EXHIBIT 10.10
WINDOW LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
THERMOVIEW INDUSTRIES, INC.
This License Agreement ("Agreement") effective as of March
21, 2000 by and between RESEARCH FRONTIERS INCORPORATED, a
Delaware corporation ("LICENSOR") and THERMOVIEW INDUSTRIES,
INC., a Delaware corporation ("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physiochemical concepts to
Light Valves and Licensed Products (both 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 Architectural Window
Product incorporating a Light Valve. The term "Licensed Product"
shall not include Light Valves used or intended for use in any
product other than as specifically defined herein, such as other
window products not specifically defined herein, windows for
transportation vehicles, including, but not limited to passenger
cars, recreational vehicles, trucks, mobile cranes, trains,
aircraft, boats, vans, sport utility vehicles, spacer craft and
space-stations, and non-window products such as but not limited
to displays, eyewear, sunvisors, toys, mirrors or filters for
scientific instruments, lamps or contrast enhancement of
displays. The term "display" means any device for displaying
letters, numbers, images or other indicia or patterns. Nothing
contain herein shall permit LICENSEE to sell, lease, or otherwise
dispose of a Light Valve which is not combined or intended to be
combined as described above into a Light Valve Architectural
Window Product.
"LICENSED TERRITORY" means all countries of the world except
North and South Korea.
"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 reflect 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 of liquid suspension, gel, film or
other material.
"LIGHT VALVE ARCHITECTURAL WINDOW PRODUCT" means a Light Valve
used or intended for use solely as a window integrally
incorporated in, or attached as a fixture to the external
structure or internal structure of any building, whether
permanent or temporary, and whether above or below ground.
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 writing, 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, minus the genuine selling
price (which, of purposes of this calculation shall be deemed to
be not more than $100 per window) of a window similar to the
Licensed Product but not incorporating a Light Valve; (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 window associated with the incorporation of a Light Valve,
and the denominator of which is the total manufacturing cost for
such product; and (C) $100 per window. The aforementioned $100
figure specified in clauses (A) and (C) above shall be adjusted
upward as of each January 1st hereafter beginning on January 1,
2001 by any increase in the Producer Price Index for Finished
Goods (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. factor, 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
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all deductions therefrom. 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 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 a non-exclusive right and license to use
(a) all of the Technical Information 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 make, and to
lease, sell, or otherwise dispose of 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,
LICENSEE has not acquired any rights or licenses under this
Agreement to use Light Valves or any components thereof made by
or for LICENSEE or its sublicensees pursuant to this Agreement
except for use in Licensed Products.
2.3 SUBLICENSES. LICENSEE shall have the right to grant
non-exclusive sublicenses to any of its wholly-owned and
controlled subsidiaries, whose obligations to LICENSOR hereunder
LICENSEE hereby guarantees, and which acknowledges to LICENSOR in
writing that it wishes to become a sublicensee hereunder prior to
doing so and agrees to be bound by the terms and conditions of
this Agreement. All sublicenses shall (i) be non-exclusive, (ii)
shall terminate with the termination of the rights and licenses
granted to LICENSEE under Section 2.1 hereof, and be otherwise
limited in accordance with the limitations and restrictions which
are imposed on the rights and licenses granted to LICENSEE
hereunder, (iii) contain confidentiality provisions no less
protective than those contained in Section 12.1 hereof, and (v)
shall contain such other terms, conditions, and licenses as are
necessary to enable LICENSEE to fulfill its obligations
hereunder. LICENSEE shall send LICENSOR a copy of every
sublicense agreement or other agreement entered into by LICENSEE
in connection with a sublicense hereunder within thirty (30) days
of the execution thereof. LICENSOR may terminate any such
sublicense if there is any change in the ownership or control of
a sublicensee.
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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, leased, used
or otherwise disposed of 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 MINIMUM ROYALTIES. Except as otherwise specifically
provided for in Section 3.3, during the term of this Agreement
LICENSEE agrees to pay LICENSOR the non-refundable minimum
royalties (in U.S. Dollars) specified below for each of the
stated periods:
PERIOD MINIMUM ROYALTY
------ ---------------
From the Effective Date of this Agreement
to December 31, 2000 $ 50,000
From January 1, 2001 to December 31, 2001 $ 75,000
From January 1, 2002 to December 31, 2002 $ 75,000
From January 1 to December 31 of each
license year thereafter $100,000
3.3 ALTERNATIVE MINIMUM ROYALTIES IF TRAINING OPTION HAS
BEEN EXERCISED. If LICENSEE has exercised the Training Option
set forth in Section 8.l, during the term of this Agreement
LICENSEE agrees to pay LICENSOR the non-refundable minimum
royalties (in U.S. Dollars) specified below for each of the
stated periods:
PERIOD MINIMUM ROYALTY
------ ---------------
From the Effective Date of this Agreement
to December 31, 2000 $ 50,000
From January 1, 2001 to December 31, 2001 $150,000
From January 1 to December 31 of each
license year thereafter $225,000
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3.4 TIME AND METHOD OF PAYMENT. The initial payment under
Section 3.2 or Section 3.3, as applicable, shall be paid to
LICENSOR within 10 days of the Effective Date of this Agreement
and may be made, at LICENSEE's option either in cash or by
delivering to LICENSOR 12,500 shares of common stock of LICENSEE
issued in the name of Research Frontiers Incorporated, and each
subsequent payment under either Section 3.2 or Section 3.3, as
applicable, to LICENSOR shall be made on or before January 31 of
each license year commencing January 1, 2001. With respect to
minimum annual royalty payments dues under Section 3.2 or 3.3 for
the calendar years beginning January 1, 2001, 2002, and, 2003,
payment may be made at LICENSEE's option either in cash or, if
LICENSEE is a public company and current in all of its reporting
requirements under the Securities Exchange Act of 1934, as
amended, and the regulations promulgated thereunder, by
delivering to LICENSOR of the number of shares of common stock of
LICENSEE issued in the name of Research Frontiers Incorporated
and rounded up to the nearest 100 shares equal to: (A) the
dollar amount of the payment to be made in stock, divided by (B)
the lesser of (X) 80% of the average closing price per share of
common stock of LICENSEE on the principal exchange on which such
shares of common stock are principally traded for the five
trading days immediately prior to the date LICENSEE instructs its
stock transfer agent to issue such shares, and (Y) $4.00 per
share. All such shares delivered to LICENSOR in payment
hereunder shall be considered fully paid and non-assessable. 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 (except the initial minimum royalty
payment if made by delivery of LICENSEE's common stock as
aforesaid) 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.
3.5 SALES, USE AND RETURNS. Licensed Products shall be
considered sold, leased or used 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.
3.6 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
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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 two 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
reasonable 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 c opy of all such approvals
(including English translations thereof in the case of approvals
required by any foreign country) 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 COMPONENTS FROM OTHERS. By virtue of the
disclosure of Technical Information and training provided from
time to time by LICENSOR to LICENSEE and to its other licensees,
and each of their sublicensees and affiliates, any component of a
Light Valve, including without limitation, materials,
suspensions, films, polymers, coatings, particle precursors, and
particles (each a "Component"), 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 LCIENSOR. LICENSEE and its sublicensees each hereby
agrees that (i) all Components shall be used only in strict
accordance with the provisions of this Agreement, and that such
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 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 Component or
other item. LICENSEE acknowledges that LICENSOR has not made any
representations or warranties regarding the availability of any
Component, or the price thereof, and
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that in all respects LICENSEE shall deal directly with the
suppliers of such Components and will obtain from them
information regarding availability, pricing, and/or other terms
relating to such Components.
4.5 NO WARRANTIES BY LICENSOR. LICENSOR does not represent
or warrant the performance of any Licensed Product or of any
material, Component or information provided hereunder, and
LICENSEE expressly acknowledges and agrees that any such
material, 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, RELATED
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, Component or
information provided hereunder.
4.6 ANALYSIS. LICENSEE represents and agrees that it will
only incorporate 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 Component.
4.7 PERSONNEL. LICENSEE agrees to assign personnel from
its technical staff who shall be responsible for the development
of the Licensed Products during the term of this Agreement.
5. TRADEMARKS.
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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
produced Licensed Products or products incorporating Light Valves
under such xxxx or marks. 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 approved by LICENSOR
indicating an affiliation with Research Frontiers Incorporated.
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
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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 in any
way to or are useful in the design, operation, manufacture and
assembly of Licensed Products, and/or to the suspensions or other
components used or usable in Licensed Products 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 relating to the subject matter of
this Agreement, 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. 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
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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 LICENSEE'S TRAINING OPTION. LICENSEE shall have the
option of receiving training from LICENSOR (the "Training
Option"), provided that LICENSEE exercises such Training Option
by sending LICENSOR a notice stating that LICENSEE is exercising
its Training Option which notice is received by LICENSOR on or
before December 31, 2000 (time being of the essence and the
Training Option expiring null and void if not exercised and
notice received by LICENSOR on or before December 31, 2000).
Only if such Training Option is exercised in a timely manner
shall the provisions of Sections 3.3, 8.2, 8.3, and 8.4 be in
effect.
8.2 DOCUMENTATION PROVIDED IF TRAINING OPTION IS EXERCISED.
Within thirty business days after the Training Option is
exercised by LICENSEE, LICENSOR shall furnish LICENSEE with all
Technical Information owned or controlled by LICENSOR, which is
reasonably necessary or desirable in order for LICENSEE to
manufacture Licensed Products. Such Technical Information, which
relates to experimental products, shall include, without
limitation thereto (1) a document entitled HANDBOOK OF TECHNICAL
INFORMATION RELATING TO VARIABLE DENSITY OPTICAL DEVICES
INCORPORATING AN ACTIVATABLE MATERIAL which contains confidential
and proprietary information of LICENSOR and (2) photocopies of
all U.S. Patents and patent applications relating to Licensed
Products owned or controlled by LICENSOR as of the date that the
Training Option is exercised. LICENSOR shall not be obligated
hereunder to furnish copies of LICENSOR's foreign patents and
patent applications, but will furnish a list thereof in Schedule
A hereto. Patents and patent applications purchased by LICENSOR
from any third party shall not be considered owned or controlled
by LICENSOR until and unless LICENSOR has been notified in
writing that it has received written assignments relating to such
patents and patent applications.
8.3 TRAINING. LICENSEE's technically skilled personnel
designated by LICENSEE (with travel and living expenses paid by
LICENSEE) shall make one or more visits for training and to
inspect LICENSOR's research and development facilities relating
to Licensed Products. The visits of employees of LICENSEE to
LICENSOR's facility shall be carried out within the six-month
period commencing with LICENSEE's exercise of its Training Option
under Section 8.1 of this Agreement, and shall not exceed 200 man-
hours during such period. To assist LICENSEE's employees while
they are LICENSOR's facility, LICENSOR's technical staff shall
provide up to 200 man-hours assistance during such period at no
cost to LICENSEE. Additionally, there shall be no cost to
LICENSEE for materials used for training during the initial
training at LICENSOR's facility.
8.4 MATERIALS AND ADDITIONAL TRAINING. Upon request by
LICENSEE after LICENSEE's exercise of its Training Option under
Section 8.1 of this Agreement, during the term of this Agreement
and when mutually convenient to LICENSOR and LICENSEE, LICENSOR
shall supply LICENSEE with additional training and 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
providing such training or making such materials, plus the cost
of shipping such materials to LICENSEE. Each invoice submitted
by LICENSOR for such
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service shall include detailed explanations of the charges, and,
if requested by LICENSEE, copies of receipts.
8.5 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.
8.6 VISITS. During all visits by either party to the
facilities of the other party, visitors shall comply with the
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.
8.7 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. 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 the sole and exclusive owner of the
patents and patent applications listed on Schedule A, and that,
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, 2003 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
10
the reasons for such termination. Notwithstanding anything
contained herein to the contrary, LICENSEE may terminate this
Agreement effective as of December 31, 2001 if by December 31,
2001 Light Valve film samples are not made available to third
party recipients by any of LICENSOR's licensees or their
permitted sublicensees.
10.3 TERMINATION BY LICENSOR. LICENSOR may terminate this
Agreement at any time effective as of December 31, 2003 or as of
any anniversary thereof upon at least 30 days' notice to LICENSEE
for any reason, and LICENSOR may terminate this Agreement at any
time upon at least 30 days' notice to LICENSEE if LICENSEE shall
have failed to make any payment when due or at any time breach
any material term of this Agreement and such payment is not made
or such breach is not cured within any applicable cure period
specified in Article 11 of this Agreement, or repeatedly provide
inaccurate reports hereunder, or if there has been a cessation by
LICENSEE of general operations or of work related to Licensed
Products.
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 by 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 furnish 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, 2003, 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
Licensed Products, 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,
but LICENSEE agrees upon written notice by LICENSOR at any time
hereafter to deliver to LICENSOR 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
11
under Sections 3.1, 3.6, 4.2, 4.3, 4.4, 4.5, 4.6, 6.1, 6.2, 7.2,
8.6, 8.7, 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 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
12
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. Other than
for the oral information conveyed during the training conducted
pursuant to Sections 8.3 and 8.4 hereof all of which shall be
deemed to be confidential information, if confidential
information is otherwise conveyed orally by LICENSOR after
training has been completed, 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. 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 make, use, sell, lease or otherwise dispose of products
using or directly or indirectly derived from Licensed Products,
Light Valves, or Components, or which otherwise comprise
suspending 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) After LICENSEE's exercise of its Training Option under
Section 8.1 of this Agreement, LICENSEE shall have the right to
disclose to a subcontractor information of LICENSOR received
pursuant to Article 8 hereof; PROVIDED, HOWEVER, that LICENSEE
shall only disclose such information
13
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.
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 of the other
party and its subsidiaries and sublicensees.
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 it 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, and 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.
13.3.2 INFRINGEMENT. As of the date hereof, LICENSOR is
not xxxx of any claim for patent infringement or the
misappropriation of trade secrets, being asserted against it by
any third party; or of any infringement of the patents listed on
Schedule A hereto by any entity.
14
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
15
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: Xxxxxxx X. Xxxxxxxx
Chairman and Chief Executive Officer
Thermoview Industries, Inc.
0000 Xxxx xxxx
Xxxxxxxxxx, XX 00000
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
16
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 be no 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: /s/ Xxxxxx X. Xxxx
-----------------------------
Xxxxxx X. Xxxx, president
Date: March 21, 2000
THERMOVIEW INDUSTRIES, INC.
By: /s/ Xxxxxxx X. Xxxxxxxx
----------------------------
Xxxxxxx X. Xxxxxxxx, Chairman and
Chief Executive Officer
Date: March 20, 2000
17
SCHEDULE A
----------
(As of March 21, 2000)
LIST OF UNITED STATES AND
-------------------------
FOREIGN PATENTS
---------------
AND PATENT APPLICATIONS
-----------------------
DATE EXPIRATION
PATENTS IN THE UNITED STATES ISSUED DATE
---------------------------- ------ ----------
4,407,565 Xxxxxx X. Xxxx
"Light Valve Suspension Containing
Fluorocarbon Liquid" 10/04/83 1/16/01
4,422,963 Xxxxxx X. Xxxxxxxx et al
"Improved Light Polarizing Materials
and Suspension Thereof" 12/27/83 12/27/00
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" (QA) 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
5,279,773 Xxxxxx X. Xxxx
"Light Valve Incorporating a Suspension
Stablized With A Block Polymer" 1/18/94 3/23/12
5,325,220 Xxxxxx X. Xxxx
"Light Valve With Low Emissivity
Coating As Electrode" (JDR-105) 6/28/94 3/9/13
A-1
SCHEDULE A (CONTINUED)
----------------------
DATE EXPIRATION
PATENTS IN THE UNITED STATES ISSUED DATE
---------------------------- ------ ----------
5,463,491 Xxxxxx X. Check III
"Light Valve Employing a Film Comprising
An Encapsulated Liquid Suspension And
Method of Making Such File" (JDR-101) 10/31/95 11/6/12
5,463,492 Xxxxxx X. Check III
"Light Modulating File of Improved
Clarity For A Light Valve" (JDR-102) 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" (JDR-103) 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" (JDR-104) 11/14/95 5/11/13
5,516,463 Xxxxxx X. Check III et al
"Method of Making Light Polarizing Particles"
(JDR-106) 05/14/96 07/08/14
5,650,872 Xxxxxx X. Xxxx et al
"Light Valve Containing Ultrafine Particles"
(JDR-108) [CIP of S.N. 351,665) 07/22/97 07/22/14
5,728,251 Xxxxxx X. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve"
(JDR-111) 03/17/98 09/27/15
A-2
PENDING APPLICATIONS
--------------------
SERIAL NUMBER FILING DATE
------------- -----------
176,367 Xxxxxx X. Xxxx
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" (JDR-110) 01/03/94
This case is identical with U.S. Patent No. 5,279,773 which
issued on January 18, 1994 except that certain claims are on
appeal.
08/947,559 Xxxxxxx Xxxxxx et al
"Ultraviolet Radiation-Curable
Light-Modulating Film for a Light
Valve, and Method of Making Same" (JDR-112) 10/09/97
09/258,677 Xxxxxx X. Xxxx et al
"Light Polarizing Material, Liquid
Suspensions and Films Thereof, and Light
Valve Incorporating Same" (JDR-113) 02/26/99
60/092,331 Xxxxx Xxxxxxx et al
"Improved Polyhalide Particles, Liquid
Suspensions and Films Thereof, Light
Valves Comprising Same, and Methods of Making
Such Particles (JDR-114) 07/09/99
60/092,198 Xxxxxx X. Xxxx et al
"Method of Making Light-Polarizing Particles
of Improved Particle Size Distribution for
Liquid Light Valve Suspension, Set Suspension
and Light Valve Film" (JDR-115) 07/09/99
09/327/760 Xxxxxx X. Xxxx
"Anisometrically Shaped Carbon and/or Graphite
Particles, Liquid Suspensions and Films Thereof
And Light Valves Comprising Same" 06/07/99
Xxxxxx X. Xxxx et al
"Method and Materials for Enhancing the Adhesion of
SPD Films and Light Valves Comprising Same" 03/02/00
Xxxxxxxxxx Xxxxxxxxxx et al
"SPD Films Having Improved Properties and
Light Valves Comprising Same" 03/02/00
A-3
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number
4,407,565:
Germany P3200557.1 01/12/82
*Japan 1,551,551 03/23/90 06/28/82 06/28/02
Foreign patents and applications corresponding to U.S. Patent Number
4,772,103:
*Canada 1,315,088 03/30/93 05/20/88 00/00/00
*XXX (Xxxxxx,
Xxxxxxx,
Xxxxxx Xxxxxxx) 342,299 12/08/93 05/20/88 05/20/08
*Japan 2,716,459 11/07/97 06/08/88 06/08/08
*Korea 119,483 08/02/97 07/05/88 07/05/08
*Taiwan NI-43736 04/23/91 05/24/88 12/31/05
Foreign patents and applications corresponding to U.S. Patent Number
4,877,313:
*Canada 1,336,858 09/05/95 06/08/89 00/00/00
*XXX (Xxxxxx
Xxxxxxx,
Xxxxxx Xxxxxxx) 403,711 12/08/93 06/19/89 06/19/09
Japan 01-176982 07/07/89
*Korea 9650/89 07/02/98 07/07/89 07/02/13
*Taiwan NI-41699 01/12/91 06/21/89 09/30/05
Foreign patents and applications corresponding to U.S. Patent Number
5,002,701):
Canada 2,027,349-6 00/00/00
*XXX (Xxxxxx,
Xxxxxxx,
Xxxxxxx, Xxxxx,
Sweden, Xxxxxxx-
land, United
Kingdom) 425,344 05/18/94 10/17/90 10/17/10
Japan 02-288254 10/22/90
Korea 16868/90 10/22/90
*Taiwan NI-46516 08/10/91 10/13/90 04/30/06
*-indicates a patent
A-4
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number
5,093,041:
Canada 2049869 00/00/00
*XXX (Xxxxxx,
Xxxxxxx,
Xxxxxx Xxxxxxx) 532,809 02/28/96 09/16/91 09/16/11
Japan 3-252,095 09/30/91
Korea 17043/91 09/30/91
Foreign patents and applications corresponding to U.S. Patent Number
5,279,773 (Block Polymer):
*Canada 1,335,845 06/06/95 06/08/89 00/00/00
*XXX (Xxxxxx,
Xxxxxxx,
Xxxxxx Xxxxxxx) 350,354 06/01/94 06/19/89 06/19/09
*Japan 2,710,415 10/24/97 07/07/89 07/07/09
Korea 9651/89 07/07/89
Foreign patents and applications corresponding to U.S. Patent Number
5,325,220 (Low-E (JDR-105):
*Argentina 250,625 04/29/97 05/02/94 04/29/12
Australia 59380/94 04/12/94
Brazil PI9402044-2 05/20/94
Canada 2120854 04/08/94
EPO (Austria, 94201185.9 00/00/00
Xxxxxxx, Xxxxxxx,
Xxxxxx, Xxxxxxx,
Xxxxxx, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten-
xxxxx] & United
Kingdom)
Japan 6-96451 05/10/94
Korea 10054/94 05/09/94
Mexico 9402944 04/22/94
*Taiwan NI-68190 02/15/95 03/10/93 03/09/13
*-indicates a patent
A-5
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number
743,808 (QAII)(:
*Canada 1,336,858 09/05/95 04/07/92 00/00/00
*XXX (Xxxxxxx,
Xxxxxxx, Xxxxxx,
Xxxxxxx, Greece,
Italy, Luxembourg,
Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
xxxxx] & United
Kingdom) 564,676 10/13/93 04/07/92 04/07/12
Japan 4-109708 04/28/92
Korea 6162/92 04/14/92
*Taiwan NI-60806 06/04/93 04/08/92 02/20/08
Foreign patents and applications corresponding to U.S. Patent Number
5,463,491 (JDR-101):
USPTO/RO PCT/US92/09034 10/22/92
*Australia 669,135 09/27/96 06/14/94 06/14/14
Canada 2125561 06/09/94
EPO (Austria, 92922886.4 00/00/00
Xxxxxxx, Xxxxxxx,
Xxxxxx, Xxxxxxx,
Xxxxxx, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including liechten-
xxxxx] & United
Kingdom)
Korea 702534/93 08/25/93
*Mexico 183,173 11/07/96 04/29/93 04/29/13
Taiwan 82102979 04/19/93
*-indicates a patent
A-6
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number
5,463,492 (JDR-102):
USPTCO/RO PCT/US93/10485 11/01/93
Argentina 327,984 04/22/94
Australia 55896/94 11/01/93
Australia 31573/97 07/28/97
Brazil PI9307402 11/01/93
Canada 21477868 11/01/93
EPO (Austria, 94901235.5 00/00/00
Xxxxxxx, Xxxxxxx,
Xxxxxx, Xxxxxxx,
Xxxxxx, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten-
xxxxx] & United
Kingdom
Japan 6/512156 11/01/93
Korea 701724/95 05/02/95
Mexico 942757 04/15/94
*Taiwan NI-071343 08/30/95 11/11/93 11/10/13
Foreign patents and applications corresponding to U.S. Patent Number
5,461,506 (JDR-103):
*Argentina 248,847 04/16/96 05/09/94 04/16/11
Australia 59382/94 04/12/94
Brazil PI9401916-9 05/06/94
Canada 2121062 04/12/94
EPO (Austria, 94201186.7 00/00/00
Xxxxxxx, Xxxxxxx,
Xxxxxx, Xxxxxxx,
Xxxxxx, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
xxxxx} & United
Kingdom)
Japan 6-94637 05/09/94
Korea 9871/94 05/06/94
*Mexico 184,523 04/24/97 04/20/94
Taiwan 83103237 04/12/94
*-indicates a patent
A-7
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Patent Number
5,467,217 (JDR-104):
Argentina 328,075 05/02/94
*Australia 680,231 11/13/97 04/12/94 04/12/14
Brazil PI9401917.7 05/06/94
Canada 2121061 04/12/94
EPO (Austria, 94201184.2 00/00/00
Xxxxxxx, Xxxxxxx,
Xxxxxx, Xxxxxxx,
Xxxxxx, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
xxxxx} & United
Kingdom)
Japan 6-96217 05/10/94
Korea 9870/94 05/06/94
Mexico 9402945 04/22/94
Taiwan 83103238 04/12/94
Foreign patents and applications corresponding to U.S. Patent Number
5,516,463 (JDR-106):
*Argentina 250,329 01/28/97 07/21/94 01/28/12
*Australia 682,367 01/22/98 07/20/94 07/20/14
Brazil PI9402876-1 07/20/94
Canada 2,128,484 07/20/94
EPO (Austria, 94111419.1 00/00/00
Xxxxxxx, Xxxxxxx,
Xxxxxx, Xxxxxxx,
Xxxxxx, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
xxxxx} & United
Kingdom)
Japan 6-168249 07/20/94
Korea 17458/94 07/20/94
Mexico 9405529 07/20/94
Taiwan 83106635 07/20/94
*-indicates a patent
A-8
PATENT NUMBER
OR
COUNTRY SERIAL NUMBER ISSUED FILED EXPIRATION
------- ------------- ------ ----- ----------
Foreign patents and applications corresponding to U.S. Serial Number
534,516 (JDR-111):
Canada 2,186,318 09/24/96
EPO (Austria, 96402046.5 00/00/00
Xxxxxxx, Xxxxxxx,
Xxxxxx, Xxxxxxx,
Xxxxxx, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten
xxxxx} & United
Kingdom)
Japan 8-253225 09/25/96
Korea 39420/96 09/12/96
Foreign patents and applications corresponding to U.S. Serial Number
08/947,599:
Argentina P980105043 10/09/98
Australia 10/01/98
Brazil 10/08/98
Canada 10/08/98
EPO (Austria, 98402512.2 00/00/00
Xxxxxxx, Xxxxxx,
Xxxxxxx,
Xxxxxx, Germany,
Greece, Ireland,
Italy, Luxembourg,
Monaco, Netherlands,
Portugal, Spain,
Sweden, Switzerland,
[including Liechten-
xxxxx] & United Kingdom)
Japan 10-287920 10/09/98
Korea 42138/98 10/09/98
Mexico 988231 10/09/98
Taiwan 87116407 10/02/98
*-indicates a patent
A-9
RESEARCH FRONTIERS INCORPORATED
-------------------------------
000 XXXXXXXXX XXXXX XXXXX
XXXXXXXX, X.X. 00000
TELEPHONE: (000) 000-0000
FACSIMILE: (000) 000-0000
Xxxxx 00, 0000
XXX XXXXXXXXX (502-412-0301)
---------------------------
Xxxxxxx X. Xxxxxxxx
Chairman and Chief Executive officer
ThermoView Industries, Inc.
0000 Xxxx Xxxx
Xxxxxxxxxx, XX 00000
Dear Xxxxx:
This letter is to confirm Research Frontier Incorporated's
willingness, in exchange for ThermoView's payment to it of
$50,000, to rescind the issuance of 12,500 shares of the common
stock of ThermoView Industries, Inc. which was paid to us as the
initial minimum annual royalty under our license agreement with
ThermoView Industries, Inc. effective as of March 21, 2000. In
order for us to effectuate this rescission, please let us know
whether you would like to proceed with this rescission by April
19, 2000, as we are in the process of preparing our financial
statements for our fiscal quarter ended March 31, 2000 and need
to reflect this transaction properly. If you would like to
proceed with the rescission, simply sign where indicated below
and fax this letter back to me by April 19, 2000. Thank you.
Sincerely,
/s/ Xxxxxx X. Xxxx
Xxxxxx X. Xxxx
President
We agree to the aforementioned rescission:
ThermoView Industries, Inc.
By: /s/ Xxxxxxx X. Xxxxxxxx
----------------------------
Xxxxxxx X. Xxxxxxxx
Chairman and Chief Executive Officer
