LICENSE AGREEMENT
Exhibit
10.9
THIS
AGREEMENT is effective as of the Effective Date, by and between ADVANCED
VIBRATION TECHNOLOGIES, INC. having an office at 0000 X. Xxxxxxxxxx Xx., Xxxxx
000, Xxxxx, XX 00000, and AURIOS, INC., an Arizona corporation having an office
at 0000 X. Xxxxxx Xxxxxxxx Xx., Xxxxxxxx Xxxxxx, XX 00000;
WHEREAS,
ADVANCED VIBRATION TECHNOLOGIES, INC. owns and has rights in various issued
patents, pending applications for patents, and trademarks, in various countries
of the world as to which AURIOS desires to acquire licenses as hereinafter
provided; and
WHEREAS
AURIOS is in the business of manufacturing and selling vibration isolation
devices into the audio-video market.
In
consideration of the mutual covenants and representations in this document, the
parties agree as follows:
1.0 DEFINITIONS
1.1 "Subsidiary(ies)"
means any corporation, company, affiliate, or other entity, whose outstanding
shares or securities representing the right to vote for the election of
directors or other managing authority are, now or hereafter, owned or
controlled, directly or indirectly by a Party hereto, but such corporation,
company, affiliate, or other entity shall be deemed to be a Subsidiary only so
long as such ownership or control exists.
1.2 "Licensed
Patents" means (i) patents or patent applications identified in Appendix A,
including all continuations, divisionals, continuations-in-part, reissues,
extensions, renewals, reexaminations, and substitutes thereof, (ii) foreign
patents or patent applications claiming priority to or constituting a
counterpart of such patents or patent applications in part (i), and (iii)
patents issuing from applications in part (i) or in any country.
1.3 "Licensed
Marks" means the trademarks, service marks, and trade names identified in
Appendix B.
1.4 "Licensed
Intellectual Property" means Licensed Patents and Licensed Marks.
1.5 "Licensed
Materials" means any advertising, promotional materials, or reference materials
using the Licensed Marks.
1.6 "Licensed
Products" means the products identified in Appendix C.
1.7 "New
Products" means any new product to be manufactured and sold by AURIOS under the
Licensed Intellectual Property, which may be added to Appendix C as a Licensed
Product by mutual agreement of the Parties.
1.8 Net
Sales" means gross revenue generated by AURIOS in any sales of Licensed Products
as determined under an accrual method by generally accepted accounting
principles, less any taxes, returns, discounts, uncollected receivables,
write-offs, adjustments, chargebacks, recalls, rebates, allowances, claims,
freight, insurance, and excise, import, and export duties, when the same are
actually paid or allowed.
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1.9 "Confidential
Information" means any confidential, proprietary information including
non-public designs, specifications, drawings, processes, practices,
communications, manufacturing, economic, financial, sales, marketing,
management, quality control and other proprietary data, materials, know-how, or
information contained in presentations, emails, letters, memos, discussions,
notes, analysis, documents, studies, reports, budgets, forecasts, and other
mediums of disclosure, which may have been disclosed by either Party to the
other Party during the term of the Agreement in verbal, written, graphic,
computer or machine recognizable, and/or tangible form, and which is clearly
designated, labeled or marked as confidential proprietary, e.g., "CONFIDENTIAL
PROPRIETARY," or its equivalent, or should be known by Recipient to be
confidential in nature.
1.10 "Territory"
means any and all countries of the world.
1.11 "Effective
Date" means the date of the last signature hereto.
1.12 "LICENSOR"
means ADVANCED VIBRATION TECHNOLOGIES INC. and its Subsidiaries.
1.13 "AURIOS"
means AURIOS, Inc. and its Subsidiaries.
1.14 "Party(ies)"
means LICENSOR and/or AURIOS, as the case may be.
2.0 PATENT
LICENSE GRANTS
2.1 Subject
to and in consideration of the terms and conditions of this Agreement, LICENSOR
hereby grants and agrees to grant to AURIOS, and AURIOS accepts, for the term of
this Agreement, a non-exclusive, royalty-bearing right and license under the
Licensed Patents, without the right to sublicense, within the Territory,
to:
(a) make,
have made, use, sell, offer for sale, import and otherwise dispose of the
Licensed Products; and
(b) practice
any process and method or use any manufacturing apparatus within the Licensed
Products.
2.2 From
time to time, the Parties may develop or identifiy New Products which are
covered by the Licensed Intellectual Property. The New Products may be added to
the Licensed Products in Appendix C and subject to the royalties of Section 3 by
mutual agreement of the Parties.
3.0 ACCRUALS,
ROYALTIES PAYMENTS, AUDITING, REPORTING
3.1 In
consideration for the license grant and the other terms and conditions set forth
in this Agreement, and for the period beginning on the Effective Date and
continuing for the term of this Agreement, AURIOS shall pay LICENSOR a royalty
of five percent (5.0%) of world-wide Net Sales of the Licensed Products.
Royalties shall be earned and accrue upon recognition of such revenue by AURIOS.
Royalties shall not accrue for intracompany transactions within
AURIOS.
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3.2 On
April 15th, July 15th, October 15th, and January 15th of each calendar year, and
for the three-month period ending on the last day of the immediately preceding
month, AURIOS will provide LICENSOR a report showing the royalties due under
section 3.1 for the applicable period and will submit the applicable royalty
payments in United States dollars (USD) with the report
3.3 AURIOS
shall maintain complete and accurate records of sales of Licensed Products in
accordance with generally accepted accounting principles. AURIOS shall not be
required to retain records for more than three (3) years after close of any
calendar quarter-year. LICENSOR may, at any time during the term of this
Agreement, initiate an independent audit of such records upon twenty (20) prior
business days written notice to AURIOS, in order to confirm the accuracy of
AURIOS' records and conformance with the terms and conditions of this Agreement;
provided, that no more than one (1) such audit is conducted during any twelve
(12) month period. The selection of an independent certified auditor shall be
mutually agreeable to both Parties. Any such audit shall be performed at
LICENSOR's expense during AURIOS' normal business hours. If an audit reveals
that AURIOS has underpaid royalty fees and/or charges to LICENSOR, in excess of
five percent (5%) pursuant to any report under section 4.4, then AURIOS will pay
LICENSOR's reasonable costs of conducting the audit, in addition to any
underpaid amounts, together with interest thereon in USD at a rate of one
percent (1.0%) per month compounded monthly on any overdue payment commencing on
the date such payment was due.
4.0 TERM
AND TERMINATION
4.1 The
term of this Agreement shall become effective upon the Effective Date and shall
automatically renew every year unless terminated in accordance with this Section
5 or in the termination provisions provided elsewhere in this
Agreement.
4.2 Either
Party ("Terminating Party") hereto shall have the right to terminate this
Agreement upon giving written notice of termination to the other Party upon or
after:
4.2.1 failure
of the other Party to perform pursuant to the terms and conditions of this
Agreement, including making royalty payments, such termination becoming
effective sixty (60) days after the written notice, unless the other Party cures
all performance deficienc(ies) before the end of the 60-day notice period or
later date if mutually agreed in writing by both Parties; or
4.2.2 written
statement or representation by the other Party of its inability or unwillingness
to perform pursuant to the terms and conditions of this Agreement, such
termination becoming effective immediately upon the written notice, although the
Terminating Party retains all rights and remedies available in law and equity
for the other Party's non-performance; or
4.2.3 a
direct or indirect taking over, merger, acquisition, or assumption or transfer
of ownership or control of the other Party by or to any third party who is a
competitor of the Terminating Party, or who is otherwise reasonably viewed by
the Terminating Party to have interests adverse to the Terminating Party, such
termination becoming effective immediately upon the written notice.
4.3 Either
Party shall have the right to terminate this Agreement forthwith by giving
written notice of termination to the other Party at any time, upon or
after:
4.3.1 the
filing by such other Party of a petition in bankruptcy or insolvency or
adjudication that such other Party is bankrupt or insolvent; or
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4.3.2 the
filing by such other Party of any legal action or document seeking
reorganization, readjustment, or arrangement of its debt or business under any
law relating to bankruptcy or insolvency; or
4.3.3 the
appointment of a receiver or trustee for substantial and relevant property or
assets of such other Party and, if voluntary, such proceedings have not been
concluded without prejudice within a period of one hundred and eighty (180)
days; or
4.3.4 the
making by such other Party of a composition with or assignment for the benefit
of creditors; or
4.3.5 the
institution of any proceedings for the liquidation or winding up of such other
Party's business or for the termination of its corporate charter.
4.4 In
the event of termination of this Agreement, the license grants of Sections 2 and
3 terminate and all rights associated with the Licensed Intellectual Property
revert back to LICENSOR.
4.5 The
provisions of sections 4.7, 5, and 7 shall survive any termination or expiration
of this Agreement. All rights and obligations relating to the payment of any
monies, the Parties' duty to preserve the confidential information, the
provisions restricting the liability of the parties shall survive any expiration
or termination of this Agreement.
4.6 In
any termination of this Agreement under this section 4, both Parties retain all
rights and remedies available in law and equity for such
termination.
4.7 Upon
termination of this Agreement pursuant to this Section 4, AURIOS shall be
responsible for royalties accrued and due to LICENSOR for Licensed Products sold
prior to such termination. AURIOS shall make payment for accrued royalties at
the end of the accounting period in effect at the time of
termination.
4.8 AURIOS
is under no obligation to sell the Licensed Products and may cancel this License
at any time. AURIOS shall be responsible for royalties due for sales up through
the date it cancels this License.
5.0 CONFIDENTIALITY
5.1 The
Parties acknowledge that confidential proprietary information may be disclosed
by LICENSOR ("Discloser") to AURIOS ("Recipient") and/or disclosed by AURIOS
("Discloser") to LICENSOR ("Recipient") as the case may be. Confidential
Information which is disclosed verbally may be identified by Discloser to
Recipient as confidential at time of disclosure and may be confirmed in writing
by the Discloser within thirty (30) days after such disclosure by submitting a
letter containing substantially similar information or a summary of the
Confidential Information disclosed to Recipient.
5.2 The
Parties hereby agree that Recipient shall (i) not disclose, publish, distribute,
transfer, loan, provide, or otherwise make available the Confidential
Information to any third party without written consent of Discloser, (ii)
restrict dissemination of Confidential Information to only those directors,
officers, employees, representatives, advisors, contractors, consultants, or
agents who must be directly involved with Confidential Information and who are
bound by a duty of confidentiality applicable to the Confidential Information,
(iii) use the same degree of care as for its own information of like importance,
but at least use reasonable care, in safeguarding against disclosure of
Confidential Information of the other Party, and (iv) use the Confidential
Information solely for exercising its rights or performing its obligations under
this Agreement.
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5.3 Recipient's
obligations regarding Confidential Information received under this Agreement
expire three (3) years from the date of disclosure.
5.4 This
Agreement imposes no obligation upon Recipient with respect to Confidential
Information disclosed under this Agreement which (i) is now available or becomes
available to the public without breach of this Agreement, (ii) is explicitly
approved for release by written authorization of Discloser, (iii) is lawfully
obtained from a third party without a duty of confidentiality, (iv) is disclosed
to a third party by Discloser without a duty of confidentiality, (v) is known to
Recipient prior to such disclosure, or (vi) is at any time developed by
Recipient independently of any such disclosure(s) from Discloser.
5.5 Disclosure
of Confidential Information shall not be precluded if such disclosure is (i) in
response to a valid order of a court of competent jurisdiction, (ii) required by
SEC disclosure rules, or (ii) otherwise required by law through no act of the
Recipient, provided, however, in the event of a court order that the Recipient
shall first notify the Discloser of such court order in a timely manner to allow
the Discloser to obtain a protective order requiring that the information and/or
documents so disclosed be used only for the purpose for which the order was
issued.
5.6 Recipient
agrees that all Confidential Information received is and shall remain the
property of Discloser and that such shall not be copied or reproduced without
the express permission of the Discloser, except for such copies as may be
absolutely necessary in order to perform tasks for the benefit of the Discloser.
Upon written request, Recipient shall either return all the Confidential
Information to Discloser along with all copies and/or derivatives made,
including that on computer databases and copies of portions of the Confidential
Information, or destroy all Confidential Information and certify by written
memorandum that all such Confidential Information has been destroyed, except
that Recipient may retain archival copies of the Confidential Information, which
are to be used only in case of a dispute concerning this Agreement.
6.0 INFRINGEMENT
6.1 In
the event a Party becomes aware of any actual, alleged or potential infringement
of the Licensed Intellectual Property, such Party shall promptly inform the
other Party of the nature and other relevant information concerning such
infringement and identify the infringer. As owner of the Licensed Intellectual
Property, following such notice, LICENSOR shall have the right to enforce and
defend the Licensed Intellectual Property against such infringer. If LICENSOR
elects to enforce and defend the Licensed Patents, then LICENSOR shall bear all
attorney fees, costs, and expenses, and control the litigation and settlement.
AURIOS agrees to fully cooperate with LICENSOR, without cost and at LICENSOR's
expense, in any pending action or litigation related to the Licensed
Intellectual Property, including joining as a party thereto if so requested by
LICENSOR. LICENSOR shall receive all court awards, damages, and settlements from
the litigation.
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7.0 ALTERNATE
DISPUTE RESOLUTION
7.1 The
Parties agree that they shall attempt to settle any claim or controversy arising
out of this Agreement through consultation and negotiation in the spirit of
mutual cooperation.
7.2 With
respect to any dispute arising out of this Agreement for which the Parties
cannot reach amicable settlement on their own (Dispute), the Parties agree to
submit the Dispute for binding arbitration. It is expressly intended by the
Parties that the Dispute shall be submitted to arbitration and not to
litigation. The arbitration shall be noticed by written demand for arbitration
to the other Party, with a copy to the American Arbitration Association (AAA) in
Phoenix, Arizona. The arbitration shall be administered by the AAA in accordance
with the Federal Arbitration Act, 9 U.S.C. (FAA) and pursuant to AAA's rules for
arbitration, provided that such rules do not conflict with the FAA or the
expressed intentions of Parties in this Agreement. In the case of any such
conflict, the FAA and/or the expressed intentions of the Parties shall prevail
over AAA's rules.
7.3 Each
Party waives, to the fullest extent permitted by applicable law, any right it
has to a trial, including a trial by jury, in respect to any
Dispute.
7.4 The
Parties agree that discovery for the arbitration shall be permitted to the full
extent provided by the Federal Rules of Civil Procedure.
7.5 There
shall be one (1) arbitrator selected by mutual agreement of the Parties. If the
Parties cannot agree as to the arbitrator, then the arbitrator shall be selected
by AAA.
7.6 The
arbitration shall be conducted in Phoenix, Arizona.
7.7 The
prevailing party in the arbitration shall be entitled to recover its costs,
including the arbitrator's fees, and reasonable attorneys' fees, to be fixed by
AAA in such proceeding.
7.8 The
arbitrator shall issue a statement as to his/her decision, but shall not issue
any written opinion in connection with infringement, validity or enforceability
of any patent. In no circumstances shall the arbitrator have the power or
authority to award equitable, provisional or injunctive relief. The Parties
agree that the decision of the arbitrator will be final and that no appeal can
be taken therefrom to any forum or jurisdiction.
8.0 MISCELLANEOUS
PROVISIONS
8.1 The
Parties hereto may divulge the existence of this Agreement, but shall otherwise
keep the terms of this Agreement confidential and shall not now or hereafter
divulge any part thereof to any third party except:
8.1.1 with
the prior written consent of the other Party; or
8.1.2 to
any governmental body having jurisdiction to request and to read the same;
or
8.1.3 as
otherwise may be required by law or legal processes; or
8.1.4 to
legal counsel or consultants in confidence representing either
Party.
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8.2 This
Agreement and any rights or licenses granted herein are personal to each party
and shall be binding upon and inure to the benefit of the parties hereto and
their respective successors and assigns. The rights and privileges provided for
in this Agreement are assignable or transferable by either Party only with the
prior written consent of the other Party, such consent not to be unreasonably
withheld, and with the authorization or approval of any governmental authority
as then may be required. The acquiring party or assignee shall assume all rights
and obligations of this Agreement. If either Party should attempt or execute an
assignment without the prior written consent of the other Party, then the other
Party shall have the right to void such assignment and/or immediately terminate
this Agreement.
8.3 The
Parties agree that Appendices A-C as attached hereto shall be incorporated in
this Agreement.
8.4 This
Agreement is intended solely as a license agreement. The Parties expressly agree
that this Agreement and the relationships established do not constitute a
partnership, joint venture, agency, or contract of employment between them and
that neither Party's employees shall be considered employees or contractors of
the other Party. Neither Party is authorized to act as an agent for or to
represent the other Party in any way.
8.5 The
failure of either Party to exercise any right hereunder or any express or
implied waiver by either Party of a breach of any term, condition or obligation
of this Agreement by the other Party shall not be deemed to be a waiver of any
subsequent breach or default of that term, condition or obligation or of any
other term, condition or obligation of this Agreement of the same or of a
different nature. The failure of either Party to insist upon timely or adequate
performance by the other Party in any instance shall not affect that Party's
right to insist upon timely or adequate performance in the future.
8.6 This
Agreement shall be construed and interpreted in accordance with and governed by
the laws of the State of Arizona, without regard to its conflict of laws rules,
except that questions affecting the construction or enforcement of any
intellectual property rights shall be determined by the laws under which such
rights are granted, registered, or protected.
8.7 If
any of the terms and provisions of this Agreement are determined to be
indefinite, invalid or unenforceable by any court of competent jurisdiction,
that provision of the Agreement shall be enforced to the maximum extent
permissible so as to effect the intent of the Parties, and the remainder of this
Agreement shall continue in full force and effect. If there is any conflict
between any provision of this Agreement and any statute, law, regulation or
judicial precedent, the latter shall prevail, but the provisions of this
Agreement thus affected shall be curtailed and limited only to the extent
necessary to bring them within the requirements of the law.
8.8 This
Agreement, together with any exhibits, attachments, and appendices, sets forth
the entire Agreement and understanding between the Parties as to the subject
matter hereof and merges and supersedes all prior discussions between them, and
neither of the Parties shall be bound by any conditions, definitions,
warranties, understandings or representations with respect to such subject
matter other than as expressly provided herein or as duly set forth on or
subsequent to the date hereof in writing and signed by a proper and duly
authorized officer or representative of the Party to be bound thereby. Both
Parties agree that it has not entered into this Agreement based on any
representations other than those contained herein. This Agreement may only be
amended by a written agreement signed by both Parties.
8.9 All
rights and licenses granted hereunder pursuant to this Agreement by one party to
the other are, and shall otherwise be deemed to be, for purposes of Section
365(n) of the United States Bankruptcy Code (the "Bankruptcy Code"), licenses or
rights to "intellectual property" as defined under Section 101(52) of the
Bankruptcy Code.
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8.10 The
Parties each agree that it will not in any form export, reexport, resell, ship
or divert or cause to be exported, reexported, resold, shipped or diverted,
directly or indirectly, any product or technical data or software furnished
hereunder, or the direct product of such technical data or software, to any
country for which the United States Government or any agency thereof at the time
of export or reexport requires an export license or other governmental approval
without first obtaining such license or approval.
8.11 All
notices and other communications required or permitted to be given under this
Agreement shall be sent to the following addresses:
ADVANCED
VIBRATION TECHNOLOGIES, INC.
0000
X. Xxxxxxxxxx Xx., Xxxxx 000
Xxxxx,
XX 00000
Attn:
Xxxx Xxxxxxxx
Telephone:
(000) 000-0000
Email:
xxxx_xxxxxxxx00@xxx.xxx
AURIOS,
INC.
0000
X. Xxxxxx Xxx Xx
Xxxxxxxx
Xxxxxx, XX 00000
Attn:
Xxxx Xxxxxxx
Telephone:
(000) 000-0000
Email:
xxxxxxxx@xxxxx.xxx
8.12 The
Parties acknowledge that they have read this Agreement and understand it, and
that they agree to be bound by all of its terms and conditions. The Parties are
each knowledgeable, cognizant, and represented by independent counsel. This
Agreement has been negotiated by the Parties and their respective counsel and
shall be interpreted fairly in accordance with its terms and without any strict
construction in favor of or against either Party by nature of their
contribution.
8.13 AURIOS
agrees to xxxx the Licensed Products with the patent numbers of the applicable
Licensed Patents in the manner required by 35 U.S.C. §287.
8.14 AURIOS
agrees not to directly, indirectly, or in concert with others challenge the
validity or enforceability of the Licensed Patents or interfere with the
prosecution of any patent application included in the Licensed
Patents.
8.15 IN
NO EVENT SHALL EITHER PARTY BE LIABLE FOR ANY CONSEQUENTIAL, INDIRECT,
INCIDENTAL, EXEMPLARY, PUNITIVE OR SPECIAL DAMAGES ARISING
FROM
INFRINGEMENT OR ALLEGED INFRINGEMENT OF PATENTS, MASK WORK RIGHTS, TRADEMARKS,
COPYRIGHTS, OR OTHER INTELLECTUAL PROPERTY RIGHTS IN CONNECTION WITH THIS
AGREEMENT, EVEN IF ADVISED OF THE POSSIBLY OF SUCH DAMAGES.
-8-
IN
WITNESS WHEREOF, the Parties have had this Agreement signed by their duly
authorized representatives,
|
ADVANCED
VIBRATION TECHNOLOGIES, INC.
|
|
| /s/ Xxxxxxx X. Xxxxxxxx | |
|
Signature:
|
|
|
By:
Xxxxxxx X. Xxxxxxxx, President
|
|
|
Date:
|
February 25, 2010 |
|
AURIOS,
INC.
|
|
| /s/ Xxxx Xxxxxxx | |
|
Signature:
|
|
|
By:
Xxxx Xxxxxxx, President
|
|
|
Date:
|
February 25, 0000 |
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Xxxxxxxx
A – Licensed Patents
|
United
States Patent
|
6520283
|
Mechanical
Signal Filter
|
||
|
Taiwan
Patent
|
I235798
|
Mechanical
Signal Filter
|
||
|
Japan
Patent Application
|
2002-507194
|
Mechanical
Signal Filter
|
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Xxxxxxxx
X – Licensed Trademarks
None
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Appendix
C – Licensed Products
1. AURIOS
Pro Max Media Isolation Bearing
2. AURIOS
Classic Media Isolation Bearing
3. AURIOS
Isotone Media Isolation Bearings
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