[EXHIBIT 10.20- Certain portions of this document have been
omitted in the publicly filed version of this document pursuant
to the Registrant's request for confidential treatment and filed
separately with the Securities and Exchange Commission.]
DISPLAY LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
XXXXX XXXXXXXX CORPORATION
This License Agreement ("Agreement") effective as of
November 29, 2001 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
XXXXX XXXXXXXX CORPORATION, a Delaware corporation
("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to
Light Valves and Licensed Products (both as hereinafter defined)
and of methods and apparatus relating to products incorporating
such concepts; and is possessed of and can convey information and
know-how for such products and rights to manufacture, use and
sell such products; and
WHEREAS, LICENSEE is interested in manufacturing and
selling Licensed Products; and
WHEREAS, LICENSEE desires to acquire from LICENSOR,
and LICENSOR desires to grant to LICENSEE, certain rights and
licenses with respect to such technology of LICENSOR;
NOW, THEREFORE, in consideration of the premises and
the mutual covenants herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the
respective meanings set forth in this Article 1.
The "Effective Date" of this Agreement shall be the date which is
the last date of formal execution of this Agreement by duly
authorized representatives of the parties to this Agreement as
indicated on the signature page of this Agreement.
"Licensed Product" means a Light Valve (as defined below) having
means for changing the light transmission of a suspension in part
and only part of the area of a cell that is to be viewed, said part
forming a display of a pattern, image, letters, numerals or other
indicia, which Light Valve is intended for use and used solely to
convey information in a display such as a low-information-content
display, and which information display is not for use in a
television, or laptop, notebook or subnotebook computer, personal
digital assistant, cellular telephone, electronic book, or other
portable information appliance used to convey high-information-
content. The term "Licensed Product" shall not include Light
Valves used or intended for use as or in any other type of display
product or in any non-display product such as but not limited to
windows, eyewear, goggles, visors, mirrors, toys or filters for
scientific instruments, lamps or contrast enhancement of displays.
Nothing contained herein shall permit LICENSEE to sell, lease, or
otherwise dispose of a Light Valve or Light Valve Component
which is not used or combined or intended to be used or combined
as described above into a Licensed Product.
"Licensed Territory " means all countries of the world.
"Light Valve" means a variable light transmission device
comprising: a cell including cell walls, containing or adapted to
contain an activatable material, described hereinafter, such that a
change in the optical characteristics of the activatable material
affects the characteristics of light absorbed by, transmitted through
and/or reflected from the cell; means incorporated in or on the cell,
or separate therefrom for applying an electric or magnetic field to
the activatable material within the cell; and coatings, (including,
but not limited to, electrodes), spacers, seals, electrical and/or
electronic components, and other elements incorporated in or on
the cell. The activatable material, which the cell contains or is
adapted to contain, includes in it solid suspended particles, which
when subjected to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of the device, and
may be in the form a liquid suspension, gel, film or other material.
Light Valve, as defined herein, is described in a family of patents
and patent applications listed on Schedule A hereto which have
been assigned to LICENSOR.
"Light Valve Component" means a component of a Light Valve
covered by any patent, patent application or trade secret of
LICENSOR or any of its licensees (other than LICENSEE) and
their respective sublicensees. A Light Valve Component does not
include a cell wall or materials comprising a cell wall; means
incorporated in or on the cell, or separate therefrom for applying
an electric or magnetic field to the activatable material within the
cell; and coatings (including, but not limited to, electrodes),
spacers, seals, electrical and/or electronic components,
incorporated in or on the cell.
The "Net Selling Price" of Licensed Products on which royalties
are payable shall be the greater of the following: (A) the genuine
selling price of LICENSEE and its sublicensees hereunder
(including amounts charged for any wiring, installation, and
related services provided by LICENSEE and its sublicensees
hereunder) f.o.b. factory at which nonaffiliated customers are
billed in the usual course of business for Licensed Products, as
packed for shipment to the customer; (B) the genuine selling price
of LICENSEE and its sublicensees hereunder (including amounts
charged for any wiring, installation, and related services provided
by LICENSEE and its sublicensees hereunder) f.o.b. factory at
which nonaffiliated customers are billed in the usual course of
business for Licensed Products, as packed for shipment to the
customer, multiplied by a fraction, the numerator of which is the
cost of all components included in the display, and the
denominator of which is the total manufacturing cost for such
product; and (C) $25 per square foot for "large displays" (greater
than six square inches) and $1 per square foot for "small displays"
(surface area less than six square inches). The aforementioned $25
and $1 figures specified in clause (C) above shall be adjusted
upward as of each January 1st hereafter beginning on January 1,
2003 by any increase in the Producer Price Index for Electronic
Components and Accessories (the "Index") for the 12 month period
ending in December of the prior year, prepared by the Bureau of
Labor Statistics of the United States Department of Labor (or if the
Index is not then being published, the most nearly comparable
successor index). In calculating a genuine selling price of a
product for the above calculation, such price may be reduced only
by the applicable proportions of the following if, and to the extent
that, amounts in respect thereof are reflected in such selling price:
(i) normal trade discounts actually allowed; (ii) sales, use or excise
and added value taxes and custom duties paid; (iii) if the genuine
selling price is other than f.o.b. factory, amounts paid for f.o.b.
transportation of the product to the customer's premises or place
of installation or delivery; (iv) insurance costs and the costs of
packing material, boxes, cartons and crates required for shipping;
provided, however, that for purposes of this calculation, the
genuine selling price of a product may not be less than 90% of the
gross selling price of said product after all deductions therefrom,
if any. If a product is leased, sold, used or otherwise disposed of
on terms not involving a bona fide arm's length sale to an
unaffiliated third party, then the Net Selling Price for such
transactions shall be deemed to be the Net Selling Price as defined
above for identical products sold to a nonaffiliated customer
nearest to the date of such lease, sale, use, or other disposition.
"Technical Information" means all useful information relating to
apparatus, methods, processes, practices, formulas, techniques,
procedures, patterns, ingredients, designs and the like including
(by way of example) drawings, written recitations of data,
specifications, parts, lists, assembly procedures, operating and
maintenance manuals, test and other technical reports, know-how
of LICENSOR, and the like owned or controlled by LICENSOR,
to the extent they exist, that relate to Light Valves, Licensed
Products and/or to the suspensions or other Light Valve
Components used or usable for Licensed Products or Light Valves
including, but not limited to, particles, particle precursors,
coatings, polymers, liquid suspensions and suspending liquids, or
any combination thereof, and that consist of concepts invented or
developed by LICENSOR. Know-how of LICENSOR's suppliers
and of LICENSOR's other licensees and their sublicensees under
licenses from LICENSOR shall not be considered Technical
Information owned or controlled by LICENSOR.
2 GRANT OF LICENSE.
2.1 License. During the term of this Agreement, LICENSOR
hereby grants LICENSEE (and to any majority or wholly-owned
and controlled subsidiaries of LICENSEE so long as they remain
so owned and controlled, whose obligations to LICENSOR
hereunder LICENSEE hereby guarantees and whose sales are
accounted for to LICENSOR by LICENSEE, and which
acknowledge in writing to LICENSOR that it agrees to be bound
by the terms and conditions of this Agreement) a non-exclusive
right and license to use (a) all of the Technical Information, if any,
(subject to Section 8.1 hereof), furnished by LICENSOR pursuant
to this Agreement, and (b) any invention claimed in (i) any of the
unexpired patents now or hereafter listed on Schedule A attached
hereto or (ii) unexpired patents which issue from pending patent
applications now or hereafter listed in Schedule A, and any
continuations, continuations-in-part, divisions, reissues,
reexaminations, or extensions thereof to develop, make, have
made, market, import, have imported, offer for sale and sell
Licensed Products in the Licensed Territory.
2.2 No Other Rights. LICENSEE agrees that, except for the
specific licenses granted to it under Section 2.1 hereof for use in
Licensed Products, LICENSEE has not acquired any rights or
licenses under this Agreement to use Light Valves or any Light
Valve Components thereof made by or for LICENSEE or its
sublicensees pursuant to this Agreement.
3 ROYALTY PAYMENTS, REPORTS AND RECORD-
KEEPING.
3.1 Royalties and Reports on Net Sales. During the term of
this Agreement, LICENSEE agrees to pay LICENSOR an earned
royalty which shall be five percent (5%) of the Net Selling Price
of Licensed Products which embody, or the manufacture of which
utilizes, any of the rights granted under Section 2.1 hereof, and
which are manufactured by or for LICENSEE and sold or leased
by or for LICENSEE or a permitted sublicensee. Payments under
this Section 3.1 shall be made on a quarterly basis and made within
45 days after the end of the calendar quarter in which such
Licensed Products were sold, leased, used or otherwise disposed
of by or for LICENSEE or a permitted sublicensee hereunder.
Each royalty payment shall be in U.S. dollars and shall be
accompanied by a statement by LICENSEE showing in reasonable
detail the amount of Licensed Products sold, used, leased or
otherwise disposed of by or for LICENSEE and its sublicensees
during the preceding quarter, any deductions taken or credits
applied, and the currency exchange rate used to report sales made
in currencies other than U.S. dollars. LICENSEE shall use the
exchange rates for buying U.S. dollars in effect on the last day of
each quarter, as specified in The New York Times. The first such
statement shall cover the period from the Effective Date of this
Agreement to the end of the first calendar quarter in which a
Licensed Product is sold, used, leased or otherwise disposed of by
or for LICENSEE or its sublicensees. LICENSEE shall also
furnish to LICENSOR at the same time it becomes available to any
third party, a copy of each brochure, price list, advertisement or
other marketing and promotional materials prepared, published or
distributed by LICENSEE or its sublicensees relating to Licensed
Products.
3.2 Initial Fee and Minimum Annual Royalties - Regardless
of whether LICENSEE is selling any Licensed Products, during the
term of this Agreement LICENSEE agrees to pay LICENSOR the
initial license fee of [Confidential Information Omitted and filed
separately with the Securities and Exchange Commission]
3.3 Time and Method of Payment. [Confidential Information
Omitted and filed separately with the Securities and Exchange
Commission]
All other payments shall be due on the date specified in this
Agreement, or if no date is specified, within 30 days of invoice.
All payments made to LICENSOR shall be paid by wire transfer
of immediately available funds to the account of Research
Frontiers Incorporated at Chase Manhattan Bank, 0000 Xxx
Xxxxxxx Xxxx, Xxxxxxxxx, Xxx Xxxx 00000, Account No.: 904-
709361, ABA Wire Code No.: 021 000 021, or to such other
account or place, as LICENSOR may specify in a notice to
LICENSEE.
3.4 Sales, Use and Returns. Licensed Products shall be
considered as sold or leased and royalties shall accrue on the
earlier of when such Licensed Products are billed out, or when
delivered, shipped or mailed to the customer. If as a result of a
price reduction or a return of Licensed Products previously sold,
a credit or refund to a customer is given on part or all of the sale
price of such Licensed Products, a credit shall be allowed against
royalties accruing thereafter under this Agreement equal to the
royalty paid on that part of the sales price so credited or refunded.
3.5 Recordkeeping. LICENSEE shall keep and shall cause
each sublicensee to keep for six (6) years after the date of
submission of each statement supported thereby, true and accurate
records, files and books of accounts that relate to Licensed
Products, all data reasonably required for the full computation and
verification of the Net Selling Price of Licensed Products,
deductions therefrom and royalties to be paid, as well as the other
information to be given in the statements herein provided for, and
shall permit LICENSOR or its duly authorized representatives,
upon reasonable notice, adequately to inspect the same at any time
during usual business hours. LICENSOR and LICENSEE agree
that an independent certified public accounting firm (selected by
LICENSOR from the largest ten certified public accounting firms
in the United States of America) may audit such records, files and
books of accounts to determine the accuracy of the statements
given by LICENSEE pursuant to Section 3.1 hereof. Such an audit
shall be made upon reasonable advance notice to LICENSEE and
during usual business hours no more frequently than annually. The
cost of the audit shall be borne by LICENSOR, unless the audit
shall disclose a breach by LICENSEE of any term of this
Agreement, or an underpayment error in excess of five percent of
the total monies paid to LICENSOR by LICENSEE during the
audited period, in which case LICENSEE shall bear the full cost
of such audit. LICENSEE agrees to pay LICENSOR all additional
monies that are disclosed by the audit to be due and owing to
LICENSOR within thirty days of the receipt of the report.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without limitation,
any manufacture, sale, lease, use or other disposition of Licensed
Products that is not in strict accordance with the provisions of this
Agreement shall be deemed a material breach of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products to whom Licensed Products is
sold, leased, or otherwise disposed of by LICENSEE or its
sublicensees, to look only to LICENSEE and not to LICENSOR or
its affiliates for any claims, warranties, or liability relating to such
Licensed Products. LICENSEE agrees to take all steps to
reasonably assure itself that Licensed Products sold, leased or
otherwise disposed of by or for LICENSEE is being used for
permitted purposes only.
4.3 Laws and Regulations. LICENSEE agrees that it shall be
solely responsible for complying with all laws and regulations
affecting the manufacture, use and sale or other disposition of
Licensed Products by LICENSEE and its sublicensees, and for
obtaining all approvals necessary from governmental agencies and
other entities. LICENSEE agrees to maintain a file of all such
approvals and to send LICENSOR a copy of all such approvals
(including English translations thereof in the case of approvals
required by any foreign country, which English translations, if not
otherwise prepared by or for LICENSEE, shall be prepared at
LICENSOR's request and expense) within 10 business days of any
written request for such copies by LICENSOR. LICENSEE
represents and warrants to LICENSOR that no approval from any
governmental agency or ministry, or from any third party, is
required to effectuate the terms of this Agreement or the
transactions contemplated hereby.
4.4 Purchase of Light Valve Components from Others. By
virtue of the disclosure of Technical Information and information,
if any, provided from time to time by LICENSOR to LICENSEE
and to its other licensees, and each of their sublicensees and
affiliates, any Light Valve Component, including, without
limitation, materials, suspensions, films, polymers, coatings,
particle precursors, and particles, which LICENSEE or its
sublicensees makes, has made for it, or purchases from any third
party for use in Licensed Products shall be deemed to have been
manufactured at least in part using the Technical Information
provided by LICENSOR if LICENSEE or any supplier of a Light
Valve Component to LICENSEE has had access to Technical
Information of any kind of LICENSOR or its licensees and their
sublicensees, consultants, subcontractors, agents or representatives.
LICENSEE and its sublicensees each hereby agrees that (i) all
Light Valve Components shall be used only in strict accordance
with the provisions of this Agreement, and that such Light Valve
Components may not be used for any other purpose or resold by
LICENSEE or its sublicensees except as specifically permitted by
the license granted in Section 2.1 hereof, and (ii) LICENSEE and
its sublicensees will only look to the manufacturer or supplier of
such Light Valve Component or other item used by LICENSEE or
its sublicensees and not to LICENSOR or its affiliates for any
claims, warranties, or liability relating to such Light Valve
Component or other item. LICENSEE acknowledges that
LICENSOR has not made any representations or warranties
regarding the availability of any Light Valve Component, or the
price thereof, and that in all respects LICENSEE shall deal directly
with the suppliers of such Light Valve Components and will obtain
from them information regarding availability, pricing, and/or other
terms relating to such Light Valve Components.
4.5 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance of any Licensed Product or
of any material, Light Valve Component, or information provided
hereunder, and LICENSEE expressly acknowledges and agrees
that any such material, Light Valve Component or information
provided by LICENSOR hereunder is provided "AS IS" and that
LICENSOR makes no warranty with respect thereto and
DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO THE IMPLIED
WARRANTIES OF MERCHANTABILITY AND FITNESS FOR
A PARTICULAR PURPOSE, WITH RESPECT THERETO, ITS
USE OR ANY INABILITY TO USE IT, OR THE RESULTS OF
ITS USE. Except for any breach of the terms of this Agreement, in
no event shall any party to this Agreement be liable for any
damages, whether in contract or tort (including negligence),
including but not limited to direct, consequential, special,
exemplary, incidental and indirect damages, arising out of or in
connection with this Agreement or the use, the results of use, or the
inability to use any Licensed Product, material, Light Valve
Component or information provided hereunder.
4.6 Analysis. LICENSEE represents and agrees that it will
only incorporate Light Valve Components received from
authorized suppliers into Licensed Products and for no other
purpose, and that LICENSEE will not directly or indirectly
attempt to reverse-engineer any material provided to it hereunder
by LICENSEE or any supplier of any Light Valve Component.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for Licensed Products or other products
incorporating Light Valves are and shall remain the exclusive
property of the adopting party, and the other party shall not obtain
any rights and license to such marks under this Agreement, but
may inform others that the adopting party has licensed or produced
Licensed Products or products incorporating Light Valves under
such xxxx or marks, and may use the adopting party's logo in
connection therewith. LICENSOR may require LICENSEE or its
permitted sublicensees to indicate on packaging that such product
is licensed from Research Frontiers Incorporated or to otherwise
include language and/or designations mutually agreed to in writing
by LICENSOR and LICENSEE indicating an affiliation with
Research Frontiers Incorporated. LICENSEE agrees that it will not
unreasonably withhold or delay its agreement regarding any such
designation, and agrees to use LICENSOR approved logos and
artwork in connection with any designation or packaging
requirement under this Agreement for LICENSOR's quality-
control purposes.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times ample
product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement.
6.2 Indemnification. LICENSEE, and its affiliates,
successors and assigns and sublicensees (each, an "Indemnifying
Party"), each hereby indemnify and agree to hold harmless
LICENSOR and its shareholders, officers, directors, agents and
employees (each, an "Indemnified Party"), against any liability,
damage, loss, fine, penalty, claim, cost or expense (including
reasonable costs of investigation and settlement and attorneys',
accountants' and other experts' fees and expenses) arising out of
any action or inaction by any Indemnifying Party relating to this
Agreement including an Indemnifying Party's manufacture, sale,
use, lease or other disposition of Licensed Products, and related
materials, or other use of the information and rights granted
hereunder. Any knowledge of LICENSEE's or its sublicensee's
activities by LICENSOR or its representatives shall in no way
impose any liability on LICENSOR or reduce the responsibilities
of LICENSEE hereunder or relieve it from any of its obligations
and warranties under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the
right to file patent applications in the United States and in foreign
countries covering any invention made by such party.
7.2 Improvements and Modifications. (a) Any future
improvements or modifications invented or developed by or on
behalf of LICENSEE, LICENSEE's sublicensees and LICENSOR
after the Effective Date of this Agreement, if any, which relate to
Light Valves or Light Valve Components shall not be included in
this Agreement. Upon written request by the non-inventing party,
LICENSOR and LICENSEE shall negotiate with each other
regarding the grant of nonexclusive rights and licenses to use such
improvements and modifications, but neither party shall be
obligated to grant such rights and licenses to one another.
(b) During the term of this Agreement each of the parties
hereto agrees to inform the other in writing (without any obligation
to reveal details which would be confidential information), at least
as frequently as once a year in January of each calendar year, if
any significant improvements or modifications have been made by
LICENSOR or LICENSEE relating to Light Valves and Light
Valve Components, and as to the general nature of any such
improvements and modifications.
(c) Notwithstanding the foregoing, LICENSOR may, but shall
not be required to, voluntarily and without additional cost to
LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE rights
in such certain future improvements and modifications, and any
information so disclosed will be considered Technical Information
which LICENSEE shall be obligated to keep confidential pursuant
to Section 12.1 of this Agreement. In connection therewith,
LICENSOR, may voluntarily add patents and/or patent
applications to Schedule A hereof. No disclosure of any
information by LICENSOR shall in any way establish a course of
dealing or otherwise require LICENSOR to make any future
disclosure of information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that any
patent application now or hereafter listed on or incorporated into
Schedule A shall be filed or maintained in any foreign country
included in the Licensed Territory. If so designated and if legally
possible to do so, LICENSOR agrees to promptly file, prosecute
and maintain such applications and resulting patents, and
LICENSEE shall pay to LICENSOR the complete cost, including
reasonable attorney's fees, to file, prosecute and maintain any such
patent application and resulting patents specifically so designated
by LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. Materials. Upon request by LICENSEE, during the term
of this Agreement and when mutually convenient to LICENSOR
and LICENSEE, LICENSOR shall supply LICENSEE with small
quantities of materials related to Licensed Products for
experimental use only by LICENSEE, and shall charge
LICENSEE $750 per man/day plus the cost of any other materials
used in making such materials, plus the cost of shipping such
materials to LICENSEE. Each invoice submitted by LICENSOR
for such service shall include detailed explanations of the charges,
and, if requested by LICENSEE, copies of receipts. The parties
acknowledge that LICENSOR has no obligation to transfer to
LICENSEE any Technical Information other than as may be
embodied in such sample materials or general information
possessed by LICENSOR as to how to apply LICENSOR's
technology to Licensed Products, and that, other than sample
materials, if any, that may be supplied by LICENSOR as aforesaid,
LICENSEE will be acquiring materials from authorized suppliers
other than LICENSOR.
8.2 Inquiries. LICENSEE and LICENSOR may also at any
time during the term of this Agreement make reasonable inquiry
by telephone, facsimile or mail to one another in regard to any
information or data furnished pursuant to this Agreement.
8.3 Visits. During all visits by either party to the facilities of
the other party, visitors shall comply with all reasonable rules of
the host company, and each party to this Agreement will indemnify
and hold the other party harmless from any liability, claim or loss
whatsoever (i) for any injury to, or, death of, any of its employees
or agents while such persons are present at the facility of the other
party; and (ii) for any damages to its own property or to the
property of any such employee or agent which may occur during
the presence of any such person at the facility of the other party,
regardless of how such damage occurs, if the rules of the host are
followed.
8.4 Sole Purpose. Any documentation or information
supplied pursuant to this Agreement by either party to the other
shall be used solely for the purposes set forth in this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION
RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall provide
appropriate notices of patents, or other similar notice of the patent
rights of the other party on all products utilizing the patented
inventions of the other party, upon receipt of detailed instructions
from the other party. Either party may add its own patent notice
to any copy or embodiment which contains its patented inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be, and LICENSOR
warrants and represents to LICENSEE that (except as otherwise
provided in Schedule A), it owns, controls, or has rights in the
patents and patent applications listed on Schedule A. Except for
the rights granted hereunder, LICENSEE shall not have any rights
or attempt to assert any ownership rights in and to those patents
and patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement shall extend from the
Effective Date of this Agreement to the date of termination of this
Agreement. Unless sooner terminated or extended, as herein
provided for below, this Agreement shall terminate upon the
expiration of the later of (A) the last to expire of the patents now
or hereafter listed in Schedule A hereof, and (B) the expiration of
the period in which LICENSEE is obligated to maintain
confidential Technical Information of LICENSOR pursuant to
Section 12.1 hereof.
10.2 Termination by LICENSEE. LICENSEE may terminate
this Agreement effective as of December 31, 2005 or as of any
anniversary thereof by giving LICENSOR prior notice thereof
unless sooner terminated as hereinafter provided. Such notice shall
be made in writing and shall be given between 60 and 90 days
prior to the effective date for which such termination is to be
effective. If LICENSEE decides to terminate this Agreement for
any reason, LICENSEE shall provide LICENSOR, along with the
aforementioned notice of termination, with a written report
describing the reasons for such termination.
10.3 Termination by LICENSOR. LICENSOR may
terminate this Agreement at any time effective as of December 31,
2005 or as of any anniversary thereof upon at least 30 days' notice
to LICENSEE for any reason, provided, however, that LICENSOR
shall give LICENSEE at least one years' notice of any termination
under this Section 10.3 if LICENSEE is producing and selling
Licensed Products hereunder. [Confidential Information Omitted
and filed separately with the Securities and Exchange
Commission]
10.4 Effect of Termination. If this Agreement expires or is
terminated for any reason whatsoever, in addition to any other
remedies which one party may have against the other: (1) all of
LICENSEE's rights and licenses under this Agreement shall cease,
and LICENSEE shall immediately return to LICENSOR all
Technical Information furnished to LICENSEE under this
Agreement, together with all reproductions, copies and summaries
thereof; provided, however, that LICENSEE may retain solely for
archival purposes one copy of all such documents in its legal
department files, (2) at LICENSOR's option, LICENSEE shall,
within 30 days of the date of such termination, either (A) sell and
deliver to LICENSOR at LICENSEE's direct cost of manufacture
any Licensed Products which shall then be in the possession of
LICENSEE, and, if requested by LICENSOR, LICENSEE shall
finish and deliver to LICENSOR any Licensed Products in the
process of manufacture as soon as possible and, in any case, not
later than 30 days after receiving LICENSOR's request, and/or (B)
with respect to any unsold inventory and work in the process of
manufacture, to complete such work in process and sell any
remaining inventory during the period not to exceed six months
from the date of termination or expiration of this Agreement
provided that at the completion of such six-month period,
LICENSEE shall promptly destroy and dispose of any Licensed
Products (and Licensed Products in the process of manufacture)
not sold under this Section 10.4 and (3) if this Agreement is
terminated for any reason on or before December 31, 2005,
LICENSEE hereby grants to LICENSOR a nonexclusive,
royalty-free, irrevocable, worldwide license with the right to grant
sublicenses to others to utilize all technical information,
improvements and/or modifications (whether or not the subject of
patents or pending patent applications) developed or invented by
or on behalf of LICENSEE and/or its sublicensees, subcontractors,
or agents hereunder through the date of such termination of this
Agreement relating to Light Valves or Light Valve Components,
and upon such termination, LICENSEE shall provide LICENSOR
in reasonable detail complete information regarding such technical
information, improvements and/or modifications. The foregoing
license shall be self-effectuating and shall exclude information of
LICENSEE (if such information is not subject to patents or
pending patent applications) relating to production processes and
market data, and LICENSEE agrees upon written notice by
LICENSOR (at LICENSEE's expense) at any time hereafter to
deliver to LICENSOR (at LICENSEE's expense) within 30 days
of such notice any document or other instrument reasonably
requested by LICENSOR to convey such license rights to
LICENSOR such as, by way of example, confirmations or
instruments of conveyance or assignment. No termination of this
Agreement by expiration or otherwise shall release LICENSEE or
LICENSOR from any of its continuing obligations hereunder, if
any, or limit, in any way any other remedy one party may have
against the other party. Notwithstanding the foregoing,
LICENSEE's obligations to LICENSOR under Sections 3.1 (with
respect to royalties due on the sale of Licensed Products sold on or
before the six-month period specified above) , 3.5, 4.2, 4.3, 4.4,
4.5, 4.6, 6.1, 6.2, 7.2, 8.3, 8.4, 10.4, 12.1, and Articles 13 and 14
shall survive any termination or expiration of this Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events shall
constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment due in a
timely manner or a party's material breach or material failure to
punctually perform any of its duties and obligations under this
Agreement, which material breach or failure, if curable, remains
uncured for thirty (30) days after written notice of such breach or
failure is received by the breaching party; or (b) a material
misrepresentation is made by a party in any representation or
warranty contained in this Agreement and the misrepresented facts
or circumstances, if curable, remain uncured thirty (30) days after
written notice of such misrepresentation is received by the
breaching party; and, in either case, if such breach or
misrepresentation is not curable, termination shall occur thirty (30)
days after such misrepresentation or breach at the option of the
non-breaching party; or
11.1.2 The failure by a party upon request to provide the
other party with adequate assurances of its performance of all
obligations under this Agreement upon: (a) such first party's filing
of a voluntary petition in bankruptcy; (b) the filing of any
involuntary petition to have such first party declared bankrupt
which has not been dismissed within ninety (90) days of its filing;
(c) the appointment of a receiver or trustee for such first party
which has not been rescinded within ninety (90) days of the date
of such appointment; or (d) such first party otherwise becoming
insolvent or otherwise making an assignment for the benefit of
creditors.
11.2 Default by a Party. If there occurs an Event of Default
with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or specific
performance; and/or
(c) terminate this Agreement and the licenses granted to
LICENSEE hereunder whereupon the non-defaulting
party shall have no further obligations under this
Agreement except those which expressly survive
termination, and except with respect to royalty payments
due and owing to LICENSOR as of the termination date
or any subsequent period specified in Section 10.4.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees for
itself, its sublicensees, and their employees and agents that for
twenty (20) years from the later of the Effective Date of this
Agreement or the latest date of its receipt of information disclosed
to LICENSEE by LICENSOR pursuant to this Agreement, such
information shall be held in confidence; provided, however, there
shall be no obligation to treat as confidential information which is
or becomes available to the public other than through a breach of
this obligation, or which was already possessed by LICENSEE in
writing (or otherwise provable to be in the possession of
LICENSEE) prior to the Effective Date of this Agreement (and
was not received from LICENSOR) or which is shown by
LICENSEE to have been received by it from a third party who had
the legal right to so disclose it without restrictions and without
breach of any agreement with LICENSOR or its licensees.
LICENSOR shall affix an appropriate legend on all written
documentation given to LICENSEE which contains confidential
information. LICENSEE acknowledges that the list of patent
applications contained on Schedule A is confidential information
of LICENSOR. If confidential information is otherwise conveyed
orally by LICENSOR, LICENSOR shall specify to LICENSEE at
the time such information is being conveyed (or in a subsequent
letter referring to the conversation) that the information conveyed
is confidential, and LICENSOR shall confirm such oral disclosure
in a writing given to LICENSEE. It is understood and agreed that,
unless otherwise provided in a separate agreement between
LICENSEE and LICENSOR, LICENSEE has no obligation
hereunder to provide LICENSOR with any confidential or
proprietary information, and that LICENSOR shall have no
obligation hereunder to LICENSEE to maintain in confidence or
refrain from commercial or other use of any information which
LICENSOR is or becomes aware of under this Agreement. The
terms and provisions of this Agreement or any other agreement
between the parties shall not be considered confidential, and the
parties hereto acknowledge that, pursuant to the Securities
Exchange Act of 1934, as amended, and the regulations
promulgated thereunder, LICENSOR may file copies of this
Agreement with the Securities and Exchange Commission and
with NASDAQ and with any other stock exchange on which
LICENSOR's securities may be listed. LICENSEE agrees that for
the period of time during which LICENSEE is obligated to keep
information confidential hereunder, LICENSEE will not develop,
make, have made, use, market, import, have imported, offer for
sale and sell, lease or otherwise dispose of products using or
directly or indirectly derived from Licensed Products, Light
Valves, or Light Valve Components, or which otherwise comprise
suspended particles, which when subjected to a suitable electric or
magnetic field, orient to produce a change in the optical
characteristics of the suspension ("SPD Technology") unless an
agreement between LICENSOR and LICENSEE permitting it to
do so is in full force and effect and the royalties, if any, provided
in such agreement are being paid to LICENSOR on such products.
The foregoing restriction shall not apply to products (i) which do
not directly or indirectly incorporate SPD Technology, such as, but
not limited to, liquid crystal devices, or electrochromic devices, or
(ii) which incorporate technology involving suspended particles,
which when subjected to a suitable electric or magnetic field,
orient to produce a change in the optical characteristics of the
suspension but which is independently developed and which is not
in any way directly or indirectly derived from any Technical
Information of LICENSOR or its licensees, sublicensees, or any of
their affiliates. LICENSEE shall have the burden of proving by
clear and convincing evidence that the availability of any
exception of confidentiality exists or that the foregoing restrictions
do not apply to a particular product. Nothing contained in this
section, however, shall be construed as granting LICENSEE any
rights or licenses with respect to any Technical Information or
patents of LICENSOR or its other licensees or their sublicensees.
(b) LICENSEE will have the right provide materials to, and
to disclose information, to a subcontractor relating to this
Agreement; provided, however, that LICENSEE shall only
disclose such information as is strictly necessary to enable said
subcontractor to perform its manufacturing task, and provided that
prior to disclosing any information to said subcontractor, said
subcontractor has signed a secrecy agreement with LICENSEE at
least as protective of LICENSOR's Technical Information as the
provisions of this Agreement, including, without limitation, said
subcontractor's specific agreement to be bound by the provisions
of Section 12.1 hereof to the same extent as LICENSEE. For such
purposes, LICENSEE may develop a standard form of secrecy
agreement for LICENSOR's approval, after which LICENSEE
may use such secrecy agreement with all subcontractors without
LICENSOR's prior approval of the secrecy agreement being
necessary. LICENSEE shall have all subcontractors sign said
secrecy agreement prior to the disclosure of Technical Information
to said subcontractor, and LICENSEE shall send LICENSOR a
copy of every such secrecy agreement within thirty (30) days after
the execution thereof.
12.2 Advance Approval of Press Releases. Neither
LICENSOR nor LICENSEE shall issue any press release or similar
public announcement regarding this Agreement without advance
written consent by the other party, it being understood that each
party shall cooperate with the other in approving such
announcements subject to such party's communications policies.
Nothing contained in this Section 12.2 shall prevent or restrict
either party from the timely fulfillment of its obligations under
applicable securities or other laws, or prevent either party from
complying with disclosures required by generally accepted
accounting principles.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party represents and
warrants to the other that:
13.1.1 Valid Agreement. The execution and delivery of this
Agreement by the officer or representative so doing, and the
consummation of the transactions contemplated hereby, have been
duly authorized by all necessary corporate action by LICENSOR
and LICENSEE and this Agreement is a valid and binding
obligation enforceable against the parties in accordance with its
terms, except to the extent limited by bankruptcy, insolvency,
moratorium and other laws of general application relating to
general equitable principles;
13.1.2 No Conflicts. Nothing herein conflicts with its rights
and obligations pursuant to any agreement by a party and any other
entity; and
13.1.3 Publicity. The parties shall have the right to use non-
confidential information, including but not limited to information
concerning this Agreement, for marketing, sales, technical
assistance, investor relations, disclosure and public relations
purposes, and that information permitted to be disclosed by a party
under this Section 13.1.3 may appear on such party's (or its
subsidiaries' or sublicensees') Internet web site, along with links
to the Internet web sites, and specific pages therefrom, of the other
party and its subsidiaries and sublicensees, provided that this
Section 13.1.3 does not confer on either party the right to use the
other party's company name or trademarks without permission
other than to describe the fact that LICENSEE is a licensee of
LICENSOR for Licensed Products, or except as otherwise
specifically described in this Agreement.
13.2 LICENSOR Representations. LICENSOR represents
and warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR represents
and warrants that Schedule A includes all or substantially all
material patents and patent applications owned or controlled by
LICENSOR or which LICENSOR has the right to license
LICENSEE, pertaining to Light Valves and Light Valve
Components as they relate to Licensed Products, and that
LICENSOR has the right to convey the rights and licenses granted
by this Agreement, and otherwise to perform its obligations under
this Agreement. LICENSOR has caused its employees who are
employed to do research, development, or other inventive work to
disclose to it any invention or information within the scope of this
Agreement and to assign to it rights in such inventions and
information in order that LICENSEE shall receive, by virtue of this
Agreement, the licenses granted to it under Section 2.1 hereof.
13.2.2 Infringement. As of the date hereof, LICENSOR is
not aware of any claim for patent infringement or the
misappropriation of trade secrets, being asserted against it or its
licensees by any third party; or of any infringement of the patents
listed on Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement (a) that
LICENSEE will be able to develop, manufacture, sell or otherwise
commercialize Licensed Products, or (b) as to the validity of any
patent.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be interpreted,
construed, governed and enforced in accordance with and
governed by the laws of the State of New York, and LICENSOR
and LICENSEE hereby submit to the exclusive jurisdiction of the
state or federal courts located in the County of Nassau and State of
New York for such purposes.
14.2 Confidentiality In Court Proceeding. In order to protect
and preserve the confidential information of a party which the
parties recognize may be exchanged pursuant to the provisions of
this Agreement, the disclosing party may request, and the receiving
party shall not oppose, the court in any action relating to this
Agreement to enter a protective order to protect information which
is confidential information under Section 12.1 and to seal the
record in the action or to hold the proceedings, or portion of the
proceedings, in camera; provided, that the requested terms do not
prejudice the receiving party's interests. Nothing, however, shall
preclude either party from thereafter moving to unseal its own
records or to have matter and information designated as
confidential under any relevant protective order designated
otherwise in accordance with the circumstances as they shall
appear at that time.
14.3 Severability. If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the parties
shall negotiate in good faith to agree upon a substitute provision
that is legal and enforceable and is as nearly as possible consistent
with the intentions underlying the original provision. If the
remainder of this Agreement is not materially affected by such
declaration or finding and is capable of substantial performance,
then the remainder shall be enforced to the extent permitted by
law.
14.4 Waiver. Unless agreed to by the parties in writing to the
contrary, the failure of either party to insist in any one or more
instances upon the strict performance of any one or more of the
provisions of this Agreement, or to exercise any right contained in
this Agreement or provided by law, shall not constitute or be
construed as a waiver or relinquishment of the performance of such
provision or right or the right subsequently to demand such strict
performance or exercise of such right, and the rights and
obligations of the parties shall continue unchanged and remain in
full force and effect.
14.5 Captions. The captions and headings in this Agreement
are inserted for convenience and reference only and in no way
define or limit the scope or content of this Agreement and shall not
affect the interpretation of its provisions.
14.6 Assignment. This Agreement shall be binding on and
shall inure to the benefit of the parties and their successors and
assigns. However, LICENSEE agrees that it shall not assign this
Agreement or its rights hereunder without the prior written consent
of LICENSOR except to a successor to substantially all of its
business relating to Light Valves and whose obligations hereunder
are guaranteed to LICENSOR by LICENSEE. LICENSOR may
assign all of its rights and obligations hereunder to any successor
to any of its business interests or to any company controlling or
controlled by LICENSOR. All assignees shall expressly assume in
writing the performance of all the terms and conditions of this
Agreement to be performed by the assigning party, and an
originally signed instrument of such assumption and assignment
shall be delivered to the non-assigning party within 30 days of the
execution of such instrument.
14.7 Schedules. All Schedules attached to this Agreement
shall be deemed to be a part of this Agreement as if set forth fully
in this Agreement.
14.8 Entire Agreement. This Agreement constitutes the
entire understanding and agreement between LICENSOR and
LICENSEE with respect to the subject matter hereof, supersedes
all prior agreements, proposals, understandings, letters of intent,
negotiations and discussions with respect to the subject matter
hereof and can be modified, amended, supplemented or changed
only by an agreement in writing which makes specific reference to
this Agreement and which is executed in writing by the parties;
provided, however, that either party may unilaterally waive in
writing any provision imposing an obligation on the other.
14.9 Notices. Any notice required or permitted to be given
or made in this Agreement shall be in writing and shall be deemed
given on the earliest of (i) actual receipt, irrespective of method of
delivery, (ii) on the delivery day following dispatch if sent by
express mail (or similar next day courier service), or (iii) on the
sixth day after mailing by registered or certified air mail, return
receipt requested, postage prepaid and addressed as follows:
LICENSOR: Xxxxxx X. Xxxx, President
Research Frontiers Incorporated
000 Xxxxxxxxx Xxxx Xxxxx
Xxxxxxxx, Xxx Xxxx 00000-0000 XXX
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
LICENSEE: Xxxxx Xxxxxxxx Corporation
000 Xxxxx Xxxxxx Xxxxx Xxxx.
Xxxxxxxx, XX 00000
Attention: Senior Vice President, General Counsel
and Secretary
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
With a copy to:Xxxxx Xxxxxxxx Corporation
000 Xxxxx Xxxxxx Xxxxx Xxxx.
Xxxxxxxx, XX 00000
Attention: Chief Patent Counsel
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
or to such substitute addresses and persons as a party may
designate to the other from time to time by written notice in
accordance with this provision.
14.10 Bankruptcy Code. In the event that either party should
file a petition under the federal bankruptcy laws, or that an
involuntary petition shall be filed against such party, the parties
intend that the non-filing party shall be protected in the continued
enjoyment of its rights hereunder to the maximum feasible extent
including, without limitation, if it so elects, the protection
conferred upon licensees under section 365(n) of Title 17 of the
U.S. Code. Each party agrees that it will give the other party
immediate notice of the filing of any voluntary or involuntary
petition under the federal bankruptcy laws.
14.11 Construction. This Agreement and the exhibits hereto
have been drafted jointly by the parties and in the event of any
ambiguities in the language hereof, there shall no be inference
drawn in favor or against either party.
14.12 Counterparts. This Agreement may be executed in any
number of counterparts, each of which shall be deemed an original,
but all of which shall constitute one and the same instrument.
14.13 Status of the Parties. The status of the parties under this
Agreement shall be solely that of independent contractors. No
party shall have the right to enter into any agreements on behalf of
the other party nor shall it represent to any person that it has such
right or authority.
The parties, through their duly authorized representatives, and
intending to be legally bound, have executed this Agreement, as of
the date and year first above written, whereupon it became
effective in accordance with its terms.
RESEARCH FRONTIERS INCORPORATED
By:_____________________________________________
Xxxxxx X. Xxxx, President
Date: November 29, 2001
XXXXX XXXXXXXX CORPORATION
By:___________________________________________
Name:
Title:
Date: November 28, 2001
Schedule A
(As of November 29, 2001)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
4,772,103 Xxxxxx X. Xxxx
"Light Valve Containing an Improved
Suspension, and Liquids Therefor" 9/20/88 8/8/06
4,877,313 Xxxxxx X. Xxxx et al
"Light Polarizing Materials and
Suspensions Thereof" 10/31/89 2/10/09
5,002,701 Xxxxxx X. Xxxx
"Light Polarizing Materials and
Suspensions Thereof" 3/26/91 10/27/09
5,093,041 Xxxxxx X. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 Xxxx Xxxxxxxxx
"Electro-Optical Light Modulator" 5/05/92 7/5/09
5,130,057 Xxxxxx X. Xxxx
"Light Polarizing Materials and
Suspensions Thereof" 7/14/92
10/31/06
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
5,279,773 Xxxxxx X. Xxxx
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
5,325,220 Xxxxxx X. Xxxx
"Light Valve With Low Emissivity
Coating As Electrode" 6/28/94 3/9/13
5,463,491 Xxxxxx X. Check III
"Light Valve Employing a Film Comprising
An Encapsulated Liquid Suspension And
Method of Making Such Film" 10/31/95 11/6/12
5,463,492 Xxxxxx X. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve" 10/31/95 11/6/12
5,461,506 Xxxxxx X. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing The Same" 10/24/95 5/11/13
5,467,217 Xxxxxx X. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing The Same" 11/14/95 5/11/13
5,516,463 Xxxxxx X. Check III et al
"Method of Making Light
Polarizing Particles" 05/14/96 07/08/14
5,650,872 Xxxxxx X. Xxxx et al
"Light Valve Containing
Ultrafine Particles" 07/22/97 07/22/14
5,728,251 Xxxxxx X. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve" 03/17/98 09/27/15
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
6,114,405 Xxxxxxx Xxxxxx et al
"Ultraviolet Radiation-Curable
Light-Modulating Film for a Light
Valve, and Method of Making Same" 09/05/00 10/09/17
6,156,239 Xxxxxx X. Xxxx et al
"Light Polarizing Material, Liquid
Suspensions and Films Thereof, and Light
Valve Incorporating Same" 12/05/00 2/26/19
6,271,956B1 Xxxxxx X. Xxxx et al
"Method and Materials for Enhancing the
Adhesion of SPD Films and Light Valves
Comprising Same" 08/07/01 03/02/20
6,301,040 Xxxxxxxxxx Xxxxxxxxxx et al
"SPD Films Having Improved Properties and
Light Valves Comprising Same" 10/09/01 05/24/20
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
