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Exhibit 99.1
TECHNOLOGY AGREEMENT
This TECHNOLOGY AGREEMENT (this "Agreement") is made and entered into
effective as of August 14th, 1998, (the "Effective Date"), by and between
Bionutrics, Inc., a Nevada corporation, with a place of business at 0000 X.
Xxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxx, Xxxxxxx 00000 ("Bionutrics"); Bionutrics
Health Products, Inc., a Delaware corporation, with a place of business at 0000
X. Xxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxx, Xxxxxxx 00000 ("BHP"); Nutrition
Technology Corporation, a Nevada corporation with a place of business at 0000 X.
Xxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxx, Xxxxxxx 00000 ("NTC"); InCon Technologies,
Inc., a Delaware corporation with a place of business at 0000 X. Xxxxxxxxx Xxxx,
Xxxxx 000, Xxxxxxx, Xxxxxxx 00000 ("InCon"); LipoGenics, Inc., a Delaware
corporation, with a place of business at 0000 X. Xxxxxxxxx Xxxx, Xxxxx 000,
Xxxxxxx, Xxxxxxx 00000 ("LipoGenics"); and Bionutrics International, Ltd., a
British Virgin Islands corporation, with a place of business at 0000 X.
Xxxxxxxxx Xxxx, Xxxxx 000, Xxxxxxx, Xxxxxxx 00000 ("Bionutrics International");
(collectively the "Bionutrics Entities"); and AC Humko Corp., a Delaware
corporation, with a place of business at 0000 Xxxxxxxx Xxxxx Xxxxxxx, Xxxxxxx,
Xxxxxxxxx 00000 ("ACH").
W I T N E S S E T H :
WHEREAS, Bionutrics and ACH are entering into a Stock Purchase
Agreement, certain Bionutrics Entities will enter into a Supply Agreement with
ACH, and certain Bionutrics Entities will enter into an Agreement for Purchase
and Sale of Assets in connection with this Technology Agreement with ACH;
In consideration of the payment hereunder, and for other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged by the Bionutrics Entities, the Bionutrics Entities, jointly and
severally, and ACH agree as follows.
1. DEFINITIONS.
(a) "Intellectual Property" shall refer to all intellectual property
rights, including but not limited to, all Patents, Trade Secrets, Copyrights,
and Trademarks, owned by the Bionutrics Entities, whether solely or jointly,
that are used or can be used within the ACH Field of Use.
(b) "Patents" shall refer to (i) all patents, together with any foreign
counterpart patents or foreign counterpart patent applications, as well as any
reissued and reexamined patents and extensions corresponding to the patents that
are used or can be used within the ACH Field of Use, (ii) all patent
applications, as well as any related continuation, continuation in part, and
divisional applications and patents issuing therefrom and any respective foreign
counterpart foreign patent applications or foreign patents issuing therefrom
that are used or can be used within the ACH Field of Use; provided, however, the
foreign counterpart patents and foreign counterpart patent applications shall be
limited to North America. The Patents include, but are not limited to, the
patents and patent applications listed on Exhibit 1 (which include the Joint
Subject Matter Patents).
(c) "Joint Subject Matter Patents" shall refer to those Patents that
include claims directed to both (i) the ACH Field of Use; and (ii) the
Bionutrics Field of Use. As to all present patents and patent
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++ The notation [*] herein indicates information omitted pursuant to a
request for confidential treatment filed with the Commission. The confidential
information has been filed separately with the Commission.
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applications listed on Exhibit 1, the parties hereby agree that the patents and
patent applications that are not listed under the heading "Joint Subject Matter
Patents" are not Joint Subject Matter Patents and are therefore within the scope
of the assignment in Section 2(a).
(d) "Trade Secrets" shall refer to all secret, confidential or
non-public information or know-how owned by the Bionutrics Entities, whether
solely or jointly, including but not limited to, information, ideas, concepts,
improvements, discoveries, inventions, applications of products and services,
results of investigations, studies or experiments products, processes,
compositions, samples, formulas, computer programs, computer hardware designs,
computer firmware designs, and servicing, marketing or manufacturing methods and
techniques that are used or can be used within the ACH Field of Use. The Trade
Secrets include, but are not limited to, the Trade Secrets listed on Exhibit 2.
(e) "Copyrights" shall refer to all works of authorship owned by the
Bionutrics Entities, whether solely or jointly, or authored by the Bionutrics
Entities, whether solely or jointly that are used or can be used within the ACH
Field of Use. The Copyrights include, but are not limited to, the Copyrights
listed on Exhibit 3.
(f) "North America" shall refer to United States of America, Canada,
and Mexico.
(g) "Trademarks" shall refer to the trademarks, service marks, and
trade names, and the goodwill associated with such trademarks, service marks,
and trade names, listed on Exhibit 4.
(h) The "ACH Field of Use" shall refer to the processing in North
America of rice, rice bran, rice bran protein, rice bran oil, and other
rice-derived products (including but not limited to such processes as crushing,
stabilization, extraction, dewaxing, degumming, caustic refining and
deodorization), but excluding any processing steps following deodorization. The
ACH Field of Use expressly excludes processing steps involving [*].
(i) The "Bionutrics Field of Use" shall refer to all technology not
included within the ACH Field of Use, including all compositions of matter
(including formulations, compounds, foodstuffs and dietary supplements), methods
for treating/preventing diseases and processes not included in the ACH Field of
Use.
(j) "Tocols" shall refer to tocotrienols, tocopherols and mixtures
thereof.
(k) "Rice Bran Oil Distillate" shall refer to all rice bran oil
distillate that is not a Bionutrics Distillate.
(l) "Bionutrics Distillate" shall refer to rice bran oil distillate
that is produced using either (i) the [*] processes that are claimed in [*] or
(ii) the [*] processes that are described and claimed in [*].
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(m) "Clearesterol" shall refer to any [*] fraction [*].
(n) "Affiliate" shall mean any Person directly or indirectly
controlling, controlled by, or under direct or indirect common control with, any
other Person. A Person shall be deemed to control a corporation or similar legal
entity if such Person possesses, directly or indirectly, the power to direct or
cause the direction of the management and policies of such corporation or
similar legal entity, whether through the ownership of voting securities, by
contract or otherwise.
(o) "Person" shall mean any natural person, firm, partnership,
association, corporation, limited liability company, company, trust, entity,
public body or government.
2. ASSIGNMENT OF RIGHTS TO ACH.
(a) The Bionutrics Entities, individually and jointly, agree to assign
and transfer and hereby assign and transfer to ACH all of the right, title and
interest in and to all of the Intellectual Property, including but not limited
to, the Patents (excluding the Joint Subject Matter Patents), the Trade Secrets,
the Copyrights, and the Trademarks, including the right to xxx for all past,
present, and future infringements and misappropriation, including damages, of
such Intellectual Property, in North America.
(b) The Bionutrics Entities, individually and jointly, agree to assign
and transfer and hereby assign and transfer to ACH an undivided joint and equal
interest in and to all of the Joint Subject Matter Patents. The Bionutrics
Entities and ACH hereby agree as follows with respect to their respective rights
and duties as to the Joint Subject Matter Patents:
(i) ACH shall have the exclusive rights as to all claims that
cover the ACH Field of Use. The Bionutrics Entities shall have no right
to grant any license, release, or immunity from suit as to the ACH
Field of Use, and the Bionutrics Entities shall have no right to make,
use, offer to sell, sell the patented invention within the ACH Field of
Use or import the patented invention within the ACH Field of Use. [*]
(ii) ACH shall have the exclusive right to xxx in the name of
ACH (or if so required by the law of the forum, to bring suit in the
name of one or all of the Bionutrics Entities or join one or all of the
Bionutrics Entities as a party plaintiff with ACH) for all past,
present, and future infringement, including damages, of such Joint
Subject Matter Patents within the ACH Field of Use. Whenever such suit
is brought by ACH as provided above, ACH shall notify the Bionutrics
Entities in writing of such suit. The Bionutrics Entities shall have
the right, in any such suit brought by ACH, to be represented at their
own expense by counsel of their own selection; provided, however, that
ACH shall have control over such suit and any settlement of such suit,
except that ACH shall not enter into or agree to an order, consent
judgment, or the like that invalidates any of the claims of the Joint
Subject Matter Patents. The Bionutrics Entities
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shall fully cooperate with ACH in the bringing of such suit, including
making their employees available as needed for such suit.
(iii) The Bionutrics Entities shall have the exclusive rights
as to all claims that cover the Bionutrics Field of Use. ACH shall have
no right to grant any license, release, or immunity from suit as to the
Bionutrics Field of Use, and ACH shall have no right to make, use,
offer to sell, sell the patented invention within the Bionutrics Field
of Use, or import the patented invention within the Bionutrics Field of
Use. [*]
(iv) The Bionutrics Entities shall have the exclusive right to
xxx in the name of the Bionutrics Entities (or if so required by the
law of the forum, to bring suit in the name of ACH or join ACH as a
party plaintiff with the Bionutrics Entities) for all past, present,
and future infringement, including damages, of such Joint Subject
Matter Patents within the Bionutrics Field of Use. Whenever such suit
is brought by the Bionutrics Entities as provided above, the Bionutrics
Entities shall notify ACH in writing of such suit. ACH shall have the
right, in any such suit brought by the Bionutrics Entities, to be
represented at its own expense by counsel of its own selection;
provided, however, that the Bionutrics Entities shall have control over
such suit and any settlement of such suit, except that the Bionutrics
Entities shall not enter into or agree to an order, consent judgment,
or the like which invalidates any of the claims of the Joint Subject
Matter Patents. ACH shall fully cooperate with the Bionutrics Entities
in the bringing of such suit, including making employees available as
needed for such suit.
(v) In the event that a suit involves issues as to both the
ACH Field of Use and the Bionutrics Field of Use, both parties shall
have the right to control the litigation as to their specific Fields of
Use. In the event that a suit is filed under Section 2(b)(i) - (iv),
the party not controlling the suit shall have no financial
responsibility for the suit beyond the expense of its own counsel.
(c) Subject to the terms of Section 2(f), the Bionutrics Entities
hereby agree to assign and transfer, and do hereby assign and transfer to ACH,
all right, title and interest in and to all Intellectual Property, including but
not limited to, the Patents (excluding the Joint Subject Matter Patents), the
Trade Secrets, and the Copyrights, developed, conceived, reduced to practice, or
acquired, whether by purchase or license, by any of or all of the Bionutrics
Entities for ten (10) years after the Effective Date of this Agreement,
including the right to xxx for all past, present, and future infringements and
misappropriation, including damages, of such Intellectual Property, in North
America.
(d) Subject to the terms of Section 2(f), the Bionutrics Entities
hereby assign and transfer and do hereby assign and transfer unto ACH an
undivided joint and equal interest in and to all of the Joint Subject Matter
Patents developed, conceived, reduced to practice, or acquired, whether by
purchase or license, by any of or all of the Bionutrics Entities for ten (10)
years after the Effective Date of this Agreement. The Bionutrics Entities and
ACH hereby agree that Section 2(b)(i) - (v) shall also govern with respect to
their respective rights and duties as to the Joint Subject Matter Patents under
this Section 2(d).
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(e) The division of rights as to the Joint Subject Matter Patents in
this Section 2:
(i) shall not be construed to provide any of the Bionutrics
Entities with any right, claim, or cause of action against ACH or its
Affiliates arising out of the sale of products resulting from the
processing of rice, rice bran, rice bran oil, lecithin, waxes, rice
bran protein, Rice Bran Oil Distillates or any other rice-derived
products using any processing steps up through and including
deodorization such as crushing, stabilization, extraction, dewaxing,
degumming, caustic refining and deodorization.
(ii) shall be construed as absolutely and unconditionally
allowing the use and sale by ACH and its Affiliates of rice bran oil,
lecithin, waxes, rice bran protein, Rice Bran Oil Distillates or any
other rice-derived products produced by ACH or its Affiliates using the
Joint Subject Matter Patents or Intellectual Property,
(iii) shall be construed as allowing third parties acquiring
such rice bran oil, lecithin, waxes, rice bran protein, Rice Bran Oil
Distillates or any other rice-derived products produced by ACH or its
Affiliates using the Joint Subject Matter Patents or Intellectual
Property to use and sell such rice bran oil, lecithin, waxes, rice bran
protein, Rice Bran Oil Distillates or any other rice-derived products
without claims and causes of action asserted by the Bionutrics
Entities.
(iv) If a third party acquires such rice bran oil, lecithin,
waxes, rice bran protein, Rice Bran Oil Distillates or any other
rice-derived products produced by ACH or its Affiliates and such third
party either modifies or uses such rice bran oil, lecithin, waxes, rice
bran protein, Rice Bran Oil Distillates or any other rice-derived
products in such a way that it infringes the Bionutrics Entities Field
of Use, then the Bionutrics Entities shall have no claim, cause of
action, or remedy against ACH or its Affiliates for inducing such
alleged infringement or for ACH's sale of such rice bran oil, lecithin,
waxes, rice bran protein, Rice Bran Oil Distillates or any other
rice-derived products; provided, however, the Bionutrics Entities shall
retain all rights and remedies against any third parties for such third
party's allegedly infringing acts.
(f) As to Intellectual Property within the scope of Sections 2(c) and
(d) involving stabilization processes within the ACH Field of Use, the
Bionutrics Entities agree that all such Intellectual Property is hereby assigned
and transferred to ACH as set forth in Sections 2(a) and 2(b). As to such
Intellectual Property regarding stabilization processes, the Bionutrics Entities
shall disclose such Intellectual Property as set forth in Section 7 herein. As
to such Intellectual Property regarding stabilization for which there are rights
outside the ACH Field of Use, neither ACH nor the Bionutrics Entities shall file
a patent application anywhere in the world without the agreement of the other
party. As to any other Intellectual Property within the scope of Sections 2(c)
and (d) involving processing steps in the ACH Field of Use after stabilization
up to and through deodorization, the assignments contemplated under Sections
2(c) and (d) shall be subject to the following terms: All right, title and
interest in and to such Intellectual Property will remain in the Bionutrics
Entities. The Bionutrics Entities shall disclose such Intellectual Property as
set forth in Section 7 herein and provide ACH with the opportunity to acquire
the exclusive rights to such Intellectual Property within the ACH Field of Use.
The parties shall negotiate confidentially in good faith the price or
consideration for the transfer of such Intellectual Property. If ACH and
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the Bionutrics Entities are unable to agree as to the consideration, then the
Bionutrics Entities shall not use or disclose such Intellectual Property to any
third party.
(g) This Agreement is being entered in connection with and ancillary to
the Supply Agreement entered into by the parties on the Effective Date.
3. PAYMENT. In consideration of the assignment and representations and
warranties herein, the Company agrees to pay the Bionutrics Entities Two Million
Dollars ($2,000,000.00) by wire transfer at the time of the Closing. Such amount
shall be wire transferred to the following account in accordance with the
following wire transfer transactions:
[*]
Payment to such account in accordance with the foregoing instructions shall
constitute payment to all Bionutrics Entities and ACH shall not be responsible
for the application of such amount among the Bionutrics Entities.
4. REPRESENTATIONS AND WARRANTIES. The Bionutrics Entities represent
and warrant that:
(a) the Bionutrics Entities are legally free to make and perform this
Agreement, that the Bionutrics Entities have no obligation to any other person
or entity that would affect or conflict with any of their obligations hereunder,
and that the complete performance of the Bionutrics Entities' obligations
hereunder will not violate any law, regulation, order or decree of any
governmental or judicial body or contract by which any of the Bionutrics
Entities is bound;
(b) the patents and patent applications listed on Exhibit 1 are the
only patents or patent applications for which the Bionutrics Entities own or
have filed, jointly or solely, that relate to the ACH Field of Use;
(c) the Bionutrics Entities have not transferred to any third party, by
assignment, mortgage, security interest, license, or otherwise, any of the
rights or title in and to any of the Intellectual Property; and
(d) the Bionutrics Entities have full legal and equitable title to the
Intellectual Property.
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5. THE BIONUTRICS ENTITIES' COVENANT.
(a) The Bionutrics Entities, in order to induce ACH to enter into this
Agreement, expressly covenant and agree that during the Excluded Period, the
Bionutrics Entities will not, and the Bionutrics Entities will cause their
Affiliates not to, directly or indirectly, own, manage, operate, join, control
or participate in with any business, individual, partnership, firm or
corporation, which engages in any business that provides services within the ACH
Field of Use in North America. As used in this Section 5, "Excluded Period"
shall mean the term of this Technology Agreement, but commencing only upon the
Closing Date of the transfer of assets pursuant to the Agreement for Purchase
and Sale of Assets.
(b) Notwithstanding the restrictions contained in Section 5(a), the
Bionutrics Entities or any of their Affiliates may own an aggregate of not more
than 2.5% of the outstanding stock of any class of any corporation engaged in a
business within the ACH Field of Use, if such stock is listed on a national
securities exchange or regularly traded in the over-the-counter market by a
member of a national securities exchange, without violating the provisions of
Section 5(a), provided that none of Sellers or their Affiliates have the power,
directly or indirectly, to control or direct the management or affairs of any
such corporation and are not involved in the management of such corporation.
(c) The Bionutrics Entities further expressly covenant and agree that
for a period of two years from and after the Closing Date, the Bionutrics
Entities will not, and the Bionutrics Entities will cause their Affiliates not
to (1) engage or employ, or solicit or contact with a view to the engagement or
employment by any person who is (or in the twelve months prior to the Closing
Date has been) an officer or employee of NTC; or (2) canvass, solicit, approach
or entice away or cause to be canvassed, solicited, approached or enticed away
from ACH any person who or which is (or in the twelve months prior to the
Closing Date has been) a customer or client of NTC.
(d) To the extent that any part of this Section 5 may be invalid,
illegal or unenforceable for any reason, it is intended that such part shall be
enforceable to the extent that a court of competent jurisdiction shall determine
that such part, if more limited in scope, would have been enforceable, and such
part shall be deemed to have been so written and the remaining parts shall as
written be effective and enforceable in all events.
(e) The Bionutrics Entities and ACH agree and acknowledge that the
limitations as to time, geographical area and scope of activity to be restrained
as set forth in this Section 5 do not impose any greater restraint than is
necessary to protect the legitimate business interests of ACH. The Bionutrics
Entities and ACH further agree and acknowledge that, in the event of a breach or
threatened breach of any of the provisions of this Section 5, ACH shall be
entitled to immediate injunctive relief, as any such breach would cause ACH
irreparable injury for which it would have no adequate remedy at law. Nothing
herein shall be construed so as to prohibit ACH from pursuing any other remedies
available to it hereunder, at law or in equity for any such breach or threatened
breach.
(f) The Bionutrics Entities hereby represent to ACH that they have read
and understand, and agree to be bound by, the terms of this Section. The
Bionutrics Entities acknowledge that the geographic scope and duration of the
covenants contained in this Section are the result of arm's-length bargaining
and are fair and reasonable in light of (i) the nature and wide geographic scope
of the operations of NTC,
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(ii) the Bionutrics Entities' level of control over and contact with NTC
business and operations in all jurisdictions where same are conducted, (iii) the
fact that the NTC business is conducted throughout the geographic area where
competition is restricted by this Agreement, and (iv) the amount of
consideration that the Bionutrics Entities are receiving in connection with the
Agreement and the amount of the goodwill for which ACH is paying. It is the
desire and intent of the parties that the provisions of this Agreement be
enforced to the fullest extent permitted under applicable law, whether now or
hereafter in effect and therefore, to the extent permitted by applicable law,
the parties hereto waive any provision of applicable law that would render any
provision of this Section 5 invalid or unenforceable.
(g) From and after the Effective Date of this Agreement, none of the
Bionutrics Entities will directly or indirectly use in any manner any trade
name, trademark, service xxxx or logo listed on Exhibit 4 or any word or logo
that is similar in sound or appearance.
6. ACH'S COVENANT.
(a) ACH, in order to induce The Bionutrics Entities to enter into this
Agreement, expressly covenants and agrees with Bionutrics that during Excluded
Period, ACH will not, and ACH will cause their Affiliates not to, directly or
indirectly, own, manage, operate, join, control or participate in or with any
business, individual, partnership, firm or corporation, other than the
Bionutrics Entities, which engages in any business that markets or sells
Clearesterol in North America. As used in this Section, "Excluded Period" shall
mean [*] but in no event shall the Excluded Period extend beyond the term of
this Technology Agreement. In addition, the Excluded Period shall commence upon
the Closing Date of the transfer of assets pursuant to the Agreement for
Purchase and Sale of Assets. The covenant is this Section 6 shall only run in
favor of Bionutrics and shall not be assignable or transferable to a third
party.
(b) Notwithstanding the restrictions contained in Section 6(a), ACH or
any of its Affiliates may own an aggregate of not more than 2.5% of the
outstanding stock of any class of any corporation (other than the Bionutrics
Entities) engaged in a business that markets or sells Clearesterol in North
America, if such stock is listed on a national securities exchange or regularly
traded in the over-the-counter market by a member of a national securities
exchange, without violating the provisions of Section 6(a) provided that none of
ACH or its Affiliates have the power, directly or indirectly, to control or
direct the management or affairs of any such corporation and are not involved in
the management of such corporation.
(c) To the extent that any part of this Section may be invalid, illegal
or unenforceable for any reason, it is intended that such part shall be
enforceable to the extent that a court of competent jurisdiction shall determine
that such part, if more limited in scope, would have been enforceable, and such
part shall be deemed to have been so written and the remaining parts shall as
written be effective and enforceable in all events.
(d) ACH agrees and acknowledge that the limitations as to time,
geographical area and scope of activity to be restrained as set forth in this
Section 6 do not impose any greater restraint than is necessary to protect the
legitimate business interests of the Bionutrics Entities. ACH further agrees and
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acknowledges that, in the event of a breach or threatened breach of any of the
provisions of this Section 6, the Bionutrics Entities shall be entitled to
immediate injunctive relief, as any such breach would cause the Bionutrics
Entities irreparable injury for which it would have no adequate remedy at law.
Nothing herein shall be construed so as to prohibit the Bionutrics Entities from
pursuing any other remedies available to it hereunder, at law or in equity for
any such breach or threatened breach.
(e) ACH hereby represents to the Bionutrics Entities that it has read
and understands, and agrees to be bound by, the terms of this Section 6. ACH
acknowledges that the geographic scope and duration of the covenants contained
in this Section 6 are the result of arm's-length bargaining and are fair and
reasonable in light of the nature and wide geographic scope of the operations of
ACH, (ii) ACH's level of contact with the business and operations of Bionutrics
Entities in all jurisdictions where same are conducted, (iii) the fact that the
ACH business is conducted throughout the geographic area where competition is
restricted by this Agreement, and (iv) ACH's access to Bionutrics Intellectual
Property, including Trade Secrets, granted in this Agreement. It is the desire
and intent of the parties that the provisions of this Agreement be enforced to
the fullest extent permitted under applicable law, whether now or hereafter in
effect and therefore, to the extent permitted by applicable law, the parties
hereto waive any provision of applicable law that would render any provision of
this Section 6 invalid or unenforceable.
7. FURTHER ACTS AND COOPERATION. At the request of ACH, the Bionutrics
Entities, individually or jointly as may be requested by ACH, shall execute any
and all papers and perform all lawful acts that ACH may deem necessary or
appropriate to further evidence or carry out the transactions contemplated in
this Agreement including, without limitation, such acts as may be necessary for
the preparation, filing, prosecution, and maintenance of applications for United
States letters patent and foreign letters patent, the assignment of United
States letters patent and foreign letters patent (including but not limited to
those patents identified on Exhibit 1 and assigned under Section 2(a)), or for
United States and foreign copyright, on the Intellectual Property. The
Bionutrics Entities shall also assist and fully cooperate in every way, at ACH's
expense, in securing, maintaining, and enforcing, for the benefit of ACH or its
designee, patents, copyrights or other types of proprietary or intellectual
property protection for the Intellectual Property in any and all countries. In
addition, the Bionutrics Entities shall disclose and provide to ACH all
documents bearing, embodying or disclosing the Intellectual Property so as to
allow ACH to practice and protect such Intellectual Property. With respect to
Intellectual Property within the scope of Sections 2(c) and (d), the Bionutrics
Entities shall make disclosures of the current status and details of any such
Intellectual Property, including any projects, developments, or research within
the ACH Field of Use, every six months. These disclosures shall take place in
status meetings to be scheduled by ACH. ACH shall notify the Bionutrics Entities
of such status meetings. If no status meeting takes place for six months or
longer because ACH fails to schedule such meetings, the Bionutrics Entities will
not be in default of this provision. Once ACH notifies that no status meeting
has taken place for six months, the next status meeting shall take place
promptly but no later than thirty (30) days after such notice.
8. RESTRICTIONS ON TRADE SECRETS AND CONFIDENTIAL INFORMATION.
(a) During the term of this Agreement and thereafter, each of the
Bionutrics Entities agrees not to disclose to others, use, copy or permit to be
copied, except with the express written approval of
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ACH, its successors, assigns or nominees, any of the Trade Secrets assigned
hereunder without the prior written consent of ACH.
(b) As to disclosures by the Bionutrics Entities of Intellectual
Property involving processing steps in the ACH Field of Use after stabilization
up to and through deodorization described in Section 2(f) and as to any
disclosures by ACH of confidential information or trade secrets regarding the
ACH Field of Use other than the Trade Secrets or developed, conceived, reduced
to practice, or acquired, whether by purchase or license, by ACH or its
Affiliates during the term of this Agreement, (collectively referred to in this
Section 8 as "Confidential Information"):
(i) ACH and the Bionutrics Entities agree to hold such Confidential
Information owned by the other party in the strictest confidence and shall
exercise due care to prevent the unauthorized disclosure of such information or
its use for any unauthorized purpose.
(ii) ACH and the Bionutrics Entities shall only disclose the
Confidential Information of the other party to their employees and officers (and
consultants, attorneys, and accountants) who have a need to have access to such
for the purposes of this Agreement, but shall not disclose the same to any
employee or officer who may use such for any other purpose. ACH and the
Bionutrics Entities shall require each employee and officer who is granted
access to such information to agree to abide by the terms of this Section 8.
(iii) ACH and the Bionutrics Entities agree that such Confidential
Information and any developments materially derived therefrom are and shall
remain the sole property of the party disclosing such Intellectual Property (the
"Disclosing Party") or the party owning such Intellectual Property in the case
of Intellectual Property acquired by ACH pursuant to Section 2(f)) .
(iv) Confidential Information shall exclude information that:
(1) is disclosed in a printed or online publication available
to the public, is described in an issued patent anywhere in the world,
is otherwise in the public domain at the time of disclosure, or becomes
publicly known through no wrongful act on the part of the party (or its
Affiliates) receiving the Confidential Information (the "Receiving
Party");
(2) is already known to the Receiving Party at the time of the
disclosure or becomes known to or lawfully available to the Receiving
Party through disclosure by a third party who has not received the
Confidential Information, directly or indirectly, from the Disclosing
Party under an obligation of secrecy;
(3) is disclosed to third parties by the Disclosing Party
without an obligation of confidence being imposed on such third
parties;
(4) is subsequently developed by or for the Receiving Party
without use of the Confidential Information by the Disclosing Party;
and
(5) the Disclosing Party expressly authorizes in writing shall
not be considered
-10-
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Confidential Information.
(v) If a Disclosing Party discloses information it believes is
Confidential Information, the Disclosing Party shall specifically designate
materials bearing the confidential information "CONFIDENTIAL." If a Disclosing
Party discloses orally to the Receiving Party information the Disclosing Party
believes is confidential, the Disclosing Party shall within thirty days of such
disclosure reduce such information to writing and provide such writing to the
Receiving Party marked CONFIDENTIAL.
(f) If any portion of Confidential Information is required to be
disclosed to a governmental regulatory agency or commission, or is otherwise
required to be disclosed by law or regulation, subpoena, civil investigative
demand or similar process, the Receiving Party will inform the Disclosing Party
of such disclosure requirement as soon as practicable after notice of such
requirement is received and will further inform the Disclosing Party which
Confidential Information is required to be disclosed. The Disclosing Party shall
then be completely responsible for seeking any protective order to protect the
confidentiality of the Confidential Information. In the event that the
Disclosing Party is unable to obtain a protective order satisfactory to the
Disclosing Party, after the exhaustion of all applications for writs of mandamus
and all interlocutory appeals from the denial of such a protective order, the
Receiving Party shall have the right to disclose the specific Confidential
Information that is required to be disclosed in the particular proceeding.
9. ENTIRE AGREEMENT. This Agreement sets forth the entire agreement and
understanding between the parties as to the subject matter of this Agreement and
supersedes all prior discussions between them, and neither of the parties shall
be bound by any modification of this Agreement, other than as expressly provided
in this Agreement or as duly set forth on or subsequent to the date hereof in
writing and signed by a duly authorized representative of the party to be bound
thereby. No oral explanation or oral information by either party hereto shall
alter the meaning or interpretation of this Agreement. This Agreement
incorporates the entire agreement of the parties with respect to the subject
matter hereof and supersedes all prior agreements, documents, or other
instruments with respect to the matters covered hereby. The failure of either
party to enforce at any time any provision of this Agreement shall not be
construed as a waiver of such provision. Neither shall the waiver by either
party of a breach by the other party of any provision of this Agreement
constitute a continuing waiver of other breaches of the same provision or a
waiver of any breach of any other provision of this Agreement.
10. ASSIGNMENT. The obligations of this Agreement shall be binding upon
the parties hereto, their successors, assigns, and legal representatives. This
Agreement shall only be assignable or transferable by either ACH or the
Bionutrics Entities in connection with a merger or a sale of all or
substantially all of the assets of a party to which this Agreement relates;
provided, however, ACH may assign this Agreement any or all to its Affiliates;
and provided further, the sale or transfer of substantially all of the business
of ACH related to the Intellectual Property shall be deemed to constitute a sale
of all or substantially all of the assets of ACH for purposes of satisfying the
provisions of this Section 10. In the event of such an assignment or transfer,
the assignor or transferor shall advise the assignee or transferee of the
existence of this Agreement and the obligations hereunder, and such assignee or
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transferee to whom such assignment or transfer has been made shall
unconditionally and without restriction expressly assume and succeed in writing
to all obligations and rights of the assigning party or parties under this
Agreement from and after the date thereof or from and after the date thereof by
executing an agreement memorializing such assumption and succession to such
obligations and rights and shall provide a copy of such agreement to the other
party or parties to this Agreement. Except as set forth in this Agreement, this
Agreement shall not be assignable by any party hereto without the express
written consent of the other parties hereto. Nothing in this Agreement shall be
construed as prohibiting ACH from transferring, assigning, licensing or
sublicensing any or all of its rights in and to the Intellectual Property that
is being assigned to ACH under Section 2 of this Agreement.
11. SEVERABILITY. Should any clause, sentence, term or paragraph of
this Agreement be declared by a court of competent jurisdiction to be invalid,
unenforceable, or void, such decision shall not have the effect of invalidating
or voiding the remainder of this Agreement, and the parties hereto hereby agree
that the part or parts of this Agreement so held to be invalid, unenforceable,
or void shall be deemed to have been stricken, and the remainder of this
Agreement shall have the same force and effect as if such part or parts had
never been included herein.
12. TERM. This term of this Agreement shall become effective on the
Effective Date and shall remain in effect throughout the life of the Patents and
such Patents as may be granted from any applications assigned under this
Agreement, and throughout the life of any other patents now or hereafter covered
by this Agreement.
13. GOVERNING LAW AND FORUM.
(A) CHOICE OF LAW. THIS AGREEMENT SHALL BE GOVERNED BY, CONSTRUED, AND
INTERPRETED IN ACCORDANCE WITH THE PROVISIONS OF, THE LAW OF THE STATE OF
TENNESSEE, WITHOUT REFERENCE TO PROVISIONS THAT REFER A MATTER TO THE LAW OF ANY
OTHER JURISDICTION.
(B) FORUM SELECTION CLAUSE. THE BIONUTRICS ENTITIES (FOR THEMSELVES,
THEIR SUCCESSORS, AND ASSIGNS) AND ACH HEREBY IRREVOCABLY AGREE THAT ANY AND ALL
CLAIMS FOR RELIEF ARISING OUT OF OR RELATING TO THIS AGREEMENT OR ANY OTHER
AGREEMENT EXECUTED IN CONNECTION WITH THIS AGREEMENT (ALL OF WHICH ARE REFERRED
TO AS THE "CLAIMS"), WHETHER SUCH CLAIMS SOUND IN CONTRACT, TORT OR OTHERWISE,
AT LAW OR IN EQUITY, UNDER STATE OR FEDERAL LAW, WHETHER BY STATUTE OR COMMON
LAW, SHALL BE BROUGHT EXCLUSIVELY IN THE STATE OR FEDERAL COURTS LOCATED IN THE
JURISDICTION IN WHICH THE HEADQUARTERS OF THE DEFENDANT IN SUCH SUIT IS THEN
LOCATED. FOR EXAMPLE, AS OF THE EFFECTIVE DATE, ANY CLAIMS BROUGHT AGAINST ACH
SHALL BE BROUGHT EXCLUSIVELY IN MEMPHIS, TENNESSEE, AND ANY CLAIM BROUGHT
AGAINST BIONUTRICS SHALL BE BROUGHT EXCLUSIVELY IN PHOENIX, ARIZONA.
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14. LIMITATIONS OF LIABILITY.
(a) IN NO EVENT SHALL ACH BE LIABLE TO ANY OR ALL OF THE BIONUTRICS
ENTITIES FOR ANY CONSEQUENTIAL, SPECIAL, OR PUNITIVE DAMAGES BASED UPON BREACH
OF WARRANTY, BREACH OF CONTRACT, NEGLIGENCE, STRICT LIABILITY, TORT OR ANY OTHER
LEGAL THEORY. SUCH EXCLUDED DAMAGES INCLUDE, BUT ARE NOT LIMITED TO, LOST
PROFITS, EVEN IF ACH HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
(b) IN NO EVENT SHALL THE BIONUTRICS ENTITIES BE LIABLE TO ACH FOR ANY
CONSEQUENTIAL, SPECIAL, OR PUNITIVE DAMAGES BASED UPON BREACH OF WARRANTY,
BREACH OF CONTRACT, NEGLIGENCE, STRICT LIABILITY, TORT OR ANY OTHER LEGAL
THEORY. SUCH EXCLUDED DAMAGES INCLUDE, BUT ARE NOT LIMITED TO, LOST PROFITS,
EVEN IF THE BIONUTRICS ENTITIES HAVE BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
15. 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
together will constitute one and the same Agreement.
16. NOTICES. Wherever under this Agreement one party is required or
permitted to give notice to the other party, such notice shall be in writing and
shall be delivered personally, sent by facsimile transmission, sent by
nationally recognized express courier or sent by certified, registered, first
class mail. Any such notice shall be deemed given when actually received when so
delivered personally, by facsimile transmission or by express courier, or if
mailed, on the fifth day after its mailing, postage prepaid to the recipient
party addressed as follows:
If to AC HUMKO:
AC HUMKO Corporation
0000 Xxxxxxxx Xxxxx Xxxxxxx
Xxxxxxx, Xxxxxxxxx 00000-0000
000-000-0000 (FAX)
Attention: Xxxxxx X. Xxxxxxx
with a copy to: Xxxxxx & Xxxxxx, L.L.P.
1001 Xxxxxx
0000 Xxxxx Xxxx Xxxxx
Xxxxxxx, Xxxxx 00000
000-000-0000 (FAX)
Attention: Xxxxx X. Xxxxxxxx
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If to BIONUTRICS ENTITIES:
Bionutrics, Inc.
0000 X. Xxxxxxxxx Xxxx
Xxxxx 000
Xxxxxxx, Xxxxxxx 00000
000-000-0000 (FAX)
Attention: Xxxxxx X. Xxxx
with a copy to:
Xxxxxxxx Xxxxxxxxxx L.L.P.
000 Xxxx Xxxxxx
00xx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
000-000-0000 (FAX)
Attention: J. Xxxxxx Xxxxxx
Either party may change its address by a notice given to the other
party in the manner set forth above.
EXECUTED as of the date first written above.
BIONUTRICS, INC.
By: /s/ Xxxxxx X. Xxxx
Name: Xxxxxx X. Xxxx
Title: President and Chief
Executive Officer
BIONUTRICS HEALTH PRODUCTS, INC.
By: /s/ Xxxxxx X. Xxxx
Name: Xxxxxx X. Xxxx
Title: President
NUTRITION TECHNOLOGY
CORPORATION
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By:
Name: Xxxxxxx Xxxxx
Title: President
LIPOGENICS, INC.
By: /s/ Xxxxxx X. Xxxx
Name: Xxxxxx X. Xxxx
Title: Vice President
INCON TECHNOLOGIES, INC.
By:
Name: Xxxx Xxxxxx
Title: Chairman and CEO
AC HUMKO CORP.
By: /s/ Xxxxx Xxxxxxxxxxxxx
Name: Xxxxx Xxxxxxxxxxxxx
Title: Vice President
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EXHIBIT 0
XXXXXXX
XXXXXXX # XXXXXX
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Xxxxxx Xxxxxx [*] [*]
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Joint Subject Matter Patents
COUNTRY # STATUS
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United States [*] [*]
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Canada [*] [*]
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United States [*] [*]
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United States [*] [*]
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United States [*] [*]
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Canada [*] [*]
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Mexico [*] [*]
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United States [*] [*]
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United States [*] [*]
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United States [*] [*]
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United States [*] [*]
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EXHIBIT 2
TRADE SECRETS
Proprietary information and know-how associated with:
- the design and operation of the Monroe, Louisiana processing plant
- rice bran oil extraction, degumming and dewaxing processes
- the manufacture of Bionutrics Distillate Products including
Clearesterol, P25 etc. (including the deodorization process)
- protein extraction and concentration from rice bran
- rice bran procurement, handling and stabilization
- the production of Rice Bran Oil Distillate and Derivative Products
-17-
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EXHIBIT 3
COPYRIGHTS
Federal copyright rights in any reports, tables, drawings,
compilations, data and other writings owned by any of the Bionutrics Entities
within the ACH Field of Use.
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EXHIBIT 4
TRADEMARKS
Common law rights in the name "Nutrition Technology Corporation", "Nutrition
Technology Corporation, Inc." and other like designations used by NTC in
identifying itself in business dealings with third parties.
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