EXHIBIT 10.1
AMENDED AND RESTATED LICENSE AGREEMENT
THIS AMENDED AND RESTATED LICENSE AGREEMENT (this "Agreement") is made and
entered into effective as of the 1st day of September, 2001 (the "Effective
Date"), by and between CALIFORNIA INSTITUTE OF TECHNOLOGY ("Licensor"), a
California not-for-profit corporation, having a principal place of business at
0000 Xxxx Xxxxxxxxxx Xxxxxxxxx, Xxxxxxxx, Xxxxxxxxxx 00000, and LIQUIDMETAL
TECHNOLOGIES, a California corporation formerly known as Amorphous Technologies
International, having a principal place of business at 00000 Xxxxxxxxxxxx Xxxxx,
Xxxxx 000, Xxxx Xxxxxx, Xxxxxxxxxx 00000 ("Licensee").
WITNESSETH:
WHEREAS, Xx. Xxxxxxx X. Xxxxxxx, as an employee of Licensor ("Xxxxxxx"),
and others working in his laboratory have developed certain technology relating
to amorphous metal materials; and
WHEREAS, Licensor and Licensee have previously entered into a License
Agreement, dated January 1, 1998, as amended by a First Addendum dated May 12,
2000 (collectively, the "License Agreement"), pursuant to which Licensor has
licensed to Licensee certain technology and patents relating to amorphous metal
materials; and
WHEREAS, Licensor and Licensee desire to clarify and amend the rights and
licenses set forth in the License Agreement and to grant additional
consideration therefor; and
WHEREAS, Licensor and Licensee therefore desire to amend and restate the
License Agreement upon the terms and conditions set forth in this Agreement, and
this Agreement shall supersede and replace the License Agreement in its entirety
and neither party shall have any further obligations under the License
Agreement.
NOW, THEREFORE, in consideration of the foregoing recitals and the mutual
covenants set forth herein, the Licensor and Licensee agree as follows:
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ARTICLE 1
DEFINITIONS
1.1 DEFINITIONS. For purposes of this Agreement and except as otherwise
specifically set forth herein, the following capitalized terms shall have the
following meanings:
1.2 "LICENSED PRODUCT" means any product, device, service or system of any
type whatsoever which, in whole or in part, is covered by, is made by a process
covered by, or which utilizes in any respect any Caltech Technology.
1.3 "AFFILIATE" means any corporation, limited liability company or other
legal entity which directly or indirectly controls, is controlled by, or is
under common control with Licensee or its successors or assigns, or any
successor or assign of such an entity. For the purpose of this Agreement,
"control" shall mean the direct or indirect ownership of at least fifty-one
percent (51%) of the outstanding shares on a fully diluted basis or other voting
rights of the subject entity to elect directors, or if not meeting the
preceding, any entity owned or controlled by or owning or controlling at the
maximum control or ownership right permitted in the country where such entity
exists.
1.4 "LICENSED PATENT RIGHTS" means Licensor's rights under all patents and
patent applications listed in Exhibit A attached hereto, as well as all foreign
counterpart patents and patent applications (including future foreign
counterparts to the patents and patent applications listed in Exhibit A); any
patents which issue on the applications listed in Exhibit A; all reissues,
reexaminations, renewals, extensions, divisionals, continuations, and
continuations-in-part of the foregoing patents and patent applications; and any
foreign counterparts and any other forms of protection directed to the
inventions covered by the patents or patent applications listed in Exhibit A .
1.5 "CALTECH TECHNOLOGY" means the Licensed Patent Rights and the Amorphous
Alloy Technology.
1.6 "AMORPHOUS ALLOY TECHNOLOGY" means all proprietary information,
know-how, procedures, methods, prototypes, designs, inventions (whether
patentable or not), technical data and reports owned by Licensor or to which
Licensor otherwise has rights that are necessary or
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useful in the development of, or which otherwise relate or pertain to, amorphous
alloys and composite materials containing amorphous alloys.
1.7 "LIGHTWEIGHT ALLOY TECHNOLOGY" means all amorphous alloys other than
Non-Lightweight Amorphous Alloys as defined in Paragraph 1.8.
1.8 "NON-LIGHTWEIGHT ALLOY TECHNOLOGY" means all Amorphous Alloy Technology
that is necessary or useful in the development of, or which otherwise relates or
pertains to, Non-Lightweight Amorphous Alloys and composite materials containing
Non-Lightweight Amorphous Alloys. For this purpose, a "Non-Lightweight Amorphous
Alloy" is either a) a solid amorphous alloy in a virgin, nonporous state having
a density of at least 4.0 g/cc or b) an amorphous alloy that contains zirconium
or titanium (or combination of both) in an amount that is not less than 10%
(atomic) of said alloy.
ARTICLE 2
PATENT LICENSE GRANT
2.1 Licensor hereby grants to Licensee the following rights:
(a) an exclusive, irrevocable, paid-up license under:
i. All Licensed Patent Rights;
ii. All Amorphous Alloy Technology existing as of the Effective
Date; and
iii. All Non-Lightweight Alloy Technology solely arising in the
laboratory of Xxxxxxx in whole or in part anytime after the
Effective Date but prior to the fourth anniversary of the
Effective Date
to research, develop, make, have made, import, have imported, use, have used,
sell, have sold, offer for sale, have offered for sale, and otherwise exploit
Licensed Products throughout the world;
(b) Licensor hereby grants to Licensee a nonexclusive, irrevocable,
paid-up license under all Non-Lightweight Alloy Technology arising solely in the
laboratory of Xxxxxxx in whole or in part that is legally available anytime
after the fourth anniversary of the Effective
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Date to research, develop, make, have made, import, have imported, use, have
used, sell, have sold, offer for sale, have offered for sale, and otherwise
exploit Licensed Products throughout the world; and
(c) Licensor shall notify Licensee in writing promptly upon the
discovery by Licensor of any Lightweight Alloy Technology arising solely in the
laboratory of Xxxxxxx which is legally available for license by Licensor and
which is discovered in whole or part after the Effective Date but prior to the
third anniversary of the Effective Date, and Licensor agrees to grant, upon
written request by Licensee, a license to Licensee on fair and reasonable terms
with Licensor for such Lightweight Alloy Technology. Both Licensor and Licensee
agree to negotiate such license in good faith. If the parties cannot agree upon
the terms of such license, Licensor agrees not grant to another party a license
to such Lightweight Alloy Technology on terms more favorable to the other party
than those that Licensee is willing to accept.
2.2 These licenses are subject to: (a) the reservation of Licensor's right
to make, have made, and use Licensed Products for noncommercial educational and
research purposes, but not for sale or other distribution to third parties
(provided that the exercise of this reserved license shall be subject to Article
10 below); and (b) the rights of the U.S. Government under Xxxxx 00, Xxxxxx
Xxxxxx Code, Section 200 et seq., including but not limited to the grant to the
U.S. Government of a nonexclusive, nontransferable, irrevocable, paid-up license
to practice or have practiced any invention conceived or first actually reduced
to practice in the performance of work for or on behalf of the U.S. Government
throughout the world. These licenses are not transferable by Licensee except as
provided in Paragraph 13.11, but Licensee shall have the right to grant
nonexclusive or exclusive sublicenses hereunder, and to grant to sublicensees
the right to grant sublicenses. Licensee may grant sublicenses of no greater
scope than the license granted under Paragraph 2.1.
2.3 Any sublicenses granted by Licensee, including, without limitation, any
nonexclusive sublicenses, shall remain in effect and be assigned to Caltech in
the event this license terminates pursuant to Paragraph 9.2; provided, the
financial obligations of each sublicensee to Caltech shall be limited to the
amounts that the sublicensee shall be obligated to pay to Licensee under
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the terms of the respective sublicense. In such event and subject to the
preceding sentence, Caltech shall assume all the rights and obligations of
Licensee under such sublicenses.
ARTICLE 3
TECHNOLOGY
3.1 With respect to all Caltech Technology existing as of the Effective
Date, Licensor shall disclose, transmit and deliver to Licensee, orally and in
writing, all of such Caltech Technology on or before the expiration of one month
from the Effective Date. With respect to any other Caltech Technology licensed
hereunder, Licensor shall disclose the same to Licensee within one month of its
conception. Such communication of information shall include, but not be limited
to, the delivery by Licensor to Licensee of the patent applications for the
Licensed Patent Rights, all background and back-up information, patent
prosecution information, test results and other information relevant in any way
to the Licensed Patent Rights and the other Caltech Technology.
3.2 Each party agrees not to disclose any terms of this Agreement to any
third party without the consent of the other party; provided, however, that
disclosures may be made as required by securities or other applicable laws, or
to actual or prospective investors or corporate partners, or to a party's
accountants, attorneys, and other professional advisors. Notwithstanding the
above, each party shall be entitled to disclose the fact that Licensee has been
granted a license under the Licensed Patent Rights.
ARTICLE 4
PROSECUTION OF PATENT APPLICATIONS
4.1 PROSECUTION. Licensor shall use its best efforts to file for patents
covering any Caltech Technology licensed hereunder for which a patent
application has not already been filed, and Licensor shall prosecute any and all
patent application(s) in connection with such Caltech Technology. Licensee shall
select patent counsel for this purpose, and Licensor shall permit Licensee to
review all patent applications and claims made therein, and Licensor shall make
all reasonable revisions thereto as may be requested by Licensee prior to
filing. The reasonable costs and fees associated with prosecuting such patent
applications and maintaining the resulting
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patents shall be borne by Licensee. In the event that Licensee elects not to pay
any of the foregoing patent application costs and fees with respect to a
particular application or patent, Licensor may, at its option, continue such
prosecution or maintenance, although any patent resulting from such prosecution
or maintenance will thereafter no longer be subject to an exclusive license
hereunder (and such license shall instead become a nonexclusive license with
respect to such patent).
4.2 PROSECUTION BY LICENSEE. If Licensor declines to file and prosecute an
application to obtain one or more Patent(s) on any Caltech Technology, then
Licensee may elect to file or take over the prosecution of any such patent
application, and Licensee shall bear all expenses incurred in connection with
such prosecution. Licensor agrees to fully cooperate with Licensee in preparing,
filing, prosecuting, and maintaining any such patent applications and patents,
and Licensor agrees to execute any documents as shall be necessary for such
purpose and not to impair in any way the patentability of such Caltech
Technology.
4.3 LICENSE TO NEW PATENTS. If at any time after the Effective Date any new
patents are issued with respect to any Non-Lightweight Alloy Technology that (i)
is not already included in the Licensed Patent Rights and (ii) is subject to a
license as set forth in Paragraph 2.1(a)(iii) hereof, then Licensee shall have
an exclusive, irrevocable, paid-up license with respect to all such patents as
though they were included as a part of the Licensed Patent Rights hereunder.
ARTICLE 5
CONSIDERATION FOR LICENSE
5.1 In consideration of the rights and licenses granted hereunder, Licensee
will pay a one-time license fee to Licensor in the form of cash equal to
US$150,000 payable upon execution of this Agreement by Licensor in three
installments of US$50,000 each, the first installment of which is due upon
execution of this Agreement with the subsequent installments due three months
and six months after the Effective Date.
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ARTICLE 6
INFRINGEMENT
6.1 COOPERATION. The parties agree to provide reasonable cooperation to
each other respecting any threatened or actual unauthorized use or infringement
by third parties of the Licensed Technology which may come to their attention.
Each party shall promptly notify the other of such unauthorized activities.
6.2 ENFORCEMENT BY LICENSOR. Licensor shall not be obligated to bring suit
for infringement or have any responsibility for taking or defending any action
whatsoever against or by infringers or alleged infringers of the Licensed
Technology, provided that Licensor shall have the right and option, upon written
request to Licensee, to participate in any such action, to contribute funds to
the prosecution of such action, and to be represented by counsel.
6.3 ENFORCEMENT BY LICENSEE. To the extent that Licensee commences an
action for infringement of the Licensed Technology, Licensor agrees to join in
such action upon Licensee's request. In the event that Licensee receives any
damages or amounts in settlement in any action against a third party for
infringement of the Licensed Technology, then Licensee shall be entitled to
entire the amount by which such award or settlement amount exceeds all of the
expenses incurred by Licensee in connection with such infringement action.
ARTICLE 7
REPRESENTATIONS OF LICENSOR
7.1 Licensor hereby covenants, represents, and warrants to Licensee as
follows:
(a) There are no liens, mortgages, commitments, obligations and
encumbrances of any kind or any nature whatsoever against the Caltech
Technology;
(b) There are no outstanding options, licenses or agreements of any
kind relating to the Caltech Technology, other than this Agreement and the
rights of the United States government that may arise from Caltech Technology
that was supported by federal funding as described in Exhibit A;
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(c) Licensor has full power to grant the rights, licenses and
privileges granted herein and can perform as set forth in this Agreement without
violating the terms of any agreement that Licensor has with any third party.
(d) Xxxxxxx, the other individuals working in Xxxxxxx'x laboratory,
and the other individuals working on the Licensed Technology have each assigned
all of their rights to, and proprietary rights in, the Caltech Technology, and
Licensor will cause future employees to assign their rights to future-developed
Caltech Technology to Licensor.
7.2 The parties agree that nothing in this Agreement shall be construed as:
(a) a warranty or representation that anything made, used, sold, or
otherwise disposed of hereunder is or will be free from infringement of rights
of third parties; or
(b) an obligation by Licensor to bring or prosecute actions or suits
against third parties for infringement of the Caltech Technology; or
(c) conferring by implication, estoppel or otherwise, any license or
rights under any patents of Licensor other than the Caltech Technology,
regardless of whether such other patents are dominant or subordinate to the
Caltech Technology.
7.3 THE PARTIES HEREBY AGREE THAT LICENSOR MAKES NO EXPRESS OR IMPLIED
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE WITH RESPECT
TO THE CALTECH TECHNOLOGY.
ARTICLE 8
DUE DILIGENCE
8.1 Licensee shall have sole discretion over the commercialization of
Licensed Products. However, if Licensee at any time after the Effective Date
fails to have at least one Program (defined below) in effect, and if such
failure continues for a period of 18 or more consecutive months without the
commencement, recommencement, or maintenance of a new Program or prior Program,
then Licensor shall have the right, upon 180-days prior written notice to
Licensee
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(a "Conversion Notice"), to convert the license set forth in Paragraph 2.1(a)
hereof into a non-exclusive license. Notwithstanding the foregoing, if Licensee
commences or maintains any type of Program whatsoever during the 180-day period
following the delivery of a Conversion Notice, then Licensor's right to convert
the license to a non-exclusive license shall terminate. For purposes hereof, the
term "Program" means any research program, product development program,
manufacturing program, licensing (or sublicensing) program, marketing program,
or business program of any type, as determined by Licensor in its sole
discretion, which utilizes or exploits any Caltech Technology in any respect for
commercial purposes. In the event that Licensor delivers a Conversion Notice
pursuant to this section and Licensee believes in good faith that the conditions
for conversion of the license have not occurred, then such dispute shall be
resolved in accordance with Article 11 of this Agreement, in which case the
conversion of the license to a non-exclusive license shall not be effective
unless and until Licensor shall have received a favorable decision from the
arbitrator pursuant to Article 11. In any such proceeding, the Licensor shall
have the burden of proof with respect to the issue of whether or not the
conditions for conversion have occurred.
ARTICLE 9
TERM OF LICENSE
9.1 This Agreement and the rights and licenses hereunder shall be in effect
beginning on the Effective Date and continuing in perpetuity thereafter, except
that the license of any patent hereunder shall terminate on the date on which
such patent expires.
9.2 If this Agreement is materially breached by either party, which breach
may include an uncured failure to make a material payment obligation pursuant to
Paragraph 4.1, the nonbreaching party may elect to give the breaching party
written notice describing the alleged breach. If the breaching party has not
cured such breach within sixty (60) days after receipt of such notice, the
notifying party will be entitled, in addition to any other rights it may have
under this Agreement, to terminate this Agreement effective immediately;
provided, however, that if either party receives notification from the other of
a material breach and if the party alleged to be in default notifies the other
party in writing within thirty (30) days of receipt of such default notice that
it disputes the asserted default, the matter will be submitted to arbitration as
provided
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in Article 11 of this Agreement. In such event, the nonbreaching party shall not
have the right to terminate this Agreement until it has been determined in such
arbitration proceeding that the other party materially breached this Agreement,
and the breaching party fails to cure such breach within ninety (90) days after
the conclusion of such arbitration proceeding.
9.3 Termination of this Agreement for any reason shall not release any
party hereto from any liability which, at the time of such termination, has
already accrued to the other party or which is attributable to a period prior to
such termination, nor preclude either party from pursuing any rights and
remedies it may have hereunder or at law or in equity which accrued or are based
upon any event occurring prior to such termination.
ARTICLE 10
CONFIDENTIALITY
10.0 Licensor and Licensee agree that the Caltech Technology and the
existence of this Agreement shall be held in strict confidence and that no
information concerning the same shall be disclosed by either party hereto to any
third party without the prior written consent of the other party, except as may
be required by law (including compulsory legal process) and except as provided
in Paragraph 3.2 above. Information shall not be considered confidential or
subject to this Article 10 if it can be demonstrated to have become part of the
public domain by publication of a patent or by any other means except an
unauthorized act or omission by a party to this Agreement. Notwithstanding the
foregoing, Licensee shall have the right, without Licensor's consent, to
disclose the Caltech Technology to third parties in connection with the exercise
of its rights and license hereunder. In addition, notwithstanding the provisions
of this Article 10, Licensor may publish any Amorphous Alloy Technology,
including dissemination of results, existing as of the Effective Date, provided
that such publication is solely for noncommercial educational and research
purposes and is in accordance with the Licensor's rights granted in Section
2.2(a) herein.
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ARTICLE 11
DISPUTE RESOLUTION
11.0 Any and all disputes of whatever nature arising, between the parties
of this Agreement or the underlying business relationship, including termination
thereof, and which is not resolved between the parties themselves, shall be
submitted to binding arbitration before a single arbitrator in accordance with
the Commercial Arbitration Rules of the American Arbitration Association in
effect as of the Effective Date. Such arbitration shall take place in the State
of California. Judgment upon the award of the arbitrator may be entered in any
court having jurisdiction thereof. Arbitration hereunder shall be in lieu of all
other remedies and procedures available to the parties.
ARTICLE 12
PRODUCT LIABILITY
12.1 Licensee agrees that Licensor shall have no liability to Licensee or
to any purchasers or users of Licensed Products made or sold by Licensee for any
claims, demands, losses, costs, or damages suffered by Licensee, or purchasers
or users of Licensed Products, or any other party, which may result from
personal injury, death, or property damage related to the manufacture, use, or
sale of such Licensed Products ("Claims"). Licensee agrees to defend, indemnify,
and hold harmless Licensor, its trustees, officers, agents, and employees from
any such Claims, provided that (i) Licensee is notified promptly of any Claims,
(ii) Licensee has the sole right to control and defend or settle any litigation
within the scope of this indemnity, and (iii) all indemnified parties cooperate
to the extent necessary in the defense of any Claims.
12.2 At such time as Licensee begins to sell or distribute Licensed
Products (other than for the purpose of obtaining regulatory approvals),
Licensee shall at its sole expense, procure and maintain policies of
comprehensive general liability insurance in amounts not less than $2,000,000
per incident and $2,000,000 in annual aggregate and naming those indemnified
under Paragraph 12.1 as additional insureds. Such comprehensive general
liability insurance shall provide (i) product liability coverage and (ii) broad
form contractual liability coverage for Licensee's indemnification under
Paragraph 12.1. In the event the aforesaid product liability coverage does not
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provide for occurrence liability, Licensee shall maintain such comprehensive
general liability insurance for a reasonable period of not less than five (5)
years after it has ceased commercial distribution or use of any Licensed
Product.
12.3 Licensee shall provide Licensor with written evidence of such
insurance upon request of Licensor. Licensee shall provide Licensor with notice
at least fifteen (15) days prior to any cancellation, non-renewal or material
change in such insurance, to the extent Licensee receives advance notice of such
matters from its insurer. If Licensee does not obtain replacement insurance
providing comparable coverage within sixty (60) days following the date of such
cancellation, non-renewal or material change, Licensor shall have the right to
terminate this Agreement effective at the end of such sixty (60) day period
without any additional waiting period; provided that if Licensee uses reasonable
efforts but is unable to obtain the required insurance at commercially
reasonable rates, Licensor shall not have the right to terminate this Agreement,
and Licensor instead shall cooperate with Licensee to either grant a waiver of
Licensee's obligations under this Article or assist Licensee in identifying a
carrier to provide such insurance or in developing a program for self-insurance
or other alternative measures. The previous Article shall survive the
termination of this Agreement.
ARTICLE 13
MISCELLANEOUS
13.1 Notices. All notice, requests, demands and other communications
hereunder shall be in English and shall be given in writing and shall be: (a)
personally delivered; (b) sent by telecopier, facsimile transmission or other
electronic means of transmitting written documents with confirmation of receipt;
or (c) sent to the parties at their respective addresses indicated herein by
registered or certified mail, return receipt requested and postage prepaid, or
by private overnight mail courier services with confirmation of receipt. The
respective addresses to be used for all such notices, demands or requests are as
follows:
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(a) If to LICENSOR, to:
California Institute of Technology
0000 Xxxx Xxxxxxxxxx Xxxxxxxxx
Mail Code 210-85
Xxxxxxxx, XX 00000
ATTN: Director, Technology Transfer
Phone No.: (000) 000-0000
Fax No.: (000) 000-0000
Or to such other person or address as Licensor shall furnish to Licensee in
writing.
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(b) If to LICENSEE, to:
Liquidmetal Technologies
00000 Xxxxxxxxxxxx Xxxxx, Xxxxx 000
Xxxx Xxxxxx, XX 00000
ATTN: Xxxx Xxxx, CEO
Phone No.: (000) 000-0000
Fax No.: (000) 000-0000
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If personally delivered, such communication shall be deemed delivered upon
actual receipt by the "attention" addressee or a person authorized to accept for
such addressee; if transmitted by facsimile pursuant to this paragraph, such
communication shall be deemed delivered the next business day after transmission
(and sender shall bear the burden of proof of delivery); if sent by overnight
courier pursuant to this paragraph, such communication shall be deemed delivered
upon receipt by the "attention" addressee or a person authorized to accept for
such addressee; and if sent by mail pursuant to this paragraph, such
communication shall be deemed delivered as of the date of delivery indicated on
the receipt issued by the relevant postal service, or, if the addressee fails or
refuses to accept delivery, as of the date of such failure or refusal. Any party
to this Agreement may change its address for the purposes of this Agreement by
giving notice thereof in accordance with this Paragraph 13.1.
13.2 Severability. Each provision contained in this Agreement is declared
to constitute a separate and distinct covenant and provision and to be severable
from all other separate, distinct covenants and provisions. It is agreed that
should any clause, condition or term, or any part thereof, contained in this
Agreement be unenforceable or prohibited by law or by any present or future
legislation then such clause, condition, term or part thereof, shall be amended,
and is hereby amended, so as to be in compliance with the said legislation or
law but, if such clause, condition or term, or part thereof, cannot be amended
so as to be in compliance with the said legislation or law but, if such clause,
condition or term, or part thereof, cannot be amended so as to be in compliance
with any such legislation or law, then such clause, condition, term or part
thereof is severable from this Agreement all the rest of the clauses, terms and
conditions or parts thereof contained in this Agreement shall remain unimpaired.
13.3 No Amendment. This Agreement may not be amended or modified otherwise
than by a written agreement executed by the parties hereto or their respective
successors and legal representatives.
13.4 Governing Law. This Agreement, the legal relations between the parties
and any action, whether contractual or non-contractual, instituted by any party
with respect to matters arising under or growing out of or in connection with or
in respect of this Agreement shall be governed by and construed in accordance
with the internal laws of the State of California,
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excluding any choice of law rules that may direct the application of the laws of
another jurisdiction.
13.5 Waiver. No waiver of a breach of any provision of this Agreement shall
be deemed to be, or shall constitute, a waiver of a breach of any other
provision of this Agreement, whether or not similar, nor shall such waiver
constitute a continuing waiver of such breach unless otherwise expressly
provided in such waiver.
13.6 Headings. The headings in this Agreement are inserted for convenience
only and shall not constitute a part hereof.
13.7 Counterparts/Facsimiles. This Agreement may be executed in one or more
counterparts, all of which taken together shall be deemed one original.
Facsimile signatures shall be deemed original.
13.8 Recitals. The recitals to this Agreement are true and correct and are
made a part of this Agreement.
13.9 No Endorsement. Licensee agrees that it shall not make any form of
representation or statement which would constitute an express or implied
endorsement by Licensor of any Licensed Product, and that it shall not authorize
others to do so, without first having obtained written approval from Licensor,
except as may be required by governmental law, rule or regulation. Licensor
agrees, however, that Licensee may identify Licensor, or California Institute of
Technology, as the inventor of the Caltech Technology in any advertising or
publicity material.
13.10 Entire Agreement. This Agreement sets forth the complete agreement of
the parties concerning the subject matter hereof. No claimed oral agreement in
respect thereto shall be considered as any part hereof. No waiver of or change
in any of the terms hereof subsequent to the execution hereof claimed to have
been made by any representative of either party shall have any force or effect
unless in writing, signed by duly authorized representatives of the parties.
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13.11 Assignment. This Agreement shall be binding upon and inure to the
benefit of any successor or assignee of Licensor. This Agreement is not
assignable by Licensee without the prior written consent of Licensor (not to be
unreasonably withheld or delayed), except that Licensee may assign this
Agreement without the prior written consent of Licensor to any Affiliate or any
successor of, or purchaser of a substantial part of, the assets of its business
to which this Agreement pertains or services utilizing the methods within the
Licensed Patent Rights. Any permitted assignee shall succeed to all of the
rights and obligations of Licensee under this Agreement.
13.12 Export Regulations. This Agreement is subject in all respects to the
laws and regulations of the United States of America, including the Export
Administration Act of 1979, as amended, and any regulations thereunder.
13.13 35. U.S.C. Section 204. Licensee agrees that a Licensed Product which
embodies a patented invention or is produced through the use thereof for sale in
the United States shall be manufactured substantially in the United States to
the extent required by 35 U.S.C. Section 204.
13.14 Governing Law. This Agreement shall be deemed to have been entered
into in California and shall be construed and enforced in accordance with
California law.
13.15 Third-Party Technology. Nothing in this Agreement will impair
Licensee's right to independently acquire, license, develop for itself, or have
others develop for it, intellectual property and technology performing similar
functions as the Caltech Technology or to market and distribute products other
than Licensed Products based on such other intellectual property and technology.
13.16 Certain Damages. NEITHER PARTY SHALL BE LIABLE TO THE OTHER FOR ANY
SPECIAL, CONSEQUENTIAL, INCIDENTAL, OR INDIRECT DAMAGES ARISING OUT OF THIS
AGREEMENT, HOWEVER CAUSED, UNDER ANY THEORY OF LIABILITY.
13.17 Indemnification. Licensor shall indemnify, defend and hold harmless
Licensee from and against any and all losses, damages, costs and expenses
(including attorneys' fees) arising out of a material breach by Licensor of its
representations and warranties
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("Indemnification Claims"), provided that (i) Licensor is notified promptly of
any Indemnification Claims, (ii) Licensee has the sole right to control and
defend or settle any litigation within the scope of this indemnity, and (iii)
all indemnified parties cooperate to the extent necessary in the defense of any
Indemnification Claims. Licensee shall indemnify, defend and hold harmless
Licensor, its trustees, agents and employees from and against any and all
losses, damages, costs and expenses (including reasonable attorneys' fees)
arising out of third party claims brought against Licensor relating to the sale
of Licensed Products by Licensee, but not involving or relating to a material
breach by Licensor of its representations and warranties.
13.18 Force Majeure. Neither party shall lose any rights hereunder or be
liable to the other party for damages or losses (except for payment obligations)
on account of failure of performance by the defaulting party if the failure is
occasioned by war, strike, fire, Act of God, earthquake, flood, lockout,
embargo, governmental acts or orders or restrictions, failure of suppliers, or
any other reason where failure to perform is beyond the reasonable control and
not caused by the negligence or intentional conduct or misconduct of the
nonperforming party, and such party has exerted all reasonable efforts to avoid
or remedy such force majeure; provided, however, that in no event shall a party
be required to settle any labor dispute or disturbance.
13.19 Consents and Approvals. Whenever provision is made in this Agreement
for either party to secure the consent or approval of the other, that consent or
approval shall not unreasonably be withheld or delayed, and whenever in this
Agreement provisions are made for
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one party to object to or disapprove a matter, such objection or disapproval
shall not unreasonably be exercised.
IN WITNESS WHEREOF, the parties have caused this Agreement to be executed:
CALIFORNIA INSTITUTE OF TECHNOLOGY
(Licensor)
DATE: September 1, 2001 By: /s/ Xxxxxxxx Xxxxxxx
----------------------- --------------------------------------------
Name: Xxxxxxxx Xxxxxxx
Title: Director, Officer of Technology Transfer
LIQUIDMETAL TECHNOLOGIES (Licensee)
DATE: September 1, 2001 By: /s/ Xxxx Xxxx
----------------------- --------------------------------------------
Name: Xxxx Xxxx
-----------------------------------------
Title: Chief Executive Officer
-----------------------------------------
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EXHIBIT A
LICENSED INTELLECTUAL PROPERTY RIGHTS
TECH. DISCLOSURE #/ APPLN SERIAL #/
CALTECH I.D. # ISSUED PATENT # DATE TITLE
------------------- --------------- ------- --------------------------------------------
CIT 2193* 5,288,344 2/22/94 Beryllium Bearing Amorphous Metallic Alloys
Formed by Low Cooling Rates
By: Xxxxxxx X. Xxxxxxx and Xxxxxx Xxxxx
CIT 2193-D* 5,368,659 11/29/94 Method of Forming Berryllium Bearing
Metallic Glass
By: Xxxxxxx X. Xxxxxxx and Xxxxxx Xxxxx
CIT 2323-1 5,618,359 4/8/97 Metallic Glass Alloys of Zr, Ti, Cu and Ni
By: Xxxxxxx X. Xxxxxxx, Xiang-Hong Lin and
Xxxxxx Xxxxx
CIT 2423 5,735,975 4/7/98 Quinary Metallic Glass Alloys
By: Xxxxxxx X. Xxxxxxx and Xiang-Hong Lin
CIT 2530 5,950,704 9/14/99 Replication of Surface Features from a
Master Model to an Amorphous Metallic Article
By: Xxxxxxx X. Xxxxxxx, Xxxx Xxxxx and
Xxxxxx Xxxxx
CIT 2531* 5,896,642 4/27/99 Die-Formed Amorphous Metallic Articles and
Their Fabrication
By: Xxxxxxx X. Xxxxxxx, Xxxx Xxxxx and
Xxxxxx Xxxxx
CIT 2532 08/853,557 5/8/97 Ductile Reinforced Amorphous Metal Product
and Method
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By: Xxxxxxx X. Xxxxxxxxx, R. Xxxx Xxxxxx,
Xxxxxxx X. Xxxxxxx and Xxxxx X. Xxx
CIT 2541* 5,797,443 8/25/98 Method of Casting Articles of a
Bulk-Solidifing Amorphous Alloy
By: Xxxxxxx X. Xxxxxxx, Xxxx Xxxxx and
Xxxxxx Xxxxx
CIT 2651 6,010,580 1/4/00 Composite Penetration
By: Xxxxxx X. Xxxxxx, Xxxxxxx Candliker,
Xxxxxxx X. Xxxxxxx and X. Xxxxxxxx
CIT 2953-PCT PCT/US00/11790 5/1/00 In-Situ Ductile Metal/Bulk Metallic Glass
Matrix Composites Formed by Chemical
Partitioning
By: Xxxxxxx X. Xxxx, Xxxxxxx X. Xxxxxxx and
Choong Xxxx Xxx
CIT 3230*+ 09/879,545 6/11/01 Casting of Amorphous Metallic Parts by Hot
Mold Quenching
By: Xxxxxx X. Xxxxxx, Xxxxxxx X. Xxxxxxx
and Xxxx Xxxxxxx
CIT 3349-P* 60/248,901 11/14/00 Use of Large Inertial Body Forces in
Discovery, Processing, and Manufacture of
Multicomponent Bulk Metallic Glass Forming
Alloys and Components Fabricated Thereof
By: Xxxxxxx X. Xxxxxxx
CIT 3404-P* 60/271,188 2/23/01 A High Temperature Centrifugal Processing
Device for Use In Processing of Liquid
Metallic Alloys and Manufacture of Cast
Components from these Alloys
By: Xxxxxxx X. Xxxxxxx
+ Subject to a nonexclusive license to Vacumet
* not supported with Federal funding.
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