Exhibit 10(c)
LICENSE AGREEMENT
This LICENSE AGREEMENT is made this 4th day of December, 1998, by and
between ROSEMOUNT AEROSPACE INC., a Delaware corporation ("Buyer") and
ROBOTIC VISION SYSTEMS, INC., a Delaware corporation ("Seller").
RECITALS
A. Reference is made to the Asset Purchase Agreement dated as of November 16,
1998 (the "Purchase Agreement") between Buyer and Seller, in which Seller
agrees to sell and transfer to Buyer, and Buyer agrees to purchase and accept
from Seller on the Closing Date, the Intellectual Property (as defined in the
Purchase Agreement).
B. Seller desires to use the Intellectual Property in the Licensed Field of
Use (as hereinafter defined) after the Closing Date.
C. Buyer is willing to grant to Seller a license to use the Intellectual
Property in the Licensed Field of Use after the Closing Date, subject to the
terms and conditions of this License Agreement.
NOW, THEREFORE, in consideration of the mutual covenants, agreements and
representations herein contained, Buyer and Seller agree as follows:
ARTICLE I
DEFINITIONS
1.1 The following terms, as defined herein, shall have the meanings set
forth below:
a) "Licensed Field of Use" means the manufacture, use, sale and service of
products, components and systems that utilize the Intellectual Property. The
Licensed Field of Use shall be limited to products, components and systems
for:
(u) object identification, measurement, inspection and gauging;
(v) package identification;
(w) material handling;
(x) robotics control;
(y) semiconductor handling and assembly; and
(z) other machine vision systems unrelated to detection of ice or
frozen contaminants.
b) Capitalized terms used but not defined herein shall have the meanings
set forth in the Purchase Agreement.
ARTICLE II
LICENSE GRANT
2.1 Buyer grants to Seller a non-exclusive, worldwide, royalty-free license
to use the Intellectual Property in the Licensed Field of Use after the
Closing Date, and to perform the Transition Services and Supply Agreement
(the "Transition Agreement").
2.2 The licenses granted in Article 2.1 are personal and nontransferable,
and may not be assigned or sublicensed by Seller.
2.3 During the three (3) year period following the Closing Date, Buyer
shall not grant any licenses to third parties to use the Intellectual
Property in the Licensed Field of Use, provided that during and subsequent to
said period, Buyer reserves the right to use the Intellectual Property in the
Licensed Field of Use for its own use and benefit.
2.4 No right or license of any kind is granted to Seller to use the
Intellectual Property outside of the Licensed Field of Use, and Seller agrees
not to use the Intellectual Property in connection with any business activity
other than the Licensed Field of Use and the Transition Agreement; provided
however, that Seller shall not be in breach of this License Agreement if it
sells a product specifically targeted for use in the Licensed Field of Use
and the purchaser of such product uses the same in an application outside
the Licensed Field of Use.
ARTICLE III
FILINGS, MAINTENANCE AND ENFORCEMENT
3.1 Buyer shall have the sole right to make any and all appropriate
applications or filings in order to register, protect, or otherwise maintain
the Intellectual Property, and shall be the sole owner thereof; Seller agrees
to provide reasonable assistance to Buyer at the written request of Buyer,
and at Buyer's sole expense in support of the same. Buyer shall be under no
obligation to Seller or any other party to take any action to register,
protect or maintain the Intellectual Property.
3.2 Buyer shall have the sole right, at Buyer's sole expense and
discretion, to bring any legal action against persons infringing, using
without Buyer's authorization, or otherwise violating the Intellectual
Property. Seller shall promptly advise Buyer in writing of any actual or
suspected infringement, use without authorization, or violation of the
Intellectual Property (including but not limited to such activity in the
License Field of Use) and shall cooperate with Buyer in any and all actions
relating thereto.
3.3 The provisions of this Article III have no effect on Seller's
obligations to take actions with respect to its employees is set forth in
Article 3.9 of the Purchase Agreement, or to continue to prosecute its claims
and defend against cross claims and counterclaims as set forth in Article
3.13 and Exhibit 3.13 of the Purchase Agreement.
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ARTICLE IV
CONFIDENTIAL INFORMATION
4.1 With respect to the Intellectual Property licensed to Seller under
this Agreement, Seller agrees to take all reasonable steps, in accordance
with Seller's customary procedures for protecting its own confidential and
proprietary information, to safeguard such Intellectual Property from
unauthorized use and disclosure. Further, Seller shall hold, and shall cause
its officers, directors, employees and agents to hold, in confidence, the
Intellectual Property, except to the extent such Intellectual Property is
shown by Seller: (a) to be in the public domain through no fault of the
Seller; or (b) to have been lawfully acquired from a third party on an
unrestricted basis; or (c) to be subject to disclosure in response to
judicial proceedings, in which case Seller shall provide Buyer advance
written notice thereof and assist Buyer in opposing such disclosure; provided
that the Seller may disclose the Intellectual Property to a third party so
long as such third party agrees in writing to hold such Intellectual Property
in confidence and not use such Intellectual Property for any purpose other
than the Licensed Field of Use; provided further that if Seller or such third
party breaches the confidentiality obligations of this Article IV, then
Seller shall so inform the Buyer, and Seller shall take all reasonable steps
at the request of the Buyer to remedy such breach.
4.2 The provisions of Article IV shall survive any termination of this
Agreement.
ARTICLE V
WARRANTIES AND LIMITATION OF LIABILITY
5.1 ALL WARRANTIES, EXPRESSED OR IMPLIED, ARE HEREBY DISCLAIMED BY BUYER,
INCLUDING ANY WARRANTY OF MERCHANTIBILITY OR FITNESS FOR A PARTICULAR PURPOSE.
5.2 BUYER SHALL NOT BE LIABLE TO SELLER FOR ANY LOSS, EXPENSE, OR DAMAGE
ARISING OUT OF OR RESULTING FROM SELLER'S USE OF THE INTELLECTUAL PROPERTY.
IN NO EVENT SHALL BUYER BE LIABLE FOR ANY SPECIAL, INDIRECT, INCIDENTAL, OR
CONSEQUENTIAL LOSS OR DAMAGES.
5.3 Buyer makes no warranties as to the validity or enforceability of the
Intellectual Property or that Seller's use of the Intellectual Property will
be free from infringement of any intellectual property rights of a third
party. Buyer shall not, under any circumstances, indemnify or otherwise be
liable to Seller for any damages or claims arising out of or in connection
with the Intellectual Property.
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ARTICLE VI
TERM AND TERMINATION
6.1 Except as set forth in Article 6.2, this License Agreement shall
continue in effect until each type of intellectual property licensed
hereunder expires, irreversibly lapses, or is otherwise available for use by
third parties on an unrestricted basis.
6.2 Any unauthorized use or disclosure of the Intellectual Property by
Seller (including but not limited to any use of the Intellectual Property in
fields outside of the Licensed Field of Use (except as set forth in
Article 2.4) and any failure to abide by the Confidentiality provisions of
Article IV) shall be a material breach of this Agreement. Buyer shall give
Seller written notice of any such material breach; if such breach is not
cured within fifteen (15) business days of receipt of such notice, then Buyer
may immediately terminate this License Agreement. On such termination, Seller
shall cease all uses of the Intellectual Property.
6.3 Buyer shall be entitled to immediate injunctive relief if Seller
commits any material breach of this Agreement.
6.4 Termination of this Agreement shall be without prejudice to Buyer's
right to recover damages resulting from such breach.
ARTICLE VII
MISCELLANEOUS
7.1 NOTICES. All notices required or permitted hereunder shall be in
writing and shall be deemed to be properly given when received either by
personal delivery, next day delivery by a national courier or by delivery
certified U.S. mail, return receipt requested, properly addressed to the
party entitled to receive such notice at the address stated below:
To Buyer: Rosemount Aerospace Inc.
00000 Xxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxxx 00000-00000
Attention: Vice President -- Commercial Transport
With a Copy to: BFGoodrich Aerospace
000 X. Xxxxxxxxx-Xxxxxxxxx Xxxx
Xxxxx, XX 00000
Attention: Law Department
To Seller: Robotic Vision Systems, Inc.
0 Xxxxxxx Xxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Attention: Chief Financial Officer
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With a Copy to: Xxxxxxxxx Xxxxxx Xxxxxxxx Xxxxxx & Xxxxxx
000 Xxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxx Xxxxxxx, Esq.
7.2 ENTIRE AGREEMENT. This Agreement shall constitute the entire
agreement between the parties with respect to the subject matter hereof and
shall supersede all previous negotiations, commitments and writings.
7.3 WAIVER, DISCHARGE, ETC. This Agreement may not be released,
discharged or modified except by an instrument in writing signed by a duly
authorized officer on behalf of each of the parties hereto. The failure of
Buyer to enforce any provision of this Agreement shall not be a waiver of
such provision or subsequent breach of the same or any other obligation
hereunder.
7.4 GOVERNING LAW. This Agreement shall be construed and the rights of
the parties hereunder shall be governed by the laws of the State of Minnesota
and without regard to conflicts of laws. Any unresolved disputes shall be
submitted to the Federal Courts of Minnesota.
7.5 COUNTERPARTS. This Agreement may be executed in one or more
counterparts, each of which shall be deemed to be an original, but all of
which shall constitute one Agreement.
7.6 SEVERABILITY. If any provision of this Agreement is held to be
invalid or unenforceable, for any reason, it shall not invalidate or render
unenforceable or otherwise affect any other provision hereof, and such
invalid or unenforceable provision shall be construed by limiting it so as to
be valid and enforceable to the maximum extent compatible with, and possible
under, applicable law.
7.7 SUCCESSORS AND ASSIGNS. This Agreement will be binding upon and
inure to the benefit of the parties hereto and their permitted successors and
assigns; provided, however, that the Buyer may assign its rights without the
consent of any of the parties hereto to any affiliate of the Buyer, but no
such assignment will relieve Buyer of its obligations under this Agreement.
IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to
be executed as of the date first above written.
ROSEMOUNT AEROSPACE INC. ROBOTIC VISION SYSTEMS, INC.
By: /s/ Xxxx Xxxxxx By: /s/ Xxx X. Xxxxx
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Name: Xxxx Xxxxxx Name: Xxx X. Xxxxx
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Title: Chairman Title: Chairman, President and
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Chief Executive Officer
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