PATENT LICENSE AGREEMENT
Exhibit
10.17
THIS
PATENT LICENSE AGREEMENT (this "Agreement") is effective as of 12 January 2009
(the "Effective Date"), by GPS Industries, Inc., a Nevada corporation having its
principal place of business in Sarasota, Florida ("GPSI") and GolfView
Investors, LLC, a Florida limited liability company with its principal place of
business in Sarasota, Florida ("GolfView ").
WHEREAS,
GPSI, through its wholly-owned subsidiary Optimal Golf Solutions, Inc. (“OGSI”),
is the sole and exclusive owner of Licensed Patents relating to a method and
apparatus for determining the distance between various locations on golf courses
using GPS technology;
WHEREAS,
GPSI and GolfView desire to enter into an agreement whereby GolfView is granted
an exclusive license to practice the Licensed Methods in the Software Only
field;
NOW
THEREFORE, the parties agree as follows:
1. Definitions.
a. “Authorized
Seller” means GolfView, GPSI, or a sublicensee in the case of a sublicense
authorized by this Agreement, depending on the context.
b.
“Chain of Distribution” means suppliers, distributors, OEM partners, agents, and
related companies engaged by an Authorized Seller in the manufacture, use,
offering for sale, sale or importation of Handheld Devices (including wireless
carriers and other distributors of software products for handheld hardware
devices), and to all end users or purchasers of any Handheld
Device.
c. “GPS
Golf Software Applications” means all software applications practicing or
covered by the Licensed Patent, and intended for use with a GPS enabled handheld
hardware device, such as a PDA, PND or cell phone, and digital course maps
adapted for use with said software applications.
d. “Software
Only Products” means GPS Golf Software Applications where only the GPS Software
Applications are made by or for the Authorized Seller and sold and/or
distributed in the Authorized Seller’s Chain of Distribution to the End
User. “Software Only Products” specifically excludes such GPS Golf
Software Applications that are preloaded on a handheld device at the time of
sale or distribution of the device.
e. "Continuation"
means, with respect to patents and patent applications, a re-filing of a
specification filed in a prior patent application for which priority is claimed
in whole or in part, with or without the presence of new matter or of matter or
claims divided from the prior patent application, and without regard to whether
or not a patent has matured from the prior patent application.
f. "Course"
means a golf course.
g. "Course
Management" means tracking the position of a golfer on a Course with Licensed
Methods using GPS.
h. "Distance
Measurement" means measuring distance from a GPS receiver on a Course to a
feature on the Course using GPS.
i. “End
User” means the end user of a handheld device such as a mobile telephone or PDA
excluding retailers, resellers, wholesalers, distributors, and service providers
of a handheld device.
j. "Licensed
Patent" means U.S. Patent No. 5,364,093 issued on November 15, 1994
assigned to GPSI and entitled "Golf Distance Measuring System and Method"
including all continuation, divisional, continuation-in-part, and otherwise
related applications.
k. "Licensed
Methods" means methods relating to Distance Measurement and/or Course Management
on a Course using GPS-enabled Software Only Products which, in the absence of
this Agreement, would infringe at least one claim of the Licensed
Patents.
l. "Licensed
Territory" means the United States and any region in which an activity of
GolfView is covered by the Licensed Patent.
2. Grant.
a. GPSI
grants to GolfView a perpetual, non-terminable, royalty-free, limited
exclusive license under the Licensed Patent to practice Licensed Methods by
developing, making, having made, using, selling, offering for sale, leasing,
importing, distributing and otherwise disposing of Software Only Products and in
and into the Licensed Territory. Such grant shall include without
limitation GolfView’s Chain of Distribution, which includes GolfView’s right to
sublicense End Users.
b. The
exclusivity referenced herein is expressly subject to the terms of that certain
Replacement License Agreement by and between GPSI, OGSI and Optimal IP Holdings
LP (“Optimal IP”) dated as of 31 December 2008, attached hereto as Exhibit A
(the “Optimal IP License Agreement”), with such limited exclusivity subject to
Optimal IP’s express license rights contained therein. Consistent
with the foregoing, the exclusivity referenced herein shall be construed to the
maximum extent allowable under the Optimal IP License Agreement.
3. License
Fee. In consideration of the license granted herein, GolfView shall
issue to GPSI a membership interest in GolfView pursuant to the Operating
Agreement of GolfView dated as of 12 January 2009 attached hereto as Exhibit B
(the “Operating Agreement”).
4. Patent
Marking. No Patent marking of the Licensed Patent shall be required of
GolfView
5. Assignability.
a. Except
as set forth in this Section, this Agreement and the rights, licenses and
obligations hereunder may not be assigned by GolfView without the express
written consent of GPSI. This Agreement shall be binding upon and inure to the
benefit of the Parties hereto, their permitted assigns, trustees or receivers in
bankruptcy or successors by merger, purchase of assets or
otherwise.
b. GolfView
may assign this Agreement and the rights and obligations hereof to an acquirer
of substantially all of the assets of GolfView.
c. GPSI
shall have the right to assign this Agreement, and the rights, licenses and
obligations thereof.
6. Warranties,
Disclaimers and Indemnification.
a. GPSI
Representations and Warranties. GPSI represents and warrants to
GolfView, as of the Effective Date of this Agreement that:
i. GPSI
has the power to enter into this Agreement and to grant the license granted
herein to GolfView, and no consent of any other person is required
therefore;
ii. GPSI
is not party to an existing agreement with any other party that materially
conflicts with this Agreement or the license granted herein to
GolfView.
b. GPSI
Warranty Disclaimer. GPSI DISCLAIMS ANY WARRANTY AS TO VALIDITY OF
THE LICENSED PATENT, NON-INFRINGEMENT OF LICENSED PRODUCTS, AND ANY WARRANTY AS
TO THE ACCURACY, SUFFICIENCY OR SUITABILITY OF THE LICENSED PRODUCTS AND ASSUMES
NO RESPONSIBILITY OR LIABILITY FOR LOSS OR DAMAGES, WHETHER DIRECT, INDIRECT,
CONSEQUENTIAL, OR INCIDENTAL WHICH MIGHT ARISE OUT OF ANOTHER'S USE OF THE
LICENSED PRODUCTS, WHICH SHALL BE ENTIRELY AT GOLFVIEW 'S OR IT'S SUBLICENSEE'S
RISK AND PERIL.
c. GolfView
Representations and Warranties. GolfView represents and warrants to
GPSI, as of the Effective Date of this Agreement, that GolfView has the power to
enter into this Agreement and no consent of any other person is required
therefore.
7. Limitation
of Liability. IN NO EVENT SHALL EITHER PARTY HAVE ANY LIABILITY FOR
ANY INDIRECT, INCIDENTAL, SPECIAL CONSEQUENTIAL OR RELIANCE DAMAGES (INCLUDING
ANY LIABILITY TO THE OTHER PARTY FOR LOST PROFITS OR BUSINESS OPPORTUNITIES)
HOWEVER, CAUSED AND ON ANY THEORY OF LIABILITY (INCLUDING NEGLIGENCE), ARISING
OUT OF THIS AGREEMENT, INCLUDING (BUT NOT LIMITED TO) LOSS OF ANTICIPATED
PROFITS, EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH
DAMAGES.
8. GPSI
Obligation to Maintain. GPSI shall be obligated to continue to
maintain the Licensed Patent by payment of the required patent maintenance
fees. GPSI shall keep GolfView timely informed as to the maintenance
of the Licensed Patent. If at any time GolfView determines
that GPSI is not performing its obligation to maintain the Licensed Patent under
this Section, GolfView has the right to assume control of (and
GPSI agrees to assist GolfView with) such patent
maintenance.
9. Infringement
by Third Parties.
a. The
terms of that certain Amended Patent Enforcement Cooperation Agreement by and
between GPSI, OGSI and Optimal IP dated as of 31 December 2008, attached hereto
as Exhibit C (the “Enforcement Agreement”), shall govern enforcement of the
Licensed Patent, and GolfView agrees and acknowledges that it has no third party
beneficiary rights under the Enforcement Agreement and no rights to any awards
or license fees generated thereunder. GPSI agrees and acknowledges
that GolfView has no obligations or liabilities under the Enforcement
Agreement.
b. Each
Party acknowledges that in addition to the immediately foregoing, the
Confidential Attorney Retainer Agreement between GPSI, OGSI, Optimal IP and
Shore Xxxx Xxxxxxxxx LLP dated as of 21 February 2007 (the “Retainer Agreement”)
governs enforcement of the Licensed Patent as it pertains to legal
representation and the terms thereof for any enforcement
actions. The Retainer Agreement referenced herein is not
attached due to its confidentiality; however, GolfView may elect, at its option,
to review redacted portions of the Retainer Agreement on an “outside counsel
eyes only” basis, until such time as GolfView is considered a common legal
interest party such that reviewing the Retainer Agreement will not be considered
a waiver of the attorney client privilege, at which time GolfView may review the
Retainer Agreement directly and in its entirety.
c. GolfView
agrees and acknowledges that enforcement actions under the Licensed Patents are
governed by the pre-existing agreements referenced above and GolfView has no
rights to enforce the Licensed Patent except to the extent that each of the
third parties referenced in subsections (a) and (b) above and GPSI unanimously do not
object in each of its and their sole and unfettered discretion, which objection
may be raised arbitrarily for any reason or no reason.
10.
Term and Termination.
a. The
term of this Agreement shall commence on the Effective Date hereof, and shall
continue in effect for so long as any claim in the Licensed Patent is valid and
subsisting, unless terminated earlier as provided in this section.
b. This
Agreement may be terminated by mutual, written agreement of the
parties.
c. This
Agreement may be terminated if a party to this Agreement commits a material
breach of any material provision herein upon written notice to the defaulting
party and such default is not cured within 45 days of such
notice.
d. All
rights and licenses granted under or pursuant to this Agreement by GPSI to
GolfView are, and shall otherwise be deemed to be, for purposes of Section
365(n) of Title 11, U.S. Code (the "Bankruptcy Code"), licenses and rights to
"intellectual property" as defined under Section 101 of the Bankruptcy Code. The
Parties agree that GolfView, as licensee of such rights under this Agreement,
shall retain and may fully exercise all of its rights and elections under the
Bankruptcy Code. In the event that GPSI otherwise defaults under this
Agreement or otherwise ceases, discontinues or terminates all business activity,
this Agreement and license shall survive such dissolution, default, cessation,
discontinuation or termination.
11.
Effect of Termination and Expiration.
a. Effect
of Termination. Upon early termination of this Agreement under
Paragraphs 10.2 and 10.3 of Article 10 hereof, the license granted herein to
GolfView may only terminate upon early termination of this Agreement due to a
GolfView material breach, except that GolfView (or its assignee) shall have the
right thereafter to sell or lease its inventory of Handheld Devices remaining on
the date of the termination.
b. Survival. Articles
9-11 and Paragraph 12(c) shall survive expiration or termination of this
Agreement.
12.
General
Provisions.
a. Waiver
or Modification. The waiver, amendment or modification of this
Agreement or any right or obligation hereunder shall not be effective unless
agreed to by each of the parties in writing.
b. Force
Majeure. Neither party will be deemed in default of this Agreement to
the extent that performance of its obligations or attempts to cure any breach
are delayed or prevented by reason of any act of God, fire, natural disaster,
accident, act of government, shortages of material or supplies or any other
cause beyond the control of such party, provided that such party gives the other
party written notice thereof promptly and, in any event, within thirty (30) days
of discovery thereof and uses good faith efforts to so perform or
cure. In the event of such a Force Majeure, the time for performance
or cure will be extended for a period equal to the duration of the Force Majeure
but not in excess of six (6) months unless agreed to by both parties in
writing.
c. Governing
Law. This Agreement shall be governed by the laws of the State of
Florida.
d. Severability. If
any provisions of the Agreement or the application of any such provision shall
be held to be contrary to law, the remaining provisions of this Agreement shall
continue in full force and effect.
e. Entire
Agreement. The parties acknowledge that this Agreement expresses
their entire understanding and agreement with respect to Licensed Products sold
or installed after the Effective Date of this Agreement, and that there have
been no warranties, representations, covenants or understandings made by either
party to the other except such as are expressly set forth herein.
IN
WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed in
duplicate by duly authorized officers effective on the date and year first
written above.
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GPS
INDUSTIES, INC.
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GOLFVIEW
INVESTORS, LLC
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By:
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By:
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Its:
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Its:
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Exhibit
A
Optimal
IP License Agreement
Exhibit
B
Operating
Agreement of GolfView Investors LLC
