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EXHIBIT 10a
LICENSE AND COLLABORATION AGREEMENT
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This Agreement (the "Agreement") is made and entered into this 28th day of
November, 1994 by and among Polaroid Corporation, a Delaware corporation having
its principle place of business at 000 Xxxxxxxxxx Xxxxxx, Xxxxxxxxx,
Xxxxxxxxxxxxx 00000 ("Polaroid"), and Triple I Corporation, a Delaware
corporation having its principle place of business at One Xxxxxx Research
Center, 000 Xxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000 ("Triple I").
WHEREAS, the parties desire to promote the development, marketing and sales
in the field of printed circuit board production of an image processing system
consisting of a plotter or other image processing device designed by Triple I
and using Polaroid's laser imagable film; and to collaborate in the fields of
Automatic Inspection and PCB PhotoTool generation.
In consideration of the mutual promises, covenants, representations and
warranties contained in this Agreement, the parties agree as follows:
1. DEFINITIONS.
"Automatic Inspection" shall mean the inspection of manufactured mechanical
and electronic products, components and subassemblies, using computer analysis
and processing techniques for image interpretation and control signal
generation.
"Developed Product" shall mean a product, process or service which has been
offered for sale to the general public or as to which development has been
substantially completed and firm plans exist to offer the product, process or
service for sale to the general public within 6 months.
"Triple I Electronic Imaging Intellectual Property" shall mean all
Intellectual Property in electronic imaging devices and components and
subassemblies thereof that incorporate, embody, use or are designed or produced
using Technology developed by Triple I during. the term of this Agreement that
either arises out of a collaboration between the parties or results from
proprietary information provided by Polaroid.
"Exploit" shall mean to utilize, and "Exploitation" shall mean the
utilization of, any Technology in any manner, including without limitation
making, having made, using, selling, leasing, and renting, and in the case of
Technology that is a work of authorship, includes copying or creating derivative
works of such Technology.
"Intellectual Property" shall mean all proprietary rights in Technology,
including all Patents, copyrights, mask works, trade secrets, licenses and
proprietary information, whether existing now or in the future.
"Joint Intellectual Property" shall mean all Intellectual Property in
Technology as to which employees of both Triple I and Polaroid would be
considered joint inventors or joint authors under applicable principles of
patent or copyright law, regardless of whether such
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Intellectual Property would be patentable or copyrightable, PROVIDED THAT Joint
Intellectual Property shall not include any Medium Intellectual Property or
Medium Subject Matter Intellectual Property.
"Medium" shall mean a laser imagable film for the production of high
resolution images in dry image-forming substance.
"Medium Subject Matter" shall mean any Medium, method of (or apparatus for)
developing an image from the Medium or method of (or apparatus for) stabilizing,
protecting or otherwise improving or enhancing the image attributes of such an
image.
"Medium Intellectual Property" shall mean all Intellectual Property in
Technology related to any Medium and which arises out of a collaboration between
the parties or is derived from proprietary information provided by Polaroid.
"Medium Subject Matter Intellectual Property" shall mean all Intellectual
Property in Technology related to Medium Subject Matter and which arises out of
a collaboration between the parties or is derived from proprietary information
provided by Polaroid.
"Patent" shall mean any: (i) United States or foreign patent, patent
application, patent disclosure or other patent right; (ii) any division,
continuation, continuation-in-part or similar extension of an application that
is a Patent; and (iii) any patent or other patent right that issues or is based
upon an application that is a Patent.
"PCB" shall mean a printed circuit board device used to interconnect
electrical, optoelectrical or mechanical components and requiring a laser
Plotter in the production thereof.
"PCB Field" shall mean areas of technology and business related to the
production of a printed circuit board (PCB) device.
"Plotter" shall mean a print engine, recorder or other electromechanical
device, including film handling and laser exposure means, for the laser exposure
and processing of a Medium into an image useful, for example, as a PhotoTool in
the production of printed circuit boards.
"PhotoTool" or "Art Work" shall mean an image which is prepared from a
Medium and used in the production of a PCB device.
"Polaroid Imaging Intellectual Property" shall mean all Intellectual
Property in Technology related to apparatus for and methods of acquiring,
processing or recording image information, and susceptible of application in the
fields of Automatic Inspection and PhotoTool generation, now or hereafter owned,
developed, or otherwise acquired by Polaroid, including as a result of this
Agreement.
"Technology" shall mean all inventions, discoveries, innovations, know-how,
information and all other forms of technology, including improvements,
modifications, derivatives or
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changes, whether tangible or intangible, embodied in any form, including
software, hardware and integrated circuit chips (e.g., analog line version),
whether or not protectible or protected by patent, copyright, mask work right,
trade secret law or otherwise.
"Triple I Intellectual Property" shall mean all Intellectual Property in
Technology susceptible of application in the fields of optics and image
acquisition, now or hereafter owned, developed or otherwise acquired by Triple
I, including as a result of this Agreement.
2. RESEARCH & DEVELOPMENT.
a. SYSTEM INTEGRATION. Triple I shall be the overall system integrator of
a system for use in the PCB Field and including a Plotter and Medium.
b. DEVELOPMENT OF MEDIUM. Polaroid shall be responsible for development
of the Medium and; aspects of image quality attributable to the Medium Subject
Matter.
c. PRODUCT REQUIREMENTS. The determination and validation of the product
requirements for the Medium and for the Plotter shall be jointly determined and
validated. Triple I shall lead such joint determination and validation.
3. MANUFACTURING.
a. MEDIUM. Polaroid shall manufacture the Medium. Polaroid shall
manufacture Medium in sufficient quantities to meet Triple I's needs, as set
forth in Triple I's Sales Forecasts. Polaroid shall adhere to the highest
standards of quality in manufacturing the Medium.
b. PLOTTER. Triple I shall manufacture, or have manufactured, the
Plotter. Triple I shall adhere to the highest standards of quality in
manufacturing the Plotter, and shall impose the same requirement upon any third
party that Triple I engages to manufacture the Plotter.
c. INTERFACES. Triple I shall be responsible for providing all interfaces
between the Plotter and other hardware.
4. MARKETING.
a. MARKETING PLANS. Triple I shall develop, with the assistance of
Polaroid, plans for marketing the Medium and the Plotter. Triple I's marketing
plans shall include product positioning, pricing, packaging, promotion and
placement.
b. MARKETING IN THE PCB FIELD. Triple I shall have the right to market
and sell the Medium in the PCB Field. Except as set forth in the following
subparagraphs d. and e., Triple I's right to market and sell the Medium in the
PCB Field shall be exclusive.
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c. MILESTONES. Triple I agrees to use all commercially reasonable efforts
to meet the performance milestones set forth in Exhibit A, which milestones may
be amended from time to time by mutual agreement of the parties.
d. FAILURE OF PERFORMANCE MILESTONES. In respect of any of the
performance milestones set forth in paragraphs 1 through l0 of Exhibit A
("Performance Milestone(s)"), Triple I shall, within thirty (30) days of the end
of any quarter in which it is determined that any such Performance Milestone
will not be realized, provide Polaroid with a written report explaining Triple
I's failure to meet any such Milestone and an undertaking by Triple I of steps
necessary to ensure that it will meet such Milestone for the ensuing period. If
Triple I fails during two consecutive quarters to meet its Performance
Milestones, Polaroid may effective upon written notice from Polaroid to Triple
I, elect at its option to (a) give notice of its willingness to revise any such
Performance Milestone by a written mutual agreement which sets a revised
(extended) date for performance of such Milestone; or (b) convert Triple I's
right to market and sell the Medium in the PCB Field to a non-exclusive right.
In the event that the parties undertake to revise any Performance Milestone by a
written mutual agreement which extends the date for such Performance Milestone,
Polaroid shall have the right, if any such Milestone remains unrealized by the
end of the extended date, to exercise option (b) recited in this paragraph. The
election of Polaroid to pursue revision (extension) of the date for performance
of any Performance Milestone and consequent inability of the parties to reach an
agreement extending the date for performance of such Milestone shall not
preclude Polaroid from electing the option (b) of converting Triple I's right to
market and sell the Medium in the PCB field to a non-exclusive right.
Notwithstanding the foregoing, Triple I shall not be responsible for failing to
meet any Performance Milestone if such failure is the result of a failure by
Polaroid to supply quantities of Medium as required or the failure of Polaroid
to meet a material obligation required by this Agreement.
f. MARKET INFORMATION AND PLANNING. Triple I shall advise Polaroid
promptly concerning any market information that may come to Triple I's attention
regarding Polaroid, Polaroid's market position or the continued competitiveness
of the Medium in the marketplace, including but not limited to charges,
complaints, or claims by customers, or other persons, about Polaroid or its
products, process or services. Triple I shall confer from time to time, at the
request of Polaroid, on matters relating to market conditions, sales forecasting
and product planning. In addition, Polaroid shall have access, via Triple I, to
Triple I's customers for the purposes of obtaining feedback concerning product
quality and customer needs and conducting technical and market testing.
5. SALES BY POLAROID. Polaroid shall sell Polaroid branded Medium to Triple I
in sufficient quantities to meet Triple I's requirements, as set forth in Triple
I's Sales Forecasts. In the event that Polaroid does not have sufficient
inventory to meet Triple I's requirements and Polaroid's other commitments to
supply Medium, Polaroid shall allocate a portion of its production of Medium to
Triple I in the proportion that Triple I's then existing non-cancelable orders
bears to total orders, until Polaroid is again meeting Triple I's requirements.
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6. POLAROID: PRICES AND PAYMENT.
a. PRICES. Medium will be sold to Triple I * , as it may be amended or
modified from time to time by Polaroid, unless otherwise agreed to by formal
price quotation. The amount of the aforesaid * shall be set by the * of product
specifications for the Medium.
b. PRICE INCREASE OR DECREASE. Polaroid may, upon thirty (30) days
written notice, increase the prices for the Medium. Any increase shall apply to
any order received by Polaroid after the date of the written notice, except that
any increased price shall not apply to any firm order received by Polaroid
during the thirty day notice period so long as shipment occurs no later than
forty-five (45) days after the date of notice. Polaroid may decrease its prices
without providing advance notice to Triple I. Price decreases shall apply to all
Medium ordered but not yet shipped on the effective date of the decrease. Triple
I will receive a credit equal to the difference between the net price paid by
Triple I for Medium in Triple I's inventory, less any prior credits granted by
Polaroid as to such Medium, and the new decreased price provided that (i) the
Medium have been in Triple I's inventory less than one hundred twenty days from
date of shipment and in a new and undamaged condition as of the effective date
of the price decrease.
c. TAXES. TARIFFS. FEES. Polaroid's prices do not include any federal,
state or local sales, use, value added or other taxes, customs duties, or
similar tariffs and fees which Polaroid may be required to pay or collect upon
the sale or delivery of Medium or upon collection of the sales price. Should any
tax or levy be made, Triple I agrees to pay such tax or levy and indemnify
Polaroid for any claim for such tax or levy demanded.
d. PAYMENT. All payments shall be made at the address designated by
Polaroid.
e. CREDIT TERMS. Shipments shall be made on credit terms with payment due
forty-five (45) days after shipment.
f. OTHER TERMS OF SALE. Except to the extent inconsistent, with this
Agreement, all sales of Medium by Polaroid to Triple I shall be on Polaroid's
standard terms and conditions of sale.
g. DELIVERY OF TERMS AND CONDITIONS. Within sixty (60) days following
execution of the Agreement, Polaroid shall provide to Triple I its standard
terms. and conditions of sale.
7. RESALE PRICING.
Polaroid may advise Triple I of an established list price for the Medium.
Triple I shall establish the actual end user pricing for the Medium. Polaroid
shall provide information to assist Triple I in establishing the actual end user
pricing, but Triple I shall have the sole right to determine the price actually
charged for the Medium.
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*Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
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8. SERVICE.
a. END USER SERVICE. Triple I shall provide end user service to Triple
I's customers.
b. BACK-UP SUPPORT. Polaroid shall provide back-up technical support
concerning the Medium Subject Matter to the Triple I personnel providing end
user support. Polaroid shall designate a technical support contact who shall be
responsible for providing support to Triple I. The technical support contact
shall have at least 9 months experience working with the Medium Subject Matter.
c. TRAINING. Polaroid shall be responsible for providing training
concerning the Medium Subject Matter to end users, Triple I engineers and Triple
I support personnel, as appropriate.
d. PERFORMANCE REPORTS. Triple I shall provide quarterly performance
reports to Polaroid that report any feedback received by Triple I from its
customers concerning the Medium.
9. LICENSES.
a. TRIPLE I LICENSE TO POLAROID IMAGING INTELLECTUAL PROPERTY.
Polaroid grants to Triple I a worldwide, royalty-free, nonexclusive license, to
commercially exploit and otherwise use, within the fields of Automatic
Inspection and PhotoTool generation, Polaroid Imaging Intellectual Property.
b. POLAROID LICENSE TO TRIPLE I INTELLECTUAL PROPERTY. Triple I grants
to Polaroid a worldwide, royalty-free, nonexclusive license to commercially
exploit and otherwise use, within the fields of optics and image acquisition,
recording and processing, Triple I Intellectual Property.
c. POLAROID LICENSE. TO ELECTRONIC IMAGING INTELLECTUAL PROPERTY.
Triple I grants to Polaroid a worldwide, royalty-free, nonexclusive license to
commercially exploit and otherwise use Triple I Electronic Imaging Intellectual
Property.
d. NO NEW BUSINESS. In the event that either party desires to market a
new product, process or service incorporating any Intellectual Property licensed
from the other under this section: the party shall inform the other party in
writing, describing the product, process or service and the manner in which the
Intellectual Property is to be used. The commercialization of any such new
product, process or service that substantially embodies or is substantially
based upon or derived from Intellectual Property licensed from the other party
shall require a new agreement which the parties shall negotiate in good faith.
For the purposes of the requirements of this section, a product, process or
service shall not be considered "new" if the licensed Intellectual Property is
(i) used in a product, process or service offered on the effective date of this
Agreement; (ii) used in a product, process or service within the scope of a
business, research
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or strategic plan existing at the time of this Agreement; (iii) used for minor
improvement or evolutionary enhancement of a product, process or service offered
on the date of this Agreement or (iv) used for a minor improvement or
evolutionary enhancement of a product, process or service within the scope of a
business, research, or strategic plan existing at the time of this Agreement but
offered subsequent to the effective date of this Agreement.
10. OWNERSHIP OF INTELLECTUAL PROPERTY.
a. INTELLECTUAL PROPERTY RELATED TO MEDIUM AND MEDIUM SUBJECT MATTER.
Triple I hereby assigns and agrees to assign to Polaroid all Medium Intellectual
Property and Medium Subject Matter Intellectual Property.
b. JOINT INTELLECTUAL PROPERTY. Joint Intellectual Property will be
owned jointly by Triple I and Polaroid. To the extent necessary to accomplish
this result, Triple I hereby assigns and agrees to assign an undivided 50%
interest in all Joint Intellectual Property to Polaroid, and Polaroid hereby
assigns and agrees to assign an undivided 50% interest in all Joint Intellectual
Property to Triple I.
c. NO NEW BUSINESS In the event that either party desires to market a
new product, process or service incorporating, embodying or substantially based
upon Joint Intellectual Property, the party shall inform the other party in
writing, describing the product, process or service and the manner in which the
Joint Intellectual Property is to be used. The commercialization of any such
new product, process or service that incorporates, substantially embodies or is
substantially based upon such Joint Intellectual Property shall require a new
agreement which the parties will negotiate in good faith. For purposes of the
requirements of this section, a product, process or service shall not be
considered "new" if the licensed Intellectual Property is (i) used in a product,
process or service offered on the effective date of this Agreement; (ii) used in
a product, process or service within the scope of a business, research or
strategic plan existing at the time of the Agreement; (iii) used for minor
improvement or evolutionary enhancement of a product, process or service offered
on the date of this Agreement or (iv) used for a minor improvement or
evolutionary enhancement of a product, process or service within the scope of a
business, research, or strategic plan existing at the time of this Agreement but
offered subsequent to the effective date of this Agreement.
d. LICENSE OR SALE OF JOINT INTELLECTUAL PROPERTY. Neither Triple I
nor Polaroid shall, without the prior written permission of the other, sell,
license or otherwise transfer the whole or any part of its interest in Joint
Intellectual Property, except to (i) a successor by merger, business combination
or reorganization involving ownership of all or substantially all of the
transferor's assets; or (ii) a purchaser of all or substantially all of the
transferor's assets.
11. REPRESENTATIONS AND WARRANTIES.
a. REPRESENTATIONS AND WARRANTIES OF POLAROID. Polaroid represents and
warrants that:
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i. no impediment exists to its entering into this Agreement, and that
no other Agreement has been or shall be made with any third party which
will interfere with its performance under this Agreement.
ii. it is a corporation duly organized and validly existing under the
laws of Delaware, and has all requisite power and authority to execute,
deliver and perform this Agreement and any other agreements contemplated
hereby and to consummate the transactions contemplated hereby.
The warranties expressed above shall survive any termination or
nonrenewal of this Agreement. Polaroid shall defend, at its expense, and
shall pay all costs and damages awarded for any claim against Triple I to
the extent that such claim is based upon a breach by Polaroid of its
warranties hereunder.
THE WARRANTIES SET FORTH IN THIS SECTION ARE IN LIEU OF ALL OTHER
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
b. REPRESENTATIONS AND WARRANTIES OF TRIPLE I. Triple I represents and
warrants that:
i. no impediment exists to its entering into this Agreement, and that
no other Agreement has been or shall be made with any third party which
will interfere with its performance under this Agreement.
ii. it is a corporation duly organized and validly existing under the
laws of Delaware, and has all requisite power and authority to execute,
deliver and perform this Agreement and any other agreements contemplated
hereby and to consummate the transactions contemplated hereby.
The warranties expressed above shall survive any termination or
nonrenewal of this Agreement. Triple I shall defend, at its expense, and
shall pay all costs and damages awarded for any claim against Polaroid to
the extent that such claim is based upon a breach by Triple I of its
warranties hereunder.
THE WARRANTIES SET FORTH IN THIS SECTION ARE IN LIEU OF ALL OTHER
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
12. TRADEMARKS, TRADE NAMES AND COPYRIGHTS. During the term of this Agreement,
Triple I is authorized to use the trademark "Polaroid" and all other trademarks
or tradenames directly associated with the Medium in connection with Triple I's
advertisement, promotion and distribution of the Medium, only in such form and
manner as is specifically approved by Polaroid. Before any such use of
trademarks, Triple I shall submit to Polaroid, for its written
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approval, finished art work for all advertising material, publicity and
promotional material, sales and trade literature, and any other material bearing
or making reference to Polaroid trademarks. Any such material submitted to
Polaroid and not disapproved within fifteen (15) days after receipt shall be
deemed to have been approved. Upon expiration or termination of this Agreement,
Triple I will cease all display, advertising and use of all Polaroid names,
marks, logos and designations. Triple I will not alter, erase or overprint any
notice of proprietary rights on anything provided by Polaroid and will not
attach any additional trademarks, logos or designations to the Medium or affix
any Polaroid trademark, logo or designation to any non-Polaroid product.
13. TERM OF AGREEMENT This Agreement (i) shall be effective from the date first
written above; (ii) shall, unless earlier terminated pursuant to the terms
hereof, remain in effect for a term of eight (8) years from such date; (iii)
shall be reviewed by the parties at least ninety (90) days before expiration of
the original eight-year term and (iv) shall be renewable or extendable for such
additional term and under such terms and conditions as are mutually agreed upon
in writing by the parties. The phrase "term of this Agreement" and any
substantially similar phrases shall mean collectively the original eight year
term and any renewal period(s).
14. CONFIDENTIALITY. Polaroid and Triple I will from time-to-time to transmit
and exchange technical and business information that is proprietary to the owner
thereof. With respect to such proprietary information of the other party: (a)
each party shall maintain the confidentiality of the information and prevent the
disclosure of the information to third parties; (b) each party shall use at
least the same degree of care to maintain the confidentiality of the information
and avoid disclosure of the information as each party employs with respect to
its own most important, confidential, proprietary information; and (c) neither
party shall, except as required to perform the tasks contemplated in this
Agreement and as otherwise permitted by the terms of this Agreement, directly or
indirectly use such proprietary information without the prior written consent of
the other party.
The provisions of this section shall not apply to any information which:
(a) was already known to the receiving party before receipt or development of
the information under an agreement between the parties, or (b) is or becomes
publicly known through no wrongful act of the receiving party, or (c) is
independently developed or acquired by employees or agents of the receiving
party without access to the work performed hereunder, or (d) is required by law
to be disclosed. The provisions of this section shall survive the term of this
Agreement for a period of three (3) years.
15. RESOLUTION OF DISPUTES. Any disputes or controversies arising out of this
Agreement or any breach thereof which cannot be resolved by the project
management personnel for each party will be submitted for resolution to the
President of Triple I and the Chief Executive Office (or designee thereof) of
Polaroid, who shall endeavour to resolve the dispute. In the case of all
disputes that cannot be so resolved, the parties shall be entitled to avail
themselves of all legal remedies available to them. Neither party shall be
entitled to consequential damages for violation of any of the provisions of this
agreement.
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16. TERMINATION. Either party shall have the right to terminate this Agreement
for Cause upon written notice to the other party. "Cause" shall mean (i)
Financial Distress or Collapse; or (ii) Default.
FINANCIAL DISTRESS OR COLLAPSE. With respect to any party, "Financial
Distress or Collapse" shall mean financial difficulties as evidenced by its
making an assignment for the benefit of creditors, filing a petition in
bankruptcy, petitioning or applying to any tribunal for the appointment of
a custodian, receiver or any trustee for it or a substantial part of its
assets, or commencing any proceeding under any law or statute of any
jurisdiction, whether now or hereafter in effect, relating to bankruptcy,
reorganization, arrangement, readjustment of debt, dissolution, liquidation
or the modification or alteration of the rights of creditors; or by there
being filed against it any such petition or application, or having any such
proceeding commenced against it, in which an order for relief is entered or
which remains undismissed for a period of 30 days or more; or indicating
its consent to, approval of or acquiescence in, any such petition,
application, proceeding or order; or suffering any such custodianship,
receivership or trusteeship to continue undischarged for a period of 30
days or more.
DEFAULT. "Default" shall mean the failure, in any material respect,
continued for the applicable period of grace as specified in the next
sentence, by a party to comply with its obligations under the Agreement,
including but not limited to paragraphs 11 and 12 of Exhibit A, but
excluding paragraphs 1 through 10 of Exhibit A. Any such failure shall be a
Default if it shall have continued, after written notice by the
non-defaulting party, for thirty days if the failure relates to payment of
money and for sixty days if it relates to any other undertaking.
17. EFFECT OF NONRENEWAL OR TERMINATION.
a. CONTINUATION OF RIGHTS PENDING RESOLUTION OF DISPUTES. Notwithstanding
any other provision of this Agreement, pending the final resolution of any good
faith dispute between Polaroid and Triple I, the resolution of which shall be
attempted by the parties pursuant to the provisions of section 15 of this
Agreement, all of the rights of the parties under this Agreement shall continue
in full force and effect, and neither party shall terminate this Agreement or
the licenses hereunder.
b. EFFECT OF NONRENEWAL OR TERMINATION. If this Agreement is not renewed
or is terminated:
i. except as set forth in Section 17(c), all licenses granted under
this Agreement shall cease to be of further force and effect; and
ii. except as is necessary to implement any licenses that continue in
effect pursuant to Section 17(c), each party shall return to the other
party or destroy all copies of all materials provided by the other party,
and will certify to other party that such materials have been returned or
destroyed.
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c. PRESERVATION OF RIGHTS OF THE PARTIES WITH RESPECT TO DEVELOPED
PRODUCTS. The rights, including any licenses, of any party under this Agreement
with respect to any Developed Product shall not be subject to termination except
for Default with respect to material obligations in relation to that particular
Developed Product.
18. INDEMNIFICATION. The parties agree to indemnify and hold each other
harmless from and against any and all claims, damages and liabilities
whatsoever, asserted by any person or entity, resulting directly from any breach
of this Agreement by the indemnifying party or any of its employees or agents.
Such indemnification shall include the payment of all reasonable attorneys' fees
and other costs incurred by the indemnified party in defending any such claims.
19. GENERAL.
a. PUBLICITY AND PUBLIC INFORMATION. The parties agree that neither of
them will make any public statement referencing the collaboration between the
parties or the existence or terms of this Agreement without prior consultation
with and approval by the other party, except as required by law or any court
order.
b. SURVIVAL OF REPRESENTATIONS. The representations and warranties made
herein shall survive any investigation made by the parties and the execution of
this Agreement.
c. NONASSIGNMENT. This Agreement, as well as any right obtained under
this Agreement, shall not be sublicensed, except as otherwise provided in this
Agreement, or assigned to any third Party, except to a successor by merger,
business combination or reorganization involving of ownership of all or
Substantially all of the transferor's assets, or to a purchaser of all or
Substantially all of the transferor's assets.
d. INCORPORATION BY REFERENCE. All Exhibits appended to this Agreement
are herein incorporated by reference and made a part hereof
e. PARTIES IN INTEREST. All covenants, agreements, representations,
warranties and undertakings in this Agreement made by and on behalf of any of
the parties hereto shall bind and inure to the benefit of the respective
successors and permitted assigns of the parties hereto whether so expressed or
not.
f. AMENDMENTS AND WAIVERS. No changes in or additions to this Agreement
may be made or compliance with any term, covenant, agreement, condition or
provision set forth herein may be omitted or waived (either generally or in a
particular instance and either retroactively or prospectively), except upon
mutual written agreement of the parties.
g. GOVERNING LAW. This Agreement shall be construed and enforced
according to and all actions related to the subject matter hereof shall be
governed by the internal laws of the Commonwealth of Massachusetts, without
regard to its conflict of laws rules.
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h. NOTICES. All notices or payments required to be sent to either party
shall be in writing addressed to the party at the address set forth in the
preamble or such other address as a party may from time to time furnish in
writing to the other party. All notices shall be effective upon receipt by the
intended recipient.
i. RELATIONSHIP OF THE PARTIES. This Agreement does not create a
Partnership or joint venture between the parties and neither party shall have
power to obligate or bind the other in any manner whatsoever.
j. COUNTERPARTS. This Agreement may be executed in counterparts, all of
which together shall constitute one and the same instrument.
k. EFFECT OF HEADINGS. The headings and titles used herein are for
convenience only and shall not affect the construction hereof.
1. ENTIRE AGREEMENT. This Agreement Constitutes the entire agreement
among the parties with respect to the subject matter hereof. There are no
representations, warranties, covenants or undertakings with respect to the
subject matter hereof other than those expressly set forth herein. This
Agreement supersedes all prior agreements between the parties with respect to
the exchanges hereunder and the subject matter hereof.
m. SEVERABILITY. If any term or provision of this Agreement shall become
or be declared illegal, invalid or unenforceable, such term or provision shall
be divisible from this Agreement and shall be deemed to be deleted from this
Agreement, provided that if such deletion substantially affects or alters the
commercial basis of this Agreement the parties shall negotiate in good faith to
amend and modify the terms and provisions of this Agreement to give effect to
the original intent of the parties.
n. WARRANT OF AUTHORITY. The persons signing this Agreement as agents or
representatives of the parties warrant that they have authority to bind to this
Agreement each party for which such signature is made.
IN WITNESS WHEREOF, the parties to this Agreement have duly authorized and
executed this Agreement as of the date first written above.
POLAROID CORPORATION
By: /s/ Xxxxx X. Xxxxx
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Name: Xxxxx X. Xxxxx
Title: Executive Vice President
TRIPLE I CORPORATION
By: /s/ Xxxx X. Xxxxxx
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Name: Xxxx X. Xxxxxx
Title: President
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Exhibit A
Exhibit-A Attachment to:
LICENSE AND COLLABORATION AGREEMENT
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Performance Milestones
1. By * Triple I shall have commercial access to a *.
2. By * Triple I shall have modified * to the extent necessary, *.
3. "Fiscal year" under this agreement shall mean Triple I's fiscal year
beginning on October 1 and ending September 30. Year One under this agreement
shall mean the twelve month period ending September 30, 1995.
4. * sales shall meet or exceed the following for each fiscal year specified
under the Agreement as follows: *. Quarterly milestones for * sales shall be
determined by dividing any Year's sales performance number into four
approximately equal portions.
5. * sales shall meet or exceed the following * for each Year specified under
the Agreement as follows: *. Quarterly milestones for * sales shall be
determined by apportioning any Year's sales performance number into four
approximately equal portions.
6. Without regard to the requirements of item 5 above, Triple I also agrees
that sales of * must represent at least the following respective percentages of
*.
7. Triple I agrees to launch the * no later than the *. Triple I further
agrees that it will launch the *in either * no later than the * under the
Agreement.
8. Triple I agrees that sales of * beginning with the fiscal year following
the launch date specified in item 7, must represent at least the following *.
9. "Sales" for Years 2 through 8 shall exclude from consideration any *.
"Sales" for Year 1 may include such conditional sales.
10. "Sales", for the purpose of satisfying requirements under items 4 and 5
only, may include * as sales for Year 2. Otherwise, annual * sales and * sales
requirements for purposes of satisfying these performance milestones will not be
cumulative from year to year.
-------------------------------------------------
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
14
11. Triple I must make prompt payment to Polaroid of all amounts due to
Polaroid for MEDIUM or any other amounts due for other invoices. Terms of
commercial payments between the parties shall be agreed to in writing and
modified in writing when and if necessary.
12. Triple I's Financial books and records shall be subject to audit by
Polaroid at Polaroid's expense. The audits may be undertaken by Polaroid
employees; or Polaroid may engage nationally recognized firm of Certified Public
Accountants to undertake the audits.
2
15
POLAROID CORPORATION
000 Xxxxxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
June 17, 1996
Xx. Xxxx X. Xxxxxx
TRIPLE I CORPORATION
One Xxxxxx Research Center
000 Xxxxxx Xxxxxx
Xxxxxx, XX 00000
Dear Xxxx:
As you are aware, Polaroid Corporation has made an equity investment of
$800,000 and owns in excess of 20% of Triple I Corporation's outstanding common
stock. Polaroid made that investment in anticipation of significant appreciation
and continues to encourage Triple I's success in its various endeavors, and in
particular those endeavors which maximize use of Polaroid's film products.
Due to the fact that Triple I failed to meet certain milestones specified
in the License And Collaboration agreement between Polaroid and Triple I dated
November 28, 1994, as amended by fax from you dated April 26, 1996, a copy of
which is enclosed (the "Agreement"), Polaroid, by letter of May 23, 1996, gave
notice to Triple I of the conversion of its exclusive right to market and sell
Medium in the PCB Field to a non-exclusive right in accordance with Section 4d
of the Agreement.
You have requested that Polaroid reconsider and withdraw its notice of
conversion of exclusive Medium marketing rights to non-exclusive rights and make
certain other amendments to the Agreement. Polaroid agrees with the essence of
your proposal and offers by this letter to make the modifications that you
requested. To avoid confusion concerning expectations, I have set forth below
the amendments to the Agreement that we discussed and ask for your prompt review
and consideration.
The Agreement is hereby amended as follows:
1. Add as the last sentence to paragraph 4d:
"In no event will the quality of Medium provided by Polaroid to Triple
I be considered the failure of Polaroid to meet a material obligation
required by this
16
Agreement if Medium of like quality is commercially sold by Polaroid
for use in commercially available plotters used in the graphics field.
2. Delete Performance Milestone 3 and substitute the following:
3. Year One under this agreement shall mean the twelve month period
ending May 31, 1996.
3. Delete Performance Milestone 4 and substitute the following:
4. * sales shall meet or exceed the following for each year
specified under the Agreement as follows: *. Quarterly milestones
for * sales shall be determined by dividing any year's sales
performance number into four approximately equal portions.
4. Delete Performance Milestone 5 and substitute the following:
5. * sales shall meet or exceed the following * for each year
specified under the Agreement as follows: *. Quarterly milestones
for * sales shall be determined by apportioning any year's sales
performance number into four approximately equal portions.
5. Delete Performance Milestone 7 and substitute the following:
7. Triple I agrees to launch the * no later than the * . Triple I
further agrees that it will launch the * in either * no later
than the * under the Agreement
6. In Performance Milestone 8, line 1, delete "fiscal".
In addition, before August 1, 1996, Triple I will either pay to Polaroid
$90,000, in which event Polaroid will transfer title to its plotter now resident
at Triple I's facility to Triple I, or Triple I will return the plotter to
Polaroid at Polaroid's expense. Also, as of the date of execution of this
amendatory letter by Triple I, Triple I represents that there is no outstanding
failure of Polaroid to meet any material obligation required by the Agreement.
------------------------------------------------------
*Confidential treatment requested as to certain portions, which
portions are omitted and filed separately with the Commission.
2
17
Xxxx, I believe we continue to have the basis for a mutually beneficial
relationship. As a consequence of your acceptance of these amendments to the
Agreement, the letter of May 23, 1996 from Polaroid to Triple I, which converted
Triple I's Medium marketing rights from exclusive to non-exclusive, will be
automatically withdrawn and of no legal effect. Polaroid's offer to amend the
Agreement and withdraw the May 23, 1996 letter will expire at 5:00 p.m. on June
26, 1996 if not accepted by Triple I before that time. Acceptance may be
communicated by signing one copy of this letter where indicated below and
returning it to me.
Sincerely yours,
/s/ Xxxxxx X. Xxxxxxxx
-----------------------------------
Xxxxxx X. Xxxxxxxx
Senior Vice President
Accepted and Agreed:
/s/ Xxxx X. Xxxxxx
By: Xxxx X. Xxxxxx
Date: June 25, 1996
3
18
AOI INTERNATIONAL
Xxxx X. Xxxxxx
President
January 10, 1997
Xx. Xxxxxx Xxxxxxxx
Senior Vice President
Polaroid Corporation
000 Xxxxxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Re: License And Collaboration Agreement
-----------------------------------
Dear Xxx:
On November 23, 1994, Triple I Corporation ("Triple I") and Polaroid
Corporation ("Polaroid") entered into a License and Collaboration Agreement,
which was amended on June 17, 1996 (the agreement and all amendments are hereby
referred to as the "Agreement"). This letter is intended to state the parties'
understanding as to certain performance milestones, listed in Sections 4 and 5
of EXHIBIT A under the Agreement ("Performance Milestones"), that Triple I must
achieve as part of the Agreement.
Polaroid and Triple I acknowledge their differences in respect of any right
of Polaroid to convert Triple I's exclusive rights to market MEDIUM in the PCB
field from exclusive to non-exclusive rights. Nonetheless, Polaroid and Triple I
hereby agree that Polaroid will not act in respect to the Year-2 quarterly
Performance Milestones until May 31, 1997, at which time Triple I is required to
meet the annual Performance Milestones due on that date. If Triple I fails to
meet these annual requirements, Polaroid, at its discretion, may proceed in
accordance with Section 4(d) of the Agreement.
Polaroid and Triple I also agree that Industrial Imaging Corporation
("Industrial Imaging"), the parent corporation of Triple I, shall include
certain disclosures, in the form attached as EXHIBIT A, in Industrial Imaging's
Form 8-K to be timely filed in accordance with the rules of the Securities and
Exchange Commission following the completion of the exchange of shares between
Triple I and Industrial Imaging. Simultaneously with the agreement by the
parties to the above terms of this letter, Polaroid, a shareholder of Triple I,
agrees to execute its Shareholder Exchange Agreement, which will enable Triple I
to proceed with the transaction involving Industrial Imaging.
Triple I also acknowledges that, as of the date of this letter, there is no
outstanding failure of Polaroid to meet any material obligation required by the
Agreement. In no event will the
19
quality of the MEDIUM provided by Polaroid to Triple I be considered the failure
of Polaroid to meet a material obligation required by this Agreement if MEDIUM
of like quality is commercially sold by Polaroid for use in commercially
available plotters used in the graphics field.
Triple I agrees that it will not, in the event it fails to meet the full
Year-2 Performance Milestones by the end of May 1997, invoke in justification
thereof any alleged failure of or responsibility in Polaroid, as of the date of
this letter.
For the purpose of testing the full Year-2 Performance Milestones set for
performance by May 31, 1997, * sales, shall only be considered sales upon the
receipt of Triple I of *.
All of the provisions of the Agreement, as amended June 17,1996, remain in
full force and effect to the extent not inconsistent with the provisions of this
letter.
Triple I acknowledges that the Agreement does not prohibit Polaroid from
accepting inquiries from any person, partnership, corporation or other third
party in respect of possible mutual business opportunities involving any plotter
and MEDIUM for use in the PCB field (including opportunities based upon sales of
MEDIUM by any such third party); and the Agreement shall not be construed in any
manner to preclude or inhibit any such discussions. Polaroid agrees, however,
that it will not, except with Triple I's prior written approval, enter into any
agreement with any such third party authorizing the marketing of MEDIUM by such
party in the PCB field unless Triple I shall have failed to meet its full Year-2
Performance Milestones and Polaroid shall have served notice upon Triple I of
the conversion of its exclusive marketing rights to non-exclusive rights.
If you agree with the above terms, kindly acknowledge your agreement by
signing this letter below where indicated and returning it to me, along with a
copy of the Shareholder Agreement signature page containing Polaroid's
signature.
--------------------
* Confidential treatment requested as to certain portions, which portions are
omitted and filed separately with the Commission.
2
20
Please contact me with questions.
Very truly yours,
/s/ Xxxx X. Xxxxxx
-----------------------------------
Xxxx X. Xxxxxx, Ph.D.
Enclosures
c: Xxxx X. Xxxxxxx, Esquire
ACKNOWLEDGED AND AGREED:
POLAROID CORPORATION
By: /s/ Xxxxxx X. Xxxxxxxx
-------------------------------
Duly authorized
Date: January 10, 1997
-------------------------------
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