EXHIBIT 10.4
DIAPER PATENT AGREEMENT
Xxxxxxx & Xxxxxxx, a corporation organized and existing under the law of the
State of New Jersey and its subsidiaries and affiliates which it controls by
majority ownership, including XxXxxx-PPC, Inc. (hereinafter called "J&J");
Weyerhaeuser Company, a corporation organized and existing under the law of the
State of Washington (hereinafter called "Weyerhaeuser"); Paragon Trade Brands,
Inc., a corporation organized and existing under the law of the State of
Delaware (hereinafter called "Paragon") and Xxxxx Health Care, a partnership
operating under the laws of the State of Delaware (hereinafter called "SHC"), in
consideration of the premises and of the covenants and agreements hereinafter
set forth, do hereby covenant and agree as follows:
1. Background
----------
1.1 Effective July 1, 1987 J&J and Weyerhaeuser entered into an agreement
relating to absorbent products technology and related patents (hereinafter
called the "Technology Agreement"), which agreement was amended as follows:
a. J&J letter of May 23, 1988 modification of Schedule C-2.
b. Weyerhaeuser letter of July 17, 1989 Accepted July 18, 1989 by
Weyerhaeuser and Accepted August 24, 1989 by J&J
c. J&J letter of September 8, 1989 Accepted September 11, 1989 by
J&J and Accepted November 1, 1989 by Weyerhaeuser.
d. J&J letter of April 3, 1990 Revised Schedules dated April 2,
1990.
e. Weyerhaeuser letter of March 14, 1991 Accepted March 18, 1991 by
Weyerhaeuser and Accepted June 19, 1991 by J&J.
1
f. J&J letter of May 12, 1992 re U.S. Patent 4,388,075 Accepted by
Weyerhaeuser May 22, 1992.
g. J&J letter of May 20, 1992 Accepted by J&J May 20, 1992 and
Accepted by Weyerhaeuser May 22, 1992.
h. Weyerhaeuser letter of June 10, 1992 Accepted by Weyerhaeuser and
Accepted by J&J June 30, 1992.
i. Weyerhaeuser letter of November 10, 1992 Accepted by Weyerhaeuser
November 11, 1992 and accepted by J&J December 2, 1992.
1.2 Effective May 30, 1992 Weyerhaeuser granted to SHC a sublicense under
the Technology Agreement with permission of J&J (hereafter called the "SHC
Sublicense").
1.3 Effective February 2, 1993 Weyerhaeuser granted to Paragon a
sublicense under the Technology Agreement excluding C-C Patents and Prime Line
Technology (hereinafter called the "Paragon Sublicense").
1.4 Since February 2, 1993 Weyerhaeuser is no longer directly involved in
the production of diapers and is currently in the process of dismantling its
facility designed for the practice of C-C Patents and Prime Line Technology.
1.5 Since no facilities exist for the commercial practice of the C-C
Patents and the Technology Agreement provides certain paid-up rights effective
after payment of the minimum royalty for calendar year 1994, the parties hereto
have agreed to terminate the Technology Agreement and establish this Agreement
among the Parties for the remaining rights other than those relating to C-C
Patents.
2
2. Definitions
-----------
2.1 "Licensed Technology" shall mean all information relating to the
processes, materials, equipment, designs, operation, performance, controls or
structures of or for making Infant Diapers, which information was known by J&J
employees involved with developments relating to the C-C Patents as of July 1,
1987 and disclosed to Weyerhaeuser under the Technology Agreement.
2.2 "Prime Line Technology" shall mean all information relating to
processes, materials, equipment, designs, operations, performance, controls or
structures for the manufacture of fluid absorbent articles comprising fibers and
a fluid absorbent polymer which has been polymerized in situ on and/or in said
article, which information has been disclosed by J&J to Weyerhaeuser under the
Technology Agreement as part of the Licensed Technology or developed by
Weyerhaeuser in support of its prime line equipment in Bowling Green, Kentucky
before February 2, 1993.
2.3 "Diaper Technology" shall mean all Licensed Technology except for
Prime Line Technology which has been disclosed by Weyerhaeuser to SHC under the
SHC Sublicense and to Paragon under the Paragon Sublicense.
2.4 "C-C Patents" shall mean each and every unexpired patent right of J&J
as listed in Schedule A attached hereto and made a part hereof, including
patents which result from the issuance, re-examination, reissue or extension of
any so-listed patent or application.
2.5 "Diaper Patents" shall mean each and every unexpired patent right as
listed in Schedules B and C attached hereto and made a part hereof, including
patents which result from the issuance, re-examination, reissue or extension of
any so-listed patent or application.
2.6 "Other Patents" shall mean each and every unexpired patent right of
J&J issued or pending as of July 1, 1987, other than C-C Patents and Diaper
Patents, including patents which result from the issuance, re-examination,
reissue, extension or foreign equivalent thereof;
3
such patents rights include but are not limited to those listed in Schedule D
attached hereto and made a part hereof.
2.7 "Valid Claim" shall mean a claim in a patent which has not lapsed or
become abandoned and which claim has not been declared null or invalid by an
irrevocable or unappealed decision or judgment of a patent office or a court of
competent jurisdiction.
2.8 "Infant Diaper" shall mean any product for absorbing body wastes and
fluids, other than human blood and/or menstrual fluid, and designed for use on a
person having a weight of less than fifty (50) pounds.
2.9 "Adult Diaper" shall mean any product for absorbing body wastes and
fluids, other than human blood and/or menstrual fluid, and designed for use on a
person have a weight of at least fifty (50) pounds.
2.10 "Licensed Territory" shall mean the United States of America, Canada
and Mexico.
2.11 "Party or Parties" shall mean J&J, Weyerhaeuser, SHC and Paragon as
the context indicates.
2.12 "Effective Date" shall mean the latest date that this Agreement has
been signed by all the Parties hereto.
3. Termination of Prior Agreements
-------------------------------
3.1 This Agreement supersedes and terminates the Technology Agreement, the
SHC Sublicense and the Paragon Sublicense.
3.2 It is acknowledged by the Parties that as a result of this termination
all rights in the C-C Patents revert to J&J.
4
4. Assignments
-----------
4.1 J&J hereby assigns to Paragon all of the Diaper Patents and agrees to
execute assignments thereof substantially in the form of Attachment E, attached
hereto and made a part hereof, as needed to record these assignments. Paragon
agrees to reimburse J&J for any outside costs incurred in responding to
Paragon's reasonable request for cooperation in support of any litigation
involving Diaper Patents.
4.2 J&J hereby assigns to Weyerhaeuser all of its rights and interest in
U.S. Patents 5,100,397; 5,171,237; and 5,246,429 and agrees to execute
assignments thereof substantially in the form of Attachment F, attached hereto
and made a part hereof, as needed to record these assignments. Weyerhaeuser
agrees to reimburse J&J for any outside costs incurred in responding to
Weyerhaeuser's reasonable request for cooperation in support of any litigation
involving these assigned patents.
5. Grants
------
5.1 Paragon hereby grants to J&J a non-exclusive, paid-up, worldwide,
irrevocable right and license to practice the inventions within the scope of any
Valid Claim of the Diaper Patents listed in Schedule B in the manufacture, use
and sale of any products other than Infant Diapers.
5.2 Paragon hereby grants to J&J a non-exclusive, paid-up, worldwide,
irrevocable right and license to practice the inventions within the scope of any
Valid Claim of the Diaper Patents listed in Schedule C in the manufacture, use
and sale of any products.
5.3 Weyerhaeuser hereby grants to J&J a non-exclusive, paid-up, worldwide,
irrevocable right and license to practice the inventions within the scope of any
Valid Claim of U.S. Patents, 5,100,397; 5,171,237; and 5,246,429 and any foreign
equivalents thereof owned by Weyerhaeuser in the manufacture, use and sale of
any products.
5
5.4 J&J and Weyerhaeuser hereby reaffirm the grant to Paragon of a
worldwide, irrevocable right and exclusive license, with the right to grant
sublicenses, to utilize Diaper Technology to manufacture, have manufactured, use
and sell Infant Diapers and Adult Diapers.
5.5 J&J hereby covenants not to xxx Paragon and its licensees and
sublicensees for infringement of any Valid Claim of any Other Patents by any
Infant Diaper or Adult Diaper as long as the Infant Diaper or Adult Diaper is
made, used or sold exercising the assignment rights of Paragraph 4.1 or the
license of Paragraph 5.4 except said covenant not to xxx shall not extend to
U.S. Patent 4,938,754. J&J acknowledges that as to U.S. Patent 4,938,754 Paragon
has a non-exclusive license for Infant Diapers and Adult Diapers which license
will be paid-up once the payment under Paragraph 6.3 has been made.
5.6 Paragon hereby grants to SHC a non-exclusive and irrevocable right and
sublicense in the Licensed Territory to utilize Diaper Technology to
manufacture, have manufactured, use and sell Adult Diapers.
5.7 Paragon hereby grants to SHC a non-exclusive and irrevocable right and
license in the Licensed Territory to manufacture, have manufactured, use and
sell Adult Diapers within the scope of any Valid Claim of any Diaper Patent.
5.8 J&J hereby covenants not to xxx SHC for infringement of any Valid
Claim of any Other Patents by any Adult Diaper as long as the Adult Diaper is
made, use or sold exercising the licenses of Paragraph 5.6 or 5.7 except said
covenant not to xxx shall not extend to U.S. Patent 4,938,754. J&J acknowledges
that as to U.S. Patent 4,938,754 SHC has a non-exclusive license for Adult
Diapers which license will be paid-up once full payment under Paragraph 6.2 has
been made.
5.9 Weyerhaeuser and Paragon hereby reaffirm the right of J&J to grant
non-exclusive licenses under U.S. Patent 4,388,075 if and to the extent that
such license(s) are granted together with an express license under J&J's U.S.
Patent 4,938,754. It is understood that in such licenses, royalties attributable
solely to U.S. Patent 4,388,075 shall be equally divided between J&J and
Paragon, but that royalties attributed solely to U.S. Patent 4,938,754, or
jointly to Patents 4,388,075 and 4,938,754, shall be solely to the right and
property of J&J.
6
6. Compensation and Payments
-------------------------
6.1 Since Weyerhaeuser has no future benefits and is paid up as to the
past, it has no further compensation obligations to the other Parties with
regard to the Technology Agreement and this Agreement.
6.2 SHC agrees to pay J&J Forty Thousand Dollars ($40,000) for paid-up
rights under the Agreement. SHC shall make two payments of Twenty Thousand
Dollars ($20,000) with the first in June 1994 and the final payment in December
1994.
6.3 Paragon agrees to pay J&J Three Hundred Sixty Thousand Dollars
($360,000) for paid-up rights under this Agreement. Paragon shall make this
payment in December 1994.
6.4 The payments by SHC and Paragon to J&J shall be addressed as follows:
Xxxxxxxx X. Xxxxxxx, Esq.
Office of General Counsel
Xxxxxxx & Xxxxxxx
Xxx Xxxxxxx & Xxxxxxx Xxxxx
Xxx Xxxxxxxxx XX 00000-0000
This address may be changed by J&J by written notice to SHC and Paragon.
7. Representations, Warranties and Indemnities
--------------------------------------------
7.1 The Party owning any patents subject to this Agreement makes no
warranties or representations with respect to the validity, scope or
enforceability of such patents or to the freedom to practice such patents free
of infringement of any other patents which are not subject to this Agreement.
7.2 J&J does not warrant the completeness or total usefulness of the
Diaper Technology. J&J makes no warranties or representations with respect to
the Parties' freedom to use the Diaper Technology free of infringement of any
patents which are not subject to this Agreement.
7
7.3 Each Party agrees to indemnify and hold the other Parties harmless
with respect to any product liability claims, suits, damages and expenses
arising out of the manufacture, use or sale of any products make, used or sold
by the indemnifying Party or its licensee(s) or sublicensee(s), or by any third
party. The Party using Diaper Technology does so at that Party's risk based on
that Party's own judgment.
8. Confidentiality
---------------
8.1 All information within-the Diaper Technology, Licensed Technology and
Prime Line Technology supplied or received by a Party under the terms of this
Agreement, the Technology Agreement, SHC Sublicense or Paragon Sublicense shall
be protected as follows:
(a) To the extent that such information is of a confidential nature
the disclosing Party shall clearly xxxx such information as "Proprietary"
or "Confidential" if in written form or, if not in written form, the
disclosing Party shall clearly characterize such information as
"Proprietary" or "Confidential" so that the receiving Party is aware that
is protected under the terms hereof when first disclosed by one Party to
another Party.
(b) Without prior written consent of Paragon, the other Parties shall
not disclose Proprietary or Confidential Diaper Technology information to
any third party without first obtaining from said third party a written
agreement to maintain the confidential status and to strictly limit the use
of such information to that permitted such other Party under this
Agreement.
(c) The Parties shall only disclose Proprietary or Confidential
information disclosed to it by another Party under the Technology
Agreement, SHC Sublicense, Paragon Sublicense or this Agreement to those of
its consultants, contractors, employees, licensees' or sublicensees'
employees who shall reasonably need to know such information and then only
upon such consultants, contractor and employees' written agreement to
maintain the confidential status and to strictly limit the use of such
information to that permitted such Party under this Agreement.
8
8.2 The obligation of Paragraph 8.1 shall not deprive the Parties of the
right to use (subject to patent rights) and disclose any information:
(a) Which is, at the time of first disclosure to the receiving Party,
generally known to the trade or public;
(b) Which becomes at a later date generally known to the trade or
public through no fault of the receiving Party and then only after such
later date;
(c) Which is possessed by the receiving Party, as shown by such
Party's written or other tangible evidence, before its first disclosure by
the disclosing Party or anyone confidentially bound to the disclosing Party
as to such information;
(d) Which is disclosed to the receiving Party in good faith by a third
party who has an independent right to such information; or
(e) After December 31, 1996.
8.3 Each Party agrees that the other Parties are not restricted from the
disclosure of Diaper Technology information as is reasonably necessary in the
other Parties' efforts to obtain patents and to commercially exploit the rights
granted and retained under this Agreement.
8.4 The Parties hereto acknowledge that the SHC Sublicense referenced in
Paragraphs 1.2 and 8.1 contains no provision for confidentiality.
9. Terms and Termination
---------------------
9.1 The term of this Agreement shall extend from the Effective Date until
the expiration or lapse of the last to expire or lapse of the Diaper Patents or
Other Patents and the rights to use Diaper Technology shall continue without
time limit.
9
9.2 In view of the rights and obligations involved in this Agreement, the
Parties agree that a termination with notice provision for any material breach
of this Agreement would not be an adequate or appropriate remedy. In the event
of any material breach of this Agreement, the Parties agree to diligently work
to resolve their differences in a manner which will allow the benefits foreseen
from this Agreement to continue. It is also agreed by the Parties that upon
mutually accepted written terms, a termination prior to the expiration of this
Agreement can be effective.
10. Miscellaneous Provisions
------------------------
10.1 Any notice or request with reference to this Agreement shall be by
letter or by facsimile letter followed by a confirming letter mailed within five
(5) days; and such communications shall be addressed as follows:
(a) To J&J: Xxxxxxxx X. Xxxxxxx, Esq.
Office of General Counsel
Xxxxxxx & Xxxxxxx
Xxx Xxxxxxx & Xxxxxxx Xxxxx
Xxx Xxxxxxxxx XX 00000-0000
Tel (000) 000-0000, Fax (000) 000-0000
(b) To Weyerhaeuser: Xxxxxxx X. Xxxxxx, Esq.
Assistant General Counsel and
Corporate Patent Counsel
Law Department, CH 2J29
Weyerhaeuser Company
Xxxxxx XX 00000
Tel (000) 000-0000, Fax (000) 000-0000
(c) To SHC: Xxxx X. Xxxxxxxxx, Esq.
Senior Patent Attorney
Law Division
Xxxxx Paper Company
Xxxxx Xxxxx
Xxxxxxxxxxxx XX 00000
Tel (000) 000-0000, Fax (000) 000-0000
10
(d) To Paragon: Xxxxx Xxxxxx, Esq.
Vice President and General Counsel
Paragon Trade Brands, Inc.
000 Xxxxx 000xx Xxxxxx
Xxxxxxx Xxx XX 00000
Tel (000) 000-0000, Fax (000) 000-0000
Each Party may by written notice to the other Parties change the above-noted
address. Notices shall be effective when received.
10.2 Any Party owning patents subject to the terms of this Agreement shall
have complete discretion as to its decisions to prosecute, maintain, enforce,
license, sublicense, defend, reissue, re-examine, disclaim, abandon, assign or
any other action relating to such patent(s).
10.3 This Agreement shall be construed and the legal relations among the
parties determined in accordance with the law of the State of Washington.
10.4 This Agreement and the rights and obligations hereunder are personal
as among the Parties and shall not be assigned by any Party to any other Party
or any third party without the prior written consent of the other Parties except
to the successor by way of purchase or otherwise of a substantial part of the
business relating to absorbent products of that Party. In such event, prior
written consent is not required but prompt notification of such an assignment
with the written assurance by the acquiring party of its willingness and ability
to fully perform the obligations of the Party acquired are necessary for such
assignment to be effective.
10.5 Except as otherwise expressly provided, this Agreement may not be
released, discharged, changed or modified in any manner, except by a document of
concurrent or subsequent date to the Effective Date, in writing, signed by duly
authorized officers of all of the Parties hereto.
11
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed
in quadruplicate, with each copy thereof to be deemed an original, by their duly
authorized officers as to the date indicated.
AGREED TO ACCEPTED THIS AGREED TO AND ACCEPTED THIS
22nd day of April, 1994 15th day of April, 1994
XXXXXXX & XXXXXXX WEYERHAEUSER COMPANY
By /s/ Xxxxxxx X. Xxxxxxxx By /s/ Xxxxxx Xxxxx
--------------------------- ----------------------------
(Signature) (Signature)
Xxxxxxx X. Xxxxxxxx Xxxxxx Xxxxx
Vice President, Finance J&J CP1 Vice President
------------------------------- --------------------------------
(Print Name and Title) (Print Name and Title)
AGREED TO ACCEPTED THIS AGREED TO AND ACCEPTED THIS
4th day of May, 1994 26th day of April, 1994
PARAGON TRADE BRANDS, INC. XXXXX HEALTH CARE
By /s/ B.V. Xxxxxxx By /s/ Xxxx X. Xxxxxxx
--------------------------- -----------------------------
(Signature) (Signature)
Xxxxx X. Xxxxxxx, Chairman and Xxxx X. Xxxxxxx
Chief Executive Officer President and General Manager
------------------------------- --------------------------------
(Print Name and Title) (Print Name and Title)
12
Schedule A
----------
Patents A-1
------- JBD 2/25
U.S. Patent 4,500,315 and 4,537,590 (Weyco #16951)
-----------------------------------
Argentina 234479
Austria 0108637
Xxxxxxxxx 000000
Xxxxxxx 0108637
Bolivia B-4737
Brazil P-18306016
Canada 1,209,752
Chile 34798
Columbia 23698
Xxxxxxx 000,000
Xxxxxxx PI-86-187
Eire 54695
EPO 0000000
Xxxxxx 0108637
Germany P-3378952.5.08
Great Britain 2,131,346
Greece 00000
Xxxxxxxxx 3775
Hong Kong 419/1987
India 000000
Xxxxx 0000000
Xxxxx 1,586,799
Korea 42835
Luxembourg 0000000
Xxxxxx 000000
Xxxxxxxxxxx 0108637
New Zealand 206055
A-1 Continued
XXX 0/00
(Xxxxx #00000)
Xxxx 0000
Xxxxxxxxxxx 19243
Xxxxxxxx 00000
Xxxxxxx 0000
Xxxxxxxxx 000/00
Xxxxx Xxxxxx 83/8282
Spain 527081, 280301, 280302,
280303, 280304, 280305, 000000
Xxxxxx 0108637
Xxxxxxxxxxx 0000000
Xxxxxx 22229
Trinidad 24/1987
Venezuela 47305
Patent Applications
-------------------
Xxxxx 000/0000
Xxxxxxxx 8801552
Thailand 001958
Patents A-2
------- JBD 54
U.S. Patent 4,676,784 (Weyco #16953)
---------------------
Canada 0000000
Xxxxxxxxx 187/91
Trinidad 16/1991
-------------------------------------------------------------------------------
Patents A-3
------- JBD 62
U.S. 4,560,372 (Weyco #16954)
--------------
Canada 1245004
Hong Kong 305/1991
Singapore 164/91
Trinidad 15/1991
-------------------------------------------------------------------------------
Patents A-4
------- JBD 72
U.S. Patent 4,559,050 (Weyco #16956)
---------------------
Canada 1252953
Patent Application
------------------
Japan 180067/85
--------------------------------------------------------------------------------
Patent A-5
------ JBD 73
U.S. 4,596,567 (Weyco #16957)
--------------
Canada 1251902
Patent Application
------------------
Japan 180068/85
Patents A-6
------- JBD 74
U.S. 4,605,402 (Weyco #16958)
--------------
Brazil P18503820
Canada 1251901
Hong Kong 1076/1991
Singapore 955/91
Trinidad 61/1991
Patent Applications
-------------------
Japan 180069/85
--------------------------------------------------------------------------------
Patents A-7
------- ABTK 1
(Weyco #16946)
Australia 000000
Xxxxxx PI 8108591
Canada 1,163,599
EPO 0000000
Xxxxxx 0040087
Great Britain 0040087
Germany 3165831.8
Hong Kong 000/0000
Xxxxx 0000000
Malaysia 1115/1985
Mexico 000000
Xxxxxxxxxxx 0040087
Xxxxxxxxx 000/00
Xxxxx Xxxxxx 81/3131
Patents A-8
------- ABTK 009
U.S. 4,381,320 (Weyco #16947)
--------------
Argentina 229126
Australia 000000
Xxxxxx PI 8203234
Canada 1203772
Great Britain 0000000
Xxxxx 0000000
New Zealand 200725
Xxxxxxxx 00000
Xxxxx Xxxxxx 82/3882
Patent Application
------------------
Germany 3220735.2
--------------------------------------------------------------------------------
U.S. Patent 4,573,988 JBD 66 (Weyco #18681) A-9
----------------------
(CIP of JBD 2 and JBD 25)
U.S. Patent 4,540,454 JBD 78 (Weyco #-18682)
---------------------
(Div. of JBD 2 and JBD 25)
U.S. Patent 5,100,397 JBD 153 (Weyco #16698)
---------------------
U.S. Patent 5,171,237 JBD 153 (Weyco #16698A)
---------------------
U.S. Patent 5,246,429 JBD 153 (Weyco #16698B)
---------------------
SCHEDULE B
----------
Patent B-1
------ JBD 8
U.S. Patent 4,413,995 (Weyco #16949)
---------------------
Canada 1,192,456
Singapore 860/85
--------------------------------------------------------------------------------
Patents B-2
------- JBD 11
U.S. 4,540,415 (Weyco #16950)
--------------
--------------------------------------------------------------------------------
Patents JBP 22 (Weyco #14022) B-3
-------
U.S. 4,084,592
--------------
Patents JBD 76 (Weyco #16960)
-------
U.S. 4,880,420
--------------
Brazil P18503818
Canada 1257751
Patent Application
------------------
Japan 180071/85
--------------------------------------------------------------------------------
Patent B-4
------ JBD 70 (Design)
Canada 55968 (Weyco #16955)
Patent B-6
------ JBD 47/103
U.S. Patent 4,985,025 (Weyco #16952)
---------------------
Canada 1241503
Patent B-7
------ JBD 75/106/129/149
U.S. 4,883,480 (Weyco #16964)
--------------
Canada 1252952
Patents B-8
------- JBD 29/JBD 130
Canada 1236074 (Weyco #18828)
Singapore 611/90
Trinidad 25/90
Patent B-9
------ JBD 107/JBD 128
U.S. 4,813,947 (Weyco #14107)
--------------
Patent Application
------------------
Canada 526378-6
Patents B-10
-------
U.S. 3,779,246 J&J 665 (Weyco #14665)
--------------
Canada 977,268
U.S. 4,464,217 JBP 177 (Weyco #14177)
--------------
Canada 1,186,288
U.S. 4,084,592 JBP 22 (Weyco #14022)
--------------
U.S. 4,573,991 JBD 50 (Weyco #14050)
--------------
U.S. 4,479,836 JBD 43 (Weyco #14043)
--------------
U.S. 4,576,598 JBD 41 (Weyco #14041)
--------------
U.S. 4,552,560 JBD 48 (Weyco #14048)
--------------
U.S. 4,723,954 JBD 104 (Weyco #16963)
--------------
U.S. 4,662,874 JBD 105 (Weyco #14105)
--------------
U.S. 4,731,066 JBD 131 (Weyco #14131)
--------------
U.S. 4,886,511 JBD 144 (Weyco #14144)
--------------
U.S. 4,941,933 JBD 146 (Weyco #14146)
--------------
-------------------------------------------------------------------------------
Recent Inventions: B-11
-----------------
File 1047.142 Disposable Diaper with Center Gathers: Filed October 27, 1988;
------------- S.N. 263,260 (JBD 159) U.S. Patent 4,935,021 issued 6/19/90;
Weyco #16696 Canada S.N. 614682 9/29/89
File 1047.153 Low Bulk Disposable Diaper: Filed October 27, 1988; S.N.
------------- 263,529 JBD 157) Now U.S. Patent No. 5,098,423 issued 3/24/92.
Weyco #16700
SCHEDULE C
----------
Patents C-1
------- JBD 7/JBP 98/JBP 158
U.S. 4,450,026 (Weyco #14098)
--------------
U.S. 4,337,771
--------------
Australia 528,814
Brazil 7900459 - Expired 1/25/94
Canada 1,195,804
Japan 1,591,935
South Africa 79/0351
-------------------------------------------------------------------------------
Patents C-2
------- JBD 44/JBP 97/JBP 159
U.S. RE 31,922 (Weyco #s 14044, 16696
--------------
U.S. 4,324,245
--------------
Argentina 221074
Xxxxxxxxx 000000
Xxxxxx 0000000
Xxxxx 00000
Xxxxxxxxx 3295
Venezuela 40765 - Expired 1/17/93
Patent Application
------------------
Ecuador 210
-------------------------------------------------------------------------------
Patent JBP 120/JBP 166
------ Weyco #s 19070, 19147, 00000
Xxxxxxxxx 533635
Patent C-3
------ JBP 157/JBP 100
U.S. 4,336,803 (Weyco #18226)
--------------
-------------------------------------------------------------------------------
Patent C-5
------
U.S. 4,381,783 JBP 210 (Weyco #14210)
--------------
U.S. RE 32,957 JBD 90 (Weyco #14090)
--------------
SCHEDULE D
----------
4,938,754 4,300,562 3,965,904
4,662,877 4,293,367 3,938,522
4,522,874 4,285,747 3,934,588
4,507,163 4,285,342 3,903,890
4,464,217 4,282,874 3,867,940
4,449,979 4,279,369 3,848,598
4,430,086 4,274,318 3,838,694
4,425,126 4,259,387 3,837,343
4,417,676 4,240,866 3,779,246
4,413,623 4,235,237 3,777,758
4,409,049 4,233,345 3,768,480
4,407,284 4,216,687 3,763,863
4,353,491 4,186,165 3,730,184
4,352,355 4,103,062 3,683,916
4,349,140 4,077,410 3,663,348
4,337,821 4,073,852 3,612,055
4,337,771 4,044,768 3,572,342
4,333,463 4,024,867 3,563,243
4,333,462 4,010,752
4,324,245 3,993,820
ASSIGNMENT
----------
WHEREAS,________________________________________________________________
(Name of J&J owning corporation for the patents assigned)
(hereinafter "Assignor") is the sole and exclusive owner by assignment of the
following patents and patent applications:
WHEREAS, Paragon Trade Brands, Inc., a corporation of the State of Delaware
(hereinafter "Paragon") is desirous of acquiring the entire right, title and
interest in, to and under said patents and patent applications and the
inventions covered thereby.
NOW, THEREFORE, in consideration of and in exchange for the sum on One
Dollar ($1.00) to it in hand paid by Paragon and other good and valuable
consideration, the receipt of which is hereby acknowledged, Assignor has sold,
assigned, transferred and set over, and does hereby sell, assign, transfer and
set over to Paragon, the inventions, patents and patent applications aforesaid,
and any reissue or reissues of said patents and patent applications and any re-
examinations thereof, the same to be held and enjoyed by Paragon for its own use
and enjoyment, and for the use and enjoyment of its successors, assigns, or
other legal representatives, to the end of the term for which the said patent is
granted or reissued as fully and entirely as the same would have been held and
enjoyed by Assignor, if this assignment and sale had not been made; together
with all claims for damages by reason of past infringement of said patent, with
the right to xxx for, and collect the same for its own use and enjoyment, and
for the use and enjoyment of its successors, assigns or other legal
representatives.
And Assignor hereby covenants that it has full right to convey the entire
interest herein assigned, and that it has not executed, and will not execute,
any agreements inconsistent herewith.
____________________________
(Assignor)
By__________________________
(Signature)
____________________________
(Print Name and Title)
Date:_______________________
ATTEST:_____________________
____________________________
Assistant Secretary
Attachment E
ASSIGNMENT
----------
WHEREAS, XxXxxx-PPC, Inc., of New Brunswick, New Jersey, a corporation of
the State of New Jersey (hereinafter "XxXxxx-PPC") is the sole and exclusive
owner by assignment of the following patents:
United States Patent 5,100,397 issued March 31, 1992;
United States Patent 5,171,237 issued December 15, 1992; and
United States Patent 5,246,429 issued September 21, 1993.
WHEREAS, Weyerhaeuser Company of Xxxxxx, Xxxxxxxxxx 00000, a corporation of
Washington State (hereinafter "Weyerhaeuser") is desirous of acquiring the
entire right, title and interest in, to and under said patents and the
inventions covered thereby.
NOW, THEREFORE, in consideration of and in exchange for the sum on One
Dollar ($1.00) to it in hand paid by Weyerhaeuser and other good and valuable
consideration, the receipt of which is hereby acknowledged, XxXxxx-PPC has sold,
assigned, transferred and set over, and does hereby sell, assign, transfer and
set over to Weyerhaeuser, the inventions, patents aforesaid, and any reissue or
reissues of said patents and any re-examinations thereof, the same to be held
and enjoyed by Weyerhaeuser for its own use and enjoyment, and for the use and
enjoyment of its successors, assigns, or other legal representatives, to the end
of the term for which the said patent is granted or reissued as fully and
entirely as the same would have been held and enjoyed by XxXxxx-PPC, if this
assignment and sale had not been made; together with all claims for damages by
reason of past infringement of said patents, with the right to xxx for, and
collect the same for its own use and enjoyment, and for the use and enjoyment of
its successors, assigns or other legal representatives.
And XxXxxx-PPC hereby covenants that it has full right to convey the entire
interest herein assigned, and that it has not executed, and will not execute,
any agreements inconsistent herewith.
XxXXXX-PPC, INC.
By__________________________
(Signature)
____________________________
(Print Name and Title)
Date:_______________________
ATTEST:_____________________
____________________________
Assistant Secretary
Attachment F
TECHNOLOGY AGREEMENT
Xxxxxxx & Xxxxxxx, a corporation organized and existing under the law of New
Jersey and its subsidiaries and affiliates which it controls by majority
ownership, including Xxxxxxx & Xxxxxxx Xxxxxxxx, a division of Personal Products
Corporation, (hereinafter called "J&J") and Weyerhaeuser Company, a corporation
organized and existing under the law of the State of Washington, and its
subsidiaries and affiliates which it controls by majority ownership (hereinafter
called "Weyerhaeuser"), in consideration of the premises and of the mutual
covenants and agreements hereinafter set forth, do hereby covenant and agree as
follows:
1.0 Background and Premises
-----------------------
1.1. J&J is a major manufacturer of absorbent products and has a worldwide
reputation for product innovation and a growing base of related technology.
1.2 Weyerhaeuser is a major manufacturer of absorbent products including
diapers which are sold in Canada and in the United States.
1.3 In May 1985 Uni-Charm Corporation of Japan entered into an agreement
with Xxxxxxx & Xxxxxxx Xxxxxxxx (hereinafter called "JJS") to use certain
confidential information and patents relating to processes and equipment for
making novel absorbent products.
1.4 In August 1986 JJS contacted Weyerhaeuser to determine its interest in
acquiring the tangible assets of JJS and certain rights in patents and
information relating to absorbent product technology subject to previously
granted rights to Uni-Charm set forth in the May 1985 JJS agreement and any
current amendments thereto.
1.5 In the event Weyerhaeuser enters into a corresponding technology
development and patent license agreement with Uni-Charm, Weyerhaeuser is
interested in hiring key J&J employees and in acquiring the tangible assets and
obtaining access to and the rights to use absorbent product technology developed
by J&J.
1
1.6 For their mutual benefit, each party desires to obtain from the other
the certain rights to use absorbent product technology improvements made during
a period defined herein.
2. Definitions
-----------
2.1 "Licensed Technology" shall mean all information relating to the
processes, materials, equipment, designs, operation, performance, controls, or
structures of or for making Infant Diapers, which information is known by J&J
employees, who have been involved with JJS developments relating to the C-C
Patents, as of the Effective Date.
2.2 "C-C Patents" shall mean each and every unexpired patent right of J&J as
listed in Schedule A and Schedule A' attached hereto and made a part hereof,
including patents which result from the issuance, re-examination, reissue,
extension, or foreign equivalent of any so listed patents or applications and
shall further include all patents based on inventions conceived prior to the
Effective Date by one or more J&J employee(s) while working in support of the
JJS developments relating to the so-listed patent rights. Presently identified
inventions conceived prior to the Effective Date are identified in Schedule A'.
2.3 "Improvement Patents" shall mean each and every patent obtained by
Weyerhaeuser or J&J based on invention(s) conceived by their employees between
the Effective Date and ten years after such date, whenever the practice of such
patent will infringe at least one Valid Claim of a C-C Patent.
2.4 "Valid Claim" shall mean a claim in a patent which has not lapsed or
become abandoned and which claim has not been declared null or invalid by an
irrevocable or unappealed decision or judgment of a patent office or a court of
competent jurisdiction.
2.5 "Diaper Patents" shall mean each and every unexpired patent right of J&J
as listed in Schedule B, Schedule B' and Schedule C attached hereto and made a
part hereof, including patents which result from the issuance, re-examination,
reissue, extension, or foreign equivalent of any so-listed patents or patent
applications and shall further include all patents based on inventions conceived
2
prior to the Effective Date by one or more J&J employee(s) while working in
support of the JJS developments relating to the patent rights listed in Schedule
B and Schedule B'. Presently identified inventions conceived prior to the
Effective Date are identified in Schedule B'.
2.6 "Other Patents" shall mean each and every unexpired patent right of J&J
issued or pending as of the Effective Date, other than C-C Patents and Diaper
Patents, Including patents which result from the issuance, re-examination,
reissue, extension, or foreign equivalent of such patent or patent application.
2.7 "Infant Diaper" shall mean any product sold for absorbing body wastes
and fluids, other than human blood and/or menstrual fluid, and designed for use
on a person having a weight of less than fifty (50) pounds.
2.8 "Adult Diaper" shall mean any product sold for absorbing body wastes and
fluids, other than human blood and/or menstrual fluid, and designed for use on a
person having a weight of at least fifty (50) pounds.
2.9 "Consumer Product" shall mean a final product intended to be sold at
retail, other than Infant Diaper, Adult Diaper or any other product to be used
for absorbing human body exudates such as sanitary protection products and wound
care products.
2.10 "Industrial Product" shall mean a product sold for industrial use and
excludes products to be used or sold for absorbing human body exudates.
2.11 "Body Exudate Product" shall mean a product used for absorbing a
human body exudate other than Infant Diaper or Adult Diaper.
2.12 "Royalty Products" shall mean any Infant Diaper, Adult Diaper,
Consumer Product or Industrial Product, the manufacture, use or sale of such
product being within the scope of a Valid Claim of a C-C Patent.
2.13 "Net Sales" shall mean the aggregate of sales by Weyerhaeuser or its
sublicensees of Royalty Products calculated using generally accepted accounting
principles as the total price invoiced customers, less trade-in or cash
discounts
3
actually allowed, credits for temporary price reduction by special consumer
pricing activities, returns and allowances, prepaid transportation charges,
duties and sales taxes added to the face of the invoice. Sales shall be
considered made when invoiced.
2.14 "Uni-Charm Territory" shall mean the territory of Japan.
2.15 "Non-Exclusive Territory" shall mean the territory of Hong Kong, the
People's Republic of China, the Republic of Korea, the Republic of Singapore and
Taiwan.
2.16 "Weyerhaeuser Territory" shall mean the territory of Earth less
Uni-Charm Territory and less Non-Exclusive Territory.
2.17 "Effective Date" shall mean July 1, 1987.
3.0 Grants
------
3.1 J&J hereby grants to Weyerhaeuser an exclusive license, with the right
to grant sublicenses, in Weyerhaeuser Territory and a non-exclusive license in
Non-Exclusive Territory to utilize Licensed Technology to manufacture, have
manufactured, use and sell Infant Diapers.
3.2 J&J hereby grants to Weyerhaeuser a sole license-in Weyerhaeuser
Territory and a non-exclusive license in Non-Exclusive Territory to utilize
Licensed Technology to manufacture, have manufactured, use and sell Adult
Diapers, Consumer Product and Industrial Products.
3.3 J&J hereby grants to Weyerhaeuser an exclusive license, with the right
to grant sublicenses, in Weyerhaeuser Territory and a non-exclusive license in
Non-Exclusive Territory to manufacture, have manufactured, use and sell Infant
Diapers within the scope of any Valid Claim of a C-C Patent, a Diaper Patent or
an Improvement Patent owned by J&J, however, J&J reserves the right to practice
the inventions claimed in the patents and patent applications listed in Schedule
C in the manufacture and sale of private label and control label Infant Diapers
in the United States and Canada and in the manufacture and sale of Infant
Diapers outside the United States and Canada.
4
3.4 J&J hereby grants to Weyerhaeuser a sole license in Weyerhaeuser
Territory and a non-exclusive license in Non-Exclusive Territory to manufacture,
have manufactured, use and sell Adult Diapers, Consumer Products and Industrial
Products within the scope of any Valid Claim of a C-C Patent, a Diaper Patent or
an Improvement Patent owned by J&J.
3.5 J&J hereby covenants not to xxx Xxxxxxxxxxxx or its sublicensees for
infringement of any Valid Claim of any Other Patents as long as the Infant
Diaper is Made, used or sold exercising the licenses of Grants 3.1 or 3.3.
3.6 J&J hereby covenants not to xxx Xxxxxxxxxxxx for infringement of any
Valid Claim of any Other Patents as long as the Adult Diaper, Consumer Product
or Industrial Product is made, used or sold exercising the licenses of Grants
3.2 or 3.4.
3.7 Weyerhaeuser hereby grants to J&J a non-exclusive license worldwide
except for the countries within Asia, Oceania and Middle East regions to
Manufacture, have Manufactured, use and sell any products except Infant Diapers
within the scope of any Valid Claim of an Improvement Patent owned by
Weyerhaeuser.
3.8 J&J hereby assigns to Weyerhaeuser to the extent it is assignable the
license J&J obtained from the Interference Settlement Agreement of February 17,
1983, a copy is set forth in Schedule D attached hereto and made a part hereof.
4.0 Compensation
------------
4.1 Weyerhaeuser agrees to pay to J&J Four Million Two Hundred Seventy-
Five Thousand Dollars ($4,275,000) in cash at closing in payment for fully paid
up rights for all licenses and other J&J obligations set forth in this
Technology Agreement with the exception that the licenses for Royalty Products
are only paid up for the sale of Royalty Products by Weyerhaeuser or its
sublicensees through December 31, 1988.
4.2 In addition, Weyerhaeuser agrees to pay J&J for Royalty Products sold by
Weyerhaeuser or its sublicensees the following royalty:
5
a. Nine tenths of one percent (0.9%) of Net Sales of Infant Diapers and
Consumer Products sold between January 1, 1989 and December 31, 1996;
b. Six tenths of one percent (0.6%) of Net Sales of Infant Diapers and
Consumer Products sold between January 1, 1997 and February 19,
2002;
c. One and one half percent (1.5%) of Net Sales of Adult Diapers sold
between January 1, 1989 and December 31, 1996;
d. Eight tenths of one percent (0.8.%) of Net Sales of Adult Diapers sold
between January 1, 1997 and February 19, 2002; and
e. One percent (1.0%) of the variable cost of manufacturing that portion
within the scope of a Valid Claim of a C-C Patent of Industrial
Products sold between January 1, 1989 and February 19, 2002.
4.3 Weyerhaeuser agrees to send written royalty reports to J&J within forty-
five (45) days after the end of each fiscal half-year report period between
January 1989 and December 2001 and after the final report period ending February
19, 2002. Such reports will set forth the Net Sales of Royalty Products sold
during the report period by Weyerhaeuser and its sublicensees. Concurrently with
such reports Weyerhaeuser shall pay to J&J the royalties in accordance with
Section 4.2
4.4 Weyerhaeuser agrees and shall require its sublicensees to keep adequate
records for three (3) years showing the Net Sales of Royalty Products sold in
sufficient detail to enable the royalties payable hereunder to be determined.
Weyerhaeuser further agrees and shall require its sublicensees to permit its
applicable books and records to be examined from time to time to the extent
necessary to verify the reports and royalties due and payable hereunder.
4.5 All payments to be made to J&J under this Agreement shall be made in
United States Dollars using the exchange rate published in the U.S. Wall Street
Journal on the last day of the fiscal half-year for which the royalty is being
paid or
6
on the date payment is due for all other payments hereunder. All such royalties
and payments shall be net of all taxes and shall be deposited to the account of
J&J at a bank designated from time to time in writing by J&J.
4.6 In the event the royalties paid by Weyerhaeuser under Section 4.2 are
less than Five Hundred Thousand Dollars ($500,000) for Royalty Products sold
during each of the years 1989, 1990, 1991, 1992 or 1993 and Weyerhaeuser fails
to pay to J&J the difference between such royalties paid and Five Hundred
Thousand Dollars ($500,000), J&J shall have the option of terminating this
Technology Agreement by providing written notice to Weyerhaeuser exercising such
option within sixty (60) days after the due date for royalties for the year in
question. That notice shall not be effective to terminate this Technology
Agreement if Weyerhaeuser pays to J&J such difference within thirty (30) days
after receipt of J&J's notice.
4.7 In the event the royalties paid by Weyerhaeuser under Section 4.2 are
less than Five Hundred Thousand Dollars ($500,000) for Royalty Products sold
during each of the years 1994, 1995, 1996, 1997, 1998, 1999, 2000 and 2001 and
Weyerhaeuser fails to pay to J&J the difference between such royalties paid and
Five Hundred Thousand Dollars ($500,000), J&J shall have the option to terminate
all rights of Weyerhaeuser and its sublicensees to practice any C-C Patents with
all other rights being deemed irrevocable and paid up. J&J may exercise this
option by providing written notice to Weyerhaeuser of such exercise within sixty
(60) days after the due date for royalties for the year in question. That notice
shall not be effective to terminate such rights if Weyerhaeuser pays to J&J such
difference within thirty (30) days after receipt of J&J's notice.
4.8 Weyerhaeuser may purchase irrevocable and paid up rights provided in
this Technology Agreement and supersede all future obligations of Sections 4.2,
4.3, 4.6 and 4.7 by paying to J&J Twenty-Five Million Dollars ($25,000,000) in
cash on or before January 1, 1989 or by paying J&J on or before any succeeding
January 1 a Paid-Up License Amount equal to Twenty-Five Million Dollars
($25,000,000) on January 1, 1989 compounded at the rate of Twelve Percent (12%)
per annum providing said Paid-Up License Amount shall be reduced by the total
amount of all royalty payments made by Weyerhaeuser under Sections 4.2, 4.6 and
4.7 compounded at the rate of Twelve Percent (12%) per annum.
7
5.0 Transfer of Technology
----------------------
5.1 During the first one hundred and twenty (120) days after the Effective
Date of this Agreement, the parties shall prepare a mutually acceptable plan for
making available to Weyerhaeuser in a useful and understandable form the
Licensed Technology. Such plan will identify the areas of technology, the names
of the individuals who will be presenting and receiving such information, the
form of the documentation and the timing for conducting the necessary
instruction and training so that the objective of developing a full
understanding on the part of Weyerhaeuser's designated employees of the Licensed
Technology can be achieved.
5.2 Any individual listed on Schedule E who has not accepted employment
with Weyerhaeuser and remains in the employment of J&J shall be made available
to consult with Weyerhaeuser, at JJS facilities in Xxxxxxxx, N.J., for a period
of up to five (5) days for each employee during the first one hundred and eighty
(180) days after the Effective Date of this Agreement.
5.3 Each party agrees to indemnify and save the other party harmless from
and against any claims, suits, damages and expenses incurred as a result of
injuries to, or the death of, any employee of that party when visiting the
facilities of the other pursuant to this Technology Agreement, except that such
other party shall be responsible for injuries caused to the extent of its own
willful conduct or negligence.
6.0 Confidentiality
---------------
6.1 All Licensed Technology supplied or received by the parties under the
terms of this Agreement shall be protected as follows:
(a) To the extent that as of the Effective Date the Licensed Technology
is of a confidential nature J&J shall clearly xxxx such information as
"Proprietary" or "Confidential" if in written form or, if not in written form,
by clearly characterizing it as "Proprietary" or "Confidential" so that
Weyerhaeuser is aware that it is to be protected under the terms hereof.
8
(b) Without prior written consent of Weyerhaeuser, J&J shall not
disclose Proprietary or Confidential Licensed Technology information to any
third party without first obtaining from said third party an agreement to
maintain the confidential status and to strictly limit the use of such
information to that permitted J&J under this Agreement.
(c) Weyerhaeuser shall only disclose such Proprietary or Confidential
Licensed Technology information to those of its consultants, contractors,
employees, or to its sublicensees' employees who shall reasonably need to know
such information and then only upon such consultant's, contractor's and
employees' agreement to maintain the confidentiality and restrict the uses to
those permitted under this Technology Agreement.
6.2 The obligations of paragraph 6.1 shall not deprive the parties of the
right to use or disclose any information:
(a) Which is, at the time of first disclosure to recipient, generally
known to the trade or public;
(b) Which becomes at a later date generally known to the trade or public
through no fault of recipient and then only after such later date;
(c) Which is possessed by recipient, as shown by recipient's written or
other tangible evidence, before its first disclosure by the disclosing party or
by anyone confidentially bound to the disclosing party as to such information;
(d) Which is disclosed to recipient in good faith by a third party who
has an independent right to such information; or
(e) After December 31, 1996.
6.3 J&J and Weyerhaeuser each agree that the other is not restricted from
the disclosure of any Licensed Technology information as is reasonably necessary
in the effort to obtain patents and to commercially exploit the rights granted
and retained in the Licensed Technology.
9
7.0 Patents
-------
7.1 J&J shall retain the responsibility and cost of preparing, prosecuting
and maintaining C-C Patents of Schedule A, Diaper Patents of Schedules B and C
and Improvement Patents owned by J&J. Weyerhaeuser, at its sole discretion,
shall have the responsibility and costs of preparing, filing on a worldwide
basis, prosecuting and maintaining the patents resulting from the inventions
identified in Schedules A' and B'.
7.2 J&J shall keep Weyerhaeuser fully informed by the transfer of copies of
patent applications and other documents, including correspondence with the
patent offices involved, of all matters relating to C-C Patents, Diaper Patents
and Improvement Patents owned by J&J. At the minimum to carry this out, J&J
shall provide to Weyerhaeuser a written report by the end of February of each
year during the term hereof indicating the status of such patents as of the end
of the prior year.
7.3 In the event J&J, in its sole discretion, decides not to continue the
prosecution and/or maintenance of any C-C Patent, Diaper Patent or Improvement
Patent in any country, J&J will so notify Weyerhaeuser of J&J's decision in
such regard and Weyerhaeuser shall have thirty (30) days in which to notify J&J
that Weyerhaeuser desires to continue the prosecution and/or maintenance of such
patent or patent applications at Weyerhaeuser's direction and cost. Such
notification by J&J pursuant to this paragraph 7.3 shall relieve J&J of any
further responsibility with regard to such patent or patent application under
this Article 7.0. Should Weyerhaeuser notify J&J that it desires to continue the
prosecution and/or maintenance of a C-C Patent, Diaper Patent or Improvement
Patent, that J&J has notified Weyerhaeuser pursuant to this paragraph 7.3, J&J
shall assign said patent or patent application to Weyerhaeuser and the further
prosection and/or maintenance of the same shall be at the sole discretion and
cost of Weyerhaeuser.
8.0 Indemnities
-----------
8.1 In the event that Weyerhaeuser or its sublicensee receives notice of any
claim from a third party that the practice of any C-C Patent is or may be an
infringement of a patent right of such third party, J&J will respond to that
notice,
10
undertake the defense and save Weyerhaeuser and its sublicensee harmless from
any cost and damage based on such claim. This indemnity specifically includes
but is not limited to any infringement of U.S. Patents 4,340,057; 4,429,001; and
4,610,678. If as a result Weyerhaeuser or its sublicensee is enjoined from the
practice of any C-C Patent, all royalties under Sections 4.2, 4.6 and 4.7 shall
be waived from the date of the injunction forward for all Royalty Products to
which the injunction applies.
8.2 Each party agrees to indemnify and hold the other party harmless with
respect to any product liability claims, suits, damages and expenses arising out
of the manufacture, use or sale of products licensed under this Technology
Agreement made, used, or sold by the indemnifying party or its sublicensees, or
by any third party.
9.0 Infringement
------------
9.1 In the event that Weyerhaeuser notifies J&J of an infringement by any
third party of any C-C Patent, Weyerhaeuser shall provide J&J concurrently with
said notice, evidence of at least Two Million Dollars ($2,000,000) lost sales of
Royalty Products due to the conduct by any said third party. J&J shall have a
period of ninety (90) days after receipt of said notice and the furnishing of
such evidence in which to advise Weyerhaeuser in writing whether J&J wishes to
institute a suit for infringement against any such third party. Should J&J elect
to institute such suit for infringement, it shall do so promptly after the
expiration of said ninety-day period and diligently prosecute same to xxxxx such
infringement and all damages, proceeds and other recoveries resulting from any
such litigation shall be retained by J&J. If J&J does not give Weyerhaeuser
written notice of its election to institute such suit within said ninety-day
period, Weyerhaeuser shall have the right, at its own cost and expense, to
institute such suit for infringement and all damages, proceeds and other
recoveries resulting from any such litigation shall be retained by Weyerhaeuser.
J&J, at its own expense, shall have the right to be represented in a
noncontrolling capacity by counsel in any such proceedings instituted by
Weyerhaeuser. During such suit conducted by Weyerhaeuser, it may withhold fifty
percent (50%) of the royalties due J&J under Sections 4.2, 4.6 and 4.7 with
respect to the applicable Royalty Product in each country in which such suit is
being diligently prosecuted by Weyerhaeuser. If Weyerhaeuser settles the
11
suit or is successful in such suit and obtains an injunction and/or is awarded
damages as against such third party, then the withheld royalties less two times
the Weyerhaeuser out-of-pocket suit costs not otherwise paid by such third party
shall become due and payable to J&J and further royalties will again be due and
payable in accordance with this Technology Agreement with eight percent (8%)
interest per annum.
9.2 In the event that Weyerhaeuser notifies J&J of an infringement by any
third party of any Diaper Patent, Weyerhaeuser shall provide J&J concurrently
with said notice, evidence of at least Two Million Dollars ($2,000,000) lost
sales of Royalty Products due to the conduct by any said third party. J&J shall
have a period of ninety (90) days after receipt of said notice and the
furnishing of such evidence in which to advise Weyerhaeuser in writing whether
J&J wishes to institute a suit for infringement against any such third party.
Should J&J elect to institute such suit for infringement, it shall do so
promptly after the expiration of said ninety-day period and diligently prosecute
same to xxxxx such infringement and all damages, proceeds and other recoveries
resulting from any such litigation shall be retained by J&J. If J&J does not
give Weyerhaeuser written notice of its election to institute such suit within
said ninety-day period, Weyerhaeuser shall have the right, at its own cost and
expense, to institute such suit for infringement and all damages, proceeds and
other recoveries resulting from any such litigation shall be retained by
Weyerhaeuser. J&J, at its own expense, shall have the right to be represented in
a noncontrolling capacity by counsel in any such proceedings instituted by
Weyerhaeuser. During the pendency of such suit conducted by Weyerhaeuser,
Weyerhaeuser may withhold twenty-five percent (25%) of the royalties due J&J
under sections 4.2, 4.6 and 4.7 with respect to the applicable Royalty Product
in each country in which suit is being diligently prosecuted by Weyerhaeuser. If
Weyerhaeuser settles the suit or is successful in such suit and obtains an
injunction and/or is awarded damages as against such third party, then the
withheld royalties less two times the Weyerhaeuser out-of-pocket suit costs not
otherwise paid by such third party shall become due and payable to J&J and
further royalties will again be due and payable in accordance with this
Agreement with eight percent (8%) interest per annum.
12
10.0 Warranties and Representations
------------------------------
10.1 J&J warrants that it has full title and all rights necessary to support
the grants and other obligations set forth herein, including but not limited to
the Licensed Technology, C-C Patents and Diaper Patents.
10.2 J&J does not warrant the validity of the C-C Patents but J&J does
represent that it has no information which would invalidate that such patents.
10.3 J&J does not warrant the completeness or total usefulness of the
Licensed Technology but J&J does represent that it shall use reasonable care to
provide accurate and complete information to Weyerhaeuser.
11.0 Related Agreements
------------------
11.1 This Technology Agreement supersedes the Confidentiality Agreements
between Weyerhaeuser and J&J relating to the subject matter of the Licensed
Technology.
11.2 J&J agrees to monitor and enforce as needed confidentiality agreements
between J&J and third parties relating to the subject matter of the Licensed
Technology. Further, J&J shall provide copies of all of such agreements to
Weyerhaeuser within sixty (60) days after the Effective Date.
11.3 No other prior agreements between J&J and Weyerhaeuser relating to the
subject matter of the Licensed Technology shall have any effect inconsistent
with the terms of this Technology Agreement.
11.4 In the event Weyerhaeuser has facilities to commercially manufacture an
absorbent core product within the scope of a claim of a C-C Patent and in
Weyerhaeuser's sole discretion it determines that it has excess capacity of such
core product, J&J will have the right to purchase the same on mutually agreeable
terms.
11.5 If J&J desires to purchase an absorbent core product within the scope
of a claim of a C-C Patent from Weyerhaeuser, the parties agree to negotiate in
13
good faith a mutually acceptable agreement whereby Weyerhaeuser will
manufacture such product for sale to J&J. Should the parties fail to agree on
such an arrangement, Weyerhaeuser agrees to grant J&J a license to practice
Weyerhaeuser technology in order to allow J&J to manufacture for its own use
such an absorbent core product on terms mutually acceptable to the parties.
12.0 Term and Termination
--------------------
12.1 The term of this Agreement shall extend from the Effective Date until
the expiration of the last to expire C-C Patents, Diaper Patents, Other Patents
and Improvement Patents and the rights to use Licensed Technology shall continue
without limitation, provided that this Technology Agreement may terminate
earlier by operation of Section 4.6 and the license under C-C Patents may
terminate earlier by operation of Section 4.7.
12.2 In view of the rights and obligations involved in this Agreement, it
is not anticipated that a termination with notice provision would be an adequate
remedy for any material breach. It is expected that the parties will in such
circumstance be diligent in trying to resolve their differences in a manner
which would allow the mutual benefits foreseen for this relationship to
continue. It is, however, agreed by Weyerhaeuser and J&J that upon mutual terms,
a termination prior to the expiration of this Agreement could be effective.
13.0 Miscellaneous Provisions
------------------------
13.1 Any notice or request with reference to this Agreement shall be by
letter, cable or telex followed by a confirming letter mailed within seven (7)
days, and shall be directed by one party to the other at its respective address
as follows:
To J&J:
Xxxxxxx & Xxxxxxx
Office of General Counsel
Xxx Xxxxxxx & Xxxxxxx Xxxxx
Xxx Xxxxxxxxx, Xxx Xxxxxx 00000-0000
To Weyerhaeuser:
Weyerhaeuser Company
Attn: Vice President, Personal Care Products
Xxxxxx, Xxxxxxxxxx 00000
14
Each party may by written notice to the other party change the address to which
requests or notices shall be directed. Notices shall be effective when received.
13.2 This Technology Agreement shall be construed and the legal relations
between the parties determined in accordance with the law of the State of
Washington.
13.3 This Technology Agreement, and the rights and obligations hereunder,
are personal as between the parties hereto and shall not be assigned by either
of the parties to any third party without the prior written consent of the other
party except to the successor by way of purchase or otherwise of a substantial
part of the business relating to absorbent products of that party. In such
event, prior written consent is not required but prompt notification of such an
assignment with an assurance by the acquiring party of its willingness and
ability to fully perform the rights of the party acquired are necessary for such
assignment to be effective.
13.4 Any failure of either party to enforce any of the provisions of this
Technology Agreement or to require at any time performance by the other party of
any of the provisions hereof, shall in no way effect the validity of this
Technology Agreement or any part thereof, or the right of the first party
thereafter to enforce each and every such provision.
13.5 Any provision, other than those relating to compensation, of this
Technology Agreement which in any way contravenes the law of any territory in
which it is effective shall in such territory to the extent of such
contravention of the law be deemed severable and shall not effect any other
provision of this Technology Agreement. If for any reason any such provision is
held by any competent authority or court to be invalid, illegal or
unenforceable, such provision shall, to the extent of such invalidity,
illegality or enforceability be deleted from this Technology Agreement and the
parties shall, within thirty (30) days of such decision negotiate in good faith
to agree upon a valid, binding and enforceable provision or provisions so as to
restore, so far as practicable, the balance of the interest of the parties.
13.6 Each party agrees that it shall not without the written consent of the
other, directly or indirectly, use or refer to the trademarks or trade name of
the
15
other. Each party may state, however, that its products are manufactured under
licenses granted to it by the other party to the extent that such is, in fact,
the case.
13.7 Neither J&J nor Weyerhaeuser shall be liable for a delay or failure to
perform under the provisions of this Technology Agreement to the extent that
such delay or failure is attributable to acts of God, of governmental authority,
of third parties not in the control of such party and other causes out of the
control such party. In such event the party delayed shall promptly notify the
other party of such event and as soon as conditions are brought under control
fully perform as agreed.
13.8 Except as otherwise expressly provided, this Technology Agreement may
not be released, discharged, changed or modified in any manner, except by a
document of concurrent or subsequent date, in writing, signed by duly authorized
officers of the parties hereto.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed, by their duly authorized officers as of the date indicated.
AGREED TO AND ACCEPTED THIS AGREED TO AND ACCEPTED THIS
15th day of October, 1987 15th day of October, 1987
XXXXXXX & XXXXXXX WEYERHAEUSER COMPANY
By /s/ X.X. Xxxxxx By /s/ X.X. Gummell
------------------------ ------------------------
(Signature) (Signature)
Vice Chairman, Member,
Executive Committee Group V.P.
------------------------ ------------------------
(Print Name and Title) (Print Name and Title)
16
SCHEDULE A
----------
A-1
JBD-2/25
Patents
-------
U.S. 4,500,315 and 4,537,590
----------------------------
Bolivia - X-0000
Xxxxxx - 1,209,752
Chile - 00000
Xxxxxxx - PI-86-187
Great Britain - 2,131,346
Greece- 78755
Xxxxxxxxx - 0000
Xxx Xxxxxxx - 000000
Xxxx - 3814
Xxxxxxxx - 00000
Xxxxx Xxxxxx - 00/0000
Xxxxx - 527081, 280301, 280302, 280303, 280304, 280305, 280306
Trinidad - 24/1987
Patent Applications
-------------------
Xxxxxxxxx - 000000
Xxxxxxxxx - 00000/00
Xxxxxx - 8306016
Columbia - 227109
Xxxxxxx - 0000/00
Xxxxx- 691/1983
Eire - 0000/00
X.X.X. - 00000000.0 (Xxxxxxx, Xxxxxxx, Xxxxxx, Germany, Italy, Luxembourg,
Netherlands, Sweden, Switzerland)
Finland - 834068
Xxxxx- 0000/00
Xxxxxx - 000000
Xxxxxx - 000000
Xxxxxxxxx - 0000
X-0
JBD-54
Patents
-------
U.S. 4,676,784
--------------
Greece - 851053
Portugal - 00000
Xxxxx Xxxxxx - 85/3230
Patent Applications
-------------------
Xxxxxxxxx - 000000
Xxxxxxxxx - 00000/00
Xxxxxx - 8502058
Canada - 480539-9
Columbia - 244098
Denmark - 0000/00
X.X.X. - 00000000.0 (Xxxxxxx, Xxxxxxx, Xxxxxx, Great Britain, Germany, Italy,
Luxembourg, Netherlands, Sweden, Switzerland)
Mexico - 205183
Xxxxxx - 000000
Xxx Xxxxxxx - 000000
Xxxxx - 292871
Venezuela - 632/85
A-3
JBD-62
Patents
-------
U.S. 4,560,372
--------------
Greece - 851052
Portugal - 00000
Xxxxx Xxxxxx - 85/3229
Patent Applications
-------------------
Xxxxxxxxx - 000000
Xxxxxxxxx - 00000/00
Xxxxxx - 8502060
Canada - 480455-4
Columbia - 244099
Denmark - 0000/00
Xxxxxxx - 85-038
E.P.O. - 85303061.7 (Austria, Belgium, France, Great Britain, Germany, Italy,
Luxembourg, Netherlands, Sweden, Switzerland)
Xxxxxx - 000000
Xxx Xxxxxxx - 000000
Xxxxx - 292872
Venezuela - 630/85
A-4
JBD-7??
Patents
-------
U.S. 4,559,050
--------------
Xxxxx Xxxxxx - 00/0000
Xxxxx - 000000
Patent Applications
-------------------
Xxxxxxxxx - 000000
Xxxxxxxxx - 00000/00
Xxxxxx - 8503822
Canada - 000000-0
Xxxxxx - 000000
Xxxxx - 574/85
Xxxxxx - 000000
Xxx Xxxxxxx - 000000
Xxxxxxxx - 80968
Venezuela - 1264/85
A-5
JBD-73
Patents
-------
U.S. 4,596,567
--------------
Xxxxx Xxxxxx - 00/0000
Xxxxx - 000000
Patent Applications
-------------------
Xxxxxxxxx - 000000
Xxxxxxxxx - 00000/00
Xxxxxx - 8503817
Canada - 488874-0
Columbia - 247670
Eire - 0000/00
X.X.X. - 00000000.0 (Xxxxxxx, Xxxxxxx, Xxxxxx, Great Britain, Germany, Italy,
Luxembourg, Netherlands, Sweden, Switzerland)
Greece - 000000
Xxxxx - 573/85
Xxxxxx - 000000
Xxx Xxxxxxx - 000000
Xxxxxxxx - 80971
Venezuela - 1258/85
A-6
JBD-74
Patents
-------
U.S. 4,605,402
--------------
Xxxxx Xxxxxx - 00/0000
Xxxxx - 000000
Patent Applications
-------------------
Xxxxxxxxx - 000000
Xxxxxxxxx - 00000/00
Xxxxxx - 8503820
Canada - 488873-1
Columbia - 247671
Eire - 0000/00
X.X.X. - 00000000.0 (Xxxxxxx, Xxxxxxx, Xxxxxx, Great Britain, Germany, Italy,
Luxembourg, Netherlands, Sweden, Switzerland)
Greece - 000000
Xxxxx - 589/85
Xxxxxx - 000000
Xxx Xxxxxxx - 000000
Xxxxxxxx - 80970
Venezuela - 1259/85
A-7
ABTK-1
Patents
-------
Xxxxxxxxx - 00000/00
Xxxxxx - 1,163,599
E.P.O. - 8130206.4 (France, Great Britain, Germany, Netherlands, South
Africa) - 81/3131
Patent Applications
-------------------
Xxxxxx - 0000000
Xxxxxx - 000000
X-0
XXX-000
Patents
-------
U.S. 4,381,320
--------------
Argentina - 229126
Australia - 551832
Canada - 1203772
Great Britain - 2099828
New Zealand - 200725
Portugal - 00000
Xxxxx Xxxxxx - 82/3882
Patent Applications
-------------------
Brazil - 8203234
Germany - 3220735.2
A-9
Patents
-------
U.S. 4,573,988 JBD 66
-------------- (CIP of JBD-2 and 25)
no international filing
U.S. 4,540,454 JBD-78
-------------- (DIV of JBD-2 and 25)
no international filing
SCHEDULE A'
-----------
A'-1
Recent Inventions:
File 1047.141 - The incorporation of plasticizers and copolasticizers in
------------- superabsorbent polymers
File 1047.143 - Incorporating certain co-monomers in the system to
------------- improve absorbent characteristics
File 1047.145 - Combination of fibers, free superabsorbents and bound
------------- superabsorbents
File 1047.148 - SaH resistant swellable polymers
-------------
File 1047.153 - An ultrathin breathable diaper having improved fit
-------------
SCHEDULE B
----------
B-1
JBD-8
Patents
-------
U.S. 4,413,995
--------------
Australia - 556,670
Canada - 1,192,456
Chile - 00000
Xxxxxxx - 85-060
Great Britain - 2,122,658
Greece - 78447
Xxxxxxxxx - 0000
Xxx Xxxxxxx - 00000
Xxxx - 3387
Xxxxxxxx - 00000
Xxxxx Xxxxxx - 00/0000
Xxxxx - 522,535
Trinidad - 71/1985
Patent Applications
-------------------
Argentina - 293,117
Brazil - 8301876
Eire - 1192/83
E.P.O. - 833,02903.6 (Austria, Belgium, France, Italy,
Netherlands, Sweden, Switzerland)
Mexico - 197379
Xxxxxx - 000000
Xxxxxxxxx - 000
X-0
JBD-11
Patents
-------
U.S. 4,540,415
--------------
Ecuador - 00-000
Xxxxx - 15119
Great Britain - 2114449
Xxxxxxxxx - 0000
Xxx Xxxxxxx - 000000
Xxxx - 3783
Xxxxxxxx - 00000
Xxxxx Xxxxxx - 83/0958
Trinidad - 18/1985
Uruguay - 12622
Patent Applications
-------------------
Xxxxxxxxx - 000000
Xxxxxxxxx - 00000/00
Xxxxxx - 0000000
Xxxxx - 89/83
Columbia - 219654
Xxxxxx - 000000
Xxxxxxxxx - 000/00
X-0
JBP-22
Patent
------
U.S. 4,084,592
--------------
No international filing
---------------------------
JBD 76
Patents
-------
South Africa 85/6254
Patent Applications
-------------------
U.S. 641,665
Xxxxxxxxx - 000000
Xxxxxxxxx - 00000/00
Xxxxxx - 8503818
Canada - 488814-6
X.X.X. - 00000000.0 (Xxxxxxx, Xxxxxxx, Xxxxxx, Great Britain, Germany, Italy,
Luxembourg, Netherlands, Sweden, Switzerland)
Greece - 851980
New Zealand - 212997
Portugal - 00000
Xxxxx - 546183
Venezuela - 1261/85
B-4
JBD-70 (Design)
Patents
-------
Argentina - 47510
Australia - 00000
Xxxxxx - 55968
Great Britain - 1024806
New Zealand - 19625
Portugal - 18223
Patent Applications
-------------------
Brazil - 4,500,109
Ecuador - 00-000
Xxxxxx - 5833
Uruguay - 2226
Venezuela - 204/85
B-5
JBD-96
Patent Applications
-------------------
Xxxxxxxxx - 000000
Xxxxxxxxx - 00000/00
Xxxxxx - 8630993
Canada - 516675-6
New Zealand - 217087
Portugal - 83222
Venezuela - 1335-86
B-6
JBD-47/103
Patents
-------
Argentina - 000000
Xxxxx - 35204
Portugal - 79697
Patent Applications
-------------------
U.S. 824,928
Australia - 00000/00
Xxxxxx - 8406441
Canada - 470342-1
Columbia - 000000
Xxxxxxx - 84/254
Great Britain - 0000000
Xxxxxx - 000000
Xxx Xxxxxxx - 000000
Venezuela - 2126/84
X-0
XXX-00/000/000
Xxxxxxx
-------
Xxxxx Xxxxxx - 85/6253
Spain - 546184
Patent Applications
-------------------
X.X. 000000
Australia - 46276/85
Canada - 488816-2
X.X.X. - 00000000.0 (Xxxxxxx, Xxxxxxx, Xxxxxx, Great Britain, Italy,
Luxembourg, Netherlands, Sweden, Switzerland)
Greece - 851977
New Zealand - 212994
Portugal - 80969
B-8
Patents
-------
U.S. 3,779,246 J&J 000
Xxxxxx - 977,268
U.S. 4,573,991 JBD 50
U.S. 4,479,836 JBD 43
U.S. 4,576,598 JBD 41
U.S. 4,552,560 JBD 48
Patent Application
------------------
U.S. 828,073 JBD 104
B-9
Patents
-------
U.S. 4,464,217
--------------
Canada 1,186,288
Patent Applications
-------------------
Germany 8,211,227.4
SCHEDULE B'
-----------
B'-1
Recent Inventions:
File 1047.142 - An improved fitting diaper where the improvement is
------------- obtained by specific positioning of the elastic members
SCHEDULE C
----------
C-1
JBD-7/JBP-98/JBP-158
Patents
-------
U.S. 4,450,026
--------------
U.S. 4,337,771
Australia 528,814
Austria 372,825
Brazil 7900459
Canada 1,195,804
Mexico 149941
New Zealand 000000
Xxxxxxxx 00000
Xxxxx Xxxxxx 79/0351
Patent Applications
-------------------
Columbia 179383
C-2
JBD-44/JBP-97/JBP-59
Patents
-------
U.S. Re 31,922
--------------
U.S. 4,324,245
Argentina 221074
Xxxxxxxxx 000000
Xxxxxx 0000000
Xxxxx 31273
Great Britain 2,010,682
Guatemala 3295
Hong Kong 80/1983
Jamaica 2831
Xxxxxxxx 00/00
Xxxxxx 000000
Philippines 00000
Xxxxxxxx 68941
Saban 00
Xxxxx Xxxxxx 78/7112
Sarawak 1816
Xxxxxxxxx 000/00
Xxxxxxxx 000
Xxxxxxxxx 00000
Patent Applications
-------------------
Brazil 7808292
Columbia 000000
Xxxxxxx 210
C-3
JBP-157/JBP-100
Patents
-------
U.S. 4,336,803
Xxxxxxxxx 000000
Xxxxxx 1,100,706
Patent Applications
-------------------
Brazil 7808293
C-4
JBP-169
Patents
-------
Australia 538624
Xxxxx 00000
Xxxxxxx 00-000
Xxxxx 154935
Taiwan 15625
X-0
XXX-000
Xxxxxxx
-------
Xxxxxx 1,180,173
Xxxxx 00000
Xxxxxx 037829 00
Xxxxx Xxxxxx 82/2500
Patent Applications
-------------------
Brazil 8202486
Germany 82110557
Patent JBP-210
------
U.S. 4,381,783
Patent Application JBD-90
------------------
Reissue SN 729,678
SCHEDULE D
INTERFERENCE SETTLEMENT AGREEMENT
----------------------------------
THIS AGREEMENT, made and entered into as of the 17th day of February ,
1983, between XXXXXXX & XXXXXXX (hereinafter referred to as "J&J"), a
corporation of New Jersey, and having a place of business at 000 Xxxxxx Xxxxxx,
Xxx Xxxxxxxxx, Xxx Xxxxxx 00000; and XXXXXX TEXTILE CORPORATION (hereinafter
referred to as "XXXXXX"), a corporation of the State of Delaware, and having a
place of business at Suite 800, Green Gate Park, 00 Xxxxx Xxxx Xxxx, Xxxxxxxxxx,
Xxxxx Xxxxxxxx 00000;
WITNESSETH;
----------
WHEREAS, J&J is the owner of the entire right, title and interest in and to
United States Patent Application Serial No. 150,515, filed May 16, 1980, by
Xxxxxxxx et al.;
WHEREAS, XXXXXX is the owner of the entire right, title and interest in and
to United States Patent 4,239,578 issued to Xxxx, and an application for United
States Letters Patent Serial No. 202,943, filed November 3, 1980, by Xxxx;
WHEREAS, the aforesaid patent and applications are now involved in
interference proceedings in the United States Patent Office, Numbers 100,913 and
100,914 (hereinafter referred to as the "INTERFERENCES");
WHEREAS, J&J and XXXXXX wish to effect amicable settlement of the matters
in controversy in said INTERFERENCES, and other matters pertaining thereto,
without incurring the delays and expenses incidental to prosecution of said
INTERFERENCES to final conclusion;
WHEREAS, each of the Parties hereto desire to practice inventions which may
fall within the scope of the aforesaid patent and applications in the United
States;
WHEREAS, the parties hereto desire to acquire, each from the other, a
license to practice the inventions of the aforesaid patent and applications in
the United States on the terms and conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the mutual covenants and obligations
herein expressed, it is agreed by and between the parties as follows:
(1) Within sixty (60) days after the date of this Agreement, the patent
counsel for the parties shall meet at a mutually convenient location and each
shall explain and disclose to each other its evidence, including the notebooks
and other documentation in support thereof bearing upon the issue of priority of
invention. Such evidence shall initially be presented in an informal manner and
may be supplemented if necessary on another occasion. If, on the basis of a
review of all such evidence, patent counsel for the parties mutually agree upon
a proper disposition of all questions of priority of invention in accord with
the applicable laws of the United States and Rules of Practice of the U.S.
Patent Office with respect to any of the counts of the INTERFERENCES, an
appropriate formal concession of priority, abandonment of the contest, and/or
disclaimer under 37 CFR 1.262 in conformance with such evidence as to each such
count shall be filed by the losing party in the Patent and Trademark Office,
along with (1) a paper signed by the respective patent counsel stating the basis
for their determination of priority, and (2) copies of documentary evidence in
support of such determination.
-2-
In the event counsel for the parties are unable to agree upon the issue of
priority of invention as to any count of the INTERFERENCES, the Board of Patent
Interferences shall be allowed to determine priority in the customary fashion.
The respective counsel shall stipulate to all facts on which they do agree under
37 CFR 1.272(c). Thereafter each party shall present whatever pertinent evidence
remains in dispute by deposition under 37 CRF 1.272(a), by affidavit under 37
CFR 1.272(c), or by stipulation under 37 CFR 1.272(c), with the other party
having the opportunity to cross-examine by oral deposition or written
interrogatories. Opposing counsel shall cooperate to facilitate the presentation
of such disputed evidence to the Board. The parties reserve the right to argue
ancillary matters. The decision of said Board shall be final and may not be
appealed beyond the Patent and Trademark Office.
(2) Each of the parties to this Agreement hereby grants to the other party
hereto and its affiliated companies a royalty-free, irrevocable, nonexclusive
license to make, have made, use, and sell only the subject matter defined by all
claims of (a) the said United States Patent to Xxxx or any reissue thereof, or
(b) any United States patent or any reissue thereof which is granted on the said
applications of Xxxx and Xxxxxxxx et al. For purposes of this Agreement, an
affiliated company shall be one of the following:
(a) any corporation or organization fifty percent (50%) or more of whose
voting shares are owned by a party hereto;
-3-
(b) any corporation or organization fifty percent (50%) or more of whose
voting shares are owned by a corporation, individual or group of individuals
which also owns fifty percent (50%) or more of the voting shares of a party
hereto; or any subsidiary of such corporation or organization all of whose
voting share, with the exception of such directors' shares as may be required by
statute, are owned by such corporation or organization.
(3) The licenses granted by this Agreement shall not extend to any patent
of the parties other than those specified herein and shall be unassignable
except to the successor of the major part of the business of the party relating
to the subject matter hereof or affiliated companies as previously defined.
(4) This Agreement shall become effective upon execution and shall
continue in effect for the life of the patent or patents, respectively, licensed
hereunder.
(5) Failure of the parties to agree on the issue of priority or matters
ancillary thereto shall not affect the license rights conferred by this
Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this instrument to be
executed in duplicate by their respective representatives, duly authorized, and
their respective corporate
-4-
seals to be hereunto affixed as of the day and date first hereinabove written.
XXXXXXX & XXXXXXX
By Xxxx X. ^illegible^
--------------------
Authorized Officer
XXXXXX TEXTILE CORPORATION
By Xxxxx X. Xxxxxxxx
--------------------
Authorized Officer
-5-
SCHEDULE E
----------
Xxxxxxxx, Xxxxxxxx Xxxxxx, Xxxxxxx
Xxxxxxxxxx, Xxxx Xxxxxxxxx, Xxxxxx
Xxxx, Xxxx Xxxxxx, Xxxx
Xxxxxxxxx, Xxxxxx Xxxxxxx, Xxxxx
Xxxxxx, Xx Xxxx, Xxxxxxxx
Xxxx, Xxxxxxx Xxxxxxx, Xxx
Groseneek, Xxxxxx Xxxxxxx, Xxxxx
Xxxx, Xxxxxx Xxxxxxx, Xxxxxxx
Xxxxx, Xxxxxx Xxxx, Xxxx
Xxxxxxx, Xxxxxx Xxxxxx, Xxxxxx
Xxxxx, Xxxx Xxxxxxxxx, Xxxxxx
Xxxxxxx, Xxx Xxxxxxx, Xxxxxxx
Xxxxxxx, Xxxx Xxxxx, Xxxxx
[LOGO OF WEYERHAEUSER]
Law Department
Tacoma, Washington 98477
Writers Direct Dial Number
(000) 000-0000
July 25, 1988
Xxxxxxx & Xxxxxxx
Office of General Counsel
Xxx Xxxxxxx & Xxxxxxx Xxxxx
Xxx Xxxxxxxxx XX 00000-0000
Attn: Xxxxxx X. Xxxxxx, Esq.
Re: Amendment to Technology Agreement of October 15, 1987
Gentlemen:
This letter is to amend the above-noted Technology Agreement to substitute the
enclosed replacement page C2 of Schedule C for page C2 originally in the
agreement. It is understood that some patents and patent applications were left
off the original C2 and this has been remedied by the enclosed amendment.
To indicate your acceptance and agreement to this amendment, please sign and
return one copy of this letter.
Very truly yours,
/s/ Xxxxxxx X. Xxxxxx
Xxxxxxx X. Xxxxxx
Corporate Patent Counsel
Assistant General Counsel
jw2/822/e1
Enclosure
AGREED TO AND ACCEPTED THIS AGREED TO AND ACCEPTED THIS
26th day of July, 1988 21st day of August, 1988
WEYERHAEUSER COMPANY XXXXXXX & XXXXXXX
By B.V. Xxxxxxx By Xxxxx X. Xxxxxx
------------------------- --------------------------
(Signature) (Signature)
B.V. Xxxxxxx
President, Xxxxx X. Xxxxxx
Personal Care Products Group Company Chairman
------------------------- --------------------------
(Print Name and Title) (Print Name and Title)
C-2
JBD-44/ JBP-97/ JBP-159
JBP-120/ JBP 166
Patents
-------
U.S. Re 31,922
--------------
U.S. 4,324,245
U.S. 4,388,075
Argentina 221074
Australia 525338-533635
Canada 53152-1154901-1181201
Xxxxx 00000
Xxxxx Xxxxxxx 2,010,682
Guatemala 3295
Hong Kong 80/1983
Jamaica 2831
Xxxxxxxx 00/00
Xxxxxx 000000
Philippines 00000
Xxxxxxxx 68941
Saban 00
Xxxxx Xxxxxx 78/7112
Sarawak 1816
Trinidad 113
Venezuela 40765
Patent Applications
-------------------
Brazil 7808292
Columbia 000000
Xxxxxxx 201
[LETTERHEAD OF WEYERHAEUSER APPEARS HERE]
July 17, 1989
Xxxxxxx & Xxxxxxx
Office of General Counsel
Xxx Xxxxxxx & Xxxxxxx Xxxxx
Xxx Xxxxxxxxx XX 00000-0000
Attn: Xxxxxx X. Xxxxxx, Esq.
Re: Amendment to Technology Agreement of October 15, 1987
Gentlemen:
This letter is to amend the above-noted Technology Agreement as follows:
1. Replace page C2 of Schedule C accepted on August 21, 1988. This amendment is
necessary to delete reference to U.S. patent 4,388,075 and corresponding
Canadian patents 1,154,901 and 1,181,201 which have been assigned to
Weyerhaeuser by Xxxxxxx & Xxxxxxx Baby Products Company under the terms of an
ASSIGNMENT, a copy of which is attached.
2. In view of the assignment of U.S. patent 4,388,075 and Canadian patents
1,154,901 and 1,181,201 from Xxxxxxx & Xxxxxxx to Weyerhaeuser, Weyerhaeuser
hereby grants to J&J the nonexclusive paid up, irrevocable right and license
to practice the invention claimed in U.S. patent 4,388,075 and in Canadian
patents 1,154,901 and 1,181,201 in the manufacture, use and sale of Adult
Diapers, Consumer Products, Industrial Products and of private label and
control label Infant Diapers in the United States and Canada. Weyerhaeuser
agrees to reimburse J&J for any outside costs incurred in responding to
Weyerhaeuser's requests for cooperation in support of any litigation
involving these assigned patents.
3. In the event that J&J exercises its option in Section 4.6 of terminating the
Technology Agreement, Weyerhaeuser hereby agrees to reassign to J&J U.S.
patent 4,388,075 and Canadian patents 1,154,901 and 1,181,201.
4. Replace page B-8 to include U.S. Patent 4,731,066 which issued March 15,
1988.
Xxxxxxx & Xxxxxxx
July 17, 1989
Page 2
To indicate your acceptance and agreement to this amendment and the attached
assignment, please have these documents signed and return one copy of this
letter and the assignment to me.
Very truly yours,
/s/ Xxxxxxx X. Xxxxxx
Xxxxxxx X. Xxxxxx
Corporate Patent Counsel &
Assistant General Counsel
jw2/626/e6
AGREED TO AND ACCEPTED THIS AGREED TO AND ACCEPTED THIS
18th day of July, 1989 24th day of August, 1989
WEYERHAEUSER COMPANY XXXXXXX & XXXXXXX BABY
PRODUCTS COMPANY
By /s/ B.V. Xxxxxxx By /s/ Xxxxx X. Xxxxxx
--------------------------- -----------------------
(Signature) (Signature)
B.V. Xxxxxxx, Xxxxx X. Xxxxxx,
President PCP Company Group Chairman
--------------------------- -----------------------
(Print Name and Title) (Print Name and Title)
C-2
JBD-44/JBP-97/JBP-159
Patents
-------
U.S. Re 31,922
--------------
U.S. 4,324,245
Argentina 221074
Australia 525338 -533635
Canada 1,153,152
Xxxxx 00000
Xxxxx Xxxxxxx 2,010,682
Guatamala 3295
Hong Kong 80/1983
Jamaica 2831
Xxxxxxxx 00/00
Xxxxxx 000000
Philippines 00000
Xxxxxxxx 68941
Saban 00
Xxxxx Xxxxxx 78/7112
Sarawak 1816
Trinidad 113
Venezuala 40765
Patent Applicants
-----------------
Brazil 7808292
Columbia 000000
Xxxxxxx 201
B-8
REVISED
-------
Patents
-------
U.S. 3,779,246 J&J 000
Xxxxxx - 977,268
U.S. 4,573,991 JBD 50
U.S. 4,479,836 JBD 43
U.S. 4,576,598 JBD 41
U.S. 4,552,560 JBD 48
U.S. 4,731,066 JBD 131
Patent Application
------------------
U.S. 828,073 JBD 104
[JOHNSON&JOHNSON LOGO]
ONE XXXXXXX & XXXXXXX PLAZA
OFFICE OF NEW BRUNSWICK, N.J. 08933-7003
GENERAL COUNSEL
September 8, 1989
Xx. Xxxxxxx X. Xxxxxx
Assistant General Counsel
Weyerhaeuser Corporation
Tacoma, Washington
Dear Xxx:
Re: Amendment to Technology Agreement
Of October 15, 1987
--------------------------------------
This letter is to further amend the above-noted Technology Agreement as follows:
1. Replace Schedules A, B and C with the attached revised Schedules A, B
and C. This Amendment is necessary to delete reference to various patents
and patent applications which have been assigned to Weyerhaeuser by Xxxxxxx
& Xxxxxxx under the terms of the Assignments, copies of which are attached
hereto. This Amendment is also to add various patents and patent
applications to Schedules A, B and C which inadvertently had been omitted
in the original Schedules.
2. In view of the attached Assignments, Weyerhaeuser hereby grants to J&J a
non-exclusive, paid-up, irrevocable right and license to practice the
inventions claimed in all of said assigned patents and patents issuing on
the assigned patent applications in the manufacture, use and sale of Adult
Diapers, Consumer Products, Industrial Products, and of private label and
control label Infant Diapers. Weyerhaeuser agrees to reimburse J&J for any
outside costs incurred in responding to Weyerhaeuser's request for
cooperation and support of any litigation involving these assigned patents.
Page 2
September 8, 1989
Xxxxxxx X. Xxxxxx
3. In the event that J&J exercises its option in Section 4.6 of terminating
the Technology Agreement, Weyerhaeuser hereby agrees to re-assign the
patents and patent applications included in the attached Assignments.
To indicate your acceptance and agreement to this Amendment and the attached
Assignments, please have this document signed and return one copy of this letter
to me.
Very truly yours,
/s/ Xxxxxx X. Xxxxxx
--------------------
Xxxxxx X. Xxxxxx
Agreed to and Accepted this
1st day of November, 1989.
WEYERHAEUSER CORPORATION
By /s/ B.V. Xxxxxxx
----------------------------
V.P. Personal Care Products
-------------------------------
Title
Agreed to and Accepted this
11th day of September, 1989
XXXXXXX & XXXXXXX
BY /s/ Xxxxx X. Xxxxxx
----------------------------
Company Group Chairman
-------------------------------
Title
RLM/rak
Attachments
[WEYERHAEUSER XXXXXXXXXX]
Xxxxxxxxx Xxxxxxxxxxxx
Xxxxxx, Xxxxxxxxxx 00000
Tel (000) 000 0000
March 14, 1991
Xxxxxxx & Xxxxxxx
Xxxxxx X Xxxxxx, Esq.
Xxxxxx xx Xxxxxxx Xxxxxxx
Xxxxxxx & Xxxxxxx Xxxxx
Xxxxxxxxx XX 00000-0000
Amendment to Technology Agreement Having an Effective Date of July 1, 1987 and
Amendment to Asset Agreement of October 16, 1987 (#15956)
Gentlemen:
[COPY MISSING] result of our recent discussion about current circumstances
relating to the subject matter of the agreements noted above and in
consideration of our mutual exchange of amendments set forth herein, this letter
is to further amend these agreements as follows:
1. Delete paragraph 7.01 Covenant Not to Compete in the Asset Agreement.
2. Delete paragraph 7.02 Right of First Offer in the Asset Agreement.
3. Delete paragraph 2.13 "Net Sales" in the Technology Agreement and replace
it with the following:
2.13 "Prime Line Raw Material Costs" shall mean the actual costs incurred
by Weyerhaeuser or its sublicensees for all of the raw materials used on the
prime line to manufacture any Royalty Products.
4. Delete paragraph 3.1 in the Technology Agreement and replace it with the
following:
3.1 J&J hereby grants to Weyerhaeuser an exclusive license in Weyerhaeuser
Territory, with the right to grant sublicenses and a non-exclusive license in
Non-Exclusive Territory, with the right to grant sublicenses to utilize Licensed
Technology to manufacture, have manufactured, use and sale Infant Diapers,
Consumer Products, Industrial Products and Adult Diapers. It is understood,
however, that each sublicense relating to Adult Diapers must be approved by J&J
before being effective and J&J will not unreasonably delay or deny such
approval.
Xxxxxxx & Xxxxxxx
March 14, 1991
Page 2
5. Delete paragraph 3.2 in the Technology Agreement and replace it with the
following:
3.2 Weyerhaeuser hereby grants to J&J a paid-up, non-exclusive license in
Weyerhaeuser Territory to utilize Licensed Technology to manufacture, have
manufactured, use and sell Consumer Products, Industrial Products and Adult
Products.
6. Delete paragraph 3.3 in the Technology Agreement and replace it with the
following:
3.3 J&J hereby grants to Weyerhaeuser an exclusive license in Weyerhaeuser
Territory, with the right to grant sublicensees and a non-exclusive license in
Non-Exclusive Territory, with the right to grant sublicensees to manufacture,
have manufactured, use and sell Infant Diapers, Consumer Products, Industrial
Products and Adult Diapers within the scope of any Valid Claim of a C-C Patent,
a Diaper Patent or an Improvement Patent owned by J&J. It is understood,
however, that each sublicense relating to Adult Diapers must be approved by J&J
before being effective and J&J will not unreasonably delay or deny such
approval.
7. Delete paragraph 3.4 in the Technology Agreement and replace it with the
following:
3.4 Weyerhaeuser hereby grants to J&J a paid-up non-exclusive license in
Weyerhaeuser Territory to manufacture, have manufactured, use and sell Adult
Diapers, Consumer Products and Industrial Products within the scope of any Valid
Claim of a C-C Patent or Diaper Patent.
8. Delete paragraph 3.5 in the Technology Agreement and replace it with the
following:
3.5 Weyerhaeuser grants to J&J a paid-up nonexclusive license in
Weyerhaeuser Territory to manufacture, have manufactured, use and sell Infant
Diapers within the scope of any Valid Claim of the patents and patent
applications listed in Schedule C.
9. Delete paragraph 3.6 in the Technology Agreement and replace it with the
following:
3.6 J&J hereby covenants not to xxx Xxxxxxxxxxxx or its sublicensees for
infringement of any Other Patent as long as the Infant Diaper, Adult Diaper,
Consumer Product or
Xxxxxxx & Xxxxxxx
March 14, 1991
Page 3
Industrial Product is made, used or sold exercising the licenses of Grants 3.1
or 3.3.
10. Amend the last line of paragraph 4.1 in the Technology Agreement to read as
follows:
... December 31, 1990.
11. Delete paragraph 4.2 in the Technology Agreement and replace it with the
following:
4.2 In addition, Weyerhaeuser agrees to pay J&J a royalty of Two Percent
(2%) of the Prime Line Raw Material Costs for all the Royalty Products sold by
Weyerhaeuser and its sublicensees:
a. in 1991, but such royalty total shall be not less than One Hundred
Thousand Dollars ($100,000);
b. in 1992, but such royalty total shall be not less than Two Hundred
Thousand Dollars ($200,000);
c. in 1993, but such royalty total shall be not less than Three Hundred
Thousand Dollars ($300,000; and
d. in 1994 and each year thereafter until 2001, but such royalty total
for each year shall be not less than Four Hundred Thousand Dollars ($400,000).
12. Delete paragraph 4.3 in the Technology Agreement and replace it with the
following:
4.3 Weyerhaeuser agrees to send written royalty reports to J&J within
forty-five (45) days after the end of each fiscal half-year report period
between January 1991 and December 2001 and after the final report period ending
February 19, 2002. Such reports will set forth the Prime Line Raw Material Costs
for the Royalty Products sold during the report period by Weyerhaeuser and its
sublicensees. Concurrently with such reports Weyerhaeuser shall pay J&J the
royalties in accordance with paragraph 4.2.
13. Amend line two (2) of paragraph 4.4 of the Technology Agreement by
replacing "Net Sales" with "Prime Line Raw Material Costs."
Xxxxxxx & Xxxxxxx
March 14, 1991
Page 4
14. Delete paragraphs 4.6, 4.7 and 4.8 in the Technology Agreement and replace
them as follows:
4.6 The minimum royalties as provided in paragraph 4.2 for the years 1991,
1992, 1993 and 1994 shall be considered guaranteed minimums. In the event that
Weyerhaeuser fails to pay such minimum royalties, J&J shall have the option of
terminating this Technology Agreement by providing written notice to
Weyerhaeuser exercising such option within sixty (60) days after the due date
for the payment of such royalties for the year in question. This notice shall
not be effective to terminate this Technology Agreement if Weyerhaeuser pays to
J&J the balance due within thirty (30) days after receipt of J&J's notice.
4.7 In the event the royalties paid by Weyerhaeuser under paragraph 4.2 are
less than the amount specified for the years 1995 to 2001, J&J shall have the
option to terminate all rights of Weyerhaeuser and its sublicensees to practice
any C-C Patents with all other rights being deemed irrevocable and paid up as
provided in paragraph 4.1. To exercise this option J&J shall provide written
notice thereof to Weyerhaeuser within sixty (60) days after the due date for
royalty payment for the year in question. The notice shall not be effective to
terminate such rights if Weyerhaeuser pays to J&J the balance due within thirty
(30) days after receipt of J&J's notice.
15. Delete paragraph 13.3 in the Technology Agreement and replace it as
follows:
13.3 This Technology Agreement may be assigned by either party hereto under
the following conditions:
a. If the assignee is Procter & Xxxxxx, Xxxxxxxx-Xxxxx, or any entity which
is controlled by or controls either entity then any amendments made to the
Compensation Section 4.0 shall be ineffective and the original paragraphs
restored;
b. If the prime line for producing Royalty Products is offered for sale
before December 31, 1994, Weyerhaeuser must promptly notify J&J and J&J shall
have twenty one (21) days in which to accept such offer before Weyerhaeuser can
accept any offer from a third party. However, Weyerhaeuser shall not accept a
third party offer for a price less than a price
Xxxxxxx & Xxxxxxx
March 14, 1991
Page 5
equivalent in value to the price offered to J&J; provided, however,
notwithstanding anything to the contrary, this paragraph 13.3 b shall not apply
in the event the prime line (i) is offered for sale as part of the sale by
Weyerhaeuser of other assets in which the fair market value of the prime line is
less than one-half the fair market value of such other assets or (ii) sold,
contributed or otherwise transferred to a joint venture or other entity in which
Weyerhaeuser retains a financial interest of any kind; and
c. Before any assignment of this Technology Agreement is effective, prompt
notification of such assignment with a written assurance by the acquiring party
of its willingness and ability to fully perform all obligations of the selling
party are required.
To indicate your acceptance and agreement to this amendment, please have these
duplicate copies signed and return one copy to me.
Very truly yours,
Xxxxxxx X. Xxxxxx
Assistant General Counsel &
Corporate Patent Counsel
jw2/414/d4
AGREED TO AND ACCEPTED THIS AGREED TO AND ACCEPTED THIS
18 day of March, 1991 19 day of June, 1991
WEYERHAEUSER COMPANY XXXXXXX & XXXXXXX
By: /s/ Xxxx X. Xxxxxxxxx, Xx. By: /s/ X.X. Xxxxxxx
-------------------------- -----------------------
(Signature) (Signature)
Xxxx X. Xxxxxxxxx, Xx., President X.X. Xxxxxxx, Pres. JJCPI
--------------------------------- ---------------------------
(Print Name and Title) (Print Name and Title)
[LETTERHEAD OF XXXXXXX & XXXXXXX]
OFFICE OF ONE XXXXXXX & XXXXXXX PLAZA
GENERAL COUNSEL NEW BRUNSWICK. N.J. 08933-7003
May 12, 1992
Xxxxxxx Xxxxxx, Esq.
Weyerhaeuser Company
Xxxxxx, Xxxxxxxxxx 00000
Dear Xxx:
This will confirm my telephone request of a couple of months ago,
soliciting Weyerhaeuser's consent for XxXxxx-PPC Inc. to grant non-exclusive
licenses under U.S. Patent 4,388,075, if and to the extent that such licenses
are granted together with an express license under our U.S. Patent 4,938,754. By
countersignature and return of this letter, please confirm your agreement. It is
understood that in such licenses, royalties attributable solely to U.S. Patent
4,388,075 shall be equally divided between us, but that royalties attributed
solely to U.S. Patent 4,938,754, or jointly to patents 4,388,075 and 4,938,754,
shall be solely the right and property of XxXxxx-PPC Inc.
Pursuant to paragraph 3.5 of the Technology Agreement between Weyerhaeuser
and Xxxxxxx & Xxxxxxx dated July, 1, 1987, Weyerhaeuser has a covenant not to
xxx from Xxxxxxx & Xxxxxxx on U.S. Patent 4,938,754.
Please signify your agreement by attending to the authorized execution of
this letter at the space provided below, retaining the enclosed duplicate
original for your own records. Thank you for your cooperation.
Sincerely,
/s/ Xxx Xxxxxx
---------------------------
Xxxxxx X. Xxxxxx
RLm/rak
WEYERHAEUSER
BY /s/ B.V. Xxxxxxx
-------------------
Title Vice President
----------------
Date May 22, 1992
----------------
[LETTERHEAD OF XXXXXXX & XXXXXXX]
OFFICE OF ONE XXXXXXX & XXXXXXX PLAZA
GENERAL COUNSEL NEW BRUNSWICK. N.J. 08933-7003
May 20, 1992
Weyerhauser Company
Tacoma
Washington 98477
Gentlemen:
Re: Amendment to Technology Agreement Having An
Effective Date of July 1, 1987
------------------------------------------------
This letter is to amend the subject Technology Agreement as follows:
1. Delete paragraph 2.14.
2. Delete paragraph 2.15.
3. Replace paragraph 2.16 with the following: ""Weyerhaeuser Territory"
shall mean the territory of Earth."
4. Replace Schedules A, B and C with the attached Schedules A, B and C,
each dated April 20, 1992.
5. In the Amendment dated March 14, 1991, to the subject Technology
Agreement in:
a. Paragraph 3.1 delete the phrase "and a non-exclusive license in Non-
Exclusive Territory, with the right to grant sublicenses."
b. Paragraph 3.3 delete the phrase "and a non-exclusive license in
Non-Exclusive Territory, with the right to grant sublicenses".
May 20, 1992
[COPY MISSING] indicate your acceptance and agreement to this Amendment, please
[COPY MISSING] return one copy of this letter.
Very truly yours,
Xxxxxx X. Xxxxxx
[COPY MISSING]
AGREED AND ACCEPTED THIS AGREED AND ACCEPTED THIS
__ day of May, 1992 20th day of May, 1992
WEYERHAEUSER COMPANY XXXXXXX & XXXXXXX
By /s/ B.V. Xxxxxxx By /s/ Xxxxxxx X. Xxxxxxxx
-------------------- ---------------------------------
(signature)
B.V. Xxxxxxx Xxxxxxx X. Xxxxxxxx, VP Finance JJCPI
----------------------- -------------------------------------
(Print name and title) (Print name and title)
Law Department
Xxxxxx, Xxxxxxxxxx 00000
[LETTERHEAD OF WEYERHAEUSER] Air Express:
00000 Xxxxxxxxxxxx Xxx Xxxxx
Xxxxxxx Xxx, Xxxxxxxxxx 00000
Writers Direct Dial Number
TEL (000) 000-0000
FAX (000) 000-0000
June 10, 1992
Xxxxxx X. Xxxxxx, Esq.
Office of General Counsel
Xxxxxxx & Xxxxxxx
Xxx Xxxxxxx & Xxxxxxx Xxxxx
Xxx Xxxxxxxxx XX 00000-0000
Re: Amendment to Technology Agreement, Effective Date July 1, 1987
Dear Xxx:
This letter is to amend the above-noted Technology Agreement as follows:
1. Replace the word "Products" with "Diapers" in the last line of Paragraph
3.2 of the amendment accepted June 19, 1991.
2. In Paragraph 13.3b, last line before "and" insert - or (iii) is offered for
sale, sold, contributed or otherwise transferred to a third party with the
limitation that until February 19, 2002 the products of the prime line will
be sold to J&J for any uses, to Xxxxx Health Care for use only in Adult
Diapers while a sublicensee hereunder and to others for use only in Infant
Diapers -.
3. Replace Schedules A, A', B, B' and C with the attached Schedules A, A', B,
B' and C each dated June 5, 1992.
To indicate your acceptance and agreement to this Amendment, please sign and
return one copy of this letter.
Very truly yours,
Xxxxxxx X. Xxxxxx
Assistant General Counsel &
Corporate Patent Counsel
AGREED AND ACCEPTED THIS AGREED AND ACCEPTED THIS
day of June, 1992 day of June, 1992
---- ----
WEYERHAEUSER COMPANY XXXXXXX & XXXXXXX
By By
--------------------- -----------------------
(Signature) (Signature)
------------------------ -------------------------
(Print Name and Title) (Print Name and Title)
REVISED JUNE 5, 1992
--------------------
Schedule A
----------
A-1
JBD 2/25
(Weyco #16951)
Patents
-------
U.S. Patent 4,500,315 and 4,537,590
-----------------------------------
Argentina 234479
Austria 0108637
Xxxxxxxxx 000000
Xxxxxxx 0108637
Bolivia B-4737
Brazil P-18306016
Canada 1,209,752
Xxxxx 00000
Xxxxxxx 161,664
Ecuador PI-86-187
Eire 54695
EPO 0000000
Xxxxxx 0108637
Germany P-3378952.5.08
Great Britain 2,131,346
Greece 00000
Xxxxxxxxx 3775
Hong Kong 419/1987
India 000000
Xxxxx 0000000
Xxxxx 1,586,799
Korea 00000
Xxxxxxxxxx 0000000
Xxxxxx 157756
REVISED JUNE 5, 1992
--------------------
A-1 Continued
JBD 2/25
(Weyco #16951)
Netherlands 0108637
New Zealand 206055
Xxxxxx 000,000
Xxxx 0000
Xxxxxxxxxxx 19243
Xxxxxxxx 00000
Xxxxxxx 0000
Xxxxxxxxx 000/00
Xxxxx Xxxxxx 83/8282
Spain 527081, 280301, 280302,
280303, 280304, 280305, 000000
Xxxxxx 0108637
Xxxxxxxxxxx 0000000
Xxxxxx 22229
Trinidad 24/1987
Venezuela 47305
Patent Applications
-------------------
Xxxxxxxx 000000
Egypt 691/1983
Malaysia 8801552
Thailand 001958
REVISED JUNE 5, 1992
--------------------
A-2
JBD 54
(Weyco #16953)
Patents
-------
U.S. Patent 4,676,784
---------------------
Canada 0000000
Xxxxxxxxx 187/91
Trinidad 16/1991
--------------------------------------------------------------------------------
A-3
JBD 62
(Weyco #16954)
Patents
-------
U.S. 4,560,372
--------------
Canada 1245004
Hong Kong 305/1991
Singapore 164/91
Trinidad 15/1991
REVISED JUNE 5, 1992
--------------------
A-4
JBD 72
(Weyco #16956)
Patents
-------
U.S. Patent 4,559,050
---------------------
Canada 1252953
Patent Applications
-------------------
Japan 180067/85
--------------------------------------------------------------------------------
A-5
JBD 73
(Weyco #16957)
Patents
-------
U.S. 4,596,567
--------------
Canada 1251902
Patent Applications
-------------------
Japan 180068/85
--------------------------------------------------------------------------------
A-6
JBD 74
(Weyco #16958)
Patents
-------
U. S. 4,605,402
---------------
Canada 1251901
Hong Kong 1076/1991
Singapore 955/91
Trinidad 61/1991
Patent Applications
-------------------
Brazil 0000000
Xxxxx 180069/85
REVISED JUNE 5, 1992
--------------------
A-7
ABTK I
(Weyco #16946)
Patents
-------
Australia 000000
Xxxxxx PI 8108591
Canada 1,163,599
EPO 0000000
Xxxxxx 0040087
Great Britain 0040087
Germany 3165831.8
Hong Kong 291/1985
Xxxxxxxx 0000/0000
Xxxxxx 000000
Netherlands 0040087
Xxxxxxxxx 000/00
Xxxxx Xxxxxx 81/3131
Patent Applications
-------------------
Japan 501802/81
-------------------------------------------------------------------------------
A-8
ABTK 009
(Weyco #16947)
Patents
-------
U.S. 4,381,320
--------------
Argentina 229126
Australia 000000
Xxxxxx PI 8203234
Canada 1203772
Great Britain 2099828
New Zealand 000000
Xxxxxxxx 00000
Xxxxx Xxxxxx 82/3882
Patent Applications
-------------------
Germany 3220735.2
Japan 94149/82
REVISED JUNE 5, 1992
--------------------
U.S. Patent 4,573,988 A-9
--------------------- JBD 66 (Weyco #18681)
(CIP of JBD 2 and JBD 25)
U.S. Patent 4,540,454 JBD 78 (Weyco #18682)
--------------------- (Div. of JBD 2 and JBD 25)
REVISED JUNE 5, 1992
--------------------
A'-1
Recent Inventions:
------------------
File 1047.141 Relatively Soft Pliable Water-Swellable Polymer: Filed June 21,
------------- 1989; S.N. 07/365,206 QBD 154) ABANDONED May 1991
Weyco #16635
File 1047.143 Hydrocolloid Polymer: Filed June 12, 1989; S.S. 365,224
------------- (JBD 155)
Weyco #16697
File 1047.145 Absorbent Mixture, Method of Making Same and Absorbent Article
------------- Including Same: Filed June 14, 1989; S.N. 365,967 (JBD 153)
Weyco #16698 now U.S. Patent No. 5,100,397 issued 3/31/92.*
File 1047.148 Hydrocolloid Polymer with Improved Sorption: Filed June 12,
------------- 1989; S.N. 07/365,979 QBD 156) ABANDONED 5/1/91.
Weyco #16699
File 1047.153 Low Bulk Disposable Diaper: Filed October 27, 1988; S.N.
------------- 263,529 (JBD 157) Now U.S. Patent No. 5,098,423 issued 3/24/92.
Weyco #16700
Weyco #16888 Highly Swellable Absorbent Polymers. No application filed.
Weyco #16889 Highly Swellable Absorbent Polymer via U.V. No application
filed.
Weyco #16898 Manufacture of Composite Web Having Absorbent Properties: Filed
April 10, 1989; S.N. 335,764 (JBD 158) ABANDONED May 1991.
6698: Also pending in Canada 2016733, Europe Pub. 000000, Xxxxx
115021/90 and U.S. (Divisional) Serial No. 772,772 filed
October, 1991
REVISED JUNE 5, 1992
--------------------
SCHEDULE B
----------
B-1
JBD 8
(Weyco #16949)
Patents
-------
U.S. Patent 4,413,995
---------------------
Canada 1,192,456
Singapore 860/85
--------------------------------------------------------------------------------
B-2
JBD 11
(Weyco #16950)
Patents
-------
U. S. 4,540,415
---------------
--------------------------------------------------------------------------------
B-3
Patents JBP 22 (Weyco #14022)
-------
U.S. 4,084,592
--------------
Patents JBD 76 (Weyco #16960)
-------
U.S. 4,880,420
--------------
Brazil P18503818
Canada 1257751
Patent Applications
------------------
Japan 180071/85
REVISED JUNE 5, 1992
--------------------
B-4
JBD 70 (Design)
(Weyco #16955)
Patents
-------
Xxxxxx 00000
--------------------------------------------------------------------------------
B-6
JBD 47/103
(Weyco #16952)
Patents
-------
U.S. Patent 4,985,025
---------------------
Canada 1241503
--------------------------------------------------------------------------------
B-7
JBD 75/106/129/149
(Weyco #16964)
Patents
-------
U.S. 4,883,48
-------------
Canada 1252952
--------------------------------------------------------------------------------
B-8
JBD 29/JBD 130
(Weyco #18828)
Patents
-------
Canada 0000000
Xxxxxxxxx 611/90
Trinidad 25/90
REVISED JUNE 5, 1992
--------------------
B-9
JBD 107/JBD 128
(Weyco #14107)
Patents
-------
U.S. 4,813,947
--------------
Patent Applications
-------------------
Canada 526378-6
--------------------------------------------------------------------------------
B-10
Patents
-------
U.S. 3,779,246 J&J 665 (Weyco #14665)
Canada 977,268
U.S. 4,464,217 JBP 177 (Weyco #14177)
Canada 1,186,288
U.S. 4,084,592 JBP 22 (Weyco #14022)
U.S. 4,573,991 JBD 50 (Weyco #14050)
U.S. 4,479,836 JBD 43 (Weyco #14043)
U.S. 4,576,598 JBD 41 (Weyco #14041)
U.S. 4,552,560 JBD 48 (Weyco #14048)
U.S. 4,723,954 JBD 104 (Weyco #16963)
U.S. 4,662,874 JBD 105 (Weyco #14105)
U.S. 4,731,066 JBD 131 (Weyco #14131)
U.S. 4,886,511 JBD 144 (Weyco #14144)
U.S. 4,941,933 JBD 146 (Weyco #14146)
REVISED JUNE 5, 1992
--------------------
SCHEDULE B'
-----------
B'-I
Recent Inventions:
-----------------
File 1047.142 Disposable Diaper with Center Gathers: Filed October 27, 1988;
------------- S.N. 263,260 (JBD 159) U.S. Patent 4,935,021 issued 6/19/90;
Weyco #16696 Canada S.N. 614682 9/29/89
REVISED JUNE 5, 1992
--------------------
SCHEDULE C
----------
C-1
JBD 7/JBP 98/JBP 158
(Weyco #14098)
Patents
-------
U.S. 4,450,026
-------------
U.S. 4,337,771
--------------
Australia 528,814
Brazil 7900459
Canada 1,195,804
Japan 1,591,935
South Africa 79/0351
--------------------------------------------------------------------------------
C-2
JBD 44/JBP 97/JBP 159/JBP 120/JBP 166
(Weyco #s 14044, 16696, 19070, 19147, 17914)
Patents
-------
U.S. RE 31,922
--------------
U.S. 4,324,245
--------------
Argentina 221074
Australia 526338 - 533635
Canada 0000000
Xxxxx 00000
Xxxxxxxxx 3295
Venezuela 40765
Patent Application
------------------
Ecuador 210
REVISED JUNE 5, 1992
--------------------
C-3
JBP 157/JBP 100
(Weyco #18226)
Patents
-------
U.S. 4,336,803
--------------
--------------------------------------------------------------------------------
C-5
Patent
------
U.S. 4,381,783 JBP 210 (Weyco #14210)
--------------
U.S. RE 32,957 JBD 90 (Weyco #14090)
--------------
