JOINT VENTURE AGREEMENT
THIS AGREEMENT is entered into as of October 25, 1996 (the
"Effective Date"), by and among Akebono Brake Industry Co., Ltd.
("Akebono"), Nihon Cement Company Ltd. ("Nihon Cement"), Lanxide K.K.
("KK"), and Kanematsu Corporation ("KG"), all corporations chartered under
the laws of Japan, and Lanxide Corporation ("Lanxide"), a U.S. corporation
chartered under the laws of the State of Delaware (collectively, the
"Parties").
WITNESSETH
WHEREAS, certain lightweight ceramic-reinforced aluminum brake
components have been developed by Lanxide, and a pilot production line (the
"Pilot Line") has been created at Lanxide's Newark, Delaware facilities
under a cooperative development program among Lanxide, Nihon Cement, KK and
KG; and
WHEREAS, Akebono has marketing knowledge and capability, product
design and development capability, volume manufacturing experience and
customer credibility in the brake industry; and
WHEREAS, the Parties believe that there may be a large market
opportunity for lightweight ceramic-reinforced aluminum brake components in
the automotive industry which could be realized upon by a combination of
the assets and skills of the Parties;
WHEREAS, the Parties wish to incorporate a new company in Japan
for the purpose of manufacturing and marketing lightweight ceramic
reinforced brake components.
NOW, THEREFORE in consideration of the premises and the mutual
covenants herein contained the Parties hereby agree as follows:
ARTICLE I.
DEFINITIONS
When used in this Agreement, the following terms shall have the
respective meanings, set forth below:
1.1 "Affiliate(s)" of a Person means a Person that directly or
indirectly through one or more intermediaries controls, is controlled by,
or is under common control with such Person.
1.2 "Agreement" means this Agreement and the Schedules hereto as
amended from time to time.
1.3 "Commercial JV" means the commercial manufacturing and
marketing joint venture company defined in Article II Section 2.1 herein.
1.4 "JV Parties" shall mean Akebono, Nihon Cement and KG.
1.5 "LTC" means Lanxide Technology Company, L.P. a Delaware
limited partnership wholly owned and controlled by Lanxide.
1.6 "Party" means a party to this Agreement, namely, Akebono,
Nihon Cement, Lanxide, KK or KG.
1.7 "Person" means any individual, corporation, partnership,
limited liability company, joint venture, association, joint stock company,
trust, unincorporated organization or government or any agency or political
subdivision thereof.
1.8 "Products" means products as defined in the document attached
to this Agreement as Schedule 1.
ARTICLE II.
COMMERCIAL MANUFACTURING AND MARKETING JOINT VENTURE
2.1 Formation. The JV Parties shall, immediately following the
Effective Date, enter into a commercial manufacturing and marketing joint
venture (the "Commercial JV") to be licensed in accordance with the
provisions of Articles IV, V and VI hereunder. Other than with respect to
the provisions of this Article II and Articles IV, V, VI and VII hereunder,
such Commercial JV shall be on such terms as the JV Parties shall agree;
provided, however, the Parties hereto shall be bound by the obligations
hereunder.
2.2 Objectives. The objectives of the Commercial JV shall, except
as otherwise agreed by the JV Parties, be to identify customers for
Products, provide prototypes of Products to customers, qualify Products
with customers for specific vehicle platforms, develop production orders
for the Commercial JV from customers, and ultimately to profitably
manufacture and sell Products on a large scale commercial basis.
2.3 Initial Capital Contributions. Initial funding for the
Commercial JV shall be provided by the respective JV Parties as capital
contributions in the amounts and on the dates specified below:
Initial capital contributions provided by Akebono to the Commercial JV:
Date Amount
October 31, 1996 $110.25 Million
December 31, 1996 $110.25 Million
Initial capital contributions provided by Nihon Cement to the Commercial JV:
Date Amount
October 31, 1996 $220.5 Million
Initial capital contributions provided by KG to the Commercial JV:
Date Amount
October 31, 1996 $24.5 Million
December 31, 1996 $24.5 Million
The above funding, together with payment receipts by the Commercial JV in
connection with Article VII Sections 7.1 and 7.2 hereunder, shall be used
by the Commercial JV to pay the amounts specified under Article IV Section
4.1 to Lanxide and the amounts specified under Article V Section 5.1
to KK, and the JV Parties shall cause the Commercial JV to make such
payments. The remaining funds shall be used by the Commercial JV as
further determined by the JV Parties.
2.4 Ownership Interests in the Commercial JV. The JV Parties shall
each have ownership interest in the Commercial JV according to the ratio of
their capital contributions.
2.5 Management. Except as stipulated herein, the Commercial JV
shall be managed and operated in accordance with the agreement of JV
Parties.
ARTICLE III.
PILOT LINE
3.1 Use of Pilot Line. The Parties acknowledge and agree that the
Pilot Line will be used by Lanxide to manufacture Products on a best
efforts basis to support the initial development of a market for Products
outside North America. Fully burdened costs of manufacturing such Products
shall be reimbursed to Lanxide by the Commercial JV from revenues charged
to customers by the Commercial JV for such Products to the extent of such
revenues. In the event that such revenues being charged are forecast to be
insufficient to cover the costs of manufacture of such Products for a
particular customer, the Parties shall cooperate to attempt to overcome the
shortfall. In no event, however, shall Lanxide be construed as obligated
hereunder to produce Products for which insufficient funds are provided to
cover the costs of making such Products. If and when Lanxide receives
orders from the Commercial JV which Lanxide judges to be beyond its then
current capacity, the Parties shall consult with each other to determine
the disposition of such orders. Lanxide shall have the right to decline to
produce orders for the Commercial JV which require specifications and/or
deliveries which Lanxide judges to be beyond its then current capability or
capacity. The Parties agree that the Commercial JV will have a first
priority call on the full capacity of the Pilot Line to support its market
development needs outside North America, and acknowledge that Lanxide will
continue to use the Pilot Line for its own needs to the extent that Pilot
Line capacity is not then being fully utilized by the Commercial JV, in
which case, the incremental costs associated with such use by Lanxide shall
he borne by Lanxide.
ARTICLE IV
LANXIDE LICENSE TO COMMERCIAL JV
4.1 Lanxide License Fee and License Execution. The Commercial JV
shall pay a license fee of $4,000,000 in U.S. dollars to Lanxide pursuant
to the license agreement attached hereto as Exhibit A (the "Lanxide
License"), according to the following schedule:
Date Amount
November 15, 1996 $4,000,000
In consideration of the commitments herein, Lanxide shall execute and shall
cause its Affiliate LTC to execute the Lanxide License, subject to its
further terms specified therein.
ARTICLE V.
KK LICENSE TO COMMERCIAL JV
5.1 KK Fee and License Execution. The Commercial JV shall pay an
initial license fee to KK in Japanese Yen in an amount equal to $4,000,000
in U.S. dollars, according to the following schedule, plus the amount of
any consumption tax in Japan:
Date Amount
November 15, 1996 $1,000,000
December 31, 1996 $1,000,000
June 30, 1997 $1,000,000
December 31, 1997 $1,000,000
In consideration of the payment commitments herein, KK shall enter into the
license agreement (the "KK License") attached hereto as Exhibit B, subject
to its further terms specified therein.
ARTICLE VI.
EXCLUSIVE MANUFACTURING LICENSE OPTION
6.1 In the event that the JV Parties commit to Lanxide in
writing prior to September 30, 1997 to fund the Commercial JV with
$4,000,000 in U.S. dollars in addition to their initial capital
contributions described in Article II hereof on or before September 30,
1998, each in proportion to their then ownership interest in the Commercial
JV, and b) the Commercial JV commits to Lanxide in writing prior to
September 30, 1997 to execute the exclusive manufacturing license option
and pay $4,000,000 to Lanxide on or before September 30, 1998, Lanxide
agrees that in consideration thereof that it will execute and cause its
Affiliate LTC to execute the license agreement attached hereto as Exhibit
C.
ARTICLE VII.
R&D SUBLICENSES
7.1 Sublicense Fee and R&D Sublicense to Akebono. Akebono shall
pay a sublicense fee of the Yen equivalent of $2,000,000 U.S. dollars to
the Commercial JV, according to the following schedule, plus the amount of
any consumption tax in Japan:
Date Amount
June 30, 1997 $1,000,000
December 31, 1997 $1,000,000
In consideration of the payment commitments herein, the Commercial JV shall
enter into the sublicense agreement (the "Akebono R&D Sublicense") attached
hereto as Exhibit D, subject to its further terms specified therein.
7.2 Sublicense Fee and R&D Sublicense to Nihon Cement. Nihon
Cement shall pay a sublicense fee of the Yen equivalent of $2,000,000 U.S.
dollars to the Commercial JV, according to the following schedule, plus the
amount of any consumption tax in Japan:
Date Amount
November 15, 1996 $2,000,000
In consideration of the payment commitments herein, the Commercial JV shall
enter into the sublicense agreement (the "Nihon Cement R&D Sublicense")
attached hereto as Exhibit E, subject to its further terms specified therein.
ARTICLE VIII.
REPRESENTATIONS AND WARRANTIES
The Parties hereby make the following representations and
warranties to each other:
8.1 Valid and Binding Agreement. Each of the Parties has all
requisite power and authority to execute and deliver this Agreement and to
consummate the transactions contemplated hereby. This Agreement, the
Exhibits hereto, and all other agreements required to consummate the
transactions contemplated hereunder, to the extent they are obligations of
any of the Parties, have all been duly executed and delivered by them and
constitute the legal, valid and binding obligations of them, enforceable
against them individually and collectively in accordance with their
respective terms.
8.2 Organization, Good Standing and Qualification. Akebono, Nihon
Cement, KK and KG: (a) are corporations duly organized, validly existing
and in good standing under the laws of Japan; (b) have all necessary
corporate power and authority to carry on its respective business and to
own, lease and operate its properties.
Lanxide: (a) is a corporation duly organized, validly existing and
in good standing under the laws of the State of Delaware; (b) has all
necessary corporate power and authority to carry on its respective business
and to own, lease and operate its properties; and (c) is not required, by
the nature of its properties or business, to be qualified to do business as
a foreign entity or corporation in any foreign jurisdiction, other than to
the extent that such qualification may be legally required in Japan.
ARTICLE IX.
CONFIDENTIALITY.
9.1 Each Party shall treat as confidential any and all proprietary
information which such Party obtains from the other Parties directly or
indirectly in connection with this Agreement, and shall not disclose the
same to any third Person (other than Affiliates to the extent they are
similarly bound) without the prior written consent of the other Parties nor
use the same except as provided in this Agreement; provided however , that
each receiving Party may disclose such information to its employees, to the
extent necessary. In such case, each receiving Party shall cause its
employees which received such information to comply with the provisions of
this Article IX. The obligations provided for in this Article IX shall
remain in effect during the term of this Agreement and for a period of five
(5) years after the termination or expiration hereof.
9.2 The provisions of Article IX Section 9.1 shall not apply to
any proprietary information that (i) has become generally available to the
public through no fault of the receiving Party or its employees, (ii) the
receiving Party can prove by clear and convincing documentary evidence was
in its possession before disclosure hereunder and did not come directly or
indirectly from the disclosing Party, (iii) becomes known to the receiving
Party through lawful disclosure from a third party that is not subject to a
confidentiality agreement with the disclosing Party or Affiliate, or (iv)
the receiving Party can prove by clear and convincing documentary evidence
has been or is developed by the receiving Party independent of any such
proprietary information disclosed by the disclosing Party.
ARTICLE X.
TERM.
10.1 Except as otherwise agreed by the JV Parties, unless earlier
terminated pursuant to Article XI below, the effective term of this
Agreement shall be perpetual and non cancellable.
ARTICLE XI.
TERMINATION.
11.1 If any Party breaches this Agreement, and such breach is not
cured within thirty (30) days after receipt by the Party in breach of
written notice from one of the other Parties specifying the nature of the
breach, such notice to be given simultaneously to all Parties, such other
Party giving notice of breach shall have the right to terminate this
Agreement by giving written notice thereof to the Party in breach and the
other Parties.
11.2 Any Party hereto may terminate this Agreement by giving
written notice of termination to the other Parties in the event of any of
the following events:
(a) upon or after filing by another Party of a petition in
bankruptcy or insolvency;
(b) upon or after any adjudication that another Party is bankrupt
or insolvent;
(c) upon or after the filing by another Party of any petition
seeking reorganization, readjustment or arrangement of the business of such
other Party under any law;
(d) upon or after the appointment of a receiver for all or
substantially all of the property of another Party;
(e) upon or after the institution of any proceedings for the
liquidation or winding up of the business of another Party;
(f) upon termination of the Commercial JV agreement in Japanese
among the JV Parties of even date hereof and as amended from time to time;
or
(g) upon the failure to perform any part of this Agreement by any
Party due to force majeure, in the event such failure should continue for
six (6) months. Provided, however, subparagraph 11.2(f) shall be effective
and valid only after all payment obligations of JV Parties and Commercial
JV hereunder are fully performed in accordance with this Agreement.
11.3 No failure or delay on the part of any Party hereto in
exercising its right of termination hereunder for any one or more causes
shall be construed to prejudice its right of termination for such or for
any other or subsequent cause.
11.4 In the event that any of the payment obligations of the
Parties under this Agreement is not performed at the time of termination of
this Agreement due to breach of this Agreement by any Party ("Defaulting
Party") or because of bankruptcy, insolvency, reorganization, receivership
or winding up the business of any Party ("Non-performing Party"), the
payment obligation of such Defaulting Party or Non-performing Party shall
survive the termination and such Defaulting Party or Non-performing Party
shall forthwith make full payment of such payment obligation. The Parties
agree that any delayed payment shall bear interest at a rate of 5% per
annum.
11.5 In the event that Lanxide ceases to carry on business,
becomes or is declared insolvent, files or has filed against it a petition
in bankruptcy, has a receiver appointed over its assets, or takes or has
taken against it any similar act as a result of debt, as a result of action
or inaction by some Person other than Commercial JV or a Person controlled
by Commercial JV; Commercial JV shall take measures under applicable laws,
and K.K. shall assist Commercial JV in such measures, to retain all its
rights under the license stipulated in Exhibits A and C, and under any
agreement supplementary to Exhibits A and C, as such rights existed
immediately before the happening of such an event for a term equal to any
remaining duration of Exhibits A and C (including all extensions) in
accordance with the Bankruptcy Code of 1978 as amended, Section 365
(n)(1)(B).
ARTICLE XII.
FORCE MAJEURE.
12.1 No Party shall be responsible for or liable for failure to
perform any part of this Agreement or for any delay in the performance of
any part of this Agreement resulting from or contributed to by acts of God,
war, riots or other incident of force majeure or the adoption or enactment
of any law, ordinance, regulation, ruling or order directly or indirectly
interfering with any performance hereof or payment hereunder. Should a
Party encounter difficulty or threat of failure of the performance of any
part of this Agreement for any reason including force majeure, the affected
Party shall inform the other Parties of the situation with reasonable
promptness and the Parties shall discuss and cooperate to resolve such
problems. However, if such failure due to force majeure by any Party to
perform any part of this Agreement should continue for six (6) months, any
other Party shall have the right to terminate this Agreement.
ARTICLE XIII.
ARBITRATION.
13.1 Any and all disputes, controversies or differences arising
from or in relation to or in connection with this Agreement or a
transaction conducted under this Agreement shall be settled by mutual
consultation among the Parties in good faith as promptly as possible, but
failing an amicable settlement, shall be settled by arbitration in
accordance with the Commercial Arbitration Rules of The International
Chamber of Commerce, by which each Party agrees to be bound. The
arbitration shall be held at a place mutually agreed to by the Parties, but
if they fail to agree within thirty (30) days after demand for arbitration
by any Party, the arbitration shall be held in Tokyo, Japan, if arbitration
is requested by Lanxide or Lanxide KK, and in New York, New York, U.S.A.,
if arbitration is requested by Akebono, Nihon Cement or KG. The award of
the arbitrators shall be final and binding upon the Parties.
ARTICLE XIV.
MISCELLANEOUS.
14.1 Effect of Headings. The Article and Section headings used in
this Agreement and the titles of the Schedules and Exhibits hereto are
included for purposes of convenience only, and shall not affect the
construction or interpretation of any of the provisions hereof or of the
information set forth in such Articles, Sections, Schedules and Exhibits.
14.2 Entire Agreement, Waivers. This Agreement constitutes the
entire agreement among the Parties pertaining to the subject matter hereof,
and supersedes all prior agreements or understandings as to such subject
matter. No Party hereto has made any representation or warranty or given
any covenant to the other except as set forth in this Agreement and the
Schedules and any executed Exhibits hereto. No waiver of any of the
provisions of this Agreement shall be deemed, or shall constitute, a waiver
of any other provisions, whether or not similar, nor shall any waiver
constitute a continuing waiver. No waiver shall be binding unless executed
in writing by the Party making the waiver.
14.3 Counterparts. This Agreement may be executed simultaneously
in any number of English language counterparts, each of which shall be
deemed an original, but all of which together shall constitute one and the
same instrument.
14.4 Notices. All notices, requests, demands and other
communications under this Agreement shall be in writing and shall be deemed
to have been duly given (i) on the date of service if served personally on
the Party to whom notice is to be given, or if given by facsimile
transmission to the number indicated below, or (ii) on the third day after
mailing if mailed to the Party to whom notice is to be given, by first
class mail, registered or certified, postage prepaid, and properly
addressed as follows:
(a) If to Akebono:
Akebono Brake Industry Co., Ltd.
00-0, Xxxxxxxxxx Xxxxxxxx
Xxxx-xx
Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: Manager, Corporate Planning Dept.
(b) If to Nihon Cement:
Nihon Cement Co., Ltd.
Ohtemachi Xxxxxxxx
0-0, Xxxxxxxxx 0-xxxxx
Xxxxxxx-xx
Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: General Manager of First Development Dept.
(c) If to KK:
Lanxide K.K.
0-0-00, Xxxxx-xxxx
Xxxxxx-xx
Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: President
(d) If to KG:
Kanematsu Corporation
2-1, Xxxxxxxx 0-xxxxx
Xxxxxx-xx
Xxxxx 000-00, Xxxxx
FAX: 00-0000-0000
Attention: General Manager, Iron and Steel Division
(e) If to Lanxide:
Lanxide Corporation
0000, Xxxxxxx Xxxx
X.X. Xxx 0000
Xxxxxx, Xxxxxxxx 00000-0000
XXX
FAX: (000)-000-0000
Attention: President
or to such other address as any party shall have specified by notice in
writing given to the other Parties.
14.5 Amendments and Modifications. No amendment or modification of
this Agreement or any Schedule or Exhibit hereto shall be valid unless made
in writing and signed by an authorized representative of each of the
relevant Parties.
14.6 Binding Effect. This Agreement shall be binding upon and
shall inure to the benefit of the Parties hereto and their respective
heirs, executors, administrators, personal representatives, successors and
permitted assignees.
14.7 Governing Law: Jurisdiction. This Agreement shall be
construed and interpreted and the rights granted herein shall be governed
in accordance with the laws of Japan.
IN WITNESS WHEREOF, the Parties have executed this Agreement as of
the date above first written.
AKEBONO BRAKE INDUSTRY CO., LTD. NIHON CEMENT CO. LTD.
By: /s/ Misataka Nibumoto By: Xxxxxx Xxxxxx
Name: Misataka Nibumoto Name: Xxxxxx Xxxxxx
Title: President & CEO Title: President
LANXIDE X. X. XXXXXXXXX CORPORATION
By: Xxxx X. Xxxxxxx By: /s/ X. Xxxxxxxxxx
Name: Xxxx X. Xxxxxxx Name: X. Xxxxxxxxxx
Title: President Title: Managing Director
LANXIDE CORPORATION
By: /s/ Xxxx X. Xxxxxxx
Name: Xxxx X. Xxxxxxx
Title: President
SCHEDULE 1
"Products" shall mean brake rotors, brake drums, brake shoes,
brake pistons, brake caliper bodies, brake pad backing plates, brake
caliper anchors, steering knuckles, drum brake back plates, brake torque
anchor support plates, disc brake back plates, wheel hubs, brake dust
xxxxxxx, brake modulator housings, brake pressure control valve housings,
wheel brake cylinder housings, and brake master cylinder housings, all made
only from Ceramic-Reinforced Aluminum for use only on passenger cars,
trucks, buses, trailers, motorcycles, railroad locomotives, railroad
rolling stock and industrial equipment.
A JOINT DEVELOPMENT AGREEMENT
THIS AGREEMENT is entered into as of October 25, 1996 (the
"Effective Date"), by and among Akebono Brake Industry Co., Ltd.
("Akebono"), and Nihon Cement Company Ltd. ("Nihon Cement"), corporations
chartered under the laws of Japan, and Lanxide Corporation ("Lanxide"), a
U.S. corporation chartered under the laws of the State of Delaware
(collectively, the "Parties").
WITNESSETH
WHEREAS, certain lightweight ceramic-reinforced aluminum brake
components have been developed by Lanxide, and a pilot production line (the
"Pilot Line") has been created at Lanxide's Newark, Delaware facilities
under a previous cooperative development program among Lanxide, Lanxide
Kabushiki Kaisha, Nihon Cement, and Kanematsu Corporation; and
WHEREAS, Akebono has marketing knowledge and capability, product
design and development capability, volume manufacturing experience and
customer credibility in the brake industry; and
WHEREAS, the Parties believe that there may be a large market
opportunity for lightweight ceramic-reinforced aluminum brake components in
the automotive industry which could be realized upon by a combination of
the assets and skills of the Parties;
WHEREAS, Akebono, Nihon Cement, and Kanematsu Corporation will
establish a new company in Japan for the purpose of commercially
manufacturing certain products applying technology developed in accordance
with this Agreement (the "Commercial JV").
NOW, THEREFORE, in consideration of the premises and the mutual
covenants herein contained the Parties hereby agree as follows:
ARTICLE I.
DEFINITIONS
When used in this Agreement, the following terms shall have the
respective meanings, set forth below:
1.1 "Affiliate(s)" of a Person means a Person that directly or
indirectly through one or more intermediaries controls, is controlled by,
or is under common control with such Person.
1.2 "Agreement" means this Agreement and the Schedules hereto as
amended from time to time.
1.3 "Party" means a party to this Agreement, namely, Akebono,
Nihon Cement, or Lanxide.
1.4 "Person" means any individual, corporation, partnership,
limited liability company, joint venture, association, joint stock company,
trust, unincorporated organization or government or any agency or political
subdivision thereof.
1.5 "Products" means products as defined in the document attached
to this Agreement as Schedule B.
1.6 "Technology" means technical information, know-how, data,
techniques whether patentable or not, patents, patent applications and
proprietary information of a Party with respect to the Products.
1.7 Undivided Interest means that each Party having an ownership
interest in Joint Technology shall have the right to use the Joint
Technology on a worldwide basis for any purpose, to assign its interest in
the Joint Technology in whole or in part, and to license the Joint
Technology with or without rights to sublicense on any terms acceptable to
itself, all without the permission of any of the other Parties having an
ownership interest.
ARTICLE II.
JOINT TECHNICAL PROGRAM
2.1 Term. A joint technical development program (the "Program")
will be undertaken by the Parties commencing with the Effective Date and
continuing for two years from the Effective Date; provided, however, the
Lanxide tasks defined in section 2.3 hereunder shall be considered to have
commenced as of October 1, 1996, subject to the approval of the Parties.
2.2 Objectives. The objectives of the Program are to further
develop Products, improve manufacturing efficiencies and reduce
manufacturing costs of Products using the Pilot Line. Specific Program
goals concerning the priority of Products to be developed, process yield
and productivity objectives, and tolerance objectives for specific Products
and process steps will be discussed and decided collectively among the
Parties as the first task of the Program. Such goals and their priority
shall be revised from time to time by the Parties and changed when
appropriate based upon periodic review of the Program and market needs.
2.3 Tasks. The tasks of the Program are described in Schedules
X-0, X-0 xxx X-0 attached hereto, subject to such revision from time to
time over the term of this Agreement as the Parties may mutually agree.
2.4 Performance. The tasks which are described in Schedule A-1
shall be performed by Lanxide a) on a best efforts basis using Lanxide's
Technology including future improvements as they arise., and b) subject to
such revision from time to time over the term of this Agreement as the
Parties may mutually agree.
The tasks which are described in Schedule A-2 shall be performed
by Akebono a) on a best efforts basis, and b) subject to such revision
from time to time over the term of this Agreement as the Parties may
mutually agree.
The tasks which are described in Schedule A-3 shall be performed
by Nihon Cement a) on a best efforts basis, and b) subject to such
revision from time to time over the term of this Agreement as the Parties
may mutually agree.
2.5 Funding. Akebono, Nihon Cement and Lanxide shall jointly
develop the Program which shall be revised when and as desired by the
Parties and approved in advance by the Parties. Lanxide shall (a) follow
the reasonable instructions of the other Parties in case the proposed
revision to the Program plan is not approved unanimously by the Parties and
is rejected in advance by the Parties, provided however that such
reasonable instructions being given by the other Parties are mutually
consistent, and (b) require the written consent of the other Parties to
incorporate any Technology into the Program that Lanxide believes at the
time of such incorporation would require the payment of royalty to a third
party. The costs to be incurred by Lanxide in connection with its
performance under Article II Section 2.4 hereunder shall be paid by Akebono
and Nihon Cement, respectively, to Lanxide in U.S. dollars according to the
following schedule:
To be paid by Akebono to Lanxide:
Date Amount
October 31, 1996 $250,000
March 31, 1997 $250,000
September 30, 1997 $250,000
March 31, 1998 $250,000
To be paid by Nihon Cement to Lanxide:
Date Amount
October 31, 1996 $750,000
March 31, 1997 $750,000
September 30, 1997 $750,000
March 31, 1998 $750,000
Any additional cost incurred by Lanxide in connection with its
performance under Article II Section 2.4 hereunder shall be borne by
Lanxide.
With respect to costs incurred by Akebono in connection with its
performance under Article II Section 2.4 herein, such costs shall be
borne by Akebono. The level of fully burdened effort (computed in
accordance with Generally Accepted Accounting Principles (GAAP))
conducted by Akebono in performing the tasks in Schedule A-2 herein shall
be according to the following schedule:
Date Amount
October 25, 1996 to October 24, 1997 $1,000,000
October 25, 1997 to October 24, 1998 $1,000,000
With respect to costs incurred by Nihon Cement in connection with its
performance under Article II Section 2.4 herein, such costs shall be borne
by Nihon Cement.
2.6 Pilot Line. The Parties acknowledge and agree that the Pilot
Line will be used by Lanxide to further develop Products, improve
manufacturing efficiencies and reduce manufacturing costs of Products.
Fully burdened costs of such activity shall be charged by Lanxide against
the funding provided to Lanxide under Article II Section 2.5 hereunder in a
manner consistent with Generally Accepted Accounting Principles (GAAP) to
the extent of such funding. The Parties acknowledge that Lanxide will
continue to use the Pilot Line for its own needs to the extent that Pilot
Line capacity is not then being fully utilized by the Program, in which
case, the incremental costs associated with such use by Lanxide shall be
borne by Lanxide.
ARTICLE III.
REPRESENTATIONS AND WARRANTIES
The Parties hereby make the following representations and
warranties to each other:
3.1 Valid and Binding Agreement. Each of the Parties has all
requisite power and authority to execute and deliver this Agreement and to
consummate the transactions contemplated hereby. This Agreement has been
duly executed and delivered by the Parties and constitutes legal, valid and
binding obligations, enforceable against them individually and collectively
in accordance with its respective terms.
3.2 Organization, Good Standing and Qualification. Akebono and
Nihon Cement: (a) are corporations duly organized, validly existing and in
good standing under the laws of Japan; (b) have all necessary corporate
power and authority to carry on its respective business and to own, lease
and operate its properties.
Lanxide: (a) is a corporation duly organized, validly existing and
in good standing under the laws of the State of Delaware; (b) has all
necessary corporate power and authority to carry on its respective business
and to own, lease and operate its properties; and (c) is not required, by
the nature of its properties or business, to be qualified to do business as
a foreign entity or corporation in any foreign jurisdiction, other than to
the extent that such qualification may be legally required in Japan.
ARTICLE IV.
REPORT ON DEVELOPMENT.
4.1 Lanxide and Akebono shall each, during the term of this
Agreement, submit to the other Parties a monthly written report in
connection with their progress in connection with the Program, as well as
setting forth an accounting of the costs and expenses incurred therefor.
Nihon Cement shall also, during the term of this Agreement, submit to the
other Parties a monthly written report in connection with its activities in
connection with the Program. In addition, Lanxide shall meet weekly with
Akebono and Nihon Cement engineers to report on Lanxide's progress on the
Program tasks. Such meeting shall include furnishing a brief, unofficial
summary report, of significant events occurring in the Program over the
past week.
ARTICLE V.
DISPATCH OF ENGINEERS.
5.1 Akebono and Nihon Cement may, whenever they so desire during
the term of this Agreement upon reasonable prior notice, dispatch one or
more of their engineers to the facilities of Lanxide for the purpose of
study and discussion with respect to the development and manufacture of the
Products. Lanxide shall use its best efforts to cooperate in the training
of such engineers. The salary and costs (including travel expenses and
living expenses) for such engineers shall be borne by Akebono and Nihon
Cement each for their respective engineers.
ARTICLE VI.
INTELLECTUAL PROPERTY RIGHTS.
6.1 Lanxide shall have the right to file patent and other
intellectual property applications in any jurisdiction with respect to
developments made solely by Lanxide or its employees pursuant to the
performance of its obligations hereunder. The costs of obtaining,
maintaining and defending all such patents and other intellectual property
right shall be borne solely by Lanxide.
6.2 The Parties agree that any and all inventions made jointly
by any of the Parties hereunder during the term of this Agreement in
connection with the performance of this Agreement (hereinafter referred
to as the "Joint Technology") will be owned jointly by those Parties who
jointly made the respective inventions, each with an Undivided Interest.
The costs of obtaining, maintaining and defending all intellectual
property represented by the Joint Technology shall be borne equally, to
the extent that each Party wishes to preserve its specific rights in each
specific case. Any and all inventions made by Lanxide using the funding
provided to Lanxide under Article II Section 2.5 shall be deemed as Joint
Technology made jointly by Lanxide, Akebono and Nihon Cement and
therefore shall be owned jointly by the Parties, each with an Undivided
Interest. Any Party wishing to make a patent application in relation to
any Joint Technology shall first notify those Parties who jointly own
such Joint Technology. The decision to make a patent application, and all
relevant details thereof, shall be determined upon mutual discussion
between/among those Parties whose employees invented such Joint
Technology. All expenses relating to the filing and maintenance of such
patent application (including but not limited to all patent attorney's
expenses and all maintenance fees) shall be borne by those Parties who
jointly own such Joint Technology. Any such patent application shall name
Lanxide, Akebono and Nihon Cement as joint owners or joint assignees.
6.3 Akebono and Nihon Cement agree to grant, and hereby grant to
Commercial JV a full world-wide, royalty free, perpetual, irrevocable, non-
exclusive license to make, use and sell Products made using Joint
Technology in any manner, with full rights to Commercial JV to grant
sublicenses of Joint Technology, without the prior written notice to the
Parties.
6.4 Any data and know-how derived by Akebono concerning
performance of ceramic-reinforced aluminum brake system components shall be
produced at Akebono's own expense, and shall be the sole property of
Akebono and shall not be considered to be part of the Program, or subject
to the provisions of this Article VI.
6.5 Any data and know-how derived by Akebono concerning
composition or performance of brake friction materials shall be considered
to be the sole property of Akebono, and shall not be considered to be part
of the Program, or subject to the provisions of this Article VI.
ARTICLE VII.
CONFIDENTIALITY.
7.1 Each Party shall treat as confidential any and all proprietary
information which such Party obtains from the other Parties directly or
indirectly in connection with this Agreement, and shall not disclose the
same to any third Person (other than Affiliates to the extent they are
similarly bound) without the prior written consent of the other Parties nor
use the same except as provided in this Agreement; provided however, that
each receiving Party may disclose such information to its employees, to the
extent necessary. In such case, each receiving Party shall cause its
employees which received such information to comply with the provisions of
this Article VII. The obligations provided for in this Article VII shall
remain in effect during the term of this Agreement and for a period of five
(5) years after the termination or expiration hereof.
7.2 The provisions of Article VII Section 7.1 shall not apply to
any proprietary information that (i) has become generally available to the
public through no fault of the receiving Party or its employees, (ii) the
receiving Party can prove by clear and convincing documentary evidence was
in its possession before disclosure hereunder and did not come directly or
indirectly from the disclosing Party, (iii) becomes known to the receiving
Party through lawful disclosure from a third party that is not subject to a
confidentiality agreement with the disclosing Party or Affiliate, or (iv)
the receiving Party can prove by clear and convincing documentary evidence
has been or is developed by the receiving Party independent of any such
proprietary information disclosed by the disclosing Party.
ARTICLE VIII.
TERM.
8.1 Except as otherwise agreed by the Parties, unless earlier
terminated pursuant to Article IX below, the term of this Agreement shall
be two (2) years commencing on the Effective Date.
ARTICLE IX.
TERMINATION.
9.1 If any Party breaches this Agreement, and such breach is not
cured within thirty (30) days after receipt by the Party in breach of
written notice from one of the other Parties specifying the nature of the
breach, such notice to be given simultaneously to all Parties, such other
Party giving notice of breach shall have the right to terminate this
Agreement by giving written notice thereof to the Party in breach and the
other Parties.
9.2 Any Party hereto may terminate this Agreement by giving
written notice of termination to the other Parties in the event of any of
the following events:
(a) upon or after filing by another Party of a petition in
bankruptcy or insolvency;
(b) upon or after any adjudication that another Party is bankrupt
or insolvent;
(c) upon or after the filing by another Party of any petition
seeking reorganization, readjustment or arrangement of the business of such
other Party under any law;
(d) upon or after the appointment of a receiver for all or
substantially all of the property of another Party;
(e) upon or after the institution of any proceedings for the
liquidation or winding up of the business of another Party; or
(f) upon the failure to perform any part of this Agreement by any
Party due to force majeure, in the event such failure should continue for
six (6) months.
9.3 No failure or delay on the part of any Party hereto in
exercising its right of termination hereunder for any one or more causes
shall be construed to prejudice its right of termination for such or for
any other or subsequent cause. Termination of this Agreement shall not
affect the continued enforceability of Article VI and Article VII.
ARTICLE X.
FORCE MAJEURE.
10.1 No Party shall be responsible for or liable for failure to
perform any part of this Agreement or for any delay in the performance of
any part of this Agreement resulting from or contributed to by acts of God,
war, riots or other incident of force majeure or the adoption or enactment
of any law, ordinance, regulation, ruling or order directly or indirectly
interfering with any performance hereof or payment hereunder. Should a
Party encounter difficulty or threat of failure of the performance of any
part of this Agreement for any reason including force majeure, the affected
Party shall inform the other Parties of the situation with reasonable
promptness and the Parties shall discuss and cooperate to resolve such
problems.
ARTICLE XI.
ARBITRATION.
11.1 Any and all disputes, controversies or differences arising
from or in relation to or in connection with this Agreement or a
transaction conducted under this Agreement shall be settled by mutual
consultation among the Parties in good faith as promptly as possible, but
failing an amicable settlement, shall be settled by arbitration in
accordance with the Commercial Arbitration Rules of The International
Chamber of Commerce, by which each Party agrees to be bound. The
arbitration shall be held at a place mutually agreed to by the Parties, but
if they fail to agree within thirty (30) days after demand for arbitration
by either Party, the arbitration shall be held in Tokyo, Japan, if
arbitration is requested by Lanxide, and in New York, New York, U.S.A., if
arbitration is requested by Akebono or Nihon Cement. The award of the
arbitrators shall be final and binding upon the Parties.
ARTICLE XII.
MISCELLANEOUS.
12.1 Effect of Headings. The Section headings used in this
Agreement and the titles of the Schedules hereto are included for purposes
of convenience only, and shall not affect the construction or
interpretation of any of the provisions hereof or of the information set
forth in such Schedules.
12.2 Entire Agreement, Waivers. This Agreement constitutes the
entire agreement among the Parties pertaining to the subject matter hereof,
and supersedes all prior agreements or understandings as to such subject
matter. No Party hereto has made any representation or warranty or given
any covenant to the other except as set forth in this Agreement and the
Schedules hereto. No waiver of any of the provisions of this Agreement
shall be deemed, or shall constitute, a waiver of any other provisions,
whether or not similar, nor shall any waiver constitute a continuing
waiver. No waiver shall be binding unless executed in writing by the Party
making the waiver.
12.3 Counterparts. This Agreement may be executed simultaneously
in any number of English language counterparts, each of which shall be
deemed an original, but all of which together shall constitute one and the
same instrument.
12.4 Notices. All notices, requests, demands and other
communications under this Agreement shall be in writing and shall be deemed
to have been duly given (i) on the date of service if served personally on
the Party to whom notice is to be given, or if given by facsimile
transmission to the number indicated below, or (ii) on the third day after
mailing if mailed to the Party to whom notice is to be given, by first
class mail, registered or certified, postage prepaid, and properly
addressed as follows:
a) If to Akebono:
Akebono Brake Industry Co., Ltd.
00-0, Xxxxxxxxxx Xxxxxxxx,
Xxxx-xx
Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: Manager, Corporate Planning Dept.
(b) If to Nihon Cement:
Nihon Cement Co., Ltd.
Ohtemachi Xxxxxxxx
0-0, Xxxxxxxxx 0-xxxxx
Xxxxxxx-xx
Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: General Manager of First Development Dept.
(c) If to Lanxide:
Lanxide Corporation
0000, Xxxxxxx Xxxx
X.X. Xxx 0000
Xxxxxx, Xxxxxxxx 00000-0000
XXX
FAX: (000) 000-0000
Attention: President
or to such other address as any party shall have specified by notice in
writing given to the other Parties.
12.5 Amendments and Modifications. No amendment or modification of
this Agreement or any Schedule hereto shall be valid unless made in writing
and signed by all Parties.
12.6 Binding Effect. This Agreement shall be binding upon and
shall inure to the benefit of the Parties hereto and their respective
heirs, executors, administrators, personal representatives, successors and
permitted assignees.
12.7 Governing Law: Jurisdiction. This Agreement shall be
construed and interpreted and the rights granted herein shall be governed
in accordance with the laws of the State of Delaware, United States of
America.
12.8 Assignability. This Agreement shall be binding upon and inure
to the benefit of the permitted successors and assigns of each Party
hereto. Neither this Agreement nor any right or obligation hereunder may be
assigned or delegated in whole or in part by any Party without the prior
written consent of the other Parties.
IN WITNESS WHEREOF, the Parties have executed this Agreement as of
the date above first written.
AKEBONO BRAKE INDUSTRY CO., LTD. NIHON CEMENT CO. LTD.
By: /s/ Misataka Nobumoto By: /s/ Xxxxxx Xxxxxx
Name: Misataka Nobumoto Name: Xxxxxx Xxxxxx
Title: President & CEO Title: President
LANXIDE CORPORATION
By: /s/ Xxxx X. Xxxxxxx
Name: Xxxx X. Xxxxxxx
Title: President
SCHEDULE A-1
Joint Development Program - LANXIDE TASKS
Lanxide shall be mainly responsible for materials and process
technology development, prototype fabrication and Pilot Line operation.
JOINT DEVELOPMENT PROGRAM
DETAIL PLAN DEVELOPMENT
The first activity in this plan will be to review the preliminary
plan and revise the plan as appropriate.
ROTORS
The development plan for rotors will focus on vented rotors. The
major activities in this vented rotor development plan are: process
improvement, product improvements, cost reduction, and development of
machining/grinding practices. Process improvement activities would consist
of developing a cost effective method for producing the vented preforms and
mix optimization for higher green strength and for improved blow mold die
filling. Options for producing vented preforms could be cores used in a
blow molding machine, blow molding two pieces and joining, and blow molding
dies designed with retractable fingers. Product improvement activities
would be directed toward improving operating temperatures, etc. in order
for aluminum MMC rotors to meet the specifications for a larger number of
platforms. Efforts would continue in the area of cost reduction. Each of
the existing operations would be evaluated and re-engineered if necessary
to reduce operational cost and improve yields. This process would be done
with the objective of process scale-up. Improvements in near net shape of
the preforms would be addressed in the work to develop green
machining/grinding. This would produce a preform close enough to final
dimensions such that grinding of the composite becomes feasible. When the
green machining/grinding technique was developed equipment would be
purchased and added to the rotor line. The grinding process for the
composite will be developed and equipment acquired to add this operation to
the rotor line.
CALIPER PISTONS
The current process for making caliper pistons is by compression
molding using a mix which contains Mg powder and Ceraset as a binder. This
mix is not free flowing and requires vibration of the hot die prior to
pressing in order to provide for complete die fill. It could be possible to
produce this part without Mg powder and Ceraset in the mix if a different
approach to infiltration were taken.
The initial activities for the caliper piston process development
would be develop a free flowing powder which contains Mg powder and
Ceraset, evaluate preform fabrication methods which could be used with the
Mg and Ceraset containing mixes as well as those methods which could be
used for mixed which did not contain Mg powder and Ceraset. These
activities would be done in parallel. As soon as one approach demonstrated
superiority, work will be concentrated on the this method. When the preform
fabrication method is selected, interaction with the preform fabrication
equipment builder would begin.
Development of green machining or grinding would be required. It
might be possible to adapt the process developed for rotors. However, the
preforms will be made from different fillers and be of different loading.
These will have an influence on green machinability. Finally, process
scale-up and cost reduction activities will be started in the second year.
These activities will continue into year three.
BRAKE CALIPER BODIES & BRACKETS
Brake caliper bodies and brackets will require the most
development work of any product in this program. The initial focus will be
to evaluate preform fabrication methods. Shape complexity, reinforcement
loading (stiffness) and reinforcement particle size (strength) must be
considered in selecting the method of preform fabrication. Methods such as
blow molding and slurry casting will be evaluated. Both approaches allow
for the incorporation of Mg powder and Ceraset into the preform. However,
the reinforcement particle size and loading achievable differs. These two
methods as well as any other potential approach will be evaluated and down
select will be made. Once a method is selected, equipment will be specified
and purchased. The selected method will be optimized. The scale-up process
and process cost reduction activities will start during the second year and
continue through year three.
LOW VOLUME PRODUCTION INTENT PROTOTYPE PROCESS DEVELOPMENT
During the first two quarters of year one, a process(es) will be
developed to economically produce small quantities of prototype parts by a
production intent process. These parts will be used for validation testing,
etc.
SCHEDULE A-2
Joint Development Program - AKEBONO TASKS
Akebono shall be mainly responsible for product design and
development, including evaluation and volume production systems.
SCHEDULE A-3
Joint Development Program - NIHON CEMENT TASKS
Nihon Cement shall be mainly responsible for supporting
technologies bridging between materials and process technology and volume
production.
SCHEDULE B
"Products" shall mean brake rotors, brake drums, brake shoes,
brake pistons, brake caliper bodies, brake pad backing plates, brake
caliper anchors, steering knuckles, drum brake back plates, brake torque
anchor support plates, disc brake back plates, wheel hubs, brake dust
xxxxxxx, brake modulator housings, brake pressure control valve housings,
wheel brake cylinder housings, and brake master cylinder housings, all made
only from Ceramic-Reinforced Aluminum for use only on passenger cars,
trucks, buses, trailers, motorcycles, railroad locomotives, railroad
rolling stock and industrial equipment.
EXHIBIT A
LICENSE AGREEMENT
This License Agreement ("Agreement"), dated as of October 25, 1996
(the "Effective Date"), is made among
1. Lanxide Technology Company L.P. of 0000 Xxxxxxx Xxxx, X.X. Xxx
0000, Xxxxxx, Xxxxxxxx 00000-0000, U.S.A., a Delaware limited partnership
("LTC"),
2. AKN Corporation of 0-0-00, Xxxxx-xxxx, Xxxxxx-xx, Xxxxx 000,
Xxxxx, a Japanese Corporation ("Licensee"), and
3. Lanxide Corporation of 0000 Xxxxxxx Xxxx, X.X. Xxx 0000, Xxxxxx,
Xxxxxxxx 00000-0000, U.S.A., a Delaware corporation ("Lanxide").
WHEREAS, LTC is wholly owned and controlled by Lanxide; and
WHEREAS, LTC holds rights in certain valuable technology and
Lanxide owns certain valuable trademarks; and
WHEREAS, Licensee wishes to license certain of such rights for the
purposes defined herein.
NOW, THEREFORE, in consideration of the premises and mutual
covenants contained herein, the parties hereto hereby agree as follows:
I. DEFINITIONS
Terms used with initial capital letters in this Agreement shall
have the meaning set forth below.
1.1 "Affiliate(s)" of a Person means a Person that, directly or
indirectly through one or more intermediaries controls, is controlled by,
or is under common control with, such Person.
1.2 "Ceramic-Reinforced Aluminum" shall mean materials comprised of
a discontinuous ceramic reinforcing phase and a continuous aluminum metal
matrix phase.
1.3 "Government Entity" shall mean any sovereign, state or
political subdivision thereof, whether foreign or domestic.
1.4 "Government Regulations" shall mean and include any and all
terms, conditions and provisions of (a) any law, regulation, order,
statute, decree, rule, writ, injunction, determination or award of any
court or Governmental Entity and (b) any contract for research, development
and/or manufacturing between LTC and any department or agency of the United
States government but only to the extent such contracts reflect provisions
required by clause (a) above to be included therein.
1.5 "K.K. License" shall mean Exhibit B of the Joint Venture
Agreement ("Joint Venture Agreement") referred to in subparagraph 5.2
(i)(b) hereunder.
1.6 "Licensed Technology" shall mean Technology which is now or
hereafter owned by LTC, and all other Technology licensed to LTC without
restriction upon the grant of sublicenses, that is relevant to Products,
but excluding Technology, transfer or license of which, or an interest in
which, despite Lanxide's and LTC's best efforts, would be expressly
prohibited, either generally or specifically, by Government Regulations or
contracts with third parties which are further described but not limited to
those listed in Schedule 1.6 hereto.
1.7 "Person" shall mean any individual, corporation, partnership,
limited liability company, joint venture, association, joint stock company,
trust, unincorporated organization or government or any agency or political
subdivision thereof.
1.8 "Products" shall mean those items listed as inclusions in
Schedule A to this Agreement.
1.9 "Raw Materials" shall mean ceramic powders, ceramic paper,
fibers, polymers, and/or castable metal matrix composite ingot produced
using technology owned by or licensed to Lanxide or its Affiliates.
1.10 "Subsystem" shall mean a series of connected components within
a System, at least one of which is manufactured using the Licensed
Technology.
1.11 "System" shall mean any passenger car, truck, bus, trailer,
motorcycle, railroad locomotive, railroad rolling stock or article of
industrial equipment.
1.12 "Technology" shall mean technical information, know-how, data,
techniques whether patentable or not, patents, patent applications and
trade secrets.
1.13 "Territory 1" shall mean the geographic area as defined in
Schedule B.
1.14 "Territory 2" shall mean the geographic area of Japan.
1.15 "Trademarks" shall mean the trademark and tradename "LANXIDE",
together with all other trademarks owned now or in the future in the
Territory by Lanxide.
II. GRANT OF TECHNOLOGY LICENSE
2.1 License of Licensed Technology. Subject to Government
Regulations and the provisions of this Agreement, LTC hereby grants to
Licensee a perpetual non-exclusive license to use the Licensed Technology
to manufacture Products in Territory 1 and to sell Products manufactured in
Territory 1 on a worldwide basis excluding Japan.
2.2 Contingent Additional License. Contingent upon the happening of
any event described in subparagraph 5.2 (i) or (iv) of the K.K. License and
subject to Government Regulations and the provisions of this agreement, LTC
hereby further grants to Licensee a license to use Licensed Technology for
the purposes of engaging in the research and development, manufacture, use
and sale in Territory 2 of Products.
2.3 Non-Exclusive License. The license of Licensed Technology
granted under paragraph 2.1 shall be non-exclusive with respect to the
manufacture, use or sale of Products, and shall be subject to the rights,
now or in the future, of other authorized users of the Licensed Technology
to make, use or sell Products within or outside Territory 1.
2.4 Limitations on Exclusivity. Except as provided below, the
contingent license of Licensed Technology granted under paragraph 2.2 shall
be exclusive in Territory 2 to the extent that the Licensed Technology can
be used only in relation to the manufacture, use and sale of Products.
(i) The License shall be non-exclusive to the extent that rights
granted to LTC in the future are non-exclusive.
(ii) The License shall be non-exclusive to the extent required by
Government Regulations.
(iii) The license shall be subject to the rights, now or in the
future, of authorized users of the Licensed Technology outside Territory 2
to import into Territory 2 Products which are incorporated in Systems
assembled outside Territory 2 and which Systems are then imported into
Territory 2.
(iv) The licenses shall be subject to the rights, now or in the
future, of authorized users of the Licensed Technology outside Territory 2
to import into Territory 2 Products for repair of Systems assembled outside
Territory 2 and previously imported into Territory 2.
2.5 Rights Outside Territory. The license granted under paragraph
2.1 shall not include any rights to use the Licensed Technology for the
manufacture of Products outside Territory 1 and such license shall not
include any right to export Products from Territory 1 except for
non-exclusive rights to sell such Products:
(i) outside Territory 1, but excluding Japan;
(ii) which are incorporated in Systems assembled outside Japan and
which Systems are then imported into Japan; and
(iii) in Japan for repair of Systems assembled outside Japan and
previously imported into Japan.
The contingent license granted under paragraph 2.2 shall not
included any rights to use the Licensed Technology outside Territory 2 for
any purpose and such license shall not include any right to export from
Territory 2 except for.
(a) a non-exclusive right to supply components which are
incorporated in Systems assembled inside Territory 2 and which Systems are
then exported from Territory 2.
(b) a non-exclusive right to export from Territory 2 components and
Subsystems manufactured in Territory 2 for repair of Systems assembled
inside Territory 2 and previously exported from Territory 2.
Licenses shall inform its customers of the territorial limits on
its license of the Licensed Technology and shall not sell Products to
customers which it knows, or reasonably anticipates may, export those
Products from Territory 1 or Territory 2 in any manner exceeding the scope
of the rights granted to Licensee.
2.6 Sublicense Rights. There shall be no right to sublicense the
Licensed Technology except only contingent upon the happening of any event
described in subparagraph 5.2 (i) or (iv) of the K.K. License that the
Licensee shall be permitted to grant.
(i) one non-exclusive sublicense to use the Licensed Technology
only for the purposes of research and development of Products in the form
of Exhibit D to the Joint Venture Agreement and,
(ii) one non-exclusive sublicense to use the Licensed Technology
only for the purposes of research and development of Products in the form
of Exhibit E to the Joint Venture Agreement,
each to the entities identified therein.
2.7 Reservation of Rights. No rights are granted under the Licensed
Technology except as expressly set forth in this Section 2 and all rights
not expressly granted are reserved.
2.8 Provision of Technology. Subject to applicable Government
Regulations, including obtaining any necessary licenses prior to
disclosure, LTC or Lanxide shall, in the English language and U.S. units of
measurement to Licensee at Licensee's request, make available to Licensee
from time-to-time on an as-needed basis and free of cost to Licensee, up to
a maximum of 200 hours of technical support to transfer technical
information, formulae, data, analyses, know-how, and information with
respect to the Licensed Technology to the extent reasonably necessary for
the Licensee to use the Licensed Technology for the purposes set out in
this Agreement. Additional technical support shall be made available by LTC
or Lanxide to Licensee at a cost to Licensee equal to LTC's or Lanxide's
fully burdened cost according to Generally Accepted Accounting Principles
(GAAP) and on a basis of availability no less favorable to the Licensee
than that afforded to any other licensee of the Licensed Technology.
2.9 Protection of Technology. Licensee shall not use and shall not
permit its authorized sublicensees to use the Licensed Technology for any
purpose other than to manufacture, use and sell Products, as provided in
this Agreement. Licensee shall take no action in respect of the Licensed
Technology which is inconsistent with the terms of the licenses granted
under this Agreement.
2.10 Acknowledgment of Rights; Patent Marking. Licensee
acknowledges that Licensee's right to use the Licensed Technology arises
only out of the licenses granted under this Agreement. All Products
manufactured under issued patents of LTC shall bear a patent notice as may
be necessary or desirable under the laws of the applicable Government
Entities.
2.11 Raw Materials. In connection with the licenses hereunder
Lanxide agrees to sell and/or cause one or more of its Affiliates to sell
to Licensee Licensee's requirements for Raw Materials in quantities and on
delivery schedules reasonably needed by Licensee in connection with the
manufacture of Products in accordance with the terms of this Agreement.
This license does not grant Licensee any right to use the Licensed
Technology for the purpose of manufacturing Raw Materials except that
Licensee may produce Raw Materials for its own use in manufacturing
Products in accordance with the terms of this License Agreement, but only
to the extent of any inability on the part of Lanxide and/or its Affiliates
to supply such Raw Materials in accordance with Licensee's reasonable
quantity and delivery schedule requirements.
III. TRADEMARK AND TRADENAME LICENSE
3.1 Tradename License. Subject to Government Regulations and the
provisions of this Agreement, Lanxide hereby grants to Licensee a
non-exclusive license to use the tradename "LANXIDE" except for its use as
the name or part of the name of a business entity. Lanxide and Licensee
will cooperate in registering such tradename in Territory 1, and contingent
upon the happening of any event described in subparagraph 5.2 (i) or (iv)
of the K.K. License, Territory 2, as may be necessary or desirable under
the laws of Territory 1 and Territory 2, at the expense of Licensee.
3.2 Trademark License. Subject to Government Regulations and the
provisions of this Agreement, Lanxide hereby grants to Licensee a
non-exclusive license to use the Trademarks in connection with the
marketing and sale of Products.
3.3 Sublicensing Rights. The license granted under paragraph 3.1
shall not include the right to grant sublicenses without the prior written
consent of Lanxide.
3.4 Registration. Registration of the Trademarks shall only be made
in the name of Lanxide or its designee. Licensee shall provide such
assistance as Lanxide or its designee may require in relation to such
registration at Licensee's expense, including the execution of all
documents necessary or desirable for obtaining such registration. In
addition, Licensee shall cooperate with Lanxide in seeking the registration
of this Agreement or of an executed registered user agreement as may be
necessary or desirable under the laws of Territory 1 or Territory 2 to
record the trademark license granted under this Agreement with Licensee to
bear any associated expenses.
3.5 Acknowledgement of Rights. As among the parties, Licensee
acknowledges that the Trademarks and the goodwill associated with the
Trademarks are the property of Lanxide and that except to the extent of the
license rights granted hereunder, Licensee shall not acquire any rights in
such Trademarks or in any registration of the Trademarks. Licensee
acknowledges that Licensee's right to use the Trademarks arises only out of
the licenses granted under this Agreement. Licensee shall neither challenge
nor dispute the rights of Lanxide with respect to use or ownership of the
Trademarks. Where Licensee uses the Trademarks, it shall include a notice
stating that such Trademarks are the property of Lanxide. However, Lanxide
makes no warranty that the Trademarks will be successfully registered in
any countries.
3.6 Use of Trademarks; Quality Control. Licensee shall only use the
Trademarks in connection with Products manufactured using the Licensed
Technology or as otherwise agreed to in writing by LTC or Lanxide from time
to time. The standards of manufacture of such Products shall be at least
equal to the standards of quality required by LTC and Lanxide in relation
to their other manufacturing or licensing activities. Licensee shall follow
all reasonable instructions in relation to the quality of manufacture of
Products communicated to it by any representative of LTC or Lanxide. In no
event shall Licensee manufacture any Products which are not in accordance
with applicable Government Regulations relating to safety and product
quality.
3.7 Indemnity and Insurance. Licensee shall indemnify and hold
harmless LTC, Lanxide, their Affiliates and their respective directors,
officers and employees from and against any losses, claims and damages
including reasonable attorney's fees arising out of the manufacture, use or
sale of Products by Licensee; provided such losses, claims and damages are
not directly attributable to instructions, actions or omissions by Lanxide,
LTC or their Affiliates or their respective directors, officers or
employees. From the commencement of the manufacture of Products by the
Licensee and until the last applicable statute of limitations expires,
Licensee will procure and maintain, at its own cost and expense, product
liability insurance written on an occurrence basis from an insurance
company rated A or above by A. M. Bests' providing protection against
liability for any alleged damage or injury arising out of any alleged
defect in material or workmanship in such Products in the primary amount of
1 million U.S. dollars with respect to any one accident or occurrence, and
1 million U.S. dollars in the aggregate. Licensee shall also procure and
maintain, at its own expense, excess liability insurance in the amount of
10 million U.S. dollars in the aggregate. The insurance policy shall name
LTC as an additional insured and shall be endorsed to provide for written
notification to LTC by insurer not less than 30 days prior to cancellation.
Licensee shall provide LTC with a certificate of insurance evidencing such
coverage within 15 business days after the manufacture of Products by the
Licensee and annually thereafter.
3.8 Inspection and Approval Rights. All uses of the Trademarks on
or in connection with the sale or marketing of Products shall be subject to
the prior approval of Lanxide. Licensee shall provide to Lanxide upon
request samples of Products manufactured by Licensee and its sublicensees
as well as advertising and other publicity materials bearing the Trademarks
proposed to be used by its authorized sublicensees, together with an
English language translation if necessary. Licensee shall allow and cause
its sublicensees to permit Lanxide or its representatives at all reasonable
times to inspect any facility where Products which will be sold under the
Trademarks are manufactured.
3.9 Reservation of Rights. No rights are granted under the
Trademarks except as expressly set forth in this Section 3. Without
limitation, Licensee acknowledges the rights of Lanxide and its Affiliates
to use the Trademarks themselves or through direct or indirect licensees as
all or part of a tradename, and in relation to any products or services
other than Products, and in relation to Products imported pursuant to
paragraph 2.3 or 2.4. Lanxide expressly reserves the right to assign its
entire right, title, and interest in and to the Trademarks to LTC, in which
event LTC shall assume Lanxide's rights and obligations under this
Agreement.
IV. FEE AND ROYALTY
4.1 Fee Payment and Amount. Licensee shall pay an initial license
fee to Lanxide of $4,000,000 in U.S. dollars, according to the following
schedule:
Date Amount
November 15, 1996 $4,000,000
LTC and Lanxide respectively agree that this amount represents
the initial fee for the grant of rights to use the Licensed Technology and
the Trademarks pursuant to Sections 2 and 3 above.
4.2 Royalty Payment and Amount. Licensee shall pay to LTC a royalty
equal to [CONFIDENTIAL TREATMENT REQUESTED BY LANXIDE CORPORATION] of the
Net Sales Price of all Products sold by Licensee or any subsequently
authorized sublicensees, which are manufactured using the Licensed Technology
in Territory 1, and in the event of the happening of any event described in
subparagraph 5.2 (i) or (iv) of the K.K. License, also in Territory 2.
Licensee shall pay such royalty to LTC so long as Licensee or any subsequently
authorized sublicensees shall use the Licensed Technology. In the event that
Licensee shall cease to pay royalties as and when required hereunder, then
LTC shall have the right to terminate this Agreement upon ninety (90) days
prior written notice to Licensee.
4.3 Net Sales Price. The "Net Sales Price" referred to in paragraph
4.2 shall mean the invoiced price for a Product less insurance, transport,
bona fide rebates and allowances to the extent identified on the invoice,
and less returns, and less the purchase price of Raw Materials purchased by
Licensee from Lanxide or its Affiliates. The "Net Sales Price" applicable
to transfers to entities affiliated with Licensee will be the price at
which such Products would be sold at the time in question on an arms-length
basis to a third party. Where Products are sold as part of a Subsystem and
not separately, the Net Sales Price will be that percentage of the Net
Sales Price of the Subsystem equal to the cost of manufacture of the
Products divided by the cost of manufacture of the total Subsystem.
4.4 Third Party Royalties. In any case where use of Licensed
Technology requires or required LTC to pay a royalty to a third party
(whether lump-sum or payable by reference to sales) under the terms of any
of the license agreements listed on Schedule 4.4 hereto or any future third
party license that LTC may enter into, then in the event that Licensee
determines to use such Technology, Licensee will in addition to the royalty
specified in paragraph 4.2 be responsible for payment to LTC of a further
amount equal to the royalty payable to the third party attributable to
sales by Licensee and its authorized sublicensees. In case LTC needs to
obtain a third party Technology which LTC is aware may be useful to
Licensee and therefore may require Licensee to be responsible for
additional royalty, Lanxide shall let Licensee know the need, with prior
written form, and consult with Licensee as to whether such additional
Technology is truly necessary. If Licensee decides such Technology is
unnecessary, Licensee shall have the right not to use such third party
Technology and therefore not be required to pay any third party royalty
associated therewith. Even though Licensee decides such Technology is
unnecessary, subject to the terms of this Agreement, Licensee may use
Licensed Technology not requiring such third party royalty, including the
right to purchase Raw Materials. The parties hereto agree, however, that
Licensee shall be under no obligation to use any Technology requiring
payment of royalty to any third party, and the decision to use such
Technology shall be solely at Licensee's discretion.
4.5 Tax Withholding. Licensee may withhold taxes from royalties
payable hereunder only to the extent that such withholding is required
under applicable law and to the extent that Licensee provides copies of all
documents required by LTC hereunder to claim credit for such foreign tax
payment.
4.6 Payment and Accounting. Royalties due under this Agreement
shall be paid in U.S. dollars to the bank account specified by LTC within
45 days after each of December 31, March 31, June 30 and September 30, in
relation to the period of three (3) calendar months (or less in the case of
the first or final such period) ending on such date. At the same time as
payment of royalties is made, Licensee shall provide to LTC a statement
setting out the sales of Products manufactured using the Licensed
Technology made during the period to which such royalties relate, the type
and description of Products in question, the applicable Net Sales Price,
the amount of royalties payable and the amount of any tax withheld. Overdue
payments shall bear interest at the annual rate of two percent (2%) above
the prime rate of Citibank, in New York.
4.7 Books and Records. Licensee shall keep proper books and records
showing the description and price of Products sold, and such records shall
be open at all reasonable times to inspection by Lanxide or its
representatives, who shall be entitled to take copies of such books and
records.
4.8 Currency Conversion. For the purpose of converting into U.S.
dollars the currency in which royalties may arise, the rate of exchange to
be applied shall be the rate of exchange for the purchase of U.S. dollars
with the currency quoted by Citibank, in New York as at the close of
business on the last business day of the quarterly period to which a
payment shall relate.
V. TERM AND TERMINATION
5.1 Effective Date. This Agreement shall come into effect upon the
Effective Date set forth in the first page hereof. This Agreement shall
thereafter be perpetual and non-cancellable, subject to earlier termination
as provided herein.
5.2 Events of Termination. This Agreement may be terminated upon
the happening of any of the following events:
(i) (a) Upon written notice from LTC or Lanxide, in the event that
Licensee is in material breach of any of its obligations under this
Agreement, and Licensee fails to remedy that breach within 60 days after
receipt of written notice requiring Licensee to remedy that breach;
(b) Upon written notice from LTC or Lanxide, in the event that
Licensee's shareholders are in material breach of any of their obligations
under either the Joint Development Agreement among Akebono Brake Industry
Co., Ltd., Nihon Cement Co., Ltd., and Lanxide, or the Joint Venture
Agreement among Akebono Brake Industry Co., Ltd., Nihon Cement Co., Ltd.,
Lanxide K. K., Kanematsu Corporation and Lanxide, dated October 25, 1996
and such Licensee's shareholder in breach and/or other Licensee's
shareholders fail to remedy that breach within 60 days after receipt by all
Licensee's shareholders of written notice from a party to the respective
agreement requiring remedy of that breach.
(ii) Upon written notice from LTC or Lanxide, in the event that
Licensee ceases to carry on business, becomes or is declared insolvent,
files or has filed against it a petition in bankruptcy, has a receiver
appointed over its assets, or takes or has taken against it any similar act
as a result of debt;
(iii) Upon 180 days prior written notice by LTC, in the event that
any Government Entity or court requires substantial modifications to the
provisions of this Agreement;
(iv) Upon written notice by Licensee to LTC.
(v) As provided elsewhere in this Agreement
5.3 Effects of Termination. On termination of this Agreement, the
following provisions shall have effect;
(i) All licenses and rights granted to Licensee by LTC or Lanxide
shall forthwith cease and Licensee shall cooperate in cancelling any
registration of such licenses.
(ii) Licensee shall, except as otherwise agreed with LTC or
Lanxide, as applicable, forthwith cease all use of the Licensed Technology
and the Trademarks.
(iii) Termination of this Agreement shall not affect the continued
enforceability of paragraph 3.7 and Sections 8 and 9 and the continued
existence of the license from Licensee to Licensor under paragraph 7.1
hereunder of improvements and inventions made up to the date of
termination.
(iv) Licensee shall promptly deliver all Proprietary Information in
all forms to LTC or to its authorized representatives.
Notwithstanding the provisions of subparagraphs 5.3 (i) and (ii), Licensee
shall have the right to sell in the Territory all Products it has manufac-
tured prior to termination of this Agreement, subject to the payment of
all royalties due hereunder.
VI. GOVERNMENT REGULATIONS, ETC.
6.1 Compliance with Government Regulations. The grant of licenses
and the transfer of Licensed Technology under this Agreement shall be
conditional on all necessary governmental consents and licenses being
obtained and maintained. LTC and Licensee shall use reasonable efforts to
obtain all such consents and licenses. Licensee shall comply with all
Government Regulations governing export of goods and information from
Territory 1 and Territory 2 and between the various countries of Territory
1 and Territory 2, including without limitation the Export Administration
Regulations of the United States (15 C.F.R. 730 et seq.) as such may be
amended from time to time, and the terms of any licenses or consents
obtained.
VII. PATENTS AND IMPROVEMENTS
7.1 Rights in Inventions. During the term of this Agreement,
Licensee shall promptly disclose to LTC any inventions or improvements
which relate solely to composition and processing of Ceramic-Reinforced
Aluminum as material for Products (specifically excluding any inventions or
improvements which relate to the design and/or performance of Products
themselves as brake parts or components) that are made by Licensee's
employees or by the employees of any authorized sublicensees without the
participation of any of the employees of LTC or its Affiliates and Licensee
shall obtain the right to grant, and grant, to LTC a full worldwide,
royalty-free, perpetual, irrevocable, non-exclusive license to make, use
and sell such improvements or inventions in any manner not prevented by the
terms of the license to Licensee under this Agreement, with full right by
LTC to grant sublicenses of such improvements or inventions which
themselves include the right to sublicense.
The provisions of this paragraph 7.1 shall not affect the ownership of
inventions or improvements made by employees of LTC or its Affiliates
(with or without the participation of the employees of the Licensee or its
authorized sublicencees) which inventions and improvements shall be the
property of LTC or its Affiliates, but subject to the license granted
under this Agreement.
7.2 Prosecution and Registration. Licensee shall not seek any
patent or other intellectual property registration in relation to the
Licensed Technology in its own name, other than improvements and inventions
relating to the Licensed Technology made by Licensee's employees with or
without the participation of employees of authorized sublicensees or
contract manufacturers. Licensee will cooperate with LTC as reasonably
requested by LTC in relation to obtaining and prosecuting patents in the
name of LTC. In addition LTC and Licensee shall cooperate in seeking the
registration of this Agreement or of an executed registered user agreement
as may be necessary or desirable under the laws of any country to record
the patent license granted under this Agreement at the reasonable expense
of Licensee.
7.3 Actions and Claims Against Third Parties. If, during the term
of this Agreement, Licensee learns of any infringement, unfair competition
or misappropriation ("Infringement") by a third party of any Licensed
Technology licensed to Licensee, Licensee shall promptly and fully notify
LTC in writing.
7.4 Infringement Claims by Third Parties. If, during the term of
this Agreement, any claim or action is threatened or commenced by a third
party alleging Infringement of third party rights by practice of Licensed
Technology by Licensee, Licensee shall promptly and fully notify LTC in
writing.
7.5 Procedure. LTC shall have the right, but not the obligation, to
take all reasonable steps to prosecute or defend any such claim or action
relating to the matter set forth in paragraphs 7.3 or 7.4, and may
institute, defend, or settle claims, actions or proceedings at its expense.
Licensee, at LTC's request shall render all reasonable assistance and
cooperation at LTC's expense. If LTC refuses or fails to take or defend
such actions within six (6) months after receipt of the notice described
above (or such shorter period as shall be reasonable in the circumstances),
then Licensee shall have the right (but not the obligation), after first
notifying LTC in writing, to institute, defend or settle such actions or
claims or proceedings, which shall be at Licensee's expense. In such case
LTC, at Licensee's request, shall render all reasonable assistance and
cooperation at Licensee's expense, and LTC shall have the right to
participate in such proceedings through LTC's own counsel. In no event
shall LTC bear any expense of any claims, actions, or proceedings not
instituted or defended by LTC unless their written consent is obtained
prior to the institution or defense of such claims, actions, or
proceedings. In addition, LTC will have the right to instruct Licensee to
modify or terminate any practices which have given rise to a claim of
Infringement of third party rights.
VIII. CONFIDENTIALITY, RESTRICTED DISCLOSURE AND LIMITED USE
COMMITMENTS.
8.1 Confidentiality Undertaking. The parties hereto shall (i) treat
as confidential all Proprietary Information (as hereinafter defined) which
is obtained by a receiving party directly or indirectly from a disclosing
party in connection with this Agreement, and (ii) not disclose the same to
any third party nor use the same, except as provided herein. The provisions
of this Section shall apply, without limitation, to all information learned
by the parties in the course of implementing this Agreement concerning the
business, assets, customers, processes or methods of Lanxide, LTC, or
Licensee, or their Affiliates. The provisions of Section 8 shall remain in
effect during the term of this Agreement and for a period of five (5) years
after termination or expiration of the Agreement.
8.2 Proprietary Information. As used herein, "Proprietary
Information" means any information of Lanxide, LTC, Licensee, or their
Affiliates that might reasonably be considered proprietary, sensitive or
private, including but not limited to the following:
(i) Technical information, know-how, data, techniques, discoveries,
inventions, ideas, unpublished patent applications, proprietary
information, formulae, analyses, laboratory reports, other reports,
financial information, studies, findings, or other information relating to
Lanxide, LTC, Licensee, or their Affiliates, or the Licensed Technology or
methods or techniques used by Lanxide, LTC, Licensee, or their Affiliates,
whether or not contained in samples, documents, sketches, photographs,
drawings, lists, and the like;
(ii) Data and other information employed in connection with the
marketing of the products of Lanxide, LTC, Licensee, or their Affiliates
including cost information, business policies and procedures, revenues and
markets, distributors and customers, and similar items of information
whether or not contained in documents or other tangible materials; and
(iii) Any other information obtained by the parties to this
Agreement during the term hereof, that is not generally known to, and not
readily ascertainable by proper means by, third parties.
8.3 Precautions. The parties hereto shall take all appropriate
steps to prevent unauthorized disclosure of any Proprietary Information by
their employees, which steps include the execution or acceptance by all
such persons of written agreements containing obligations of
confidentiality, restricted disclosure and limited use relative thereto
consistent with this Section 8 prior to disclosure of Proprietary
Information to them. The parties shall not permit access to Proprietary
Information by their employees, except on a need-to-know basis. The parties
shall further take all appropriate steps to protect the Proprietary
Information against espionage, misuse, loss or theft.
8.4 Exclusions. The provisions of Section 8 shall not apply to any
Proprietary Information that (i) has become generally available to the
public through no fault of the receiving party or its employees, (ii) the
receiving party can prove by clear and convincing documentary evidence was
in its possession before disclosure hereunder and did not come directly or
indirectly from the disclosing party, (iii) becomes known to the receiving
party through lawful disclosure from a third party that is not subject to a
confidentiality agreement with any disclosing party or Affiliate, or (iv)
the receiving party can prove by clear and convincing documentary evidence
has been or is developed by the receiving party independent of any such
Proprietary Information disclosed by the disclosing party.
8.5 Permitted Disclosure. Proprietary Information may not be
disclosed by the receiving party without the prior written consent of the
disclosing party, except that,
(i) Lanxide may disclose Licensee's Proprietary Information to the
extent of the inventions and improvements described in paragraph 7.1
hereunder to its Affiliates or its other licensees or sublicensees of the
Licensed Technology, provided that prior to disclosure of the Proprietary
Information, such Persons execute written agreements containing obligations
of confidentiality consistent with this Section 8.
(ii) In the event that a third party wishes to evaluate Licensee's
proprietary technology to the extent of the inventions and improvements
described in paragraph 7.1 hereunder in connection with a business
transaction with Lanxide or its Affiliates, Lanxide may disclose as much of
Licensee's Proprietary Information to that third party as is necessary to
conduct such evaluation, provided that prior to disclosure such third party
executes a written agreement prohibiting use of the Proprietary Information
for any reason other than evaluation of this technology and containing
obligations of confidentiality consistent with this Section 8.
8.6 Government Regulations. The provisions of this Section 8 shall
not be deemed to obligate either party to do or refrain from doing any act,
the doing or not doing of which would cause or reasonably be expected to
cause either party to fail to fulfill or comply with any obligation or
requirement imposed by any Government Regulation, provided that, any
disclosures of Proprietary Information made to fulfill or comply with any
such Government Regulation shall be made (i) only after notice to the other
party, and (ii) under conditions invoking all confidentiality protections
as are available by law or regulation.
IX. MISCELLANEOUS
9.1 Warranties. LTC and Lanxide make no warranty or representation
with respect to the Trademarks, the Licensed Technology or other assistance
furnished under this Agreement, or with respect to the Trademarks, nor are
LTC or Lanxide in any way responsible for the accuracy, utility or
completeness of any Licensed Technology or other assistance furnished under
this Agreement. LTC AND LANXIDE HEREBY EXPRESSLY DISCLAIM ANY AND ALL
WARRANTIES AND REPRESENTATIONS, EXPRESS OR IMPLIED, ARISING BY LAW OR
CUSTOM, WITH RESPECT TO THE TRADEMARKS OR THE LICENSED TECHNOLOGY,
INCLUDING, WITHOUT LIMITATION, WARRANTIES OF NON-INFRINGEMENT,
MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE. LTC AND LANXIDE DO
NOT IN ANY WAY PROMISE THAT THE LICENSED TECHNOLOGY WILL PRODUCE ANY
PARTICULAR RESULTS, PRODUCTS OR PROFITABILITY.
9.2 Force Majeure. No party shall be liable for failure to perform
its obligations hereunder for so long as that failure may be the result of
any event beyond its reasonable control (a "force majeure" event), provided
that such party uses all reasonable efforts to comply with the terms of
this Agreement to the extent that it is able to do so. However, if such
failure due to force majeure by any party to perform any part of this
Agreement should continue for six (6) months, any other party shall have
the right to terminate this Agreement.
9.3 Waivers. The failure at any time of any party to require
performance by the other party of any obligation required by this Agreement
shall in no way affect such party's right to require such performance at
any time thereafter, nor shall the waiver by any party of a breach of any
provision of this Agreement by any other party constitute a waiver of any
other breach of the same or any other provision or constitute a waiver of
the obligation itself.
9.4 Amendment. This Agreement may be amended only by an instrument
in writing duly executed by duly authorized representatives of the parties
hereto.
9.5 Assignability. This Agreement shall be binding upon and inure
to the benefit of the permitted successors and assigns of each party
hereto. Neither this Agreement nor any right or obligation hereunder may be
assigned or delegated in whole or in part by any party without the prior
written consent of the other parties, except that LTC shall have the right
to transfer its rights and obligations to an Affiliate. Any permitted
assignment shall not relieve Licensee from any obligations hereunder
incurred prior to such assignment.
9.6 Notices. In any case where any notice or other communication is
required or permitted to be given hereunder (including, without limitation,
any change in the information set forth in this paragraph 9.6) such notice
or communication (i) shall be in writing and in the English language, (ii)
shall be sent to the parties set out below, and (iii) shall be (A)
personally delivered, (B) sent by postage prepaid registered airmail, (C)
transmitted by telecopy receipt of which is confirmed, (D) sent by courier
service requiring signature on receipt, as follows:
If to LTC, to:
Lanxide Technology Company, L.P.
c/o Lanxide Corporation, General Partner
0000 Xxxxxxx Xxxx
X.X. Xxx 0000
Xxxxxx, XX 00000-0000
FAX: (000) 000-0000
Attention: President
If to Lanxide, to:
Lanxide Corporation
0000 Xxxxxxx Xxxx
X.X. Xxx 0000
Xxxxxx, Xxxxxxxx 00000-0000
FAX: (000)-000-0000
Attention: President
If to Licensee, to:
AKN Corporation
0-0-00, Xxxxx-xxxx, Xxxxxx-xx
Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: President
All such notices or other communications shall be deemed to have
been given or received (i) upon receipt if personally delivered, or if by
courier, (ii) on the tenth business day following posting if by postage
prepaid registered airmail, or (iii) when sent with confirmed answer back
if sent by telecopy.
9.7 Choice of Law. This Agreement shall be construed and enforced
in accordance with and governed by the laws of the State of Delaware,
United States of America.
9.8 Forum Jurisdiction, Venue and Service. The Licensee hereby
irrevocably and unconditionally:
(i) agrees that any action, suit or proceeding by any person
arising from or relating to this Agreement or any statement, course of
conduct, act, omission, or event occurring in connection herewith
(collectively, "Related Litigation") may be brought in any state or federal
court of competent jurisdiction sitting in the State of Delaware, submits
to the jurisdiction of such courts, and to the fullest extent permitted by
law agrees that it will not bring any Related Litigation in any other
forum;
(ii) waives any objection which it may have at any time to the
laying of venue of any Related Litigation brought in any such court, waives
any claim that any such Related Litigation has been brought in an
inconvenient forum, and waives any right to object, with respect to any
Related Litigation brought in any such court, that such court does not have
jurisdiction over the Licensee; and
(iii) consents and agrees to service of any summons, complaint or
other legal process in any Related Litigation by registered or certified
U.S. mail, postage prepaid, to the Licensee at the address for notices
described in paragraph 9.6 hereof, and consents and agrees that such
service shall constitute in every respect valid and effective service (but
nothing herein shall affect the validity or effectiveness of process served
in any other manner permitted by law).
9.9 Interpretation. The headings of the sections and paragraphs in
this Agreement are provided for convenience of reference only and shall not
be deemed to constitute a part hereof. The Agreement is executed in the
English language.
9.10 Entire Agreement. This Agreement constitutes the entire
agreement of the parties hereto with respect to the subject matter of this
Agreement and supersedes all prior agreements and understandings, oral and
written, if any, among the parties hereto with respect to the subject
matter of this Agreement.
9.11 Severability. Should any provision of this Agreement be deemed
in contradiction with the laws of any jurisdiction in which it is to be
performed or unenforceable for any reason, such provision shall be deemed
null and void, but, except as provided in paragraph 5.2, this Agreement
shall remain in force in all other respects.
9.12 Counterparts. This Agreement may be executed in several
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
duly executed and delivered as of the day and year first above written.
LANXIDE TECHNOLOGY COMPANY, L.P. AKN CORPORATION
By: LANXIDE CORPORATION By: /s/ Xxxxxx Xxxx
General Partner Name: Xxxxxx Xxxx
Title: President
By: /s/ Xxxx X. Xxxxxxx
Name: Xxxx X. Xxxxxxx
Title: President
LANXIDE CORPORATION
By: /s/ Xxxx X. Xxxxxxx
Name: Xxxx X. Xxxxxxx
Title: President
SCHEDULE 1.6
Technology which is, or may in the future be
(i) provided to Lanxide or its Affiliates under Non Disclosure
Agreements and is identified as the proprietary information of the
disclosing party.
(ii) designated as classified by a government agency.
(iii) controlled by the export regulations of the United States.
(iv) provided under license to Lanxide or its Affiliates with
limits on its use or transfer.
SCHEDULE 4.4
None
SCHEDULE A
PRODUCTS
"Products" shall mean
Brake rotors, brake drums, brake shoes, brake pistons, brake
caliper bodies, brake pad backing plates, brake caliper anchors, steering
knuckles, drum brake back plates, brake torque anchor support plates, disc
brake back plates, wheel hubs, brake dust xxxxxxx, brake modulator housings,
brake pressure control valve housings, wheel brake cylinder housings, and
brake master cylinder housings, all made only from Ceramic-Reinforced
Aluminum for use only on passenger cars, trucks, buses, trailers, motor-
cycles, railroad locomotives, railroad rolling stock and industrial
equipment.
All of the above definitions shall exclude the following:
1. Sporting Goods
2. Filters for use in materials processing plants which come in
direct contact with some portion of materials flow through the process
plant.
3. Aerospace components including but not limited to leading edges,
nosecones, radomes, control surfaces, struts, stiffeners, skins and air
frames for spacecraft, aircraft, and missiles.
4. Heat exchangers including but not limited to recuperators,
boilers, waste heat recovery, superheaters, pyrolysis units, reformers, air
preheaters and chemical processes, including radiant burner tubes and parts
thereof.
5. Gas turbine engine parts including but not limited to land, sea
and air, moving and stationary gas turbine engines, and aircraft scramjet
and ramjet engines and components thereof.
6. Electrical/electronic substrates, heat sinks or packages,
including but not limited to components thereof for active or passive
electronic devices, and assemblies thereof.
7. Electronic devices whose primary function is to serve as a
capacitor, resistor, inductor, or part thereof, or arrays of same, not
including superconductive inductors.
8. Electro-optic and photovoltaic devices whose primary function is
to transform electrical signals to optical signals.
9. RFI shielding, electrical ground planes, antennae, and
components thereof.
10. Electrical wire and cable, and components thereof.
11. Generators, alternators, or parts thereof not including prime
movers, brakes, clutches or other assemblies associated therewith.
12. Electric motors, or parts thereof.
13. Electrical transformers, electromagnets, electric relays, and
components thereof.
14. Superconducting inductors.
15. Connectors for electronic devices.
16. Electro-optic and photovoltaic devices whose primary function
is to transform optical signals to electrical signals.
17. Electronic devices whose primary function is to serve as a
vacuum tube, a discharge tube, a magnetron, a wave guide, emitter,
receiver, or part thereof.
18. Solid state electronic transducer, transistor, diode, or
integrated circuit wafers, chips or elements.
19. Electric incandescent, fluorescent or discharge lamps, and
components thereof.
20. Electrical switches, switchgear, and components thereof.
21. Electric fuel cells, thermoelectric devices and electric
batteries, or components thereof.
22. Electrodes and electrical terminations, interconnects, splices,
plugs, sockets, and components thereof.
23. Electrical fuses and fusible links, and components thereof.
24. Human or other animal prostheses, including, but not limited
to, bone, tooth or organ replacement or supplement.
25. Components, combinations thereof for incorporation into
systems, and systems comprising such components, designed specifically to
provide ballistic protection for ground vehicles, artillery, amphibious
vehicles, aircraft, spacecraft, space installations, missiles, marine
craft, marine installations, and personnel.
26. Components and parts, including but not limited to complete
assemblies, that are, or become a direct part of, solid, liquid or gas
fueled rocket engines for all military and civilian uses including but not
limited to tactical and strategic missile engines and space launch and
orbital insertion rocket engines.
27. Products to inhibit corundum formation in aluminum melting
furnaces
28. Abrasive grain for supplying the coated abrasives, bonded
abrasives and loose abrasives markets.
29. Grinding wheels.
30. Gun systems, including but not limited to both conventional
smokeless propellant driven systems and electromagnetic-driven railgun
systems, and/or components therefor.
31. Electric resistance-heated igniters for use as fuel ignition
devices in all applications except internal combustion, gas turbine and
rocket engine use, including but not limited to components for these
applications, such as electrically operated resistance heating elements
supports and interconnections for such elements and resistance-heated
igniter assemblies.
32. Ceramic and ceramic matrix composite powders, microspheres,
tubules and platelets for use as ceramic raw materials or as raw materials
for ceramic matrix, metal matrix or polymer matrix composites.
33. Fuel injectors and fuel injector components for use in internal
combustion engines.
34. Cutting tools and components for cutting tools including but
not limited to broaches, twist drills, gun drills and reamers,
countersinks, combination drills and countersinks, counterbores, reamers,
hobs, gear shapers, milling cutters, single and double point tools,
circular form tools, threading tools, blanks tips and inserts.
35. Track and undercarriage components, track systems and ground
contact hull structures including but not limited to those for use on
bulldozer, scraper, earthmover, backhoe, skidder, armored vehicle,
dragline, conveyor, or mining equipment.
36. Aircraft and marine propellers, rotors and other propulsive
devices and shaft seals and components therefor.
37. Inspection tools, including but not limited to gages gage
blocks, go no-go gages, xxx blocks, inspection systems, coordinate
measuring equipment.
38. Sensors, sheathing for sensors, and components thereof.
39. All military component applications.
40. Building product components.
41. Furnace components and hardware including heating elements,
kiln rollers, kiln furniture, xxxxx and crucibles.
42. Housewares and components thereof.
43. All engine and power transmission components.
44. Security devices including safes, locks, vaults, and components
thereof.
45. Welding electrodes.
46. Paints and Adhesives
SCHEDULE B
TERRITORY 1
The following countries and administative divisions to the extent
of their territorial boundaries as of the Effective Date:
Australia
Brunei
Burma
Cambodia
China
Indonesia
Laos
Malaysia
Mongolia
New Zealand
North Korea
Papua New Guinea
Philippines
Singapore
South Korea
Taiwan
Thailand
Vietnam
Exhibit B
LICENSE AGREEMENT
This License Agreement ("Agreement"), dated as of October 25,
1996 (the "Effective Date"), is made between
1. Lanxide Kabushiki Kaisha of 0-0-00, Xxxxx-xxxx, Xxxxxx-xx,
Xxxxx 000, Xxxxx("Xxxxxxx K.K.") and
2. AKN Corporation of 0-0-00, Xxxxx-xxxx, Xxxxxx-xx, Xxxxx 000,
Xxxxx ("Licensee").
WHEREAS, Lanxide K.K. is a corporation organized under the laws
of Japan pursuant to a joint venture agreement between Lanxide (as
defined in Section 1.5) and Kanematsu Corporation; and
WHEREAS, Licensee is a corporation organized under the laws of
Japan pursuant to a joint venture agreement among Lanxide K.K.,
Kanematsu Corporation, Nihon Cement Co. Ltd., Akebono Brake Industry
Co., Ltd., and Lanxide dated as of October 25, 1996 (the "Joint Venture
Agreement"); and
WHEREAS, Lanxide K.K. has been granted certain rights to
certain technology and trademarks by Lanxide and LTC (as defined in
Section 1.7), under a license agreement dated as of May 28, 1992 as
amended (the "Lanxide K.K. License") with the right to sublicense; and
WHEREAS, Lanxide K.K. desires to grant to Licensee a license,
and Licensee desires to accept a license, to practice certain of the
technology and to use certain of the trademarks in which Lanxide K.K.
has rights in a certain field as more fully set forth herein.
NOW, THEREFORE, in consideration of the premises and mutual
covenants contained herein, and for other good and valuable
consideration, the receipt and sufficiency of which is hereby
acknowledged, the parties hereto agree as follows:
I. DEFINITIONS
Terms used with initial capital letters in this Agreement shall
have the meaning set forth below.
1.1 "Affiliate(s)" of a Person means a Person that, directly or
indirectly through one or more intermediaries controls, is controlled
by, or is under common control with, such Person.
1.2 "Ceramic-Reinforced Aluminum" shall mean materials
comprised of a discontinuous ceramic reinforcing phase and a continuous
aluminum metal matrix phase.
1.3 "Consulting Services" shall mean the services provided by
Lanxide K. K. to Licensee in response to the specific request of
Licensee with respect to the technical information, formulae, data,
analyses, know-how, and information which may require some experimental
work or other substantial actions of Lanxide K.K., but shall not include
the transfer of that information as a part of the license pursuant to
the provisions of the first sentence of Section 2.6.
1.4 "Government Regulations" shall mean any and all terms,
conditions and provisions of (a) any law, regulation, order, statute,
decree, rule, writ, injunction, determination or award of any court,
governmental department, board, agency, or instrumentality, whether
foreign or domestic, and (b) any contract for research, development
and/or manufacturing between Lanxide and any department or agency of the
United States government but only to the extent such contracts reflect
provisions required by (a) above to be included therein.
1.5 "Lanxide" shall mean Lanxide Corporation, a corporation
organized under the laws of Delaware, and located at 0000 Xxxxxxx Xxxx,
X.X. Xxx 0000, Xxxxxx, Xxxxxxxx 00000-0000, U. S. A.
1.6 "Licensed Technology" shall mean Technology now or
hereafter owned by Lanxide or LTC which is relevant to Products and to
which Lanxide K.K. is granted rights under the Lanxide K.K. License
without restriction upon the grant of sublicenses or transfer of such
Technology, but excluding Technology, transfer or license of which, or
an interest in which, despite Lanxide's, LTC's and/or Lanxide K.K.'s
best efforts, would be expressly prohibited, either generally or
specifically, by Government Regulations or contracts with third parties
which are further described but not limited to those listed in Schedule
1.6 hereto.
1.7 "LTC" shall mean Lanxide Technology Company, L.P. a
Delaware limited partnership wholly owned and controlled by Lanxide.
1.8 "Person" shall mean any individual, corporation,
partnership, limited liability company, joint venture, association,
joint stock company, trust, unincorporated organization or government or
any agency or political subdivision thereof.
1.9 "Products" shall have the meaning set forth in Schedule A
to this Agreement.
1.10 "Raw Materials" shall mean ceramic powders, ceramic paper,
fibers, polymers and/or castable metal matrix composite ingot produced
using technology owned by or licensed to Lanxide or its Affiliates.
1.11 "Subsystem" shall mean a series of connected components
within a System, at least one of which is manufactured using the
Licensed Technology.
1.12 "System" shall mean any passenger car, truck, bus,
trailer, motorcycle, railroad locomotive, railroad rolling stock or
article of industrial equipment.
1.13 "Technology" shall mean technical information, know-how,
data, techniques whether patentable or not, patents, patent applications
and trade secrets.
1.14 "Territory" shall mean the geographic area of Japan.
1.15 "Trademarks" shall mean the trademark "Lanxide" together
with all other trademarks relating to the Products owned now or in the
future in the Territory by Lanxide.
II. GRANT OF TECHNOLOGY LICENSE
2.1 License of Licensee. Subject to Government Regulations and
the provisions of this Agreement, Lanxide K.K. hereby grants to Licensee
a license to use, during the term of this Agreement, the Licensed
Technology for the purposes of engaging in the research and development,
manufacture, use and sale in the Territory of Products. In connection
with this license Lanxide K.K. agrees to sell to Licensee Licensee's
requirements for Raw Materials in quantities and on delivery schedules
reasonably needed by Licensee in connection with the manufacture of
Products in accordance with the terms of this Agreement. This Agreement
does not grant Licensee any right to use the Licensed Technology for the
purpose of manufacturing Raw Materials except that Licensee may produce
Raw Materials for its own use in manufacturing Products in accordance
with the terms of this Agreement, but only to the extent of any
inability on the part of Lanxide K.K. to supply such Raw Materials in
accordance with Licensee's reasonable quantity and delivery schedule
requirements.
2.2 Limitations on Exclusivity. Except as provided below, the
license of Licensed Technology granted under paragraph 2.1 shall be
exclusive in the Territory to the extent that the Licensed Technology
can be used only in relation to the manufacture, use and sale of
Products.
(i) The license shall be non-exclusive to the extent that
rights granted to Lanxide K.K. under the Lanxide K.K. License in the
future are non-exclusive.
(ii) The license shall be non-exclusive to the extent required
by Government Regulations.
(iii) The license shall be subject to the rights, now or in the
future, of authorized users of the Licensed Technology outside the
Territory to import into the Territory Products which are incorporated
in Systems assembled outside the Territory and which Systems are then
imported into the Territory.
(iv) The licenses shall be subject to the rights, now or in the
future, of authorized users of the Licensed Technology outside the
Territory to import into the Territory Products for repair of Systems
assembled outside the Territory and previously imported into the
Territory.
2.3 No Rights Outside Territory. The license granted under
paragraph 2.1 shall not include any rights to use the Licensed
Technology outside the Territory for any purpose and such license shall
not include any right to export from the Territory except for:
(i) a non-exclusive right to supply components which are
incorporated in Systems assembled inside the Territory and which Systems
are then exported from the Territory.
(ii) a non-exclusive right to export from the Territory
components and Subsystems manufactured in the Territory for repair of
Systems assembled inside the Territory and previously exported from the
Territory.
Licensee shall inform its customers of the territorial limits
on its license of the Licensed Technology and shall not sell Products to
customers which it knows, or reasonably anticipates may, export those
Products from the Territory in any manner exceeding the scope of the
rights granted to Licensee.
2.4 Sublicense Rights. There shall be no right to sublicense
the Licensed Technology except only that the Licensee shall be permitted
to grant:
(i) one non-exclusive sublicense to use the Licensed
Technology only for the purposes of research and development of Products
in the form of Exhibit D to the Joint Venture Agreement and,
(ii) one non-exclusive sublicense to use the Licensed Technology
only for the purposes of research and development of Products in the
form of Exhibit E to the Joint Venture Agreement, each to the entities
identified therein.
2.5 Reservation of Rights. No rights are granted under the
Licensed Technology except as expressly set forth in this Section 2 and
all rights not expressly granted are reserved. All rights granted are
subject to the terms of the Lanxide K.K. License.
2.6 Provision of Technology. Subject to applicable Government
Regulations, including obtaining any necessary licenses prior to
disclosure, Lanxide K.K. shall, (i) at Licensee's request, make
available to Licensee from time to time on an as-needed basis and free
of cost to Licensee, up to a maximum of 200 hours per year of technical
support to transfer technical information, formulae, data, analyses,
know-how, and information with respect to the Licensed Technology to the
extent reasonably necessary for Licensee to use the Licensed Technology
for manufacture from Raw Materials of Products to be sold by Licensee,
and (ii) upon reasonable request by Licensee, act as a consultant to
Licensee in order to supply the Consulting Services. The actual costs
and expenses incurred by Lanxide K.K. in connection with such Consulting
Services shall be borne by Licensee. Such costs and expenses shall be
reasonable and mutually agreed upon by Lanxide K.K. and Licensee.
2.7 Protection of Technology. Licensee shall not use the
Licensed Technology for any purpose other than to research and develop,
manufacture, use and sell Products, all as provided for in this
Agreement. Licensee shall take no action in respect of the Licensed
Technology which is inconsistent with the terms of the license granted
under this Agreement.
2.8 Acknowledgement of Rights. Licensee acknowledges that
Licensee's right to use the Licensed Technology arises only out of the
sublicense granted under this Agreement. All Products manufactured under
issued patents shall bear a patent notice as may be necessary or
appropriate under the laws of the Territory as specified by Lanxide K.K.
to Licensee.
III. TRADEMARK LICENSE
3.1 Trademark License. Subject to Government Regulations and
the provisions of this Agreement, Lanxide K.K. hereby grants to Licensee
an exclusive license to use the Trademarks in connection with the
marketing and sale in the Territory of Products, but subject to any
rights of importers of Products pursuant to subparagraphs 2.2 (iii) and
(iv) to use the Trademarks on such Products. In no event does this
license grant the right to use any Trademark as a tradename of a
corporation or any other entity.
3.2 Sublicensing Rights. There shall be no right to sublicense
the Trademarks.
3.3 Registration. Registration of the Trademarks shall only be
made in the name of Lanxide K.K. or its designee. Licensee shall provide
to Lanxide K.K. such assistance as Lanxide K.K. may require in relation
to such registration in the Territory, including the execution of all
documents necessary or desirable for obtaining such registration.
Licensee may register its exclusive license to use the Trademarks
granted under this Agreement (Tsujo Shiyoken) with the Patent Office of
Japan. Lanxide K.K. shall cooperate or cause Lanxide and LTC to
cooperate with Licensee in registering the trademark license granted
under this Agreement, including the execution and delivery of all
documents necessary or desirable for obtaining such registration.
3.4 Acknowledgement of Rights. Licensee acknowledges that the
Trademarks and the goodwill associated with the Trademarks are the
property of Lanxide and have been licensed to Lanxide K.K. with the
right to sublicense in accordance with the terms of the Lanxide K.K.
License, and that except to the extent of the license rights granted
hereunder, Licensee shall not acquire any rights in such Trademarks or
in any registration of the Trademarks. Licensee acknowledges that
Licensee's right to use the Trademarks arises only out of the license
granted under this Agreement. Licensee shall neither challenge nor
dispute the rights of Lanxide K.K. or Lanxide with respect to use or
ownership of the Trademarks. Where Licensee uses the Trademarks, it
shall include a notice as to ownership as directed by Lanxide K.K..
However, Lanxide K.K. makes no warranty that the Trademarks, which are
not registered in the Territory as of the date hereof, will be
successfully registered in the Territory.
3.5 Use of Trademarks: Quality Control. Licensee shall only use
the Trademarks in connection with Products manufactured using the
Licensed Technology. The standards of manufacture of such Products shall
be at least equal to the standards of quality required by Lanxide K.K.,
acting on behalf of Lanxide. Licensee shall follow all reasonable
instructions in relation to the quality of manufacture of Products under
the Licensed Technology communicated to it by any representative of
Lanxide K.K. or Lanxide. In no event shall Licensee manufacture any
Products which are not in accordance with applicable Government
Regulations relating to safety and product quality.
3.6 Indemnity and Insurance. Licensee shall indemnify and hold
harmless Lanxide K.K., Lanxide, their Affiliates and their respective
directors, officers and employees from and against any claims arising
out of the manufacture, use or sale of Products by Licensee; provided
such losses, claims and damages are not directly attributable to
instructions, actions or omissions by Lanxide K. K., Lanxide, their
Affiliates or their respective directors, officers or employees. From
the commencement of the manufacture of Products by the Licensee and
until the last applicable statute of limitations expires, Licensee will
procure and maintain, at its own cost and expense, product liability
insurance written on an occurrence basis from an insurance company rated
"A" or above by A.M. Bests' providing protection against liability for
any alleged damage or injury arising out of any alleged defect in
material or workmanship in such Products in the primary amount of 1
million U.S. dollars with respect to any one accident or occurrence, and
1 million U.S. dollars in the aggregate. Licensee shall also procure and
maintain, at its own expense, excess liability insurance in the amount
of 10 million U.S. dollars in the aggregate. The insurance policy shall
name Lanxide K.K. as an additional insured and shall be endorsed to
provide for written notification to Lanxide K.K. by insurer not less
than 30 days prior to cancellation. Licensee shall provide Lanxide K.K.
with a certificate of insurance evidencing such coverage within 15
business days after the manufacture of Products by the Licensee and
annually thereafter.
3.7 Inspection and Approval Rights. All uses of the Trademarks
on or in connection with the sale or marketing of Products shall be
subject to the prior approval of Lanxide K.K. acting on behalf of
Lanxide. Licensee shall provide to Lanxide K.K. upon request samples of
Products manufactured by Licensee as well as advertising and other
publicity materials bearing the Trademarks proposed to be used by
Licensee, together with an English language translation if necessary.
Licensee shall allow representatives of Lanxide K.K. or Lanxide at all
reasonable times to inspect any facility where Products are manufactured
which will be sold under the Trademarks.
3.8 Reservation of Rights. No rights are granted under the
Trademarks except as expressly set forth in this Section 3. Without
limitation, Licensee acknowledges the rights of Lanxide K.K. and Lanxide
to use the Trademarks themselves in the Territory or through direct or
indirect licensees. All rights granted are subject to the terms of the
Lanxide K.K. license.
IV. FEE AND ROYALTY
4.1 Fee Payment and Amount. Licensee shall pay an initial
license fee to Lanxide K.K. in Japanese Yen in an amount equal to
$4,000,000 in U.S. dollars, according to the following schedule, plus
the amount of any consumption tax in Japan:
Date Amount
November 15, 1996 $1,000,000
December 31,1996 $1,000,000
June 30, 1997 $1,000,000
December 31, 1997 $1,000,000
4.2 Royalty Payment and Amount. Licensee shall pay to Lanxide
K.K. a royalty equal [CONFIDENTIAL TREATMENT REQUESTED BY LANXIDE
CORPORATION] of the Net Sales Price of all Products which are
manufactured in the Territory using the Licensed Technology by Licensee,
plus the amount of any consumption tax in Japan. Licensee shall pay
such royalty to Lanxide K.K. so long as Licensee shall use the Licensed
Technology. In the event that Licensee, for two consecutive periods of
three (3) calendar months each, as stipulated in paragraph 4.6, does
not pay royalties hereunder at any time following commercialization of
the Licensed Technology in the Territory by Licensee as a result of
claimed non-use of the Licensed Technology, then Lanxide K.K. shall
have the right to terminate this Agreement upon sixty (60) days prior
written notice to Licensee.
4.3 Net Sales Price. The "Net Sales Price" referred to in
paragraph 4.2 shall mean the invoiced price for a Product less
insurance, transport, bona fide rebates and allowances to the extent
identified on the invoice, and less returns and less the purchase price
of Raw Materials purchased by Licensee from Lanxide or its Affiliates.
The "Net Sales Price" applicable to transfers to Licensee's Affiliates
will be the price at which such Products would be sold at the time in
question on an arms-length basis to a third party. Where Products are
sold or transferred as part of a Subsystem and not separately, the Net
Sales Price will be that percentage of the Net Sales Price of the
Subsystem equal to the cost of manufacture of the Products divided by
the cost of manufacture of the total Subsystem.
4.4 Third Party Royalties. In any case where use of Licensed
Technology requires or required Lanxide K.K., Lanxide or LTC to pay a
royalty to a third party (whether lump-sum or payable by reference to
sales) under the terms of any of the license agreements listed on
Schedule 4.4 hereto or any future third party license that Lanxide K.K.,
Lanxide or LTC may enter into, then in the event that Licensee
determines to use such Technology, Licensee will in addition to the
royalty specified in paragraph 4.2 be responsible for payment to Lanxide
K.K. of a further amount equal to the royalty payable to the third party
attributable to sales by Licensee. In case Lanxide K.K., Lanxide or LTC
need to obtain a third party technology which Lanxide K.K., Lanxide or
LTC are aware may be useful to Licensee and therefore may require
Licensee to be responsible for additional royalty, Lanxide K.K., Lanxide
or LTC shall let Licensee know the need, with prior written form, and
consult with Licensee as to whether such additional Technology is truly
necessary. If Licensee decides such Technology is unnecessary, Licensee
shall have the right not to use such third party Technology and
therefore not be required to pay any third party royalty associated
therewith. Even though Licensee decides such Technology is unnecessary,
subject to the terms of this Agreement, Licensee can use Licensed
Technology not requiring such third party royalty, including the right
to purchase Raw Materials. The parties hereto agree, however, that
Licensee shall be under no obligation to use any Technology requiring
payment of royalty to any third party, and the decision to use such
Technology shall be solely at Licensee's discretion.
4.5 Tax Withholding. Licensee may withhold taxes from royalties
payable hereunder only to the extent that such withholding is required
under Japanese law. Licensee shall provide copies of all documents
required by Lanxide K.K. hereunder to claim credit for such tax payment.
4.6 Payment and Accounting. Royalties due under this Agreement
shall be paid in Japanese yen to the bank account specified by Lanxide
K.K. within 45 days after each of December 31, March 31, June 30 and
September 30, in relation to the period of three (3) calendar months (or
less in the case of the first or final such period) ending on such date.
At the same time as payment of royalties is made, Licensee shall provide
to Lanxide K.K. a statement setting out the sales or transfers of
Products manufactured using the Licensed Technology made during the
period to which such royalties relate, the type and description of the
Products in question, the applicable Net Sales Price, the amount of
royalties payable and the amount of any tax withheld. Overdue payments
shall bear interest at the annual rate of two percent (2%) above the
short term loan prime rate of Citibank, N.A. in Tokyo.
4.7 Books and Records. Licensee shall keep proper books and
records showing the description and price of Products sold or
transferred by Licensee, and such records shall be open at all
reasonable times to inspection by Lanxide K.K. or its representatives,
who shall be entitled to take copies of such books and records.
V. TERM AND TERMINATION
5.1 Effective Date. This Agreement shall come into effect upon
the later of (i) unconditional grant of all necessary United States and
Japanese government approvals required for its validity and for
performance of the obligations contained in this Agreement; or (ii) the
Effective Date first written above. This Agreement shall thereafter be
perpetual, subject to earlier termination as provided herein.
5.2 Events of Termination. This Agreement may be earlier
terminated upon the happening of any of the following events:
(i) Upon written notice by Lanxide K.K., in the event of
termination of the Lanxide K.K. License;
(ii) Upon written notice by Licensee to Lanxide K.K. in the
event that Lanxide K.K. is in material breach of any of its obligations
under this Agreement as a result of action or inaction by some Person
other than Licensee or a Person controlled by Licensee, and Lanxide K.K.
fails to remedy that breach within 45 days after receipt of written
notice from Licensee, requiring it to remedy that breach;
(iii) a) Upon written notice from Lanxide K. K. to Licensee, in
the event that Licensee is in material breach of any of its obligations
under this Agreement, and Licensee fails to remedy that breach within 60
days after receipt of written notice requiring Licensee to remedy that
breach; b) Any of Licensee's shareholders are in material breach of any of
their obligations under either the Joint Development Agreement among Akebono
Brake Industry Co., Ltd., Nihon Cement Co., Ltd., and Lanxide, or the
Joint Venture Agreement, both dated October 25, 1996 and such Licensee's
shareholder in breach and/or other Licensee's shareholders fail to
remedy that breach within 60 days after receipt by all Licensee's
shareholders of written notice from a party to the respective agreement
requiring remedy of that breach.
(iv) Upon written notice by Licensee, in the event that Lanxide
K.K. ceases to carry on business, becomes or is declared insolvent,
files or has filed against it a petition in bankruptcy, has a receiver
appointed over its assets, or takes or has taken against it any similar
act as a result of debt, as a result of action or inaction by some
Person other than Licensee or a Person controlled by Licensee;
(v) Upon written notice by Lanxide K.K., in the event that
Licensee ceases to carry on business, becomes or is declared insolvent,
files or has filed against it a petition in bankruptcy, has a receiver
appointed over its assets, or takes or has taken against it any similar
act as a result of debt, as a result of action or inaction by some
Person other than Lanxide K.K. or a Person controlled by Lanxide K.K.;
(vi) Upon one hundred and eighty (180) days prior written
notice by either party, in the event that any governmental agency or
court requires substantial modifications to the provisions of this
Agreement;
(vii) Upon written notice by Licensee to Lanxide K.K.; or
(viii) As provided in paragraph 4.2.
5.3 Effects of Termination. On termination or expiration of
this Agreement, the following provisions shall have effect:
(i) All licenses granted to Licensee and any authorized
sublicensees shall forthwith cease and Licensee shall cooperate in
cancelling any registration of such licenses.
(ii) Licensee and any authorized sublicensees shall forthwith
cease all use of the Licensed Technology and the Trademarks.
(iii) Termination of this Agreement shall not affect the
continued enforceability of paragraph 3.6 and Sections 8 and 9 and the
continued existence of the license back under paragraph 7.1 of
improvements and inventions made up to the date of termination.
(iv) All amounts owing for royalties shall be immediately due
and payable.
(v) Licensee and any authorized sublicensees shall promptly
deliver all Proprietary Information in all forms to Lanxide K.K. or to
its authorized representatives.
Notwithstanding the provisions of subparagraphs 5.3(i) and (ii), Licensee
shall have the right to sell in the Territory all Products it has manu-
factured prior to termination of this Agreement.
5.4 Lanxide K.K. License. In the event that Lanxide ceases to
carry on business, becomes or is declared insolvent, files or has filed
against it a petition in bankruptcy, has a receiver appointed over its
assets, or takes or has taken against it any similar act as a result of
debt, as a result of action or inaction by some Person other than
Licensee or Lanxide K.K. or a Person controlled by Licensee or Lanxide
K.K.; Lanxide K.K. shall take measures under the applicable laws to
retain its rights under the Lanxide K.K. License, and under any
agreement supplementary to the Lanxide K.K. License, to the Licensed
Technology, as such rights existed immediately before the happening of
such an event for a term equal to any remaining duration of the Lanxide
K.K. License (including all extension(s)) in accordance with the
Bankruptcy Code of 1978 as amended, Section 365(n)(1)(B).
VI. GOVERNMENT REGULATIONS, ETC.
6.1 Compliance with Government Regulations. The grant of
licenses and the transfer of Licensed Technology under this Agreement
shall be conditional on all necessary governmental consents and licenses
being obtained and maintained. Lanxide K.K. and Licensee shall use
reasonable efforts to obtain all such consents and licenses. Licensee
shall comply with all Government Regulations governing export of goods
and information from the United States and from the Territory, including
without limitation the Export Administration Regulations of the United
States (15 C.F.R. 730, et seq.) as such may be amended from time to
time, and the terms of any licenses or consents obtained.
VII. PATENTS AND IMPROVEMENTS
7.1 Rights in Inventions. During the term of this Agreement,
Licensee shall promptly disclose to Lanxide K.K. any inventions or
improvements which relate solely to composition and processing of
Ceramic-Reinforced Aluminum as material for Products (specifically
excluding any inventions or improvements which relate to the design
and/or performance of Products themselves as brake parts or components)
that are made by Licensee's employees or by the employees of any
authorized sublicensees without the participation of any of the
employees of Lanxide K.K., Lanxide or their Affiliates and Licensee
shall obtain the right to grant, and grant, to Lanxide K.K. a full
worldwide, royalty-free, perpetual, irrevocable, non-exclusive license
to make, use and sell such improvements or inventions in any manner not
prevented by the terms of the license to Licensee under this Agreement,
with full right by Lanxide K.K. to grant sublicenses of such
improvements or inventions which themselves include the right to
sublicense.
The provisions of this paragraph 7.1 shall not affect the
ownership of inventions or improvements made by employees of Lanxide
K.K. or Lanxide or their Affiliates (with or without the participation
of the employees of the Licensee or its authorized sublicencees) which
inventions and improvements shall be the property of Lanxide K.K.,
Lanxide or their Affiliates, but subject to the license granted under
this Agreement.
7.2 Prosecution and Registration. Licensee shall not seek any
patent or other intellectual property registration in relation to the
Licensed Technology in its own name, other than in relation to
improvements and inventions made by Licensee's employees. Licensee may
register its license to use the Licensed Technology granted under this
Agreement (Tsujo Jisshiken) with the Patent Office of Japan. Lanxide
K.K. shall cooperate or cause Lanxide and LTC to cooperate with Licensee
in registering the technology license granted under this Agreement,
including the execution and delivery of all documents necessary or
desirable for obtaining such registration.
7.3 Actions and Claims Against Third Parties. If, during the
term of this Agreement, Licensee learns of any infringement, unfair
competition or misappropriation ("Infringement") by a third party of any
Licensed Technology exclusively licensed to Licensee, Licensee shall
promptly and fully notify Lanxide K.K. in writing.
7.4 Infringement Claims by Third Parties. If, during the term
of this Agreement, any claim or action is threatened or commenced by a
third party alleging Infringement of third party rights in the Territory
by practice of the Licensed Technology by Licensee, Licensee shall
promptly and fully notify Lanxide K.K. in writing.
7.5 Procedure. Lanxide K.K., Lanxide, and LTC individually or
collectively, shall have the right, but not the obligation, to take all
reasonable steps to prosecute or defend any claim or action relating to
the matters set forth in paragraphs 7.3 and 7.4, and may institute,
defend, or settle claims, actions or proceedings at their expense. In
the event that Lanxide, Lanxide K.K., or LTC choose to prosecute or
defend any such claim or action, Lanxide, Lanxide K.K., or LTC, either
individually or collectively, shall have the sole right to control all
negotiations and litigation and to settle any and all litigation at
their own expense. Licensee, at the request of any of Lanxide K.K.,
Lanxide, or LTC shall render all reasonable assistance and cooperation
at their own expense. If each of Lanxide K.K., Lanxide, or LTC refuses
or fails to take or defend such actions within six (6) months after
receipt of the notice described in paragraphs 7.3 and 7.4 (or such
shorter period as shall be reasonable in the circumstances), then, upon
Licensee's written request and at Licensee's expense (except as provided
in paragraph 9.1), Lanxide K.K., Lanxide, and LTC individually or
collectively, shall cooperate with Licensee and render all reasonable
assistance to Licensee in instituting, defending or settling such
actions or claims or proceedings. In such case, Lanxide K.K., at its own
expense, shall have the right to participate in such proceedings through
Lanxide K.K.'s own counsel. Except as provided in paragraph 9.1, in no
event shall Lanxide K.K., Lanxide, or LTC bear any expense of any
claims, actions, or proceedings not instituted or defended by Lanxide
K.K., Lanxide, or LTC unless their written consent is obtained prior to
the institution or defense of such claims, actions, or proceedings. In
addition, Lanxide K.K. may request that Licensee modify or terminate any
practices which have given rise to a claim of Infringement of third
party rights. Any damages obtained from a third party shall be for the
account of the party prosecuting the claim, action, or proceeding
against such third party in which such damages are recovered.
VIII. CONFIDENTIALITY, RESTRICTED DISCLOSURE AND LIMITED USE
COMMITMENTS.
8.1 Confidentiality Undertaking. The parties hereto shall (i)
treat as confidential all Proprietary Information (as hereinafter
defined) which is obtained by a receiving party (Lanxide K.K. or
Licensee, as the case may be) directly or indirectly from a disclosing
party (Licensee or each of Lanxide K.K., Lanxide, or LTC, as the case
may be) in connection with this Agreement, and (ii) not disclose the
same to any third party nor use the same, except as provided herein. The
provisions of this Section shall apply, without limitation, to all
information learned by the parties in the course of implementing this
Agreement concerning the business, assets, customers, processes or
methods of Lanxide K.K., Lanxide, LTC, or Licensee, or their Affiliates.
The provisions of Section 8 shall remain in effect during the term of
this Agreement and for a period of five (5) years after termination or
expiration of the Agreement.
8.2 Proprietary Information. As used herein, "Proprietary
Information" means any information of Lanxide K.K., Lanxide, LTC,
Licensee, or their Affiliates that might reasonably be considered
proprietary, sensitive or private, including but not limited to the
following:
(i) Technical information, know-how, data, techniques,
discoveries, inventions, ideas, unpublished patent applications,
proprietary information, formulae, analyses, laboratory reports, other
reports, financial information, studies, findings, or other information
relating to Lanxide K.K., Lanxide, LTC, Licensee, or their Affiliates,
or the Licensed Technology or methods or techniques used by Lanxide
K.K., Lanxide, LTC, Licensee, or their Affiliates, whether or not
contained in samples, documents, sketches, photographs, drawings, lists,
and the like;
(ii) Data and other information employed in connection with the
marketing of the products of Lanxide K.K., Lanxide, LTC or Licensee, or
their Affiliates including cost information, business policies and
procedures, revenues and markets, distributors and customers, and
similar items of information whether or not contained in documents or
other tangible materials; and
(iii) Any other information obtained by the parties to this
Agreement during the term hereof, that is not generally known to, and
not readily ascertainable by proper means by, third parties.
8.3 Precautions. The parties hereto shall take all appropriate
steps to prevent unauthorized disclosure of any Proprietary Information
by their employees, which steps include the execution or acceptance by
all such persons of written agreements containing obligations of
confidentiality, restricted disclosure and limited use relative thereto
consistent with this Section 8 prior to disclosure of Proprietary
Information to them. The parties shall not permit access to Proprietary
Information by their employees, except on a need-to-know basis. The
parties shall further take all appropriate steps to protect the
Proprietary Information against espionage, misuse, loss or theft.
8.4 Exclusions. The provisions of Section 8 shall not apply to
any Proprietary Information that (i) has become generally available to
the public through no fault of the receiving party (Lanxide K.K. or
Licensee, as the case may be) or its employees, (ii) the receiving party
can prove by clear and convincing documentary evidence was in its
possession before disclosure hereunder and did not come directly or
indirectly from the disclosing party (either Licensee or any of Lanxide
K.K., Lanxide, or LTC, as the case may be) , or their Affiliates, (iii)
becomes known to the receiving party through lawful disclosure from a
third party that is not subject to a confidentiality agreement with the
disclosing party (either Licensee or any of Lanxide K.K., Lanxide, or
LTC, as the case may be) or their Affiliates, or (iv) the receiving
party can prove by clear and convincing documentary evidence has been or
is developed by the receiving party independent of any such Proprietary
Information disclosed by the disclosing party.
8.5 Permitted Disclosure. Proprietary Information may not be
disclosed by the receiving party without the prior written consent of
Lanxide K.K. or Licensee, except that;
(i) Lanxide K.K. may disclose Licensee's Proprietary
Information to the extent of the inventions and improvements described
in paragraph 7.1 hereunder to its Affiliates or its other licensees or
sublicensees of the Licensed Technology, provided that prior to
disclosure of the Proprietary Information, such Persons execute written
agreements containing obligations of confidentiality consistent with
this Section 8.
(ii) In the event that a third party wishes to evaluate
Licensee's proprietary technology to the extent of the inventions and
improvements described in paragraph 7.1 hereunder in connection with a
business transaction with Lanxide K.K. or its Affiliates, Lanxide K.K.
may disclose as much of Licensee's Proprietary Information to that third
party as is necessary to conduct such evaluation, provided that prior to
disclosure such third party executes a written agreement prohibiting use
of the Proprietary Information for any reason other than evaluation of
this technology and containing obligations of confidentiality consistent
with this Section 8.
8.6 Government Regulations. The provisions of this Section 8
shall not be deemed to obligate either party to do or refrain from doing
any act, the doing or not doing of which would cause or reasonably be
expected to cause either party to fail to fulfill or comply with any
obligation or requirement imposed by any Government Regulation, provided
that, any disclosures of Proprietary Information made to fulfill or
comply with any such Government Regulation shall be made (i) only after
notice to the other party, and (ii) under conditions invoking all
confidentiality protections as are available by law or regulation.
IX. MISCELLANEOUS
9.1 No Warranties. Lanxide K.K. makes no warranty or
representation with respect to the Licensed Technology or other
assistance furnished under this Agreement, or with respect to the
Trademarks, nor is Lanxide K.K. in any way responsible for the accuracy,
utility or completeness of any Licensed Technology or other assistance
furnished under this Agreement. LANXIDE K.K. HEREBY EXPRESSLY DISCLAIMS
ANY AND ALL WARRANTIES AND REPRESENTATIONS, EXPRESS OR IMPLIED, ARISING
BY LAW OR CUSTOM, WITH RESPECT TO THE LICENSED TECHNOLOGY, INCLUDING,
WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE. LANXIDE K.K. DOES NOT IN ANY WAY PROMISE THAT THE
LICENSED TECHNOLOGY WILL PRODUCE ANY PARTICULAR RESULTS, PRODUCTS OR
PROFITABILITY.
9.2 Force Majeure. Neither party shall be liable for failure to
perform its obligations hereunder for so long as that failure may be the
result of an event beyond its reasonable control (a "force majeure"
event) , provided that such party uses all reasonable efforts to comply
with the terms of this Agreement to the extent that it is able to do so.
However, if such failure due to force majeure by either party to perform
any part of this Agreement should continue for six (6) months, the other
party shall have the right to terminate this Agreement.
9.3 Waivers. The failure at any time of either party to require
performance by the other party of any obligation required by this
Agreement shall in no way affect such party's right to require such
performance at any time thereafter, nor shall the waiver by either party
of a breach of any provision of this Agreement by the other party
constitute a waiver of any other breach of the same or any other
provision or constitute a waiver of the obligation itself.
9.4 Amendment. This Agreement may be amended only by an
instrument in writing duly executed by the duly authorized
representatives of the parties hereto.
9.5 Assignability. This Agreement may not, without prior
written agreement by Lanxide, be assigned. Any permitted assignment
shall not relieve Licensee from any obligations hereunder incurred prior
to such assignment.
9.6 Notices. In any case where any notice or other
communication is required or permitted to be given hereunder (including,
without limitation, any change in the information set forth in this
paragraph 9.6) such notice or communication (i) shall be in writing and
in the English language, (ii) shall be sent to the parties set out
below, and (iii) shall be (A) personally delivered, (B) sent by postage
prepaid registered mail, (C) transmitted by telecopy receipt of which is
confirmed, or (D) sent by courier service requiring signature on
receipt, as, follows:
If to Lanxide K.K., to:
Lanxide K.K.
0-0-00, Xxxxx-xxxx
Xxxxxx-xx
Xxxxx 000, Xxxxx
Fax: 00-0000-0000
Attention: President
If to Licensee, to:
AKN Corporation
0-0-00, Xxxxx-xxxx
Xxxxxx-xx
Xxxxx 000 Xxxxx
Fax: 00-0000-0000
Attention: President
All such notices or other communications shall be deemed to have been given
or received (i) upon receipt if personally delivered, or if by courier,
(ii) on the third business day following posting if by postage prepaid
registered mail, or (iii) when sent with confirmed answer back if sent by
telecopy.
9.7 Choice of Law. This Agreement shall be construed and
enforced in accordance with and governed by the internal laws of Japan.
9.8 Arbitration. Any and all disputes, controversies or
differences arising from or in relation to or in connection with this
Agreement or a transaction conducted under this Agreement shall be
settled by mutual consultation between the parties in good faith as
promptly as possible, but failing an amicable settlement, shall be
settled by arbitration in accordance with the Commercial Arbitration
Rules of the International Chamber of Commerce, by which each party
agrees to be bound. The arbitration shall be held in Tokyo, Japan. The
award of the arbitrator shall be final and binding upon the parties.
9.9 Interpretation. The headings of the sections and paragraphs
in this Agreement are provided for convenience of reference only and
shall not be deemed to constitute a part hereof. The Agreement is
executed in the English language.
9.10 Entire Agreement. This Agreement constitutes the entire
agreement of the parties hereto with respect to the subject matter of
this Agreement and supersedes all prior agreements and understandings,
oral and written, if any, among the parties hereto with respect to the
subject matter of this Agreement.
9.11 Severability. Should any provision of this Agreement be
deemed in contradiction with the laws of any jurisdiction in which it is
to be performed or unenforceable for any reason, such provision shall be
deemed null and void, but, except as provided in paragraph 5.2, this
Agreement shall remain in force in all other respects.
9.12 Counterparts. This Agreement may be executed in several
counterparts, each of which shall be deemed an original, but all of
which together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to
be duly executed and delivered as of the day and year first above
written.
LANXIDE K.K. AKN CORPORATION
By: /s/ Xxxx X. Xxxxxxx By: /s/ Xxxxxx Xxxx
Name: Xxxx X. Xxxxxxx Name:: Xxxxxx Xxxx
Title: President Title: President
ACCEPTED AND AGREED TO BY:
LANXIDE CORPORATION LANXIDE TECHNOLOGY COMPANY L.P.
BY: LANXIDE CORPORATION
GENERAL PARTNER
By: /s/ Xxxx X. Xxxxxxx By: /s/ Xxxx X. Xxxxxxx
Name: Xxxx X. Xxxxxxx Name: Xxxx X. Xxxxxxx
Title: President Title: President
SCHEDULE 1.6
Technology which is, or may in the future be
(i) provided to Lanxide or its Affiliates under Non Disclosure
Agreements and is identified as the proprietary information of the
disclosing party.
(ii) designated as classified by a government agency.
(iii) controlled by the export regulations of the United
States.
(iv) provided under license to Lanxide or its Affiliates with
limits on its use or transfer.
SCHEDULE 4.4
None
SCHEDULE A
PRODUCTS
"Products" shall mean
Brake rotors, brake drums, brake shoes, brake pistons, brake
caliper bodies, brake pad backing plates, brake caliper anchors, steering
knuckles, drum brake back plates, brake torque anchor support plates,
disc brake back plates, wheel hubs, brake dust xxxxxxx, brake modulator
housings, brake pressure control valve housings, wheel brake cylinder
housings, and brake master cylinder housings, all made only from Ceramic-
Reinforced Aluminum for use only on passenger cars, trucks, buses, trailers,
motorcycles, railroad locomotives, railroad rolling stock and industrial
equipment.
All of the above definitions shall exclude the following:
1. Sporting Goods
2. Filters for use in materials processing plants which come in
direct contact with some portion of materials flow through the process
plant.
3. Aerospace components including but not limited to leading
edges, nosecones, radomes, control surfaces, struts, stiffeners, skins
and air frames for spacecraft, aircraft, and missiles.
4. Heat exchangers including but not limited to recuperators,
boilers, waste heat recovery, superheaters, pyrolysis units, reformers,
air preheaters and chemical processes, including radiant burner tubes
and parts thereof.
5. Gas turbine engine parts including but not limited to land,
sea and air, moving and stationary gas turbine engines, and aircraft
scramjet and ramjet engines and components thereof.
6. Electrical/electronic substrates, heat sinks or packages,
including but not limited to components thereof for active or passive
electronic devices, and assemblies thereof.
7. Electronic devices whose primary function is to serve as a
capacitor, resistor, inductor, or part thereof, or arrays of same, not
including superconductive inductors.
8. Electro-optic and photovoltaic devices whose primary
function is to transform electrical signals to optical signals.
9. RFI shielding, electrical ground planes, antennae, and
components thereof.
10. Electrical wire and cable, and components thereof.
11. Generators, alternators, or parts thereof not including
prime movers, brakes, clutches or other assemblies associated therewith.
12. Electric motors, or parts thereof.
13. Electrical transformers, electromagnets, electric relays,
and components thereof.
14. Superconducting inductors.
15. Connectors for electronic devices.
16. Electro-optic and photovoltaic devices whose primary
function is to transform optical signals to electrical signals.
17. Electronic devices whose primary function is to serve as a
vacuum tube, a discharge tube, a magnetron, a wave guide, emitter,
receiver, or part thereof.
18. Solid state electronic transducer, transistor, diode, or
integrated circuit wafers, chips or elements.
19. Electric incandescent, fluorescent or discharge lamps, and
components thereof.
20. Electrical switches, switchgear, and components thereof.
21. Electric fuel cells, thermoelectric devices and electric
batteries, or components thereof.
22. Electrodes and electrical terminations, interconnects,
splices, plugs, sockets, and components thereof.
23. Electrical fuses and fusible links, and components thereof.
24. Human or other animal prostheses, including, but not
limited to, bone, tooth or organ replacement or supplement.
25. Components, combinations thereof for incorporation into
systems, and systems comprising such components, designed specifically
to provide ballistic protection for ground vehicles, artillery,
amphibious vehicles, aircraft, spacecraft, space installations,
missiles, marine craft, marine installations, and personnel.
26. Components and parts, including but not limited to complete
assemblies, that are, or become a direct part of, solid, liquid or gas
fueled rocket engines for all military and civilian uses including but
not limited to tactical and strategic missile engines and space launch
and orbital insertion rocket engines.
27. Products to inhibit corundum formation in aluminum melting
furnaces.
28. Abrasive grain for supplying the coated abrasives, bonded
abrasives and loose abrasives markets.
29. Grinding wheels.
30. Gun systems, including but not limited to both conventional
smokeless propellant driven systems and electromagnetic-driven railgun
systems, and/or components therefor.
31. Electric resistance-heated igniters for use as fuel
ignition devices in all applications except internal combustion, gas
turbine and rocket engine use, including but not limited to components
for these applications, such as electrically operated resistance heating
elements supports and interconnections for such elements and
resistance-heated igniter assemblies.
32. Ceramic and ceramic matrix composite powders, microspheres,
tubules and platelets for use as ceramic raw materials or as raw
materials for ceramic matrix, metal matrix or polymer matrix composites.
33. Fuel injectors and fuel injector components for use in
internal combustion engines.
34. Cutting tools and components for cutting tools including
but not limited to broaches, twist drills, gun drills and reamers,
countersinks, combination drills and countersinks, counterbores,
reamers, hobs, gear shapers, milling cutters, single and double point
tools, circular form tools, threading tools, blanks tips and inserts.
35. Track and undercarriage components, track systems and
ground contact hull structures including but not limited to those for
use on bulldozer, scraper, earthmover, backhoe, skidder, armored
vehicle, dragline, conveyor, or mining equipment.
36. Aircraft and marine propellers, rotors and other propulsive
devices and shaft seals and components therefor.
37. Inspection tools, including but not limited to gages gage
blocks, go no-go gages, xxx blocks, inspection systems, coordinate
measuring equipment.
38. Sensors, sheathing for sensors, and components thereof.
39. All military component applications.
40. Building product components.
41. Furnace components and hardware including heating elements,
kiln rollers, kiln furniture, xxxxx and crucibles.
42. Housewares and components thereof.
43. All engine and power transmission components.
44. Security devices including safes, locks, vaults, and
components thereof.
45. Welding electrodes.
46. Paints and Adhesives
Exhibit C
LICENSE AGREEMENT
This License Agreement ("Agreement"), dated as of _______________
1997 (the "Effective Date" ), is made among
1. Lanxide Technology Company L.P. of 0000 Xxxxxxx Xxxx, X.X. Xxx
0000, Xxxxxx, Xxxxxxxx 00000-0000, U.S.A., a Delaware limited partnership
("LTC"),
2. AKN Corporation of 0-0-00, Xxxxx-xxxx, Xxxxxx-xx, Xxxxx 000,
Xxxxx, a Japanese corporation ("Licensee"), and
3. Lanxide Corporation of 0000 Xxxxxxx Xxxx, X.X. Xxx 0000,
Xxxxxx, Xxxxxxxx 00000-0000, U.S.A., a Delaware corporation ("Lanxide").
WHEREAS, LTC is wholly owned and controlled by Lanxide; and
WHEREAS LTC holds rights in certain valuable technology and
Lanxide holds rights in certain valuable trademarks.
WHEREAS, Licensee wishes to license certain of such rights for the
purposes defined herein; and
NOW, THEREFORE, in consideration of the premises and mutual
covenants contained herein, the parties hereto hereby agree as follows:
I. DEFINITIONS
Terms used with initial capital letters in this Agreement shall
have the meaning set forth below.
1.1 "Affiliate(s)" of a Person means a Person that, directly or
indirectly through one or more intermediaries controls, is controlled by,
or is under common control with such Person.
1.2 "Ceramic-Reinforced Aluminum" shall mean materials comprised
of a discontinuous ceramic reinforcing phase and a continuous aluminum
metal matrix phase.
1.3 "Government Entity" shall mean any sovereign, state or
political subdivision thereof, whether foreign or domestic.
1.4 "Government Regulations" shall mean and include any and all
terms, conditions and provisions of (a) any law, regulation, order,
statute, decree, rule, writ, injunction, determination or award of any
court or Governmental Entity and (b) any contract for research, development
and/or manufacturing between LTC and any department or agency of the United
States government but only to the extent such contracts reflect provisions
required by clause (a) above to be included therein.
1.5 "K.K. License" shall mean Exhibit B of the Joint Venture
Agreement ("Joint Venture Agreement") referred to in subparagraph 5.2 (i)
(b) hereunder.
1.6 "Licensed Technology" shall mean Technology which is now or
hereafter owned by LTC, and all other Technology licensed to LTC without
restriction upon the grant of sublicenses, that is relevant to Products,
but excluding Technology the transfer or license of which, or an interest
in which, would be expressly prohibited, despite Lanxides and LTCs best
efforts, either generally or specifically, by Government Regulations or
contracts with third parties which are further described but not limited to
those listed in schedule 1.6 hereto.
1.7 "Person" shall mean any individual, corporation, partnership,
limited liability company, joint venture, association, joint stock company,
trust, unincorporated organization or government or any agency or political
subdivision thereof.
1.8 "Products" shall mean those items listed as inclusions in
Schedule A to this Agreement.
1.9 "Raw Materials" shall mean ceramic powders, ceramic paper,
fibers, polymers, and/or castable metal matrix composite ingot produced
using technology owned by or licensed to Lanxide or its Affiliates.
1.10 "Subsystem" shall mean a series of connected components
within a System, at least one of which is manufactured using the Licensed
Technology.
1.11 "System" shall mean any passenger car, truck, bus, trailer,
motorcycle, railroad locomotive, railroad rolling stock or article of
industrial equipment.
1.12 "Technology" shall mean technical information, know-how,
data, techniques whether patentable or not, patents, patent applications
and trade secrets.
1.13 "Territory 1" shall mean the geographic area as defined in
Schedule B.
1.14 "Territory 2" shall mean the geographic area of Japan.
1.15 "Trademarks" shall mean the trademark and tradename
"LANXIDE", together with all other trademarks owned now or in the future in
the Territory by Lanxide.
II. GRANT OF TECHNOLOGY LICENSE
2.1 License of Licensed Technology. Subject to Government
Regulations and the provisions of this Agreement, LTC hereby grants to
Licensee a perpetual exclusive license to use the Licensed Technology to
manufacture Products in Territory 1 and a perpetual non-exclusive license
to sell Products manufactured in Territory 1 on a worldwide basis excluding
Japan.
2.2 Contingent Additional License. Contingent upon the happening
of any event described in subparagraph 5.2 (i) or (iv) or the K.K. License
and subject to Government Regulations and the provisions of this agreement,
LTC hereby further grants to Licensee a license to use Licensed Technology
for the purposes of engaging in the research and development, manufacture,
use and sale in Territory 2 of Products.
2.3 Non-Exclusive Using/Selling Rights. The license of Licensed
Technology granted under paragraph 2.1 shall be non-exclusive with respect
to the use or sale of Products, and shall be subject to the rights, now or
in the future, of other authorized users of the Licensed Technology to use
or sell Products within or outside Territory 1.
2.4 Limitations on Exclusivity. Except as provided below, the
contingent license of Licensed Technology granted under paragraph 2.2 shall
be exclusive in the Territory 2 to the extent that the Licensed Technology
can be used only in relation to the manufacture, use and sale of Products.
(i) The license shall be non-exclusive to the extent that rights
granted to LTC in the future are non-exclusive.
(ii) The license shall be non-exclusive to the extent required by
Government Regulations.
(iii) The License shall be subject to the rights, now or in the
future, of authorized users of the Licensed Technology outside Territory 2
to import into Territory 2 Products which are incorporated in Systems
assembled outside Territory 2 and which Systems are then imported into
Territory 2.
(iv) The licenses shall be subject to the rights, now or in the
future, of authorized users of the Licensed Technology outside Territory 2
to import into Territory 2 Products for repair of Systems assembled outside
Territory 2 and previously imported into territory 2.
2.5 Rights Outside Territory. The license granted under paragraph
2.1 shall not include any rights to use the Licensed Technology for the
manufacture of Products outside Territory 1 and such license shall not
include any right to export Products from Territory 1 except for
non-exclusive rights to sell such Products:
(i) outside Territory 1, but excluding Japan;
(ii) which are incorporated in Systems assembled outside Japan and
which Systems are then imported into Japan; and
(iii) in Japan for repair of Systems assembled outside Japan and
previously imported into Japan.
The contingent license granted under paragraph 2.2 shall not include any
rights to use the License Technology outside Territory 2 for any purpose
and such license shall not include any right to export from Territory 2
except for:
(a) a non-exclusive right to supply components which are
incorporated in Systems assembled inside Territory 2 and which Systems are
then exported from Territory 2.
(b) a non-exclusive right to export from Territory 2 components
and Subsystems manufactured in Territory 2 for repair of Systems assembled
inside Territory 2 and previously exported from Territory 2.
Licensee shall inform its customers of the territorial limits on its license
of the Licensed Technology and shall not sell Products to customers which it
knows, or reasonably anticipates may, export those Products from Territory
1 or Territory 2 in any manner exceeding the scope of the rights granted to
Licensee.
2.6 Sublicense Rights. There shall be no right to sublicense the
Licensed Technology except only contingent upon the happening of any event
described in subparagraph 5.2 (i) or (iv) of the K.K. License that the
Licensee shall be permitted to grant:
(i) one non-exclusive sublicense to use the Licensed Technology
only for the purposes of research and development of Products in the form
of Exhibit D to the Joint Venture Agreement and,
(ii) one non-exclusive sublicense to use the Licensed Technology
only for the purposes of research and development of Products in the form
of Exhibit E to the Joint Venture Agreement,
each to the entities identified therein.
2.7 Reservation of Rights. No rights are granted under the
Licensed Technology except as expressly set forth in this Section 2 and all
rights not expressly granted are reserved.
2.8 Provision of Technology. Subject to applicable Government
Regulations, including obtaining any necessary licenses prior to
disclosure, LTC or Lanxide shall, in the English language and U.S. units of
measurement to Licensee at Licensee's request, make available to Licensee
from time-to-time on an as-needed basis and free of cost to Licensee, up to
a maximum of 200 hours of technical support to transfer technical
information, formulae, data, analyses, know-how, and information with
respect to the Licensed Technology to the extent reasonably necessary for
the Licensee to use the Licensed Technology for the purposes set out in
this Agreement. Additional technical support shall be made available by LTC
or Lanxide to Licensee at a cost to Licensee equal to LTC's or Lanxide's
fully burdened cost according to Generally Accepted Accounting Principles
(GAAP) and on a basis of availability no less favorable to the Licensee
than that afforded to any other licensee of the Licensed Technology.
2.9 Protection of Technology. Licensee shall not use and shall not
permit its authorized sublicensees to use the Licensed Technology for any
purpose other than to manufacture, use and sell Products, as provided in
this Agreement. Licensee shall take no action in respect of the Licensed
Technology which is inconsistent with the terms of the licenses granted
under this Agreement.
2.10 Acknowledgment of Rights; Patent Marking. Licensee
acknowledges that Licensee's right to use the Licensed Technology arises
only out of the licenses granted under this Agreement. All Products
manufactured under issued patents of LTC shall bear a patent notice as may
be necessary or desirable under the Laws of the applicable Government
Entities.
2.11 Raw Materials. In connection with the licenses hereunder
Lanxide agrees to sell and/or cause one or more of its Affiliates to sell
to Licensee Licensee's requirements for Raw Materials in quantities and on
delivery schedules reasonably needed by Licensee in connection with the
manufacture of Products in accordance with the terms of this Agreement.
This license does not grant Licensee any right to use the Licensed
Technology for the purpose of manufacturing Raw Materials except that
Licensee may produce Raw Materials for its own use in manufacturing
Products in accordance with the terms of this License Agreement, but only
to the extent of any inability on the part of Lanxide and/or its Affiliates
to supply such Raw Materials in accordance with Licensee's reasonable
quantity and delivery schedule requirements.
III. TRADEMARK AND TRADENAME LICENSE
3.1 Tradename License. Subject to Government Regulations and the
provisions of this Agreement, Lanxide hereby grants to Licensee a
non-exclusive license to use the tradename "LANXIDE" except for its use as
the name or part of the name of a business entity. Lanxide and Licensee
will cooperate in registering such tradename in Territory 1, and contingent
upon the happening of any event described in subparagraph 5.2 (i) or (iv)
of the K.K. License, Territory 2, as may be necessary or desirable under
the laws of Territory 1 and Territory 2, at the expense of Licensee.
3.2 Trademark License. Subject to Government Regulations and the
provisions of this Agreement, Lanxide hereby grants to Licensee a
non-exclusive license to use the Trademarks in connection with the
marketing and sale of Products.
3.3 Sublicensing Rights. The license granted under paragraph 3.1
shall not include the right to grant sublicenses without the prior written
consent of Lanxide.
3.4 Registration. Registration of the Trademarks shall only be
made in the name of Lanxide or its designee. Licensee shall provide such
assistance as Lanxide or its designee may require in relation to such
registration at Licensee's expense, including the execution of all
documents necessary or desirable for obtaining such registration. In
addition, Licensee shall cooperate with Lanxide in seeking the registration
of this Agreement or of an executed registered user agreement as may be
necessary or desirable under the laws of Territory 1 or Territory 2 to
record the trademark license granted under this Agreement with Licensee to
bear any associated expenses.
3.5 Acknowledgement of Rights. As among the parties, Licensee
acknowledges that the Trademarks and the goodwill associated with the
Trademarks are the property of Lanxide and that except to the extent of the
license rights granted hereunder, Licensee shall not acquire any rights in
such Trademarks or in any registration of the Trademarks. Licensee
acknowledges that Licensee's right to use the Trademarks arises only out of
the licenses granted under this Agreement. Licensee shall neither challenge
nor dispute the rights of Lanxide with respect to use or ownership of the
Trademarks. Where Licensee uses the Trademarks, it shall include a notice
stating that such Trademarks are the property of Lanxide. However, Lanxide
makes no warranty that the Trademarks will be successfully registered in
any countries.
3.6 Use of Trademarks; Quality Control. Licensee shall only use
the Trademarks in connection with Products manufactured using the Licensed
Technology or as otherwise agreed to in writing by LTC or Lanxide from time
to time. The standards of manufacture of such Products shall be at least
equal to the standards of quality required by LTC and Lanxide in relation
to their other manufacturing or licensing activities. Licensee shall follow
all reasonable instructions in relation to the quality of manufacture of
Products communicated to it by any representative of LTC or Lanxide. In no
event shall Licensee manufacture any Products which are not in accordance
with applicable Government Regulations relating to safety and product
quality.
3.7 Indemnity and Insurance. Licensee shall indemnify and hold
harmless LTC, Lanxide, their Affiliates and their respective directors,
officers and employees from and against any losses, claims and damages
including reasonable attorney's fees arising out of the manufacture, use or
sale of Products by Licensee; provided such losses, claims and damages are
not directly attributable to instructions, actions or omissions by LTC,
Lanxide, their Affiliates or their respective directors, officers or
employees. From the commencement of the manufacture of Products by the
Licensee and until the last applicable statute of limitations expires,
Licensee will procure and maintain, at its own cost and expense, product
liability insurance written on an occurrence basis from an insurance
company rated A or above by A. M. Bests' providing protection against
liability for any alleged damage or injury arising out of any alleged
defect in material or workmanship in such Products in the primary amount of
1 million U.S. dollars with respect to any one accident or occurrence, and
1 million U.S. dollars in the aggregate. Licensee shall also procure and
maintain, at its own expense, excess liability insurance in the amount of
10 million U.S. dollars in the aggregate. The insurance policy shall name
LTC as an additional insured and shall be endorsed to provide for written
notification to LTC by insurer not less than 30 days prior to cancellation.
Licensee shall provide LTC with a certificate of insurance evidencing such
coverage within 15 business days after the manufacture of Products by the
Licensee and annually thereafter.
3.8 Inspection and Approval Rights. All uses of the Trademarks on
or in connection with the sale or marketing of Products shall be subject to
the prior approval of Lanxide. Licensee shall provide to Lanxide upon
request samples of Products manufactured by Licensee and its sublicensees
as well as advertising and other publicity materials bearing the Trademarks
proposed to be used by its authorized sublicensees, together with an
English language translation if necessary. Licensee shall allow and cause
its sublicensees to permit Lanxide or its representatives at all reasonable
times to inspect any facility where Products which will be sold under the
Trademarks are manufactured.
3.9 Reservation of Rights. No rights are granted under the
Trademarks except as expressly set forth in this Section 3. Without
limitation, Licensee acknowledges the rights of Lanxide and its Affiliates
to use the Trademarks themselves or through direct or indirect licensees as
all or part of a tradename, and in relation to any products or services
other than Products, and in relation to Products imported pursuant to
paragraph 2.3 or 2.4. Lanxide expressly reserves the right to assign its
entire right, title, and interest in and to the Trademarks to LTC, in which
event LTC shall assume Lanxide's rights and obligations under this
Agreement.
IV. FEE AND ROYALTY
4.1 Fee Payment and Amount. Licensee shall pay to Lanxide a license
fee in accordance with the following schedule:
Date Amount
Not later than September 30, 1998 $4,000,000
LTC and Lanxide respectively agree that this amount represents the initial
fee for the grant of rights to use the Licensed Technology and the Trademarks
pursuant to Sections 2 and 3 above.
4.2 Royalty Payment and Amount. Licensee shall pay to LTC a
royalty equal to [CONFIDENTIAL TREATMENT REQUESTED BY LANXIDE CORPORATION]
the Net Sales Price of all Products sold by Licensee or any subsequently
authorized sublicensees, which are manufactured using the Licensed
Technology in Territory 1, and in the event of the happening of any event
described in subparagraph 5.2 (i) or (iv) of the K.K. License, also in
Territory 2. Licensee shall pay such royalty to LTC so long as Licensee or
any subsequently authorized sublicensees shall use the Licensed Technology.
In the event that Licensee shall cease to pay royalties as and when required
hereunder, then LTC shall have the right to terminate this Agreement upon
ninety (90) days prior written notice to Licensee.
4.3 Net Sales Price. The "Net Sales Price" referred to in
paragraph 4.2 shall mean the invoiced price for a Product less insurance,
transport, bona fide rebates and allowances to the extent identified on the
invoice, and less returns, and less the purchase price of Raw Materials
purchased by Licensee from Lanxide or its Affiliates. The "Net Sales Price"
applicable to transfers to entities affiliated with Licensee will be the
price at which such Products would be sold at the time in question on an
arms-length basis to a third party. Where Products are sold as part of a
Subsystem and not separately, the Net Sales Price will be that percentage
of the Net Sales Price of the Subsystem equal to the cost of manufacture of
the Products divided by the cost of manufacture of the total Subsystem.
4.4 Third Party Royalties. In any case where use of Licensed
Technology requires or required LTC to pay a royalty to a third party
(whether lump-sum or payable by reference to sales) under the terms of any
of the license agreements listed on Schedule 4.4 hereto or any future third
party license that LTC may enter into, then in the event that Licensee
determines to use such Technology, Licensee will in addition to the royalty
specified in paragraph 4.1 be responsible for payment to LTC of a further
amount equal to the royalty payable to the third party attributable to
sales by Licensee and its authorized sublicensees. In case LTC needs to
obtain a third party Technology which LTC is aware may be useful to
Licensee and therefore may require Licensee to be responsible for
additional royalty, Lanxide shall let Licensee know the need, with prior
written form, and consult with Licensee as to whether such additional
Technology is truly necessary. If Licensee decides such Technology is
unnecessary, Licensee shall have the right not to use such third party
Technology and therefore not be required to pay any third party royalty
associated therewith. Even though Licensee decides such Technology is
unnecessary, subject to the terms of this Agreement, Licensee can use
Licensed Technology not requiring such third party royalty, including the
right to purchase Raw Materials. The parties hereto agree, however, that
Licensee shall be under no obligation to use any Technology requiring
payment of royalty to any third party, and the decision to use such
Technology shall be solely at Licensee's discretion.
4.5 Tax Withholding. Licensee may withhold taxes from royalties
payable hereunder only to the extent that such withholding is required
under applicable law and to the extent that Licensee provides copies of all
documents required by LTC hereunder to claim credit for such foreign tax
payment.
4.6 Payment and Accounting. Royalties due under this Agreement
shall be paid in U.S. dollars to the bank account specified by LTC within
45 days after each of December 31, March 31, June 30 and September 30, in
relation to the period of three (3) calendar months (or less in the case of
the first or final such period) ending on such date. At the same time as
payment of royalties is made, Licensee shall provide to LTC a statement
setting out the sales of Products manufactured using the Licensed
Technology made during the period to which such royalties relate, the type
and description of Products in question, the applicable Net Sales Price,
the amount of royalties payable and the amount of any tax withheld. Overdue
payments shall bear interest at the annual rate of two percent (2%) above
the prime rate of Citibank, in New York.
4.7 Books and Records. Licensee shall keep proper books and
records showing the description and price of Products sold, and such
records shall be open at all reasonable times to inspection by Lanxide or
its representatives, who shall be entitled to take copies of such books and
records.
4.8 Currency Conversion. For the purpose of converting into U.S.
dollars the currency in which royalties may arise, the rate of exchange to
be applied shall be the rate of exchange for the purchase of U.S. dollars
with the currency quoted by Citibank, in New York as at the close of
business on the last business day of the quarterly period to which a
payment shall relate.
V. TERM AND TERMINATION
5.1 Effective Date. This Agreement shall come into effect upon the
Effective Date set forth in the first page hereof. This Agreement shall
thereafter be perpetual and non-cancellable, subject to earlier termination
as provided herein.
5.2 Events of Termination. This Agreement may be terminated upon
the happening of any of the following events:
(i) (a) Upon written notice from LTC or Lanxide, in the event that
Licensee is in material breach or any of its obligations under this
Agreement, and Licensee fails to remedy that breach within 60 days after
receipt of written notice requiring Licensee to remedy that breach;
(b) Upon written notice from LTC or Lanxide, in the event that
Licensee's shareholders are in material breach of any of their obligations
under either the Joint Development Agreement among Akebono Brake Industry
Co., Ltd., Nihon Cement Co., Ltd., and Lanxide, or the Joint Venture
Agreement among Akebono Brake Industry Co., Ltd., Nihon Cement Co., Ltd.,
Lanxide K. K., Kanematsu Corporation and Lanxide, dated October 25, 1996,
and such Licensee's shareholder in breach and/or other Licensee's
shareholders fail to remedy that breach within 60 days after receipt by all
Licensee's shareholders of written notice from a party to the respective
agreement requiring remedy of that breach;
(ii) Upon written notice from LTC or Lanxide, in the event that
Licensee ceases to carry on business, becomes or is declared insolvent,
files or has filed against it a petition in bankruptcy, has a receiver
appointed over its assets, or takes or has taken against it any similar act
as a result of debt;
(iii) Upon 180 days prior written notice by LTC, in the event that
any Government Entity or court requires substantial modifications to the
provisions of this Agreement;
(iv) Upon written notice by Licensee to LTC; or
(v) As provided elsewhere in this Agreement;
5.3 Effects of Termination. On termination of this Agreement, the
following provisions shall have effect;
(i) All licenses and rights granted to Licensee by LTC or Lanxide
shall forthwith cease and Licensee shall cooperate in cancelling any
registration of such licenses.
(ii) Licensee shall, except as otherwise agreed with LTC or
Lanxide, as applicable, forthwith cease all use of the Licensed Technology
and the Trademarks.
(iii) Termination of this Agreement shall not affect the continued
enforceability of paragraph 3.7 and Section 8 and 9 and the continued
existence of the license from Licensee to Licensor under paragraph 7.1
hereunder of improvements and inventions made up to the date of
termination.
(iv) Licensee shall promptly deliver all Proprietary Information
in all forms to LTC or to its authorized representatives.
Notwithstanding the provisions of subparagraphs 5.3 (i) and (ii), Licensee
shall have the right to sell in the Territory all Products it has manu-
factured prior to termination of this Agreement, subject to the payment of
all royalties due hereunder.
VI. GOVERNMENT REGULATIONS, ETC.
6.1 Compliance with Government Regulations. The grant of licenses
and the transfer of Licensed Technology under this Agreement shall be
conditional on all necessary governmental consents and licenses being
obtained and maintained. LTC and Licensee shall use reasonable efforts to
obtain all such consents and licenses. Licensee shall comply with all
Government Regulations governing export of goods and information from
Territory 1 and Territory 2 and between the various countries of Territory
1 and Territory 2, including without limitation the Export Administration
Regulations of the United States (15 C.F.R. 730 et seq.) as such may be
amended from time to time, and the terms of any licenses or consents
obtained.
VII. PATENTS AND IMPROVEMENTS
7.1 Rights in Inventions. During the term of this Agreement,
Licensee shall promptly disclose to LTC any inventions or improvements
which relate solely to composition and processing of Ceramic-Reinforced
Aluminum as material for Products (specifically excluding any inventions or
improvements which relate to the design and/or performance of Products
themselves as brake parts or components) that are made by Licensee's
employees or by the employees of any authorized sublicensees without the
participation of any of the employees of LTC or its Affiliates and Licensee
shall obtain the right to grant, and grant, to LTC a full worldwide,
royalty-free, perpetual, irrevocable, non-exclusive license to make, use
and sell such improvements or inventions in any manner not prevented by the
terms of the license to Licensee under this agreement, with full right by
LTC to grant sublicenses of such improvements or inventions which
themselves include the right to sublicense.
The provisions of this paragraph 7.1 shall not affect the ownership of
inventions or improvements made by employees of LTC or its Affiliates (with
or without the participation of the employees of the Licensee or its
authorized sublicencees) which inventions and improvements shall be the
property of LTC or its Affiliates, but subject to the license granted under
this Agreement.
7.2 Prosecution and Registration. Licensee shall not seek any
patent or other intellectual property registration in relation to the
Licensed Technology in its own name, other than improvements and inventions
relating to the Licensed Technology made by Licensee's employees with or
without the participation of employees of authorized sublicensees or
contract manufacturers. Licensee will cooperate with LTC as reasonably
requested by LTC in relation to obtaining and prosecuting patents in the
name of LTC. In addition LTC and Licensee shall cooperate in seeking the
registration of this Agreement or of an executed registered user agreement
as may be necessary or desirable under the laws of any country to record
the patent license granted under this Agreement at the reasonable expense
of Licensee.
7.3 Actions and Claims Against Third Parties. If, during the term
of this Agreement, Licensee learns of any infringement, unfair competition
or misappropriation ("Infringement") by a third party of any Licensed
Technology licensed exclusively to Licensee, Licensee shall promptly and
fully notify LTC in writing.
7.4 Infringement Claims by Third Parties. If, during the term of
this Agreement, any claim or action is threatened or commenced by a third
party alleging Infringement of third party rights by practice of Licensed
Technology by Licensee, Licensee shall promptly and fully notify LTC in
writing.
7.5 Procedure. LTC shall have the right, but not the obligation,
to take all reasonable steps to prosecute or defend any such claim or
action relating to the matter set forth in paragraphs 7.3 or 7.4, and may
institute, defend, or settle claims, actions or proceedings at its expense.
Licensee, at LTC's request shall render all reasonable assistance and
cooperation at LTC's expense. If LTC refuses or fails to take or defend
such actions within six (6) months after receipt of the notice described
above (or such shorter period as shall be reasonable in the circumstances),
then Licensee shall have the right (but not the obligation), after first
notifying LTC in writing, to institute, defend or settle such actions or
claims or proceedings, which shall be at Licensee's expense. In such case
LTC, at Licensee's request, shall render all reasonable assistance and
cooperation at Licensee's expense, and LTC shall have the right to
participate in such proceedings through LTC's own counsel. In no event
shall LTC bear any expense of any claims, actions, or proceedings not
instituted or defended by LTC unless their written consent is obtained
prior to the institution or defense of such claims, actions, or
proceedings. In addition, LTC will have the right to instruct Licensee to
modify or terminate any practices which have given rise to a claim of
Infringement of third party rights.
VIII. CONFIDENTIALITY, RESTRICTED DISCLOSURE AND LIMITED USE
COMMITMENTS.
8.1 Confidentiality Undertaking. The parties hereto shall (i)
treat as confidential all Proprietary Information (as hereinafter defined)
which is obtained by a receiving party directly or indirectly from a
disclosing party in connection with this Agreement, and (ii) not disclose
the same to any third party nor use the same, except as provided herein.
The provisions of this Section shall apply, without limitation, to all
information learned by the parties in the course of implementing this
Agreement concerning the business, assets, customers, processes or methods
of Lanxide, LTC, or Licensee, or their Affiliates. The provisions of
Section 8 shall remain in effect during the term of this Agreement and for
a period of five (5) years after termination or expiration of the
Agreement.
8.2 Proprietary Information. As used herein, "Proprietary
Information" means any information of Lanxide, LTC, Licensee, or their
Affiliates that might reasonably be considered proprietary, sensitive or
private, including but not limited to the following:
(i) Technical information, know-how, data, techniques,
discoveries, inventions, ideas, unpublished patent applications,
proprietary information, formulae, analyses, laboratory reports, other
reports, financial information, studies, findings, or other information
relating to Lanxide, LTC, Licensee, or their Affiliates, or the Licensed
Technology or methods or techniques used by Lanxide, LTC, Licensee, or
their Affiliates, whether or not contained in samples, documents, sketches,
photographs, drawings, lists, and the like;
(ii) Data and other information employed in connection with the
marketing of the products of Lanxide, LTC, Licensee, or their Affiliates
including cost information, business policies and procedures, revenues and
markets, distributors and customers, and similar items of information
whether or not contained in documents or other tangible materials; and
(iii) Any other information obtained by the parties to this
Agreement during the term hereof, that is not generally known to, and not
readily ascertainable by proper means by, third parties.
8.3 Precautions. The parties hereto shall take all appropriate
steps to prevent unauthorized disclosure of any Proprietary Information by
their employees, which steps include the execution by all such persons of
written agreements containing obligations of confidentiality, restricted
disclosure and limited use relative thereto consistent with this Section 8
prior to disclosure of Proprietary Information to them. The parties shall
not permit access to Proprietary Information by their employees, except on
a need-to-know basis. The parties shall further take all appropriate steps
to protect the Proprietary Information against espionage, misuse, loss or
theft.
8.4 Exclusions. The provisions of Section 8 shall not apply to any
Proprietary Information that (i) has become generally available to the
public through no fault of the receiving party or its employees, (ii) the
receiving party can prove by clear and convincing documentary evidence was
in its possession before disclosure hereunder and did not come directly or
indirectly from the disclosing party, (iii) becomes known to the receiving
party through lawful disclosure from a third party that is not subject to a
confidentiality agreement with any disclosing party or Affiliate, or (iv)
the receiving party can prove by clear and convincing documentary evidence
has been or is developed by the receiving party independent of any such
Proprietary Information disclosed by the disclosing party.
8.5 Permitted Disclosure. Proprietary Information may not be
disclosed by the receiving party without the prior written consent of the
disclosing party, except that:
(i) Lanxide may disclose Licensee's Proprietary Information to the
extent of the inventions and improvements described in paragraph 7.1
hereunder to its Affiliates or its other licensees or sublicensees of the
Licensed Technology, provided that prior to disclosure of the Proprietary
Information, such Persons execute written agreements containing obligations
of confidentiality consistent with this Section 8.
(ii) In the event that a third party wishes to evaluate Licensee's
proprietary technology to the extent of the inventions and improvements
described in paragraph 7.1 hereunder in connection with a business
transaction with Lanxide or its Affiliates, Lanxide may disclose as much of
Licensee's Proprietary Information to that third party as is necessary to
conduct such evaluation, provided that prior to disclosure such third party
executes a written agreement prohibiting use of the Proprietary Information
for any reason other than evaluation of this technology and containing
obligations of confidentiality consistent with this Section 8.
8.6 Government Regulations. The provisions of this Section 8 shall
not be deemed to obligate either party to do or refrain from doing any act,
the doing or not doing of which would cause or reasonably be expected to
cause either party to fail to fulfill or comply with any obligation or
requirement imposed by any Government Regulation, provided that, any
disclosures of Proprietary Information made to fulfill or comply with any
such Government Regulation shall be made (i) only after notice to the other
party, and (ii) under conditions invoking all confidentiality protections
as are available by law or regulation.
IX. MISCELLANEOUS
9.1 Warranties. LTC and Lanxide make no warranty or representation
with respect to the Trademarks the Licensed Technology or other assistance
furnished under this Agreement, or with respect to the Trademarks, nor are
LTC or Lanxide in any way responsible for the accuracy, utility or
completeness of any Licensed Technology or other assistance furnished under
this Agreement. LTC AND LANXIDE HEREBY EXPRESSLY DISCLAIM ANY AND ALL
WARRANTIES AND REPRESENTATIONS, EXPRESS OR IMPLIED, ARISING BY LAW OR
CUSTOM, WITH RESPECT TO THE TRADEMARKS OR THE LICENSED TECHNOLOGY,
INCLUDING, WITHOUT LIMITATION, WARRANTIES OF NON-INFRINGEMENT,
MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE. LTC AND LANXIDE DO
NOT IN ANY WAY PROMISE THAT THE LICENSED TECHNOLOGY WILL PRODUCE ANY
PARTICULAR RESULTS, PRODUCTS OR PROFITABILITY.
9.2 Force Majeure. No party shall be liable for failure to perform
its obligations hereunder for so long as that failure may be the result of
any event beyond its reasonable control (a "force majeure" event), provided
that such party uses all reasonable efforts to comply with the terms of
this Agreement to the extent that it is able to do so. However, if such
failure due to force majeure by any party to perform any part of this
Agreement should continue for six (6) months, any other party shall have
the right to terminate this Agreement.
9.3 Waivers. The failure at any time of any party to require
performance by the other party of any obligation required by this Agreement
shall in no way affect such party's right to require such performance at
any time thereafter, nor shall the waiver by any party of a breach of any
provision of this Agreement by any other party constitute a waiver of any
other breach of the same or any other provision or constitute a waiver of
the obligation itself.
9.4 Amendment. This Agreement may be amended only by an instrument
in writing duly executed by duly authorized representative of the parties
hereto.
9.5 Assignability. This Agreement shall be binding upon and inure
to the benefit of the permitted successors and assigns of each party
hereto. Neither this Agreement nor any right or obligation hereunder may be
assigned or delegated in whole or in part by any party without the prior
written consent of the other parties, except that LTC shall have the right
to transfer its rights and obligations to an Affiliate. Any permitted
assignment shall not relieve Licensee from any obligations hereunder
incurred prior to such assignment.
9.6 Notices. In any case where any notice or other communication
is required or permitted to be given hereunder (including, without
limitation, any change in the information set forth in this paragraph 9.6)
such notice or communication (i) shall be in writing and in the English
language, (ii) shall be sent to the parties set out below, and (iii) shall
be (A) personally delivered, (B) sent by postage prepaid registered
airmail, (C) transmitted by telecopy receipt of which is confirmed, (D)
sent by courier service requiring signature on receipt, as follows: If to
LTC, to:
Lanxide Technology Company, L.P.
c/o Lanxide Corporation, General Partner
0000 Xxxxxxx Xxxx
X.X. Xxx 0000
Xxxxxx, XX 00000-0000
FAX: (000)-000-0000
Attention: President
If to Lanxide, to:
Lanxide Corporation
0000 Xxxxxxx Xxxx
X.X. Xxx 0000
Xxxxxx, Xxxxxxxx 00000-0000
FAX: (000) 000-0000
Attention: President
If to Licensee, to:
AKN Corporation
0-0-00, Xxxxx-xxxx
Xxxxxx-xx, Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: President
All such notices or other communications shall be deemed to have been given
or received (i) upon receipt if personally delivered, or if by courier,
(ii) on the tenth business day following posting if by postage prepaid
registered airmail, or (iii) when sent with confirmed answer back if sent
by telecopy.
9.7 Choice of Law. This Agreement shall be construed and enforced
in accordance with and governed by the laws of the State of Delaware,
United States of America.
9.8 Forum Jurisdiction, Venue and Service. The Licensee hereby
irrevocably and unconditionally:
(i) agrees that any action, suit or proceeding by any person
arising from or relating to this Agreement or any statement, course of
conduct, act, omission, or event occurring in connection herewith
(collectively, "Related Litigation") may be brought in any state or federal
court of competent jurisdiction sitting in the State of Delaware, submits
to the jurisdiction of such courts, and to the fullest extent permitted by
law agrees that it will not bring any Related Litigation in any other
forum;
(ii) waives any objection which it may have at any time to the
laying of venue of any Related Litigation brought in any such court, waives
any claim that any such Related Litigation has been brought in an
inconvenient forum, and waives any right to object, with respect to any
Related Litigation brought in any such court, that such court does not have
jurisdiction over the Licensee; and
(iii) consents and agrees to service of any summons, complaint or
other legal process in any Related Litigation by registered or certified
U.S. mail, postage prepaid, to the Licensee at the address for notices
described in paragraph 9.6 hereof, and consents and agrees that such
service shall constitute in every respect valid and effective service (but
nothing herein shall affect the validity or effectiveness of process served
in any other manner permitted by law).
9.9 Interpretation. The headings of the sections and paragraphs in
this Agreement are provided for convenience of reference only and shall not
be deemed to constitute a part hereof. The Agreement is executed in the
English language.
9.10 Entire Agreement. This Agreement constitutes the entire
agreement of the parties hereto with respect to the subject matter of this
Agreement and supersedes all prior agreements (including without limitation
the license agreement entered into among the parties hereto as of ,
1996) and understandings, oral and written, if any, among the parties hereto
with respect to the subject matter of this Agreement.
9.11 Severability. Should any provision of this Agreement be
deemed in contradiction with the laws of any jurisdiction in which it is to
be performed or unenforceable for any reason, such provision shall be
deemed null and void, but, except as provided in paragraph 5.2, this
Agreement shall remain in force in all other respects.
9.12 Counterparts. This Agreement may be executed in several
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
duly executed and delivered as of the day and year first above written.
LANXIDE TECHNOLOGY COMPANY, L.P. AKN CORPORATION
By: LANXIDE CORPORATION By:
General Partner
By: NAME:
NAME: TITLE:
TITLE:
LANXIDE CORPORATION
BY:
NAME:
TITLE:
SCHEDULE 1.6
Technology which is, or may in the future be
(i) provided to Lanxide or its Affiliates under Non Disclosure
Agreements and is identified as the proprietary information of the
disclosing party.
(ii) designated as classified by a government agency.
(iii) controlled by the export regulations of the United States.
(iv) provided under license to Lanxide or its Affiliates with
limits on its use or transfer.
SCHEDULE 4.4
None
SCHEDULE A
PRODUCTS
"Products" shall mean
Brake rotors, brake drums, brake shoes, brake pistons, brake
caliper bodies, brake pad backing plates, brake caliper anchors, and
steering knuckles, drum brake back plates, brake torque anchor support
plates, disc brake back plates, wheel hubs, brake dust xxxxxxx, brake
modulator housings, brake pressure control valve housings, wheel brake
cylinder housings, and brake master cylinder housings, all made only
from Ceramic-Reinforced Aluminum for use only on passenger cars,
trucks, buses, trailers, motorcycles, railroad locomotives, railroad
rolling stock and industrial equipment.
All of the above definitions shall exclude the following:
1. Sporting Goods
2. Filters for use in materials processing plants which come in
direct contact with some portion of materials flow through the process
plant.
3. Aerospace components including but not limited to leading
edges, nosecones, radomes, control surfaces, struts, stiffeners, skins and
air frames for spacecraft, aircraft, and missiles.
4. Heat exchangers including but not limited to recuperators,
boilers, waste heat recovery, superheaters, pyrolysis units, reformers, air
preheaters and chemical processes, including radiant burner tubes and parts
thereof.
5. Gas turbine engine parts including but not limited to land, sea
and air, moving and stationary gas turbine engines, and aircraft scramjet
and ramjet engines and components thereof.
6. Electrical/electronic substrates, heat sinks or packages,
including but not limited to components thereof for active or passive
electronic devices, and assemblies thereof.
7. Electronic devices whose primary function is to serve as a
capacitor, resistor, inductor, or part thereof, or arrays of same, not
including superconductive inductors.
8. Electro-optic and photovoltaic devices whose primary function
is to transform electrical signals to optical signals.
9. RFI shielding, electrical ground planes, antennae, and
components thereof.
10. Electrical wire and cable, and components thereof.
11. Generators, alternators, or parts thereof not including prime
movers, brakes, clutches or other assemblies associated therewith.
12. Electric motors, or parts thereof.
13. Electrical transformers, electromagnets, electric relays, and
components thereof.
14. Superconducting inductors.
15. Connectors for electronic devices.
16. Electro-optic and photovoltaic devices whose primary function
is to transform optical signals to electrical signals.
17. Electronic devices whose primary function is to serve as a
vacuum tube, a discharge tube, a magnetron, a wave guide, emitter,
receiver, or part thereof.
18. Solid state electronic transducer, transistor, diode, or
integrated circuit wafers, chips or elements.
19. Electric incandescent, fluorescent or discharge lamps, and
components thereof.
20. Electrical switches, switchgear, and components thereof.
21. Electric fuel cells, thermoelectric devices and electric
batteries, or components thereof.
22. Electrodes and electrical terminations, interconnects,
splices, plugs, sockets, and components thereof.
23. Electrical fuses and fusible links, and components thereof.
24. Human or other animal prostheses, including, but not limited
to, bone, tooth or organ replacement or supplement.
25. Components, combinations thereof for incorporation into
systems, and systems comprising such components, designed specifically to
provide ballistic protection for ground vehicles, artillery, amphibious
vehicles, aircraft, spacecraft, space installations, missiles, marine
craft, marine installations, and personnel.
26. Components and parts, including but not limited to complete
assemblies, that are, or become a direct part of, solid, liquid or gas
fueled rocket engines for all military and civilian uses including but not
limited to tactical and strategic missile engines and space launch and
orbital insertion rocket engines.
27. Products to inhibit corundum formation in aluminum melting
furnaces
28. Abrasive grain for supplying the coated abrasives, bonded
abrasives and loose abrasives markets.
29. Grinding wheels.
30. Gun systems, including but not limited to both conventional
smokeless propellant driven systems and electromagnetic-driven railgun
systems, and/or components therefor.
31. Electric resistance-heated igniters for use as fuel ignition
devices in all applications except internal combustion, gas turbine and
rocket engine use, including but not limited to components for these
applications, such as electrically operated resistance heating elements
supports and interconnections for such elements and resistance-heated
igniter assemblies.
32. Ceramic and ceramic matrix composite powders, microspheres,
tubules and platelets for use as ceramic raw materials or as raw materials
for ceramic matrix, metal matrix or polymer matrix composites.
33. Fuel injectors and fuel injector components for use in
internal combustion engines.
34. Cutting tools and components for cutting tools including but
not limited to broaches, twist drills, gun drills and reamers,
countersinks, combination drills and countersinks, counterbores, reamers,
hobs, gear shapers, milling cutters, single and double point tools,
circular form tools, threading tools, blanks tips and inserts.
35. Track and undercarriage components, track systems and ground
contact hull structures including but not limited to those for use on
bulldozer, scraper, earthmover, backhoe, skidder, armored vehicle,
dragline, conveyor, or mining equipment.
36. Aircraft and marine propellers, rotors and other propulsive
devices and shaft seals and components therefor.
37. Inspection tools, including but not limited to gages gage
blocks, go no-go gages, xxx blocks, inspection systems, coordinate
measuring equipment.
38. Sensors, sheathing for sensors, and components thereof.
39. All military component applications.
40. Building product components.
41. Furnace components and hardware including heating elements,
kiln rollers, kiln furniture, xxxxx and crucibles.
42. Housewares and components thereof.
43. All engine and power transmission components.
44. Security devices including safes, locks, vaults, and
components thereof.
45. Welding electrodes.
46. Paints and Adhesives
SCHEDULE B
TERRITORY 1
The following countries and administrative divisions to the extent
of their territorial boundaries as of the Effective Date:
Australia
Brunei
Burma
Cambodia
China
Indonesia
Laos
Malaysia
Mongolia
New Zealand
North Korea
Papua New Guinea
Philippines
Singapore
South Korea
Taiwan
Thailand
Vietnam
EXHIBIT D
SUBLICENSE AGREEMENT
This License Agreement ("Agreement"), dated as of October 25,
1996 (the "Effective Date"), is made between
1. AKN Corporation of 0-0-00, Xxxxx-xxxx, Xxxxxx-xx, Xxxxx 000,
Xxxxx ("Commercial JV") and
2. Akebono Brake Industry Co., Ltd. of 00-0, Xxxxxxxxxx Xxxxxxxx,
Xxxx-xx, Xxxxx 000, Xxxxx ("Licensee").
WHEREAS, Commercial JV is a corporation organized under the laws
of Japan pursuant to a Joint Venture Agreement among Licensee, Nihon Cement
Company Ltd., and Kanematsu Corporation; and
WHEREAS, Commercial JV has been granted certain rights to certain
technology and trademarks by Lanxide Kabushiki Kaisha ("Lanxide K.K."),
Lanxide (as defined in Section 1.4) and LTC (as defined in Section 1.6),
under license agreements dated as of October 25, 1996 (the "Commercial JV
License") with the right to sublicense; and
WHEREAS, Commercial JV wishes to grant Licensee a license to
research and develop Products for the manufacture use and sale by
Commercial JV and Licensee will accept the license on the terms specified
herein.
NOW, THEREFORE, in consideration of the premises and mutual
covenants contained herein, and for other good and valuable consideration,
the receipt and sufficiency of which is hereby acknowledged, the parties
hereto agree as follows:
I. DEFINITIONS
Terms used with initial capital letters in this Agreement shall
have the meaning set forth below.
1.1 "Affiliate(s)" of a Person means a Person that directly or
indirectly through one or more intermediaries controls, is controlled by,
or is under common control with, such Person.
1.2 "Ceramic-Reinforced Aluminum" shall mean materials comprised
of a discontinuous ceramic reinforcing phase and a continuous aluminum
metal matrix phase.
1.3 "Government Regulations" shall mean any and all terms,
conditions and provisions of (a) any law, regulation, order, statute,
decree, rule, writ, injunction, determination or award of any court,
governmental department, board, agency, or instrumentality, whether foreign
or domestic, and (b) any contract for research, development and/or
manufacturing between Lanxide and any department or agency of the United
States government but only to the extent such contracts reflect provisions
required by (a) above to be included therein.
1.4 "Lanxide" shall mean Lanxide Corporation, a corporation
organized under the laws of Delaware, and located at 0000 Xxxxxxx Xxxx,
X.X. Xxx 0000, Xxxxxx, Xxxxxxxx 00000-0000, U. S. A.
1.5 "Licensed Technology" shall mean Technology now or hereafter
owned by Lanxide or LTC which is relevant to Products and to which
Commercial JV is granted rights under the Commercial JV License without
restriction upon the grant of sublicenses or transfer of such Technology,
but excluding Technology, transfer or license of which, or an interest in
which, despite Lanxide's, LTC's, Lanxide K. K.'s and/or Commercial JVs best
efforts,would be expressly prohibited, either generally or specifically, by
Government Regulations or contracts with third parties which are further
described but not limited to those listed in Schedule 1.5 hereto.
1.6 "LTC" shall mean Lanxide Technology Company, L.P. a Delaware
limited partnership wholly owned and controlled by Lanxide.
1.7 "Person" shall mean any individual, corporation, partnership,
limited liability company, joint venture, association, joint stock company,
trust, unincorporated organization or government or any agency or political
subdivision thereof.
1.8 "Products" shall have the meaning set forth in Schedule A to
this Agreement.
1.9 "Raw Materials" shall mean ceramic powders, ceramic paper,
fibers, polymers and/or castable metal matrix composite ingot produced
using technology owned by or licensed to Lanxide or its Affiliates.
1.10 "Technology" shall mean technical information, know-how,
data, techniques whether patentable or not, patents, patent applications
and trade secrets.
1.11 "Territory" shall mean the geographic area of Japan.
1.12 "Trademarks" shall mean the trademark "Lanxide" together with
all other trademarks relating to the Products owned now or in the future in
the Territory by Lanxide.
II. GRANT OF TECHNOLOGY LICENSE
2.1 License of Licensee. Subject to Government Regulations and the
provisions of this Agreement, Commercial JV hereby grants to Licensee a
license to use, during the term of this Agreement, the Licensed Technology
for the purposes of engaging in the research and development in the
Territory of Products. This Agreement does not grant Licensee any right to
use the Licensed Technology for the purpose of manufacturing Products or
Raw Materials.
2.2 Non-Exclusive Rights. The license of Licensed Technology
granted under paragraph 2.1 shall be non-exclusive in the Territory and
subject to the use by other authorized users of the Licensed Technology for
research and development of Products.
2.3 No Rights Outside Territory. The license granted under
paragraph 2.1 shall not include any rights to use the Licensed Technology
outside the Territory for any purpose and such license shall not include
any right to export from the Territory.
2.4 Sublicense Rights. There shall be no right to sublicense the
Licensed Technology.
2.5 Reservation of Rights. No rights are granted under the
Licensed Technology except as expressly set forth in this Section 2 and all
rights not expressly granted are reserved. All rights granted are subject
to the terms of the Commercial JV License.
2.6 Provision of Technology. Subject to applicable Government
Regulations, including obtaining any necessary licenses prior to
disclosure, Commercial JV shall, (i) at Licensee's request, make available
to Licensee from time to time on an as-needed basis and free of cost to
Licensee, technical support to transfer technical information, formulae,
data, analyses, know-how, and information with respect to the Licensed
Technology to the extent reasonably necessary for Licensee to use the
Licensed Technology for the research and development of Products.
2.7 Protection of Technology. Licensee shall not use the Licensed
Technology for any purpose other than to research and develop Products, all
as provided for in this Agreement. Licensee shall take no action in respect
of the Licensed Technology which is inconsistent with the terms of the
license granted under this Agreement.
2.8 Acknowledgement of Rights. Licensee acknowledges that
Licensee's right to use the Licensed Technology arises only out of the
sublicense granted under this Agreement.
III. NO TRADEMARK LICENSE
3.1 Trademark License. No license to use the Trademarks is granted
in connection with this sublicense.
3.2 Reservation of Rights. Without limitation, Licensee
acknowledges the rights of Lanxide K.K., Lanxide and LTC to use the
Trademarks themselves in the Territory or through direct or indirect
licensees.
IV. FEE AND ROYALTY
4.1 Fee Payment and Amount. Licensee shall pay a sublicense fee in
Japanese Yen in an amount equal to $2,000,000 in U.S. dollars to the
Commercial JV, according to the following schedule, plus the amount of any
consumption tax in Japan:
Date Amount
June 30, 1997 $1,000,000
December 31, 1997 $1,000,000
4.2 Royalty Free License. The use of the Licensed Technology for
the research and development of Products in the Territory shall be royalty
free except as set forth elsewhere in this Section 4.
V. TERM AND TERMINATION
5.1 Effective Date. This Agreement shall come into effect upon the
later of (i) unconditional grant of all necessary United States and
Japanese government approvals required for its validity and for performance
of the obligations contained in this Agreement; or (ii) the Effective Date
first written above. This Agreement shall thereafter be perpetual, subject
to earlier termination as provided herein.
5.2 Events of Termination. This Agreement may be earlier
terminated upon the happening of any of the following events:
(i) Upon written notice by Commercial JV, in the event of
termination of the Commercial JV License;
(ii) Upon written notice by Licensee to Commercial JV in the event
that Commercial JV is in material breach of any of its obligations under
this Agreement as a result of action or inaction by some Person other than
Licensee or a Person controlled by Licensee, and Commercial JV fails to
remedy that breach within 45 days after receipt of written notice from
Licensee, requiring it to remedy that breach;
(iii) Upon written notice by Commercial JV to Licensee in the
event that the Licensee is in material breach of any of its obligations
under either this Agreement or the joint development agreement among
Licensee, Nihon Cement Company Ltd., and Lanxide dated as October 25, 1996,
as a result of action or inaction by some Person other than a Person
controlled by Commercial JV, and Licensee fails to remedy that breach
within 45 days after receipt of written notice from Commercial JV,
requiring it to remedy that breach;
(iv) Upon written notice by Licensee, in the event that Commercial
JV ceases to carry on business, becomes or is declared insolvent, files or
has filed against it a petition in bankruptcy, has a receiver appointed
over its assets, or takes or has taken against it any similar act as a
result of debt, as a result of action or inaction by some Person other than
Licensee or a Person controlled by Licensee;
(v) Upon written notice by Commercial JV, in the event that
Licensee ceases to carry on business, becomes or is declared insolvent,
files or has filed against it a petition in bankruptcy, has a receiver
appointed over its assets, or takes or has taken against it any similar act
as a result of debt, as a result of action or inaction by some Person other
than Commercial JV or a Person controlled by Commercial JV;
(vi) Upon one hundred and eighty (180) days' prior written notice
by either party, in the event that any governmental agency or court
requires substantial modifications to the provisions of this Agreement; or
(vii) Upon written notice by Licensee, in the event that Licensee
ceases to use the Licensed Technology.
5.3 Effects of Termination. On termination or expiration of this
Agreement, the following provisions shall have effect:
(i) All licenses granted to Licensee shall forthwith cease and
Licensee shall cooperate in cancelling any registration of such licenses.
(ii) Licensee shall forthwith cease all use of the Licensed
Technology.
(iii) Termination of this Agreement shall not affect the continued
enforceability of Section 8 and the continued existence of the license back
under paragraph 7.1 of improvements and inventions made up to the date of
termination.
(iv) All amounts owing for sublicense fees shall be immediately
due and payable.
(v) Licensee shall promptly deliver all Proprietary Information in
all forms to Commercial JV or to its authorized representatives.
5.4 Lanxide K. K. License. Upon the happening of any event
described in Subparagraph 5.2 (i) or (iv) hereto Lanxide K. K. shall enter
into a license agreement directly with Licensee substantially in the form
of this Agreement for any remaining term of this Agreement.
VI. GOVERNMENT REGULATIONS, ETC.
6.1 Compliance with Government Regulations. The grant of licenses
and the transfer of Licensed Technology under this Agreement shall be
conditional on all necessary governmental consents and licenses being
obtained and maintained. Commercial JV and Licensee shall use reasonable
efforts to obtain all such consents and licenses. Licensee shall comply
with all Government Regulations governing export of goods and information
from the United States and from the Territory, including without limitation
the Export Administration Regulations of the United States (15 C.F.R. 730,
et seq.) as such may be amended from time to time, and the terms of any
licenses or consents obtained.
VII. PATENTS AND IMPROVEMENTS
7.1 Rights in Inventions. During the term of this Agreement
Licensee shall promptly disclose to Commercial JV any inventions or
improvements which relate solely to composition and processing of
Ceramic-Reinforced Aluminum as material for Products (specifically
excluding any inventions or improvements which relate to the design and/or
performance of Products themselves as brake parts or components) that are
made by Licensee's employees without the participation of any of the
employees of Commercial JV, Lanxide K.K., Lanxide, LTC or their Affiliates
and Licensee shall obtain the right to grant, and grant, to Commercial JV a
full worldwide, royalty-free, perpetual, irrevocable, non-exclusive license
to make, use and sell such improvements or inventions in any manner not
prevented by the terms of the license to Licensee under this Agreement,
with full right by Commercial JV to grant sublicenses of such improvements
or inventions which themselves include the right to sublicense.
The provisions of this paragraph 7.1 shall not affect the ownership
of inventions or improvements made by employees of Commercial JV, Lanxide
K.K., Lanxide, LTC or their Affiliates (with or without the participation
of the employees of the Licensee) which inventions and improvements shall
be the property of Commercial JV, Lanxide K.K., Lanxide, LTC or their
Affiliates, but subject to the license granted under this Agreement.
7.2 Prosecution and Registration. Licensee shall not seek any
patent or other intellectual property registration in relation to the
Licensed Technology in its own name, other than in relation to improvements
and inventions made by Licensee's employees.
7.3 Actions and Claims Against Third Parties. If, during the term
of this Agreement, Licensee learns of any infringement, unfair competition
or misappropriation ("Infringement") by a third party of any Licensed
Technology licensed to Licensee, Licensee shall promptly and fully notify
Commercial JV in writing.
7.4 Infringement Claims by Third Parties. If, during the term of
this Agreement, any claim or action is threatened or commenced by a third
party alleging Infringement of third party rights in the Territory by
practice of the Licensed Technology by Licensee, Licensee shall promptly
and fully notify Commercial JV in writing.
7.5 Procedure. Commercial JV, Lanxide K.K., Lanxide and LTC
individually or collectively, shall have the right, but not the obligation,
to take all reasonable steps to prosecute or defend any claim or action
relating to the matters set forth in paragraphs 7.3 and 7.4, and may
institute, defend, or settle claims, actions or proceedings at their
expense. In the event that Commercial JV, Lanxide K.K., Lanxide or LTC
choose to prosecute or defend any such claim or action, Commercial JV,
Lanxide K.K., Lanxide or LTC, either individually or collectively, shall
have the sole right to control all negotiations and litigation and to
settle any and all litigation at their own expense. Licensee, at the
request of any of Commercial JV, Lanxide K.K., Lanxide or LTC, shall render
all reasonable assistance and cooperation. If each of Commercial JV,
Lanxide K.K., Lanxide or LTC refuses or fails to take or defend such
actions within six (6) months after receipt of the notice described in
paragraphs 7.3 and 7.4 (or such shorter period as shall be reasonable in
the circumstances), then, upon Licensee's written request and at Licensee's
expense (except as provided in paragraph 9.1), Commercial JV, Lanxide K.K.,
Lanxide and LTC individually or collectively, shall cooperate with Licensee
and render all reasonable assistance to Licensee in instituting, defending
or settling such actions or claims or proceedings. In such case, Commercial
JV, at its own expense, shall have the right to participate in such
proceedings through Commercial JV's own counsel. Except as provided in
paragraph 9.1, in no event shall Commercial JV, Lanxide K.K., Lanxide or
LTC bear any expense of any claims, actions, or proceedings not instituted
or defended by Commercial JV, Lanxide K.K., Lanxide or LTC unless their
written consent is obtained prior to the institution or defense of such
claims, actions, or proceedings. In addition, Commercial JV may request
that Licensee modify or terminate any practices which have given rise to a
claim of Infringement of third party rights. Any damages obtained from a
third party shall be for the account of the party prosecuting the claim,
action, or proceeding against such third party in which such damages are
recovered.
VIII. CONFIDENTIALITY, RESTRICTED DISCLOSURE AND LIMITED USE
COMMITMENTS
8.1 Confidentiality Undertaking. The parties hereto shall (i)
treat as confidential all Proprietary Information (as hereinafter defined)
which is obtained by a receiving party (Commercial JV or Licensee, as the
case may be) directly or indirectly from a disclosing party (Licensee or
each of Commercial JV, Lanxide K.K., Lanxide or LTC, as the case may be) in
connection with this Agreement, and (ii) not disclose the same to any third
party nor use the same, except as provided herein. The provisions of this
Section shall apply, without limitation, to all information learned by the
parties in the course of implementing this Agreement concerning the
business, assets, customers, processes or methods of Commercial JV, Lanxide
K.K., Lanxide, LTC, or Licensee, or their Affiliates. The provisions of
Section 8 shall remain in effect during the term of this Agreement and for
a period of five (5) years after termination or expiration of the
Agreement.
8.2 Proprietary Information. As used herein, "Proprietary
Information" means any information of Commercial JV, Lanxide K.K., Lanxide,
LTC, Licensee, or their Affiliates that might reasonably be considered
proprietary, sensitive or private, including but not limited to the
following:
(i) Technical information, know-how, data, techniques,
discoveries, inventions, ideas, unpublished patent applications,
proprietary information, formulae, analyses, laboratory reports, other
reports, financial information, studies, findings, or other information
relating to Commercial JV, Lanxide K.K., Lanxide, LTC, Licensee, or their
Affiliates, or the Licensed Technology or methods or techniques used by
Commercial JV, Lanxide K.K., Lanxide, LTC, Licensee, or their Affiliates,
whether or not contained in samples, documents, sketches, photographs,
drawings, lists, and the like;
(ii) Data and other information employed in connection with the
marketing of the products of Commercial JV, Lanxide K.K., Lanxide, LTC or
Licensee, or their Affiliates including cost information, business policies
and procedures, revenues and markets, distributors and customers, and
similar items of information whether or not contained in documents or other
tangible materials; and
(iii) Any other information obtained by the parties to this
Agreement during the term hereof, that is not generally known to, and not
readily ascertainable by proper means by, third parties.
8.3 Precautions. The parties hereto shall take all appropriate
steps to prevent unauthorized disclosure of any Proprietary Information by
their employees, which steps include the execution or acceptance by all
such persons of written agreements containing obligations of
confidentiality, restricted disclosure and limited use relative thereto
consistent with this Section 8 prior to disclosure of Proprietary
Information to them. The parties shall not permit access to Proprietary
Information by their employees, except on a need-to-know basis. The parties
shall further take all appropriate steps to protect the Proprietary
Information against espionage, misuse, loss or theft.
8.4 Exclusions. The provisions of Section 8 shall not apply to any
Proprietary Information that (i) has become generally available to the
public through no fault of the receiving party (Commercial JV or Licensee,
as the case may be) or its employees, (ii) the receiving party can prove by
clear and convincing documentary evidence was in its possession before
disclosure hereunder and did not come directly or indirectly from the
disclosing party (either Licensee or any of Commercial JV, Lanxide K.K.,
Lanxide or LTC, as the case may be), or their Affiliates, (iii) becomes
known to the receiving party through lawful disclosure from a third party
that is not subject to a confidentiality agreement with the disclosing
party (either Licensee or any of Commercial JV, Lanxide K.K., or Lanxide or
LTC, as the case may be) or their Affiliates, or (iv) the receiving party
can prove by clear and convincing documentary evidence has been or is
developed by the receiving party independent of any such Proprietary
Information disclosed by the disclosing party.
8.5 Permitted Disclosure. Proprietary Information may not be
disclosed by the receiving party without the prior written consent of
Commercial JV or Licensee, exept that:
(i) Commercial JV may disclose Licensee's Proprietary Information
to the extent of the inventions and improvements described in paragraph 7.1
hereunder to its Affiliates or its other licensees or sublicensees of the
Licensed Technology, provided that prior to disclosure of the Proprietary
Information, such Persons execute written agreements containing obligations
of confidentiality consistent with this Section 8.
(ii) In the event that a third party wishes to evaluate Licensee's
proprietary technology to the extent of the inventions and improvements
described in paragraph 7.1 hereunder in connection with a business
transaction with Commercial JV or its Affiliates, Commercial JV may
disclose as much of Licensee's Proprietary Information to that third party
as is necessary to conduct such evaluation, provided that prior to
disclosure such third party executes a written agreement prohibiting use of
the Proprietary Information for any reason other than evaluation of this
technology and containing obligations of confidentiality consistent with
this Section 8.
8.6 Government Regulations. The provisions of this Section 8 shall
not be deemed to obligate either party to do or refrain from doing any act,
the doing or not doing of which would cause or reasonably be expected to
cause either party to fail to fulfill or comply with any obligation or
requirement imposed by any Government Regulation, provided that, any
disclosures of Proprietary Information made to fulfill or comply with any
such Government Regulation shall be made (i) only after notice to the other
party, and (ii) under conditions invoking all confidentiality protections
as are available by law or regulation.
IX. MISCELLANEOUS
9.1 No Warranties. Commercial JV makes no warranty or
representation with respect to the Licensed Technology or other assistance
furnished under this Agreement, nor is Commercial JV in any way responsible
for the accuracy, utility or completeness of any Licensed Technology or
other assistance furnished under this Agreement. COMMERCIAL JV HEREBY
EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES AND REPRESENTATIONS, EXPRESS OR
IMPLIED, ARISING BY LAW OR CUSTOM, WITH RESPECT TO THE LICENSED TECHNOLOGY,
INCLUDING, WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY OR FITNESS FOR
A PARTICULAR PURPOSE. COMMERCIAL JV DOES NOT IN ANY WAY PROMISE THAT THE
LICENSED TECHNOLOGY WILL PRODUCE ANY PARTICULAR RESULTS, PRODUCTS OR
PROFITABILITY.
9.2 Force Majeure. Neither party shall be liable for failure to
perform its obligations hereunder for so long as that failure may be the
result of an event beyond its reasonable control (a "force majeure" event),
provided that such party uses all reasonable efforts to comply with the
terms of this Agreement to the extent that it is able to do so. However, if
such failure due to force majeure by either party to perform any part of
this Agreement should continue for six (6) months, the other party shall
have the right to terminate this Agreement.
9.3 Waivers. The failure at any time of either party to require
performance by the other party of any obligation required by this Agreement
shall in no way affect such party's right to require such performance at
any time thereafter, nor shall the waiver by either party of a breach of
any provision of this Agreement by the other party constitute a waiver of
any other breach of the same or any other provision or constitute a waiver
of the obligation itself.
9.4 Amendment. This Agreement may be amended only by an instrument
in writing duly executed by the duly authorized representatives of the
parties hereto.
9.5 Assignability. This Agreement may not, without prior written
agreement by Lanxide, be assigned. Any permitted assignment shall not
relieve Licensee from any obligations hereunder incurred prior to such
assignment.
9.6 Notices. In any case where any notice or other communication
is required or permitted to be given hereunder (including, without
limitation, any change in the information set forth in this paragraph 9.7)
such notice or communication (i) shall be in writing and in the English
language, (ii) shall be sent to the parties set out below, and (iii) shall
be (A) personally delivered, (B) sent by postage prepaid registered mail,
(C) transmitted by telecopy receipt of which is confirmed, or (D) sent by
courier service requiring signature on receipt, as, follows:
If to Commercial JV, to:
AKN Corporation
0-0-00, Xxxxx-xxxx
Xxxxxx-xx, Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: President
If to Licensee, to:
Akebono Brake Industry Co., Ltd.
00-0, Xxxxxxxxxx Xxxxxxxx
Xxxx-xx
Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: Manager, Corporate Planning Dept.
All such notices or other communications shall be deemed to have been given
or received (i) upon receipt if personally delivered, or if by courier, (ii)
on the third business day following posting if by postage prepaid registered
mail, or (iii) when sent with confirmed answer back if sent by telecopy.
9.7 Choice of Law. This Agreement shall be construed and enforced
in accordance with and governed by the internal laws of Japan.
9.8 Arbitration. Any and all disputes, controversies or
differences arising from or in relation to or in connection with this
Agreement or a transaction conducted under this Agreement shall be settled
by mutual consultation between the parties in good faith as promptly as
possible, but failing an amicable settlement, shall be settled by
arbitration in accordance with the Commercial Arbitration Rules of The
International Chamber of Commerce, by which each party agrees to be bound.
The arbitration shall be held in Tokyo, Japan. The award of the arbitrator
shall be final and binding upon the parties.
9.9 Interpretation. The headings of the sections and paragraphs in
this Agreement are provided for convenience of reference only and shall not
be deemed to constitute a part hereof. The Agreement is executed in the
English language.
9.10 Entire Agreement. This Agreement constitutes the entire
agreement of the parties hereto with respect to the subject matter of this
Agreement and supersedes all prior agreements and understandings, oral and
written, if any, between the parties hereto with respect to the subject
matter of this Agreement.
9.11 Severability. Should any provision of this Agreement be
deemed in contradiction with the laws of any jurisdiction in which it is to
be performed or unenforceable for any reason, such provision shall be
deemed null and void, but, except as provided in paragraph 5.2, this
Agreement shall remain in force in all other respects.
9.12 Counterparts. This Agreement may be executed in several
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
duly executed and delivered as of the day and year first above written
AKN CORPORATION AKEBONO BRAKE INDUSTRY CO., LTD.
By: /s/ Xxxxxx Xxxx By: /s/ Hisataka Nobumoto
Name: Xxxxxx Xxxx Name: Hisataka Nobumoto
Title: President Title: President & CEO
ACCEPTED AND AGREED TO BY:
LANXIDE K. K.
By: /s/ Xxxx X. Xxxxxxx
Name: Xxxx X. Xxxxxxx
Title: President
SCHEDULE 1.5
Technology which is, or may in the future be
(i) provided to Lanxide or its Affiliates under Non Disclosure
Agreements and is identified as the proprietary information of the
disclosing party.
(ii) designated as classified by a government agency.
(iii) controlled by the export regulations of the United States.
(iv) provided under license to Lanxide or its Affiliates with
limits on its use or transfer.
SCHEDULE A
PRODUCTS
"Products" shall mean
Brake rotors, brake drums, brake shoes, brake pistons, brake
caliper bodies, brake pad backing plates, brake caliper anchors, steering
knuckles, drum brake back plates, brake torque anchor support plates, disc
brake back plates, wheel hubs, brake dust xxxxxxx, brake modulator housings,
brake pressure control valve housings, wheel brake cylinder housings, and
Brake master cylinder housings, all made only from Ceramic-Reinforced
Aluminum for use only on passenger cars, trucks, buses, trailers, motor-
cycles, railroad locomotives, railroad rolling stock and industrial equipment.
All of the above definitions shall exclude the following:
1. Sporting Goods
2. Filters for use in materials processing plants which come in
direct contact with some portion of materials flow through the process
plant.
3. Aerospace components including but not limited to leading
edges, nosecones, radomes, control surfaces, struts, stiffeners, skins and
air frames for spacecraft, aircraft, and missiles.
4. Heat exchangers including but not limited to recuperators,
boilers, waste heat recovery, superheaters, pyrolysis units, reformers, air
preheaters and chemical processes, including radiant burner tubes and parts
thereof.
5. Gas turbine engine parts including but not limited to land, sea
and air, moving and stationary gas turbine engines, and aircraft scramjet
and ramjet engines and components thereof.
6. Electrical/electronic substrates, heat sinks or packages,
including but not limited to components thereof for active or passive
electronic devices, and assemblies thereof.
7. Electronic devices whose primary function is to serve as a
capacitor, resistor, inductor, or part thereof, or arrays of same, not
including superconductive inductors.
8. Electro-optic and photovoltaic devices whose primary function
is to transform electrical signals to optical signals.
9. RFI shielding, electrical ground planes, antennae, and
components thereof.
10. Electrical wire and cable, and components thereof.
11. Generators, alternators, or parts thereof not including prime
movers, brakes, clutches or other assemblies associated therewith.
12. Electric motors, or parts thereof.
13. Electrical transformers, electromagnets, electric relays, and
components thereof.
14. Superconducting inductors.
15. Connectors for electronic devices.
16. Electro-optic and photovoltaic devices whose primary function
is to transform optical signals to electrical signals.
17. Electronic devices whose primary function is to serve as a
vacuum tube, a discharge tube, a magnetron, a wave guide, emitter,
receiver, or part thereof.
18. Solid state electronic transducer, transistor, diode, or
integrated circuit wafers, chips or elements.
19. Electric incandescent, fluorescent or discharge lamps, and
components thereof.
20. Electrical switches, switchgear, and components thereof.
21. Electric fuel cells, thermoelectric devices and electric
batteries, or components thereof.
22. Electrodes and electrical terminations, interconnects,
splices, plugs, sockets, and components thereof.
23. Electrical fuses and fusible links, and components thereof.
24. Human or other animal prostheses, including, but not limited
to, bone, tooth or organ replacement or supplement.
25. Components, combinations thereof for incorporation into
systems, and systems comprising such components, designed specifically to
provide ballistic protection for ground vehicles, artillery, amphibious
vehicles, aircraft, spacecraft, space installations, missiles, marine
craft, marine installations, and personnel.
26. Components and parts, including but not limited to complete
assemblies, that are, or become a direct part of, solid, liquid or gas
fueled rocket engines for all military and civilian uses including but not
limited to tactical and strategic missile engines and space launch and
orbital insertion rocket engines.
27. Products to inhibit corundum formation in aluminum melting
furnaces
28. Abrasive grain for supplying the coated abrasives, bonded
abrasives and loose abrasives markets.
29. Grinding wheels.
30. Gun systems, including but not limited to both conventional
smokeless propellant driven systems and electromagnetic-driven railgun
systems, and/or components therefor.
31. Electric resistance-heated igniters for use as fuel ignition
devices in all applications except internal combustion, gas turbine and
rocket engine use, including but not limited to components for these
applications, such as electrically operated resistance heating elements
supports and interconnections for such elements and resistance-heated
igniter assemblies.
32. Ceramic and ceramic matrix composite powders, microspheres,
tubules and platelets for use as ceramic raw materials or as raw materials
for ceramic matrix, metal matrix or polymer matrix composites.
33. Fuel injectors and fuel injector components for use in
internal combustion engines.
34. Cutting tools and components for cutting tools including but
not limited to broaches, twist drills, gun drills and reamers,
countersinks, combination drills and countersinks, counterbores, reamers,
hobs, gear shapers, milling cutters, single and double point tools,
circular form tools, threading tools, blanks tips and inserts.
35. Track and undercarriage components, track systems and ground
contact hull structures including but not limited to those for use on
bulldozer, scraper, earthmover, backhoe, skidder, armored vehicle,
dragline, conveyor, or mining equipment.
36. Aircraft and marine propellers, rotors and other propulsive
devices and shaft seals and components therefor.
37. Inspection tools, including but not limited to gages gage
blocks, go no-go gages, xxx blocks, inspection systems, coordinate
measuring equipment.
38. Sensors, sheathing for sensors, and components thereof.
39. All military component applications.
40. Building product components.
41. Furnace components and hardware including heating elements,
kiln rollers, kiln furniture, xxxxx and crucibles.
42. Housewares and components thereof.
43. All engine and power transmission components.
44. Security devices including safes, locks, vaults, and
components thereof.
45. Welding electrodes.
46. Paints and Adhesives
EXHIBIT E
SUBLICENSE AGREEMENT
This License Agreement ("Agreement"), dated as of
___________, 1996 (the "Effective Date"), is made between:
1. AKN Corporation of 0-0-00, Xxxxx-xxxx, Xxxxxx-xx,
Xxxxx 000, Xxxxx ("Commercial JV") and
2. Nihon Cement Co., Ltd. of Xxxxxxxxx Xxxxxxxx, 0-0,
Xxxxxxxxx 1-chome, Xxxxxxx-xx, Xxxxx 000, Xxxxx ("Licensee").
WHEREAS, Commercial JV is a corporation organized under
the laws of Japan pursuant to a Joint Venture Agreement among
Licensee, Akebono Brake Industry Company, Ltd., and Kanematsu
Corporation; and
WHEREAS, Commercial JV has been granted certain rights
to certain technology and trademarks by Lanxide Kabushiki Kaisha
("Lanxide K.K."), Lanxide (as defined in Section 1.4) and LTC (as
defined in Section 1.6), under license agreements dated as of
__________, 1996 (the "Commercial JV License") with the right to
sublicense; and
WHEREAS, Commercial JV wishes to grant Licensee a
license to research and develop Products for the manufacture, use
and sale by Commercial JV and Licensee will accept the license on
the terms specified herein.
NOW, THEREFORE, in consideration of the premises and
mutual covenants contained herein, and for other good and
valuable consideration, the receipt and sufficiency of which is
hereby acknowledged, the parties hereto agree as follows:
ARTICLE I
DEFINITIONS
Terms used with initial capital letters in this
Agreement shall have the meaning set forth below.
1.1 "Affiliate(s)" of a Person means a Person that
directly or indirectly through one or more intermediaries'
controls, is controlled by, or is under common control with, such
Person.
1.2 "Ceramic-Reinforced Aluminum" shall mean materials
comprised of a discontinuous ceramic reinforcing phase and a
continuous aluminum metal matrix phase.
1.3 "Governmental Regulations" shall mean any and all
terms, conditions and provisions of (a) any law, regulation,
order, statute, decree, rule, writ, injunction, determination or
award of any court, governmental department, board, agency, or
instrumentality, whether foreign or domestic, and (b) any
contract for research, development and/or manufacturing between
Lanxide and any department or agency of the United States
government but only to the extent such contract reflect
provisions required by (a) above to be included therein.
1.4 "Lanxide" shall mean Lanxide Corporation, a
corporation organized under the laws of Delaware, and located at
0000 Xxxxxxx Xxxx, X.X. Xxx 0000, Xxxxxx, Xxxxxxxx 00000-0000,
U.S.A.
1.5 "Licensed Technology" shall mean Technology now or
hereafter owned by Lanxide or LTC which is relevant to Products
and to which Commercial JV is granted rights under the Commercial
JV License without restriction upon the grant of sublicenses or
transfer of such Technology, but excluding Technology, transfer
or license of which, or an interest in which, despite Lanxide's,
LTC's, Lanxide K.K.'s and/or Commercial JV's best efforts, would
be expressly prohibited, either generally or specifically, by
Government Regulations or contracts with third parties which are
further described but not limited to those listed in Schedule 1.5
hereto.
1.6 "LTC" shall mean Lanxide Technology Company, L.P.,
a Delaware limited partnership wholly owned and controlled by
Lanxide.
1.7 "Person" shall mean any individual, corporation,
partnership, limited liability company, joint venture,
association, joint stock company, trust, unincorporated
organization or government or any agency or political subdivision
thereof.
1.8 "Products" shall have the meaning set forth in
Schedule A to this Agreement.
1.9 "Raw Materials" shall mean ceramic powders,
ceramic paper, fibers, polymers and/or castable metal matrix
composite ingot produced using technology owned by or licensed to
Lanxide or its Affiliates.
1.10 "Technology" shall mean technical information,
know-how, data, techniques whether patentable or not, patents,
patent applications and trade secrets.
1.11 "Territory" shall mean the geographic area of
Japan.
1.12 "Trademarks" shall mean the trademark "Lanxide"
together with all other trademarks relating to the Products owned
now or in the future in the Territory by Lanxide.
ARTICLE II
GRANT OF TECHNOLOGY LICENSE
2.1 License of Licensee. Subject to Government
Regulations and the provisions of this Agreement, Commercial JV
hereby grants to Licensee a license to use, during the term of
this Agreement, the Licensed Technology for the purposes of
engaging in the research and development in the Territory of
Products. This Agreement does not grant Licensee any right to
use the Licensed Technology for the purpose of manufacturing
Products or Raw Materials.
2.2 Non-Exclusive Rights. The license of Licensed
Technology granted under paragraph 2.1 shall be non-exclusive in
the Territory and subject to the use by other authorized users of
the Licensed Technology for research and development of Products.
2.3 No Rights Outside Territory. The license granted
under paragraph 2.1 shall not include any rights to use the
Licensed Technology outside the Territory for any purpose and
such license shall not include any right to export from the
Territory.
2.4 Sublicense Rights. There shall be no right to
sublicense the Licensed Technology.
2.5 Reservation of Rights. No rights are granted
under the Licensed Technology except as expressly set forth in
this Section 2 and all rights not expressly granted are reserved.
All rights granted are subject to the terms of the Commercial JV
License.
2.6 Provision of Technology. Subject to applicable
Government Regulations, including obtaining any necessary
licenses prior to disclosure, Commercial JV shall, (i) at
Licensee's request, make available to Licensee from time to time
on an as-needed basis and free of cost to Licensee, technical
support to transfer technical information, formulae, data,
analyses, know-how, and information with respect to the Licensed
Technology to the extent reasonably necessary for Licensee to use
the Licensed Technology for the research and development of
Products.
2.7 Protection of Technology. Licensee shall not use
the Licensed Technology for any purpose other than to research
and develop Products, all as provided for in this Agreement.
Licensee shall take no action in respect of the Licensed
Technology which is inconsistent with the terms of the license
granted under this Agreement.
2.8 Acknowledgement of Rights. Licensee acknowledges
that Licensee's right to use the Licensed Technology arises only
out of the sublicense granted under this Agreement.
ARTICLE III
NO TRADEMARK LICENSE
3.1 Trademark License. No license to use the
Trademarks is granted in connection with this sublicense.
3.2 Reservation of Rights. Without limitation,
Licensee acknowledges the rights of Lanxide K.K., Lanxide and LTC
to use the Trademarks themselves in the Territory or through
direct or indirect licensees.
ARTICLE IV
FEE AND ROYALTY
4.1 Fee Payment and Amount. Licensee shall pay a
sublicense fee in Japanese Yen in an amount equal to $2,000,000
in U.S. dollars to the Commercial JV, according to the following
schedule, plus the amount of any consumption tax in Japan:
Date Amount
---- ------
November 15, 1996 $2,000,000
4.2 Royalty Free License. The use of the Licensed
Technology for the research and development of Products in the
Territory shall be royalty free except as set forth elsewhere in
this Section 4.
ARTICLE V
TERM AND TERMINATION
5.1 Effective Date. This Agreement shall come into
effect upon the later of (i) unconditional grant of all necessary
United States and Japanese government approvals required for its
validity and for performance of the obligations contained in this
Agreement; or (ii) the Effective Date first written above. This
Agreement shall thereafter be perpetual, subject to earlier
termination as provided herein.
5.2 Events of Termination. This Agreement may be
earlier terminated upon the happening of any of the following
events:
(i) Upon written notice by Commercial JV, in the event of
termination of the Commercial JV License;
(ii) Upon written notice by Licensee to Commercial JV in the
event that Commercial JV is in material breach of any
of its obligations under this Agreement as a result of
action or inaction by some Person other than Licensee
or a Person controlled by Licensee, and Commercial JV
fails to remedy that breach within 45 days after
receipt of written notice from Licensee, requiring it
to remedy that breach;
(iii) Upon written notice by Commercial JV to Licensee
in the event that the Licensee is in material
breach of any of its obligations under either this
Agreement or the joint development agreement among
Licensee, Akebono Brake Industry Co., Ltd., and
Lanxide dated as October 25, 1996, as a result of
action or inaction by some Person other than a
Person controlled by Commercial JV, and Licensee
fails to remedy that breach within 45 days after
receipt of written notice from Commercial JV,
requiring it to remedy that breach;
(iv) Upon written notice by Licensee, in the event that
Commercial JV ceases to carry on business, becomes or
is declared insolvent, files or has filed against it a
petition in bankruptcy, has a receiver appointed over
its assets, or takes or has taken against it any
similar act as a result of debt, as a result of action
or inaction by some Person other than Licensee or a
Person controlled by Licensee;
(v) Upon written notice by Commercial JV, in the event that
License ceases to carry on business, becomes or is
declared insolvent, files or has filed against it a
petition in bankruptcy, has a receiver appointed over
its assets, or takes or has taken against it any
similar act as a result of debt, as a result of action
or inaction by some Person other than Commercial JV or
a Person controlled by Commercial JV;
(vi) Upon one hundred and eighty (180) days prior written
notice by either party, in the event that any
governmental agency or court requires substantial
modifications to the provisions of this Agreement; or
(vii) Upon written notice by Licensee, in the event that
Licensee ceases to use the Licensed Technology.
5.3 Effects of Termination. On termination or
expiration of this Agreement, the following provisions shall have
effect:
(i) All licenses granted to Licensee shall forthwith cease
and Licensee shall cooperate in cancelling any
registration of such licenses.
(ii) Licensee shall forthwith cease all use of the Licensed
Technology.
(iii) Termination of this Agreement shall not affect the
continued enforceability of Section 8 and the
continued existence of the license back under
paragraph 7.1 of improvements and inventions made
up to the date of termination.
(iv) All amounts owing for sublicense fees shall be
immediately due and payable.
(v) Licensee shall promptly deliver all Proprietary
Information in all forms to Commercial JV or to its
authorized representatives.
5.4 Lanxide K.K. License. Upon the happening of any
event described in subparagraphs 5.2 (i) or (iv) hereto Lanxide
K.K. shall enter into a license agreement directly with Licensee
substantially in the form of this Agreement for any remaining
term of this Agreement.
ARTICLE VI
GOVERNMENT REGULATIONS, ETC.
6.1 Compliance with Government Regulations. The grant
of licenses and the transfer of Licensed Technology under this
Agreement shall be conditional on all necessary governmental
consents and licenses being obtained and maintained. Commercial
JV and Licensee shall use reasonable efforts to obtain all such
consents and licenses. Licensee shall comply with all
Governmental Regulations governing export of goods and
information from the United States and from the Territory,
including without limitation the Export Administration
Regulations of the United States (15 C.F.R. 730, et seq.) as such
may be amended from time to time, and the terms of any licenses
or consents obtained.
ARTICLE VII
PATENTS AND IMPROVEMENTS
7.1 Rights in Inventions. During the term of this
Agreement, Licensee shall promptly disclose to Commercial JV any
inventions or improvements which relate solely to composition and
processing of Ceramic-Reinforced Aluminum as material for
Products (specifically excluding any inventions or improvements
which relate to the design and/or performance of Products
themselves as brake parts or components) that are made by
Licensee's employees without the participation of any of the
employees of Commercial JV, Lanxide, K.K., Lanxide, LTC or their
Affiliates and Licensee shall obtain the right to grant, and
grant, to Commercial JV a full worldwide, royalty-free,
perpetual, irrevocable, non-exclusive license to make, use and
sell such improvements or inventions in any manner not prevented
by the terms of the license to Licensee under this Agreement,
with full right by Commercial JV to grant sublicenses of such
improvements or inventions which themselves include the right to
sublicense.
The provisions of this paragraph 7.1 shall not affect
the ownership of inventions or improvements made by employees of
Commercial JV, Lanxide K.K., Lanxide, LTC or their Affiliates
(with or without the participation of the employees of the
Licensee) which inventions and improvements shall be the property
of Commercial JV, Lanxide K.K., Lanxide, LTC or their Affiliates,
but subject to the license granted under this Agreement.
7.2 Prosecution and Registration. Licensee shall not
seek any patent or other intellectual property registration in
relation to the Licensed Technology in its own name, other than
in relation to improvements and inventions made by Licensee's
employees.
7.3 Actions and Claims Against Third Parties. If,
during the term of this Agreement, Licensee learns of any
infringement, unfair competition or misappropriation
("Infringement") by a third party of any Licensed Technology
licensed to Licensee, Licensee shall promptly and fully notify
Commercial JV in writing.
7.4 Infringement Claims by Third Parties. If, during
the term of this Agreement, any claim or action is threatened or
commenced by a third party alleging Infringement of third party
rights in the Territory by practice of the Licensed Technology by
Licensee, Licensee shall promptly and fully notify Commercial JV
in writing.
7.5 Procedure. Commercial JV, Lanxide K.K., Lanxide
and LTC individually or collectively, shall have the right, but
not the obligation, to take all reasonable steps to prosecute or
defend any claim or action relating to the matters set forth in
paragraphs 7.3 and 7.4 and may institute, defend or settle
claims, actions or proceedings at their expense. In the event
that Commercial JV, Lanxide K.K., Lanxide or LTC choose to
prosecute or defend any such claim or action, Commercial JV,
Lanxide K.K., Lanxide or LTC, either individually or
collectively, shall have the sole right to control all
negotiations and litigation and to settle any and all litigation
at their own expense. Licensee, at the request of any of
Commercial JV, Lanxide K.K., Lanxide or LTC, shall render all
reasonable assistance and cooperation. If each of Commercial JV,
Lanxide K.K., Lanxide or LTC refuses or fails to take or defend
such actions within six (6) months after receipt of the notice
described in paragraphs 7.3 and 7.4 (or such shorter period as
shall be reasonable in the circumstances), then, upon Licensee's
written request and at Licensee's expense (except as provided in
paragraph 9.1), Commercial JV, Lanxide K.K., Lanxide and LTC
individually or collectively, shall cooperate with Licensee and
render all reasonable assistance to Licensee in instituting,
defending or settling such actions or claims or proceedings. In
such case, Commercial JV, at its own expense, shall have the
right to participate in such proceedings through Commercial JV's
own counsel. Except as provided in paragraph 9.1, in no event
shall Commercial JV, Lanxide K.K., Lanxide or LTC bear any
expense of any claims, actions or proceedings not instituted or
defended by Commercial JV, Lanxide K.K., Lanxide or LTC unless
their written consent is obtained prior to the institution or
defense of such claims, actions or proceedings. In addition,
Commercial JV may request that Licensee modify or terminate any
practices which have given rise to a claim of Infringement of
third party rights. Any damages obtained from a third party
shall be for the account of the party prosecuting the claim,
action or proceeding against such third party in which such
damages are recovered.
ARTICLE VIII
CONFIDENTIALITY, RESTRICTED DISCLOSURE AND LIMITED USE COMMITMENTS.
8.1 Confidentiality Undertaking. The parties hereto
shall (i) treat as confidential all Proprietary Information (as
hereinafter defined) which is obtained by a receiving party
(Commercial JV or Licensee, as the case may be) directly or
indirectly from a disclosing party (Licensee or each of
Commercial JV, Lanxide K.K., Lanxide or LTC, as the case may be)
in connection with this Agreement, and (ii) not disclose the same
to any third party nor use the same, except as provided herein.
The provisions of this Section shall apply, without limitation,
to all information learned by the parties in the course of
implementing this Agreement concerning the business, assets,
customers, processes or methods of Commercial JV, Lanxide K.K.,
Lanxide, LTC, or Licensee, or their Affiliates. The provisions
of Section 8 shall remain in effect during the term of this
Agreement and for a period of five (5) years after termination or
expiration of the Agreement.
8.2 Proprietary Information. As used herein,
"Proprietary Information" means any information of Commercial JV,
Lanxide K.K. Lanxide, LTC, Licensee, or their Affiliates that
might reasonably be considered proprietary, sensitive or private,
including but not limited to the following:
(i) Technical information, know-how, data, techniques,
discoveries, inventions, ideas, unpublished patent
applications, proprietary information, formulae,
analyses, laboratory reports, other reports, financial
information, studies, findings or other information
relating to Commercial JV, Lanxide K.K., Lanxide, LTC,
Licensee, or their Affiliates, or the Licensed
Technology or methods or techniques used by Commercial
JV, Lanxide K.K., Lanxide, LTC, Licensee or their
Affiliates, whether or not contained in samples,
documents, sketches, photographs, drawings, lists and
the like;
(ii) Data and other information employed in connection with
the marketing of the products of Commercial JV, Lanxide
K.K., Lanxide, LTC or Licensee, or their Affiliates
including cost information, business policies and
procedures, revenues and markets, distributors and
customers, and similar items of information whether or
not contained in documents or other tangible materials;
and
(iii) Any other information obtained by the parties to
this Agreement during the term hereof, that is not
generally known to, and not readily ascertainable
by proper means by, third parties.
8.3 Precautions. The parties hereto shall take all
appropriate steps to prevent unauthorized disclosure of any
Proprietary Information by their employees, which steps include
the execution or acceptance by all such persons of written
agreements containing obligations of confidentiality, restricted
disclosure and limited use relative thereto consistent with this
Section 8 prior to disclosure of Proprietary Information to them.
The parties shall not permit access to Proprietary Information by
their employees, except on a need-to-know basis. The parties
shall further take all appropriate steps to protect the
Proprietary Information against espionage, misuse, loss or theft.
8.4 Exclusions. The provisions of Section 8 shall not
apply to any Proprietary Information that (i) has become
generally available to the public through no fault of the
receiving party (Commercial JV or Licensee, as the case may be)
or its employees, (ii) the receiving party can prove by clear and
convincing documentary evidence that it was in its possession
before disclosure hereunder and did not come directly or
indirectly from the disclosing party (either Licensee or any of
Commercial JV, Lanxide K.K., Lanxide or LTC, as the case may be),
or their Affiliates, (iii) becomes known to the receiving party
through lawful disclosure from a third party that is not subject
to a confidentiality agreement with the disclosing party (either
Licensee or any of Commercial JV, Lanxide K.K., or Lanxide or
LTC, as the case may be) or their Affiliates, or (iv) the
receiving party can prove by clear and convincing documentary
evidence has been or is developed by the receiving party
independent of any such Proprietary Information disclosed by the
disclosing party.
8.5 Permitted Disclosure. Proprietary Information may
not be disclosed by the receiving party without the prior written
consent of Commercial JV or Licensee, except that:
(i) Commercial JV may disclose Licensee's Proprietary
Information to the extent of the inventions and
improvements described in paragraph 7.1 hereunder to
its Affiliates or its other licensees or sublicensees
of the Licensed Technology, provided that prior to
disclosure of the Proprietary Information, such Persons
execute written agreements containing obligations of
confidentiality consistent with this Section 8.
(ii) In the event that a third party wishes to evaluate
Licensee's proprietary technology to the extent of the
inventions and improvements described in paragraph 7.1
hereunder in connection with a business transaction
with Commercial JV or its Affiliates, Commercial JV may
disclose as much of Licensee's Proprietary Information
to that third party as is necessary to conduct such
evaluation, provided that prior to disclosure such
third party executes a written agreement prohibiting
use of the Proprietary Information for any reason other
than evaluation of this technology and containing
obligations of confidentiality consistent with this
Section 8.
8.6 Government Regulations. The provisions of this
Section 8 shall not be deemed to obligate either party to do or
refrain from doing any act, the doing or not doing of which would
cause or reasonably be expected to cause either party to fail to
fulfill or comply with any obligation or requirement imposed by
any Government Regulation, provided that, any disclosures of
Proprietary Information made to fulfill or comply with any such
Governmental Regulation shall be made (i) only after notice to
the other party, and (ii) under conditions invoking all
confidentiality protections as are available by law or
regulation.
ARTICLE IX
MISCELLANEOUS
9.1 No Warranties. Commercial JV makes no warranty or
representation with respect to the Licensed Technology or other
assistance furnished under this Agreement, nor is Commercial JV
in any way responsible for the accuracy, utility or completeness
of any Licensed Technology or other assistance furnished under
this Agreement. COMMERCIAL JV HEREBY EXPRESSLY DISCLAIMS ANY AND
ALL WARRANTIES AND REPRESENTATIONS, EXPRESS OR IMPLIED, ARISING
BY LAW OR CUSTOM, WITH RESPECT TO THE LICENSED TECHNOLOGY,
INCLUDING, WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE. COMMERCIAL JV DOES NOT IN ANY
WAY PROMISE THAT THE LICENSED TECHNOLOGY WILL PRODUCE ANY
PARTICULAR RESULTS, PRODUCTS OR PROFITABILITY.
9.2 Force Majeure. Neither party shall be liable for
failure to perform its obligations hereunder for so long as that
failure may be the result of an event beyond its reasonable
control (a "force majeure" event), provided that such party uses
all reasonable efforts to comply with the terms of this Agreement
to the extent that it is able to do so. However, if such failure
due to force majeure by either party to perform any part of this
Agreement should continue for six (6) months, the other party
shall have the right to terminate this Agreement.
9.3 Waivers. The failure at any time of either party
to require performance by the other party of any obligation
required by this Agreement shall in no way affect such party's
right to require such performance at any time thereafter, nor
shall the waiver by either party of a breach of any provision of
this Agreement by the other party constitute a waiver of any
other breach of the same or any other provision or constitute a
waiver of the obligation itself.
9.4 Amendment. This Agreement may be amended only by
an instrument in writing duly executed by the duly authorized
representatives of the parties hereto.
9.5 Assignability. This Agreement may not, without
prior written agreement by Lanxide, be assigned. Any permitted
assignment shall not relieve Licensee from any obligations
hereunder incurred prior to such assignment.
9.6 Notices. In any case where any notice or other
communication is required or permitted to be given hereunder
(including, without limitation, any change in the information set
forth in this paragraph 9.7) such notice or communication (i)
shall be in writing and in the English language), (ii) shall be
sent to the parties set out below, and (iii) shall be (A)
personally delivered, (B) sent by postage prepaid registered
mail, (C) transmitted by telecopy receipt of which is confirmed,
or (D) sent by courier service requiring signature on receipt, as
follows:
If to Commercial JV, to:
AKN Corporation
0-0-00, Xxxxx-xxxx
Xxxxxx-xx, Xxxxx 000, Xxxxx
FAX: 00-0000-0000
Attention: President
If to Licensee, to:
Nihon Cement Co., Ltd.
Ohtemachi Xxxxxxxx
0-0, Xxxxxxxxx 0-xxxxx
Xxxxxxx-xx, Xxxxx 000
Xxxxx
FAX: 00-0000-0000
Attention: Manager, Corporate Planning Dept.
All such notices or other communications shall be deemed to have
been given or received (i) upon receipt if personally delivered,
or if by courier, (ii) on the third business day following
posting if by postage prepaid registered mail, or (iii) when sent
with confirmed answer back if sent by telecopy.
9.7 Choice of Law. This Agreement shall be construed
and enforced in accordance with and governed by the internal laws
of Japan.
9.8 Arbitration. Any and all disputes, controversies
or differences arising from or in relation to or in connection
with this Agreement or a transaction conducted under this
Agreement shall be settled by mutual consultation between the
parties in good faith as promptly as possible, but failing an
amicable settlement, shall be settled by arbitration in
accordance with the Commercial Arbitration Rules of The
International Chamber of Commerce, by which each party agrees to
be bound. The arbitration shall be held in Tokyo, Japan. The
award of the arbitrator shall be final and binding upon the
parties.
9.9 Interpretation. The headings of the sections and
paragraphs in this Agreement are provided for convenience of
reference only and shall not be deemed to constitute a part
hereof. The Agreement is executed in the English language.
9.10 Entire Agreement. This Agreement constitutes the
entire agreement of the parties hereto with respect to the
subject matter of this Agreement and supersedes all prior
agreements and understandings, oral and written, if any, between
the parties hereto with respect to the subject matter of this
Agreement.
9.11 Severability. Should any provision of this
Agreement be deemed in contradiction with the laws of any
jurisdiction in which it is to be performed or unenforceable for
any reason, such provision shall be deemed null and void, but,
except as provided in paragraph 5.2, this Agreement shall remain
in force in all other respects.
9.12 Counterparts. This Agreement may be executed in
several counterparts, each of which shall be deemed an original,
but all of which together shall constitute one and the same
instrument.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
duly executed and delivered as of the day and year first above
written.
AKN CORPORATION NIHON CEMENT CO., LTD.
By: ___________________________ By:
___________________________
NAME: ________________________ NAME: ________________________
TITLE: _________________________ TITLE:
_________________________
ACCEPTED AND AGREED TO BY:
LANXIDE K.K.
BY: ______________________________
NAME: ___________________________
TITLE: ____________________________
SCHEDULE 1.5
Technology which is, or may in the future be
(i) provided to Lanxide or its Affiliates under Non
Disclosure Agreements and is identified as the
proprietary information of the disclosing party.
(ii) designated as classified by a government agency.
(iii) controlled by the export regulations of the United
States.
(iv) provided under license to Lanxide or its Affiliates
with limits on its use or transfer.
SCHEDULE A
PRODUCTS
"Products" shall mean
Brake rotors, brake drums, brake shoes, brake pistons, brake
caliper bodies, brake pad backing plates, brake caliper anchors,
steering knuckles, drum brake back plates, brake torque anchor
support plates, disc brake back plates, wheel hubs, brake dust
xxxxxxx, brake modulator housings, brake pressure control valve
housings, wheel brake cylinder housings, and brake master
cylinder housings, all made only from Ceramic-Reinforced Aluminum
for use only on passenger cars, trucks, buses, trailers,
motorcycles, railroad locomotives, railroad rolling stock and
industrial equipment.
All of the above definitions shall exclude the following:
1. Sporting Goods
2. Filters for use in materials processing plants
which come in direct contact with some portion of materials flow
through the process plant.
3. Aerospace components including but not limited to
leading edges, nosecones, radomes, control surfaces, struts,
stiffeners, skins and air frames for spacecraft, aircraft and
missiles.
4. Heat exchangers including but not limited to
recuperators, boilers, waste heat recovery, superheaters,
pyrolysis units, reformers, air preheaters and chemical
processes, including radiant burner tubes and parts thereof.
5. Gas turbine engine parts including but not limited
to land, sea and air, moving and stationary gas turbine engines,
and aircraft scramjet and ramjet engines and components thereof.
6. Electrical/electronic substrates, heat sinks or
packages, including but not limited to components thereof for
active or passive electronic devices, and assemblies thereof.
7. Electronic devices whose primary function is to
serve as a capacitor, resistor, inductor, or part thereof, or
arrays of same, not including superconductive inductors.
8. Electro-optic and photovoltaic devices whose
primary function is to transform electrical signals to optical
signals.
9. RFI shielding, electrical ground planes, antennae
and components thereof.
10. Electrical wire and cable, and components thereof.
11. Generators, alternators or parts thereof not
including prime movers, brakes, clutches or other assemblies
associated therewith.
12. Electric motors, or parts thereof.
13. Electrical transformers, electromagnets, electric
relays and components thereof.
14. Superconducting inductors.
15. Connectors for electronic devices.
16. Electro-optic and photovoltaic devices whose
primary function is to transform optical signals to electrical
signals.
17. Electronic devices whose primary function is to
serve as a vacuum tube, a discharge tube, a magnetron, a wave
guide, emitter, receiver, or part thereof.
18. Solid state electronic transducer, transistor,
diode or integrated circuit wafers, chips or elements.
19. Electric incandescent, fluorescent or discharge
lamps, and components thereof.
20. Electrical switches, switchgear and components
thereof.
21. Electric fuel cells, thermoelectric devices and
electric batteries, or components thereof.
22. Electrodes and electrical terminations,
interconnects, splices, plugs, sockets, and components thereof.
23. Electrical fuses and fusible links, and components
thereof.
24. Human or other animal prostheses, including, but
not limited to, bone, tooth or organ replacement or supplement.
25. Components, combinations thereof for incorporation
into systems, and systems comprising such components, designed
specifically to provide ballistic protection for ground vehicles,
artillery, amphibious vehicles, aircraft, spacecraft, space
installations, missiles, marine craft, marine installations, and
personnel.
26. Components and parts, including but not limited to
complete assemblies, that are, or become a direct part of, solid,
liquid or gas fueled rocket engines for all military and civilian
uses including but not limited to tactical and strategic missile
engines and space launch and orbital insertion rocket engines.
27. Products to inhibit corundum formation in aluminum
melting furnaces.
28. Abrasive grain for supplying the coated abrasives,
bonded abrasives and loose abrasives markets.
29. Grinding wheels.
30. Gun systems, including but not limited to both
conventional smokeless propellant driven systems and
electromagnetic-driven railgun systems, and/or components
therefor.
31. Electric resistance-heated igniters for use as
fuel ignition devices in all applications except internal
combustion, gas turbine and rocket engine use, including but not
limited to components for these applications, such as
electrically operated resistance heating elements supports and
interconnections for such elements and resistance-heated igniter
assemblies.
32. Ceramic and ceramic matrix composite powders,
microspheres, tubules and platelets for use as ceramic raw
materials or as raw materials for ceramic matrix, metal matrix or
polymer matrix composites.
33. Fuel injectors and fuel injector components for
use in internal combustion engines.
34. Cutting tools and components for cutting tools
including but not limited to broaches, twist drills, gun drills
and reamers, countersinks, combination drills and countersinks,
counterbores, reamers, hobs, gear shapers, milling cutters,
single and double point tools, circular form tools, threading
tools, blank tips and inserts.
35. Track and undercarriage components, track systems
and ground contact hull structures, including but not limited to
those for use on bulldozer, scraper, earthmover, backhoe,
skidder, armored vehicle, dragline, conveyor, or mining
equipment.
36. Aircraft and marine propellers, rotors and other
propulsive devices and shaft seals and components therefor.
37. Inspection tools, including but not limited to
gages, gage blocks, go no-go gages, xxx blocks, inspection
systems, coordinate measuring equipment.
38. Sensors, sheathing for sensors, and components
thereof.
39. All military component applications.
40. Building product components.
41. Furnace components and hardware including heating
elements, kiln rollers, kiln furniture, xxxxx and crucibles.
42. Housewares and components thereof.
43. All engine and power transmission components.
44. Security devices including safes, locks, vaults,
and components thereof.
45. Welding electrodes.
46. Paints and Adhesives.
