Exhibit 10.23
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "AGREEMENT") is entered into effect as of
August 4, 2000 (the "EFFECTIVE DATE"), by and between SB OPERATINGCO, INC., a
Delaware corporation ("SUREBEAM"), and THE TITAN CORPORATION a Delaware
corporation ("LICENSEE").
RECITALS
WHEREAS, SureBeam is the owner, licensee or holder of certain Patent
Rights (as defined in EXHIBIT A) and Other Intellectual Property (as defined in
EXHIBIT A);
WHEREAS, Licensee and SureBeam Corporation ("HOLDCO") are parties to a
certain Contribution Agreement dated as of August 4, 2000 and HoldCo and
SureBeam are parties to a certain Contribution Agreement dated as of August 4,
2000 (collectively, the "CONTRIBUTION AGREEMENTS") whereby Licensee contributed
certain of its assets and liabilities (the "TITAN ASSETS") to HoldCo and
thereafter HoldCo contributed the Titan Assets to SureBeam;
WHEREAS, the parties hereto intend that as a part of such
contributions, this Agreement shall become effective upon and simultaneously
with the Contribution Agreements; and
WHEREAS, Licensee desires to retain a fully-paid exclusive license to
practice the inventions covered by the Patent Rights and any Improvements (as
defined in EXHIBIT A) and Other Intellectual Property for medical sterilization
applications in the Territory (as defined in EXHIBIT A).
NOW THEREFORE, in consideration of the foregoing premises and the
covenants contained in this Agreement, the parties agree as follows:
ARTICLE 1
GRANT OF RIGHTS
1.1 GRANT TO LICENSEE. Except as otherwise set forth in this
Article, SureBeam hereby grants to Licensee an exclusive, fully paid,
royalty-free, perpetual license in the Territory under the Patent Rights and
Improvements and Other Intellectual Property to develop, use, offer for sale,
sell and import any Licensed Products (as defined in EXHIBIT A) for medical
sterilization applications.
1.2 LICENSOR CONSENT. Notwithstanding any rights granted or
retained under Section 1.1 above, Licensee shall be prohibited from sublicensing
any rights granted hereunder, whether through one or multiple tiers of
sublicense, and shall have no right to make or have made any Licensed Products
in the Territory, without the prior written consent of SureBeam.
1.
ARTICLE 2
IMPROVEMENTS
2.1 NOTICE OF IMPROVEMENTS. The parties hereto acknowledge that
each of them intends over the course of this License to continue to develop and
improve upon the Patent Rights, for food or medical sterilization purposes as
the case may be, and that such continued development of and improvements to the
technology licensed hereunder is in their mutual best interests. As good and
valuable consideration for the continued mutual exchange of such Improvements,
the receipt of which is hereby acknowledged, each party agrees to promptly
provide the other with notice of any Improvement conceived, discovered or
developed by such party, such notice being of sufficient detail to allow the
other party to evaluate the scientific and economic aspects of the Improvement.
ARTICLE 3
OWNERSHIP; INTELLECTUAL PROPERTY
3.1 TITLE. SureBeam shall use its best efforts to preserve and
maintain full ownership and title to and in the Patent Rights and Improvements
and Other Intellectual Property. Licensee hereby irrevocably assigns to SureBeam
all of its right, title and interest in and to any Improvements and intellectual
property rights therein.
3.2 FILING, PROSECUTION AND MAINTENANCE OF PATENT APPLICATIONS.
SureBeam shall be responsible for the preparation, filing, prosecution and
maintenance of the Patent Rights and any Other Intellectual Property. SureBeam
and Licensee shall consult and cooperate on the exercise of any such rights,
obligations and duties. Subject to the foregoing, the parties shall allocate the
rights, obligations and duties regarding the prosecution and maintenance of such
patents and patent applications and other proprietary rights among themselves as
follow:
(a) Licensee shall have the right to reasonably approve
any outside counsel selected by SureBeam with respect to preparation, filing,
prosecution and maintenance of Patent Rights and Other Intellectual Property.
SureBeam and Licensee will keep each other and their respective counsel advised
of the status of such preparation, filing, prosecution and maintenance and shall
provide each other and such counsel with copies of all official communications,
amendments and responses with respect to the patent applications and patents
included in the Patent Rights and the Other Intellectual Property. All such
official communications received by either SureBeam or Licensee shall be
provided promptly to the other, and proposed responses and amendments shall be
provided by SureBeam to Licensee for Licensee's review sufficiently prior to
filing to allow for review and comment by Licensee; provided that Licensee's
responses will be provided in a timely fashion. SureBeam will use all reasonable
efforts to implement reasonable requests by Licensee with respect to the
foregoing.
(b) Licensee shall pay for one-half of all Patent Costs
during the term of this Agreement. "PATENT COSTS" as used in this Agreement
shall mean out-of-pocket expenses incurred by SureBeam in connection with the
preparation, filing, prosecution and maintenance of patent applications and
patents included within the Patent Rights and any other proprietary rights
2.
included within the Other Intellectual Property, including the fees and expenses
of attorneys and patent agents retained by SureBeam and filing fees and
maintenance fees (including, but not limited to, license payments or fees).
(c) Licensee will cooperate with SureBeam in the
preparation, filing and maintenance and prosecution of the patent applications
and patents included in the Patent Rights and any other proprietary rights
included within the Other Intellectual Property by disclosing such information
as may be useful, necessary, or appropriate, including, without limitation, by
promptly executing such documents as SureBeam may reasonably request to effect
such efforts.
(d) If SureBeam decides, at any time, not to file or
maintain a patent application or patent within the Patent Rights or any other
proprietary right within the Other Intellectual Property, then Licensee shall
have the right, but not the obligation, to file and maintain such application or
patent at its own expense.
3.3 PATENT AND OTHER INTELLECTUAL PROPERTY ENFORCEMENT. The
parties shall allocate the rights, obligations and duties regarding the
enforcement of patents and patent applications within the Patent Rights and
other proprietary rights within the Other Intellectual Property among themselves
as follow:
(a) If either party becomes aware of the infringement of
any Patent Rights or Other Intellectual Property it shall promptly notify the
other in writing, but in all events within thirty days and provide all relevant
information known to such party.
(b) SureBeam shall be responsible for defending and
enforcing the Patent Rights and Other Intellectual Property and shall pay all
expenses related thereto. However, Licensee shall receive notice of and shall
have the right, at its expense, to participate in the protection and defense of
the Patent Rights or Other Intellectual Property. All recoveries, damages and
awards resulting from such enforcement, after reimbursement of any outstanding
litigation expenses incurred by SureBeam and Licensee, shall belong fifty
percent to SureBeam and fifty percent to Licensee. Licensee agrees to cooperate
reasonably in any such litigation initiated by SureBeam, including participating
as a necessary party, supplying documentary evidence and making witnesses in
Licensee's employment available.
ARTICLE 4
INDEMNIFICATION
4.1 INDEMNIFICATION BY LICENSEE. Licensee agrees to indemnify
SureBeam, its directors, officers, shareholders and employees and to hold such
parties harmless from any action, claim, or liability, including without
limitation liability for death, personal injury, and/or property damage, arising
out of (i) the manufacture, use, sale or other disposition of Licensed Products
by Licensee or its Affiliates or sublicensees, or (ii) the use of the Patent
Rights or Improvements or Other Intellectual Property by Licensee or its
Affiliates or sublicensees; provided, however, that such indemnification shall
not apply to any claims resulting from the willful misconduct, negligence or
fraud of SureBeam, its directors, officers, stockholders or employees.
3.
4.2 INDEMNIFICATION BY SUREBEAM. SureBeam agrees to indemnify
Licensee, its directors, officers, shareholders and employees and to hold such
parties harmless from any action, claim, or liability, including without
limitation liability for death, personal injury, and/or property damage, arising
out of (i) the manufacture, use, sale or other disposition of Licensed Products
by SureBeam or its Affiliates or sublicensees, or (ii) the use of the Patent
Rights or Improvements or Other Intellectual Property by SureBeam or its
Affiliates or sublicensees; provided, however, that such indemnification shall
not apply to any claims resulting from the willful misconduct, negligence or
fraud of Licensee, its directors, officers, stockholders or employees.
4.3 PROCEDURE. In the event of the assertion or commencement by
any person of any claim or legal proceeding with respect to which a party (the
"INDEMNIFYING PARTY") may become obligated to hold harmless, indemnify,
compensate or reimburse any person entitled to indemnification pursuant to
Section 3.1 or 3.2, as applicable (the "INDEMNIFIED PARTY"), the Indemnifying
Party shall defend such claim or legal proceeding, subject to the following:
(a) all reasonable expenses relating to the defense of
such claim or legal proceeding shall be borne and paid exclusively by the
Indemnifying Party;
(b) each Indemnified Party shall make available to the
Indemnifying Party any documents and materials in its possession or control that
may be necessary to the defense of such claim or legal proceeding; and
(c) The Indemnifying Party shall have the right to
settle, adjust or compromise such claim or legal proceeding with the consent of
the Indemnified Party, which will not unreasonably be withheld. Consent may not
be withheld if the Indemnified Party receives, as part of the settlement or
compromise, an unconditional release relating to such claim or legal proceeding.
4.4 DISCLAIMER; LIMITATION OF LIABILITY. NEITHER PARTY MAKES ANY
WARRANTY, EXPRESS OR IMPLIED, WITH RESPECT TO THE PATENT RIGHTS OR IMPROVEMENTS
OR OTHER INTELLECTUAL PROPERTY, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED
WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE OR
NONINFRINGEMENT. IN NO EVENT WILL EITHER PARTY, ITS DIRECTORS, OFFICERS,
EMPLOYEES, AGENTS OR AFFILIATES BE LIABLE TO THE OTHER PARTY FOR ANY INDIRECT,
INCIDENTAL, SPECIAL, EXEMPLARY OR CONSEQUENTIAL DAMAGES, WHETHER BASED UPON A
CLAIM OR ACTION OF CONTRACT, WARRANTY, NEGLIGENCE, STRICT LIABILITY OR OTHER
TORT, OR OTHERWISE, ARISING OUT OF THIS AGREEMENT.
ARTICLE 5
CONFIDENTIALITY
A party receiving or gaining access to Confidential Information, as
defined below, of the other party will: (a) maintain in confidence such
Confidential Information to the same extent the receiving party maintains its
own proprietary information; (b) not disclose such Confidential
4.
Information to any third party without prior written consent of the disclosing
party, other than to Affiliates, employees, agents, consultants, permitted
sublicensees and other representatives of the receiving solely to the extent
necessary to accomplish the purposes of this Agreement, so long as such persons
are under an obligation of confidentiality no less stringent than as set forth
herein; and (c) not use such Confidential Information for any purpose, except
(i) as expressly authorized by this Agreement, or (ii) as required by law, rule,
regulation or court order (provided that the disclosing party will use
commercially reasonable efforts to obtain confidential treatment of any such
information required to be disclosed). Each party will promptly notify the other
party upon discovery of any unauthorized use or disclosure of the other party's
Confidential Information.
ARTICLE 6
MISCELLANEOUS PROVISIONS
6.1 INDEPENDENT CONTRACTORS. In making and performing this
Agreement, SureBeam and Licensee act and shall act at all times as independent
contractors and nothing contained in this Agreement shall be construed or
implied to create an agency, partnership or employer and employee relationship
between SureBeam and Licensee. At no time shall one party make commitments or
incur any charges or expenses for or in the name of the other party except as
specifically provided herein.
6.2 NO FIDUCIARY RELATIONSHIP. Nothing in this Agreement shall be
interpreted to impose upon SureBeam any fiduciary duty to or fiduciary
relationship with respect to Licensee or any of its directors, officers or
stockholders.
6.3 FURTHER ASSURANCE. Each party hereto shall execute and cause
to be delivered to each other party hereto such instruments and other documents,
and shall take such other actions, as such other party may reasonably request
for the purpose of carrying out or evidencing any of the transactions
contemplated by this Agreement.
6.4 EXPENSES. Except as otherwise provided herein, all costs and
expenses incurred in connection with the transactions contemplated by this
Agreement shall be paid by the party incurring such costs and expenses.
6.5 ASSIGNMENT; BINDING EFFECT. Except as expressly provided
hereunder, neither this Agreement nor any rights or obligations hereunder may be
assigned by either party without the prior written consent of the other party
(which consent shall not be unreasonably withheld); PROVIDED, HOWEVER, that
either party may assign this Agreement and its rights and obligations hereunder
without the other party's consent (a) in connection with the transfer or sale of
all or substantially all of the business of such party to which this Agreement
relates to a third party, whether by merger, sale of stock, sale of assets or
otherwise, or (b) to any Affiliate. Notwithstanding the foregoing, any such
assignment to an Affiliate shall not relieve the assigning party of its
responsibilities for performance of its obligations under this Agreement. The
rights and obligations of the parties under this Agreement shall be binding upon
and inure to the benefit of the successors and permitted assigns of the parties.
Any assignment not in accordance with this Section 6.5 shall be void.
5.
6.6 NOTICES. Any notice or other communication required or
permitted to be delivered to either party under this Agreement shall be in
writing and shall be deemed properly delivered, given and received when
delivered (by hand, by registered or certified mail (return receipt requested),
by courier or express delivery service or by facsimile or other electronic
transmission, with the original by mail) to the address or facsimile number set
forth on the signature pages by the name of such party (or to such other address
or facsimile number as such party shall have specified in a written notice given
to the other party hereto).
6.7 AMENDMENT. No amendment, modification or supplement of any
provision of this Agreement will be valid or effective unless made in writing
and signed by a duly authorized officer of each party.
6.8 WAIVER. No provision of this Agreement, unless such provision
otherwise provides, will be waived by any act, omission or knowledge of a party
or its agents or employees except by an instrument in writing expressly waiving
such provision and signed by a duly authorized officer of the waiving party.
6.9 SEVERABILITY. Any term or provision of this Agreement which is
invalid or unenforceable in any jurisdiction shall, as to that jurisdiction, be
ineffective to the extent of such invalidity or unenforceability without
rendering invalid or unenforceable the remaining terms and provisions of this
Agreement or affecting the validity or enforceability of any of the terms or
provisions of this Agreement in any other jurisdiction. If any provision of this
Agreement is so broad as to be unenforceable, the provision shall be interpreted
to be only so broad as is enforceable.
6.10 ENTIRE AGREEMENT. This Agreement and any documents delivered
by the parties in connection herewith constitute the entire agreement between
the parties with respect to the subject matter hereof and thereof and supersede
all prior agreements and understandings between the parties with respect
thereto. No addition to or modification of any provision of this Agreement shall
be binding upon either party hereto unless made in writing and signed by both
parties hereto.
6.11 OTHER AGREEMENTS. Except as expressly set forth in this
Agreement, nothing in this Agreement shall limit any of the rights, remedies or
obligations of the parties under any other agreement between SureBeam and
Licensee.
6.12 GOVERNING LAW. This Agreement shall be construed in accordance
with, and governed in all respects by, the internal laws of the State of
California (without giving effect to principles of conflicts of law).
6.13 COUNTERPARTS. This Agreement may be executed by the parties
hereto in separate counterparts, each of which when so executed and delivered
shall be an original, but all such counterparts shall together constitute one
and the same instrument.
6.14 CONSTRUCTION.
(a) Headings of the Sections of this Agreement are for
the convenience of the parties only, and shall be given no substantive or
interpretive effect whatsoever.
6.
(b) For purposes of this Agreement, whenever the context
requires: the singular number shall include the plural, and vice versa; the
masculine gender shall include the feminine and neuter genders; the feminine
gender shall include the masculine and neuter genders; and the neuter gender
shall include masculine and feminine genders.
(c) The parties hereto agree that any rule of
construction to the effect that ambiguities are to be resolved against the
drafting party shall not be applied in the construction or interpretation of
this Agreement.
(d) As used in this Agreement, the words "include" and
"including," and variations thereof, shall not be deemed to be terms of
limitation, but rather shall be deemed to be followed by the words "without
limitation."
(e) Except as otherwise indicated, all references in this
Agreement to "Sections" are intended to refer to Sections of this Agreement.
[THIS SPACE INTENTIONALLY LEFT BLANK]
7.
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement.
SB OPERATINGCO, INC.
a Delaware Corporation
By: /s/ Xxxxx X. Xxxxxxx
--------------------------------------
Print Name: Xxxxx X. Xxxxxxx
------------------------------
Title:
-----------------------------------
0000 Xxxxxxx Xxxx Xxxx
Xxx Xxxxx, Xxxxxxxxxx 00000-0000
Attention: Corporate Secretary
THE TITAN CORPORATION
a Delaware Corporation
By: /s/ Xxxxxxxx X. Xxxxxxxx
--------------------------------------
Print Name: Xxxxxxxx X. Xxxxxxxx
------------------------------
Title:
-----------------------------------
0000 Xxxxxxx Xxxx Xxxx
Xxx Xxxxx, Xxxxxxxxxx 00000-0000
Attn: Corporate Secretary
[LICENSE AGREEMENT SIGNATURE PAGE]
EXHIBIT A
DEFINITIONS
1. "Affiliate" means any entity that directly or indirectly Owns,
is Owned by or is under common Ownership, with a party to this Agreement, where
"Owns" or "Ownership" means direct or indirect possession of at least fifty
percent of the outstanding voting securities of a corporation or ]a comparable
equity interest in any other type of entity.
2. "Confidential Information" means any proprietary information
of a party, including information relating to the Patent Rights and Improvements
and Other Intellectual Property, and any information relating to any
discoveries, inventions, data, know-how, trade secrets, techniques, methods,
materials, data, patent and legal data or descriptions, research project, work
in process, future development, scientific, engineering, manufacturing,
marketing, business plan, financial or personnel matter relating to such party,
its present or future products, sales, suppliers, customers, employees,
investors or business, whether in oral, written, graphic or electronic form.
Notwithstanding the foregoing, Confidential Information will not include any
information that the receiving party can prove by competent written evidence:
(a) is now, or hereafter becomes, through no act or
failure to act on the part of the receiving party, generally known or available;
(b) is known to, and may be used without restriction by,
the receiving party at the time of receiving such information, as evidenced by
its records;
(c) is hereafter furnished to the receiving party by a
third party, as a matter of right and without restriction on disclosure;
(d) is independently developed by the receiving party
without the aid, application or use of proprietary information of the other
party then subject to the confidentiality or use restrictions of this Agreement
3. "Improvements" mean all inventions, data, know-how, methods,
materials or discoveries, whether patentable or not, conceived, discovered or
developed by employees or agents of SureBeam or Licensee, or their respective
Affiliates, either directly or indirectly through use of Patent Rights or Other
Intellectual Property.
4. "Patent Rights" means SureBeam's rights, either by ownership,
assignment or license with a right to sublicense, under the patents and patent
applications listed on Exhibit A-1 hereto and any patents and patent
applications claiming any Improvement. "Patent Rights" include, without
limitation, all rights under patents and patent applications, and any and all
patents issuing therefrom (including utility, model and design patents and
certificates of invention), together with any and all substitutions, extensions
(including supplemental protection certificates), registrations, confirmations,
reissues, divisionals, continuations, continuations-in-part, re-examinations,
renewals and foreign counterparts of the foregoing.
5. "Licensed Products" means any product made with, from, using,
practicing or incorporating all or any Patent Rights or Improvements or Other
Intellectual Property.
A-1.
6. "Other Intellectual Property" means SureBeam's rights, either
by ownership, assignment or license with a right to sublicense, under all
trademarks, trade dress, service marks, tradenames and brand names, trade
secrets, inventions, invention disclosures, mask-works and mask-work
registrations, know-how, discoveries, designs, copyrights, copyright
registrations and applications and works of authorship, in each case that are
not covered by the Patent Rights but are related to or used in electronic
pasteurization and food applications and also necessary or useful for medical
sterilization applications and that exist as of the Effective Date or relate to
any Improvement.
7. "Territory" means every country and territory worldwide.
A-2.
EXHIBIT X-0
XXXXXXXX XXXXXX XXXXXX
XXXXXX XXXXXX PATENTS
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TITLE OF PATENT PATENT NUMBER ISSUE DATE
--------------------------------------------------------------------------------------------------------------------
Tunable Narrowband Spectrometer with Acousto-Optical Tunable 5,438,406 8/1/95
Filter
--------------------------------------------------------------------------------------------------------------------
Tunable Spectrometer with Acousto-Optical Tunable Filter 5,444,528 8/22/95
--------------------------------------------------------------------------------------------------------------------
Article Carrier For Conveyor System 5,590,602 1/7/97
--------------------------------------------------------------------------------------------------------------------
Article Irradiation System in Which Article- 5,994,706 11/30/99
Transporting Conveyor is Closely Encompassed
By Shielding Material
--------------------------------------------------------------------------------------------------------------------
Irradiation System Utilizing Conveyor Transported 5,396,074 3/7/95
Article Carriers
--------------------------------------------------------------------------------------------------------------------
Access Assignment in a DAMA Communication System 5,197,125 3/23/93
--------------------------------------------------------------------------------------------------------------------
Acquisition Of Carrier Phase and Symbol Timing 5,544,200 8/6/96
Through Point Estimation Of Phase and Timing
Adjustments
--------------------------------------------------------------------------------------------------------------------
Communication Signal Detection and Acquisition 5,282,227 1/25/94
--------------------------------------------------------------------------------------------------------------------
Conversion of Analog SignalInto I and Q Digital 5,067,140 11/19/91
Signals With Enhanced Image Rejection
--------------------------------------------------------------------------------------------------------------------
UNITED STATES PATENT APPLICATIONS
---------------------------------------------------------------- ------------------------------ ----------------------
TITLE OF PATENT APPLICATON APPLICATION SERIAL NO. FILING DATE
---------------------------------------------------------------- ------------------------------ ----------------------
Apparatus For, And Method Of Sterilizing Products, Primarily 60/154,397 9/17/99
Food Products
---------------------------------------------------------------- ------------------------------ ----------------------
Apparatus For, And Methods Of, Sterilizing Products, Primarily 09/456,061 12/7/99
Food Products
---------------------------------------------------------------- ------------------------------ ----------------------
Article Irradiation System Having Intermediate Wall Of 09/102,942 6/23/98
Radiation Shielding Material Within Loop Of Conveyor System
That Transports The Articles
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A-1-1
INVENTION DISCLOSURE
---------------------------------------------------------------- -----------------------------------------------------
TITLE OF INVENTION DISCLOSURE INVENTORS
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System For, And Method Of, Irradiating Article With X-Xxx Xxxx Xxxx Xxxxxx Xxxxx; Xxxx X. Xxxx;
Xxxxxx X. Xxxxxxxx; Xxxxx X. Xxxxxxxx
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A-1-2
