TECHNOLOGY LICENSE AGREEMENT
This Technology License Agreement (this "Agreement") is made as of July
6, 2006 by and between DataLogic International, Inc., a Delaware corporation
("DataLogic"), IPN Communications, Inc., a California corporation ("IPN") and
Huron Holdings, Inc., a Nevada corporation ("HHI").
WHEREAS concurrently herewith Datalogic, IPN and HHI are consummating
the closing of the transactions contemplated under the Asset Purchase
Agreement, dated June 30, 2006, by and between DataLogic, IPN and HHI (the
"Purchase Agreement")
WHEREAS, DataLogic, a developer of GPS-based asset management devices,
intends to license certain intellectual property rights to HHI, according to
these terms and conditions; and
WHEREAS, IPN, a developer of GPS-based asset management solutions,
intends to license certain intellectual property rights to HHI, according to
these terms and conditions;
NOW THEREFORE, in consideration of the premises and of the mutual
covenants and agreements contained hereinafter, the parties agree as follows:
1. Definitions
"DataLogic Licensed Technology" means all of DataLogic's Intellectual
Property Rights related to the vehicle and mobile asset tracking device known
as Panther Trak (version Phoenix 1), including, without limitation, any
source and object code related to the control of such device. The DataLogic
Licensed Technology is as it exists on the date hereof in written and
electronic documents, including schematics, data base tapes, software, source
and object code for delivery to HHI, and, except for the foregoing, does not
include delivery of any physical products or future modifications and
enhancements to the DataLogic Licensed Technology.
"Intellectual Property Rights" means any and all worldwide (a) rights
associated with works of authorship, including copyrights, moral rights, and
mask works; (b) trade secret rights; (c) patents and patent rights; (d) other
proprietary rights in know-how, inventions, ideas, algorithms, formulae,
methods, processes, techniques, proprietary information, software,
semiconductor devices, and other types of technology; and (e) all
registrations, applications, renewals, extensions, combinations, divisions, or
reissues of the foregoing. As used in this Agreement, however, the term
"Intellectual Property Rights" does not include trademark, trade name, or
similar rights.
"IPN Licensed Technology" means all of IPN's Intellectual Property
Rights related to the vehicle and mobile asset tracking system known as
BounceGPS, including, without limitation, any source and object code related
to the mapping, automatic vehicle location (AVL), reports and administrative
functionality of such system. The IPN Licensed Technology is as it exists on
the date hereof in written and electronic documents, including schematics,
data base tapes, software, source and object code for delivery to HHI, and,
except for the foregoing, does not include delivery of any physical products
or future modifications and enhancements to the IPN Licensed Technology.
Notwithstanding the foregoing, the IPN Licensed Technology does not include
any of IPN's rights under the Product License and Development Agreement, dated
June 29, 2005, by and between CBS Holdings, Inc. and Locatient Ltd Co.
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"Net Revenue" means the gross amount of all cash, in kind or other
consideration received by a HHI at any time in consideration of the licensing
or other distribution of the DataLogic Licensed Technology or IPN Licensed
Technology, as the case may be, excluding any amounts received by HHI for
sales and use taxes, shipping, insurance, duties, credits, and returns.
2. License Grants and Ownership.
(a) License Under DataLogic Licensed Technology.
(i) DataLogic will promptly deliver to HHI the DataLogic Licensed
Technology, and hereby grants to HHI a non-exclusive, worldwide, transferable
(with right to sublicense) license to use, reproduce, modify, and create
derivative works of the DataLogic Licensed Technology and to develop, make,
have made, use, import, export, market and sell products containing or
embodying such DataLogic Licensed Technology.
(ii) All right, title and interest in and to the DataLogic Licensed
Technology, and each element thereof (including all Intellectual Property
Rights relating thereto), shall be and remain the sole and exclusive property
of DataLogic, subject only to the license rights expressly granted in this
Agreement. Any enhancements, modifications and derivative works of or to the
DataLogic Licensed Technology made by or for HHI shall be the sole and
exclusive property of HHI.
(b) License Under IPN Licensed Technology.
(i) IPN will promptly deliver to HHI the IPN Licensed Technology, and
hereby grants to HHI a non-exclusive, worldwide, transferable (with right to
sub-license) license to use, reproduce, modify, and create derivative works of
the IPN Licensed Technology and to develop, make, have made, use, import,
export, market and sell products containing or embodying such IPN Licensed
Technology.
(ii) All right, title and interest in and to the IPN Licensed
Technology, and each element thereof (including all Intellectual Property
Rights relating thereto), shall be and remain the sole and exclusive property
of IPN, subject only to the license rights expressly granted in this
Agreement. Any enhancements, modifications and derivative works of or to the
IPN Licensed Technology made by or for HHI shall be the sole and exclusive
property of HHI.
3. Royalties.
(a) HHI agrees to pay DataLogic the following royalties (the
"Royalties") in perpetuity:
(i) a royalty equal to two percent (2%) of HHI's Net Revenue received
from the distribution of any vehicle or mobile asset tracking device based
substantially on the DataLogic Licensed Technology (a "Licensed Device"); and
(ii) a royalty equal to five percent (5%) of HHI's Net Revenue received
from the distribution of any vehicle or mobile asset tracking system based
substantially on the IPN Licensed Technology (a "Licensed System").
To the extent that HHI incorporates any Licensed Device or Licensed
System into another product or service offering (a "Combined Offering"),
Royalties will be payable on a portion of the Net Revenue received from the
distribution of the Combined Offering equal to (x) the fair value
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of the Licensed Device or Licensed System included in the Combined Offering,
divided by (y) the total Net Revenue received for the distribution of the
Combined Offering. If applicable, HHI will provide DataLogic with a
calculation, in reasonable detail, of the Royalties payable on any Combined
Offering in each Royalty Statement delivered pursuant to Section 4(b).
(b) Within 45 days following the end of each calendar quarter, HHI will
(i) deliver to DataLogic a statement (a "Royalty Statement") setting forth the
calculation, in reasonable detail, of the Royalties payable by HHI with
respect to such calendar quarter and (ii) pay all Royalties due to DataLogic
as reflected in the Royalty Statement. All late payments will be assessed a
late fee charge equal to the lesser of one and one-half percent (1-1/2%) per
month or the maximum amount permitted by applicable law (the "Late Payment
Fee").
(c) DataLogic will be entitled to audit the records of HHI to verify
the calculation set forth in any Royalty Statement, provided that such audit
shall occur no more than twice per year. If such an audit discloses a
deficiency in the Royalty paid of greater than five percent (5%), then HHI
will pay the reasonable cost of such audit plus the Late Payment Fee on the
deficiency from the time due until paid.
(d) All payments and amounts due hereunder shall be paid without
deduction, set-off, or counter claim and free and clear of any restrictions or
conditions and without deduction for any taxes, levies, imposts, duties, fees,
deductions, withholdings or other governmental charges, excluding taxes on
DataLogic's overall net income.
(d) If either (i) HHI fails to deliver a Royalty Statement to DataLogic
or (ii) any Royalties remain unpaid, in either case, for a period of 30 days
or more following the due date specified in Section 4(b) above (in either
case, a "Royalty Default"), in addition to any other rights and remedies
available to it, DataLogic shall be entitled to the remedies specified in
Article 5 below.
4. Disclaimers.
(a) General. DATALOGIC AND IPN MAKE NO WARRANTIES IN THIS AGREEMENT
WITH RESPECT TO ANY INTELLECTUAL PROPERTY RIGHTS ASSIGNED TO OR LICENSED TO
HHI IN THIS AGREEMENT, AND DISCLAIM ANY AND ALL EXPRESS OR IMPLIED WARRANTIES
(OTHER THAN THE EXPRESS WARRANTIES IN THE PURCHASE AGREEMENT), INCLUDING ANY
IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND
NON INFRINGEMENT.
(b) Specific. Without limiting the generality of Section 4(a) above,
nothing in this Agreement shall be construed as giving rise to:
(i) a warranty or representation as to the validity or scope of any
Intellectual Property Right assigned or licensed pursuant to this Agreement;
or
(ii) a warranty or representation that any manufacture, sale or use of
any products will not infringe the intellectual property rights of others.
(c) No Liability for Consequential Damages. IN NO EVENT WILL ANY
PARTY BE LIABLE TO ANOTHER PARTY FOR CONSEQUENTIAL, INCIDENTAL, INDIRECT, OR
PUNITIVE DAMAGES FOR ANY CAUSE OF ACTION, WHETHER IN CONTRACT, TORT, OR
OTHERWISE, ARISING UNDER THIS AGREEMENT OR THE TRANSACTIONS CONTEMPLATED
HEREUNDER. Consequential, incidental, and indirect damages include, but
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are not limited to, lost profits, lost revenue, and loss of business
opportunity, whether or not such party was aware or should have been aware of
the possibility of these damages.
5. Right to Terminate License Under DataLogic Licensed Technology
and IPN Licensed Technology.
(a) If either:
(i) A Royalty Default occurs and is continuing; or
(ii) An Event of Default (as defined in the Note issued pursuant to the
Purchase Agreement) occurs and is continuing,
Then DataLogic, at its option, shall be entitled to terminate the licenses
under the DataLogic Licensed Technology and IPN Licensed Technology granted
under Section 2. The foregoing right shall be in addition to any other
rights and remedies available to DataLogic and IPN in respect of such Royalty
Default or Event of Default.
(b) On any termination of the licenses granted under Section 2, HHI
agrees to immediately cease any further use of the DataLogic Licensed
Technology and IPN Licensed Technology and to follow all reasonable directions
of DataLogic for disconnection, removal and return of all DataLogic Licensed
Technology to DataLogic and all IPN Licensed Technology to IPN. At its option,
DataLogic may elect to allow HHI to continue using the DataLogic Licensed
Technology and IPN Licensed Technology in accordance with the terms of this
Agreement in order to fulfill any contractual obligations HHI has to its
licensees and customers, subject to the continuation of HHI's obligation to
pay Royalties to DataLogic. On any such termination, HHI further agrees, upon
request by DataLogic, to notify licensees and customers that their license and
sublicense agreements will be terminated in thirty (30) days. On any such
termination, HHI shall surrender (i) to DataLogic possession of all tangible
items of DataLogic Licensed Technology and (ii) to IPN possession of all
tangible items of IPN Licensed Technology, in each case, except as necessary
to fulfill its obligations under license and sublicense agreements continuing
in effect after such termination in accordance with this Section 5(b).
6. Confidential Information. The parties will keep confidential any
information provided to it by the other party that is proprietary to the other
party and marked confidential; provided such information shall not be
considered proprietary once it is in the public domain by no fault of the
other party. Such confidentiality will be maintained by the other party with
the same care that such party would use for its own confidential information,
but in any event with reasonable care.
7. Complete Agreement. This is a complete agreement binding upon
the parties, their heirs, successors and assigns. It may only be modified in
writing signed by officers of both parties.
8. Governing Law. This Agreement shall be governed by the laws of
the State of California, excluding its choice-of-law provisions.
9. Independent Contractors. Each party hereto shall be and remain
an independent contractor, and nothing herein shall be deemed to constitute
the parties as partners. Neither party shall have any authority to act, or
attempt to act, or represent itself, directly or by implication, as an agent
of the other or in any manner assume or create, or attempt to assume
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or create, any obligation on behalf of or in the name of the other, nor shall
either be deemed the agent or employee of the other.
10. Non-Waiver. No course of dealing or failure of either party to
enforce strictly any term, right, obligation or provision of this Agreement
shall be construed as a waiver of such provision.
11. Severability. If any provision of this Agreement shall be held
invalid or unenforceable, such provision shall be deemed deleted from the
Agreement and replaced by a valid and enforceable provision that achieves, as
much as possible, the same purpose, and the remaining provisions of the
Agreement shall continue in full force and effect.
IN WITNESS WHEREOF, the parties have executed this Agreement.
DATALOGIC INTERNATIONAL, INC.
/S/ Xxxxx Xxxxx
___________________________
By: Xxxxx Xxxxx
Title: Chief Executive Officer
IPN COMMUNICATIONS, INC.
/s/ Xxxxx X. Xxxxxx
___________________________
By: Xxxxx X. Xxxxxx
Title: President
HURON HOLDINGS, INC.
/s/ Xxxxx Xxxxxxx
___________________________
By: Xxxxx Xxxxxxx
Title: Chief Executive Officer
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