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EXHIBIT 10.9
PATENT LICENSE AGREEMENT
This Agreement made and entered into this 16 day of May, 1998, by and
between VTV, Incorporated, ("VTV") a Colorado Corporation, 0000 Xxxxxxxx, Xxxxx
0000, Xxxxxx, XX 00000, and Energy Partners, Ltd., ("EPL") a Delaware
corporation, having a principal place of business at 0000 Xxxxxxx, Xxxxx 0000,
Xxx Xxxxxxx, XX 00000.
ARTICLE I
GENERAL
1.01 VTV and EPL are hereafter occasionally referred to as the
"parties" (in singular or plural usage, as indicated by the context).
1.02 VTV owns an exclusive license in and to the D3DSP (Diagnostic
Three Dimensional Seismic Process) U.S. Patent No. 5671136, (the "Patent")
granted to VTV by the inventor, Xxxxx X. Xxxxxxxx, Xx. ("Xxxxxxxx"), pursuant to
the License Agreement attached hereto as Exhibit "A."
1.03 VTV represents that it is authorized and prepared in respect to
its exclusive license in and to the United States patent named in Section 1.02
above, to grant to any financially responsible applicant a nonexclusive
sub-license.
1.04 EPL is desirous of obtaining a nonexclusive license from VTV for
use of the D3DSP in certain of its activities relating to the exploration for
and development/exploitation of oil and gas reserves.
ARTICLE II
LICENSE GRANT
2.01 VTV grants to EPL a nonexclusive license to utilize the D3DSP in
EPL's oil and gas activities. EPL may not transfer, grant, convey, sell, or
assign to, or otherwise authorize the use of the D3DSP by, any other person,
firm or corporation, except as set forth in Section 5.01.
2.02 The term of the license granted hereby shall be perpetual.
2.03 EPL shall not own any right in or to the D3DSP, U.S. Patent No.
5671136, or any trade secret or other intellectual property right relating
thereto, by reason of this Agreement or otherwise. EPL shall have a shop right
to use any improvements to the D3DSP developed while Xxxxxxxx is an employee of
EPL.
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2.04 Any version of any image produced by the use of the D3DSP pursuant
to this nonexclusive license shall bear the legend "copyright VTV, Inc."
2.05 VTV shall have the right to publish without attribution any image
produced by EPL using the D3DSP subject to written approval by EPL, which shall
not be unreasonably withheld. VTV shall keep confidential any information
regarding EPL's business which is received as a result of this sub-license.
ARTICLE III
ROYALTIES AND EFFECTIVE DATE
3.01 EPL will pay to VTV for this nonexclusive license, the sum of one
dollar. This nonexclusive license agreement shall not become effective until
execution of the Employment Agreement between Xxxxxxxx and EPL.
3.02 EPL will make written reports to VTV annually from the date of
this agreement stating in each such report the extent of the use of the D3DSP by
EPL. Such reports will be kept confidential by VTV.
3.03 This agreement shall not become effective until execution of an
agreement in writing between Xxxxxxxx and VTV whereby Xxxxxxxx agrees to assign
and transfer to VTV all of his right, title and interest in and to any
unrestricted and freely-transferable common stock of EPL which Xxxxxxxx acquires
once any and all contractual, statutory and other legal restrictions applicable
to EPL common stock are no longer applicable.
ARTICLE IV
REPRESENTATIONS AND WARRANTIES; LIMITATIONS
4.01 Nothing in this agreement shall be construed as:
(a) A warranty or representation by either party as to the
validity or scope of any the Patent except as provided in
Section 4.03; or
(b) A warranty or representation that anything made by VTV,
used, sold, or otherwise disposed of under any license granted
in this agreement is or will be free of infringement of
patents of third persons; or
(c) A requirement that either party shall file any patent
application, secure any patent; or
(d) An obligation to bring or prosecute actions or suits
against third parties for infringement of any patent; or
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(e) An obligation to furnish any manufacturing or technical
information, or any information concerning pending patent
applications; or
(f) Conferring a right to use in advertising, publicity, or
otherwise any trademark or tradename of the party from which a
license is received under the agreement; or
(g) Granting by implication, estoppel, or otherwise, any
licenses or rights under patents other than the Patent.
4.02 Neither party makes any representations, extends any warranties of
any kind, either express or implied, or assumes any responsibilities whatever
with respect to use, sale, or other disposition by the other party of products
incorporating or made by use of inventions licensed under this agreement.
4.03 VTV represents and warrants that it is the exclusive licensee of
the D3DSP Patent and that the Patent is issued and is valid. VTV represents that
VTV is not aware of any alleged patent infringement and will notify EPL
immediately of any allegation of infringement.
4.04 VTV indemnifies EPL from and against any claims for loss or damage
by The Louisiana Land and Exploration Company ("LL&E"), or its successor in
interest, Burlington Resources relating to that certain Agreement between VTV
and LL&E dated January 16, 1997. VTV indemnifies EPL from and against any and
all claims, damages, demands, and causes of action relating to any infringement
or alleged infringement of any patent or other intellectual property right
incurred or brought against EPL arising from this Agreement.
ARTICLE V
TRANSFERABILITY OF RIGHTS AND OBLIGATIONS
5.01 Any license or release granted in this agreement by a party in
respect to the Patent shall be binding upon and inure to the benefit of any
successor of the parties.
5.02 The obligations of EPL to make reports, and maintain records as
provided herein in respect to any subsisting license under this agreement shall
run in favor of any person or legal entity which is a successor or assignee of
EPL in respect to EPL's benefits under the agreement. EPL shall not transfer or
assign its rights under this Agreement without the prior written consent of VTV,
which will not be unreasonably withheld, except as provided in Section 5.01.
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5.03 The license received by any party under this agreement shall pass
to any assigns for the benefit of creditors of the licensed party, and to any
receiver of its assets, or to any person or corporation succeeding to its entire
business in licensed products as a result of sale, consolidation,
reorganization, or otherwise, provided such assignee, receiver, person, or legal
entity shall, without delay, accept in writing the provisions of this agreement
and agree to become in all respects bound thereby in the place and stead of the
licensed party, but may not otherwise be transferred without the written consent
of the licensing party.
ARTICLE VI
TERM AND TERMINATION
6.01 VTV may terminate this agreement in the event of a default by EPL
in the due observance or performance of any covenant, condition, or limitation
of this License Agreement required to be performed by EPL.
ARTICLE VII
NOTICES, APPLICABLE LAW; ARBITRATION
7.01 Any notice, report, or payment provided for in this agreement
shall be deemed sufficiently given when sent by certified or registered mail
addressed to the party for whom intended at the address given at the outset of
this agreement or at such changed address as the party shall have specified by
written notice.
7.02 This agreement shall be construed, interpreted, and applied in
accordance with the laws of the State of Colorado. The parties agree that the
courts of Colorado shall have jurisdiction over the parties and the subject
matter of any dispute that arises hereunder or otherwise.
7.03 Any controversy or claim arising under or related to this contract
insofar as it involves or is limited to a question of infringement of any claim
or claims of the Patent shall be settled by arbitration in accordance with the
Patent Arbitration Rules of the American Arbitration Association before a single
arbitrator selected in accordance with those rules, and judgment upon the award
rendered by the arbitrator may be entered in any court having jurisdiction
thereof.
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ARTICLE VIII
INTEGRATION
8.01 This instrument contains the entire and only agreement between the
parties and supersedes all preexisting agreements between them respecting its
subject matter. Any representation, promise, or condition in connection with
such subject matter which is not incorporated in this agreement shall not be
binding upon either party. No modification, renewal, extension, waiver, and
(except as provided in Article VI hereof) no termination of this agreement or
any of its provision shall be binding upon the party against whom enforcement of
such modification, renewal, extension, waiver or termination is sought, unless
made in writing and signed on behalf of such party by one of its executive
officers. As used herein, the word "termination" includes any and all means of
bringing to an end prior to its expiration by its own terms this agreement, or
any provision thereof, whether by release, discharge, abandonment, or otherwise.
IN WITNESS WHEREOF, each of the parties has caused this agreement to be
executed and duly sealed in duplicate originals by its duly authorized
representative.
VTV, INCORPORATED
By
/s/ XXXXXXX X. XXXXX
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President
Attest:
(SEAL)
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Secretary
ENERGY PARTNERS, LTD.
By
/s/ XXXXXXX X. XXXXXXXX
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President
Attest:
/s/ XXXX XXXXXXXX (SEAL)
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Secretary
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