1
EXHIBIT 10.22
MASTER DEVELOPMENT AGREEMENT
This Agreement, entered into as of April 10th, 2000 (hereinafter "Effective
Date") by and between T/R SYSTEMS, INC., a Georgia, U.S.A. corporation having
its principal place of business at 0000 Xxxxxxxx Xxxxx, Xxxxxxxx, Xxxxxxx,
X.X.X. 00000 (hereinafter "T/R"), and MINOLTA CO., LTD., a Japanese corporation
having its principal place of business at 3-13, 2-Chome, Xxxxxx-Xxxxx, Xxxx-Xx,
Xxxxx 000-0000, XXXXX (hereinafter "MINOLTA");
WITNESSETH THAT:
WHEREAS, T/R has designed and developed, and currently assembles, distributes
and sells a proprietary commercial printing system known as the MicroPress.
WHEREAS, T/R has designed and developed, and distributes and sells other
products known as MicroImager and e-Ticket.
WHEREAS, T/R will design and develop, and distribute and sell other products in
the future.
WHEREAS, T/R has proprietary skills, know-how, technology, inclusive of trade
secrets and other know-how, and patent rights applicable to the product
architecture, development, design, assembly, manufacturing, connectivity,
production and distribution of these products.
WHEREAS, MINOLTA and T/R developed the connectivity software and hardware so as
to permit MINOLTA print devices ([ * ]) to connect to and be controlled by the
MicroPress commercial printing system, the distribution terms of which are
governed by a Supply Agreement dated January 28, 1999 by and between T/R and
MINOLTA.
WHEREAS, MINOLTA desires for T/R to develop such connectivity software and
hardware so as to permit MINOLTA's products to connect to and be controlled by
the MicroPress commercial printing system.
WHEREAS, MINOLTA may desire for T/R to develop value-added software and/or
hardware in the future for MINOLTA's products.
NOW THEREFORE, in consideration of mutual covenants set forth herein, the
parties hereto agree as follows:
1. DEFINITIONS
1.1 "ACCEPTANCE CRITERIA" shall mean a test document as to T/R
DELIVERABLES, which is determined by both parties separately from an
applicable ADDENDUM.
1.2 "ADDENDUM" shall mean a document which sets forth modifications to this
Agreement including details regarding a PROJECT.
1.3 "AFFILIATE" shall mean a corporation, company or other entity that,
directly or indirectly, through one or more intermediaries, controls,
is controlled by, or is under common control
* Confidential information has been omitted and filed separately with the
Commission.
2
with a party hereto, but only for so long as such relationship exists.
For the purposes of this definition, "control" shall mean ownership of
equal to or greater than 50% of the shares entitled to vote or
equivalent voting rights.
1.4 "CONFIDENTIAL INFORMATION" shall mean all written information which is
clearly marked "Confidential" and any tangible materials which are
marked as being confidential or otherwise identified as confidential in
writing, provided however that the following information shall not be
deemed CONFIDENTIAL INFORMATION and the receiving party shall have no
obligation with respect to such information.
(1) Information which is already in the possession of the
receiving party at the time of disclosure; or
(2) Information which is already available to the public or to
industry at the time of disclosure; or
(3) Information which becomes available to the public or to
industry without fault of the receiving party; or
(4) Information which is subsequently rightfully received by the
receiving party from a third party without notice of
restriction on further disclosure, or which the receiving
party is authorized to disclose with the disclosing party's
prior written consent; or
(5) Information which is disclosed to a third party by the
disclosing party without similar restriction on such third
party; or
(6) Information which has been independently developed by the
receiving party without reference to CONFIDENTIAL INFORMATION;
or
(7) Information which is disclosed in the course of marketing or
use of MINOLTA's printing system using T/R DELIVERABLES; or
(8) Information which is required to be disclosed by legal
proceedings by governmental agency or by law, provided that
such disclosure does not authorize disclosure of the
information to any other party.
1.5 "MINOLTA DELIVERABLES" shall mean any materials provided by MINOLTA to
T/R under an applicable ADDENDUM, including without limitation
MINOLTA's products and related documentation.
1.6 "PRODUCT" shall mean connectivity software and/or hardware so as to
permit MINOLTA's products identified in an ADDENDUM to connect to and
be controlled by the MicroPress commercial printing system.
1.7 "PRODUCT SPECIFICATION" shall mean a specification, attached to an
ADDENDUM, which provides requirements for PRODUCT, development effort,
and T/R DELIVERABLES.
1.8 "PROJECT" shall mean each specific development work performed by T/R in
accordance with an applicable ADDENDUM, as determined by T/R and
MINOLTA and set forth in an ADDENDUM.
1.9 "PROJECT SCHEDULE" shall mean the development and delivery schedule for
any Project as set forth in the applicable ADDENDUM.
* Confidential information has been omitted and filed separately with the
Commission.
3
1.10 "RESULT" shall mean all proprietary and/or intellectual property rights
resulting or derived from PROJECT.
1.11 "T/R DELIVERABLES" shall mean any materials, including intermediate
deliverables and final deliverables, to be delivered by T/R to MINOLTA
pursuant to an applicable ADDENDUM.
1.12 "PACKED BIT COMPRESSION" shall mean proprietary software technology
designed, developed, and owned by T/R.
2. AGREEMENT STRUCTURE
The terms and conditions of this Agreement and those contained in one
or more PROJECTS hereto, which are incorporated herein by reference,
shall constitute the development agreement for the PROJECTS specified
in ADDENDUM hereto.
3. PROCEDURE RELATING TO ADDENDUM
In the event that MINOLTA desires to develop PRODUCT, the parties shall
work together to develop an ADDENDUM for each PROJECT before
commencement of development work on such PROJECT. The ADDENDUM shall
include PRODUCT SPECIFICATION, ACCEPTANCE CRITERIA, PROJECT SCHEDULE,
Payment, Payment Schedule, Specification of MINOLTA's products, MINOLTA
DELIVERABLES, T/R DELIVERABLES and other such items as are relevant to
the PROJECT. No ADDENDUM shall be deemed binding until accepted by T/R.
4. PERFORMANCE OF PROJECTS
4.1 PROJECTS shall be implemented through ADDENDUM executed by the parties
and incorporated by reference herein. T/R shall agree to perform the
development work as described in each ADDENDUM, in accordance with the
terms of this Agreement and such ADDENDUM.
4.2 T/R shall not entrust all or any part of PROJECT to any third party
without the prior written consent of MINOLTA.
4.3 T/R shall deliver T/R DELIVERABLES to MINOLTA in accordance with the
PROJECT SCHEDULE.
4.4 During the term of each ADDENDUM, T/R shall provide MINOLTA with status
reports summarizing the progress of PROJECT upon MINOLTA's request.
MINOLTA shall provide T/R for the entire development period and
thereafter for each PROJECT the number of units of MINOLTA DELIVERABLES
set forth in the applicable ADDENDUM, and T/R may use and modify the
MINOLTA DELIVERABLES for the purposes described in this Agreement and
applicable ADDENDUM. T/R shall not lend, transfer, sublicense,
encumber, pledge or assign the MINOLTA DELIVERABLES hereunder. T/R
shall not move any MINOLTA DELIVERABLES outside the United States
without prior written consent of MINOLTA. MINOLTA shall supply such
technical support (including repair service) for the MINOLTA's
* Confidential information has been omitted and filed separately with the
Commission.
4
products as T/R may require for its timely and successful completion of
the PROJECT. T/R shall promptly destroy MINOLTA DELIVERABLES upon
MINOLTA's request if project is terminated.
4.5 If MINOLTA requests changes to any PROJECT, including without
limitation PRODUCT SPECIFICATIONS, or requests any additional services,
T/R and MINOLTA shall negotiate the conditions of such changes in good
faith.
5. ACCEPTANCE PROCEDURE
5.1 Within [ * ] days from the receipt of T/R DELIVERABLES, MINOLTA shall
conduct acceptance testing in accordance with the ACCEPTANCE CRITERIA
to decide whether T/R DELIVERABLES conform with PRODUCT SPECIFICATIONS.
If T/R DELIVERABLES fails to conform with PRODUCT SPECIFICATION under
such acceptance test procedures, MINOLTA will inform T/R of such result
and T/R shall revise the T/R DELIVERABLES at its cost and liability and
provide MINOLTA with such revised T/R DELIVERABLES within [ * ] days
whereupon MINOLTA shall have a further period of [ * ] days to test and
either accept or reject same.
5.2 Upon satisfactory completion of acceptance testing provided herein,
MINOLTA shall send T/R a written notice informing of MINOLTA's
acceptance of T/R DELIVERABLES.
5.3 If MINOLTA fails to provide T/R with a notice of either acceptance or
rejection of T/R DELIVERABLES within the time period stipulated in
Paragraph 5.1, T/R DELIVERABLES shall be deemed to be accepted by
MINOLTA.
5.4 T/R and MINOLTA agree that PROJECT will be terminated at the time when
all T/R DELIVERABLES set forth in an applicable ADDENDUM are accepted
(hereinafter called "FINAL ACCEPTANCE").
6. PAYMENT
6.1 The fees payable to T/R, and the payment schedule for such fees for
each PROJECT, shall be set forth in an ADDENDUM. MINOLTA shall pay such
fees to T/R in accordance with this Agreement and such ADDENDUM.
6.2 Any payment provided herein shall be made in U.S. Dollars by wire
transfer to the bank account T/R shall designate in writing to MINOLTA.
Late payments shall be subject to a late charge of the lesser of the
maximum monthly interest allowed by applicable law or [ * ] per month.
6.3 The transportation of materials by T/R for PROJECT and acceptance
testing, including, but not limited to T/R DELIVERABLES, shall be
arranged by T/R. All shipping, customs, insurance and similar costs of
transportation for delivery of the T/R DELIVERABLES shall be T/R's full
responsibility unless such charges are unreasonably expensive.
* Confidential information has been omitted and filed separately with the
Commission.
5
6.4 In the event that MINOLTA is required to withhold taxes imposed upon
T/R for any payment under this Agreement and the ADDENDUM by virtue of
any statutes, laws, codes, or government regulations, then such
payments will be made by MINOLTA and deducted from MINOLTA's payment
obligations under this Agreement; provided, however, that MINOLTA will
obtain and furnish T/R with official tax receipts or other evidence of
payment issued by the respective tax authority sufficient for T/R to
establish payment of such taxes in support of a claim for a credit
against T/R's U.S. tax liability.
7. THE RESULT OF THE DEVELOPMENT WORK
7.1 T/R and MINOLTA agree RESULTS in relation to T/R DELIVERABLES shall
belong to MINOLTA and other RESULTS shall belong to T/R.
Notwithstanding the above, the parties shall retain their respective
rights to any technologies, intellectual property rights and know-how
which be owned solely prior to this Agreement.
7.2 If MINOLTA or T/R intend to file applications for registration of
intellectual property regarding their respective RESULTS, each shall
cooperate with the filing party for such filing and registration,
including the furnishing of necessary information, upon the filing
party's request.
8. WARRANTY
8.1 T/R warrants that T/R DELIVERABLES will substantially conform with
PRODUCT SPECIFICATION.
8.2 T/R warrants that T/R DELIVERABLES and T/R's PACKED BIT COMPRESSION
will not cause any infringement upon any rights and/or intellectual
property rights of any third parties.
8.3 Each party represents and warrants to the other party that to the best
of its knowledge and belief, a. it has the right and power to enter
into this Agreement; and b. it has the right to disclose the
information which it discloses hereunder; and c. there are no
outstanding assignments, granted licenses, encumbrances, obligations or
agreements to which it is a party or by which it is bound, which are
inconsistent with this Agreement.
9. FURNISHMENT
9.1 In the event that MINOLTA, at its sole discretion, desires to entrust
T/R with the manufacture of PRODUCT, T/R shall accept such entrusted
manufacture and manufacture PRODUCT on mutually agreed terms and
conditions, which terms and conditions shall be documented in a
separate agreement.
9.2 Notwithstanding Paragraph 9.1, MINOLTA, for the reason of T/R's
rejection of such manufacture, desires to manufacture and have
manufactured such PRODUCT, T/R shall grant a necessary license and make
necessary arrangements, including providing technical assistance, on
mutually agreed terms and conditions, which terms and conditions shall
be documented in a separate agreement, so that MINOLTA can manufacture,
have manufactured, use, sell, rent, lease, distribute and dispose such
PRODUCT.
* Confidential information has been omitted and filed separately with the
Commission.
6
9.3 In the event that MINOLTA, at its sole discretion, desires to
manufacture and have manufactured all or partial PRODUCT, T/R shall
grant a necessary license and make necessary arrangements, including
providing technical assistance, on mutually agreed terms and
conditions, which terms and conditions shall be documented in a
separate agreement, so that MINOLTA can manufacture, have manufactured,
use, sell, rent, lease, distribute and dispose such PRODUCT.
10. LICENSE
10.1 T/R shall grant MINOLTA a perpetual non-exclusive, worldwide, fully
paid up, royalty free, unrestricted license to the RESULT belonging to
T/R in accordance with Paragraph 7.1 hereof. MINOLTA shall have the
right to grant sublicenses to third parties regarding the license
granted under paragraph 10.1 hereof.
10.2 T/R shall grants MINOLTA and MINOLTA's AFFILIATES a personal,
non-transferable, limited, royalty-free license to (a) internally use,
copy and modify T/R's PACKED BIT COMPRESSION, (b) to manufacture and
have manufactured all or any part of MINOLTA's products that
incorporate T/R's PACKED BIT COMPRESSION and T/R's PACKED BIT
COMPRESSION modified by MINOLTA, and (c) to sell, rent, lease,
distribute and otherwise dispose MINOLTA's products that incorporate
T/R's PACKED BIT COMPRESSION and T/R's PACKED BIT COMPRESSION
modified by MINOLTA in connection with the T/R's products.
10.3 Except as expressly provided under this Agreement, no license or rights
to any intellectual property or CONFIDENTIAL INFORMATION is granted by
either party to the other.
11. INDEPENDENT DEVELOPMENT
Nothing in this Agreement shall preclude either party from
independently developing, acquiring or marketing materials which are
not derivative of T/R DELIVERABLES, but which contain ideas and
concepts similar to those in the T/R DELIVERABLES.
12. SALE
MINOLTA shall have the exclusive sales right in respect of those T/R
DELIVERABLES indicated as "Exclusive" on Exhibit C and such T/R
DELIVERABLES modified by T/R, however nothing contained herein will
provide MINOLTA with any exclusive right to similar devices which do
not include any RESULT.
13. STATUS OF AFFILIATE
In procuring development services and other items from T/R pursuant to
this Agreement, MINOLTA will act on its own behalf or as agent for, and
for the benefit of, certain identified MINOLTA's AFFILIATES. MINOLTA
represents and warrants to T/R that MINOLTA is authorized and empowered
to enter into this Agreement and any applicable ADDENDUM on behalf of
any such MINOLTA's AFFILIATES. Each of MINOLTA's AFFILIATES
participating in any activities or receiving any services or other
items under this Agreement and any applicable ADDENDUM shall be deemed
to have approved and accepted the terms of this Agreement and such
ADDENDUM and shall be legally bound to the terms of this
* Confidential information has been omitted and filed separately with the
Commission.
7
Agreement and such ADDENDUM to the same extent as if such party was a
signatory to this Agreement and such ADDENDUM. MINOLTA shall be
responsible for any breach of this Agreement or such ADDENDUM by such
MINOLTA's AFFILIATES.
14. INDEMNIFICATION
14.1 T/R agrees to indemnify, hold harmless and defend MINOLTA from and
against any and all damages, costs and expenses, including reasonable
attorneys' fees, incurred in connection with any breach by T/R of the
terms of ADDENDUM and this Agreement. IN NO EVENT SHALL T/R BE LIABLE
FOR ANY LOSS OF PROFIT OR ANY OTHER COMMERCIAL DAMAGE, INCLUDING BUT
NOT LIMITED TO SPECIAL, INCIDENTAL, CONSEQUENTIAL OR OTHER INDIRECT
DAMAGES UNDER ANY CAUSE OF ACTION ARISING OUT OF OR RELATING TO THIS
PARAGRAPH 14.1, INCLUDING, WITHOUT LIMITATION, CLAIMS ARISING FROM
MALFUNCTION OR DEFECTS IN T/R DELIVERABLES OR NON-DELIVERY, EVEN IF T/R
HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
14.2 T/R agrees to indemnify, hold harmless and defend MINOLTA from and
against any and all damages, costs and expenses, including reasonable
attorneys' fees, incurred in connection with any third party's claim
that T/R DELIVERABLES and T/R's PACKED BIT COMPRESSION infringes any
rights, including without limitation any intellectual property rights,
of such third party.
15. CONFIDENTIALITY
15.1 T/R and MINOLTA shall disclose the necessary information for PROJECT to
the other party upon reasonable request or at their own discretion.
15.2 Each party agrees to keep CONFIDENTIAL INFORMATION received from the
other party pursuant to this Agreement strictly secret and confidential
for three (3) years from the date of disclosure of such CONFIDENTIAL
INFORMATION, except as disclosure of such information is expressly
permitted by this Agreement.
15.3 T/R shall not announce all or any part of RESULTS to any third parties
without prior notification to MINOLTA, unless required by law or
disclosure requirements of the United States Securities and Exchange
Commission. MINOLTA shall not announce all or any part of RESULTS to
any third parties without prior notification to T/R.
16. TERM AND TERMINATION
16.1 The term of this Agreement shall begin on the Effective date of this
Agreement identified in the above and shall continue in effect for
three (3) years thereafter, unless this Agreement earlier is terminated
pursuant to Paragraph 16.2 or 16.3 hereof. Thereafter it shall
automatically renew for one-year terms unless either party gives the
other party notice of its desire not to renew this Agreement at least
three (3) months prior to the expiration of the original or extended
term of this Agreement. Notwithstanding the foregoing, should any
ADDENDUM be ongoing at the time of such notice and such ADDENDUM would
be affected by proposed termination, the parties shall agree on an
appropriate length of time necessary to extend the term of this
Agreement for the specific purpose of completing such ADDENDUM.
* Confidential information has been omitted and filed separately with the
Commission.
8
16.2 Notwithstanding Paragraph 16.1, in case of a material breach of this
Agreement by either party, the other party shall have the right to
terminate this Agreement upon thirty (30) days written notice
specifying the breach, if the breach is not cured by the breaching
party within such thirty (30) day period.
16.3 Notwithstanding Paragraph 16.1, if either party ceases doing business
in the normal course, becomes insolvent, makes a general assignment for
the benefit of creditors, or if any proceedings are commenced under any
bankruptcy or insolvency law with respect to the party which are not
dismissed within thirty (30) days after commencement, the other party
may terminate this Agreement and the ADDENDUM upon (10) days written
notice to the party.
16.4 Notwithstanding any other provisions of this Agreement, the provisions
of Paragraph 1 and 7-26 shall survive any termination or expiration of
this Agreement.
17. NO ASSUMPTION OR IMPLICATION
No obligation is assumed or implied against either party except for
that clearly stated herein.
18. APPLICABLE LAW
This Agreement shall be governed by and construed in accordance with
the laws of the State of Georgia, United States of America.
19. ARBITRATION
19.1 Any disputes, controversies or differences which may arise between both
parties, out of, in relation to or in connection with this Agreement,
or the breach thereof, shall be amicably and promptly settled upon
consultation between both parties.
19.2 In case that the amicable settlement is not reached within thirty (30)
days after commencing consultation as provided in the proceeding
subparagraph, the dispute controversy or difference shall be settled by
arbitration in the country in which is located the principle office of
the respondent party, in accordance with the appropriate Arbitration
Rules in such country, without being submitted to general court in such
country. The award rendered by the arbitrators shall be final and
binding upon the parties hereto.
20. FORCE MAJEURE
In the event non-fulfillment or delayed performance of all or any part
of this Agreement, due directly or indirectly to any Act of God,
government orders, rules or restrictions, fire, flood, war, strikes or
labor disputes, or any other casualties beyond the control of either
party, both parties shall negotiate to take corrective measures.
21. NOTICES
21.1 All notices required or permitted hereunder shall be in writing and
shall be effective upon personal delivery or when mailed by express
mail service such as UPS, Federal Express, DHL, or equivalent, postage
fully prepaid, and addressed to the respective party as
* Confidential information has been omitted and filed separately with the
Commission.
9
designated in Paragraph 20.2 or Paragraph 20.3. Any notice that is
transmitted via mail may also be transmitted via fax prior to mailing,
if convenient for both parties.
21.2 Notices from MINOLTA to T/R shall be addressed as follows:
Attention: President and CEO
T/R SYSTEMS, INC.
0000 Xxxxxxxx Xxxxx
Xxxxxxxx, Xxxxxxx X.X.X. 00000
fax: 000-000-0000
21.3 Notices from T/R to MINOLTA shall be addressed as follows:
Attention: Senior Manager
System Development Center
Minolta Co. Ltd.
Tokyo office
NS Xxxxxxxx Xxxx., 0-00-00, Xxxxxxxx, Xxxxxx-Xx,
Xxxxx 000-0000, Xxxxx
fax: 00-0-0000-0000
21.4 Either party may change its address for the purpose of notices by
giving notice in writing to the other party.
22. COMPLIANCE WITH LAWS
Each party agrees to comply with all applicable laws and regulations,
including without limitation those relating to export and re-export,
relating to its performance hereunder and the exercise of any of its
rights relating to this Agreement. Each party agrees to indemnify and
hold the other party harmless from and against all claims, liability,
expenses (including attorneys' fees) and/or damages arising from its
own non-compliance with any such law or any regulation issued under
such law.
23. ENTIRE AGREEMENT
This Agreement and the ADDENDUM constitute the entire, final agreement
between the parties hereto with respect to the subject matter hereof,
and supersede all prior agreements and understandings, oral or written,
between the parties hereto, and there are no representations,
understandings or agreements relative hereto which are not fully
expressed herein. In the event that this Agreement conflicts with the
SUPPLY AGREEMENT, the terms of the SUPPLY AGREEMENT shall prevail.
24. AMENDMENT & WAIVER
No failure or delay in exercising any provision of this Agreement shall
constitute a waiver of such provision or any other provision hereof.
Neither this Agreement nor any provision hereof may be released,
discharged, waived, abandoned, or modified in any manner, except by an
instrument in writing, signed by duly authorized officers or
representatives of both parties, specifically referencing this
Agreement.
* Confidential information has been omitted and filed separately with the
Commission.
10
25. RELATIONSHIP OF PARTIES
This Agreement does not constitute a partnership, joint venture, or
agency between the parties hereto, nor shall either of the parties hold
itself out as such, contrary to the terms hereof by advertising or
otherwise, nor shall either of the parties be bound or become liable
because of any representation, action or omission of the other. Nothing
in this Agreement shall be construed as a representation or inference
that the parties' relationship hereunder is or shall become exclusive
with regards to any term contained herein.
26. SEVERABILITY
If any term, provision, covenant or condition of this Agreement is
declared or found to be illegal, invalid, void or unenforceable, the
rest of this Agreement shall remain in effect and shall in no way be
affected, impaired or invalidated.
* Confidential information has been omitted and filed separately with the
Commission.
11
IN WITNESS WHEREOF, the parties have executed this Agreement by their authorized
representatives as of the day and year first above written.
T/R SYSTEMS INC. MINOLTA CO., LTD.
/s/ Xxxxxxx X. Xxxxxxxxx /s/ Yoshisuke Takekida
----------------------------- ---------------------------------
(signed) (signed)
Xxxxxxx X. Xxxxxxxxx Yoshisuke Takekida
----------------------------- ---------------------------------
(printed name) (printed name)
General Manager
President and CEO Systems Development Center
----------------------------- ---------------------------------
(title) (title)
Jan. 31, 2001 Jan. 29, 2001
----------------------------- ---------------------------------
(date) (date)
* Confidential information has been omitted and filed separately with the
Commission.
