FORM OF PATENT LICENSE AGREEMENT
FORM OF PATENT LICENSE
AGREEMENT
This non-exclusive Patent License Agreement (“Agreement”) is entered into as of
_____________, 2010 (the “Effective Date”), by and between Vishay Xxxx Electronics,
Inc., a Delaware corporation (“Licensor”), and Vishay Precision Group, Inc. a
Delaware corporation ("Licensee").
RECITALS:
WHEREAS, Licensor is the assignee of
record to United States Patent No. RE39,660; and
WHEREAS, in order to effect and
consummate the separation (the “Separation”) contemplated by that certain Master
Separation and Distribution Agreement between Licensee and Licensor’s affiliate
dated ____, 2010 (the “Master Separation Agreement”), Licensee desires to secure a non-exclusive
license under the Licensed Patent (as defined herein) to manufacture, use and
sell Licensed Products (as defined herein) worldwide.
NOW, THEREFORE, in consideration of
the terms and provisions of this Agreement and the Separation, and for other
good and valuable consideration, the receipt and sufficiency of which is
acknowledged by the execution and delivery hereof, Licensor and Licensee hereby
agree as follows:
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Definitions.
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(a)
“Licensed Patent” shall mean United States Patent No.
RE39,660 and any reissues, reexaminations, divisionals, continuations,
continuations-in-part, extensions, foreign counterparts and any other
patents or patent applications claiming priority to any application in the
family of filings leading to the issuance of United States Patent No.
RE39,660.
(b)
“Licensed Products” shall mean articles or assemblies
listed on Schedule A, as it may be amended from time to time
in accordance with the terms of this Agreement.
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| 2. |
License Grant. Subject to the terms and conditions
set forth in this Agreement, Licensor hereby grants to Licensee, a
non-exclusive, royalty-free, worldwide right and license under the
Licensed Patent to make, have made, use, sell, offer for sale, export and
import Licensed Products.
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| 3. |
Term. This Agreement shall commence on the
Effective Date, and, so long as this Agreement has not been terminated by its terms, continue in full
force and effect until the expiration date of the last to expire patent in
the family of the Licensed Patent.
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| 4. |
Sublicensing. The license shall be sublicensable to
direct or indirect wholly-owned subsidiaries of Licensee, provided that
Licensee shall be responsible for the compliance by its subsidiaries with
the terms of this Agreement. Otherwise, the license shall be
non-assignable and non-sublicensable. Any purported license or assignment
in violation of this Agreement shall be void.
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| 5. |
Maintenance. Licensor may in its sole discretion
cease the maintenance of any Licensed Patent; provided, however, that if Licensor elects not to pay a
maintenance fee on the Licensed
Patent, it will provide written notice to that effect to Licensee at least
three months before due date of the next maintenance fee payment thereon,
and thereafter, Licensee may elect to pay the maintenance fee.
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| 6. |
Patent Marking. All Licensed Products shall be marked
with and display the number of the United States Licensed Patent as
described in 35 U.S.C. §
287(a).
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| 7. |
Enforcement. Licensee shall, at its own reasonable
expense, cooperate fully and promptly with Licensor in the protection of
Licensor’s rights in the Licensed Patent, in such manner and to such
extent as Licensor may reasonably request.
Each party shall
promptly notify the other party in writing of any actual or potential
infringement, or any other unauthorized use of or violation of the
Licensed Patent of which it becomes aware (each an “Infringement”). Licensor may take such action as it,
in its sole discretion, deems necessary or advisable to stop any
Infringement. Licensee may request in writing that Licensor institute an
action to stop an Infringement affecting the Licensed Products. If
Licensor receives such a written request and does not institute such
action within thirty (30) days, Licensee shall be entitled to institute
such action as it deems necessary or advisable to stop such Infringement,
in which Licensor shall be entitled to join; provided that Licensee shall not compromise or
settle any claim or action regarding the Licensed Patent in any manner
that would affect the rights of Licensor without the written consent of
Licensor, which consent shall not be unreasonably withheld. The party not
taking the lead in any action shall cooperate fully with the other party
at the other party’s reasonable request and expense, including Licensor
joining a suit instituted by Licensee in accordance with this section to
the extent necessary for Licensee to have standing.
Any monetary
recovery or sums obtained in settlement of any action to stop an
Infringement shall be allocated between Licensor and Licensee as shall be
fair and equitable, taking into account their actual out-of-pocket costs
and expenses, including reasonable attorneys’ fees, and the damages
sustained by each of them. Any dispute with respect to the allocation of
recoveries shall be resolved in accordance with the resolution procedures
referred to in Section 11(p).
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| 8. |
Warranties of the
Parties. Licensor
warrants that it has the right and power to enter into this Agreement, and
that there are no outstanding assignments, grants, licenses, encumbrances,
obligations or agreements, either written or oral or implied, that prevent
it from doing so. Licensee warrants that it has the right and power to
enter into this Agreement,
and that there are no outstanding assignments, grants, licenses,
encumbrances, obligations or agreements, either written or oral or
implied, that prevent it from doing so.
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| 9. |
WARRANTY DISCLAIMER. EXCEPT AS EXPRESSLY SET FORTH IN THIS
AGREEMENT, LICENSOR MAKES
NO OTHER REPRESENTATION, GUARANTEE OR WARRANTY OF ANY KIND, EXPRESS,
IMPLIED OR OTHERWISE, UNDER THIS AGREEMENT INCLUDING BUT NOT LIMITED TO
REPRESENTATIONS, GUARANTEES OR WARRANTIES AS TO THE RESULTS TO BE EXPECTED
FROM USE OF ANY OF THE INVENTION(S) CLAIMED IN THE LICENSED PATENT, OR FROM MANUFACTURE
OR SALE OF ANY PRODUCT. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT,
LICENSOR SHALL HAVE NO RESPONSIBILITY UNDER ANY LEGAL PRINCIPLE TO
LICENSEE OR TO OTHERS FOR THE ABILITY OR INABILITY OF LICENSEE TO USE THE
LICENSED PATENT; FOR THE QUALITY OR PERFORMANCE OF ANY PRODUCTS
MANUFACTURED OR METHODS PRACTICED UNDER THE LICENSED PATENT; FOR THE
CLAIMS OF THIRD PARTIES RELATING TO ANY PRODUCTS MANUFACTURED OR SOLD BY
LICENSEE; OR FOR ANY FAILURE IN PRODUCTION, DESIGN OR OPERATION OF ANY
PRODUCT MANUFACTURED OR SOLD BY LICENSEE. THE LIMITATIONS OF LIABILITY CONTAINED IN
THIS AGREEMENT ARE A FUNDAMENTAL PART OF THE BASIS OF EACH PARTY’S BARGAIN
HEREUNDER, AND NEITHER PARTY WOULD ENTER INTO THIS AGREEMENT ABSENT SUCH
LIMITATIONS.
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| 10. |
Termination by
Licensor.
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(a)
This Agreement may be terminated by Licensor if:
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| (i) |
Licensee shall (x)
willfully, intentionally and in bad faith breach any material provision of
this Agreement or (y) willfully, intentionally and in bad faith fail to
cure any other breach, and (i) under clause (x), such breach is not
capable of cure; or (ii) under either clause (x) or (y), such breach is
capable of cure, Licensor has given written notice of such breach to
Licensee, and such breach has not been cured within sixty (60) days of
such notice; or
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| (ii) |
Licensee shall
willfully and intentionally and in bad faith purport to assign, delegate
or otherwise transfer any of its rights, benefits, powers, duties
responsibilities or obligations under this Agreement to any person other
than a wholly-owned subsidiary of Licensee without the written consent of
Licensor; or
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| (iii) |
Licensee shall
abandon the use of the Licensed Patent; or
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| (iv) |
a bankruptcy of
Licensee, or any one or more subsidiaries of Licensee holding more than
forty percent (40%) of its consolidated assets shall occur and be
continuing.
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(b) To
effect the termination of this Agreement, Licensor shall deliver to
Licensee a written notice of termination, which notice shall specify the
basis therefor in reasonable detail and an effective date of termination
not less than thirty (30) days after the date of delivery to Licensee of
the notice. If Licensee in good faith disputes that Licensor has a valid
basis for termination, the parties shall resolve such dispute in
accordance with the resolution procedures referred to in Section 11(p).
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(c) Nothing
in this Section shall relieve Licensee of liability for breach of this
Agreement, whether or not Licensor is entitled to terminate this Agreement on
account of such breach.
(d) Upon the
termination of this Agreement, all rights of Licensee granted hereunder shall
terminate. Notwithstanding the foregoing, Licensee shall have the right to
continue to dispose of its then existing inventory of Licensee Products for a
period of up to six (6) months from the date of termination of this Agreement.
All costs associated with the foregoing shall be borne by Licensee.
(e) All
rights and remedies of the parties in respect of any breach of this Agreement
occurring prior to the effective date of its termination shall survive the
termination of this Agreement. In addition, the following provisions of this
Agreement shall explicitly survive its termination: Section 9 (“WARRANTY DISCLAIMER”); and Section 11 (“Miscellaneous”).
11. Miscellaneous.
(a)
Notices. All notices, demands and other
communications required to be given to a party hereunder shall be in writing and
shall be deemed to have been duly given if and when personally delivered; one
business day after being sent by a nationally recognized overnight courier; when
transmitted by facsimile and actually received; or five (5) days after being
mailed by registered or certified mail (postage prepaid, return receipt
requested) to such party at the relevant street address or facsimile number set
forth below (or at such other street address or facsimile number as such party
may designate from time to time by written notice in accordance with this
provision):
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If to Licensor:
Vishay Xxxx
Electronics, Inc.
[address] [address] Attn: Xx. Xxxx Xxxxxxxx [title] Facsimile: (000) 000-0000 Confirm: (000) 000-0000 If to Licensee:
Vishay Precision
Group, Inc.
0 Xxxxx Xxxxxx Xxxxxxx Xxxxxxx, XX 00000-0000 Attn: Xxxxxxx X. Xxxxxx, Chief Financial Officer Facsimile: (000)-000-0000 Confirm: (000)-000-0000 |
With a copy to:
Xxxxxx Xxxxx
Xxxxxxxx & Xxxxxxx LLP
0000 Xxxxxx xx xxx Xxxxxxxx Xxx Xxxx, Xxx Xxxx 00000 Attn: Xxxx Xxxxxxxx, Esq. Facsimile: (000) 000-0000 Confirm: (000) 000-0000 With a copy
to:
Xxxxxx Xxxxxxxx
LLP
3000 Two Xxxxx Square Eighteenth and Arch Streets Philadelphia, PA 19103-2799 Attn: Xxxxx Xxxxxxx, Esq. Facsimile: (000) 000-0000 Confirm: (000) 000-0000 |
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(b)
Further Assurances. In addition to the actions specifically
provided for elsewhere in this Agreement, Licensor and Licensee agree to execute
or cause to be executed and to record or cause to be recorded such other
agreements, instruments and other documents, and to take such other action, as
reasonably necessary or desirable to fully effectuate the intents and purposes
of this Agreement.
(c)
Relationship of the Parties. This Agreement shall not be construed to
place the parties in the relationship of legal representatives, partners, joint
venturers or agents of or with each other. No party shall have any power to
obligate or bind the other party in any manner whatsoever, except as
specifically provided herein.
(d)
Third Party Beneficiaries. Except for the indemnification rights under
this Agreement of any Indemnified Parties (as hereafter defined), the provisions
of this Agreement are solely for the benefit of the parties hereto and their
respective successors and permitted assigns, and are not intended to confer upon
any person, except the parties hereto and their respective successors and
permitted assigns, any rights or remedies hereunder.
(e)
Assignability. Subject to Section 4, this Agreement shall be binding upon and
inure to the benefit of the parties and their respective successors and
permitted assigns.
(f)
Press Releases; Public
Announcements. Neither
party shall issue any release or make any other public announcement concerning
this Agreement or the transactions contemplated hereby without the prior written
approval of the other party, which approval shall not be unreasonably withheld,
delayed or conditioned; provided, however, that either party shall be permitted to make
any release or public announcement that in the opinion of its counsel it is
required to make by law or the rules of any national securities exchange of
which its securities are listed; provided further that it has made efforts that are reasonable
in the circumstances to obtain the prior approval of the other party.
(g)
Waiver of Defaults. Waiver by any party hereto of any default by
the other party hereto of any provision of this Agreement shall not be construed
to be a waiver by the waiving party of any subsequent or other default, nor
shall it in any way affect the validity of this Agreement or prejudice the
rights of the other party thereafter to enforce each and every such provision.
No failure or delay by any party hereto in exercising any right, power or
privilege hereunder shall operate as a waiver thereof nor shall any single or
partial exercise thereof preclude any other or further exercise thereof or the
exercise of any other right, power or privilege.
(h)
Severability. If any provision of this Agreement is
determined by a court of competent jurisdiction to be invalid, void or
unenforceable, the remaining provisions hereof shall remain in full force and
effect and shall in no way be affected, impaired or invalidated thereby, so long
as the economic or legal substance of the transactions contemplated hereby, as
the case may be, is not affected in any manner adverse to any party hereto or
thereto. Upon such determination, the parties hereto shall negotiate in good
faith in an effort to agree upon a suitable and equitable provision to effect
the original intent of the parties hereto.
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(i)
Indemnification. Each of the parties shall indemnify, defend
and hold harmless the other party, each of its respective current and former
directors, officers and employees, and each of their respective heirs,
executors, successors and assigns (“Indemnified Parties”), from and against any and all liabilities
relating to, arising out of or resulting from any breach of, or failure to
perform or comply with, any covenant, undertaking or obligation of, this
Agreement by the indemnifying party. In addition, Licensee shall indemnify,
defend and hold harmless Licensor and its other Indemnified Parties from and
against any and all liabilities relating to, arising out of or resulting from
the manufacture, marketing, sale, offer for sale or other activity of or with
respect to the Licensed Products or any other products manufactured, sold,
offered for sale or otherwise used by Licensee which incorporate any portion of
the Licensed Products but only to the extent caused by such Licensed Products.
All indemnification procedures and payments shall be governed by Sections 5.6,
5.7 and 5.8 of the Master Separation Agreement, as
applicable.
(j)
LIMITATION OF LIABILITY. IN NO EVENT SHALL LICENSOR OR LICENSEE BE
LIABLE TO THE OTHER FOR ANY SPECIAL, CONSEQUENTIAL, INDIRECT, COLLATERAL,
INCIDENTAL OR PUNITIVE DAMAGES OR LOST PROFITS OR FAILURE TO REALIZE EXPECTED
SAVINGS OR OTHER COMMERCIAL OR
ECONOMIC LOSS OF ANY KIND, ARISING OUT OF THIS AGREEMENT; PROVIDED, HOWEVER,
THAT THE FOREGOING LIMITATIONS SHALL NOT LIMIT EITHER PARTY’S INDEMNIFICATION
OBLIGATIONS WITH RESPECT TO THIRD PARTY CLAIMS.
(k)
Confidential Information. Licensor and Licensee shall hold and shall
cause each of their respective affiliates, directors, officers, employees,
agents, consultants, advisors and other representatives to hold, in strict
confidence and not to disclose or release without the prior written consent of
the other party, any and all proprietary or confidential information, material
or data of the other party that comes into its possession in connection with the
performance by the parties of their rights and obligations under this Agreement.
The provisions of Section 4.6 of the Master Purchase Agreement shall govern,
mutatis mutandis, the confidentiality obligations of the
parties under this Section.
(l)
Attorneys’ Fees. In any action hereunder to enforce the
provisions of this Agreement, the
prevailing party shall be entitled to recover its reasonable attorneys’ fees in
addition to any other recovery hereunder.
(m)
Governing Law. This Agreement and the legal relations
between the parties shall be governed by and construed in accordance with the
laws of the State of New York, without regard to the conflict of laws rules
thereof to the extent such rules would require the application of the law of
another jurisdiction.
(n)
Consent to Jurisdiction. Subject to the provisions referenced in
Section 11(p), each of the parties irrevocably submits to
the jurisdiction of the federal and state courts located in Philadelphia,
Pennsylvania for the purposes of any suit, action or other proceeding to compel
arbitration, for the enforcement of any arbitration award or for specific
performance or other equitable relief pursuant to Section 11(o). Each of the parties further agrees that
service of process, summons or other document by U.S. registered mail to such
parties address as provided in Section 11(a) shall be effective service of process for any
action, suit or other proceeding with respect to any matters for which it has
submitted to jurisdiction pursuant to this Section. Each of the parties
irrevocably waives any objection to venue in the federal and state courts
located in Philadelphia, Pennsylvania of any action, suit or proceeding arising
out of this Agreement or the transactions contemplated hereby.
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(o)
Specific Performance. The parties hereto agree that the remedy at
law for any breach of this Agreement may be inadequate, and that any party
hereto shall be entitled to specific performance in addition to any other
appropriate relief or remedy. Such party may, in its sole discretion, apply to a
court of competent jurisdiction for specific performance or injunctive or such
other relief as such court may deem just and proper in order to enforce this
Agreement.
(p)
Dispute Resolution. The procedures set forth in Article VIII of
the Master Separation Agreement shall apply to the resolution of all disputes
arising under this Agreement, except that all proceedings provided for therein
shall be conducted in Philadelphia, Pennsylvania.
(q)
Entire Agreement. This Agreement and the Schedules hereto, as
well as any other agreements and documents referred to herein, constitute the
entire agreement between the parties with respect to the subject matter hereof
and supersede all previous agreements, negotiations, discussions,
understandings, writings, commitments and conversations between the parties with
respect to such subject matter.
(r)
Waiver of Jury Trial. Subject to Section 11(p), EACH OF THE PARTIES HEREBY WAIVES TO THE
FULLEST EXTENT PERMITTED BY LAW ANY RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH
RESPECT TO ANY COURT PROCEEDING DIRECTLY OR INDIRECTLY ARISING OUT OF AND
PERMITTED UNDER OR IN CONNECTION WITH THIS AGREEMENT OR THE TRANSACTIONS
CONTEMPLATED BY THIS
AGREEMENT.
(s)
Amendments. No provisions of this Agreement shall be
deemed amended, modified or supplemented by any party hereto, unless such
amendment, supplement or modification is in writing and signed by the authorized
representative of the party against whom it is sought to enforce such amendment,
supplement or modification.
(t)
Counterparts. This Agreement may be executed in any number
of counterparts, including by facsimile or electronic signature, and each such
counterpart shall be deemed an original instrument, and all of such counterparts
together shall constitute but one agreement. A facsimile or electronic signature
is deemed an original signature for all purposes under this Agreement.
[SIGNATURE PAGES
FOLLOW]
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IN WITNESS WHEREOF, the parties have caused their duly authorized
representatives to execute this Agreement as of the date first above written.
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VISHAY XXXX
ELECTRONICS, INC.
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By:
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Name:
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Title:
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By:
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Name:
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Title:
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