1
EXHIBIT 10.1
LICENSE AGREEMENT
This Agreement is made on April 20, 2000 ("Effective Date"), between Delphi
Automotive Systems LLC ("Delphi"), with offices at 000 Xxxx Xxxxxx, Xxxxxx, Xxxx
00000, and DuraSwitch Industries, Inc., ("DuraSwitch"), having a principal place
of business at 000 Xxxxx Xxxxxxxxx, Xxxxxxx 000, Xxxx, Xxxxxxx 00000.
BACKGROUND
A. DuraSwitch represents that it has developed unique switch
technology.
B. DuraSwitch represents that it has developed and possesses
valuable information pertaining to magnetically coupled
armature switch technology.
C. DuraSwitch represents that it has applied for patent coverage
which relates to the magnetically coupled armature switch
technology and owns patent applications and patents which are
listed in Schedule 1 and corresponding patent applications and
patents in other countries.
D. Delphi wishes to obtain from DuraSwitch, and DuraSwitch is
willing to provide to Delphi, a license in accordance with and
subject to the terms and conditions contained in this
Agreement.
E. By way of separate agreement, DuraSwitch wishes to grant an
option to purchase common stock in DuraSwitch Industries,
Inc., and Delphi is willing to agree to such an option.
The parties agree as follows:
1. DEFINITIONS
As used in this Agreement, the following terms shall have the meanings set forth
below:
1.1 "DuraSwitch Patents" shall mean:
(a) the patents listed in Schedule 1,
(b) any patents granted on the patent applications listed in
Schedule 1 and any continuations and divisions of such
applications,
(c) any patents in other countries corresponding to such patents,
and
(d) any other patents granted on inventions conceived by
DuraSwitch prior to the end of the License Period, or under
which DuraSwitch has the right to grant a license to Delphi at
any time during the License Period, and which relate to
DuraSwitch Technology. However, DuraSwitch has no performance
requirements nor efforts required to continue to develop new
technology nor share future technology developments beyond
DuraSwitch Technology.
* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
2
1.2 "DuraSwitch Technology" shall mean all information possessed by
DuraSwitch, now or at any time during the License Period, needed to
produce magnetically coupled armature switches.
1.3 "License Period" shall mean the period extending from the Effective
Date until April 21, 2020 or until this Agreement is terminated under
clause 11.
1.4 "Licensed Products" shall mean any and all products the manufacture,
use, sale, offer for sale or import of which, in the absence of this
Agreement, would infringe or contribute to the infringement of at least
one claim of DuraSwitch Patents.
1.5 "Exclusive Licensed Field" shall mean the original equipment, service
parts and aftermarket passenger automobile, light truck and heavy truck
industries.
1.6 "Non-exclusive Licensed Field" shall mean all fields of industry except
passenger automobile, light truck, heavy truck, appliance, avionic,
beverage dispenser, and consumer electronics (except to the extent
consumer electronics relates to the Exclusive Licensed Field).
1.7 "Pushbutton Armature" shall mean a movable conductive element actuated
by at least partially separating it from a magnet. By way of example
and not limitation, such armatures are shown in Figs. 11 and 12 of
Patent 5,523,730 and in Figs. 1-2 of Patent 5,990,772 and in Fig. 17 of
Patent 5,666,096 and in products currently sold by DuraSwitch under the
trademark Pushgate(TM).
1.8 "Translating Armature" shall mean a movable conductive element actuated
by moving a Magnet Set that is in coupling relation with the conductive
element, whether the movement is rotary, linear or otherwise. By way of
example and not limitation, such armatures are shown in Figs. 1-2, 4-5
and 8-10 of Patent 5,523,730 and in Figs. 13-15 of Patent 5,666,096 and
in products currently sold by DuraSwitch under the trademarks Rotor(TM)
and Slider(TM).
1.9 "Directionally Sensitive Armature" shall mean a movable conductive
element actuated by at least partially separating it from a magnet and
whose output is dependent upon the location on the element where a
separating force is applied. By way of example and not limitation, such
an armature is shown in Figs. 1-2 of U.S. Patent Application Serial No.
09/324,567 and in products currently sold by DuraSwitch under the
trademark MagnaMouse(TM).
1.10 "Actuating Control Mechanism" shall mean a device for movably mounting
one or more Magnet Sets. By way of example and not limitation, an
Actuating Control Mechanism with one Magnet Set is shown in Fig. 1 of
Patent 6,023,213 and an Actuating Control Mechanism with two Magnet
Sets is shown in Fig. 5 of that patent.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
3
1.11 "Magnet Set" shall mean one or more individual magnets grouped together
in coupling relation with a moveable conductive element.
1.12 "Delphi Affiliates" shall mean any company directly or indirectly
controlled by Delphi, or under common control with Delphi. A company is
controlled by ownership of more than fifty percent (50%) of the stock
entitled to vote for directors of the company or persons performing a
function similar to that of directors.
2. LICENSE
2.1 DuraSwitch hereby grants to Delphi to the extent of the Exclusive
Licensed Field an exclusive license with the right to grant sublicenses
under the DuraSwitch Patents and DuraSwitch Technology during the
License Period to make, use, sell, offer for sale and import Licensed
Products throughout the world.
(a) Delphi shall have the exclusive right under the DuraSwitch
Patents and DuraSwitch Technology to grant sublicenses, to the
extent of the Exclusive Licensed Field, *
(b) In respect to sublicenses granted by Delphi under this
Agreement, Delphi shall pay *
(c) Termination of this Agreement shall terminate all sublicenses
which may have been granted by Delphi, * Any sublicense
granted by Delphi shall contain provisions corresponding to
those of this paragraph respecting termination and the
conditions of continuance of sublicenses.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
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(d) *
2.2 The exclusive license granted in clause 2.1 of this Agreement is not
subject to any reserved license in DuraSwitch to make, use, sell, offer
for sale and import Licensed Products.
2.3 Delphi shall have the sole right to convert the exclusive license
granted in clause 2.1 into a non-exclusive license in the Exclusive
License Field under DuraSwitch Patents and DuraSwitch Technology for
the balance of the License Period to make, use, sell, offer for sale
and import Licensed Products throughout the world. This right to
convert shall be effective on July 1, 2007 provided DuraSwitch receives
notice at least six (6) months before July 1, 2007. For the balance of
the License Period, Delphi shall pay DuraSwitch *.
2.4 After July 1, 2012 and with twelve (12) months notice, either Delphi or
DuraSwitch shall have the right to convert the exclusive license
granted in clause 2.1 into a non-exclusive license in the Exclusive
License Field under DuraSwitch Patents and DuraSwitch Technology for
the balance of the License Period to make, use, sell, offer for sale
and import Licensed Products throughout the world. For the balance of
the License Period, Delphi shall pay DuraSwitch the *.
2.5 DuraSwitch hereby grants to Delphi to the extent of the Non-exclusive
Licensed Field a non-exclusive license with no right to grant
sublicenses, except to Delphi Affiliates, under the DuraSwitch Patents
and DuraSwitch Technology during the License Period to make, use, sell,
offer for sale and import Licensed Products throughout the world except
in Australia and in New Zealand.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
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2.6 DuraSwitch will execute the attached License Confirmations and any
other proper documents required to record Delphi's rights under this
Agreement in the United States Patent and Trademark Office.
2.7 DuraSwitch will promptly inform Delphi of the grant of each patent
licensed under clause 2.1 and 2.5, and of the filing of each
application for such a patent, and will promptly furnish copies of such
patents to Delphi.
2.8 DuraSwitch will promptly disclose, deliver and otherwise make fully
available to Delphi in the form of duplicates of drawings, designs,
data, reports, written specifications, instructions and consultations,
or in such other suitable manner and form as may be convenient to the
parties, all DuraSwitch Technology listed in Schedule 2 within 15 days
of the effective date of this Agreement, provided that this clause does
not apply to any DuraSwitch Technology which has been communicated to
DuraSwitch on terms which preclude DuraSwitch from disclosing it to
Delphi.
2.9 DuraSwitch, during the License Period, will continue to promptly
disclose, deliver and otherwise make fully available to Delphi in the
form of duplicates of drawings, designs, data, reports, written
specifications, instructions and consultations, or in such other
suitable manner and form as may be convenient to the parties, all
DuraSwitch Technology now possessed or hereafter discovered or
developed by DuraSwitch or otherwise coming into DuraSwitch's
possession that is requested by Delphi or that DuraSwitch believes
would be helpful to Delphi in the manufacture, sale and importation of
magnetically coupled armature switch technology, provided that this
clause does not apply to any DuraSwitch Technology which is
communicated to DuraSwitch on terms which preclude DuraSwitch from
disclosing it to Delphi. However, DuraSwitch has no performance
requirements nor efforts required to continue to develop new technology
nor share future technology developments beyond DuraSwitch Technology.
3. EXCLUSIVE LICENSE FEE / ROYALTIES
3.1 Delphi shall pay to DuraSwitch as an exclusive license fee, within
thirty (30) days of the Effective Date of this Agreement, four million
dollars U.S. (U.S. $4,000,000.00) which shall be nonrefundable and not
creditable against royalties.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
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3.2 Delphi shall pay to DuraSwitch royalties as stated in clause 3.3
through 3.6 for the license in clause 2.1 during the License Period,
but in no event shall royalties for a one (1) year period starting on
July 1, 2000 be less than the following minimum royalties and more than
the following maximum royalties during each of the years indicated:
Year Minimum per Year Maximum per Year
---- ---------------- ----------------
* * *
3.3 For every Pushbutton Armature sold by Delphi, Delphi shall pay to
DuraSwitch a royalty of *
3.4 For every Translating Armature sold by Delphi, Delphi shall pay to
DuraSwitch a royalty of *
3.5 For every Directionally Sensitive Armature sold by Delphi, Delphi shall
pay to DuraSwitch a royalty of *
3.6 Delphi shall pay no royalty to DuraSwitch for any Licensed Products
sold to DuraSwitch. Royalties for any DuraSwitch Patents conceived by
DuraSwitch prior to the end of the License Period, or under which
DuraSwitch has the right to grant a license to Delphi at any time
during the License Period shall be * DuraSwitch agrees that with
respect to any DuraSwitch Patent which may later issue covering any
apparatus made or sold by Delphi under the licenses granted in this
Agreement and upon which royalties have been paid, Delphi shall not pay
any additional royalties. However, DuraSwitch has no performance
requirements nor efforts required to continue to develop new technology
nor to share future technology developments beyond DuraSwitch
Technology.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
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3.7 Royalties in clauses 3.3-3.6 for the License Period starting from July
1, 2012 shall be *
3.8 Delphi shall pay to DuraSwitch royalties, for the license granted in
clause 2.5, to be *
3.9 Within thirty (30) days after the end of each month starting on July 1,
2000, Delphi shall furnish DuraSwitch with written statements showing
Delphi's sales of Licensed Products during the preceding month, any
deductions taken, and the computation of royalties, and shall pay the
royalties due under this clause 3. A similar statement shall be
rendered and payment made within thirty (30) days after and as of the
date of termination of this Agreement covering the period from the end
of that covered by the preceding statement to the date of termination.
Delphi shall keep for two (2) years after the date of submission of
each statement, true and accurate records, files and books of account
containing all the data reasonably required for the full computation
and verification of Delphi's sales of Licensed Product, royalties and
deductions taken. Delphi agrees to permit DuraSwitch to examine, these
records to the extent necessary to verify the reports. The examination
by DuraSwitch shall be conducted by an auditor appointed by DuraSwitch
and paid for by DuraSwitch.
4. ASSIGNABILITY
4.1 The licenses granted in this agreement shall be binding upon any
successor of DuraSwitch in ownership or control of the DuraSwitch
Patents and DuraSwitch Technology.
4.2 The license is personal to Delphi, and Delphi may not assign the
license to any person unless DuraSwitch has given approval to the
assignment, which DuraSwitch may give or refuse at its absolute
discretion, provided that Delphi may assign the license, without
DuraSwitch approval to (i) the successor to that portion of its
business to which the license relates or (ii) any company directly or
indirectly controlled by Delphi, or under common control with Delphi. A
company is controlled by ownership of more than fifty percent (50%) of
the stock entitled to vote for directors of the company or persons
performing a function similar to that of directors.
5. MARKING
5.1 Delphi shall place in a conspicuous location on any Licensed Product a
distinguishing xxxx agreeable to both parties and the number or numbers
of the DuraSwitch Patents applicable thereto.
5.2 The marking of Licensed Product in clause 5.1 shall not be required if
the product performance is compromised thereby, the marking can not
reasonably be placed on any Licensed Product due to the product size,
or in all instances where Delphi's customers request in writing that
any Licensed Products do not include any markings.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
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5.3 Delphi shall notify DuraSwitch in writing when any Licensed Products
are not marked pursuant to clause 5.2.
6. PUBLICITY
6.1 Delphi shall use the DURASWITCH trademark in all publications relating
to the Licensed Products. Usage of any DuraSwitch trademarks and trade
names shall be in accordance with DuraSwitch's then current published
specifications relating to the use thereof. DuraSwitch reserves the
right to periodically review and monitor Delphi's use of DuraSwitch's
trademark and trade names in order to preserve DuraSwitch's rights,
good will and value in its trademarks and trade names.
6.2 Except as required in clauses 5.1 and 6.1, Delphi is not required to
use any DuraSwitch trademarks or trade names.
6.3 Within three (3) days of the Effective Date of this Agreement, Delphi
and DuraSwitch shall issue a press release as shown in Schedule 4.
6.4 DuraSwitch shall not use any Delphi trademarks, trade names or service
marks without the prior written consent of Delphi.
7. CONFIDENTIALITY
7.1 All of the terms of this Agreement except clause 3.1 and a combined
total of the minimum royalties in clause 3.2 for the first seven years
equaling twelve million dollars (U.S. $12,000,000), but not the
existence of the Agreement, are confidential, and neither party shall
disclose such terms and conditions to anyone else without first
obtaining the prior written consent from the other party, provided that
either party may disclose the terms and conditions of this Agreement in
response to the legal requirement of a governmental agency or a court
of competent jurisdiction if such disclosure is first submitted to the
other party.
7.2 Delphi will protect materials received from DuraSwitch under this
Agreement and containing DuraSwitch Technology against disclosure to
others with the same degree of care Delphi protects its own materials
of a similar nature and will endeavor to instruct Delphi employees most
likely to have access to such materials that such materials are to be
so protected. DuraSwitch acknowledges that Delphi often discloses its
own materials for its own commercial purposes to customers, vendors and
consultants, and accordingly will not assert any claim with respect to
disclosure or use of any materials, or any DuraSwitch Technology,
disclosed to Delphi. The foregoing expresses Delphi's entire obligation
with respect to DuraSwitch Technology, and supersedes any obligation
that might otherwise be implied by or inferred from any legends placed
on materials containing DuraSwitch Technology.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
9
7.3 DuraSwitch will protect materials received from Delphi under this
Agreement against disclosure to others with the same degree of care
DuraSwitch protects its own materials of a similar nature and will
endeavor to instruct DuraSwitch employees most likely to have access to
such materials that such materials are to be so protected. Delphi
acknowledges that DuraSwitch often discloses its own materials for its
own commercial purposes to customers, vendors and consultants, and
accordingly will not assert any claim with respect to disclosure or use
of any materials disclosed to Delphi. The foregoing expresses
DuraSwitch's entire obligation with respect to such materials, and
supersedes any obligation that might otherwise be implied by or
inferred from any legends placed on materials.
8. INFRINGEMENT BY THIRD PARTIES
8.1 Each party shall notify the other party in writing of any suspected
infringement(s) of the DuraSwitch Patents and shall inform the other
party of any evidence of such infringement(s).
8.2 Delphi shall have the first right to institute suit for infringement(s)
in the Exclusive License Field. DuraSwitch agrees to join as a party
plaintiff in any such lawsuit initiated by Delphi, if requested by
Delphi or required by law, with all costs, attorney fees, and expenses
to be paid by Delphi. However, if Delphi does not institute suit for
infringement(s) within ninety (90) days of receipt of written notice
from DuraSwitch of DuraSwitch's desire to bring suit for infringement
in its own name and on its own behalf, then DuraSwitch may at its own
expense, bring suit or take any other appropriate action.
8.3 *
8.4 DuraSwitch shall have the sole right to institute suit for
infringement(s) in the Non-exclusive License Field.
8.5 Neither party may settle with an infringer without the prior approval
of the other party if such settlement would affect any rights of the
other party under the DuraSwitch Patents and DuraSwitch Technology.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
10
9. WARRANTY
DuraSwitch warrants it has the right to convey the licenses granted by
this Agreement. *
9.2 DuraSwitch warrants that, as of the Effective Date of this Agreement,
it has received no claim from a third party charging infringement of a
patent by any activity of DuraSwitch.
9.3 *
9.4 DuraSwitch agrees to defend at its expense and hold harmless Delphi
from all loss or damage by reason of any and all actions or proceedings
charging infringement, whether rightfully or wrongfully brought, of any
patent by reason of manufacture, use, sale, offer for sale, or import
of any Licensed Products by Delphi under this Agreement. Delphi agrees
to notify DuraSwitch in writing of all such actions or proceedings and,
at the expense of DuraSwitch, to assist DuraSwitch in the defense of
the action or proceeding. If the manufacture, use, offer for sale, sale
or import of such Licensed Products is enjoined as a result of such
action or proceeding, DuraSwitch will indemnify Delphi for any and all
losses or damages sustained by reason of obeying such injunction.
10
* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
11
9.5 If a claim or claims of any patent licensed hereunder shall be held
invalid, unenforceable, or cancelled by a court or administrative
agency from whose decision no appeal is taken or no appeal or other
proceeding for review can be taken (hereinafter a "final judgment"),
then such claim or claims shall, subsequent to the date of the final
judgment, be treated as invalid, unenforceable, or cancelled and no
royalties shall be due under clause 3 of this Agreement for sales
thereafter of Licensed Products covered solely by such claims.
9.7 If a claim or claims of any patent licensed hereunder shall be held
noninfringed by a third party's switch related products in a final
judgment of a court or administrative agency, then subsequent to the
date of the final judgment, Delphi shall have no obligation to pay
royalties hereunder to DuraSwitch on switch related products
manufactured, used, sold, offered for sale or imported by Delphi which
do not infringe such patent.
9.8 DuraSwitch warrants that, as of the Effective Date of this Agreement,
it has received no claim from a third party for ownership or
misappropriation of any DuraSwitch Patent and/or DuraSwitch Technology.
9.9 DuraSwitch does not warrant or represent that any DuraSwitch Technology
is or will be patentable or that any DuraSwitch Patent is or will be
valid.
9.10 DuraSwitch warrants that, as of the Effective Date of this Agreement,
to the extent of the Exclusive Licensed Field, it and its licensees
have not granted any rights under DuraSwitch Technology and/or
DuraSwitch Patents. In addition, DuraSwitch warrants that, as of the
Effective Date of this Agreement, DuraSwitch is under no obligation
with any third party prohibiting the disclosure of DuraSwitch
Technology to Delphi.
9.11 DuraSwitch agrees that with respect to any patent which may later
issue, it will not assert against Delphi, or its vendees, any claims
for infringement based on the manufacture, use, sale, offer for sale or
import of any apparatus made or sold by Delphi under the license
granted in this Agreement and upon which royalty has been paid in
accordance with the provisions of clause 3.
9.12 DuraSwitch warrants that, during the License Period all DuraSwitch
Patents will not be allowed to lapse.
10. LIABILITY
10.1 Delphi shall indemnify, defend and hold DuraSwitch harmless against all
claims and expenses, including legal expenses and reasonable attorney's
fees, arising out of the death of or injury to any person or persons or
out of damage to property resulting from Delphi's production, assembly,
sale or use of the Licensed Products.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
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10.2 Delphi's indemnification under clause 10.1 shall not apply to any
claims or expenses due to: (i) the negligence of DuraSwitch; or (ii)
the intentional wrongdoing or intentional misconduct of DuraSwitch.
10.3 Delphi's indemnification under clause 10.1 shall not apply to any
claims or expenses due to: (i) the negligence of DuraSwitch; or (ii)
the intentional wrongdoing or intentional misconduct of DuraSwitch.
11. TERM
11.1 This Agreement shall continue in force for the License Period unless
terminated by either party under clause 11.2.
11.2 If either party shall at any time default in the payment of any monies
due in accordance with this Agreement or in fulfilling any of the other
obligations or conditions hereof, prior to terminating this Agreement,
the other party shall give notice of such default specifying the
reasons thereof. If such default is not cured by the noticed party
within ninety (90) days of such notice, the other party shall then have
the right in its own discretion to terminate this Agreement by giving
written notice of termination. This Agreement shall terminate on the
30th day after each notice of termination is given. The noticed party
shall have the right to cure any such default up to, but not after, the
giving of such notice of termination.
12. LICENSED PRODUCT QUALITY
12.1 The DuraSwitch Quality Standards, attached as Schedule 3, shall be used
as a minimum acceptable level of quality for all Licensed Products.
12.2 DuraSwitch shall be permitted to inspect Licensed Products in order to
ensure minimum compliance with the DuraSwitch Quality Standards. Such
inspection will be permitted by Delphi not more than four times per
year during reasonable working hours and only after a written request
has been received by Delphi one (1) week in advance of such inspection.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
13
13. NOTICE
13.1 All notices given under this Agreement shall be in writing and shall be
deemed to have been properly given when delivered personally or sent by
prepaid registered or certified mail, or electronic transmission, and
all payments and statements shall be sent by first class mail, postage
prepaid, to the following addresses:
If given to Delphi: If given to DuraSwitch:
President President
Delphi Packard Electric Systems DuraSwitch Industries, Inc.
000 Xxxx Xxxxxx 234 South Extension, Section 103
X.X. Xxx 000 Xxxx, Xxxxxxx, 00000
Xxxxxx, Xxxx 00000
with courtesy copies to: with courtesy copies to:
Attention: Legal Staff - M/C 000-000-000 ____________________________
X.X. Xxx 0000 ____________________________
Xxxx, Xxxxxxxx 00000-0000 ____________________________
Fax: (000) 000-0000 ____________________________
The date of service shall be deemed to be the date on which such notice,
payment, or statement was personally delivered, posted, or sent by telex or
electronic transmission. Either party may give written notice of a change of
address and, after notice of such change has been received, any notice, payment,
or statement thereafter shall be given to such party as above provided at such
changed address.
14. COVENANT
14.1 DuraSwitch, for the License Period, agrees to refrain from disclosing
any DuraSwitch Technology to any company, partnership or other entity
which is engaged in the manufacture, use or sale of products in the
Exclusive Licensed Field.
15. CONSTRUCTION
15.1 This Agreement will be governed by and construed in accordance with the
laws of the state of Illinois, without regard to its law of conflicts.
The headings of Articles and Sections in this Agreement are intended
solely for convenience of reference and shall not be considered in
construing this Agreement.
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
14
16. EXTRANEOUS WRITINGS
16.1 This Agreement constitutes the entire understanding between the parties
with respect to the subject matter hereof; all prior agreements,
drafts, representations, statements, negotiations, and undertakings are
superseded hereby. No amendment to this Agreement shall be effective
unless it is in writing and signed by duly authorized representatives
of both parties.
17. ARBITRATION
17.1 Both parties shall use their best efforts to resolve by mutual
agreement any disputes, controversies, or differences which may arise
from, under, out of, or in connection with this Agreement. If such
disputes, controversies, or differences cannot be settled between the
parties within sixty (60) days of the first written notice relative
thereto, it shall be resolved by arbitration before three arbitrators
acting under the Expedited Arbitration Rules in accordance with the
most recent Rules of the American Arbitration Association. Such
arbitration shall be held in Michigan and the award rendered in the
arbitration shall be final and binding upon both parties.
IN WITNESS THEREOF, the parties have made this Agreement the day and year
written above.
Delphi Automotive Systems LLC DuraSwitch Industries, Inc.
By:_______________________________ By:___________________________________
Name:_____________________________ Name:_________________________________
Title:____________________________ Title:________________________________
Date:_____________________________ Date:_________________________________
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
15
LICENSE CONFIRMATION
This document confirms that Duraswitch Industries Inc., incorporated under the
laws of Nevada and having a principal place of business at 000 Xxxxx Xxxxxxxxx,
Xxxxxxx 000, Xxxx, Arizona, ("Duraswitch"), has granted DELPHI AUTOMOTIVE
SYSTEMS LLC, incorporated under the laws of Delaware and having a place of
business at Warren, Ohio ("DELPHI"), to the extent of the original equipment,
service parts and aftermarket passenger automobile, light truck and heavy truck
industries, an exclusive license with the right to grant sublicenses to make,
use, sell, offer for sale and import throughout the world magnetically coupled
armature switches covered by one or more of the patents listed in the attached
Schedule 1,any patents granted on the patent applications listed in the attached
Schedule 1 and any continuations and divisions of such applications, any patents
in other countries corresponding to such patents, any other patents granted on
certain inventions conceived by Duraswitch, and certain other patents under
which Duraswitch has the right to grant a license to Delphi, upon and subject to
the terms of an Agreement between Duraswitch and Delphi made the 20th day of
April, 2000.
DURASWITCH INDUSTRIES, INC.
BY _____________________________________
TITLE __________________________________
DATE ___________________________________
THE FOREGOING INSTRUMENT WAS ACKNOWLEDGED BEFORE ME THIS _____ DAY OF
_____________, 2000 BY ___________________________________ OF DURASWITCH
INDUSTRIES, INC., A NEVADA COMPANY ON BEHALF OF THE COMPANY.
(SEAL) ________________________________________
NOTARY PUBLIC
15
* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
16
LICENSE CONFIRMATION
This document confirms that Duraswitch Industries Inc., incorporated under the
laws of Nevada and having a principal place of business at 000 Xxxxx Xxxxxxxxx,
Xxxxxxx 000, Xxxx, Arizona, ("Duraswitch"), has granted DELPHI AUTOMOTIVE
SYSTEMS LLC, incorporated under the laws of Delaware and having a place of
business at Warren, Ohio ("DELPHI"), to the extent of all fields of industry
except passenger automobile, light and heavy truck original equipment, service
parts and aftermarket industries, appliance, avionic, beverage dispenser,
consumer electronics (except to the extent consumer electronics relates to the
Exclusive Licensed Field) a non-exclusive license with no right to grant
sublicenses to make, use, sell, offer for sale and import throughout the world
except Australia and New Zealand magnetically coupled armature switches covered
by one or more of the patents listed in the attached Schedule 1,any patents
granted on the patent applications listed in the attached Schedule 1 and any
continuations and divisions of such applications, any patents in other countries
corresponding to such patents, any other patents granted on certain inventions
conceived by Duraswitch, and certain other patents under which Duraswitch has
the right to grant a license to Delphi, upon and subject to the terms of an
Agreement between Duraswitch and Delphi made the 20th day of April, 2000.
DURASWITCH INDUSTRIES, INC.
BY _____________________________________
TITLE __________________________________
DATE ___________________________________
THE FOREGOING INSTRUMENT WAS ACKNOWLEDGED BEFORE ME THIS _____ DAY OF
_____________, 2000 BY ___________________________________ OF DURASWITCH
INDUSTRIES, INC., A NEVADA COMPANY ON BEHALF OF THE COMPANY.
(SEAL) ________________________________________
NOTARY PUBLIC
16
* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
17
SCHEDULE 1
Applications
*
Letters Patent
U.S. Patent No.
5,523,730
5,666,096
5,867,082
5,990,772
6,023,213
17
* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
18
SCHEDULE 2
The following list includes DuraSwitch Technology to be transferred to Delphi
within fifteen (15) days of the Effective Date pursuant to clause 2.6 of this
Agreement.
1. All Manufacturing Specifications including, but not limited to, quality
control plans
2. All Engineering Design Specifications
3. All Part Prints
4. All formulations required to manufacture the Licensed Products
5. All Quality data for the past two months
6. All production test data for the past two months
7. All tooling, jig and fixture blueprints, design manuals, and training
manuals
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* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
19
[DURASWITCH LOGO]
SCHEDULE 4
PUSHGATE(TM) PRODUCT SPECIFICATION - NUMBER DPS-0600
- ASTM-F1597 - Determining The Actuation Force and Contact Force of a
Membrane Switch
- ASTM-F1661 - Determining Contact Bounce Time of Membrane Switch
- ASTM-F1662 - Verifying The Specific Dielectric Withstand Voltage of A
Membrane Switch
- ASTM-F1663 - Determining The Capacitance of A Membrane Switch
- ASTM-F1681 - Determining the Current Carrying Capacity of A Conductor
as Part of A Membrane Switch
- ASTM-F1683 - Creasing or Bending A Membrane Switch Tail Assembly
- ASTM-F1689 - Determining The Insulation Resistance of A Membrane Switch
- ASTM-F1762 - Effects of Variation of Atmospheric Pressure on Membrane
Switches
- ASTM-F1812 - Membrane Switch ESD Shielding Test Method
- ASTM-F1842 - Determining Ink or Coating Adhesion on Plastic Substrates
for Membrane Switches
- ASTM-F1895 - Submersion of Membrane Switch
- ASTM-F1896 - Determining the Circuit Resistance of A Membrane Switch
- Mil-Std 202 - Test Methods for Electronic & Electrical Component Parts
- Mil-Std-810E - Environmental Test Methods and Engineering Guidelines
- UDI-R-20459 - Quality Assurance Environmental Test Plan
Note: The aforementioned ASTM test specifications were written specifically
for membrane switch technology. DuraSwitch(R) PushGate(TM) technology,
although similar in many aspects does not have an applicable industry
standard at this time that can be referenced. In all cases, the
PushGate(TM) technology meets and in critical areas exceeds the
Membrane specifications. In those cases where PushGate(TM) technology
exceeds those design and test standards, our Document will note such
differences.
(C) DuraSwitch Industries, Inc. 2000 Page 3 of 56
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confidential treatment and has been filed separately with the Commission.
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[DURASWITCH LOGO]
SCHEDULE 4
PUSHGATE(TM) PRODUCT SPECIFICATION - NUMBER DPS-0600
- FORMAT FOR REPORTING
- General description of test to be performed and results expected
- Customer
- Product type
- Serial number
- Model number
- Drawing number
- Brief description of features, functions, etc.
- Hardware identification (switch unit to component level assembly)
- Functional description of the affected parts of the switch unit
- Test Measurements
- Description of test and particular referenced documents
- Test results (charting, graphing, test datum)
- Root Cause of failure
- Corrective actions
- ATTACHMENTS
- Incremental test log (showing time of test starts, interruptions,
failures and restarts)
- Failure Mode and Effect Analysis (physics of failures)
- REFERENCE DOCUMENTS FOR TESTING
- ASTM Membrane Switch
- ASTM-1596 - Exposure of Membrane Switches to Temperature and Humidity
- ASTM-F1570 - Determining the Tactile Ratio of a Membrane Switch
- ASTM-F1578 - Contact Closure Cycling of a Membrane Switch
- ASTM-F1595 - Viewing Conditions for visual Inspection Standards of
Membrane Switches
20
* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
21
SCHEDULE 4
21
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confidential treatment and has been filed separately with the Commission.
22
[DURASWITCH LOGO]
SCHEDULE 4
PUSHGATE(TM) PRODUCT SPECIFICATION - NUMBER DPS-0600
9. QUALITY CONSIDERATIONS
PURPOSE:
The purpose of this procedure will be to outline the test requirements to
validate, qualify, and determine product performance, capability, and worthiness
to specification on a random sample and test basis. To ensure that all product
on an ongoing basis complies the company's basic assembly, environmental,
mechanical and electrical specifications.
- SCOPE:
The following test(s) are to determine whether DuraSwitch(R) products meet
specified performance parameters, i.e.; Electrical, Mechanical, Environmental
and Human Factors Engineering. Environmental requirements will include:
temperature, humidity, shock, and vibration areas that could normally be
experienced in and through the use when exposed in our daily surroundings. In
addition, product will be subjected to a total functional test based upon all
aspects of product design as defined within the DuraSwitch(R) performance
specifications as noted at the time of customer acceptance of quote.
This procedure, PERFORMANCE, LIFE CYCLE AND ENVIRONMENTAL PROFILING will output
the necessary data, in narrative and statistical format required, outlining the
environmental and stress conditions to which the product under test will be
subjected to during its various life phases. The data may be form of
calculations, laboratory tests and/or operational measurements. Each profile
will show the number of measurements from which the average value of these
stresses and design achievements are determined as well as their characteristic
variability which will be expressed in terms of standard deviation.
Reporting shall include: test specifications, method used, test parameters,
duration, descriptions of how the test will be performed, test set-up (block
diagram), test equipment to be utilized, location of voltage and current
sensors, resistance measurements, accelerometers, thermocouples, etc., relative
to test items, and data reduction techniques.
The Product Assurance team working under the supervision of Quality Engineering
will perform the test, record test data and anomalies in written format. The
report will include an analysis of the causes of the anomalies and corrective
action taken to prevent recurrence. A test anomaly caused by an equipment
failure (this includes failures caused by external sources) shall be reported in
the same manner.
(C) DuraSwitch Industries, Inc. 2000 Page 38 of 56
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confidential treatment and has been filed separately with the Commission.
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SCHEDULE 4
[DELPHI AUTOMOTIVE SYSTEMS LOGO]
NEWS RELEASE
DRIVING TOMORROW'S TECHNOLOGY
FOR RELEASE: Tuesday, April 25, 2000 CONTACTS: Xxx Xxxxxxx
330.759.6141
DuraSwitch: Xxxxxxx Xxxxxxxx
480.586.3357
DELPHI PARTNERS WITH DURASWITCH(R) TO BRING NEW SWITCH TECHNOLOGY INTO
AUTOMOTIVE MARKET
WARREN, Ohio -- Delphi Automotive Systems (NYSE:DPH) signed a licensing
agreement today with DuraSwitch Industries Inc. (AMEX:DRA) for exclusive rights
to utilize and manufacture DuraSwitch's revolutionary magnetically coupled
switch technology for the automotive industry, announced Xxxxx X. Xxxxxxx,
president, Delphi Packard Electric Systems and vice president, Delphi.
Delphi's Packard Electric Division will utilize its knowledge of
switches and switch packaging to adapt the DuraSwitch technology to the
automotive industry, as well as the non-automotive switch markets. Along with
the licensing and manufacturing agreement, Delphi has an option to acquire
slightly under 20 percent of DuraSwitch.
"This is a significant win for Delphi and for DuraSwitch," said
Xxxxxxx. "I'm confident that the marketplace acceptance of this innovative
technology will be great, yielding substantial sales that will benefit both
Delphi and DuraSwitch. Our potential for an equity position in DuraSwitch will
not only cement our relationship, but will allow us to participate in their
value growth."
Delphi's diversified customer base and solid manufacturing footprint
will help take DuraSwitch global. The automotive switch market is valued at $4
billion, with a 6.8 percent compounded average annual growth rate.
Xxxxxxx said, "This is exactly the switch technology that is needed to
provide the multitude of switching and electronic features that today's
automotive customers demand. We consider DuraSwitch to be a next generation
switch technology, which has a straightforward design that fits perfectly with
our manufacturing capabilities."
23
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confidential treatment and has been filed separately with the Commission.
24
SCHEDULE 4
DuraSwitch utilizes a patented, revolutionary magnetic-based design
that provides previously unheard of levels of reliability and durability, with a
consistent tactile feedback or "click." This specialized technology enables the
switches to be used in applications where either membrane or electro-mechanical
switches are currently used. It easily incorporates into flat panel,
electronically integrated switch packaging, currently required in advanced
electrical/ electronic architectures and in demand by vehicle manufacturers.
"We are excited to be part of the Delphi Team, combining our switch
technology with their state-of-the-art manufacturing capabilities," said Xxxxx
Xxxxxx, chief executive officer and chairman, DuraSwitch. "I'm confident that by
working together the opportunities to apply this technology will quickly extend
well beyond the automotive market."
"We see Delphi as the perfect partner," said Xxx Xxxxxx, president and
chief financial officer, DuraSwitch. "Their strong global presence and solid
customer base will help us achieve our vision of leadership in human-machine
interface technology."
This partnership with DuraSwitch will enable Delphi to maintain and
grow its current switch business. The intent is to begin moving away from some
of the electro-mechanical switches typically used in vehicles and replace them
with DuraSwitch technology, which has fewer parts, Xxxxxxx said. By doing so,
switch degradation and failure rates can be minimized leading directly to more
satisfied vehicle buyers.
"Our exclusive licensing agreement with DuraSwitch will help Delphi
become a leader in automotive switch technology," said Xxxx Xxxxxx, director of
marketing, planning and business development, Delphi Packard Electric. "We see
this switch technology fitting nicely with Delphi's infotainment systems and
devices, as well as other automotive communication applications. It also lends
itself well to the custom styling, differentiation and higher quality that our
customers are requesting."
DuraSwitch, incorporated in 1997, and headquartered in Mesa, Ariz.,
designs and licenses an innovative switch technology that is used to operate
products in a variety of commercial and consumer applications. DuraSwitch became
listed on the American Stock Exchange in August 1999. Some key customers include
Disney World, Rain Bird, Xxxxxxx Outdoors, Raytheon Marine, U.S. Filter and
Frymaster. DuraSwitch can be found on the Internet at xxx.xxxxxxxxxx.xxx
24
* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
25
SCHEDULE 4
Delphi Automotive Systems, headquartered in Troy, Mich., USA, is a world leader
in transportation and mobile electronics components and systems technology.
Delphi's three business sectors - Dynamics & Propulsion; Safety, Thermal &
Electrical Architecture; and Electronics & Mobile Communication - provide
comprehensive product solutions to complex customer needs. Delphi has
approximately 214,200 employees, and operates 178 wholly owned manufacturing
sites, 41 joint ventures, 53 customer centers and sales offices and 27 technical
centers in 39 countries. Regional headquarters are located in Paris, Tokyo and
Sao Paulo, Brazil. Delphi can be found on the Xxxxxxxx xx xxx.xxxxxxxxxx.xxx.
# # #
00
* Indicates where information has been omitted pursuant to a request for
confidential treatment and has been filed separately with the Commission.
