WINDOW LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
THERMOVIEW INDUSTRIES, INC.
This License Agreement ("Agreement") effective as of March 21, 2000 by
and between RESEARCH FRONTIERS INCORPORATED, a Delaware corporation ("LICENSOR")
and THERMOVIEW INDUSTRIES, INC., a Delaware corporation ("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and development in the
application of physiochemical concepts to Light Valves and Licensed Products
(both hereinafter defined) and of methods and apparatus relating to products
incorporating such concepts; and is possessed of and can convey information and
know-how for such products and rights to manufacture, use and sell such
products; and
WHEREAS, LICENSEE is interested in manufacturing and selling Licensed
Products; and
WHEREAS, LICENSEE desires to acquire from LICENSOR, and LICENSOR
desires to grant to LICENSEE, certain rights and licenses with respect to such
technology of LICENSOR;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants herein and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties agree as follows:
1. DEFINITIONS.
The following terms when used herein shall have the respective meanings
set forth in this Article 1.
The "EFFECTIVE DATE" of this Agreement shall be the date which is the last date
of formal execution of this Agreement by duly authorized representatives of the
parties to this Agreement as indicated on the signature page of this Agreement.
"LICENSED PRODUCT" means a Light Valve Architectural Window Product
incorporating a Light Valve. The term "Licensed Product" shall not include Light
Valves used or intended for use in any product other than as specifically
defined herein, such as other window products not specifically defined herein,
windows for transportation vehicles, including, but not limited to passenger
cars, recreational vehicles, trucks, mobile cranes, trains,
aircraft, boats, vans, sport utility vehicles, spacer craft and space-stations,
and non-window products such as but not limited to displays, eyewear, sun
visors, toys, mirrors or filters for scientific instruments, lamps or contrast
enhancement of displays. The term "display" means any device for displaying
letters, numbers, images or other indicia or patterns. Nothing contain herein
shall permit LICENSEE to sell, lease, or otherwise dispose of a Light Valve
which is not combined or intended to be combined as described above into a Light
Valve Architectural Window Product.
"LICENSED TERRITORY" means all countries of the world except North and South
Korea.
"LIGHT VALVE" means a variable light transmission device comprising, a cell
including cell walls, containing or adapted to contain an activatable material,
described hereinafter, such that a change in the optical characteristics of the
activatable material affects the characteristics of light absorbed by,
transmitted through and/or reflect from the cell; means incorporated in or on
the cell, or separate therefrom for applying an electric or magnetic field to
the activatable material within the cell; and coatings, (including, but not
limited to, electrodes), spacers, seals, electrical and/or electronic
components, and other elements incorporated in or on the cell. The activatable
material, which the cell contains or is adapted to contain, includes in it solid
suspended particles, which when subjected to a suitable electric or magnetic
field, orient to produce a change in the optical characteristics of the device,
and may be in the form of liquid suspension, gel, film or other material.
"LIGHT VALVE ARCHITECTURAL WINDOW PRODUCT" means a Light Valve used or intended
for use solely as a window integrally incorporated in, or attached as a fixture
to the external structure or internal structure of any building, whether
permanent or temporary, and whether above or below ground.
The "NET SELLING PRICE" of Licensed Products on which royalties are payable
shall be the greater of the following: (A) the genuine selling price of LICENSEE
and its sub licensees hereunder (including amounts charged for any writing,
installation, and related services provided by LICENSEE and its sub licensees
hereunder) f.o.b. factory at which nonaffiliated customers are billed in the
usual course of business for Licensed Products, as packed for shipment to the
customer, minus the genuine selling price (which, of purposes of this
calculation shall be deemed to be not more than $100 per window) of a window
similar to the Licensed Product but not incorporating a Light Valve; (B) the
genuine selling price of LICENSEE and its sublicensees hereunder (including
amounts charged for any wiring, installation, and related services provided by
LICENSEE and its sublicensees hereunder) f.o.b. factory at which nonaffiliated
customers are billed in the usual course of business for Licensed Products, as
packed for shipment to the customer, multiplied by a fraction, the numerator of
which is the cost of all components included in the window associated with the
incorporation of a Light Valve, and the denominator of which is the total
manufacturing cost for such product; and (C) $100 per window. The aforementioned
$100 figure specified in clauses (A) and (C) above shall be adjusted upward as
of each January 1st hereafter beginning on January 1, 2001 by any increase in
the Producer Price Index for Finished Goods (the "Index") for the 12 month
period ending in December of the prior year, prepared by the Bureau of Labor
Statistics of the United States Department of Labor (or if the Index is not then
being published, the most nearly comparable successor index). In calculating a
genuine selling price of a product for the above calculation, such price may be
reduced only by the applicable proportions of the following if, and to the
extent that, amounts in respect thereof are reflected in such selling price: (i)
normal trade discounts actually allowed; (ii) sales, use or excise and added
value taxes and custom duties paid; (iii) if the genuine selling price is other
than f.o.b. factor, amounts paid for f.o.b. transportation of the product to the
customer's premises or place of installation or delivery; (iv) insurance costs
and the costs of packing material, boxes, cartons and crates required for
shipping; PROVIDED, HOWEVER, that for purposes of this calculation, the genuine
selling price of a product may not be less than 90% of the gross selling price
of said product after
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all deductions therefrom. If a product is leased, sold, used or otherwise
disposed of on terms not involving a bona fide arm's length sale to an
unaffiliated third party, then the Net Selling Price for such transactions shall
be deemed to be the Net Selling Price as defined above for identical products
sold to a nonaffiliated customer nearest to the date of such lease, sale, use,
or other disposition.
"TECHNICAL INFORMATION" means all useful information relating to apparatus,
methods, processes, practices, formulas, techniques, procedures, patterns,
ingredients, designs and the like including (by way of example) drawings,
written recitations of data, specifications, parts, lists, assembly procedures,
operating and maintenance manuals, test and other technical reports, know-how of
LICENSOR, and the like owned or controlled by LICENSOR, to the extent they
exist, that relate to Light Valves, Licensed Products and/or to the suspensions
or other components used or usable for Licensed Products or Light Valves
including, but not limited to, particles, particle precursors, coatings,
polymers, liquid suspensions and suspending liquids, or any combination thereof,
and that consist of concepts invented or developed by LICENSOR. Know-how of
LICENSOR's suppliers and of LICENSOR's other licensees and their sublicensees
under licenses from LICENSOR shall not be considered Technical Information owned
or controlled by LICENSOR.
2. GRANT OF LICENSE.
2.1 LICENSE. During the term of this Agreement, LICENSOR hereby grants
LICENSEE a non-exclusive right and license to use (a) all of the Technical
Information furnished by LICENSOR pursuant to this Agreement, and (b) any
invention claimed in (i) any of the unexpired patents now or hereafter listed on
Schedule A attached hereto or (ii) unexpired patents which issue from pending
patent applications now or hereafter listed in Schedule A, and any
continuations, continuations-in-part, divisions, reissues, reexaminations, or
extensions thereof to make, and to lease, sell, or otherwise dispose of Licensed
Products in the Licensed Territory.
2.2 NO OTHER RIGHTS. LICENSEE agrees that, except for the specific
licenses granted to it under Section 2.1 hereof, LICENSEE has not acquired any
rights or licenses under this Agreement to use Light Valves or any components
thereof made by or for LICENSEE or its sublicensees pursuant to this Agreement
except for use in Licensed Products.
2.3 SUBLICENSES. LICENSEE shall have the right to grant non-exclusive
sublicenses to any of its wholly-owned and controlled subsidiaries, whose
obligations to LICENSOR hereunder LICENSEE hereby guarantees, and which
acknowledges to LICENSOR in writing that it wishes to become a sub licensee
hereunder prior to doing so and agrees to be bound by the terms and conditions
of
this Agreement. All sublicenses shall (i) be non-exclusive, (ii) shall terminate
with the termination of the rights and licenses granted to LICENSEE under
Section 2.1 hereof, and be otherwise limited in accordance with the limitations
and restrictions which are imposed on the rights and licenses granted to
LICENSEE hereunder, (iii) contain confidentiality provisions no less protective
than those contained in Section 12.1 hereof, and (v) shall contain such other
terms, conditions, and licenses as are necessary to enable LICENSEE to fulfill
its obligations hereunder. LICENSEE shall send LICENSOR a copy of every
sublicense agreement or other agreement entered into by LICENSEE in connection
with a sublicense hereunder within thirty (30) days of the execution thereof.
LICENSOR may terminate any such sublicense if there is any change in the
ownership or control of a sub licensee.
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3. ROYALTY PAYMENTS, REPORTS AND RECORD-KEEPING.
3.1 ROYALTIES AND REPORTS ON NET SALES. During the term of this
Agreement, LICENSEE agrees to pay LICENSOR an earned royalty which shall be five
percent (5%) of the Net Selling Price of Licensed Products which embody, or the
manufacture of which utilizes, any of the rights granted under Section 2.1
hereof, and which are manufactured by or for LICENSEE and sold, leased, used or
otherwise disposed of by or for LICENSEE or a permitted sub licensee. Payments
under this Section 3.1 shall be made on a quarterly basis and made within 45
days after the end of the calendar quarter in which such Licensed Products were
sold, leased, used or otherwise disposed of by or for Licensee or a permitted
sub licensee hereunder. Each royalty payment shall be in U.S. dollars and shall
be accompanied by a statement by LICENSEE showing in reasonable detail the
amount of Licensed Products sold, used, leased or otherwise disposed of by or
for LICENSEE and its sublicensees during the preceding quarter, any deductions
taken or credits applied, and the currency exchange rate used to report sales
made in currencies other than U.S. dollars. LICENSEE shall use the exchange
rates for buying U.S. dollars in effect on the last day of each quarter, as
specified in THE NEW YORK TIMES. The first such statement shall cover the period
from the Effective Date of this Agreement to the end of the first calendar
quarter in which a Licensed Product is sold, used, leased or otherwise disposed
of by or for LICENSEE or its sublicensees. LICENSEE shall also furnish to
LICENSOR at the same time it becomes available to any third party, a copy of
each brochure, price list, advertisement or other marketing and promotional
materials prepared, published or distributed by LICENSEE or its sublicensees
relating to Licensed Products.
3.2 MINIMUM ROYALTIES. Except as otherwise specifically provided
for in Section 3.3, during the term of this Agreement LICENSEE agrees to pay
LICENSOR the non-refundable minimum royalties (in U.S. Dollars) specified below
for each of the stated periods:
PERIOD MINIMUM ROYALTY
------ ---------------
From the Effective Date of this Agreement
to December 31, 2000 $ 50,000
From January 1, 2001 to December 31, 2001 $ 75,000
From January 1, 2002 to December 31, 2002 $ 75,000
From January 1 to December 31 of each
license year thereafter $100,000
3.3 ALTERNATIVE MINIMUM ROYALTIES IF TRAINING OPTION HAS BEEN
EXERCISED. If LICENSEE has exercised the Training Option set forth in Section
8.l, during the term of this Agreement LICENSEE agrees to pay LICENSOR the
non-refundable minimum
royalties (in U.S. Dollars) specified below for each of the stated periods:
PERIOD MINIMUM ROYALTY
------ ---------------
From the Effective Date of this Agreement
to December 31, 2000 $ 50,000
From January 1, 2001 to December 31, 2001 $150,000
From January 1 to December 31 of each
license year thereafter $225,000
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3.4 TIME AND METHOD OF PAYMENT. The initial payment under Section 3.2
or Section 3.3, as applicable, shall be paid to LICENSOR within 10 days of the
Effective Date of this Agreement and may be made, at LICENSEE's option either in
cash or by delivering to LICENSOR 12,500 shares of common stock of LICENSEE
issued in the name of Research Frontiers Incorporated, and each subsequent
payment under either Section 3.2 or Section 3.3, as applicable, to LICENSOR
shall be made on or before January 31 of each license year commencing January 1,
2001. With respect to minimum annual royalty payments dues under Section 3.2 or
3.3 for the calendar years beginning January 1, 2001, 2002, and, 2003, payment
may be made at LICENSEE's option either in cash or, if LICENSEE is a public
company and current in all of its reporting requirements under the Securities
Exchange Act of 1934, as amended, and the regulations promulgated thereunder, by
delivering to LICENSOR of the number of shares of common stock of LICENSEE
issued in the name of Research Frontiers Incorporated and rounded up to the
nearest 100 shares equal to: (A) the dollar amount of the payment to be made in
stock, divided by (B) the lesser of (X) 80% of the average closing price per
share of common stock of LICENSEE on the principal exchange on which such shares
of common stock are principally traded for the five trading days immediately
prior to the date LICENSEE instructs its stock transfer agent to issue such
shares, and (Y) $4.00 per share. All such shares delivered to LICENSOR in
payment hereunder shall be considered fully paid and non-assessable. All other
payments shall be due on the date specified in this Agreement, or if no date is
specified, within 30 days of invoice. All payments made to LICENSOR (except the
initial minimum royalty payment if made by delivery of LICENSEE's common stock
as aforesaid) shall be paid by wire transfer of immediately available funds to
the account of Research Frontiers Incorporated at Chase Manhattan Bank, ▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, Account No.: 904-709361, ABA Wire Code
No.: 021 000 021, or to such other account or place, as LICENSOR may specify in
a notice to LICENSEE.
3.5 SALES, USE AND RETURNS. Licensed Products shall be considered sold,
leased or used and royalties shall accrue on the earlier of when such Licensed
Products are billed out, or when delivered, shipped or mailed to the customer.
If as a result of a price reduction or a return of Licensed Products previously
sold, a credit or refund to a customer is given on part or all of the sale price
of such Licensed Products, a credit shall be allowed against royalties accruing
thereafter under this Agreement equal to the royalty paid on that part of the
sales price so credited or refunded.
3.6 RECORDKEEPING. LICENSEE shall keep and shall cause each sub
licensee to keep for six (6) years after the date of submission of each
statement supported thereby, true and accurate records, files and books of
accounts that relate to Licensed Products, all data reasonably required for the
full computation and verification of the Net Selling Price of Licensed Products,
deductions therefrom and royalties to be paid, as well as the other information
to be given in the statements herein provided for, and shall permit LICENSOR or
its duly authorized representatives, upon reasonable notice, adequately to
inspect the same at any time during usual business hours. LICENSOR and LICENSEE
agree that an independent certified public accounting firm (selected by LICENSOR
from the largest ten certified public accounting firms in the United States of
America) may audit such records, files and books of accounts to determine the
accuracy of the statements given by LICENSEE pursuant to Section 3.1 hereof.
Such an audit shall be made upon reasonable advance notice to LICENSEE and
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during usual business hours no more frequently than annually. The cost of the
audit shall be borne by LICENSOR, unless the audit shall disclose a breach by
LICENSEE of any term of this Agreement or an underpayment error in excess of two
percent of the total monies paid to LICENSOR by LICENSEE during the audited
period, in which case LICENSEE shall bear the full cost of such audit. LICENSEE
agrees to pay LICENSOR all additional monies that are disclosed by the audit to
be due and owing to LICENSOR within thirty days of the receipt of the report.
4. OBLIGATIONS OF LICENSEE.
4.1 COMPLIANCE. LICENSEE agrees that, without limitation, any
manufacture, sale, lease, use or other disposition of Licensed Products that is
not in strict accordance with the provisions of this Agreement shall be deemed a
material breach of this Agreement.
4.2 END USERS. LICENSEE agrees to require all direct recipients of
Licensed Products to whom Licensed Products is sold, leased, or otherwise
disposed of by LICENSEE or its sublicensees, to look only to LICENSEE and not to
LICENSOR or its affiliates for any claims, warranties, or liability relating to
such Licensed Products. LICENSEE agrees to take all steps to reasonable assure
itself that Licensed Products sold, leased or otherwise disposed of by or for
LICENSEE is being used for permitted purposes only.
4.3 LAWS AND REGULATIONS. LICENSEE agrees that it shall be solely
responsible for complying with all laws and regulations affecting the
manufacture, use and sale or other disposition of Licensed Products by LICENSEE
and its sublicensees, and for obtaining all approvals necessary from
governmental agencies and other entities. LICENSEE agrees to maintain a file of
all such approvals and to send LICENSOR a copy of all such approvals (including
English translations thereof in the case of approvals required by any foreign
country) within 10 business days of any written request for such copies by
LICENSOR. LICENSEE represents and warrants to LICENSOR that no approval from any
governmental agency or ministry, or from any third party, is required to
effectuate the terms of this Agreement or the transactions contemplated hereby.
4.4 PURCHASE OF COMPONENTS FROM OTHERS. By virtue of the disclosure of
Technical Information and training provided from time to time by LICENSOR to
LICENSEE and to its other licensees, and each of their sublicensees and
affiliates, any component of a Light Valve, including without limitation,
materials, suspensions, films, polymers, coatings, particle precursors, and
particles (each a "Component"), which LICENSEE or its sublicensees makes, has
made for it, or purchases from any third party for use in Licensed Products
shall be deemed to have been manufactured at least in part using the Technical
Information
provided by LCIENSOR. LICENSEE and its sublicensees each hereby agrees that (i)
all Components shall be used only in strict accordance with the provisions of
this Agreement, and that such Components may not be used for any other purpose
or resold by LICENSEE or its sublicensees except as specifically permitted by
the license granted in Section 2.1 hereof, and (ii) LICENSEE and its
sublicensees will only look to the manufacturer or supplier of such Component or
other item used by LICENSEE or its sublicensees and not to LICENSOR or its
affiliates for any claims, warranties, or liability relating to such Component
or other item. LICENSEE acknowledges that LICENSOR has not made any
representations or warranties regarding the availability of any Component, or
the price thereof, and
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that in all respects LICENSEE shall deal directly with the suppliers of such
Components and will obtain from them information regarding availability,
pricing, and/or other terms relating to such Components.
4.5 NO WARRANTIES BY LICENSOR. LICENSOR does not represent or warrant
the performance of any Licensed Product or of any material, Component or
information provided hereunder, and LICENSEE expressly acknowledges and agrees
that any such material, Component or information provided by LICENSOR hereunder
is provided 'AS IS' and that LICENSOR makes no warranty with respect thereto and
DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE,
RELATED THERETO, ITS USE OR ANY INABILITY TO USE IT, OR THE RESULTS OF ITS USE.
Except for any breach of the terms of this Agreement, in no event shall any
party to this Agreement be liable for any damages, whether in contract or tort
(including negligence), including but not limited to direct, consequential,
special, exemplary, incidental and indirect damages, arising out of or in
connection with this Agreement or the use, the results of use, or the inability
to use any Licensed Product, material, Component or information provided
hereunder.
4.6 ANALYSIS. LICENSEE represents and agrees that it will only
incorporate Components received from authorized suppliers into Licensed Products
and for no other purpose, and that LICENSEE will not directly or indirectly
attempt to reverse-engineer any material provided to it hereunder by LICENSEE or
any supplier of any Component.
4.7 PERSONNEL. LICENSEE agrees to assign personnel from its technical
staff who shall be responsible for the development of the Licensed Products
during the term of this Agreement.
5. TRADEMARKS.
5.1 TRADEMARKS. All trademarks or service marks that either party may
adopt and use for Licensed Products or other products incorporating Light Valves
are and shall remain the exclusive property of the adopting party, and the other
party shall not obtain any rights and license to such marks under this
Agreement, but may inform others that the adopting party has produced Licensed
Products or products incorporating Light Valves under such ▇▇▇▇ or marks.
LICENSOR may require LICENSEE or its permitted sublicensees to indicate on
packaging that such product is licensed from Research Frontiers Incorporated or
to otherwise include language and/or designations approved by LICENSOR
indicating an affiliation with Research Frontiers Incorporated.
6. INSURANCE AND INDEMNIFICATION.
6.1 INSURANCE. LICENSEE shall maintain at all times ample product
liability and other liability insurance covering its operations relating to the
subject matter of this Agreement.
6.2 INDEMNIFICATION. LICENSEE, and its affiliates, successors and
assigns and sublicensees (each, an "Indemnifying Party"), each hereby indemnify
and agree to hold harmless LICENSOR and
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its shareholders, officers, directors, agents and employees (each, an
"Indemnified Party"), against any liability, damage, loss, fine, penalty, claim,
cost or expense (including reasonable costs of investigation and settlement and
attorneys', accountants' and other experts' fees and expenses) arising out of
any action or inaction by any Indemnifying Party relating to this Agreement
including an Indemnifying Party's manufacture, sale, use, lease or other
disposition of Licensed Products, and related materials, or other use of the
information and rights granted hereunder. Any knowledge of LICENSEE's or its sub
licensee's activities by LICENSOR or its representatives shall in no way impose
any liability on LICENSOR or reduce the responsibilities of LICENSEE hereunder
or relieve it from any of its obligations and warranties under this Agreement.
7. FUTURE PATENTS.
7.1 FUTURE PATENTS. Each party, at its cost, shall have the right
to file patent applications in the United States and in foreign countries
covering any invention made by such party.
7.2 IMPROVEMENTS AND MODIFICATIONS. (a) Any future improvements or
modifications invented or developed by or on behalf of LICENSEE, LICENSEE'S
sublicensees and LICENSOR after the Effective Date of this Agreement, if any,
which relate in any way to or are useful in the design, operation, manufacture
and assembly of Licensed Products, and/or to the suspensions or other components
used or usable in Licensed Products shall not be included in this Agreement.
Upon written request by the non-inventing party, LICENSOR and LICENSEE shall
negotiate with each other regarding the grant of nonexclusive rights and
licenses to use such improvements and modifications, but neither party shall be
obligated to grant such rights and licenses to one another.
(b) During the term of this Agreement each of the parties hereto agrees
to inform the other in writing (without any obligation to reveal details which
would be confidential information), at least as frequently as once a year in
January of each calendar year, if any significant improvements or modifications
have been made relating to the subject matter of this Agreement, and as to the
general nature of any such improvements and modifications.
(c) Notwithstanding the foregoing, LICENSOR may, but shall not be
required to, voluntarily and without additional cost to LICENSEE disclose
certain information relating to future improvements and modifications and
license to LICENSEE rights in such certain future improvements and
modifications, and any information so disclosed will be considered Technical
Information which LICENSEE shall be obligated to keep confidential pursuant to
Section 12.1 of this Agreement. In connection therewith, LICENSOR, may
voluntarily add patents and/or patent applications to Schedule A hereof. No
disclosure of any information by
LICENSOR shall in any way establish a course of dealing or otherwise require
LICENSOR to make any future disclosure of information under this Agreement.
7.3 FOREIGN PATENT APPLICATIONS. During the term of this Agreement,
LICENSEE shall have the right to designate that any patent application now or
hereafter listed on or incorporated into Schedule A shall be filed or maintained
in any foreign country. If so designated and if legally possible to do so,
LICENSOR agrees to promptly file, prosecute and maintain such applications and
resulting patents, and LICENSEE shall pay to LICENSOR the complete cost,
including reasonable
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attorney's fees, to file, prosecute and maintain any such patent application and
resulting patents specifically so designated by LICENSEE.
8. TECHNOLOGY TRANSFER.
8.1 LICENSEE'S TRAINING OPTION. LICENSEE shall have the option of
receiving training from LICENSOR (the "Training Option"), provided that LICENSEE
exercises such Training Option by sending LICENSOR a notice stating that
LICENSEE is exercising its Training Option which notice is received by LICENSOR
on or before December 31, 2000 (time being of the essence and the Training
Option expiring null and void if not exercised and notice received by LICENSOR
on or before December 31, 2000). Only if such Training Option is exercised in a
timely manner shall the provisions of Sections 3.3, 8.2, 8.3, and 8.4 be in
effect.
8.2 DOCUMENTATION PROVIDED IF TRAINING OPTION IS EXERCISED. Within
thirty business days after the Training Option is exercised by LICENSEE,
LICENSOR shall furnish LICENSEE with all Technical Information owned or
controlled by LICENSOR, which is reasonably necessary or desirable in order for
LICENSEE to manufacture Licensed Products. Such Technical Information, which
relates to experimental products, shall include, without limitation thereto (1)
a document entitled HANDBOOK OF TECHNICAL INFORMATION RELATING TO VARIABLE
DENSITY OPTICAL DEVICES INCORPORATING AN ACTIVATABLE MATERIAL which contains
confidential and proprietary information of LICENSOR and (2) photocopies of all
U.S. Patents and patent applications relating to Licensed Products owned or
controlled by LICENSOR as of the date that the Training Option is exercised.
LICENSOR shall not be obligated hereunder to furnish copies of LICENSOR's
foreign patents and patent applications, but will furnish a list thereof in
Schedule A hereto. Patents and patent applications purchased by LICENSOR from
any third party shall not be considered owned or controlled by LICENSOR until
and unless LICENSOR has been notified in writing that it has received written
assignments relating to such patents and patent applications.
8.3 TRAINING. LICENSEE's technically skilled personnel designated by
LICENSEE (with travel and living expenses paid by LICENSEE) shall make one or
more visits for training and to inspect LICENSOR's research and development
facilities relating to Licensed Products. The visits of employees of LICENSEE to
LICENSOR's facility shall be carried out within the six-month period commencing
with LICENSEE's exercise of its Training Option under Section 8.1 of this
Agreement, and shall not exceed 200 man-hours during such period. To assist
LICENSEE's employees while they are LICENSOR's facility, LICENSOR's technical
staff shall provide up to 200 man-hours assistance during such period at no cost
to LICENSEE. Additionally, there shall be no cost to
LICENSEE for materials used for training during the initial training at
LICENSOR's facility.
8.4 MATERIALS AND ADDITIONAL TRAINING. Upon request by LICENSEE after
LICENSEE's exercise of its Training Option under Section 8.1 of this Agreement,
during the term of this Agreement and when mutually convenient to LICENSOR and
LICENSEE, LICENSOR shall supply LICENSEE with additional training and with small
quantities of materials related to Licensed Products for experimental use only
by LICENSEE, and shall charge LICENSEE $750 per man/day plus the cost of any
other materials used in providing such training or making such materials, plus
the cost of shipping such materials to LICENSEE. Each invoice submitted by
LICENSOR for such
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service shall include detailed explanations of the charges, and, if requested by
LICENSEE, copies of receipts.
8.5 INQUIRIES. LICENSEE and LICENSOR may also at any time during the
term of this Agreement make reasonable inquiry by telephone, facsimile or mail
to one another in regard to any information or data furnished pursuant to this
Agreement.
8.6 VISITS. During all visits by either party to the facilities of the
other party, visitors shall comply with the reasonable rules of the host
company, and each party to this Agreement will indemnify and hold the other
party harmless from any liability, claim or loss whatsoever (i) for any injury
to, or, death of, any of its employees or agents while such persons are present
at the facility of the other party; and (ii) for any damages to its own property
or to the property of any such employee or agent which may occur during the
presence of any such person at the facility of the other party, regardless of
how such damage occurs, if the rules of the host are followed.
8.7 SOLE PURPOSE. Any documentation or information supplied
pursuant to this Agreement by either party to the other shall be used solely for
the purposes set forth in this Agreement.
9. INTELLECTUAL PROPERTY PROTECTION RESPONSIBILITIES.
9.1 PROPRIETARY RIGHTS; NOTICES. Each party shall provide appropriate
notices of patents, or other similar notice of the patent rights of the other
party on all products utilizing the patented inventions of the other party.
Either party may add its own patent notice to any copy or embodiment, which
contains its patented inventions.
9.2 LICENSOR EXCLUSIVE OWNER. LICENSEE hereby acknowledges LICENSOR as
purporting to be the sole and exclusive owner of the patents and patent
applications listed on Schedule A, and that, except for the rights granted
hereunder, LICENSEE shall not have any rights or attempt to assert any ownership
rights in and to those patents and patent applications.
10. TERM AND TERMINATION.
10.1 TERM. The term of this Agreement shall extend from the Effective
Date of this Agreement to the date of termination of this Agreement. Unless
sooner terminated or extended, as herein provided for below, this Agreement
shall terminate upon the expiration of the later of (A) the last to expire of
the patents now or hereafter listed in Schedule A hereof, and (B) the expiration
of the period in which LICENSEE is obligated to maintain confidential Technical
Information of LICENSOR pursuant to Section 12.1 hereof.
10.2 TERMINATION BY LICENSEE. LICENSEE may terminate this Agreement
effective as of December 31, 2003 or as of any anniversary thereof by giving
LICENSOR prior notice thereof unless sooner terminated as hereinafter provided.
Such notice shall be made in writing and shall be given between 60 and 90 days
prior to the effective date for which such termination is to be effective. If
LICENSEE decides to terminate this Agreement for any reason, LICENSEE shall
provide LICENSOR, along with the aforementioned notice of termination, with a
written report describing
10
the reasons for such termination. Notwithstanding anything contained herein to
the contrary, LICENSEE may terminate this Agreement effective as of December 31,
2001 if by December 31, 2001 Light Valve film samples are not made available to
third party recipients by any of LICENSOR's licensees or their permitted
sublicensees.
10.3 TERMINATION BY LICENSOR. LICENSOR may terminate this Agreement at
any time effective as of December 31, 2003 or as of any anniversary thereof upon
at least 30 days' notice to LICENSEE for any reason, and LICENSOR may terminate
this Agreement at any time upon at least 30 days' notice to LICENSEE if LICENSEE
shall have failed to make any payment when due or at any time breach any
material term of this Agreement and such payment is not made or such breach is
not cured within any applicable cure period specified in Article 11 of this
Agreement, or repeatedly provide inaccurate reports hereunder, or if there has
been a cessation by LICENSEE of general operations or of work related to
Licensed Products.
10.4 EFFECT OF TERMINATION. If this Agreement expires or is terminated
for any reason whatsoever, in addition to any other remedies which one party may
have against the other: (1) all of LICENSEE'S rights and licenses under this
Agreement shall cease, and LICENSEE shall immediately return to LICENSOR all
Technical Information furnished by LICENSEE under this Agreement, together with
all reproductions, copies and summaries thereof; PROVIDED, HOWEVER, that
LICENSEE may retain solely for archival purposes one copy of all such documents
in its legal department files, (2) at LICENSOR's option, LICENSEE shall, within
30 days of the date of such termination, either (A) sell and deliver to LICENSOR
at LICENSEE's direct cost of manufacture any Licensed Products which shall then
be in the possession of LICENSEE, and, if requested by LICENSOR, LICENSEE shall
furnish and deliver to LICENSOR any Licensed Products in the process of
manufacture as soon as possible and, in any case, not later than 30 days after
receiving LICENSOR's request, and/or (B) with respect to any unsold inventory
and work in the process of manufacture, to complete such work in process and
sell any remaining inventory during the period not to exceed six months from the
date of termination or expiration of this Agreement provided that at the
completion of such six-month period, LICENSEE shall promptly destroy and dispose
of any Licensed Products (and Licensed Products in the process of manufacture)
not sold under this Section 10.4 and (3) if this Agreement is terminated for any
reason on or before December 31, 2003, LICENSEE hereby grants to LICENSOR a
nonexclusive, royalty-free, irrevocable, worldwide license with the right to
grant sublicenses to others to utilize all technical information, improvements
and/or modifications (whether or not the subject of patents or pending patent
applications) developed or invented by or on behalf of LICENSEE and/or its
sublicensees, subcontractors, or agents hereunder through the date of such
termination of this Agreement relating to Light Valves, or Licensed Products,
and upon such termination, LICENSEE shall
provide LICENSOR in reasonable detail complete information regarding such
technical information, improvements and/or modifications. The foregoing license
shall be self-effectuating, but LICENSEE agrees upon written notice by LICENSOR
at any time hereafter to deliver to LICENSOR within 30 days of such notice any
document or other instrument reasonably requested by LICENSOR to convey such
license rights to LICENSOR such as, by way of example, confirmations or
instruments of conveyance or assignment. No termination of this Agreement by
expiration or otherwise shall release LICENSEE or LICENSOR from any of its
continuing obligations hereunder, if any, or limit, in any way any other remedy
one party may have against the other party. Notwithstanding the foregoing,
LICENSEE's obligations to LICENSOR
11
under Sections 3.1, 3.6, 4.2, 4.3, 4.4, 4.5, 4.6, 6.1, 6.2, 7.2, 8.6, 8.7, 10.4,
12.1, and Articles 13 and 14 shall survive any termination or expiration of this
Agreement.
11. EVENTS OF DEFAULT AND REMEDIES.
11.1 EVENTS OF DEFAULT. Each of the following shall constitute an
"Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment due in a timely manner
or a party's material breach or material failure to punctually perform any of
its duties and obligations under this Agreement, which material breach or
failure, if curable, remains uncured for thirty (30) days after written notice
of such breach or failure is received by the breaching party; or (b) a material
misrepresentation is made by a party in any representation or warranty contained
in this Agreement and the misrepresented facts or circumstances, if curable,
remain uncured thirty (30) days after written notice of such misrepresentation
is received by the breaching party; and, in either case, if such breach or
misrepresentation is not curable, termination shall occur thirty (30) days after
such misrepresentation or breach at the option of the non-breaching party; or
11.1.2 The failure by a party upon request to provide the other party
with adequate assurances of its performance of all obligations under this
Agreement upon: (a) such first party's filing of a voluntary petition in
bankruptcy; (b) the filing of any involuntary petition to have such first party
declared bankrupt which has not been dismissed within ninety (90) days of its
filing; (c) the appointment of a receiver or trustee for such first party which
has not been rescinded within ninety (90) days of the date of such appointment;
or (d) such first party otherwise becoming insolvent or otherwise making an
assignment for the benefit of creditors.
11.2 DEFAULT BY A PARTY. If there occurs an Event of Default with
respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or specific
performance; and/or
(c) terminate this Agreement and the licenses granted to LICENSEE
hereunder whereupon the non defaulting party shall have no
further obligations under this Agreement except those which
expressly survive termination, and except with respect to
royalty payments due and owing to LICENSOR as of the
termination date or any subsequent period specified in Section
10.4.
12. CONFIDENTIALITY.
12.1 CONFIDENTIAL INFORMATION. (a) LICENSEE agrees for itself, its
sublicensees, and their employees and agents that for twenty (20) years from the
later of the Effective Date of this Agreement or the latest date of its receipt
of information disclosed to LICENSEE by LICENSOR pursuant to this Agreement,
such information shall be held in confidence; PROVIDED, HOWEVER, there
12
shall be no obligation to treat as confidential information which is or becomes
available to the public other than through a breach of this obligation, or which
was already possessed by LICENSEE in writing (or otherwise provable to be in the
possession of LICENSEE) prior to the Effective Date of this Agreement (and was
not received from LICENSOR) or which is shown by LICENSEE to have been received
by it from a third party who had the legal right to so disclose it without
restrictions and without breach of any agreement with LICENSOR or its licensees.
LICENSOR shall affix an appropriate legend on all written documentation given to
LICENSEE, which contains confidential information. LICENSEE acknowledges that
the list of patent applications contained on Schedule A is confidential
information of LICENSOR. Other than for the oral information conveyed during the
training conducted pursuant to Sections 8.3 and 8.4 hereof all of which shall be
deemed to be confidential information, if confidential information is otherwise
conveyed orally by LICENSOR after training has been completed, LICENSOR shall
specify to LICENSEE at the time such information is being conveyed (or in a
subsequent letter referring to the conversation) that the information conveyed
is confidential. It is understood and agreed that, unless otherwise provided in
a separate agreement between LICENSEE and LICENSOR, LICENSEE has no obligation
hereunder to provide LICENSOR with any confidential or proprietary information,
and that LICENSOR shall have no obligation hereunder to LICENSEE to maintain in
confidence or refrain from commercial or other use of any information which
LICENSOR is or becomes aware of under this Agreement. The terms and provisions
of this Agreement or any other agreement between the parties shall not be
considered confidential, and the parties hereto acknowledge that, pursuant to
the Securities Exchange Act of 1934, as amended, and the regulations promulgated
thereunder, LICENSOR may file copies of this Agreement with the Securities and
Exchange Commission and with NASDAQ and with any other stock exchange on which
LICENSOR's securities may be listed. LICENSEE agrees that for the period of time
during which LICENSEE is obligated to keep information confidential hereunder,
LICENSEE will not make, use, sell, lease or otherwise dispose of products using
or directly or indirectly derived from Licensed Products, Light Valves, or
Components, or which otherwise comprise suspending particles, which when
subjected to a suitable electric or magnetic field, orient to produce a change
in the optical characteristics of the suspension ("SPD Technology") unless an
agreement between LICENSOR and LICENSEE permitting it to do so is in full force
and effect and the royalties, if any, provided in such agreement are being paid
to LICENSOR on such products. The foregoing restriction shall not apply to
products (i) which do not directly or indirectly incorporate SPD Technology,
such as, but not limited to, liquid crystal devices, or electrochromic devices,
or (ii) which incorporate technology involving suspended particles, which when
subjected to a suitable electric or magnetic field, orient to produce a change
in the optical characteristics of the suspension but which is independently
developed and which is not in any way directly or indirectly
derived from any Technical Information of LICENSOR or its licensees,
sublicensees, or any of their affiliates. LICENSEE shall have the burden of
proving by clear and convincing evidence that the availability of any exception
of confidentiality exists or that the foregoing restrictions do not apply to a
particular product. Nothing contained in this section, however, shall be
construed as granting LICENSEE any rights or licenses with respect to any
Technical Information or patents of LICENSOR or its other licensees or their
sublicensees.
(b) After LICENSEE's exercise of its Training Option under Section 8.1
of this Agreement, LICENSEE shall have the right to disclose to a subcontractor
information of LICENSOR received pursuant to Article 8 hereof; PROVIDED,
HOWEVER, that LICENSEE shall only disclose such information
13
as is strictly necessary to enable said subcontractor to perform its
manufacturing task, and provided that prior to disclosing any information to
said subcontractor, said subcontractor has signed a secrecy agreement with
LICENSEE at least as protective of LICENSOR's Technical Information as the
provisions of this Agreement, including, without limitation, said
subcontractor's specific agreement to be bound by the provisions of Section 12.1
hereof to the same extent as LICENSEE. For such purposes, LICENSEE may develop a
standard form of secrecy agreement for LICENSOR's approval, after which LICENSEE
may use such secrecy agreement with all subcontractors without LICENSOR's prior
approval of the secrecy agreement being necessary. LICENSEE shall have all
subcontractors sign said secrecy agreement prior to the disclosure of Technical
Information to said subcontractor, and LICENSEE shall send LICENSOR a copy of
every such secrecy agreement within thirty (30) days after the execution
thereof.
13. WARRANTIES AND REPRESENTATIONS.
13.1 RECIPROCAL REPRESENTATIONS. Each party represents and
warrants to the other that:
13.1.1 VALID AGREEMENT. The execution and delivery of this Agreement by
the officer or representative so doing, and the consummation of the transactions
contemplated hereby, have been duly authorized by all necessary corporate action
by LICENSOR and LICENSEE and this Agreement is a valid and binding obligation
enforceable against the parties in accordance with its terms, except to the
extent limited by bankruptcy, insolvency, moratorium and other laws of general
application relating to general equitable principles;
13.1.2 NO CONFLICTS. Nothing herein conflicts with its rights and
obligations pursuant to any agreement by a party and any other entity; and
13.1.3 PUBLICITY. The parties shall have the right to use
non-confidential information, including but not limited to information
concerning this Agreement, for marketing, sales, technical assistance, investor
relations, disclosure and public relations purposes, and that information
permitted to be disclosed by a party under this Section 13.1.3 may appear on
such party's (or its subsidiaries' or sublicensees') Internet web site, along
with links to the Internet web sites of the other party and its subsidiaries and
sublicensees.
13.2 LICENSOR REPRESENTATIONS. LICENSOR represents and warrants,
for the benefit of LICENSEE, that:
13.2.1 TITLE. As of the date hereof, LICENSOR represents and warrants
that it has the right to convey the rights and licenses granted by this
Agreement, and otherwise to perform its obligations under this Agreement.
LICENSOR has caused its
employees who are employed to do research, development, and other inventive work
to disclose to it any invention or information within the scope of this
Agreement and to assign to it rights in such inventions and information in order
that LICENSEE shall receive, by virtue of this Agreement, the licenses granted
to it under Section 2.1 hereof.
13.3.2 INFRINGEMENT. As of the date hereof, LICENSOR is not ▇▇▇▇ of any
claim for patent infringement or the misappropriation of trade secrets, being
asserted against it by any third party; or of any infringement of the patents
listed on Schedule A hereto by any entity.
14
13.2.3 PATENTS IN FORCE. To the best of LICENSOR's knowledge, all of
the patents listed on Schedule A hereto are currently in force.
13.3 NO WARRANTY. LICENSOR and LICENSEE make no guaranty or warranty to
one another under this Agreement (a) that LICENSEE will be able to develop,
manufacture, sell or otherwise commercialize Licensed Products, or (b) as to the
validity of any patent.
14. MISCELLANEOUS.
14.1 APPLICABLE LAW. This Agreement shall be interpreted, construed,
governed and enforced in accordance with and governed by the laws of the State
of New York, and LICENSOR and LICENSEE hereby submit to the exclusive
jurisdiction of the state or federal courts located in the County of Nassau and
State of New York for such purposes.
14.2 CONFIDENTIALITY IN COURT PROCEEDING. In order to protect and
preserve the confidential information of a party which the parties recognize may
be exchanged pursuant to the provisions of this Agreement, the disclosing party
may request, and the receiving party shall not oppose, the court in any action
relating to this Agreement to enter a protective order to protect information
which is confidential information under Section 12.1 and to seal the record in
the action or to hold the proceedings, or portion of the proceedings, in camera;
provided, that the requested terms do not prejudice the receiving party's
interests. Nothing, however, shall preclude either party from thereafter moving
to unseal its own records or to have matter and information designated as
confidential under any relevant protective order designated otherwise in
accordance with the circumstances as they shall appear at that time.
14.3 SEVERABILITY. If any provision of this Agreement is declared or
found to be illegal, unenforceable or void, the parties shall negotiate in good
faith to agree upon a substitute provision that is legal and enforceable and is
as nearly as possible consistent with the intentions underlying the original
provision. If the remainder of this Agreement is not materially affected by such
declaration or finding and is capable of substantial performance, then the
remainder shall be enforced to the extent permitted by law.
14.4 WAIVER. Unless agreed to by the parties in writing to the
contrary, the failure of either party to insist in any one or more instances
upon the strict performance of any one or more of the provisions of this
Agreement, or to exercise any right contained in this Agreement or provided by
law, shall not constitute or be construed as a waiver or relinquishment of the
performance of such provision or right or the right subsequently to demand such
strict performance or exercise of such right, and
the rights and obligations of the parties shall continue unchanged and remain in
full force and effect.
14.5 CAPTIONS. The captions and headings in this Agreement are inserted
for convenience and reference only and in no way define or limit the scope or
content of this Agreement and shall not affect the interpretation of its
provisions.
14.6 ASSIGNMENT. This Agreement shall be binding on and shall inure to
the benefit of the parties and their successors and assigns. However, LICENSEE
agrees that it shall not assign this Agreement or its rights hereunder without
the prior written consent of LICENSOR except to a successor to substantially all
of its business relating to Light Valves and whose obligations hereunder
15
are guaranteed to LICENSOR by LICENSEE. LICENSOR may assign all of its rights
and obligations hereunder to any successor to any of its business interests or
to any company controlling or controlled by LICENSOR. All assignees shall
expressly assume in writing the performance of all the terms and conditions of
this Agreement to be performed by the assigning party, and an originally signed
instrument of such assumption and assignment shall be delivered to the
non-assigning party within 30 days of the execution of such instrument.
14.7 SCHEDULES. All schedules attached to this Agreement shall be
deemed to be a part of this Agreement as if set forth fully in this Agreement.
14.8 ENTIRE AGREEMENT. This Agreement constitutes the entire
understanding and agreement between LICENSOR and LICENSEE with respect to the
subject matter hereof, supersedes all prior agreements, proposals,
understandings, letters of intent, negotiations and discussions with respect to
the subject matter hereof and can be modified, amended, supplemented or changed
only by an agreement in writing which makes specific reference to this Agreement
and which is executed in writing by the parties; PROVIDED, HOWEVER, that either
party may unilaterally waive in writing any provision imposing an obligation on
the other.
14.9 NOTICES. Any notice required or permitted to be given or made in
this Agreement shall be in writing and shall be deemed given on the earliest of
(i) actual receipt, irrespective of method of delivery, (ii) on the delivery day
following dispatch if sent by express mail (or similar next day courier
service), or (iii) on the sixth day after mailing by registered or certified air
mail, return receipt requested, postage prepaid and addressed as follows:
LICENSOR: ▇▇▇▇▇▇ ▇. ▇▇▇▇, President
Research Frontiers Incorporated
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
LICENSEE: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Chairman and Chief Executive Officer
Thermoview Industries, Inc.
▇▇▇▇ ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
or to such substitute addresses and persons as a party may designate to the
other from time to time by written notice in accordance with this provision.
14.10 BANKRUPTCY CODE. In the event that either party should file a
petition under the federal bankruptcy laws, or that an involuntary petition
shall be filed against such party, the parties intend
16
that the non-filing party shall be protected in the continued enjoyment of its
rights hereunder to the maximum feasible extent including, without limitation,
if it so elects, the protection conferred upon licensees under section 365(n) of
Title 17 of the U.S. Code. Each party agrees that it will give the other party
immediate notice of the filing of any voluntary or involuntary petition under
the federal bankruptcy laws.
14.11 CONSTRUCTION. This Agreement and the exhibits hereto have been
drafted jointly by the parties and in the event of any ambiguities in the
language hereof, there shall be no inference drawn in favor or against either
party.
14.12 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original, but all of which shall
constitute one and the same instrument.
14.13 STATUS OF THE PARTIES. The status of the parties under this
Agreement shall be solely that of independent contractors. No party shall have
the right to enter into any agreements on behalf of the other party nor shall it
represent to any person that it has such right or authority.
The parties, through their duly authorized representatives, and
intending to be legally bound, have executed this Agreement, as of the date and
year first above written, whereupon it became effective in accordance with its
terms.
RESEARCH FRONTIERS INCORPORATED
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇
-----------------------------
▇▇▇▇▇▇ ▇. ▇▇▇▇, president
Date: March 21, 2000
THERMOVIEW INDUSTRIES, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
----------------------------
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Chairman and
Chief Executive Officer
Date: March 20, 2000
17
SCHEDULE A
(As of March 21, 2000)
LIST OF UNITED STATES AND
FOREIGN PATENTS
AND PATENT APPLICATIONS
DATE EXPIRATION
PATENTS IN THE UNITED STATES ISSUED DATE
---------------------------- ------ ----
4,407,565 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Suspension Containing
Fluorocarbon Liquid" 10/04/83 1/16/01
4,422,963 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ et al
"Improved Light Polarizing Materials
and Suspension Thereof" 12/27/83 12/27/00
4,772,103 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Containing an Improved
Suspension, and Liquids Therefor" 9/20/88 8/8/06
4,877,313 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Polarizing Materials and
Suspensions Thereof" (QA) 10/31/89 2/10/09
5,002,701 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Polarizing Materials and
Suspensions Thereof" 3/26/91 10/27/09
5,093,041 ▇▇▇▇▇▇ ▇. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 ▇▇▇▇ ▇▇▇▇▇▇▇▇▇
"Electro-Optical Light Modulator" 5/05/92 7/5/09
5,130,057 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Polarizing Materials and
Suspensions Thereof" 7/14/92 10/31/06
5,279,773 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Incorporating a Suspension
Stablized With A Block Polymer" 1/18/94 3/23/12
5,325,220 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve With Low Emissivity
Coating As Electrode" (JDR-105) 6/28/94 3/9/13
A-1
SCHEDULE A (CONTINUED)
DATE EXPIRATION
PATENTS IN THE UNITED STATES ISSUED DATE
---------------------------- ------ ----
5,463,491 ▇▇▇▇▇▇ ▇. Check III
"Light Valve Employing a Film Comprising
An Encapsulated Liquid Suspension And
Method of Making Such File" (JDR-101) 10/31/95 11/6/12
5,463,492 ▇▇▇▇▇▇ ▇. Check III
"Light Modulating File of Improved
Clarity For A Light Valve" (JDR-102) 10/31/95 11/6/12
5,461,506 ▇▇▇▇▇▇ ▇. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing the Same" (JDR-103) 10/24/95 5/11/13
5,467,217 ▇▇▇▇▇▇ ▇. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing the Same" (JDR-104) 11/14/95 5/11/13
5,516,463 ▇▇▇▇▇▇ ▇. Check III et al
"Method of Making Light Polarizing Particles"
(JDR-106) 05/14/96 07/08/14
5,650,872 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Valve Containing Ultrafine Particles"
(JDR-108) [CIP of S.N. 351,665) 07/22/97 07/22/14
5,728,251 ▇▇▇▇▇▇ ▇. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve"
(JDR-111) 03/17/98 09/27/15
A-2
PENDING APPLICATIONS
SERIAL NUMBER FILING DATE
------------- -----------
176,367 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" (JDR-110) 01/03/94
This case is identical with U.S. Patent No. 5,279,773
which issued on January 18, 1994 except that certain
claims are on appeal.
08/947,559 ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ et al
"Ultraviolet Radiation-Curable
Light-Modulating Film for a Light
Valve, and Method of Making Same" (JDR-112) 10/09/97
09/258,677 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Polarizing Material, Liquid
Suspensions and Films Thereof, and Light
Valve Incorporating Same" (JDR-113) 02/26/99
60/092,331 ▇▇▇▇▇ ▇▇▇▇▇▇▇ et al
"Improved Polyhalide Particles, Liquid
Suspensions and Films Thereof, Light
Valves Comprising Same, and Methods of Making
Such Particles (JDR-114) 07/09/99
60/092,198 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Method of Making Light-Polarizing Particles
of Improved Particle Size Distribution for
Liquid Light Valve Suspension, Set Suspension
and Light Valve Film" (JDR-115) 07/09/99
09/327/760 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Anisometrically Shaped Carbon and/or Graphite
Particles, Liquid Suspensions and Films Thereof
And Light Valves Comprising Same" 06/07/99
▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Method and Materials for Enhancing the Adhesion of
SPD Films and Light Valves Comprising Same" 03/02/00
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ et al
"SPD Films Having Improved Properties and
Light Valves Comprising Same" 03/02/00
A-3
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number 4,407,565:
Germany P3200557.1 01/12/82
*Japan 1,551,551 03/23/90 06/28/82 06/28/02
Foreign patents and applications corresponding to U.S. Patent Number 4,772,103:
*Canada 1,315,088 03/30/93 05/20/88 ▇▇/▇▇/▇▇
*▇▇▇ (▇▇▇▇▇▇,
▇▇▇▇▇▇▇,
▇▇▇▇▇▇ ▇▇▇▇▇▇▇) 342,299 12/08/93 05/20/88 05/20/08
*Japan 2,716,459 11/07/97 06/08/88 06/08/08
*Korea 119,483 08/02/97 07/05/88 07/05/08
*Taiwan NI-43736 04/23/91 05/24/88 12/31/05
Foreign patents and applications corresponding to U.S. Patent Number 4,877,313:
*Canada 1,336,858 09/05/95 06/08/89 ▇▇/▇▇/▇▇
*▇▇▇ (▇▇▇▇▇▇
▇▇▇▇▇▇▇,
▇▇▇▇▇▇ ▇▇▇▇▇▇▇) 403,711 12/08/93 06/19/89 06/19/09
Japan 01-176982 07/07/89
*Korea 9650/89 07/02/98 07/07/89 07/02/13
*Taiwan NI-41699 01/12/91 06/21/89 09/30/05
Foreign patents and applications corresponding to U.S. Patent Number 5,002,701):
Canada 2,027,349-6 ▇▇/▇▇/▇▇
*▇▇▇ (▇▇▇▇▇▇,
▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇,
Sweden, ▇▇▇▇▇▇▇-
land, United
Kingdom) 425,344 05/18/94 10/17/90 10/17/10
Japan 02-288254 10/22/90
Korea 16868/90 10/22/90
*Taiwan NI-46516 08/10/91 10/13/90 04/30/06
*-indicates a patent
A-4
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number 5,093,041:
Canada 2049869 ▇▇/▇▇/▇▇
*▇▇▇ (▇▇▇▇▇▇,
▇▇▇▇▇▇▇,
▇▇▇▇▇▇ ▇▇▇▇▇▇▇) 532,809 02/28/96 09/16/91 09/16/11
Japan 3-252,095 09/30/91
Korea 17043/91 09/30/91
Foreign patents and applications corresponding to U.S. Patent Number 5,279,773
(Block Polymer):
*Canada 1,335,845 06/06/95 06/08/89 ▇▇/▇▇/▇▇
*▇▇▇ (▇▇▇▇▇▇,
▇▇▇▇▇▇▇,
▇▇▇▇▇▇ ▇▇▇▇▇▇▇) 350,354 06/01/94 06/19/89 06/19/09
*Japan 2,710,415 10/24/97 07/07/89 07/07/09
Korea 9651/89 07/07/89
Foreign patents and applications corresponding to U.S. Patent Number 5,325,220
(Low-E (JDR-105):
*Argentina 250,625 04/29/97 05/02/94 04/29/12
Australia 59380/94 04/12/94
Brazil PI9402044-2 05/20/94
Canada 2120854 04/08/94
EPO (Austria, 94201185.9 ▇▇/▇▇/▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten-
▇▇▇▇▇] & United
Kingdom)
Japan 6-96451 05/10/94
Korea 10054/94 05/09/94
Mexico 9402944 04/22/94
*Taiwan NI-68190 02/15/95 03/10/93 03/09/13
*-indicates a patent
A-5
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number 743,808
(QAII)(:
*Canada 1,336,858 09/05/95 04/07/92 ▇▇/▇▇/▇▇
*▇▇▇ (▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇,
▇▇▇▇▇▇▇, Greece,
Italy, Luxembourg,
Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
▇▇▇▇▇] & United
Kingdom) 564,676 10/13/93 04/07/92 04/07/12
Japan 4-109708 04/28/92
Korea 6162/92 04/14/92
*Taiwan NI-60806 06/04/93 04/08/92 02/20/08
Foreign patents and applications corresponding to U.S. Patent Number 5,463,491
(JDR-101):
USPTO/RO PCT/US92/09034 10/22/92
*Australia 669,135 09/27/96 06/14/94 06/14/14
Canada 2125561 06/09/94
EPO (Austria, 92922886.4 ▇▇/▇▇/▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including liechten-
▇▇▇▇▇] & United
Kingdom)
Korea 702534/93 08/25/93
*Mexico 183,173 11/07/96 04/29/93 04/29/13
Taiwan 82102979 04/19/93
*-indicates a patent
A-6
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number 5,463,492
(JDR-102):
USPTCO/RO PCT/US93/10485 11/01/93
Argentina 327,984 04/22/94
Australia 55896/94 11/01/93
Australia 31573/97 07/28/97
Brazil PI9307402 11/01/93
Canada 21477868 11/01/93
EPO (Austria, 94901235.5 ▇▇/▇▇/▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten-
▇▇▇▇▇] & United
Kingdom
Japan 6/512156 11/01/93
Korea 701724/95 05/02/95
Mexico 942757 04/15/94
*Taiwan NI-071343 08/30/95 11/11/93 11/10/13
Foreign patents and applications corresponding to U.S. Patent Number 5,461,506
(JDR-103):
*Argentina 248,847 04/16/96 05/09/94 04/16/11
Australia 59382/94 04/12/94
Brazil PI9401916-9 05/06/94
Canada 2121062 04/12/94
EPO (Austria, 94201186.7 ▇▇/▇▇/▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
▇▇▇▇▇} & United
Kingdom)
Japan 6-94637 05/09/94
Korea 9871/94 05/06/94
*Mexico 184,523 04/24/97 04/20/94
Taiwan 83103237 04/12/94
*-indicates a patent
A-7
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number 5,467,217
(JDR-104):
Argentina 328,075 05/02/94
*Australia 680,231 11/13/97 04/12/94 04/12/14
Brazil PI9401917.7 05/06/94
Canada 2121061 04/12/94
EPO (Austria, 94201184.2 ▇▇/▇▇/▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
▇▇▇▇▇} & United
Kingdom)
Japan 6-96217 05/10/94
Korea 9870/94 05/06/94
Mexico 9402945 04/22/94
Taiwan 83103238 04/12/94
Foreign patents and applications corresponding to U.S. Patent Number 5,516,463
(JDR-106):
*Argentina 250,329 01/28/97 07/21/94 01/28/12
*Australia 682,367 01/22/98 07/20/94 07/20/14
Brazil PI9402876-1 07/20/94
Canada 2,128,484 07/20/94
EPO (Austria, 94111419.1 ▇▇/▇▇/▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
▇▇▇▇▇} & United
Kingdom)
Japan 6-168249 07/20/94
Korea 17458/94 07/20/94
Mexico 9405529 07/20/94
Taiwan 83106635 07/20/94
*-indicates a patent
A-8
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Serial Number 534,516
(JDR-111):
Canada 2,186,318 09/24/96
EPO (Austria, 96402046.5 ▇▇/▇▇/▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
▇▇▇▇▇} & United
Kingdom)
Japan 8-253225 09/25/96
Korea 39420/96 09/12/96
Foreign patents and applications corresponding to U.S. Serial Number 08/947,599:
Argentina P980105043 10/09/98
Australia 10/01/98
Brazil 10/08/98
Canada 10/08/98
EPO (Austria, 98402512.2 ▇▇/▇▇/▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇,
▇▇▇▇▇▇▇,
▇▇▇▇▇▇, Germany,
Greece, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten-
▇▇▇▇▇] & United Kingdom)
Japan 10-287920 10/09/98
Korea 42138/98 10/09/98
Mexico 988231 10/09/98
Taiwan 87116407 10/02/98
*-indicates a patent
A-9
RESEARCH FRONTIERS INCORPORATED
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇.▇. ▇▇▇▇▇
TELEPHONE: (▇▇▇) ▇▇▇-▇▇▇▇
FACSIMILE: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇ ▇▇, ▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇ (502-412-0301)
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Chairman and Chief Executive officer
ThermoView Industries, Inc.
▇▇▇▇ ▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Dear ▇▇▇▇▇:
This letter is to confirm Research Frontier Incorporated willingness,
in exchange for ThermoView's payment to it of $50,000, to rescind the issuance
of 12,500 shares of the common stock of ThermoView Industries, Inc. which was
paid to us as the initial minimum annual royalty under our license agreement
with ThermoView Industries, Inc. effective as of March 21, 2000. In order for us
to effectuate this rescission, please let us know whether you would like to
proceed with this rescission by April 19, 2000, as we are in the process of
preparing our financial statements for our fiscal quarter ended March 31, 2000
and need to reflect this transaction properly. If you would like to proceed with
the rescission, simply sign where indicated below and fax this letter back to me
by April 19, 2000. Thank you.
Sincerely,
/s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇
President
We agree to the aforementioned rescission:
ThermoView Industries, Inc.
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇
Chairman and Chief Executive Officer
