portions omitted and filed separately with the Commission.
30
No. TCL-698-93
C. *
----------------------------
* Confidential portions omitted and filed separately with the Commission.
31
XXXXXXXX LIVERMORE NATIONAL LABORATORY
INDUSTRIAL PARTNERSHIPS & COMMERCIALIZATION
September 19, 1996
LIC96-319
Xxxx Xxxxxx
Amerigon, Incorporated
000 Xxxx Xxxxxxxxxx Xxxxx
Xxxxxxxx, XX 00000-0000
SUBJECT: Amerigon Micropower Impulse Radar (MIR) License
No. TL-796-94
Dear Xx. Xxxxxx:
As you requested, this confirms that in Article 2.2 of the subject license
"Field of Use" and "applications" cover Blind Spot Sensing for highway passenger
vehicles to provide back up parking assistance.
Xxxxxxx X. Xxxxx
/s/ Xxxxxxx X. Xxxxx
Business Specialist
University of California - X.X. Xxx 000, X-000-Xxxxxxxxx, Xxxxxxxxxx
00000 - Telephone (000) 000-0000 - Facsimile (000) 000-0000 - An Equal
Opportunity Employer
