LICENSE AGREEMENT
BETWEEN
PARAGON TRADE BRANDS, INC.
AND
XXXXXXXX-XXXXX CORPORATION.
LICENSE AGREEMENT
This License Agreement is made and entered into as of this 15th day of
March, 1999, between Paragon Trade Brands, Inc., a Delaware Corporation having a
principal place of business at 000 Xxxxxxxxxx Xxxxxxx, Xxxxxxxx, Xxxxxxx 00000
("LICENSOR"), and Xxxxxxxx-Xxxxx Corporation, a Delaware corporation having
offices at 000 Xxxxxx Xxxxx, Xxxxxx, Xxxxx 00000 ("LICENSEE").
WITNESSETH
WHEREAS, LICENSEE has requested a license from LICENSOR under certain
patents in order to manufacture disposable products; and
WHEREAS, the parties desire to enter into this License Agreement under the
terms and conditions hereinafter recited.
NOW THEREFORE, it is agreed as follows:
ARTICLE I
DEFINITIONS
As used throughout this Agreement, each term shall have the meaning set
forth in this Article I:
1.01 "LICENSED PATENTS" shall mean U.S. Patent 4,977,011 issued December
11, 1990 to Xxxxx; U.S. Patent 5,209,801 issued May 11, 1993 to Xxxxx; and U.S.
Patent, 4,687,477 issued August 18, 1987 to Suzuki; and/or any U.S.
continuations, divisions, continuations in-part, reissues, and reexaminations
thereof.
1.02 "TERRITORY" shall mean the United States of America, its territories
and possessions.
1.03 "VALID CLAIM" shall mean a claim of the Licensed Patents which has
not been found invalid or unenforceable by a U.S. government tribunal or a U.S.
court of competent jurisdiction in a decision from which no appeal has or may be
taken.
ARTICLE II
LICENSE
2.01 LICENSE GRANT: LICENSOR grants to LICENSEE, subject to the terms and
conditions of this Agreement, a fully-paid, non-exclusive, right and license
under the Licensed Patents to practice the methods and to make, have made, use
and sell the products therein described and claimed in the Territory. LICENSEE
has no right to grant sublicenses under the Licensed Patents. The term for the
license grant under this Section 2.01 shall commence on January 1, 1999 and,
unless terminated in accordance with Section 2.03, shall remain in full force
and effect until the expiration of the last to expire of the Licensed Patents.
No implied license is granted to LICENSEE other than under the Licensed Patents.
2.02 COVENANT NOT TO XXX: So long as LICENSEE is in compliance with this
Agreement, LICENSOR covenants not to xxx LICENSEE for infringement, if any, of
the Licensed Patents arising from the manufacture, use or sale of products by
LICENSEE occurring on or after January 1, 1999.
2.03 TERMINATION: LICENSEE and LICENSOR have entered into a license
agreement dated March 15, 1999, relating to the Xxxxx Patents (as those patents
are defined in that license agreement) ("Xxxxx License Agreement"). In the event
that the Xxxxx License Agreement is terminated and is of no further force and
effect pursuant to Section 2.03 of the Xxxxx License Agreement, then the license
and covenant not to xxx set forth in Section 2.01 and 2.02, respectively, of
this Agreement shall, except with respect to products manufactured prior to the
date of that termination, terminate and be of no further force and effect on and
after the termination date.
ARTICLE III
EFFECTIVE DATE AND TERM
This Agreement will become effective on the day first written above and,
unless previously terminated in accordance with Section 2.03, shall remain in
effect for the term of the last of the Licensed Patents to expire.
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ARTICLE IV
ASSIGNMENT
4.01 ASSIGNMENT: This Agreement shall be binding upon and inure to the
benefit of the successors and assigns of all or substantially all of one or more
of LICENSEE's disposable products businesses. This Agreement shall not create a
license for or otherwise apply to the activities of successors or assigns prior
to the date of any such succession or assignment.
4.02 CONSENT TO ASSIGNMENT: The license grant hereunder shall be personal
to LICENSEE and shall be nontransferable and nonassignable to third parties
without the prior written consent of LICENSOR, which consent LICENSOR shall not
unreasonably withhold or unreasonably delay. It shall not be unreasonable for
LICENSOR to withhold or delay its consent if the effect of the proposed transfer
or assignment would be to allow a transferee or assignee to obtain the
prospective right to make, import, use, offer for sale or sell disposable
products in the United States without entering into a mutually agreeable
settlement agreement with LICENSOR for any past infringing activity by the
transferee or assignee with respect to the Licensed Patents.
ARTICLE V
GOVERNING LAW
This Agreement shall be construed, and all questions relating hereto shall
be determined, in accordance with the laws of the State of TEXAS.
ARTICLE VI
REPRESENTATIONS AND WARRANTIES; LIMITATIONS
6.01 REPRESENTATIONS AND WARRANTIES OF LICENSOR: LICENSOR hereby
represents and warrants the following:
(a) LICENSOR has the full right, power and authority to enter into this
Agreement and perform in accordance with its terms.
(b) LICENSOR has good and complete title in and to (or beneficial interest
to) the Licensed Patents and has the right to license them to LICENSEE in
accordance with the term of this Agreement.
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6.02 REPRESENTATION AND WARRANTIES OF LICENSEE:
(a) LICENSEE has the full right, power and authority to enter into this
Agreement and perform in accordance with its terms.
(b) LICENSEE has no knowledge of any existing or contingent impediment to
its performing in accordance with the terms of this Agreement.
6.03 LIMITATIONS:
(a) Except as set forth above, neither party has made, or intends to make,
any express or implied warranty to the other. In particular, LICENSOR has made
no express or implied warranty that LICENSEE's making, using, or selling of
products will not infringe another patent held by LICENSOR or held by a third
party.
(b) Nothing in this Agreement shall be construed as granting by
implication, estoppel, or otherwise, any licenses or rights under patents of
LICENSOR other than the Licensed Patents.
ARTICLE VII
NOTICES
Any notice required or permitted to be given under this Agreement by one
of the parties to the other shall be in writing and shall be deemed to have been
sufficiently given for all purposes hereunder if personally delivered or mailed
by registered or certified mail, postage prepaid, addressed to such party at its
address below or as from time to time may be directed otherwise by such party by
notice to the other party. Any such mailed notice shall be deemed to have been
given three (3) business days after mailing.
All notices to LICENSEE shall be addressed as follows:
Xxxxxxxx-Xxxxx Corporation
000 Xxxxxx Xxxxx
Xxxxxx, Xxxxx 00000
Attention: Senior Vice President, Law and Government Affairs
All notices to LICENSOR shall be addressed as follows:
Paragon Trade Brands, Inc.
000 Xxxxxxxxxx Xxxxxxx
Xxxxxxxx, Xxxxxxx 00000
Attention: General Counsel
ARTICLE VIII
PATENT MARKING
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LICENSEE shall xxxx each package containing products which, but for this
license, would infringe a Valid Claim with a statement substantially equivalent
to one of the following:
"The products are made under one or more of the following U.S. Patents:
4,687,477"
"The products are made under one or more of the following U.S. Patents:
4,977,011 and 5,209,801."
LICENSEE shall modify such statement upon request of LICENSOR to add a
reference to Licensed Patents which cover LICENSEE's product and that issue
after the date of this Agreement.
LICENSEE shall commence the marking program upon exhaustion of LICENSEE's
current supply of packaging materials provided, however, such marking of all
packages shall commence no later than June 1, 1999.
ARTICLE IX
WAIVER
The waiver by either of the parties to this Agreement of any breach of any
provision hereof by the other party shall not be construed to be a waiver of any
succeeding breach of such provision or a waiver of the provision itself.
ARTICLE X
ENFORCEABILITY
If and to the extent that any court or governmental tribunal of competent
jurisdiction holds any of the terms, provisions or conditions or part thereof of
this Agreement, or the application hereof to any circumstances, to be invalid or
unenforceable in a final nonappealable order, the remainder of this Agreement
and the application of such term, provision or condition or part thereof to
circumstances other than those as to which it is held invalid or enforceable
shall not be affected thereby, and each of the other terms, provisions and
conditions of this Agreement shall
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be valid and enforceable to the extent it is consonant with the intention of the
parties upon entering into this Agreement.
ARTICLE XI
HEADINGS
The headings appearing herein have been inserted solely for the
convenience of the parties hereto and shall not affect the construction, meaning
or interpretation of this Agreement.
ARTICLE XII
ENTIRE AGREEMENT
This Agreement is entered into as part of a Settlement Agreement. The
terms and provisions contained in this Agreement and the Settlement Agreement
(including its attachments) attached hereto as Exhibit A constitute the entire
agreement and understanding between the parties to this Agreement. Neither party
has relied, or will rely, on any representation or agreement of the other except
to the extent set forth herein or in the Settlement Agreement (including its
attachments), and neither party shall be bound by or charged with any oral,
written or implied agreements, representations, warranties, understandings,
commitments or obligations not specifically set forth herein or in the
Settlement Agreement (including its attachments). These Agreements may not be
released, discharged, abandoned, changed or modified in any manner except by an
instrument in writing signed by a duly authorized officer of each of the parties
hereto.
Each of the parties hereto has caused this instrument to be executed by
its respective duly authorized representative as of the day and year first above
written.
XXXXXXXX-XXXXX CORPORATION PARAGON TRADE BRANDS, INC.
BY: /s/ O. Xxxxxx Xxxxxxxx BY: /s/ B. V. Xxxxxxx
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O. Xxxxxx Xxxxxxxx B. V. Xxxxxxx
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TITLE: Senior Vice President - TITLE: Chairman and CEO
Law and Government Affairs
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