Intellectual Property Transfer and License Agreement
EXHIBIT
10.3
Intellectual
Property Transfer and License Agreement
THIS INTELLECTUAL
PROPERTY TRANSFER AND LICENSE AGREEMENT (the "Agreement")
is made as of March 31, 2008 (the "Effective Date"), by and between KRONOS ADVANCED
TECHNOLOGIES, INC., a Nevada corporation with a principal address at 000
Xxxxxx Xxxxxx, Xxxxx 000, Xxxxxxx, XX 00000 ("Kronos") and TESSERA
TECHNOLOGIES, INC., a
Delaware corporation having a principal address at 0000 Xxxxxxx Xxxxx, Xxx Xxxx,
XX 00000 ("Tessera").
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1.
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DEFINITIONS
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1.1 "Additional
Patent Rights" means the Patent Rights listed on Exhibit B.
1.2 "Affiliate"
means an entity that, directly or indirectly, through one or more
intermediaries,
controls, is controlled by or is under common control with Tessera or Kronos.
For this purpose, "control" will mean possession, directly or indirectly, of the
power to direct or cause the direction of the management and policies of such
entity, whether through ownership of voting securities or other interests, by
contract
or otherwise. An entity shall be deemed an Affiliate only for so long as
such control exists.
1.3 "Change
of
Control" means as used with respect to any either party, shall mean
a change
in the possession, directly or indirectly, of the power, either to (i) vote 50%
or more of the securities having ordinary voting power with respect to such
party; or (ii) determine the majority of the board of directors
of such party; or (iii) direct or cause the direction of the management
policies of such party, whether through ownership of voting securities or by
contract or otherwise.
1.4 "Confidential
Information" shall mean any information disclosed by one
party to the
other in connection with this Agreement, whether in electronic, written,
graphic, oral, machine readable or other tangible or intangible form, that is
marked or identified at the time of disclosure as "Confidential" or
"Proprietary" or in some other manner so as to clearly indicate its confidential
nature. In order to be treated as "Confidential Information," information that
is disclosed orally must be identified at the time of disclosure or promptly
thereafter as confidential or proprietary.
1.5 "Development
Program" means the joint development program agreed upon by the
parties to further develop the Technology in the
Field in accordance with that certain Joint Development Agreement between
the parties of even date herewith.
1.6 "Field"
means the field of ionic micro-cooling of integrated circuit devices or
discrete
electrical components.
1.7 "Licensed
Technology" means the Patent Rights owned by Kronos that are not
included
in the Transferred Technology but that have application in the Field, including
the Additional Patent Rights, as well as all Technology owned or controlled by
Kronos that has application in the Field.
1.8 "Patent Rights shall mean all
rights in and to U.S. and foreign patents and patent applications
claiming any inventions or discoveries made, developed, conceived, or reduced to
practice, including all divisions, substitutions, continuations,
continuations-in-part, and any reissues, re-examinations and extensions
thereof.
1.9 "Program Technology" means all
Technology and related Patent Rights and other
intellectual property rights other than trademark rights first created or
reduced to practice by either party under the Development Program and all
Technology and related intellectual property rights applicable to the field of
electrostatic fluid accelerators first created or reduced to practice by either
party during the term of the Joint Development Agreement.
1.10 "Technology" whether in
electronic, written or other media, means designs, design
and manufacturing documentation (such as xxxx of materials, build instructions
and test reports), schematics, algorithms, routines, formulae, software,
databases, lab notebooks, specifications, current best method of assembly,
tooling specifications, design methods and techniques, proprietary software,
process data, yields, reliability data, and other engineering data and test
results, development and lab equipment requirements, processes, and
know-how.
1.11 "Tessera Intellectual Property"
means the Transferred Technology and all Program
Technology having the primary function of ionic micro-cooling of integrated
circuit devices or discrete electrical components, and any improvements or
derivatives of the Program Technology developed during the term of the
Development Program having the primary function of ionic micro-cooling of
integrated circuit devices or discrete electrical components.
1.12 "Transferred Technology" means
the Patent Rights listed on Exhibit A, and upon
final payment of amounts due hereunder, the Additional Patent Rights, including
any patents that issue from any applications listed on Exhibit B, and any
foreign counterparts, reissues, renewals, divisionals, continuations, or
continuations in part of the patents, or of patents that issue from the
applications, listed on Exhibit B.
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2.
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ASSIGNMENT AND
LICENSING
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2.1 Assignment to Tessera. Kronos
hereby assigns to Tessera all of Kronos's right, title and
interest in and to the Patent Rights listed on Exhibit A pursuant to the
completed assignment agreement in Exhibit C hereto. When Tessera makes the final
quarterly payment pursuant to Section 3.1 below, Kronos shall assign to Tessera
all of Kronos' right, title and interest in and to the Additional Patent Rights,
as well as to any patents that issue from any applications listed on Exhibit B,
and any foreign counterparts, reissues, renewals, divisionals, continuations, or
continuations in part of the patents, or of patents that issue from the
applications, listed on Exhibit B. If Tessera is unable for any reason, after
reasonable effort, to secure Kronos' signature on any document needed in
connection with the actions specified above, Kronos hereby irrevocably
designates and appoints Tessera and its duly authorized officers and agents as
its agent and attorney in fact, which appointment is coupled with an interest,
to act for and in its behalf to execute, verify and file any such documents and
to do all other lawfully permitted acts to accomplish the assignment to Tessera
of all Transferred Technology with the same legal force and effect as if
executed by Kronos.
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2.2 License to Tessera. Subject to
the terms and conditions of this Agreement, Kronos
grants to Tessera and its Affiliates, and agrees to grant to Tessera and its
Affiliates automatically upon creation of the applicable Patent Rights, an
exclusive (even as to Kronos, except for purposes of research, development and
demonstration), perpetual, irrevocable, worldwide license, with right to
sublicense, under and to the Licensed Technology, provided however, that
notwithstanding anything in this Agreement to the contrary, all license and
rights granted to Tessera to and under the Additional Patent Rights shall expire
at the earlier of (i) the assignment of the Additional Patent Rights under
Section 2.1 or April 1, 2009, to make, have made, use, import, offer to sell,
and sell products and services in the Field. For purposes of clarity, the
foregoing license grant does not require Kronos to deliver to Tessera any
particular element of Kronos' Technology and shall be deemed as a covenant by
Kronos not to assert any claims of copyright infringement or trade secret
misappropriation against Tessera for activities that Tessera undertakes in the
Field. Actual disclosures of Technology by Kronos to Tessera will also be
covered by this license grant, whether under this Agreement or under the
Development Agreement between the parties of even date herewith.
2.3 Licenses to Kronos. Subject to
the terms and conditions of this Agreement, Tessera
hereby grants to Kronos and its Affiliates, and agrees to grant to Kronos and
its Affiliates automatically upon creation of the applicable Intellectual
Property, (a) a perpetual, irrevocable, exclusive (even as to Tessera, except
for purposes of research, development and demonstration), worldwide license,
with right to sublicense, under and to the Transferred Technology and any other
Patent Rights that Kronos assigns to Tessera pursuant to this Agreement to make,
have made, use, import, offer to sell and sell products and services outside the
Field and (b) and a perpetual, royalty-free, exclusive (even as to Tessera,
except for purposes of research, development and demonstration), worldwide
license, with right to sublicense, under and to the Program Technology owned or
controlled by Tessera to make, have made, use, import, offer to sell, and sell
products and services limited to the field of electrostatic fluid accelerators
outside the Field.
2.4 Ownership. As between the
parties, Tessera shall be the owner of all right, title and
interest in and to the Tessera Intellectual Property. If ownership by Tessera of
an invention within the Tessera Intellectual Property would impact the
patentability of such invention or validity or term of any patent or application
claiming such invention, then such invention and all Patent Rights covering such
invention shall be owned by Kronos, subject to assignment to Tessera upon
request from Tessera at such time as such impact ceases to have effect. Such
invention and any patent covering such invention that may issue, owned by
Kronos, shall be subject to the exclusive license to Tessera set forth in
Section 2.2 above, until such time thereafter as Kronos assigns such invention
and patent to Tessera, which invention and any patent covering such invention
shall then be subject to the license grant set forth in Section 2.3
above.
2.5 Reservation of Rights. No
right, title or interest is granted by either party whether
expressly or by implication to or under any of its Patent Rights or rights in
Technology, other than those ownership rights and licenses expressly granted in
this Agreement. In addition, and notwithstanding any other provision in this
Agreement to the contrary, neither party grants the other any rights or licenses
to use any of its trademarks. Each party reserves to itself all rights not
expressly granted under this Agreement.
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3.
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PAYMENT
TERMS
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3.1 Payment. In consideration for
the assignment of the Transferred Technology and the
license of the Licensed Technology, Tessera agrees to pay Kronos Three Million,
Five Hundred Thousand Dollars ($3,500,000) upon the Effective Date of this
Agreement. In addition, Tessera agrees to make additional payments of Five
Hundred Thousand Dollars ($500,000) per calendar quarter (each an "Installment
Payment"), with the first Installment Payment due July 1, 2008, the second
Installment Payment due October 1, 2008, the third Installment Payment due
January 1, 2009, and the final Installment Payment due April 1, 2009. Tessera
may, at its option, accelerate payments and pay all Installment Payments early.
Upon any such early complete payment of all the Installment Payments, the
Additional Patent Rights to be assigned pursuant to Section 2.1 above shall be
immediately assigned upon receipt of all Two Million Dollars ($2,000,000) of the
Installment Payments.
3.2 Taxes. Tessera may withhold
from payments due under this Agreement taxes as are
required to be withheld under applicable law. If any tax is withheld by Tessera,
Tessera will provide Kronos with receipts or other evidence of such withholding
and payment to the applicable tax authorities.
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4.
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PATENT
ADMINISTRATION, PROSECUTION AND
ENFORCEMENT
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4.1
Patent
Prosecution.
(a) As
between the parties, Tessera shall have the first right to prepare, file,
prosecute and maintain, at its own expense and in consultation with Kronos,
patent applications covering any of the Tessera Intellectual Property,
regardless of inventorship, and to conduct any interferences, re-examinations,
reissues, oppositions or requests for patent term extension or governmental
equivalents thereto. In the event that Tessera does not file, prosecute or
maintain any patent or patent application regarding any Program Technology
within the Tessera Intellectual Property, then Kronos shall have the right to
assume such activities at its own expense but without affecting the ownership
and license provisions set forth in this Agreement.
(b) As
between the parties, Kronos shall have the first right to prepare, file,
prosecute and maintain, at its own expense any patent applications covering any
of the Licensed Technology or any Program Technology owned or controlled by
Kronos, and to conduct any interferences, re-examinations, reissues, oppositions
or requests for patent term extension or governmental equivalents thereto, but
in each instance in consultation with Tessera and subject in each instance to
the prior written approval of Tessera as to any action relating to the
Additional Patent Rights. In the event that Kronos does not file, prosecute or
maintain any patent or patent application regarding any Additional Patent
Rights, then Tessera shall have the right to assume such activities at its own
expense but without affecting the ownership and license provisions set forth in
this Agreement.
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4.2 Cooperation. Subject to
Section 4.1, Tessera and Kronos shall both use reasonable
efforts to keep the other fully informed as to the status of patent matters with
respect to the Program Technology, the Transferred Technology and the Licensed
Technology, including by providing the other the opportunity to review and
comment on complete copies of any documents
a reasonable time in advance of applicable filing dates and prosecution
deadlines, and upon request, providing to the other party copies of any
substantive documents that a party receives from the United States Patent and
Trademark Office and any foreign patent offices, promptly after receipt,
including notice of all official actions, interferences, reissues,
reexaminations, oppositions, or requests for patent term extensions.
Tessera and Kronos shall each reasonably cooperate with and assist the other at
its own expense in connection with such activities, at the other party's
request. Each party shall reasonably accommodate requests of the other party
with respect to content, filing and prosecuting its own patent applications
directed to Program Technology, Transferred Technology and Licensed Technology,
and will equitably allocate marginal external costs, other than its principle
outside patent counsel fees attributable to such accommodation. Each party
agrees to assign a representative who will (a) facilitate communication between
the parties regarding patents and patent applications with respect to Program
Technology as well as with respect to the Transferred Technology and Licensed
Technology, (b) discuss and provide input on patent strategy with respect to
Program Technology, Transferred Technology and Licensed Technology, and (c)
review applications and other substantive papers with respect to Program
Technology, Transferred Technology and Licensed Technology prior to filing with
the patent office. Subject to Section 2.1, Kronos hereby assigns and agrees to
assign when created its interest in all Program Technology having the primary
function of ionic micro-cooling of integrated circuit devices or discrete
electrical components, and shall cooperate in effecting such assignment at no
cost to Tessera (e.g., by providing declarations or other documentation that may
be reasonably necessary to perfect such assignment).
4.3
Enforcement.
(a) Notice. Each party shall promptly notify the
other of its knowledge of any actual or potential commercially material
infringement of the Program Technology, Transferred Technology or Licensed
Technology by a Third Party.
(b) Program Technology. Tessera
shall have the initial right, but not the obligation,
to take reasonable legal action to enforce Patent Rights and other intellectual
property rights in and to the Program Technology, against commercially material
infringements that involve the manufacture, use, sale, offer for sale or import
of those inventions in the Field. If Tessera does not take action sufficient to
halt such infringement within six {6) months following receipt of notice of such
infringement, and Tessera grants consent in its sole discretion on a
caseby-case basis, then Kronos shall have the right, but not the
obligation, to take action to stop such infringement at its sole expense. Kronos
shall have the initial right, but not the obligation, to take reasonable legal
action to enforce Patent Rights and other intellectual Property rights relating
to the Program Technology, against commercially material infringements that
involve the manufacture, use, sale, offer for sale or import of those inventions
relating to electrostatic fluid accelerators outside of the Field, provided that
Kronos first obtains Tessera's prior written consent regarding enforcing any
Patent Rights or other intellectual property rights owned by Tessera, such
consent not to be unreasonably conditioned, delayed or withheld. If Kronos does
not take action sufficient to halt such infringement within six (6) months
following receipt of notice of such infringement, and Kronos grants consent in
its sole discretion on a case-by-case basis, then Tessera shall have the right,
but not the obligation, to take action to stop such infringement at its sole
expense.
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(c) Licensed Technology and Transferred
Technology. For so long as Tessera maintains an exclusive license to the
Licensed Technology, Tessera shall have the initial right, but not the
obligation, to take reasonable legal action to enforce Patent Rights relating to
the Licensed Technology, against commercially material infringements that
involve the manufacture, use, sale, offer for sale or import of those inventions
in
the Field. If Tessera does not take action sufficient to halt such
infringement within six (6) months following receipt of notice of such
infringement then Kronos shall have the right, but not the obligation, to take
action to stop such infringement at its sole expense. Kronos shall have the
initial right, but not the obligation, to take reasonable legal action to
enforce Patent Rights relating to the Transferred Technology, against
commercially material infringements that involve the manufacture, use, sale,
offer for sale or import of those inventions outside of the Field, provided that
Kronos first obtains Tessera's prior written consent regarding enforcing any
Patent Rights or other intellectual property rights owned by Tessera, such
consent not to be unreasonably conditioned, delayed or withheld. If Kronos does
not take action sufficient to halt such infringement within six (6) months
following receipt of notice of such infringement, then Tessera shall have the
right, but not the obligation, to take action to stop such infringement at its
sole expense.
(d) Cooperation; Costs. Each party agrees to render such
reasonable assistance in connection with enforcement activities described in
this Section 4.3 as the enforcing party may request. The reasonable out of
pocket costs of such assistance shall be paid by the party bringing such action.
Costs of maintaining any such action shall be paid by and belong to the party
bringing the action.
(e) Recoveries. Unless otherwise
agreed by the parties on a case-by-case basis, only the party bringing a claim
pursuant to this Section 4.3 will be entitled to receive any damages or
settlement recovered from any action under this Section 4.3.
(f) Third Party Claims of Infringement.
If the
manufacture, use or sale of any Program Technology pursuant to this
Agreement results in any claim, suit or proceeding alleging patent infringement
against Kronos or Tessera, the party named as the defendant in that claim, suit
or proceeding shall promptly notify the other party hereto in writing setting
forth the facts of such claims in reasonable detail. Kronos, to the extent that
such claim, suit or proceeding relates to electrostatic fluid accelerators
outside of the Field, or Tessera, to the extent that such claim, suit or
proceeding relates to the Field, shall have the exclusive right and obligation
to defend and control the defense of any such claim, at its own expense;
provided, however, neither the defendant nor the defending party shall enter
into any settlement which admits or concedes that any aspect of the Program
Technology is invalid or unenforceable or materially affects the rights of the
other party, or does not unconditionally release the other party from liability,
without the prior written consent of the other
party. The defending party shall keep the other party hereto reasonably
informed of all material developments in connection with any such claim, suit or
proceeding. The other party shall, upon request, provide reasonable assistance
and cooperation to the defending party and may elect to participate in the
defense of the claim, suit or proceeding, at its own expense using counsel of
its own choice.
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5.
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REPRESENTATIONSAND
WARRANTIES
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5.1
Mutual Representations and
Warranties. Each party represents and warrants that:
(a) It
is a corporation duly organized and existing under the laws of the state
of its
incorporation, and is in good standing in such jurisdiction.
(b) It
has all requisite legal power and authority to execute, deliver and perform
the Agreement.
(c) The
execution, delivery and performance of the Agreement by such party have been
duly authorized by all necessary corporate action on the part of such party. The
Agreement constitutes valid and binding obligations of such party, enforceable
against such party in accordance with their terms. The execution and delivery of
the Agreement and the performance of their terms by such party does not conflict
with the terms of any material agreement to which such party is a
party.
(d) Such
party has all rights to grant the licenses and rights to the other party
pursuant
to this Agreement.
5.2 Additional Representations and
Warranties. Kronos further represents and warrants
to Tessera that (i) the use of the Transferred Technology in the Field and the
use of the Licensed Technology in the Field do not infringe or misappropriate
the intellectual property rights of any third party; (ii) no third party is
infringing or misappropriating the Transferred Technology or the Licensed
Technology in the Field and no claims or lawsuits are pending or to Kronos'
knowledge threatened with respect to the infringement or misappropriation of any
Transferred Technology or Licensed Technology; and (iii) each of Kronos'
employees and independent contractors that invented, made, conceived, reduced to
practice or developed the Transferred Technology and the Licensed Technology
executed an agreement with Kronos that assigns to Kronos the employee's or
independent contractor's right, title and interest in and to the intellectual
property rights in such Transferred Technology and Licensed Technology; and (iv)
no current or former officer, director, stockholder, employee, consultant or
independent contractor of Kronos has any right, claim or interest in or with
respect to any Transferred Technology or Licensed Technology.
5.3 DISCLAIMER OF WARRANTIES.
EXCEPT FOR THE REPRESENTATIONS,
WARRANTIES AND COVENANTS EXPRESSLY SET FORTH IN THIS SECTION 5, EACH OF KRONOS
AND TESSERA HEREBY DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES REGARDING THE TRANSFERRED
TECHNOLOGY, THE LICENSED TECHNOLOGY AND THE TESSERA INTELLECTUAL PROPERTY,
WHETHER EXPRESS, STATUTORY OR IMPLIED, INCLUDING ANY WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE.
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6.
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INDEMNIFICATION
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Kronos
hereby agrees to indemnify, defend and hold Tessera and Tessera's Affiliates
harmless from and against any and all liabilities, losses, damages, costs and
expenses (including reasonable attorneys' fees) incurred by Tessera or its
affiliates as the result of any third party claims, demands, suits or actions
arising out of any breach of Kronos' representations and
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warranties
in Section 5.2 (hereafter "Indemnification"). Tessera agrees to give Kronos
prompt written notice of any such claim, to give Kronos sole control over the
defense or settlement of such claim so long as Kronos does not settle or
compromise a claim in any manner that materially affects the rights granted to
Tessera under this Agreement or that does not unconditionally release Tessera
and its Affiliates from liability, and to give Kronos reasonable assistance in
the defense or settlement of such claim upon Kronos' request and at Kronos'
expense. Tessera may engage counsel at its own expense to participate in the
settlement or defense of any such claim.
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7.
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LIMITATION
OF LIABILITY.
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EXCEPT
FOR A BREACH OF A LICENSE GRANT OR A CONFIDENTIALITY OBLIGATION, AND EXCEPT TO
SATISFY ANY INDEMNITY OBLIGATION, IN NO EVENT SHALL EITHER PARTY OR ITS
RESPECTIVE AFFILIATES BE LIABLE FOR ANY LOST PROFITS, OR FOR ANY SPECIAL,
EXEMPLARY, CONSEQUENTIAL OR INCIDENTAL DAMAGES, WHETHER IN CONTRACT, WARRANTY,
TORT, STRICT LIABILITY OR OTHERWISE, EVEN IF NOTIFIED OF THE LIKELIHOOD OF SUCH
A CLAIM. EXCEPT FOR A BREACH OF A LICENSE GRANT OR A CONFIDENTIALITY OBLIGATION,
AND EXCEPT TO SATISFY ANY INDEMNITY OBLIGATION, IN WHICH CASE EITHER PARTY'S
CUMULATIVE LIABILITY TO THE OTHER UNDER THIS AGREEMENT SHALL NOT EXCEED TWICE
THE AMOUNTS PAID BY TESSERA UNDER THIS AGREEMENT TO KRONOS, IN NO EVENT SHALL
EITHER PARTY'S CUMULATIVE LIABILITY TO THE OTHER UNDER THIS AGREEMENT EXCEED THE
AMOUNTS PAID BY TESSERA UNDER THIS AGREEMENT TO KRONOS. THE PARTIES ACKNOWLEDGE
AND AGREE THAT THE FOREGOING LIMITATIONS OF LIABILITY ARE AN ESSENTIAL ELEMENT
OF THIS AGREEMENT AND THAT IN THEIR ABSENCE THE TERMS OF THIS AGREEMENT WOULD BE
SUBSTANTIALLY DIFFERENT.
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8.
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CONFIDENTIALITY
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8.1 Confidentiality.
Except as otherwise expressly provided herein, the parties agree
that the
receiving party shall not, except as expressly provided in this Section 8,
disclose to any third party, or use for any purpose except as set forth in
Section 8.2 below, any Confidential Information furnished to it by the
disclosing party pursuant to this Agreement, except in each case to the extent
that it can be established by the receiving party by competent proof that such
information:
(a) was
already known to the receiving party, other than under an obligation of
confidentiality, at the time of disclosure;
(b) was
generally available to the public or otherwise part of the public domain at the
time of its disclosure to the receiving party;
(c)
became generally available to the public or otherwise part of the public domain
after it disclosure and other than through any act or omission of the receiving
party in breach of this agreement;
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(d) was
independently developed by the receiving party without use of, or reference to,
the other party's confidential information,
as demonstrated by documented evidence prepared contemporaneously with
such independent development; or
(e) was
disclosed to the receiving party, other than under an obligation of
confidentiality, by a third party authorized and entitled to disclose such information to
others without restriction.
8.2 Permitted Use and
Disclosures. Notwithstanding the restrictions of Section 8.1,
each
party hereto may (a) use Confidential Information disclosed to it by the other
to the extent necessary for that party to perform its obligations under the
Development Program and (b) use or disclose Confidential Information disclosed
to it by the other party to the extent such use or disclosure is reasonably
necessary in (i) exercising the rights and licenses granted hereunder, (ii)
prosecuting or defending litigation, (iii)
complying with applicable laws, governmental regulations or court orders
or submitting information to tax or other governmental authorities (including
the Securities and Exchange Commission), (iv) preparing, filing and prosecuting
patent applications as specified in this Agreement, or (v) making a permitted
sublicense or otherwise exercising license rights expressly granted pursuant to
this Agreement; in each case, provided that if a party is required to make any
such disclosure, other than pursuant to an arrangement to restrict disclosure
and use, it will give reasonable advance notice to the other party of such
disclosure requirement, and in each case it will use reasonable efforts to
secure confidential treatment of such information (whether through protective
order or otherwise), except to the extent inappropriate with respect to patent
applications, and use reasonable efforts to permit the other party an
opportunity maintain confidentiality of its affected Confidential Information.
It is understood that either party may also disclose the Confidential
Information of the other party upon receipt of the written consent to such
disclosure by a duly authorized representative of the other party.
8.3 Nondisclosure of
Terms. Each of the
parties hereto agrees not to disclose the terms of
this Agreement to any third party without the prior written consent of the other
party hereto, which consent shall not be unreasonably withheld, except to such
party's attorneys, accountants, advisors, investors and financing sources and
their advisors and others on a need to know basis under circumstances that
reasonably ensure the confidentiality thereof, to the extent required by law, in
connection with the enforcement of this Agreement or rights under this Agreement
or in connection with a merger, acquisition, financing transaction or proposed
merger, acquisition or financing transaction, or the like.
8.4 Publication of
Results. Any manuscript or other public disclosure by Tessera or
Kronos
describing the scientific results of the Development Program to be published within the term
of the Development Program, or within one (1) year after the end of the
Development Program, shall be provided to the other party for review at least
ninety (90) days prior to its submission. Further, to avoid the loss of patent
rights as a result of premature public disclosure of patentable information, the
reviewing party may, within thirty (30) days of receiving such a proposed
disclosure, notify the disclosing party in writing that, subject to Section 4,
the reviewing party desires to file a patent application on any invention
disclosed in such scientific results, in which case the disclosing party shall
withhold publication or disclosure of such scientific results until the earlier
of (a) the time the patent application is filed thereon, (b) the
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time the
parties both determine, after consultation, that no patentable invention exists,
or (c)
ninety (90) days after the disclosing party received notice of the reviewing
party's desire to file such patent application. Further, if such scientific
results contain Confidential Information of the receiving party that is subject
to the use and nondisclosure restrictions under this Section 8, the disclosing
party agrees to remove such Confidential Information from the proposed
publication or disclosure or obtain the disclosing party's prior consent for
such disclosure.
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9.
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NON-COMPETITION.
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9.1
Tessera. During the term of this Agreement, Tessera agrees not to engage
in any activity in the field of electrostatic fluid accelerators other than in
the Field, including the license of any intellectual property rights for use in
the field of electrostatic fluid accelerators outside the Field other than in
collaboration with Kronos.
9.2 Kronos. During the term of
this Agreement, Kronos agrees not to engage in any activity
in the Field, other than cooperating with Tessera in the Development Program and
any mutually agreed commercialization efforts related to the Program Technology,
without Tessera's prior written consent on a case-by-case basis.
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10.
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TERM
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10.1 Term. The term of this
Agreement will commence on the Effective Date and will continue
in force until December 31, 2014, unless terminated earlier.
10.2 Termination. This Agreement
may be terminated by mutual written consent, or may be
terminated for cause upon thirty (30) days prior written notice, identifying the
material breach giving rise to the right to terminate for cause. A termination
for cause will be effective at the end of such thirty (30) day notice period if
the identified material breach has not been cured. Notwithstanding any of the
foregoing, an election not to pay an Installment Payment or a failure to make an
Installment Payment shall not be deemed a material breach of this
Agreement.
10.3 Repurchase Right for Failure to
Commercialize. If Tessera does not use commercially
reasonable efforts to license or use the rights acquired and licensed from
Kronos under this Agreement during the term of this Agreement, then Kronos shall
have the option to terminate this Agreement and repurchase the Transferred
Technology from Tessera for a fee of Five Million Dollars ($5,000,000). Upon a
purchase of the Transferred Technology by Kronos from Tessera, Kronos agrees to
grant Tessera a perpetual, irrevocable, non-exclusive, nontransferable,
worldwide right and license, without right of sublicense, to use, make, have
made, import, offer to sell and sell products and services covered by the
applicable Patent Rights in the Transferred Technology and the Licensed
Technology.
10.4 Licenses upon Expiration or
Termination. If this Agreement expires or terminates,
the assignment under Section 2.1 and the licenses granted under Section 2, and
if applicable Section 10.2, will survive subject to compliance with any
applicable payment or other obligations. If the Agreement is terminated pursuant
to Section 10.2 or otherwise is terminated by Kronos for cause, then the
sublicense right under Section 2.2 shall terminate, though any such termination
will not affect sublicenses already granted by Tessera.
10
10.5
Accrued Rights and Obligations;
Survival. Expiration or termination of this Agreement will not affect any
accrued rights or obligations. The provisions of Sections 1, 2, 4, 5, 6, 7, 8,
10.4, 10.5 and 11 will survive expiration or termination of this Agreement for
any reason.
|
11.
|
MISCELLANEOUS
|
11.1
Rights in Bankruptcy.
All rights and licenses granted to either party under or pursuant to this
Agreement are, and will otherwise be deemed to be, for purposes of Section
365(n) of the U.S. Bankruptcy Code (the "Bankruptcy Code"), licenses of rights
to "intellectual property" as defined under Section 101 of the Bankruptcy Code.
The parties agree that each party, as licensee of such rights under this
Agreement, will retain and may fully exercise all of its rights and elections as
a licensee of intellectual property under the Bankruptcy Code.
11.2
Governing Law. This
Agreement and any dispute arising from the construction, performance or breach
hereof shall be governed by and construed and enforced in accordance with the
laws of the State of California, without reference to its conflict of law
principles.
11.3
Assignment.
Neither party shall assign this Agreement, in whole or in part, without
the prior written consent of the other party, which consent shall not be
unreasonably conditioned, delayed or withheld; provided, however, that either
party may assign this Agreement without such consent, to a parent, subsidiary,
or Affiliate. Any purported assignment without such consent shall be void and of
no effect. Subject to the foregoing sentence, this Agreement will be binding on
and inure to the benefit of the parties and their respective successors and
permitted assigns.
11.4
Representation by Legal
Counsel. Each party hereto represents that it has been represented by
legal counsel in connection with this Agreement and acknowledges that it has
participated in the drafting hereof. In interpreting and applying the terms and
provisions of this Agreement, the parties agree that no presumption shall exist
or be implied against the party that drafted such terms and
provisions.
11.5
Waiver. It is agreed
that no waiver by either party hereto of any breach or default of any of the
covenants or agreements herein set forth shall be deemed a waiver as to any
subsequent and/or similar breach or default.
11.6
Severability. In the
event that any provision of this Agreement becomes or is declared by a court of
competent jurisdiction to be illegal, unenforceable or void, this Agreement
shall continue in full force and effect to the fullest extent permitted by law
without said provision, and the parties shall amend the Agreement to the extent
feasible to lawfully include the substance of the excluded term to as fully as
possible realize the intent of the parties and their commercial bargain except
to the extent that such amendment can not preserve the essential purpose of this
Agreement.
11.7
Independent Contractors.
The relationship of the parties hereto is that of independent
contractors. The parties hereto are not deemed to be agents, partners or joint
ventures of the others for any purpose as a result of this Agreement or the
transactions contemplated thereby.
11
11.8
Compliance with Laws. In
exercising their rights under the license granted hereunder, each party shall
fully comply in all material respects with the requirements of any and all
applicable laws, regulations, rules and orders of any governmental body having
jurisdiction over the exercise of rights and the performance of obligations by
either party under this Agreement.
11.9 Export
Control Regulations. The rights and obligations of the parties under this
Agreement, shall be subject in all respects to United States laws and
regulations as shall from time to time govern the license and delivery of
Technology abroad, including the United States Foreign Assets Control
Regulations, Transaction Control Regulations and Export Control Regulations, as
amended, and any successor legislation issued by the Department of Commerce,
International Trade Administration, or Office of Export Licensing.
11.10
Notices. All notices,
requests and other communications hereunder shall be in writing and shall be
hand delivered, or sent by express delivery service with confirmation of
receipt, or sent by registered or certified mail, return receipt requested,
postage prepaid, or by facsimile transmission (with written confirmation copy by
registered first-class mail), in each case to the respective address or
facsimile number indicated below. Any such notice shall be deemed to have been
given when received. Either party may change its address or facsimile number by
giving the other party written notice, delivered in accordance with this
Section. Not withstanding the foregoing, communications under Section 4 may be
conducted by electronic mail.
For
Kronos:
Xxxxxx
Xxxxxx, President & CEO
000
Xxxxxx Xxxxxx, Xxxxx 000
Xxxxxxx
XX 00000
Fax:
000.000.0000
Email:
xxxxxxx@xxxxxxxxx.xxx
Phone:
000.000.0000
With copy
to:
Xxx
Xxxxxxx
Paul,
Hastings, Xxxxxxxx & Xxxxxx
000
Xxxxxxxxx Xxxxxx, X.X., Xxxxx 0000
Xxxxxxx
XX 00000
Fax:
000.000.0000
Email:
xxxxxxxxx@xxxxxxxxxxxx.xxx
Phone:
000.000.0000
For
Tessera:
Xxxx
Xxxxx, Corporate Controller
0000
Xxxxxxx Xxxxx
Xxx Xxxx,
XX 00000
Fax:
(000) 000-0000
Email:
jprice xxxxxx.xxx
Phone:
(000) 000-0000
12
11.11
Force Majeure.
Neither party shall lose any rights hereunder or be liable to the other
party for damages or losses on account of failure of performance by the
defaulting party if the failure is occasioned by war, strike, fire, Act of God,
earthquake, flood, lockout, embargo, act of terrorism, governmental acts or
orders or restrictions, failure of suppliers, or any other reason where failure
to perform is beyond the reasonable control and not caused by the negligence,
intentional conduct or misconduct of the non-performing party and such party has
exerted all reasonable efforts to avoid or remedy such force majeure; provided,
however, that in no event shall a party be required to settle any labor dispute
or disturbance.
11.12
Headings;
Construction. The headings to the clauses, sub-clause and parts of this
Agreement are inserted for convenience of reference only and are not intended to
be part of or to affect the meaning or interpretation of this Agreement. The
terms "this Agreement," "hereof," "hereunder" and any similar expressions refer
to this Agreement and not to any particular Section or other portion hereof. As
used in this Agreement, the words "include" and "including," and variations
thereof, will be deemed to be followed by the words "without limitation" and
"discretion" means sole discretion.
11.13
Counterparts.
This Agreement may be executed in counterparts, each of which shall be
deemed to be an original and all of which together shall be deemed to be one and
the same agreement.
11.14
Complete
Agreement. This Agreement with its Exhibits, constitutes the entire
agreement, both written and oral, between the parties with respect to the
subject matter hereof, and all prior agreements respecting the subject matter
hereof (including confidentiality agreements), either written or oral, express
or implied, shall be abrogated and canceled. No amendment or change hereof or
addition hereto shall be effective or binding on either of the parties hereto
unless reduced to writing and executed by the respective duly authorized
representatives of Tessera and Kronos.
IN
WITNESS WHEREOF, the Parties have by duly authorized persons executed this
Agreement as of the date first written above.
|
KRONOS
|
TESSERA
|
|
By:
/s/ Xxxxxx
Xxxxxx
|
By:
/s/
Xxxxxxx X. Xxxxxxx
|
|
Title:
President & CEO
|
Title: Chief
Financial Officer
|
|
Date:
3-31-08
|
Date:
3-31-08
|
EXHIBIT
A
TRANSFERRED
TECHNOLOGY
U.S.
Patent Applications and Patents
|
Serial
No.
|
Filing
Date
|
Patent/Publication
No.
|
Issue
Date/ Publication
Date
|
|
10/352,193
|
Jan 28, 2003
|
6,919,698
|
Jul 19, 2005
|
|
11/046,711
|
Feb 1, 2005
|
US
2005-0151490 Al
|
Jul
14, 2005
|
|
10/724,707
|
Dec 2, 2003 |
7,157,704
|
Jan
2, 2007
|
|
11
/347,565
|
Feb 6, 2006 |
US
2006-0226787 Al
|
Oct
12, 2006
|
Foreign
Patent Applications and Patents
|
Country/Region
|
Application
Serial No.
|
Filing
Date
|
Patent/
Publication No.
|
Publication
Date
|
|
Australia
|
AU20040296485
|
Nov
29, 2004
|
AU2004296485
|
Jun
23, 0000
|
| Xxxxxx | CA20042547951 | Nov 29, 2004 | CA2547951 | Jun 23, 0000 |
| Xxxxx | CN20048041207 | Nov 29, 2004 | CN1918685 | Feb 21, 2007 |
| EPO | EP20040816999 | Nov 29, 2004 | EP1695368 | Aug 30, 0000 |
|
Xxxxx
|
JP20060542637T
|
Nov 29,
2004
|
JP2007513484T
|
May 24,
0000
|
|
Xxxxxx
|
MX2006PA06296
|
Jun
2, 2006
|
MXPA06006296
|
Aug
23,2006
|
EXHIBIT B
LICENSED
TECHNOLOGY
U.S.
Patent Applications and Patents
|
Serial
No.
|
Filing
Date
|
Patent/Publication
No.
|
Issue
Date/Publication Date
|
|
09/419,720
|
Oct
14, 1999
|
6,504,308
|
Jan
7, 2003
|
|
90/007,276
|
Oct
29, 2004
|
||
|
10/295,869
|
Nov
18, 2002
|
6,888,314
|
May
3, 2005
|
|
11/119,748
|
May
3, 2005
|
US
2005-0200289 A1
|
Sep
15, 2005
|
Foreign
Patent Applications and Patents
|
Country/Region
|
Application
Serial No.
|
Filing
Date
|
Patent/Publication
No.
|
Publication
Date
|
|
Australia
|
AU20010010847D
|
Oct
13, 2000
|
AU1084701
|
Apr
23, 0000
|
|
Xxxxxxxxx
|
AU20010010847
|
Oct
13, 2000
|
AU773626B
|
May
27, 0000
|
|
Xxxxxxxxx
|
AU20040205310
|
Aug
27, 2004
|
2004205310
|
Sep
23, 0000
|
|
Xxxxxx
|
CA20002355659
|
Oct
13, 2000
|
CA2355659
|
Apr
19, 2001
|
|
EPO
|
EP20000972147
|
Oct
13, 2000
|
EP1153407
|
Nov
14, 2001
|
|
Hong
Kong
|
02103656.7
|
Oct
13, 0000
|
||
|
Xxxxx
|
JP20010530889T
|
Oct
13, 2000
|
JP2003511640T
|
Mar
25, 2003
|
|
Mexico
|
MX2001PA06037
|
Jun
14, 2001
|
MXPA01006037
|
Apr
11, 2005
|
EXHIBIT
C
This
ASSIGNMENT
AGREEMENT ("Assignment Agreement") is made and entered into as of March
28, 2008 (the "Effective Date"), by and between KRONOS
ADVANCED TECHNOLOGIES,
INC., a Nevada corporation having a principal address at 000 Xxxxxx
Xxxxxx, Xxxxx 000, Xxxxxxx, XX 00000 ("Kronos") and TESSERA
TECHNOLOGIES, INC., a Delaware corporation having an address at 0000
Xxxxxxx Xxxxx, Xxx Xxxx, XX 00000 ("Tessera").
Whereas,
the Parties are entering into that certain Intellectual Property Transfer and
License Agreement, dated March 28, 2008 between Kronos and Tessera (the "IP
Transfer Agreement");
Whereas,
under the IP
Transfer Agreement, among other things, Kronos has agreed to assign its
rights in and to the Transferred Technology (as such term is defined in the IP
Transfer Agreement) to Tessera;
Whereas,
Kronos assigns, and Tessera accepts the assignment of the
Transferred Technology, all of under the terms and conditions set forth
below;
Now,
Therefore, in consideration of the foregoing and the covenants and promises
contained herein, the parties agree as follows:
1. Assignment. Kronos hereby
assigns and conveys to Tessera Kronos's (and its Affiliates’) entire right,
title and interest in and to the Patent Rights listed in Exhibit A, together
with all powers, privileges, and benefits. Such assignment is effective as of
the Effective Date. Tessera hereby accepts such assignment.
2. No additional
consideration. Beyond the
consideration set forth in the IP Transfer Agreement, Tessera shall not
currently or in the future owe any further consideration to Kronos for or in respect of Tessera's
exercise of the rights assigned to Tessera hereunder.
3. Further Documentation to Perfect and
Record. Kronos shall execute and deliver
to Tessera or its representatives all other documents and instruments, to be
prepared by Tessera, as are necessary for Tessera to perfect or record any of
the rights that are granted to it under this Agreement, promptly after requested
by Tessera, but only if such documents and instruments are necessary due to
Kronos having previously been the assignee of record for the Transferred
Technology. Kronos shall cause employees, ex-employees and consultants who are
named inventors on any Transferred Technology to do the same, except to the
extent they are at the time employed by Tessera, in which case Tessera is better
placed to obtain cooperation of these people directly.
In
Witness Whereof, the parties have executed this Agreement by their respective
authorized representatives as of the date first set forth above.
|
Kronos
|
Tessera
|
|
By:
/s/ Xxxxxx
Xxxxxx
|
By:
Xxxxxxx X. Xxxxxxx
|
|
Title:
President & CEO
|
Title:
Chief Financial Officer
|
|
Date:
3-31-08
|
Date:
March 28, 2008
|
