PATENT LICENSE AND RELEASE AGREEMENT
------------------------------------
THIS AGREEMENT is effective by the 1 st day of January
0000, xxxxxxx xxx XXXXXX XXXXXX XX XXXXXXX (hereinafter called
the Government), and Link Plus Corporation (hereinafter LINK PLUS)
and TRW, Inc. (hereinafter TRW).
WHEREAS, Link Plus Corporation filed suit Number 98-14C in
the United States Court of Federal Claims, alleging infringement
of United States Patent Numbers 4,839,906; 5,065,451; 4,271,499;
and 4,944,024 by the United States Government (the Action); and
WHEREAS, Link Plus, TRW and the United States Government
(the Government) wish to eliminate X11 future claims,
uncertainties and controversies between Link Plus, TRW, and the
Government for the remaining terms of these patents through the
grant of licenses and releases as set forth herein, in
conjunction with the settlement of the Action,
WHEREAS, this LICENSE is authorized by law, including 10
U.S.C. 2386,
NOW THEREFORE, in consideration of the grant, license,
release, and agreements hereinafter recited, the parties hereby
agree as follows:
1. Warranties
----------
Link Plus Corporation (f/k/a AMAF Industries, Inc.)
warrants that it is and has been at all times the sole owner of
United States Patent Numbers, 5,065,451 and 4,944,024; all
issued to Xxxxx X. Xxxxxxx. Link Plus Corporation represents
that it is and has been at all times since June 13, 1989, the
co-owner along with TRW, of United States Patent Number
4,839,906 issued to Xxxxxxx et al. Link Plus Corporation further
warrants that it is an organization duly organized under the
laws of the state of Delaware, and validly existing and in good
standing under the laws of the state of Maryland.
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Exhibit 10-4
TRW warrants that it is and has been at all times since June 13,
1989, the co-owner along with Link Plus Corporation (f/k/a/ AMAF
Industries, Inc.), of United States Patent Number 4,839,906; issued to
Xxxxxxx et al. TRW further warrants.that it is an organization duly
organized, validly existing and in good standing under the laws of the
state of Ohio.
2. Definitions
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Licensee
The United States of America, as represented by the Secretary of
the Army and the Secretary of the Air Force; is the licensee in this
LICENSE AGREEMENT.
Licensors
Link Plus Corporation is the licensor in this license agreement.
Licensor means Link Plus Corporation and its affiliates, partners,
successors, any surviving entity into which licensor may be merged, or
any entity resulting from a consolidation of licensor with any other
entity. With respect to United States Patent Number 4,839,906, TRW is
the co-licensor.
Government
"GOVERNMENT" means the Federal Government of the United States
of America.
Effective Date
"EFFECTIVE DATE" means the date upon which this license agreement
has been signed by all representatives of the Government, TRW, and
Link Plus Corporation, and in any event, no later than January 1,
1999.
License Agreement
"LICENSE AGREEMENT" means this license agreement, defined by the
document in which this paragraph appears. This license agreement is
between the United States of America,
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Exhibit 10-4
as represented by the Secretary of the Army and Secretary of the Air
Force, as licensee, and Link Plus Corporation as licensor, and TRW as
co-licensor of U.S. Patent No. 4,839,906 only.
Lincompex signals
Lincompex signals means radio signals transmitted in accordance
with the format specified in par. 5.2.9 of MIL-STD-188-141A.
Licensed Patents
"LICENSED PATENTS" means United States Patent Number 4,839,906
issued to Xxxxx X. Xxxxxxx, Xxxxxxxxx Xxxxxxxx, and Xxxx Xxxxx, which
is duly assigned to and owned by Link Plus Corporation and TRW; and
United States Patent Numbers 5,065,451 and 4,944,024 both issued to
Xxxxx X. Xxxxxxx, which are duly assigned to and owned by Link Plus
Corporation; and any reissues, reexaminations, continuations,
continuations-in-part, and/or refilings of United States Patent
Numbers 4,839,906; 5,065,451 and 4,944,024, which are duly assigned to
and owned by Link Plus Corporation and/or TRW together with
corresponding foreign patents and foreign applications for patents.
Each of these patents will cease to be one of the LICENSED PATENTS
upon expiration of its respective patent term.
Licensed Radios
"LICENSED RADIOS" means the any of the AN/ARC-220, XXX-000,
XX-000, RT-2200 radios, or any radio having a different nomenclature,
provided that each such radio contains a Digital Signal Processor
configured to process Lincompex Signals so as to reconstruct speech in
the same manner as the ARC-220 manufactured by Rockwell Xxxxxxx
Avionics Division under contract DAAB07-C-94-D315, and delivered under
CLIN 23 of that contract.
Invention
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"INVENTION" means any idea or discovery which is or may be
patentable or otherwise protectable under Title 35 of the United
States Code.
3. License Grant
-------------
(a) Link Plus Corporation, along with TRW, hereby grants to the
Government an irrevocable, non-exclusive, non-transferable license, to
practice by or cause to be practiced for the GOVERNMENT throughout the
world, to manufacture and use or sell any article or material, to use
or sell any method or process, or to have others manufacture, use or
sell on behalf of the Government, including Foreign Military Sales
under 10 U.S.C. Sec. 2304, or to dispose of any article or material in
accordance with law, any invention covered by any of the LICENSED
PATENTS for the term of said patents, for each LICENSED RADIO, and for
any other product for which a royalty has been paid to Link Plus in
accordance with paragraph 4, below.
(b) This license is executed in conjunction with a Stipulation
for Entry of Judgment, attached as Exhibit A. In the event that
Judgment is not entered in accordance with that Stipulation, this
license shall be null and void.
(c) No rights are granted or implied by the agreement under any
other patents other than as provided above or by operation of law.
(d) Nothing contained herein shall limit any rights which the
Government may have obtained by virtue of prior contracts and/or
licenses by operation of law or otherwise.
4. Royalties
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(a) In consideration of the release and licenses granted herein,
LICENSEE shall pay to LICENSOR Link Plus, a royalty of forty-nine
dollars and fifty cents ($49.50), for each LICENSED RADIO, or any
other product that utilizes the invention covered by any claim of the
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LICENSED PATENTS, delivered to the Government during the term of this
LICENSE AGREEMENT.
(b) Starting on January 1, 1999, royalties shall be paid
quarterly for all LICENSED RADIOS delivered to the Government, as
evidenced by the execution of a DD Form 250, or similar document,
during that quarter. Royalty payments will be made within 30 days
after the end of the applicable quarter for each Fiscal Year. Royalty
payments shall be made to Link Plus Corporation, 0000 Xxxxxxxx Xxxxxx
Xxxxx, Xxxxxxxx Xxxx, Xxxxxxxx, 00000, or any other place designated
by Link Plus Corporation. The Government may direct the manufacturer
of said LICENSED RADIOS to make royalty payments under this license
directly to LINK PLUS.
5. Readjustment of Payments
------------------------
(a) If any license, under substantially the same patents and
authorizing substantially the same acts which are authorized under
this license, has been or shall hereafter be granted within the United
States, on royalty terms which are more favorable to the licensee than
those contained herein, the Government shall be entitled to the
benefit of such more favorable terms with respect to all royalties
accruing under this license after the date such more favorable terms
become effective, and the LICENSOR shall promptly notify the LICENSEE
in writing of the granting of such more favorable terms.
(b) In the event any claim of any patent hereby licensed is
construed or held invalid by decision of a court of competent
jurisdiction, the requirement to pay royalties under this contract
insofar as it arises solely by reason of such claim, and any other
claim not materially different therefrom, shall be interpreted in
conformity with the court's decision as to the scope of validity of
such claims; provided, however, that in the event such decision is
modified or reversed on
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appeal, the requirement to pay royalties under this contract shall be
interpreted in conformity with the final decision rendered on such
appeal.
6. License Term
------------
The term of this LICENSE AGREEMENT shall commence on its
EFFECTIVE DATE and this LICENSE AGREEMENT shall terminate on the
expiration of the last of the LICENSED PATENTS unless this LICENSE
AGREEMENT earlier terminates either by its terms, operation of law or
by acts of the parties in accordance with the terms of this LICENSE
AGREEMENT.
7. Release by TRW
--------------
(a) TRW, in consideration of One Dollar ($1.00) receipt of which
is hereby acknowledged, hereby fully releases and forever discharges
the Government from all liabilities or further payments on account of
any and all claims, demands, or causes of action for royalties,
damages, interests, lost profits, attorney's frees, costs, or any and
all other forms of compensation, at law or in equity, including
express or implied contract claims, which TRW ever had or now has
against the Government arising out of the manufacture, assembly,
purchase, sale, lease, service, repair or reconstruction anywhere in
the world by or for the Government of any invention protected by the
claims of United States Patent Number 4,839,906 issued to Xxxxxxx et
al., at any time up to and including the date of the entry of final
judgment in the Action; and
(b) TRW, in consideration of One Dollar ($1.00) receipt of which
is hereby acknowledged, hereby further fully releases and forever
discharges from all liability to the same extent as provided in
paragraph (a) above, all other third parties, including foreign
governments, which by lawful agreements, treaties or other acts
directly or indirectly have acquired from the Government any invention
protected by the claims of United States Patent Number 4,839,906
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issued to Xxxxxxx et al. to which the release on paragraph (a) above
apply.
8. Non-estoppel
------------
The Government reserves the right at any time to contest the
enforceability, validity, scope of, or the title to any patent or
patent application herein licensed without waiving or forfeiting any
right under this license. 9. Covenant Against Contingent Fees.
(a) The Licensor warrants that no person or agency has been
employed or retained to solicit or obtain this license upon an
agreement or understanding for a contingent fee, except a bona fide
employee or agency. For breach or violation of this warranty, the
Government shall have the right to annul this license without
liability or, in its discretion, to deduct from the license price or
consideration, or otherwise recover, the full amount of the contingent
fee.
(b) "Bona fide agency," as used in this clause, means an
established commercial or selling agency, maintained by a licensor for
the purpose of securing business, that neither exerts nor proposes to
exert improper influence to solicit or obtain Government licenses nor
holds itself out as being able to obtain any Government license or
licenses through improper influence.
"Bona fide employee," as used in this clause, means a person,
employed by a licensor and subject to the licensor's supervision and
control as to time, place, and manner of performance, who neither
exerts nor proposes to exert improper influence to solicit or obtain
Government licenses nor holds out as being able to obtain any
Government license or licenses through improper influence.
"Contingent fee," as used in this clause, means any commission,
percentage, brokerage, or other fee that is contingent upon the
success that a person or concern has in securing a
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Exhibit 10-4
Government license.
"Improper Influence" as used in this clause, means any influence
that induces or tends to induce a Government employee or officer to
give consideration or to act regarding a Government license on any
basis other than the merits of the matter.
10. Assignment of Claims
--------------------
(a) The LICENSOR, including TRW, under the Assignment of Claims
Act, as amended, 31 U.S.C. 3727, 41 U.S.C. 15 (hereafter referred to
as the "the Act"), may assign its rights to be paid amounts due or to
become due as a result of the performance of this license to a bank,
trust company, or other financing institution, including any Federal
lending agency. The assignee under such an assignment may thereafter
further assign or reassign its right under the original assignment to
any type of financing institution described in the preceding sentence.
(b) Any assignment or reassignment authorized under the Act and
this clause shall cover all unpaid amounts payable under this license,
and shall not be made to more than one party, except that an
assignment or reassignment may be made to one party as agent or
trustee for two or more parties participating in the financing of this
license.
(c) The LICENSOR shall not furnish or disclose to any assignee
under this license any classified document or information related to
work under this license until the Contracting Officer authorizes such
action in writing.
11. Gratuities
----------
(a) The right of the LICENSOR to proceed may be terminated by
written notice if, after notice and hearing, the agency head or a
designee determines that the LICENSOR, its agent, or another
representative-
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Exhibit 10-4
(1) Offered or gave a gratuity (e.g., an entertainment or
gift) to an officer, official, or employee of the
Government; and
(2) Intended, by the gratuity, to obtain a
license or favorable treatment under a license.
(b) The facts supporting this determination may be reviewed by
any court having lawful jurisdiction.
(c) If this license is terminated under paragraph (a) above,
the Government is entitled-
(1) To pursue the same remedies as
in a breach of the license; and
(2) In addition to any other damages provided by law, to
exemplary damages of not less than 3 nor more than 10
times the cost incurred by the Licensor in giving
gratuities to the person concerned, as determined by
the agency head or a designee. (This subparagraph
(c)(2) is applicable only if this license uses
money appropriated to the Department of Defense.)
(d) The rights and remedies of the Government provided in this
clause shall not be exclusive and are in addition to any other rights
and remedies provided by law or under this license. 12. Disputes
(a) This license is subject to the Contract Disputes Act of 1978,
as amended (41 U.S.C. 601-613).
(b) Except as provided in the Act, all disputes arising under or
relating to this license shall be resolved under this clause.
(c) "Claim," as used in this clause, means a written demand
or written assertion by one of
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Exhibit 10-4
the licensing parties seeking, as a matter of right, the payment of
money in a sum certain, the adjustment or interpretation of license
terms, or other relief arising under or relating to this license. A
claim arising under a license, unlike a claim relating to that
license, is a claim that can be resolved under a license clause that
provides for the relief sought by the claimant. However, a written
demand or written assertion by the Licensor seeking the payment of
money exceeding $100,000 is not a claim under the Act until certified
as required by subparagraph (d)(2) of this clause. A voucher, invoice,
or other routine request for payment that is not in dispute when
submitted is not a claim under the Act. The submission may be
converted to a claim under the Act, by complying with the submission
and certification requirements of this clause, if it is disputed
either as to liability or amount or is not acted upon in a reasonable
time.
(d)(1) A claim by the LICENSOR shall be made in writing and,
unless otherwise stated in this license, submitted within 6 years
after accrual of the claim to the Contracting Officer for a written
decision. A claim by the Government against the LICENSOR shall be
subject to a written decision by the Contracting Officer.
(2)(i) Licensors shall provide the certification specified in
subparagraph (d)(2)(iii) of this clause when submitting any claim --
(A) Exceeding$ 100,000; or
(B) Regardless of the amount claimed, when using-
(1) Arbitration conducted pursuant to 5 U.S.C.
575-580; or
(2) Any other alternative means of dispute
resolution (ADR) technique that the agency
elects to handle in accordance with the
Administrative Dispute Resolution Act (ADRA).
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Exhibit 10-4
(ii) The certification requirement does not apply to issues
in controversy that have not been submitted as all or part of a
claim.
(iii) The certification shall state as follows: "I certify
that the claim is made in good faith; that the supporting data
are accurate and complete to the best of my knowledge and
belief; that the amount requested accurately reflects the
license adjustment for which the Licensor believes the
Government is liable; and that I am duly authorized to certify
the claim on behalf of the Licensor."
(3) The certification may be executed by any person duly
authorized to bind the Licensor with respect to the claim.
(e) For Licensor claims of $100,000 or less, the Contracting
Officer must, if requested in writing by the Licensor, render a decision
within 60 days of the request. For Licensor-certified claims over
$100,000, the Contracting Officer must, within 60 days, decide the
claim or notify the Licensor of the date by which the decision will be
made.
(f) The Contracting Officer's decision shall be final unless the
Licensor appeals or files a suit as provided in the Act.
(g) If the claim by the Licensor is submitted to the Contracting
Officer or a claim by the Government is presented to the Licensor, the
parties, by mutual consent, may agree to use ADR. If the Licensor
refuses an offer for alternative disputes resolution, the Licensor shall
inform the Contracting Officer, in writing, of the Licensor's specific
reasons for rejecting the request. When using arbitration conducted
pursuant to 5 U.S.C. 575-580, or when using any other ADR technique that
the agency elects to handle in accordance with the ADRA, any claim,
regardless of amount, shall be accompanied by the certification
described in subparagraph (d)(2)(iii) of this
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Exhibit 10-4
clause, and executed in accordance with subparagraph (d)(3) of this
clause.
(h) The Government shall pay interest on the amount found due
and unpaid from (1) the date that the Contracting Officer receives the
claim (certified, if required); or (2) the date that payment otherwise
would be due, if that date is later, until the date of payment. With
regard to claims having defective certifications, as defined in (FAR)
48 CFR 33.201, interest shall be paid from the date that the
Contracting Officer initially receives the claim. Simple interest on
claims shall be paid at the rate, fixed by the Secretary of the
Treasury as provided in the Act, which is applicable to the period
during which the Contracting Officer receives the claim and then at
the rate applicable for each 6-month period as fixed by the Treasury
Secretary during the pendency of the claim.
(i) The Licensor shall proceed diligently with performance of
this license, pending final resolution of any request for relief,
claim, appeal, or action arising under or relating to the License, and
comply with any decision of the Contracting Officer.
13. License to Other Government Agencies
------------------------------------
LICENSEE shall have the option to extend this license to any
other product, in addition to the LICENSED RADIOS, or to any other
agency or component of the GOVERNMENT, by providing notice to LICENSOR
Link Plus, and by paying the royalty in accordance with Paragraph 4,
above; provided, however, that such royalties and payments shall be
made directly to the LICENSOR by each such other department or agency.
The LICENSOR shall notify the LICENSEE hereunder promptly upon receipt
of any request for license hereunder.
14. Termination
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Notwithstanding any other provision of this license, the
Government shall have the right
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Exhibit 10-4
to terminate the within license, in whole or in part, by giving
the LICENSOR not less than thirty (30) days notice in writing of
the date such termination is to be effective; provided, however,
that such termination shall not affect the obligation of the
Government to pay royalties which have accrued prior to the
effective date of such termination.
15. Successors and Assignees
------------------------
This Agreement shall be binding upon the LICENSOR,
including TRW, its successors and assignees, but nothing in this
Article shall authorize an assignment of any claim against the
Government otherwise than as permitted by law.
IN WITNESS WHEREOF, the parties hereto have executed
this agreement
FOR TRW, Inc.
Dated: December 4, 1998
CORPORATE SEAL of
TRW, Inc. By:________/s/[Illegible]__________
TRW, Inc.
0000 Xxxxxxxx Xxxx
Xxxxxxxxx, Xxxx 00000
FOR Link Plus Corporation
Dated: December 2 , 1998
CORPORATE SEAL of
Link Plus Corporation By:_/s/Xxxxxx X. Xxxxxxx, President_
Link Plus Corporation
0000 Xxxxxxxx Xxxxxx Xxxxx
Xxxxxxxx Xxxx, Xxxxxxxx 00000
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Exhibit 00-0
XXX XXX XXXXXX XXXXXX XX XXXXXXX:
Dated: December 16, 1998 _____/s/Xxxxxx Wilson______________
XXXXXX XXXXXX
Contracting Officer
CECOM
Ft. Monmouth, New Jersey
For the United States Army
Dated: 13 JAN 1999 _____/s/Xxxxxxx A Druyun___________
XXXXXXX XXXXXX
Principal Deputy Assistant
Secretary (Acquisition &
Management) Washington, D.C.
For the United States Air Force
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Exhibit 10-4
