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Exhibit 10.1
TECHNOLOGY LICENSE AGREEMENT /
This Agreement dated as of August 1, 1996, is by and between XxXxxx
Corporation ("XxXxxx"), a Delaware corporation, and Fluke Corporation
("Fluke"), a Washington corporation.
Each of XxXxxx and Fluke is in the business of manufacturing and
marketing DSOs and has considerable expertise pertaining to DSOs. Fluke
desires to incorporate in certain of its DSO products the high sampling rates
and bandwidths attainable by using the XxXxxx Technology, and in addition,
requires low-power operation for use in hand-held, battery-operated DSO
products. Subject to the terms and conditions of this Agreement, XxXxxx is
willing to license Fluke to use the XxXxxx Technology and the Improvements,
but only for use in certain defined fields of use.
Certain capitalized terms used and not otherwise defined on first usage
herein are defined in Article I hereof.
XxXxxx and Fluke hereby agree as follows:
ARTICLE I
CERTAIN DEFINITIONS
For purposes of this Agreement:
"Affiliate" means, with respect to either party, any Person directly or
indirectly controlling, controlled by, or under common control with such party.
For purposes of this definition, the term "control" (including its
correlatives), as used with respect to any party or other Person, refers to the
possession, directly or indirectly, of the power to direct the management or
policies of such party or other Person.
"Change of Control" means the acquisition by any third party (or group
of third parties acting together for the purpose of acquiring, holding, or
disposing of LeCroy's assets or voting securities) of all or substantially all
of the LeCroy's assets, or of at least such number of shares of LeCroy's voting
capital stock and/or other voting securities as is sufficient to elect at least
a majority of its Board of Directors.
"Confidentiality Agreement" means the confidentiality letter agreement
between XxXxxx and Fluke dated as of August 17, 1995, a copy of which is
attached hereto as Exhibit A.
"Cumulative Minimum Royalty" means, as of the end of each of the Third
through Seventh Years, the cumulative amount indicated in the following table:
Year Cumulative Minimum Royalty
Third Year
Fourth Year
Fifth Year //CONFIDENTIAL PORTION
Sixth Year OMITTED//
Seventh Year
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"Digital storage oscilloscope" or "DSO" means a stand-alone, self-
contained device that is capable of (i) capturing the amplitude of an
electrical signal versus time, (ii) digitizing and digitally storing (for any
period of time) either (A) numbers representing the amplitude of the input, or
(B) having processed such numbers, the results of such processing, and (iii)
displaying such electrical signal and/or the results of such processing;
provided, however, for purposes of this definition, that a device that is
capable of demodulating or decoding analog or digital communication protocols
as used in local area computer networks, wide area computer networks, and/or
wireless local area networks will not be considered a digital storage
oscilloscope or DSO for purposes of this Agreement.
"Fluke's Primary Field of Use" means hand-held, battery-operated DSOs
weighing less than 2.5 kilograms, having a sampling rate of not greater than
//CONFIDENTIAL PORTION OMITTED// samples per second, a bandwidth of
not greater than //CONFIDENTIAL PORTION OMITTED// megahertz, and a
maximum record length of not greater than //CONFIDENTIAL PORTION OMITTED//
sample points, and having a U.S. list price not to exceed//CONFIDENTIAL
PORTION OMITTED// (provided, that the parties agree to negotiate in good faith
with respect to the adjustment of such price limit in the event that the
Price Index as of the end of any calendar year is more than 8% greater than
it was as of the end of the previous calendar year).
"Fluke's Secondary Field of Use" means DSOs for bench use, having a
sampling rate of not greater than //CONFIDENTIAL PORTION OMITTED// samples per
second, a bandwidth of not greater than //CONFIDENTIAL PORTION OMITTED//
megahertz, and a maximum record length of not greater than //CONFIDENTIAL
PORTION OMITTED// sample points, and having a U.S. list price not to exceed
//CONFIDENTIAL PORTION OMITTED// (provided, that the parties agree to
negotiate in good faith with respect to the adjustment of such price limit in
the event that the Price Index as of the end of any calendar year is more than
8% greater than it was as of the end of the previous calendar year).
"Improvements" means any inventions, modifications, improvements, or
developments, regardless of whether patentable, relating to the XxXxxx
Technology and developed by Fluke, or by XxXxxx and Fluke jointly, after
February 16, 1996. The Improvements do not include any of the technologies
and intellectual properties listed in the schedule entitled "XxXxxx Pre-
Agreement Technology Development" attached to a letter dated August 20, 1996,
from Xxxxx Xxxxxx of XxXxxx to Xxxx xxx Xxxxxxxx and Xxxxxx X. Xxx of Fluke.
"XxXxxx Technology" means certain high-frequency sampling, analog
storage, and conversion technology that is covered in part by U.S. patents
//CONFIDENTIAL PORTION OMITTED// and foreign counterparts and in part by
related trade secrets. Specifically included are trade secrets, know-how,
and potentially patentable subject matter conceived by XxXxxx and specifically
identified to Fluke before the execution of this Agreement, including without
limitation the technologies and intellectual properties listed in the schedule
referred to in the preceding definition of "Improvements."
"Licensed Component" means an integrated circuit used in a DSO and
incorporating, or produced using, any of the XxXxxx Technology and/or any of
the Improvements. It is understood and agreed that the royalties payable by
Fluke to XxXxxx hereunder are based on an integrated circuit containing two
channels. It is further understood and agreed that a DSO may incorporate
multiple integrated circuits, each of which will be a "Licensed Component,"
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and in respect of each of which a separate royalty will be payable by Fluke
hereunder.
"Person" means any natural person, entity, or association, including
without limitation any corporation, partnership, limited liability company,
government (or agency or subdivision thereof), trust, joint venture, or
proprietorship.
"//CONFIDENTIAL PORTION OMITTED//" is an integrated circuit
design consultant firm, and is not a party to this Agreement.)
"Price Index" means the United States Producer Price Index for capital
goods, as published from time to time by the United States Bureau of Labor
Statistics.
"Quarter" means any Fluke fiscal quarter, which quarters end on or
about January 31, April 30, July 31, or October 31.
"Sell," "Sold," "Sale" and "Sales" refer to selling, licensing a
licensor, leasing as lessor, or otherwise transferring or disposing of Licensed
Components; provided, that for purposes of calculating the royalties and/or
Stipulated Liquidated Damages payable by either party hereunder, the transfer
or disposition by such party of a reasonable quantity of Licensed Components as
"demonstration" units will not constitute a Sale of such Licensed Components.
"Stipulated Liquidated Damages" means, with respect to each of the
Third through Seventh Years, the amount indicated in the following table:
Year Stipulated Liquidated Damages
Third Year
Fourth Year //CONFIDENTIAL PORTION
Fifth Year OMITTED//
Sixth Year
Seventh Year
"Use" means to make, have made, use, Sell, offer to Sell, and/or import
products or components incorporating or using the XxXxxx Technology and/or
Improvements.
"Year" means any twelve-month period beginning on August 1, 1996, or
any August 1 thereafter, and ending on the following July 31. Ordinal
references to Years refer to specific Years: The "First Year" is the Year
beginning on August 1, 1996; the "Second Year" is the Year beginning on
August 1, 1997; etc.
ARTICLE II
CONSULTING
2.01 For a period of at least 18 months following the date of this
Agreement, XxXxxx will make available to Fluke for a minimum of one day per
week the consulting services of //CONFIDENTIAL PORTION OMITTED// (or
if and to the extent that //CONFIDENTIAL PORTION OMITTED// is
unavailable to provide such services, such other person as XxXxxx and Fluke
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may agree upon), for purposes of assisting Fluke and //CONFIDENTIAL
PORTION OMITTED// in designing and developing a Licensed Component
having a high sampling rate and bandwidth and low power requirements, for
use in a hand-held, battery-operated Fluke DSO. Fluke will promptly
reimburse XxXxxx for such consultant's reasonable out-of-pocket expenses
(including travel and lodging, if applicable) incurred in connection with such
services, against appropriate documentation, but will not be obligated to pay
any further compensation for such consulting services.
ARTICLE III
INTELLECTUAL PROPERTY RIGHTS
3.01 Each party will retain all rights, titles, and interests in
and to any technology, regardless of whether protected or protectable by patent
or trade secret or otherwise, that it had prior to entering into this
Agreement. Without limiting the generality of the foregoing, XxXxxx will
retain all rights, titles, and interests in and to the XxXxxx Technology, and
Fluke will retain all rights, titles, and interests in and to any and all
technology owned by it.
3.02 Subject to the other terms and conditions of this Agreement
(including without limitation those of Sections 4.03(c) and 4.04(c) hereof),
and to Fluke's continuing compliance therewith (including without limitation
continuing satisfaction of the royalty provisions of Articles V-VII hereof),
during the term of this Agreement, XxXxxx will not Sell any of its technology
to any third party if XxXxxx has actual knowledge that such third party
intends to Use such technology in Fluke's Primary Field of Use.
3.03 XxXxxx and Fluke will own jointly all rights, titles, and
interests in any and all Improvements; provided, that nothing in such joint
ownership will entitle Fluke to Use the XxXxxx Technology except as
specifically provided in Section 4.01 hereof.
3.04 XxXxxx and Fluke will each have the worldwide right to file
applications for patents with respect to Improvements, and XxXxxx and Fluke
will jointly own all rights, titles, and interests in and to any resulting
patents. XxXxxx and Fluke will cooperate with each other to coordinate the
filing of any such patent applications and the maintenance of any resulting
patents; provided, that neither party will have any obligation to pay for any
patent application or related expenses except as the parties may specifically
agree.
3.05 Fluke will own all designs and mask works prepared by or for
it, provided, that in the event of any termination of the licenses set forth in
Section 4.01 hereof, Fluke will promptly deliver to XxXxxx or destroy (and
certify such destruction to XxXxxx) any such designs or mask works that
incorporate any of the XxXxxx Technology.
ARTICLE IV
LICENSES
4.01 Subject to the terms and conditions of this Agreement, XxXxxx
hereby grants to Fluke (i) the exclusive (subject to Sections 4.03(b) and
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4.04(b) hereof), worldwide, nontransferable license under the XxXxxx Technology
and any Improvements to make, have made, use, and Sell Licensed Components and
products containing Licensed Components worldwide in Fluke's Primary Field of
Use, and (ii) a non-exclusive, worldwide, nontransferable license under the
XxXxxx Technology and any Improvements to make, have made, use, and Sell
Licensed Components and products containing Licensed Components worldwide in
Fluke's Secondary Field of Use; in each case, either directly, by Fluke itself,
or indirectly, through any one or more of its wholly owned subsidiaries.
4.02 XxXxxx will xxxxx Xxxxx access to its confidential and
proprietary information (including information resident at //CONFIDENTIAL
PORTION OMITTED//) to the extent reasonably necessary to permit Fluke to learn
how best to practice the XxXxxx Technology and any Improvements.
4.03 Subject to Fluke's compliance with the provisions of this
Agreement (including without limitation the royalty provisions of Articles V
and VII hereof), the parties agree that (unless Fluke makes an election
pursuant to Section 11.02 hereof, in which case this Section 4.03 will not
apply) after the Seventh Year:
(a) The licenses granted to Fluke in Section 4.01 hereof
will be converted to paid-up licenses, and thereafter no further royalties will
be payable by Fluke hereunder in respect of its Sales of Licensed Components.
(b) The license granted to Fluke in Section 4.01(i) hereof
will be converted to a non-exclusive license, and thereafter XxXxxx will have
the right to Use the XxXxxx Technology in Fluke's Primary Field of Use.
XxXxxx will not Use any Improvements in Fluke's Primary Field of Use for a
period of three years following the end of the Seventh Year, but thereafter
will be free to use any Improvements in Fluke's Primary Field of Use.
(c) The restrictions on XxXxxx set forth in Section 3.02
hereof will terminate.
4.04 Notwithstanding any other provision of this Agreement, in the
event that, before the end of the Seventh Year and before any disclosure by
Fluke pursuant to Article XI hereof, XxXxxx undergoes a Change of Control,
then XxXxxx shall have the right and option, exercisable in its discretion by
written notice to Fluke within 90 days after the occurrence of such Change of
Control, to invoke the provisions of this Section 4.04; and if XxXxxx does so,
then from and after the effective date of such notice from XxXxxx to Fluke:
(a) The licenses granted to Fluke in Section 4.01 hereof
will be converted to paid-up licenses, and thereafter no further royalties will
be payable by Fluke hereunder in respect of its Sales of Licensed Components.
(b) The license granted to Fluke in Section 4.01(i) hereof
will be converted to a non-exclusive license, and thereafter XxXxxx will have
the right to Use the XxXxxx Technology and any Improvements in Fluke's Primary
Field of Use.
(c) The restrictions on XxXxxx set forth in Section 3.02
hereof will terminate.
(d) To compensate Fluke for the loss of exclusivity and the
termination of restrictions on XxXxxx referred to above, if with respect to any
of the Third Year through the Seventh Year, respectively, ending after the
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effective date of such notice from XxXxxx to Fluke, the following conditions
precedent are satisfied, then XxXxxx shall pay to Fluke as liquidated damages
in respect of such Year, an amount equal to the Stipulated Liquidated Damages
for such Year. The conditions precedent to the payment of such liquidated
damages in respect of any such Year are as follows:
(1) During such Year, Fluke Sells at least
//CONFIDENTIAL PORTION OMITTED// Licensed Components in Fluke's
Primary Field of Use; and
(2) During such Year, XxXxxx and/or any of its
licensees other than Fluke Sell(s) at least //CONFIDENTIAL PORTION OMITTED//
Licensed Components in Fluke's Primary Field of Use.
ARTICLE V
ROYALTIES
5.01 Subject to the provisions of Sections 4.03(a) and 4.04(a)
hereof, Fluke will pay XxXxxx a royalty in accordance with the following in
respect of each Licensed Component Sold by Fluke.
Licensed Components Royalty per Licensed Component
//CONFIDENTIAL PORTION OMITTED//
5.02 The foregoing royalty rates are incremental, such that Fluke
will pay XxXxxx a royalty of //CONFIDENTIAL PORTION OMITTED// in respect
of each of the first //CONFIDENTIAL PORTION OMITTED// Licensed Components
Sold by Fluke, a royalty of //CONFIDENTIAL PORTION OMITTED// in respect of
each of the next //CONFIDENTIAL PORTION OMITTED// Licensed Components Sold by
Fluke, etc.
5.03 Notwithstanding the foregoing, in the event that Fluke replaces
a Licensed Component under warranty and without additional charge, no royalty
will be payable by Fluke in respect of such replacement Licensed Component.
ARTICLE VI
ROYALTY REPORTS, ACCOUNTING
6.01 Fluke will furnish to XxXxxx, within 30 days after the end of
each Quarter, a written royalty report setting forth the number of Licensed
Components Sold by Fluke in such Quarter, and setting forth the calculation of
the royalties due to XxXxxx in respect thereof.
6.02 Subject to the provisions of Section 7.01 below, Fluke will
remit to XxXxxx with each royalty report the full amount of royalties, if any,
due in respect of Fluke's Sales of Licensed Components in the quarter covered
by such report.
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6.03 Fluke will keep complete and accurate records in sufficient
detail to enable the royalties payable by it hereunder to be determined, and
will not dispose of any of such records for at least one year after the
termination of this Agreement. XxXxxx will be permitted, at its expense, to
have an independent certified public accounting firm of its selection examine
each royalty report submitted by Fluke within six months after the date it is
received. Fluke will make available to such accounting firm, during normal
business hours at its place of business where such records are customarily
kept, all records pertinent to the verification of the report being examined.
Such accounting firm will maintain confidential all information of which it
learns in the course of examination of the other party's records, with the
exception that it may disclose to XxXxxx such information as directly relates
to Fluke's obligations to make royalty reports and payments. XxXxxx will be
responsible for such accounting firm's costs and expenses in connection with
any such examination, provided, that if any such examination discloses an
underpayment of royalties for any royalty period of at least 10%, then Fluke
will be responsible for all costs and expenses of such accounting firm in
connection with the examination of such period.
6.04 In the event that before the end of the Seventh Year, XxXxxx
undergoes a Change of Control and invokes the provisions of Section 4.04 hereof
in accordance with such section, then:
(a) Each of XxXxxx and Fluke will furnish to the other,
within 30 days after the end of each Year ending thereafter (to and including
the Seventh Year), a written report setting forth the number of Licensed
Components Sold by the reporting party in Fluke's Primary Field of Use in such
Year.
(b) By the later of 60 days after the end of any such Year
or 30 days after its receipt of any report from Fluke pursuant to Section
6.04(a) hereof, XxXxxx will remit to Fluke the full amount of liquidated
damages, if any, payable by XxXxxx to Fluke under Section 4.04(d) hereof in
respect of the Year covered by such report.
(c) Each of XxXxxx and Fluke will keep complete and
accurate records in sufficient detail to enable any liquidated damages payable
by XxXxxx under Section 4.04(d) hereof to be determined, and will not dispose
of any of such records for at least one year after the termination of this
Agreement. Each of XxXxxx and Fluke will be permitted, at its expense, to have
an independent certified public accounting firm of its selection examine each
report submitted by the other party pursuant to Section 6.04(a) hereof, within
six months after the date it is received. Each party will make available to
the other's accounting firm, during normal business hours at its place of
business where such records are customarily kept, all records pertinent to the
verification of the report being examined. Such accounting firm will maintain
confidential all information of which it learns in the course of examination
of the other party's records, with the exception that it may disclose to its
client such information as directly relates to the other party's reports. The
party engaging any such accounting firm will be responsible for such accounting
firm's costs and expenses in connection with any such examination, provided,
that if any such examination discloses an understatement by either party of
Licensed Components Sold in Fluke's Primary Field of Use in any Year of at
least 10%, then the understating party will be responsible for all costs and
expenses of such accounting firm in connection with the examination of such
Year.
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ARTICLE VII
MINIMUM ROYALTIES
7.01 In the event that the cumulative amount of royalties paid by
Fluke to XxXxxx hereunder as of the end of any of the Third through Seventh
Years (including the aggregate amount of all royalties paid by Fluke to XxXxxx
in respect of all previous Years and the amount of any royalties payable by
Fluke in respect of the last Quarter ending in such Year) is less than the
Cumulative Minimum Royalty as of the end of such Year, then Fluke, at its
option, will either (A) increase the amount of its royalty payment with respect
to the last Quarter ending in such Year by the amount of the shortfall, so that
the cumulative amount of all royalties received by XxXxxx from Fluke hereunder
as of the end of such Year will be at least equal to the Cumulative Minimum
Royalty as of the end of such Year, or (B) by written notice to XxXxxx not
later than 30 days after the end of such Year, terminate this Agreement, with
the consequences of termination set forth in Article XII hereof.
ARTICLE VIII
REPRESENTATIONS AND WARRANTIES; LIMITATIONS
8.01 Each of the parties represents and warrants to the other as
follows:
(a) It is a corporation duly organized and validly existing under
the laws of the State of Delaware, in the case of XxXxxx, or the State of
Washington, in the case of Fluke, and has full power to conduct its business as
currently conducted and contemplated hereunder and to execute, deliver, and
perform its obligations under this Agreement. All necessary corporate action
has been taken to enable it to execute and deliver this Agreement and perform
its obligations hereunder.
(b) No governmental or other third-party consent or approval not
already obtained and in effect is required in connection with its execution,
delivery, and performance of this Agreement.
(c) This Agreement is its binding obligation, enforceable in
accordance with its terms. It has the unencumbered right to enter into this
Agreement and to fulfill its duties hereunder. It is not, and will not become,
bound by any agreement in conflict herewith.
(d) In the case of XxXxxx only: It owns and has the right to
license the XxXxxx Technology as contemplated hereby, and to the best of its
knowledge, without infringing the intellectual property rights or other
proprietary rights of any other person or entity.
(e) In the case of Fluke only: All products sold by it that
incorporate the XxXxxx Technology and/or the Improvements will be
manufactured in compliance with all applicable laws and regulations.
EXCEPT FOR THE FOREGOING EXPRESS WARRANTIES AND SPECIFICATIONS, EACH
OF XXXXXX AND FLUKE DISCLAIMS ALL OTHER WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE. NEITHER XXXXXX NOR FLUKE WILL BE LIABLE FOR
LOSS OF PROFITS OR OTHER INCIDENTAL, CONSEQUENTIAL, INDIRECT, SPECIAL,
EXEMPLARY, PUNITIVE, OR OTHER SIMILAR DAMAGES ARISING UNDER OR IN CONNECTION
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WITH THIS AGREEMENT, WHETHER GROUNDED IN CONTRACT OR TORT (INCLUDING
NEGLIGENCE AND STRICT LIABILITY) OR OTHERWISE.
ARTICLE IX
INDEMNIFICATION
9.01 Each of the parties will defend, indemnify, and hold harmless
the other party and its Affiliates and their respective officers, directors,
employees, agents, successors, and permitted assigns, from and against any and
all claims, suits, damages, liabilities, costs, and expenses (whether based on
contract, tort, patent or other intellectual property infringement, product
liability, or otherwise, and whether or not groundless), including without
limitation court costs and reasonable attorneys' fees, arising out of, based
on, or relating to the breach of any representation, warranty, promise, or
agreement of the indemnifying party contained in this Agreement.
9.02 At its expense, XxXxxx will settle or defend and pay all
damages (except incidental and consequential damages) and costs finally awarded
in any action brought against Fluke, to the extent that (i) the action is based
on a claim that the XxXxxx Technology infringes any patent, mask work,
copyright, trade secret, or other intellectual property or similar proprietary
rights of any third party, and (ii) such infringement or alleged infringement
does not arise out of a combination of the XxXxxx Technology with, or the
addition of the XxXxxx Technology to, technologies, components, or products not
supplied by XxXxxx, or from any modification of the XxXxxx Technology.
9.03 At its expense, Fluke will settle or defend and pay all damages
and costs finally awarded in any action brought against XxXxxx based on a claim
of infringement of any patent, mask work, copyright, trade secret, or other
intellectual property or similar proprietary rights of any third party, but
only to the extent that:
(a) such infringement or alleged infringement is caused by a
combination by Fluke of the XxXxxx Technology or any Improvements with, or
the addition by Fluke of the XxXxxx Technology or any Improvements to,
technologies, components, or products not supplied by XxXxxx, or from any
modification by Fluke of the XxXxxx Technology or any Improvements, provided,
that such infringement or alleged infringement would not have occurred but for
such combination, addition, or modification by Fluke, and further provided,
that in any event, XxXxxx will have no right to indemnification from Fluke, and
will remain responsible to indemnify Fluke under Section 9.02 hereof, to the
extent that such infringement or alleged infringement is caused by the XxXxxx
Technology standing alone; and/or
(b) such claim is that by entering into and/or performing its
obligations under this Agreement (including without limitation by granting the
licenses set forth in Section 4.01 hereof or rendering consulting services to
Fluke pursuant to Section 2.01 hereof), XxXxxx has induced, aided, abetted, or
contributed to such infringement or alleged infringement; provided, that in any
event, XxXxxx will have no right to indemnification from Fluke, and will remain
responsible to indemnify Fluke under Section 9.02 hereof, to the extent that
such infringement or alleged infringement is caused by the XxXxxx Technology
standing alone.
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9.04 In the event that any Person entitled to indemnification
hereunder (an "Indemnified Party") desires to make a claim for indemnification
against a party hereto (the "Indemnifying Party," which term will include all
indemnifying parties if more than one) in connection with any third-party
litigation, arbitration, action, suit, proceeding, claim, or demand at any time
instituted against or made upon it for which it may seek indemnification
hereunder (a "Third-Party Claim"), the Indemnified Party will notify the
Indemnifying Party of such Third-Party Claim and of its claims of
indemnification with respect thereto, provided, that failure to give such
notice will not relieve the Indemnifying Party of its indemnification
obligations under this Article IX except to the extent, if at all, that the
Indemnifying Party will have been actually prejudiced thereby. Upon receipt of
such notice from the Indemnified Party, the Indemnifying Party will be entitled
to assume the defense of such Third-Party Claim, and in the case of such an
assumption the Indemnifying Party will have the authority to negotiate,
compromise, and settle such Third-Party Claim, provided, that the Indemnifying
Party will not agree to any settlement of such Third-Party Claim that does not
include an unconditional release of all liability of each Indemnified Party
with respect to such Third-Party Claim. The Indemnified Party will retain the
right to employ its own counsel and to participate in the defense of any
Third-Party Claim, the defense of which has been assumed by an Indemnifying
Party pursuant hereto, but such Indemnified Party will bear and will be solely
responsible for its own costs and expenses in connection with such
participation unless the representation of the Indemnifying Party and such
Indemnified Party by the same counsel would be inappropriate because of an
actual and substantial conflict of interest between such Persons.
ARTICLE X
CONFIDENTIALITY
10.01 A copy of the Confidentiality Agreement is attached hereto as
Exhibit A, and is incorporated by reference in this Agreement. Except as
otherwise specifically provided herein, the terms and conditions of the
Confidentiality Agreement will cover all proprietary and confidential
information disclosed by either of them to the other pursuant to this
Agreement.
ARTICLE XI
DUTY TO DISCLOSE DECISION TO
REPLACE LICENSED COMPONENT, ETC.
11.01 Fluke will disclose in writing to XxXxxx any actual or
anticipated significant slowdown in Fluke's program to design, manufacture,
market, and/or Sell Licensed Components, or any decision by Fluke to begin to
undertake the development of, or to begin seriously to pursue, any component
intended as to replace or otherwise substitute for the Licensed Components,
such disclosure to occur as soon as possible, but in any event within two
weeks, after Fluke becomes aware of such actual or anticipated slowdown, or
after such decision has been made, as the case may be, but unless Fluke make
an election pursuant to Section 11.02 hereof, the respective rights and
obligations of the parties hereunder will not be affected by reason of such
disclosure.
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11.02 Any disclosure by Fluke pursuant to Section 11.01 may contain
an election by Fluke to invoke the provisions of this Section 11.02, in which
case:
(a) The minimum royalty provisions of Article VII hereof will
terminate.
(b) The license granted to Fluke in Section 4.01 hereof will be
converted to a non-exclusive license, and thereafter XxXxxx will have the right
to Use the XxXxxx Technology and any Improvements in Fluke's Primary Field
of Use.
(c) The restrictions on XxXxxx set forth in Section 3.02 hereof
will terminate.
ARTICLE XII
TERM AND TERMINATION
12.01 If either party will at any time default in the payment of any
royalty or the making of any report hereunder, or will commit any breach of any
covenant herein contained, or will make any false report and will fail to
remedy any such default, breach, or report within thirty (30) days after
written notice thereof by the other party, this Agreement will be terminated as
though the breaching or defaulting party is the terminating party, and the
provisions of this Article XII will govern the rights and obligations of the
parties.
12.02 Upon any termination of this Agreement, except as specifically
otherwise provided herein, all rights and obligations of the parties, including
without limitation the licenses granted to Fluke in Section 4.01 hereof, will
immediately and automatically terminate; provided, that termination of this
Agreement will not affect the obligation of either party to perform obligations
incurred hereunder prior to such termination. Upon any termination of this
Agreement, Fluke will promptly return to XxXxxx (or destroy, and certify such
destruction to XxXxxx) all documents, computer files, and tangible embodiments
(including without limitation designs and mask works) of the XxXxxx
Technology and/or the Improvements that are in Fluke's possession or control,
except for any such documents or materials that are required to permit Fluke to
continue to service Licensed Components as permitted by Section 12.03(b)
hereof, which documents and materials will be so returned or destroyed
promptly following the expiration or termination of Fluke's rights under
Section 12.03(b) hereof.
12.03 Notwithstanding the foregoing or any other provision hereof, if
this Agreement terminates other than by reason of a material breach or default
by Fluke, then for a period of 90 days after such termination, then (a) Fluke
may continue to Sell Licensed Components that it may then have on hand, and may
complete production of and Sell any Licensed Components that it may then have
in the process of manufacture or assembly, provided, that Fluke pays all
royalties and submits all reports with respect to the sale of such Licensed
Components in accordance with all of the provisions of this Agreement, and
(b) Fluke may continue to Use the XxXxxx Technology and any Improvements for
a period of up to seven years following such termination, but only for purposes
of servicing Licensed Components Sold by Fluke before the termination of this
Agreement.
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12.04 The Confidentiality Agreement will survive any termination of
this Agreement. In addition, notwithstanding any other provision hereof, the
following rights and obligations will survive any termination of this Agreement
to the degree necessary to permit their complete fulfillment or discharge:
(a) LeCroy's right to receive or recover, and Fluke's obligation to pay,
royalties accrued or accruable for payment at the time of any termination.
(b) Fluke's obligation to maintain records and LeCroy's right to conduct
audits as provided in Article VI of this Agreement.
(c) Obligations of confidentiality provided for in Article X of this
Agreement.
(d) Any cause of action or claim of either party accrued or to accrue
because of any breach or default by the other party occurring before such
termination.
(e) Any other provision hereof that is specifically referred to herein as
surviving such termination.
12.05 Following any termination of this Agreement, then if XxXxxx so
elects, the parties will negotiate in good faith with respect to the sharing of
any mask sets and/or designs created by or for Fluke in connection with any
Licensed Component, and/or with respect to the purchase of components by
XxXxxx from Fluke, but neither party will have any obligation to enter into any
transaction or arrangement not completely satisfactory to it, in its sole
discretion.
ARTICLE XIII
ARBITRATION
13.01 The parties agree to work together in good faith to resolve any
disputes arising under this Agreement, and to explore resolution of the dispute
through methods of alternative dispute resolution. If the parties are unable
to resolve a dispute, it will be finally settled by a single arbitrator
mutually acceptable to the parties in arbitration administered by American
Arbitration Association in accordance with its commercial arbitration rules in
effect on the date hereof and the internal laws of the State of Illinois
(except that any dispute relating to the construction or effect of any patent
will be resolved under the applicable laws of the United States or such other
jurisdiction as granted such patent). Any such arbitration will take place in
Chicago, Illinois unless otherwise established by mutual agreement of the
parties. Judgment upon any award rendered by the arbitrator, if such award is
in accordance with applicable law and the terms of this Agreement, may be
entered in any court of competent jurisdiction.
ARTICLE XIV
MISCELLANEOUS
14.01 Notices. All notices, requests, payments, instructions, or
other documents to be given hereunder will be in writing or by written
telecommunication, and will be deemed to have been duly given if (i) delivered
13
personally (effective upon delivery), (ii) mailed by registered or certified
mail, return receipt requested, postage prepaid (effective five business days
after dispatch), (iii) sent by a reputable, established courier service that
guarantees next business day delivery (effective the next business day), or
(iv) sent by telecopier followed within 24 hours by confirmation by one of the
foregoing methods (effective upon receipt of the telecopy in complete, readable
form), addressed as follows (or to such other address as the recipient party
may have furnished to the sending party for the purpose pursuant to this
section):
(a) If to XxXxxx:
XxXxxx Corporation
000 Xxxxxxxx Xxxxx Xxxx
Xxxxxxxx Xxxxx, Xxx Xxxx 00000
Attention: Xxxxx Xxxxxx
Telecopier No. (000) 000-0000
(b) If to Fluke:
Fluke Corporation
Xxxxxxx 0, Xxxxxx, Xxx Xxxxxxxxxxx
Attention: Xxxx xxx Xxxxxxxx
Telecopier No. 011-31-5468-39584
14.02 Interest. All amounts payable under this Agreement, if not paid
when due, will bear interest from such due date to and including the date of
payment at a per annum rate two per cent (2%) above the base rate announced
by Chase Manhattan Bank as being in effect on the due date. The payment of
any such interest will not preclude the party entitled to receive such payment
from exercising any other rights it may have in consequence of the omission or
lateness of such payment.
14.03 Captions. The captions of sections or subsections of this
Agreement are for reference only and will not affect the interpretation or
construction of this Agreement.
14.04 Equitable Relief. Each of the parties hereby acknowledges that
any breach by it of its obligations under this Agreement would cause
substantial and irreparable damage to the other party, and that money damages
would be an inadequate remedy therefor, and accordingly, acknowledges and
agrees that the other party will be entitled to an injunction, specific
performance, and/or other equitable relief to prevent the breach of such
obligations.
14.05 Construction. The language used in this Agreement is the
language chosen by the parties to express their mutual intent, and no rule of
strict construction will be applied against either party.
14.06 Waivers. No waiver of any breach or default hereunder will be
valid unless in a writing signed by the waiving party. No failure or other
delay by any party exercising any right, power, or privilege hereunder will be
or operate as a waiver thereof, nor will any single or partial exercise thereof
preclude any other or further exercise thereof or the exercise of any other
right, power, or privilege.
14
14.07 Non-Solicitation. The parties agree that (i) during the term of
this Agreement, and for a period of one year thereafter, neither party will
solicit or hire engineering or technical personnel (or former personnel) of the
other party, and (ii) during the term of this Agreement, and for a period of
two years thereafter, Fluke will not solicit or hire engineering or technical
personnel (or former personnel) from //CONFIDENTIAL PORTION OMITTED//.
14.08 Entire Agreement. This Agreement, together with the
Confidentiality Agreement, constitutes the entire Agreement between the
parties with respect to the subject matter hereof and supersedes and terminates
all prior agreements, arrangements, understandings and communications,
whether oral or written, between them, including without limitation the
Memorandum of Understanding dated as of February 16, 1996, executed by the
parties.
14.09 Relationship of Parties. Nothing contained in this Agreement
will be deemed to create a joint venture, partnership, agency, or similar
endeavor or relationship between the parties. Each party will act solely as an
independent contractor and neither party will have or hold itself out as having
any right, power, or authority to bind or act on behalf of the other.
14.10 Counterparts. This Agreement may be executed by the parties in
separate counterparts, each of which when so executed and delivered will be an
original, but all of which together will constitute one and the same
instrument. In pleading or proving this Agreement, it will not be necessary to
produce or account for more than one such counterpart.
14.11 Further Assurances. From time to time after the execution and
delivery of this Agreement, each party will execute, acknowledge, and deliver
or file such further instruments and other documents, and will take all such
other actions, as the other party may reasonably request in order to carry out
the purposes and intent of this Agreement. Without prejudice to the generality
of the foregoing, in the event that it is determined, in accordance with the
laws of inventorship, that employees of (or Persons obliged to assign such
inventions to) XxXxxx and/or Fluke, respectively, are joint inventors of any
Improvements, then XxXxxx and/or Fluke, as the case may be, will cause such
employees orother Persons to execute and deliver or file all such applications,
instruments, and other documents, and otherwise to cooperate with the other
party, as theother party may reasonably request in connection with the filing
and prosecuting of any patent applications and the maintenance of any resulting
issued patents, to the end that the parties' joint ownership of all
Improvements and all patents with respect to Improvements will be jointly owned
by XxXxxx and Fluke as provided for in Section 3.03 hereof.
14.12 No Assignment, Etc. The rights and obligations of the parties
under this Agreement are personal to the parties. Neither party may assign its
rights or delegate its obligations hereunder without the written consent of the
other party, and any attempt to do so will be void and will be a material
breach of this Agreement entitling the other party, in addition to any other
remedies to which it may be entitled, to terminate this Agreement. A merger or
consolidation involving either party hereto (other than a merger or
consolidation involving a Change of Control, and other than a merger or
consolidation of a party solely with one or more of its wholly owned
subsidiaries) will be deemed to be an attempted assignment by that party for
purposes of this section.
15
14.13 Press Releases, etc. Following the execution and delivery of
this Agreement, the parties may cooperate with each other to create and issue
one or more mutually acceptable press releases with respect to this Agreement
and/or the transactions contemplated hereby, but neither party will have any
obligation to do so. Except as provided in the preceding sentence, then
subject to the remainder of this section, neither party will issue any press
release or other written public statement with respect to this Agreement or the
transactions contemplated hereby. Either party may file a copy of this
Agreement with the Securities and Exchange Commission (the "SEC") and/or
any other governmental authority, and may describe this Agreement and/or the
transactions contemplated hereby in any prospectus, report, application, or
similar document filed with the SEC or other governmental authority; provided,
that any party so filing or describing this Agreement or such transactions will
consult with the other party with respect to such disclosure and/or filing and
with respect to any request for confidential treatment to be made to the SEC or
such other governmental authority.
IN WITNESS WHEREOF, each of XxXxxx and Fluke has executed and
delivered this Agreement as an agreement under seal as of the date first above
written.
XXXXXX CORPORATION FLUKE CORPORATION
By /s/ Xxxx P. Henckels By /s/ Xxxx xxx Xxxxxxxx
Xxxx P. Henckels Xxxx xxx Xxxxxxxx
President and Division General Manager
Chief Executive Officer
/ Certain confidential portions of this agreement, marked
"//Confidential Portion Omitted//," have been omitted herefrom and filed
separately with the Securities Exchange Commission pursuant to Rule 24b-2
under the Securities Exchange Act of 1934, as amended.
