EXHIBIT 10.56
PATENT LICENSE AGREEMENT
THIS PATENT LICENSE AGREEMENT ("Agreement") is made this ____day of
_______________, 1998 (the "Effective Date") by and between 3D Systems, Inc.,
a corporation organized and existing under the laws of the State of
California, U.S.A., and having an office at 00000 Xxxxxx Xxxx, Xxxxxxxx,
Xxxxxxxxxx, X.X.X. ("3D") on the one hand, and NTT DATA CMET INC., a
corporation organized and existing under the laws of Japan, and having an
office at 00-0 Xxxxxx 0-Xxxxx, Xxxx-xx, Xxxxx 000-0000, Xxxxx ("CMET") and
NTT DATA CORPORATION, a corporation organized and existing under the laws of
Japan, and having an office at Toyosu Center Building, 3-3 Xxxxxx 0-Xxxxx,
Xxxx-xx, Xxxxx 000-0000, Xxxxx ("NTT DATA") on the other hand (3D and CMET
and NTT DATA hereafter occasionally referred to as "party" or "parties").
This Agreement is made with reference to the following:
A. The parties each own certain patent rights relating to
Stereolithography.
B. The parties have jointly concluded that their respective needs and
interests will be served by a mutual exchange of licenses of the patent
rights.
THEREFORE, 3D on the one hand, and CMET and NTT DATA on the other hand,
agree as follows:
1 DEFINITIONS
1.1 The terms "Agreement" and "Effective Date" shall have the meanings
ascribed to them above.
1.2 "Affiliate" with respect to a party means any corporate or other
legal entity in which a party directly or indirectly owns or controls at
least eighty percent (80%) of participating shares entitled to vote for the
election of directors, or eighty percent (80%) of the equity interest having
the power to direct management policies.
1.3 "Cover" or "covered" with respect to an apparatus or method in
question, shall mean that: (i) the act of making, using, offering to sell or
otherwise dispose of, selling or otherwise disposing of, or importing the
apparatus or method, which act if done without authority of the patent owner,
would infringe, either literally or under the doctrine of equivalents, at
least one claim of an issued and unexpired Patent, under the laws of the
country in which such act occurs; or (ii) the act of inducing infringement,
either literally or under the doctrine of equivalents, if such act, which act
if done without the authority of the patent owner, is contrary to the laws of
the country in which an issued and enforceable Patent is in existence at the
time and in the country that such act occurs. However, any patent claims
that have been invalidated by a competent authority
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in a decision from which an appeal has not been taken shall not cover an
apparatus or method in question.
1.4 "Patents" shall mean all patents owned or controlled by the parties
that contain a claim or claims applicable to Stereolithography.
1.5 "Licensed Patents" of a granting party shall mean and include all
issued Patents and pending patent applications containing one or more
published claim(s) applicable to Stereolithography having an effective filing
date earlier than the Effective Date, including all issued Patents and
pending patent applications containing one or more published claim(s)
applicable to Stereolithography that were or will be filed subsequent to the
Effective Date but are entitled to claim the benefit of the effective filing
date prior to the Effective Date.
1.6 "Licensed Products" shall mean any and all Stereolithography
equipment and software dedicated thereto of a party which are covered by one
or more Licensed Patents of the other party.
1.7 [Confidential Treatment Requested].
1.8 "Stereolithography" shall mean and include equipment, systems,
supplies and software utilized in the fabrication of three-dimensional
objects, layer-by-layer from photo-curable liquid materials.
1.9 [Confidential Treatment Requested].
1.10 "3D Licensed Territory" shall mean all countries of the world.
2 GRANT OF LICENSE; RELEASE
2.1 3D hereby grants a personal, non-transferable, and non-exclusive
right and license under 3D's Licensed Patents: (i) to CMET and its
Affiliates, to make, have made, use, sell, lease, or otherwise dispose of,
and import Licensed Products and spare parts and replacement parts for the
Licensed Product in the CMET/NTT DATA Licensed Territory; and (ii) to NTT
DATA and its Affiliates, to make, have made, use, sell, lease or otherwise
dispose of, and import Licensed Products and spare parts and replacement
parts for the Licensed Product in the CMET/NTT DATA Licensed Territory.
2.2 The right and license granted to CMET, NTT DATA and their
Affiliates in Section 2.1 shall not include the right, directly or
indirectly, by implication, estoppel or otherwise, to sublicense another.
The sale, lease or other disposition by CMET or NTT DATA of a Licensed
Product in the CMET/NTT DATA Licensed Territory shall not convey, by
implication, estoppel or otherwise, to the party to which the Licensed
Product was sold, leased, or otherwise transferred, any license or right
under the Licensed Patents, except that any such party (i) may use, sell,
lease or otherwise dispose of the acquired Licensed
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Product in the CMET/NTT DATA Licensed Territory, (ii) may only export the
acquired Licensed Product to a country outside of the CMET/NTT DATA Licensed
Territory for use in a branch office of the same party or a subsidiary
thereof for the personal business use of the party and/or subsidiary thereof,
provided that such use shall not include the right to sell or otherwise
provide to any third party any parts or models made on such acquired Licensed
Product, and (iii) may use, sell, or otherwise dispose of products throughout
the world that are produced or designed using the acquired Licensed Product.
2.3 CMET and NTT DATA hereby grant a personal, non-transferable,
paid-up and non-exclusive right and license under both CMET's and NTT DATA's
Licensed Patents to 3D and its Affiliates to make, have made, use, sell,
lease, or otherwise dispose of, and import Licensed Products and spare parts
and replacement parts for the Licensed Product throughout the world,
provided, however, that the right and license with respect to any of the CMET
and NTT DATA's Licensed Patents that are co-owned with a third party are
contingent upon each third party's consent, which third parties are not
controlled by CMET or NTT DATA. CMET and NTT DATA shall make all reasonable
efforts to timely obtain the consent of each such third party.
2.4 The right and license granted to 3D and its Affiliates in Section
2.3 shall not include the right, directly or indirectly, by implication,
estoppel or otherwise, to sublicense another. The sale, lease or other
disposition by 3D of a Licensed Product in the 3D Licensed Territory shall
not convey, by implication, estoppel or otherwise, to the party to which the
Licensed Product was sold, leased, or otherwise transferred, any license or
right under the Licensed Patents, except that any such party may use, sell,
lease or otherwise dispose of the acquired Licensed Product, and may use,
sell, lease or otherwise dispose of products throughout the world that are
produced on or designed by use of the acquired Licensed Product.
2.5 No right or license is granted herein, to CMET, NTT DATA, 3D, or
any third party, by implication, estoppel or otherwise under any patent,
patent application or other patent right other than the Licensed Patents.
2.6 No right or license is granted, by implication, estoppel or
otherwise, other than those rights and licenses expressly granted in this
Agreement.
2.7 3D hereby releases CMET and NTT DATA and CMET and NTT DATA both
release 3D, and all purchasers and users of Licensed Products acquired,
either directly or indirectly, from the released party from any and all
claims, demands, and rights of action which the releasing party may have on
account of any infringement of any Licensed Patent by the manufacture, use,
sale or other disposition or importation of Licensed Products which, prior to
the effective date of this Agreement, were manufactured, used, sold or
otherwise disposed of or imported by the released party;
[Confidential Treatment Requested].
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3 [Confidential Treatment Requested]
3.1 [Confidential Treatment Requested]
3.1.1 [Confidential Treatment Requested]
3.1.2 [Confidential Treatment Requested]
3.1.2.(a) [Confidential Treatment Requested]
3.1.2.(b) [Confidential Treatment Requested]
3.1.2.(c) [Confidential Treatment Requested]
3.2 [Confidential Treatment Requested]
3.3 [Confidential Treatment Requested]
(a) [Confidential Treatment Requested]
(b) [Confidential Treatment Requested]
3.3.1 [Confidential Treatment Requested]
3.3.2 [Confidential Treatment Requested]
(a) [Confidential Treatment Requested]
(b) [Confidential Treatment Requested]
3.3.3. [Confidential Treatment Requested]
3.3.4 [Confidential Treatment Requested]
3.3.5 [Confidential Treatment Requested]
(a) [Confidential Treatment Requested]
(b) [Confidential Treatment Requested]
4 [Confidential Treatment Requested]
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4.1 [Confidential Treatment Requested]
4.2 [Confidential Treatment Requested]
4.3 [Confidential Treatment Requested]
5 [Confidential Treatment Requested]
5.1 [Confidential Treatment Requested]
6 TERM AND TERMINATION
6.1 This Agreement shall commence on the Effective Date and shall
extend for the life of the last to expire of the Licensed Patents.
6.1.1 [Confidential Treatment Requested]
6.2 In addition to the right of termination provided in Article 5.1 by
CMET and NTT DATA, either party shall have the right to terminate this
Agreement, or the rights granted by it hereunder, as a result of the other
party's material breach. The party claiming breach of the Agreement shall
give the other party written notice of the breach, specifying the nature
thereof, and the other party shall have thirty (30) days after such notice to
cure such breach. Upon the failure of the party in breach to cure the breach
within the thirty (30) day period, the other party shall have the right to
terminate this Agreement by giving written notice of termination. This
Agreement shall terminate effective on the date set forth in the termination
notice. The right of a party to terminate this Agreement for material breach
shall be in addition to and not in lieu of any other right or remedy that the
terminating party may have at law or in equity, including without limitation,
the right to xxx a breaching party for any prior breach of the Agreement, or
for breach of the whole Agreement or any unperformed balance thereof.
Failure of a party to conform to the provision of Article 7.4 of this
Agreement shall be deemed a material breach.
6.3 Unless impermissible under the applicable laws as of the date that
written notice of termination is given, either party shall have the right to
terminate this Agreement, or the rights granted by it hereunder, by giving
the other party written notice of a termination as a result of such other
party being for more than sixty (60) days the subject of any voluntary or
involuntary proceeding relating to bankruptcy, insolvency, liquidation,
receivership, or assignment for the benefit of creditors. This Agreement
shall terminate effective on the date set forth in the termination notice.
6.4 On the effective date of any termination, cancellation or
expiration of this Agreement, the rights and licenses granted herein shall
terminate.
6.5 [Confidential Treatment Requested]
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6.6 Neither party shall be liable for damages of any kind as a result
of properly exercising its respective right to terminate or cancel this
Agreement, or rights granted hereunder, according to the terms and conditions
of this Agreement, and termination or cancellation will not affect any other
right or remedy of either party.
6.7 Any confidentiality obligations imposed on the parties under this
Agreement shall survive and remain binding on parties for a period of three
years after the date of any termination, cancellation or expiration of this
Agreement.
7 GENERAL PROVISIONS
7.1 CONFIDENTIALITY OF AGREEMENT. The parties agree that the terms of
this Agreement are to be strictly confidential, and neither party shall
disclose such terms to any third party except: (i) to legal counsel; (ii) to
auditors; (iii) to the extent, if any, required by law (e.g., a governmental
filing); (iv) in accordance with the terms of a protective or other order
duly entered in a legal proceeding; or (v) with the prior written consent of
the other party. If disclosure of this Agreement or the terms and conditions
thereof is required to be made in a governmental filing (e.g., a filing with
the Securities and Exchange Commission), the disclosing party shall request
confidential treatment of the terms and conditions of this Agreement and use
its best efforts to ensure that confidential treatment is so afforded to such
terms and conditions, as may be permitted under the rules of the applicable
governmental agency. When 3D submits this License Agreement to the
Securities and Exchange Commission ("S.E.C."), CMET and NTT DATA will be
permitted to review 3D's request to maintain the confidentiality of the
sections that CMET and NTT DATA deem to be confidential before the
confidentiality request is filed with the S.E.C. and to submit a statement
prepared by CMET and NTT DATA together with the confidentiality request, if
CMET and NTT DATA deem such action to be appropriate. Furthermore, 3D will
timely advise CMET and NTT DATA of any objections by the S.E.C. to the
confidentiality request and permit CMET and NTT DATA to be involved in any
further proceedings that are initiated to maintain the confidentiality of the
sections of the License Agreement that CMET and NTT DATA deem to be
confidential. If a party intends to publicly announce any information with
regard to this Agreement, that party must obtain prior, written consent from
the other parties to be permitted to make such public announcement.
7.2 GOVERNING LAW AND DISPUTE RESOLUTION. This Agreement shall be
governed and interpreted in accordance with the substantive laws of Japan.
The parties agree that any action to enforce this Agreement shall be filed
in, and the parties consent to personal jurisdiction and venue in, the Tokyo
District Court; provided that any disputes between the parties caused or
arising out of the difference between the parties whether a product is
covered by a claim or claims of any one of a Licensed Patents shall be
submitted for arbitration to the Arbitration Center in Tokyo, Japan, which is
co-managed by the Japan Federation of Attorneys Bar Association and the Japan
Patent Attorneys Association. The parties agree to submit such disputes to
the exclusive
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jurisdiction of first instance to such Arbitration Center, and the finding(s)
of the Arbitration may not be overruled unless clearly erroneous.
7.3 NON-ASSIGNABILITY OF THIS AGREEMENT. This Agreement and the rights
and obligations of the parties hereunder may be assigned only to an Affiliate
of either party or to a purchaser of the entire business or all the assets to
which this Agreement pertains (regardless of the form of the sale of such
businesses or assets) without the prior written approval of the other party
hereto. Any other assignment entered without prior, written approval shall
be null and void. Notwithstanding the foregoing, with respect to any
assignment by either party, the assignee shall not be released or otherwise
relieved of any liability for infringements occurring prior to the date of
the assignment.
7.4 NON-ASSIGNABILITY OF LICENSED PATENTS. Neither party may assign
any patents or patent applications included with the Licensed Patents for
which a registration or recordation of the terms of this Agreement has not
been completed (irrespective of whether such assignment is voluntarily or
otherwise) without giving notice of this Agreement to the intended assignee
of the Licensed Patent(s) and obtaining from such intended assignee a written
consent, which consent shall be addressed to the other party or parties, that
the intended assignee shall not enforce the assigned Licensed Patent(s)
against the relevant Licensee(s) nor make any claims or demands on the
assigned Licensed Patent(s) against the relevant Licensee(s) and shall be
bound by the same obligation of the grantor as herein provided. Any
assignment executed without obtaining such written consent shall be null and
void.
7.5 REGISTRATION OF LICENSE. Each licensed party shall have the right
to register or record its license with regard to any Licensed Patents in any
and all appropriate government agencies and the granting party shall take all
reasonable efforts to cooperate to effect such registration. Upon issuance
of any Japanese Licensed Patents, the parties shall perform all necessary
procedures to register the non-exclusive license. The Licensee of such
Japanese Licensed Patents shall bear all of out-of-pocket expenses arising
from such procedure.
7.6 NOTICES. All notices provided for in this Agreement shall be
effective when received by personal delivery, telecopier or telex, or one
business day after being received by courier or by registered or certified
airmail at the following address:
If to 3D:
Vice President, General Counsel
3D Systems, Inc.
00000 Xxxxxx Xxxx
Xxxxxxxx, XX 00000 X.X.X.
Telecopier: (000) 000-0000
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If to CMET:
-----------
President
NTT DATA CMET INC.
00-0 Xxxxxx 0-Xxxxx
Xxxx-xx, Xxxxx 000-0000, Xxxxx
Telecopier: 011 81 3 3739 6680
If to NTT DATA CORPORATION:
---------------------------
Senior Executive Manager
Third Industrial Systems Division
Industrial Systems Sector
NTT DATA CORPORATION
Toyosu Center Building, 3-3 Xxxxxx 0-Xxxxx
Xxxx-xx, Xxxxx 000-0000, Xxxxx
Telecopier: 011 81 3 5546 8698
or such other address as either party shall hereafter designate in writing to
the other.
7.7 INVALIDITY OF PROVISION. If any of the provisions of this
Agreement shall be held by a court or administrative agency of competent
jurisdiction to contravene the laws of any country, it is agreed that such
invalidity or illegality should not invalidate the whole Agreement, but this
Agreement shall be construed as if it did not contain the provision or
provisions held to be invalid or illegal in the particular jurisdiction
concerned, and insofar as such construction does not affect the substance of
this Agreement and the rights and obligations of the parties hereto, it shall
be construed and enforced accordingly. In the event, however, that such
invalidity or illegality shall substantially alter the relationship between
the parties hereto, affecting adversely the interest of either party, then
the parties hereto shall negotiate a mutually acceptable alternative
provision not conflicting with such laws.
7.8 ENTIRE AGREEMENT, AMENDMENTS, WAIVERS. This Agreement represents
the entire understanding and agreement between the parties hereto with
respect to the subject matter hereof, and supersedes all prior and
contemporaneous negotiations, representations and agreements made by and
between such parties. The parties acknowledge that they have not relied upon
any representation whatsoever of the other which is not contained in this
Agreement. There are no understandings, obligations, representations or
warranties except as herein provided for and no rights are granted except as
expressly set forth in this Agreement. Any waiver by either party of the
breach or default of any of the terms or conditions of this Agreement by the
other party will not be considered as a continuing waiver or a waiver of any
other prior, contemporaneous or subsequent breach or default, whether the
same as or similar to or different from, the breach or default waived. No
alteration, amendment, variation, supplementation, modification or waiver of
any of the terms or provisions of this Agreement shall be binding or
effective for any purpose unless made pursuant to an instrument in writing
signed by 3D and both CMET and NTT DATA.
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7.9 REPRESENTATIONS AND WARRANTIES. Each of the parties represents and
warrants that it has not accepted and will not accept any commitments or
restrictions in respect to its right to grant licenses which will materially
affect the value of the rights granted by it in this Agreement.
7.10 Nothing in this Agreement shall be construed as:
7.10.1 A warranty or representation by either party as to the validity
or scope of any Licensed Patent; or
7.10.2 A warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this Agreement is or will
be free from infringement of patents of third persons; or
7.10.3 A requirement that either party shall file any patent
application, secure any patent, or maintain any patent in force; or
7.10.4 [Confidential Treatment Requested]
7.10.5 An obligation to furnish any manufacturing or technical
information, or any information concerning pending patent applications; or
7.10.6 Conferring a right to use in advertising, publicity, or
otherwise any trademark or tradename of another party.
7.11 No party makes any representations, extends any warranties of any
kind, either express or implied, or assumes any responsibilities whatever
with respect to use, sale, or other disposition by the other parties or their
vendees or transferees of products incorporating or made by use of inventions
licensed under this Agreement.
7.12 [Confidential Treatment Requested]
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IN WITNESS WHEREOF, each of the parties has caused this Agreement to be
executed and duly sealed in triplicate originals by its duly authorized
representative.
3D SYSTEMS, INC.
By
------------------------------
A. Xxxxxx Xxxxxx
Vice President, General Counsel
Attest:
------------------
NTT DATA CMET INC.
By
------------------------------
Xxxxxxxxx Xxxxxx
President
Attest:
--------------------
NTT DATA CORPORATION
By
------------------------------
Xxxxxxxx Xxxxxxxx
Senior Executive Manager
Third Industrial Systems Division
Industrial Systems Sector
Attest:
---------------------
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