EXHIBIT 10.11
GERODISC
TECHNOLOGY TRANSFER
AND LICENSE AGREEMENT
THIS AGREEMENT is effective on March 31, 1997, and is by and between ASHA
CORPORATION, a Delaware corporation with an office and place of business at 000
X Xxxx Xxxxx, Xxxxx Xxxxxxx, Xxxxxxxxxx 00000 ("ASHA"), and STEYR-DAIMLER-PUCH
FAHRZEUGTECHNIK, AG & KOKG, an Austrian corporation with an office and place of
business at 000 Xxxxxxxxxx Xxxxxxxxxxx, Xxxx, Xxxxxxx A-8041 ("STEYR").
RECITALS
A. ASHA developed and owns certain technology and patents and patent
applications relating to hydromechanical limited slip mechanisms
adapted for use in couplings, differentials, drive axles, transaxles,
and transfer cases. These hydromechanical limited slip mechanisms are
known as GERODISC technology.
B. STEYR wishes to obtain information relating to GERODISC technology and
licenses under ASHA patents to use the technology throughout the
world.
C. ASHA is willing to furnish technology and grant certain licenses to
STEYR in accordance with the terms and conditions of this Agreement.
TERMS AND CONDITIONS
1. TECHNOLOGY TRANSFER
A. Within one month after the Effective Date of this Agreement, ASHA will
transfer to STEYR the technical information relating to GERODISC
mechanisms in applications of rear axles, transaxles, couplings and
center differentials that ASHA has in tangible form. This technical
information will include drawings, specifications, engineering data,
bills of materials, process sheets, computer programs and software,
and quality standards.
B. ASHA will provide reasonably required assistance to STEYR during the
period of three years immediately following the Effective Date to
assist STEYR in understanding and applying the technical information
of the preceding section.
C. From time to time during the term of this Agreement up to the fifth
anniversary of the effective date, ASHA will transfer to STEYR
developments in GERODISC mechanisms that are made by ASHA free of
charge to Steyr.
D. ASHA hereby grants to STEYR License rights, as defined in section 3 of
this Agreement, to use the technical information transferred pursuant
to this section to design and develop GERODISC mechanisms for rear
axles, transaxles, couplings and center differentials limited to those
OEM's named in Section 3.A of this Agreement, to make, have made, use,
sell, and service GERODISC mechanisms for rear axles, transaxles,
couplings and center differentials.
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2. CONFIDENTIALITY
A. Each party covenants that it and its employees, agents, and
contractors will keep secret and retain in strictest confidence, the
technical information relating to GERODISC mechanisms transferred to
it by the other party and other matters relating to the business of
the other party that it acquires in the course of activities pursuant
to this Agreement, for the term of this Agreement and for a period of
five years after expiration or termination of this Agreement.
B. Neither party shall have any obligation under the preceding subsection
for information that:
(1) it knew at the time of the transfer,
(2) it shows to be publicly known through no wrongful act of itself,
(3) it receives from a third party that has the right to transfer the
information,
(4) the other party furnishes to any third party without
restrictions,
(5) it independently develops,
(6) is approved for disclosure by the other party,
(7) is required by court order to be disclosed, in which case the
party receiving notice thereof shall provide prompt notice to the
other party so that such party may seek an appropriate protective
order or take such other action as it deems appropriate to
protect its information.
C. Notwithstanding the foregoing, STEYR may furnish information
transferred to it by ASHA in the course of activities under this
Agreement to its customers and potential customers that agree to
handle the information in accordance with provisions equivalent to
those of Section 2.A and 2.B.
3. LICENSES
A. ASHA hereby grants to STEYR non-exclusive licenses under the patents
listed in Attachment A, and patents issuing from the patent
applications listed in Attachment A, to design, develop, make, have
made, use, and sell GERODISC mechanisms for the following Original
Equipment Manufacturers (OEM's) in the following GERODISC applications
for original equipment components and service and replacement
components throughout the world. The grant of this section includes
divisions, reissues, continuations, renewals, and extensions of the
patents:
[THIS INFORMATION HAS BEEN OMITTED AS CONFIDENTIAL AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION]
B. ASHA hereby grants to STEYR non-exclusive licenses under patents
obtained by ASHA and/or its Licensees, who are parties to Grant Back
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Agreements, during the term of this Agreement that are improvements to
GERODISC mechanisms covered by the patents and patent applications
listed in Attachment A, to make have made, use, and sell GERODISC
mechanisms limited to those OEM's of Section 3.A above. The grant of
this section includes divisions, reissues, continuations, renewals,
and extensions of the patents.
C. The licenses of this Section shall extend to the last to expire of the
patents licensed under this Section.
D. From time to time during the term of this Agreement STEYR may elect to
broaden the license grants of Section 3.A above, and ASHA agrees to
convey such rights to STEYR upon terms and conditions to be agreed to
by STEYR and ASHA on a case by case basis. STEYR shall have the right
to request broader rights in any form commensurate with STEYR's
business objectives. Rights to be conveyed in the future to STEYR are
not reserved and are based upon the availability of such rights with
respect to the prior rights of other ASHA licensee's.
E. ASHA hereby warrants that ASHA shall not convey any license or
proprietary rights to any European OEM for any GERODISC application
licensed by STEYR under the terms of this Agreement for a period of
thirty-six (36) months from the effective date of this Agreement. This
limitation shall apply to specific platform applications to which
STEYR has engaged in a GERODISC development and has so notified ASHA
in writing.
4. FEES, ROYALTIES, AND REPORTS
A. STEYR will pay ASHA a lump sum fee in accordance with the following
schedule:
(1) $1,000,000 / USD on the Effective Date of this Agreement.
B. The fees of Section 4.A are committed and irrevocable.
C. During the term of this Agreement, STEYR will pay ASHA a royalty not
to exceed the royalty specified in the following table for each
GERODISC mechanism sold or transferred by STEYR that (i) embodies any
of the technical information transferred to STEYR pursuant to Section
1 of this Agreement which is proprietary to ASHA, or (ii) is covered
by a claim of any of the patents of Section 3 of this Agreement which
has not been declared invalid by a court with jurisdiction over such
matters.
Application Royalty Per Unit
----------- ----------------
* $ * USD / Per Unit
* $ * USD / Per Unit
* $ * USD / Per Unit
*THIS INFORMATION HAS BEEN OMITTED AS CONFIDENTIAL AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION
D. The royalty fees are due and payable upon sale or transfer of the
GERODISC mechanisms by STEYR. STEYR shall calculate the royalty fees
for each six-month (6-month) period and royalty fees are due and
payable to ASHA one month after the end of each six-month period
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during the term of this Agreement and the two year period immediately
following expiration or early termination of this Agreement. STEYR
shall accompany each payment with a written statement showing by
application the number of GERODISC mechanisms manufactured during the
preceding six month period, the number of GERODISC mechanisms sold
during the same six month period, and a computation of the amounts
payable. STEYR may take appropriate credits for returned goods. If no
payment is due for any six month period, STEYR shall render to ASHA a
written statement to such effect in accordance with the timing of this
subsection. In the event that STEYR has manufactured GERODISC
mechanisms prior to the date of any expiration or termination of this
Agreement, but has not sold those mechanisms prior to such date, STEYR
will pay the royalty fees of this section upon sale or transfer
thereof.
E. STEYR shall keep true books of account consistent with generally
accepted accounting principles that contain an accurate record of all
data necessary for the determination of the royalty fees payable under
this section. At any time during the three year period following any
written statement of the previous, ASHA may examine STEYR's books of
account at reasonable times and upon reasonable advance notice during
normal working hours for the purpose of independently calculating the
royalty fees due and payable to ASHA.
F. In no event shall STEYR be required to pay royalties based solely upon
a patent claim which has been held invalid by the decision, unappealed
or unappealable, of a court of competent jurisdiction.
5. REPRESENTATIONS AND WARRANTIES
A. ASHA represents and warrants that technical information transferred to
STEYR and patents licensed to STEYR hereunder, excluding any material
deviations made by STEYR to processes or hardware that are based on
ASHA's technology or patents, do not infringe any enforceable right of
any other party and that ASHA has not received any notice or claim of
infringement with respect thereto. If ASHA, during the term of this
Agreement, receives any such notice or claim, it will promptly provide
a copy thereof to STEYR and the parties will meet as soon as
practicable thereafter to discuss and solve the matter in accordance
with Section 6.
B. ASHA and STEYR each represent and warrant that it has the legal power
and authority to enter into this Agreement and that it has not made
any commitments to others inconsistent with or in derogation of its
obligations under this Agreement. ASHA represents and warrants that
ASHA has rights of ownership to technical information transferred to
STEYR under Section 1 and is the owner of the patents and patent
applications listed in Attachment A.
C. ASHA makes no other express or implied representations or warranties.
6. LITIGATION
A. If STEYR receives notice of a claim for infringement of a third
party's rights in respect to GERODISC mechanisms manufactured and/or
sold by STEYR, STEYR shall notify ASHA and provide ASHA with all
information which it has relating to the such claim at the time of
sending such notice. STEYR shall defend all such claims at it
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expense in a timely and good-faith manner, and ASHA shall cooperate
with and provide assistance to STEYR in its defense of any such claim,
excet that should such claim involve the patents of ASHA, and not any
productionized applications of ASHA's technology, ASHA will defend
such claim at its expense in a timely and good-faith manner, and STEYR
will cooperate with and provide assistance to ASHA in its defense of
any such claim.
B. If STEYR believes that a third party has unlawfully manufactured, used
or sold GERODISC mechanisms infringing and licensed patent or rights
to proprietary data, STEYR shall immediately notify ASHA and provide
as many facts as STEYR has to support its belief, and ASHA shall
cooperate with and provide assistance to STEYR in pursuing any such
infringement. STEYR is empowered:
(1) to bring suit in its own name or, if required by law, jointly
with ASHA, for such infringement of the licensed patents or
rights to proprietary data; and
(2) in any such suit, to enjoin infringement, to settle with ASHA's
consent which shall not be unreasonably withheld, and to collect
damages, settlements and awards of whatever nature recoverable
for such infringement. STEYR shall pay to ASHA fifty percent
(50%) of any recovery, after deduction of STEYR's reasonable
attorney fees and costs actually paid by STEYR and after
reimbursement to ASHA of ASHA's reasonable attorney fees and
costs actually paid by ASHA.
C. In the event ASHA shall bring to the attention of STEYR any
infringement of the licensed patents or proprietary data by a third
party, and STEYR shall not, within six (6) months:
(1) secure cessation of the infringement; or
(2) file suit against the infringer; or
(3) provide ASHA with evidence of the pendency of bona fide
negotiations for settlement, then ASHA shall have the right to
xxx for the infringement at ASHA's own expense, and to collect
for its own use all damages, profits and awards of whatever
nature recoverable for such infringement. ASHA shall pay to STEYR
fifty percent (50%) of any recovery, after deduction of ASHA's
reasonable attorney fees and costs actually paid by ASHA and
after reimbursement to STEYR of STEYR's reasonable attorney fees
and costs actually paid by STEYR.
7. TERMINATION
A. Unless otherwise terminated as provided below, this Agreement shall
run to the end of the life of the last to expire of the licensed
patents, and shall then expire.
B. STEYR may terminate this Agreement at will at any time upon thirty
(30) days prior written notice thereof to ASHA.
C. If either ASHA or STEYR is in material default of any obligation under
this Agreement, the non-defaulting party, at its option, may give
written notice specifying the material default or defaults and
indicating its intention to terminate this Agreement in thirty (30)
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days. Unless the defaulting party has cured the default or defaults
within the thirty (30) day period, this Agreement shall automatically
terminate upon the expiration of the thirty (30) day period.
D. This Agreement hereunder may be terminated by ASHA by providing
written notice to STEYR if:
(1) STEYR files a petition or application for bankruptcy under the
codes of any national insolvency laws having similar effect; or
(2) a receiver is appointed for STEYR's business; or
(3) STEYR makes an assignment for the benefit of creditors.
E. Upon termination of this Agreement STEYR shall cease manufacturing and
selling products covered by one or more claims of the licensed
patents, except to the extent reasonably necessary to fulfill
contracts in effect on the date of termination.
F. Upon termination of this Agreement in accordance with Section 7.B, 7.C
or 7.D, the following obligations will continue:
(1) STEYR's obligation to allow ASHA to inspect STEYR's books of
account for the period during which royalties are payable; and
(2) STEYR's obligation to pay royalties for the period up to and
including the effective date of termination for GERODISC
mechanisms manufactured and sold by STEYR:
a. in fulfilling contracts in effect on the date of
termination; and
b. during any period of default.
8. INDEMNITY
A. STEYR shall indemnify, defend and hold ASHA, its affiliates,
subsidiaries and employees harmless against and from all costs,
expenses, liabilities and damages of any nature and kind, arising from
claims for injury to person, or property arising out of STEYR's
manufacture, use or sale of GERODISC mechanisms.
9. TRANSFERABILITY OF RIGHTS AND OBLIGATIONS
A. This Agreement may not be assigned or transferred by either party,
except in connection with the sale of the entire line of business
relating to GERODISC mechanisms or an operating division of such
party.
10. STEYR'S DEVELOPMENTS AND TRAINING
A. ASHA and STEYR agree to keep each other regularly and fully informed
about developments relating to the manufacture, use and sale of
GERODISC mechanisms, including technical information and data relating
thereto. Any such developments which are developed or owned by STEYR,
whether or not patented or patentable, will be provided to ASHA in the
form of an irrevocable, royalty-free, non-exclusive license, for the
entire world. The grant to ASHA shall
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also carry the right to grant sublicenses to ASHA's other licensees;
subject, however, to the conditions (i) that the sublicense shall not
become effective for a period of two (2) years following the date of
grant of the underlying license; (ii) that any such licensee has
agreed to cross-licenses and\or grant-back terms with ASHA which are
substantially equivalent to those set forth in Section 10; and (iii)
ASHA grants STEYR any such rights resulting from the above mentioned
cross licenses.
B. STEYR shall promptly notify ASHA in writing of any inventions or
improvements which relate to any of the licensed patents or to the
manufacture or use thereof, and in which STEYR is entitled to claim a
proprietary right therein, including those inventions or improvements
made by any employee of STEYR or by any contractor to whom STEYR has
subcontracted work relating to the licensed patents. Within a period
of one hundred and twenty (120) days after each such notification,
STEYR shall elect by notifying ASHA in writing whether or not STEYR
intends to file for patent protection on such invention or
improvements, and specify the countries in which patents applications
are to be filed. ASHA shall receive the license of Section 10.A for
any such patent protection of STEYR. STEYR's failure to notify ASHA of
an election to file for patent protection within the one hundred and
twenty (120) day period shall constitute an election of STEYR not file
for patent protection.
B. In the event STEYR shall elect not to file for patent protection on
any invention or improvements in any countries or to file on any
inventions or improvements only in certain countries, ASHA shall have
the right to file for patent protection in any and all countries which
STEYR has not elected to file in; provided, however, that if ASHA so
obtains patent rights in any country ASHA, at the request of STEYR,
shall grant to STEYR a royalty-free, non- exclusive, irrevocable
license under such patents consistent with the other terms of this
Agreement for the full life of the patents.
C. ASHA shall have the right to grant sublicenses under any license
granted hereunder by STEYR without any obligation to pay any monies to
STEYR, except as defined in 10.F.a of this Agreement.
D. In any instance where STEYR is a proprietor but not the sole
beneficial owner of any invention, improvement, or patent to which
Sections 10.B and 10.C are applicable, it shall use all reasonable
endeavors to obtain the consent of all others interested in the
invention, improvement, or patent to STEYR performing its obligations
as stipulated. STEYR shall also notify ASHA of any third parties that
STEYR intends to have assist it in design, development, manufacture,
use or sale of GERODISC mechanisms and shall use all reasonable
endeavors to obtain an agreement of such third parties to assign any
inventions, improvements or patents developed in the course of such
assistance to STEYR.
F. STEYR, to the best of its ability, shall obtain the assignment to
STEYR from its employees or other persons under its control of all
inventions and improvements relating to the licensed patents and
GERODISC mechanisms which result from STEYR's activities under this
Agreement, provided, however, STEYR shall not be obliged to give any
consideration for such assignment, other than payment of the
incidental costs thereof.
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(1) Should STEYR be required, by law or contract, to pay employees in
order to obtain such assignments and if such cost are not fully
recovered within the two year period prior to the requirement for
Grant-Back license as in 10A. of this Agreement then STEYR may,
upon adequate disclosure to ASHA of its cost paid to employees
for such assignments, charge a license fee sufficient to fully
amortize such cost for a period not to exceed four years.
G. ASHA will provide a minimum of (5) days of technical consultation per
year, as well as reasonable and adequate assistance in connection with
the initial technology transfer and application of such technology
during the first two years of this Agreement. Each party shall bear
its own costs with respect to travel of the parties to each other's
location.
11. GENERAL
A. Failure by either party to this Agreement to exercise or enforce or to
insist upon the strict performance of any of the terms or conditions
of this Agreement will not constitute a waiver of that party's rights
to enforce each and every term and condition of this Agreement for any
subsequent breach or default of the terms of this Agreement.
B. All notices required or allowed to be given under this Agreement shall
be given in writing and delivered by registered mail to a party at the
address set forth above, or to such other addresses either party may
instruct to the other party in writing, and any notice shall be deemed
to be received ten (10) working days after mailing.
C. This Agreement constitutes the entire Agreement between the parties
relating to the subject matter of this Agreement. There are no terms,
obligations, covenants, representations, statements or conditions
other than those contained in this Agreement. No modifications of this
Agreement or waiver of any of the terms or provisions of this
Agreement will be deemed valid, unless in writing and signed by all
parties to this Agreement.
D. If a dispute arises between the parties relating to this Agreement,
the following procedure shall be implemented before either party
pursues other available remedies, except that either party may seek
injunctive relief from a court where appropriate in order to maintain
the status quo while this procedure is being followed:
(1) the parties shall hold a meeting promptly, attended by persons
with decision-making authority regarding the dispute, to attempt
in good faith to negotiate a resolution of the dispute; provided,
however, that no such meeting shall be deemed to vitiate or
reduce the obligations and liabilities of the parties hereunder
or be deemed a waiver by a party hereto of any remedies to which
such party would otherwise be entitled hereunder.
(2) If, within thirty (30) days after such meeting, the parties have
not succeeded in negotiating a resolution of the dispute, they
agree to submit the dispute to mediation in Switzerland in
accordance with the Rules of Conciliation and Arbitration
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of the International Chamber of Commerce by one or more
arbitrators appointed in accordance with said Rules.
(3) This Agreement shall be construed and interpreted in accordance
with the laws of Switzerland.
(4) Provided that any further agreements or documents are not
inconsistent with the terms and conditions of this Agreement, the
parties to this Agreement agree to enter into and execute any and
all such further agreements and documents and to do such things
as may be necessary or beneficial to carry out the purpose of
this Agreement.
(5) In the event that any of the provisions contained in the
Agreement shall be held to be invalid, illegal or unenforceable,
this Agreement shall be construed as if such provisions were not
contained in this Agreement and the remaining provisions of this
Agreement shall continue to be valid and enforceable to the
fullest extent permitted by law.
IN WITNESS WHEREOF, the parties hereto execute this Agreement by duly
authorized officers as of the day and year first above written.
STEYR-DAIMLER-PUCH, ASHA CORPORATION,
By:/s/ Xx. X. Xxxx
/s/ Di. X. Xxxx By: /s/ Xxxx X. XxXxxxxxx
Xx. X. Xxxx Di X. Xxxx Xxxx X. XxXxxxxxx
Members of the Executive Board Its: President
Date: April 8, 1997 Date: March 31, 1997
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ATTACHMENT A
ASHA GERODISC
Patents and Patent Applications
ASHA NO. TITLE SERIAL NO. PATENT NO. ISSUE DATE
-------- ----- ---------- ---------- ----------
0134PUS Vehicle Drivetrain 08/016,168 5,310,388 5/10/94
Coupling
0134PCT Vehicle Drivetrain PCT/US93/01098
Coupling
(This PCT application has proceeded
into the national and regional phases
in Australia, Europe, Japan and Korea)
0134PCN Vehicle Drivetrain 94101564.5
Coupling 02/09/94
0134PMX Vehicle Drivetrain 940391
Coupling 01/11/94
0135PUS Hydraulic Coupling 08/205,900 5,536,215 7/16/96
For Vehicle
Drivetrain
0137PUS Hydraulic Coupling 08/482,761 5,595,214 1/21/97
For Vehicle 06/07/95
Drivetrain
0137PCT Hydraulic Coupling PCT/US96/07987
For Vehicle 05/30/96
Drivetrain
0138PUS Vehicle Drivetrain 08/496,250 5,611,746 3/18/97
Coupling 06/28/95
0138PCT Vehicle Drivetrain PCT/US96/07988
Coupling
0147PUS Hydraulic Coupling 08/733,362
For Vehicle 01/17/96
Drivetrain
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