EXHIBIT 10.2
NON-EXCLUSIVE PATENT LICENSE AGREEMENT
THIS NON-EXCLUSIVE PATENT LICENSE AGREEMENT (this "License Agreement") is made
and entered into as of March 18, 2002 ("Effective Date") Quixote Corporation, a
Delaware corporation with offices at Xxx Xxxx Xxxxxx Xxxxx, 00xx Xxxxx, Xxxxxxx,
Xxxxxxxx ("Quixote") and B&B Electromatic, Inc., ("B&B") a Delaware corporation
with offices at 00000 Xxxx Xxxxxx, Xxxxxxx, Xxxxxxxxx. B&B and Quixote are
sometimes referred to as the "Parties" and individually as a "Party".
WHEREAS, Quixote is the owner of the patents and patent applications listed on
Schedule 1 hereto;
WHEREAS, Quixote desires to grant and B&B desires to accept a non-license to
practice in North America any patent listed on Schedule 1 in the Licensed Field
on terms and conditions set forth in this License Agreement.
NOW, THEREFORE, in consideration of the foregoing recitals and of the mutual
covenants and promises herein contained, the receipt and legal sufficiency of
which are hereby acknowledged, the Parties have agreed as follows:
ARTICLE I
DEFINITIONS
When used in this License Agreement, the terms listed below shall have the
following meanings:
1.1 "Affiliate" shall mean, with respect to a specified Person, any Person that
directly, or indirectly through one or more intermediaries, controls or is
controlled by, or is under common control with, the specified Person.
1.2 "Licensed Field" means uses for all purposes in nonrailroad, nonbridge
roadway applications and nonrailroad bridge access applications.
1.3 "Net Receipts" means the cash proceeds received by B&B or its Affiliate
during the term of this Agreement for the sale of Royalty-Bearing Products less
discounts and allowances actually granted, sales commissions, packing,
insurance, freight and taxes imposed on the transaction (whether or not
separately invoiced).
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1.4 "Patents" means: (a) any the patents and patent applications listed on
Schedule 1; (b) any additional patent issuing in any jurisdiction on any patent
application listed on Schedule 1; (c) any patent issuing as a result of a
re-examination or reissue proceeding of any of the foregoing patents; (d)
renewals, extensions and certificates of corrections of any of the foregoing
patents, and (e) continuations, continuations-in-part, divisional or other
applications claiming filing priority of any of the foregoing applications.
1.5 "Person" means any individual, partnership, corporation, limited liability
company or other entity.
1.6 "Royalty-Bearing Product" means any product, used for all purposes in a
nonrailroad, nonbridge roadway application, that is covered by any issued,
unexpired claim of one or more Patents, and that is made, used or sold in the
Territory.
1.7 "Royalty-Free Product" means any product, used for all purposes in a
nonrailroad bridge access application, that is covered by any issued, unexpired
claim of one or more Patents, and that is made, used or sold in the Territory.
1.8 "Territory" means North America.
1.9 "Technology" means the Patents, the Documentation and trade secrets and
know-how, skill and knowledge for thoroughfare-crossing guards as more
particularly described and embodied in the Patents.
1.10 "Documentation" means all manuals, drawings, designs, diagrams, bills of
material, manufacturing routers, vendor lists, computer programs and all other
tangible technical information relating to the nature or operation of the
Technology, including but not limited to 120 Volts single phase and 120 Volt
technology, which might reasonably be of interest to either party.
ARTICLE II
LICENSE GRANTED
2.1 License. Subject to the terms and conditions of this non-exclusive License
Agreement, Quixote hereby grants to B&B a nonexclusive, nontransferable license
only within the Territory under the Patents to make, have made, use and sell the
Royalty-Bearing Products and Royalty-Free Products only within the Licensed
Field. B&B is also hereby entitled to use any Technology, including
Documentation, only for the purpose of manufacturing, using and selling and
maintaining the Royalty-Bearing Products and Royalty-Free Products within the
Licensed Field.
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2.2 Exclusions. Quixote retains all ownership and other rights with respect to
the Patents. Except as provided herein, B&B may not sublicense any of its rights
granted in Section 2.1.
2.3 Sublicenses to End-Users. B&B may grant nontransferable, personal,
nonexclusive sublicenses (without further right to sublicense) to end-users for
the sole purpose of using a Royalty-Bearing Product and a Royalty-Free Product
that is manufactured, sold or otherwise provided by B&B to such end-user.
2.4 Incidental Sublicenses. B&B may grant nontransferable, personal,
royalty-free, nonexclusive sublicenses (without any further right to sublicense)
to any Person for the sole purpose of allowing that Person to provide to B&B any
equipment or services to allow B&B to exercise its rights under this License
Agreement.
ARTICLE III
ROYALTIES FOR THE ROYALTY-BEARING PRODUCT
3.1 Royalties. B&B shall pay Quixote a royalty on all Royalty-Bearing Products
(the "Royalties") in U.S. dollars equal to the result obtained by multiplying:
(x) ten percent (10%) by (y) Net Receipts.
3.2 Reporting and Payment. Within sixty (60) days after the beginning of each
calendar quarter, B&B shall calculate and pay to Quixote the Royalties that are
due on Net Receipts received during the just-concluded calendar quarter;
provided, however, that upon termination of this Agreement for any reason, a
final payment of Royalties accounting for Net Receipts through the date of
termination shall be made within ninety (90) days after termination of this
Agreement. Payments of Royalties shall be accompanied by a report showing in
reasonable detail an accounting of the Royalties paid.
3.3 Confidentiality. The reports submitted by B&B to Quixote pursuant to this
License Agreement and any information gathered pursuant to an audit under
Section 3.4 shall be confidential information of B&B and shall be held by
Quixote in confidence during the term of this License Agreement and for three
(3) years after its termination for any reason. No other information exchanged
between the parties pursuant to this License Agreement shall be deemed
confidential; provided, however, that the foregoing shall not limit, restrict,
amend, waive or otherwise modify either party's confidentiality obligations
pursuant to any other written agreement between the parties.
3.4 Right to Audit. B&B shall, during the term of this License Agreement, and
for a period of one (1) year thereafter, keep at its usual place of business,
true, particular and adequate accounts and records of the Royalty-Bearing
Products sold or provided by it or its Affiliates, its related accounts
receivable and collections thereof. The duly authorized representatives of
Quixote shall have the right, at any reasonable time, upon notice, during
business hours, to inspect and audit the accounts
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and records of B&B relating to the sale of Royalty-Bearing Products, and such
representatives shall be entitled to take copies of and abstracts from any such
records. Such records shall be treated as confidential information of B&B
pursuant to Section 3.3.
ARTICLE IV
WARRANTY AND LIABILITY
4.1 Representations and Warranties. Quixote represents and warrants as of the
Effective Date that it has not entered into any other agreement, license or
understanding with another party that conflicts with the grant of the licenses
in Article II.
ARTICLE V
VALIDITY, PRESERVATION AND ENFORCEMENT
5.1 Control of Actions. B&B shall promptly advise Quixote if it becomes aware of
any infringement of any Patent by any other Person. Quixote shall have sole
control (and bear all expense) over any action that it may choose to file to
enforce its rights under the Patent.
5.2 Patent Marking. B&B agrees to xxxx (and require its sublicensees to xxxx)
any product that it manufactures or sells with a patent notice pursuant to
instructions from Quixote and in accordance with applicable patent law and to
display such patent notice that it makes available.
ARTICLE VI
TERM AND TERMINATION
6.1 Term. The term of this License Agreement shall commence as of the Effective
Date and shall continue until expiration of the last to expire of the Patents,
unless earlier terminated in accordance with this Article VI ("Term").
6.2 Termination by B&B. B&B shall have the right to terminate this License
Agreement by giving sixty (60) days written notice to Quixote.
6.3 Termination by Quixote. If B&B materially breaches its obligations under
this License Agreement, Quixote may terminate this License Agreement by giving
B&B a notice of default ("Notice of Default") that specifies in reasonable
detail the nature of the alleged material breach. B&B shall have a sixty (60)
day grace period after its receipt of the Notice of Default ("Grace
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Period") to correct or cure any material breach specified therein. If the breach
is not corrected within the Grace Period, then this License Agreement shall
automatically terminate upon conclusion of the Grace Period.
6.4 Bankruptcy, Insolvency. This Agreement will terminate automatically if B&B
becomes bankrupt or insolvent and/or if the business of B&B is placed in the
hands of a receiver, assignee, or trustee, whether by voluntary act or
otherwise.
6.5 Effect of Termination.
(a) Existing Users. Termination of this License Agreement shall not affect
the rights of any Person who, in accordance with this License
Agreement, has purchased or otherwise acquired Royalty-Bearing Products
in good faith.
(b) Survival. Sections 2.4, 3.1, 3.3, 4.2 and 5.1 and all of Article VII
shall survive termination of this License Agreement for any reason.
ARTICLE VII
GENERAL
7.1 Governing Law; Arbitration. This License Agreement shall be governed by and
construed in accordance with the laws of the State of Illinois without reference
to the choice of law principles thereof. Any dispute arising under this
Agreement shall be definitively and finally resolved by arbitration and judgment
upon any award of arbitration may be entered in any court having jurisdiction
thereof. Such arbitration shall be held in Chicago, Illinois [and be in
accordance with the rules of the American Arbitration Association. Any fees and
expenses payable to the American Arbitration Association shall be borne by the
losing party.
7.2 Assignment. This License Agreement is not assignable or transferable by B&B
(whether by contract, by sale of stock or assets of B&B, or by merger or
consolidation or any other legal means) without the prior written consent of
Quixote, such consent not to be unreasonably withheld; any attempt to do so
shall be void. Any notice, report, approval or consent required or permitted
hereunder shall be in writing and will be deemed to have been duly given if
delivered personally or mailed by first-class, certified U.S. mail, postage
prepaid to the respective addresses of the parties as set above (or such other
address as a party may designate by ten (10) days notice) or by facsimile
transmission with evidence of receipt and a paper copy mailed to the receiving
party by regular mail. Subject to the above, this agreement is binding on all
successors, assigns or transferees.
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7.3 Power of Attorney. If Quixote is unable after reasonable efforts to secure
B&B's signature to any document it is entitled to under this License Agreement,
B&B hereby irrevocably designates and appoints Quixote and its duly authorized
officers and agents, as its agents and attorneys-in-fact with full power of
substitution to act for and on its behalf and instead of B&B, to execute and
file any such document or documents and to do all other lawfully permitted acts
to further the purposes of the foregoing with the same legal force and effect as
if executed by B&B.
7.4 Severability. If any provision of this License Agreement is or becomes
illegal, invalid or unenforceable in any respect under the law of any
jurisdiction, neither the legality, validity or enforceability of the remaining
provisions hereof nor the legality, validity, or enforceability of such
provision under the law of any other jurisdiction shall in any way be affected
or impaired thereby, and the remainder of the provisions of this License
Agreement shall remain in full force and effect. The parties shall endeavor in
good faith negotiations to replace any illegal, invalid or unenforceable
provision with a valid, legal and enforceable provision, the economic effect of
which comes as close as possible to the illegal, invalid or unenforceable
provision.
7.5 No Disclosure. The terms of this License Agreement are confidential and no
press release or other written or oral disclosure of any nature regarding the
terms of this License Agreement shall be made by B&B without Quixote's prior
written approval; however, approval for such disclosure shall be deemed given to
the extent such disclosure is required to comply with governmental regulation.
7.6 Modification. This License Agreement may not be modified or amended except
by an instrument or instruments in writing signed by the party (or such party's
duly authorized agent) against whom enforcement of any such modification or
amendment is sought. Either party may, only by an instrument in writing, waive
compliance by the other party regarding any term or provision of this License
Agreement. The waiver by a party of a breach of any term or provision of this
License Agreement shall not be construed as a waiver of any subsequent breach.
7.7 Relationship of Parties. The parties are independent contractors. Nothing
stated in this License Agreement shall be deemed to create the relationship of
partners, joint venturers, employee-employer or franchiser-franchisee between
the parties hereto.
7.8 Counterparts. This License Agreement may be executed in counterparts, all of
which shall be considered one and the same agreement, and shall become effective
when one or more counterparts have been signed by each party and delivered to
the other party.
7.9 Entire License Agreement. This License Agreement and the Schedules thereto
contain the entire agreement between the parties with respect to the subject
matter hereof, and there are no agreements or understandings between the parties
as to this subject matter other than those set forth or referred to herein or
therein.
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IN WITNESS WHEREOF, the parties have each duly executed and delivered
this License Agreement as of the Effective Date.
Quixote Corporation B&B Electromatic, Inc.
By: /s/ XXXXXX X. XXXXXX By: /s/ XXXX XXXXXXXX
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Name: Xxxxxx X. Xxxxxx Name: Xxxx Xxxxxxxx
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Title: President and Chief Executive Title: President
Officer -----------------------------
---------------------------------- Date: March 15, 2002
Date: March 18, 2002 ------------------------------
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SCHEDULE 1
Issued Patents:
US PATENT NUMBER: 6,115,963 "CROSSING GUARD"
6,115,693 ABSTRACT: A crossing guard is disclosed which comprises an
operator positioned on one side of a thoroughfare for raising and
lowering an arm, a gate connected to the arm, a first lock positioned
on the opposite side of the thoroughfare, a plurality of cables
supported within the gate, joined together at fixed points intermediate
the ends of the cables, and a first end assembly connectable with the
cables and the gate at the end of the gate opposite the operator with
the first end assembly engagable with the first lock. The device
further comprises a second lock positioned on the side of the
thoroughfare nearer said operator engagable with a second end assembly
positioned on the end of the gate nearer said operator.
US PATENT NUMBER: 6,289,634 "CROSSING GUARD"
6,289,634 ABSTRACT: A crossing guard is disclosed which comprises an
operator positioned on one side of a thoroughfare for raising and
lowering an arm, a gate connected to the arm, a first lock positioned
on the opposite side of the thoroughfare, a plurality of cables
supported within the gate, joined together at fixed points intermediate
the ends of the cables, and a first end assembly connectable with the
cables and the gate at the end of the gate opposite the operator with
the first end assembly engagable with the first lock. The device
further comprises a second lock positioned on the side of the
thoroughfare nearer said operator engagable with a second end assembly
positioned on the end of the gate nearer said operator.
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