EX-10.01.01 2 d461168dex100101.htm AMENDED AND RESTATED EXCLUSIVE PATENT LICENSE AGREEMENT Last modified: 6-15-2011 TLO: Jack Turner MASSACHUSETTS INSTITUTE OF TECHNOLOGY and THE EX ONE COMPANY, LLC AMENDED & RESTATED EXCLUSIVE PATENT LICENSE...
Exhibit 10.01.01
Last modified: 6-15-2011 TLO: Xxxx Xxxxxx |
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
THE EX ONE COMPANY, LLC
AMENDED & RESTATED EXCLUSIVE PATENT LICENSE AGREEMENT
ExOne EXCL P 6-15-2011
TABLE OF CONTENTS
TABLE OF CONTENTS | ii | |||
R E C I T A L S | 1 | |||
1. Definitions. | 2 | |||
2. Grant of Rights. | 5 | |||
3. COMPANY Diligence Obligations. | 7 | |||
4. Royalties and Payment Terms. | 8 | |||
5. Reports and Records. | 10 | |||
6. Patent Prosecution. | 12 | |||
12 | ||||
8. Indemnification and Insurance. | 14 | |||
9. No Representations or Warranties. | 15 | |||
10. Assignment. | 16 | |||
11. General Compliance with Laws. | 16 | |||
12. Termination. | 17 | |||
13. Dispute Resolution. | 18 | |||
14. Miscellaneous. | 20 | |||
APPENDIX A | 23 | |||
EXHIBIT A | 30 |
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MASSACHUSETTS INSTITUTE OF TECHNOLOGY
AMENDED & RE-STATED EXCLUSIVE PATENT LICENSE AGREEMENT
This Agreement, effective as of the date set forth above the signatures of the parties below (the “EFFECTIVE DATE”), is between the MASSACHUSETTS INSTITUTE OF TECHNOLOGY, a corporation duly organized and existing under the laws of the Commonwealth of Massachusetts and having its principal office at 00 Xxxxxxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000, X.X.X. (“M.I.T.”), and THE EX ONE COMPANY, LLC, a company duly organized under the laws of Delaware and having its principal office at 000 Xxxxxxxx Xxxxxxxxx, Xxxxx, Xxxxxxxxxxxx 00000 X.X.X. (“COMPANY”).
R E C I T A L S
WHEREAS, M.I.T. and Extrude Hone Corporation entered into an exclusive License Agreement with an effective date of June 26, 1996, hereinafter the “6/26/96 License Agreement”;
WHEREAS, the 6/26/96 License Agreement and the 5/2/03 License Agreement were assigned to The Ex One Company, LLC on or about February 28, 2005.
WHERAS, the assets of The Ex One Company, LLC, including the 6/26/96 License Agreement, were acquired by Ex One Acquisition Company on November 30, 2007; and
ExOne EXCL P 6-15-2011
NOW, THEREFORE, M.I.T. and COMPANY hereby agree as follows:
1.1 “AFFILIATE” shall mean any legal entity (such as a corporation, partnership, or limited liability company) that is controlled by COMPANY. For the purposes of this definition, the term “control” means (i) beneficial ownership of at least fifty percent (50%) of the voting securities of a corporation or other business organization with voting securities or (ii) a fifty percent (50%) or greater interest in the net assets or profits of a partnership or other business organization without voting securities.
1.2 “CONSUMABLES” shall mean materials used in practicing the PATENT RIGHTS.
1.3 “EXCLUSIVE PERIOD” shall mean the period of time set forth in Section 2.2.
1.4 “EXCLUDED FIELDS” shall mean those fields set forth in Exhibit A.
1.5 “EXCLUSIVE FIELD” shall mean the direct printing of metal parts and/or ceramic-metal (greater than 10%-by-volume metal) parts which are not included in EXCLUDED FIELDS. EXCLUSIVE FIELD includes the manufacture and sale of MACHINES to be used for direct printing of metal parts and/or ceramic-metal (greater than 10%-by-volume metal) parts which are not included in EXCLUDED FIELDS.
1.6 “NON-EXCLUSIVE FIELD” shall mean applications not within the EXCLUDED FIELDS.
1.6 “LEASE INCOME” shall mean any payments that COMPANY receives from a non-AFFILIATE third party in consideration for the lease of a LICENSED PRODUCT. LEASE INCOME shall be included in NET SALES.
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1.7 “LICENSED PRODUCT” shall mean any product that, in whole or in part:
(i) absent the license granted hereunder, would infringe one or more claims of the PATENT RIGHTS; or
(ii) is manufactured by using a LICENSED PROCESS or that, when used, practices a LICENSED PROCESS.
1.8 “LICENSED PROCESS” shall mean any process that, absent the license granted hereunder, would infringe one or more claims of the PATENT RIGHTS or which uses a LICENSED PRODUCT.
1.9 “MACHINE” shall mean a machine capable of practicing the PATENT RIGHTS. COMPANY and M.I.T. agree that a MACHINE is a LICENSED PRODUCT.
1.10 “NET SALES” shall mean the gross amount received by COMPANY and its AFFILIATES and SUBLICENSEES for LICENSED PRODUCTS, LICENSED PROCESSES, and CONSUMABLES less the following:
(i) customary trade, quantity, or cash discounts to the extent actually allowed and taken;
(ii) amounts repaid or credited by reason of rejection or return;
(iii) to the extent separately stated on purchase orders, invoices, or other documents of sale, any taxes or other governmental charges levied on the production, sale, transportation, delivery, or use of a LICENSED PRODUCT or LICENSED PROCESS which is paid by or on behalf of COMPANY; and
(iv) outbound transportation costs prepaid or allowed and costs of insurance in transit.
No deductions shall be made for commissions paid to individuals whether they be with independent sales agencies or regularly employed by COMPANY and on its payroll, or for cost of collections. NET SALES shall be deemed to have occurred on the date of receipt of funds for the sale of a LICENSED PRODUCT, LICENSED PROCESS, or CONSUMABLES. If a LICENSED PRODUCT, a LICENSED PROCESS, or a CONSUMABLE is distributed at a discounted price that is substantially lower than the customary price charged by COMPANY, or distributed for non-cash consideration (whether or not at a discount), NET SALES shall be calculated based on the non-discounted amount of the LICENSED PRODUCT, LICENSED PROCESS, or CONSUMABLE charged to an independent third party during the same REPORTING PERIOD or, in the absence of such sales, on the fair market value of the LICENSED PRODUCT or LICENSED PROCESS.
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Non-monetary consideration shall not be accepted by COMPANY, any AFFILIATE, or any SUBLICENSEE for any LICENSED PRODUCTS or LICENSED PROCESSES without the prior written consent of M.I.T.
1.11 “PATENT CHALLENGE” shall mean a challenge to the validity, patentability, enforceability and/or non-infringement of any of the PATENT RIGHTS (as defined below) or otherwise opposing any of the PATENT RIGHTS.
1.12 “PATENT RIGHTS” shall mean:
(a) the United States and international patents listed on Appendix A;
(b) the United States and international patent applications and/or provisional applications listed on Appendix A and the resulting patents;
(c) any patent applications resulting from the provisional applications listed on Appendix A, and any divisionals, continuations, continuation-in-part applications, and continued prosecution applications (and their relevant international equivalents) of the patent applications listed on Appendix A and of such patent applications that result from the provisional applications listed on Appendix A, to the extent the claims are directed to subject matter specifically described in the patent applications listed on Appendix A, and the resulting patents;
(d) any patents resulting from reissues, reexaminations, or extensions (and their relevant international equivalents) of the patents described in (a), (b), and (c) above; and
(e) international (non-United States) patent applications and provisional applications filed after the EFFECTIVE DATE and the relevant international equivalents to divisionals, continuations, continuation-in-part applications and continued prosecution applications of the patent applications to the extent the claims are directed to subject matter specifically described in the patents or patent applications referred to in (a), (b), (c), and (d) above, and the resulting patents.
1.13 “REPORTING PERIOD” shall begin on the first day of each calendar quarter and end on the last day of such calendar quarter.
1.14 “SUBLICENSE INCOME” shall mean any payments that COMPANY receives from a SUBLICENSEE in consideration of the sublicense of the rights granted COMPANY under Section 2.1, including without limitation license fees, milestone payments, license maintenance fees, and other payments, but specifically excluding royalties on NET SALES.
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1.15 “SUBLICENSEE” shall mean any non-AFFILIATE sublicensee of the rights granted COMPANY under Section 2.1. Purchasers of LICENSED PRODUCTS, LICENSED PROCESSES and CONSUMABLES from COMPANY or AFFILIATES are not, by virtue of such purchases, deemed to be SUBLICENSEES.
1.16 “TERM” shall mean the term of this Agreement, which shall commence on the EFFECTIVE DATE and shall remain in effect until the expiration or abandonment of all issued patents and filed patent applications within the PATENT RIGHTS, unless earlier terminated in accordance with the provisions of this Agreement.
1.17 “TERRITORY” shall mean worldwide.
The sale or transfer of any MACHINE shall be accompanied with notification regarding the EXCLUDED FIELDS set forth in Exhibit A.
The foregoing notwithstanding, COMPANY understands and acknowledges that the Z Corporation has been granted a non-exclusive patent license pursuant to which it may practice the PATENT RIGHTS for
(a) the fabrication of components for use as a mold or part of a mold for metal casting;
(b) the fabrication of patterns and cores for metal casting; and
(c) the manufacture and sale of machines to be used for fabrication of such molds, parts of a mold, patterns, and cores.
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(d) the fabrication in low volume (fewer than fifteen hundred (1,500) pieces of any particular part) functional parts.
(e) the manufacture, sale and operation of three dimensional printing equipment solely for the fabrication of plastic parts utilizing a powder that contains at least 90% synthetic organic polymeric powder in a process that does not require post-processing other than liquid infiltration of printed parts.
All such components, patterns, cores, and parts must be less than 10%-by-volume metal.
2.4 U.S. Manufacturing. COMPANY agrees that any LICENSED PRODUCTS used or sold in the United States will be manufactured substantially in the United States.
(b) Federal Government. COMPANY acknowledges that the U.S. federal government retains a royalty-free, non-exclusive, non-transferable license to practice any government-funded invention claimed in any PATENT RIGHTS as set forth in 35 U.S.C. §§ 201-211, and the regulations promulgated thereunder, as amended, or any successor statutes or regulations.
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(c) Catalyst Support Structures. M.I.T. retains the right to grant non-exclusive license rights to other companies in order that they may to develop, make, have made, use, sell, offer to sell, lease, and import LICENSED PRODUCTS made with ceramic materials for the purpose of supporting catalytic materials. Such license shall include the right for such companies to have a third party manufacture and provide to the licensed company machines for the production of such LICENSED PRODUCTS but shall not include the right for the licensed company or the third party machine manufacturer to sell such machines to other parties.
(d) Fuel Cell Application Components. M.I.T. retains the right to grant non-exclusive license rights to other companies in order that they may to develop, make, have made, use, sell, offer to sell, lease, and import LICENSED PRODUCTS made with ceramic materials in fuel cell applications. Such license shall include the right for such companies to have a third party manufacture and provide to the licensed company machines for the production of such LICENSED PRODUCTS but shall not include the right for the licensed company or the third party machine manufacturer to sell such machines to other parties.
3. COMPANY DILIGENCE OBLIGATIONS.
in 2011 | $ | 17.5 million; | ||
in 2012 and each year thereafter | $ | 20 million. |
For the purpose of these NET SALES diligence requirements, COMPANY may combine with the NET SALES as defined in this Agreement, the NET SALES of the Patent License Agreement between COMPANY and Therics, Inc. dated December 31, 2003.
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In the event that M.I.T. determines that COMPANY (or an AFFILIATE or SUBLICENSEE) has failed to fulfill any of its obligations under this Section 3.1, then M.I.T. may terminate the EXCLUSIVE PERIOD and the exclusivity provided by Section 2.2 of this Agreement
4. ROYALTIES AND PAYMENT TERMS.
4.1 Consideration for Grant of Rights.
(a) License Maintenance Fees. COMPANY shall pay to M.I.T. the balance of the fees due for 2010 on or before August 1, 2011. COMPANY shall pay to M.I.T. a license maintenance fee of one hundred thousand dollars ($100,000) for calendar year 2011 in four payments of $25,000 on September 1, 2011, October 1, 2011, November 1, 2011, and December 1, 2011. COMPANY shall pay to M.I.T. a license maintenance fee of one hundred thousand dollars ($100,000) for calendar year 2012 in four payments of $25,000 due on January 1, 2012, April 1, 2012, July 1, 2012, and October 1, 2012. Beginning with calendar year 2013, COMPANY shall pay to M.I.T. a license maintenance fee of fifty thousand dollars ($50,000) for each year during the TERM; these payments shall be due on January 1 of each year. These annual license maintenance fees are nonrefundable; however, the license maintenance fee may be credited to running royalties subsequently due on NET SALES earned during the same calendar year, if any. License maintenance fees paid in excess of running royalties due in such calendar year shall not be creditable to amounts due for future years.
(b) Running Royalties.
(i) COMPANY shall pay to M.I.T. a running royalty of five percent (5%) of NET SALES of LICENSE PRODUCTS and LICENSED PROCESSES and COMSUMABLES other than powder and binder through December 31, 2012 after which the running royalty is reduced to three percent (3%) for the remainder of the TERM.
(ii) For powder and binder CONSUMABLES, the royalty shall be function of “gross margin” as determined in accordance with Generally Accepted Accounting Principles (GAAP). A Running Royalty shall be due in an amount equal to a percentage of NET SALES determined as follows:
For NET SALES having a gross margin greater than 65%, the royalty rate shall be 5%.
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For NET SALES having a gross margin less than 50%, the royalty rate shall be 2.5%.
For NET SALES having a gross margin between 50% and 65%, the royalty rate shall vary linearly between 2.5% and 5%.
Running royalties shall be payable for each REPORTING PERIOD and shall be due to M.I.T. within sixty (60) days of the end of each REPORTING PERIOD.
(c) Sharing of SUBLICENSE INCOME. COMPANY shall pay M.I.T. a total of fifty percent (50%) of all SUBLICENSE INCOME received by COMPANY or AFFILIATES. Such amount shall be payable for each REPORTING PERIOD and shall be due to M.I.T. within sixty (60) days of the end of each REPORTING PERIOD.
(d) Consequences of a PATENT CHALLENGE. In the event that (i) COMPANY or any of its AFFILIATES brings a PATENT CHALLENGE against M.I.T., or (ii) COMPANY or any of its AFFILIATES assists another party in bringing a PATENT CHALLENGE against M.I.T. (except as required under a court order or subpoena), and (iii) M.I.T. does not choose to exercise its rights to terminate this Agreement pursuant to Section 12.4, then the running royalties due hereunder shall be doubled for the remainder of the term of the agreement. In the event that such a PATENT CHALLENGE is successful, COMPANY will have no right to recoup any royalties paid during the period of challenge. In the event that a PATENT CHALLENGE is unsuccessful, COMPANY shall reimburse M.I.T. for all reasonable legal fees and expenses incurred in its defense against the PATENT CHALLENGE.
(e) No Multiple Royalties. If the manufacture, use, lease, or sale of any LICENSED PRODUCT or the performance of any LICENSED PROCESS is covered by more than one of the PATENT RIGHTS, multiple royalties shall not be due.
(a) Method of Payment. All payments under this Agreement should be made payable to “Massachusetts Institute of Technology” and sent to the address identified in Section 14.1. Each payment should reference this Agreement and identify the obligation under this Agreement that the payment satisfies.
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(i) the number of LICENSED PRODUCTS sold, leased or distributed by COMPANY, its AFFILIATES and SUBLICENSEES to independent third parties in each country, and, if applicable, the number of LICENSED PRODUCTS used by COMPANY, its AFFILIATES and SUBLICENSEES in the provision of services in each country;
(ii) a description of LICENSED PROCESSES performed by COMPANY, its AFFILIATES and SUBLICENSEES in each country as may be pertinent to a royalty accounting hereunder;
(iii) the gross price charged by COMPANY, its AFFILIATES and SUBLICENSEES for each LICENSED PRODUCT and, if applicable, the gross price charged for each LICENSED PRODUCT used to provide services in each country; and the gross price charged for each LICENSED PROCESS performed by COMPANY, its AFFILIATES and SUBLICENSEES in each country;
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(iv) calculation of NET SALES for the applicable REPORTING PERIOD in each country, including a listing of applicable deductions;
(v) total royalty payable on NET SALES in U.S. dollars, together with the exchange rates used for conversion;
(vi) the amount of SUBLICENSE INCOME received by COMPANY from each SUBLICENSEE and the amount due to M.I.T. from such SUBLICENSE INCOME, including an itemized breakdown of the sources of income comprising the SUBLICENSE INCOME; and
(vii) the number of sublicenses entered into for the PATENT RIGHTS, LICENSED PRODUCTS and/or LICENSED PROCESSES.
If no amounts are due to M.I.T. for any REPORTING PERIOD, the report shall so state.
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6. PATENT PROSECUTION.
6.1 Responsibility for PATENT RIGHTS. M.I.T. shall prepare, file, prosecute, and maintain all of the PATENT RIGHTS. COMPANY shall have reasonable opportunities to advise M.I.T. and shall cooperate with M.I.T. in such filing, prosecution and maintenance.
6.2 Payment of Expenses. Payment of all fees and costs, including attorneys’ fees, relating to the filing, prosecution and maintenance of the PATENT RIGHTS shall be the responsibility of COMPANY, whether such amounts were incurred before or after the EFFECTIVE DATE. The foregoing notwithstanding, COMPANY shall not be responsible for patent cost associated with M.I.T. Case 10327 that were incurred before January 1, 2006. To the extent there are other licensees of the PATENT RIGHTS, such patent fees and costs shall be shared with the other licensees on a pro rata basis. In all instances, M.I.T. shall pay the fees prescribed for large entities to the United States Patent and Trademark Office.
6.3 COMPANY’s Right to Amend PATENT RIGHTS. COMPANY may elect to remove M.I.T. Cases entirely, or on a country basis, from APPENDIX A with sixty (60) days written notice to M.I.T. COMPANY shall have no responsibility for costs or expenses incurred for such Cases following the effective date of such notice.
7.2 Right to Prosecute Infringements.
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Prior to commencing any such action, COMPANY shall consult with M.I.T. and shall consider the views of M.I.T. regarding the advisability of the proposed action and its effect on the public interest. COMPANY shall not enter into any settlement, consent judgment, or other voluntary final disposition of any infringement action under this Section without the prior written consent of M.I.T.
7.5 Recovery. Any recovery obtained in an action brought by COMPANY under Sections 7.2 or 7.3 shall be distributed as follows: (i) each party shall be reimbursed for any expenses incurred in the action (including the amount of any royalty or other payments withheld from M.I.T. as described in Section 7.4), (ii) as to ordinary damages, COMPANY shall receive an amount equal to its lost profits or a reasonable royalty on the infringing sales, or whichever measure of damages the court shall have applied, and COMPANY shall pay to M.I.T. based upon such amount a reasonable approximation of the royalties and other amounts that COMPANY would have paid to M.I.T. if COMPANY had sold the infringing products, processes and services rather than the infringer, and (iii) as to special or punitive damages, the parties shall share equally in any award.
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8. INDEMNIFICATION AND INSURANCE.
(a) Indemnity. COMPANY shall indemnify, defend, and hold harmless M.I.T. and its trustees, officers, faculty, students, employees, and agents and their respective successors, heirs and assigns (the “Indemnitees”), against any liability, damage, loss, or expense (including reasonable attorneys’ fees and expenses) incurred by or imposed upon any of the Indemnitees in connection with any claims, suits, investigations, actions, demands or judgments arising out of or related to the exercise of any rights granted to COMPANY under this Agreement or any breach of this Agreement by COMPANY.
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8.2 Insurance. COMPANY shall obtain and carry in full force and effect commercial general liability insurance, including product liability and errors and omissions insurance which shall protect COMPANY and Indemnitees with respect to events covered by Section 8.1(a) above. Such insurance (i) shall be issued by an insurer licensed to practice in the Commonwealth of Massachusetts or an insurer pre-approved by M.I.T., such approval not to be unreasonably withheld, (ii) shall list M.I.T. as an additional insured thereunder, (iii) shall be endorsed to include product liability coverage, and (iv) shall require thirty (30) days written notice to be given to M.I.T. prior to any cancellation or material change thereof. The limits of such insurance shall not be less than One Million Dollars ($1,000,000) per occurrence with an aggregate of Three Million Dollars ($3,000,000) for bodily injury including death; One Million Dollars ($1,000,000) per occurrence with an aggregate of Three Million Dollars ($3,000,000) for property damage; and One Million Dollars ($1,000,000) per occurrence with an aggregate of Three Million Dollars ($3,000,000) for errors and omissions. In the alternative, COMPANY may self-insure subject to prior approval of M.I.T. COMPANY shall provide M.I.T. with Certificates of Insurance evidencing compliance with this Section. COMPANY shall continue to maintain such insurance or self-insurance after the expiration or termination of this Agreement during any period in which COMPANY or any AFFILIATE or SUBLICENSEE continues (i) to make, use, or sell a product that was a LICENSED PRODUCT under this Agreement or (ii) to perform a service that was a LICENSED PROCESS under this Agreement, and thereafter for a period of five (5) years.
9. NO REPRESENTATIONS OR WARRANTIES.
EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, M.I.T. MAKES NO REPRESENTATIONS OR WARRANTIES OF ANY KIND CONCERNING THE PATENT RIGHTS, AND HEREBY DISCLAIMS ALL REPRESENTATIONS AND WARRANTIES, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS OF M.I.T. OR THIRD PARTIES, VALIDITY, ENFORCEABILITY AND SCOPE OF PATENT RIGHTS, WHETHER ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE.
IN NO EVENT SHALL EITHER PARTY, ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND AFFILIATES BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGES OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER THE PARTY SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY OF THE FOREGOING.
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This Agreement is personal to COMPANY and no rights or obligations may be assigned by COMPANY without the prior written consent of M.I.T., except that COMPANY may assign its rights and obligations under this Agreement to an AFFILIATE or to a successor in connection with the merger, consolidation, or sale of all or substantially all of its assets or that portion of its business to which this Agreement relates; provided, however, that this Agreement shall immediately terminate if the proposed assignee fails to agree in writing to be bound by the terms and conditions of this Agreement on or before the effective date of the assignment.
11. GENERAL COMPLIANCE WITH LAWS.
11.3 Non-Use of M.I.T. Name. COMPANY and its AFFILIATES and SUBLICENSEES shall not use the name of “Massachusetts Institute of Technology,” “Lincoln Laboratory” or any variation, adaptation, or abbreviation thereof, or of any of its trustees, officers, faculty, students, employees, or agents, or any trademark owned by M.I.T., or any terms of this Agreement in any promotional material or other public announcement or disclosure
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without the prior written consent of M.I.T, which consent M.I.T. may withhold in its sole discretion. The foregoing notwithstanding, without the consent of M.I.T., COMPANY may make factual statements during the term of this Agreement that COMPANY has a license from M.I.T. under one or more of the patents and/or patent applications comprising the PATENT RIGHTS.
(a) Nonpayment. In the event COMPANY fails to pay any amounts due and payable to M.I.T. hereunder, and fails to make such payments within sixty (60) days after receiving written notice of such failure, M.I.T. may terminate this Agreement immediately upon written notice to COMPANY.
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12.4 Termination as a Consequence of PATENT CHALLENGE.
(b) By SUBLICENSEE. If a SUBLICENSEE brings a PATENT CHALLLENGE or assists another party in bringing a PATENT CHALLENGE (except as required under a court order or subpoena), then M.I.T. may send a written demand to COMPANY to terminate such sublicense. If COMPANY fails to so terminate such sublicense within thirty (30) days after M.I.T.’s demand, M.I.T. may immediately terminate this Agreement.
(a) Survival. The following provisions shall survive the expiration or termination of this Agreement: Articles 1, 8, 9, 13 and 14, and Sections 5.2 (obligation to provide final report and payment), 5.4, 11.1, 11.2 and 12.5.
(b) Inventory. Upon the early termination of this Agreement, COMPANY and its AFFILIATES and SUBLICENSEES may complete and sell any work-in-progress and inventory of LICENSED PRODUCTS that exist as of the effective date of termination, provided that (i) COMPANY pays M.I.T. the applicable running royalty or other amounts due on such sales of LICENSED PRODUCTS in accordance with the terms and conditions of this Agreement, and (ii) COMPANY and its AFFILIATES and SUBLICENSEES shall complete and sell all work-in-progress and inventory of LICENSED PRODUCTS within six (6) months after the effective date of termination.
(c) Pre-termination Obligations. In no event shall termination of this Agreement release COMPANY, AFFILIATES, or SUBLICENSEES from the obligation to pay any amounts that became due on or before the effective date of termination.
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13.3 Dispute Resolution Procedures.
(a) Mediation. In the event of any dispute arising out of or relating to this Agreement, either party may initiate mediation upon written notice to the other party (“Notice Date”) pursuant to Section 14.1, whereupon both parties shall be obligated to engage in a mediation proceeding. The mediation shall commence within forty-five (45) days of the Notice Date. The mediation shall be conducted by a single mediator in Boston, Massachusetts. The party requesting mediation shall designate two (2) or more nominees for mediator in its notice. The other party may accept one of the nominees or may designate its own nominees by notice addressed to the American Arbitration Association (AAA) and copied to the requesting party. If within, fifteen (15) days following the request for mediation, the parties have not selected a mutually acceptable mediator, a mediator shall be appointed by the AAA according to the Commercial Mediation Rules. The mediator shall attempt to facilitate a negotiated settlement of the dispute, but shall have no authority to impose any settlement terms on the parties. The expenses of the mediation shall be borne equally by the parties, but each party shall be responsible for its own counsel fees and expenses.
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If to M.I.T.: | Massachusetts Institute of Technology Technology Licensing Office, Rm NE25-230 Five Cambridge Center, Xxxxxxx Xxxxxx Xxxxxxxxx, XX 00000-0000 Attention: Director | |||||
Tel: | 000-000-0000 | |||||
Fax: | 000-000-0000 | |||||
If to COMPANY: | The Ex One Company, LLC | |||||
000 Xxxxxxxx Xxxxxxxxx Xxxxx, XX 00000 Attention: President | ||||||
Tel: | (000) 000-0000 | |||||
Fax: | (000) 000-0000 | |||||
If, to COMPANY, notices regarding financial matters, including invoices: | ||||||
Contact Name: Chief Financial Officer Department: Accounting Address: same as above Tel: (000) 000-0000 Fax: (000) 000-0000 |
All notices under this Agreement shall be deemed effective upon receipt. A party may change its contact information immediately upon written notice to the other party in the manner provided in this Section.
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any remedies relating thereto, shall be construed, governed, interpreted and applied in accordance with the laws of the Commonwealth of Massachusetts, U.S.A., without regard to conflict of laws principles, except that questions affecting the construction and effect of any patent shall be determined by the law of the country in which the patent shall have been granted. The state and federal courts having jurisdiction over Cambridge, MA, USA, provide the exclusive forum for any PATENT CHALLENGE and/or any court action between the parties relating to this Agreement. COMPANY submits to the jurisdiction of such courts and waives any claim that such court lacks jurisdiction over COMPANY or its AFFILIATES or constitutes an inconvenient or improper forum.
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The EFFECTIVE DATE of this Agreement is January 1, 2011
MASSACHUSETTS INSTITUTE OF TECHNOLOGY | THE EX ONE COMPANY, LLC | |||||||
By: | /s/ Xxxx X. Xxxxxx, Xx. | By: | /s/ Xxxxx X. Xxxxx | |||||
Name: | Xxxx X. Xxxxxx, Xx. | Name: | Xxxxx X. Xxxxx | |||||
Title: | Associate Director Technology Licensing Office | Title: | President |
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APPENDIX A
List of Patent Applications and Patents
For M.I.T. Case No. 4972, “Three Dimensional Part Printing,” by Xxxxxxx X. Xxxx, Xxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxx X. Xxxxxxxx
1. | United States of America Patent No. 5204055, Issued April 20, 1993 |
“Three-Dimensional Printing Techniques” by Xxxxxxx X. Xxxx, Xxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxx X. Xxxxxxxx
2. | United States of America Patent No. 5340656, Issued August 23, 1994 |
“Three-Dimensional Printing Techniques” by Xxxxxxx X. Xxxx, Xxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxx X. Xxxxxxxx
3. | Canada Patent No. 2031562, Issued November 22, 1994 |
“Three-Dimensional Printing Techniques” by Xxxxxxx X. Xxxx, Xxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxx X. Xxxxxxxx
4. | Japan Patent No. 0000000, Issued December 12, 1997 |
“Three-Dimensional Printing Techniques” by Xxxxxxx X. Xxxx, Xxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxx X. Xxxxxxxx
5. | European Patent Convention (EPC), filed on December 5, 1990, |
European Patent Convention Patent No. 0431924, Issued January 31, 1996
Designated, | Issued, | |
Great Britain | United Kingdom Patent No. 0431924, Issued January 31, 0000 | |
Xxxxxxx | Germany Patent No. P69025147.5, Issued January 31, 0000 | |
Xxxxx | Italy Patent No. 0431924, Issued January 31, 0000 | |
Xxxxxx | Xxxxxx Patent No. 0431924, Issued Xxxxxxx 00, 0000 | |
Xxxxxx | Xxxxxx Patent No. 0431924, Issued January 31, 1996 |
For M.I.T. Case No. 5567, “Improvements To 3D Printing,” by Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxx Xxxxxxxx, Tailin Fan, Xxxxxx Xxxxxxx, Xxxx X. Xxxxxx, Sang-Xxxx X. Xxx, Xxxxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxxx Xxxxxx
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1. | United States of America Patent No. 5387380, Issued February 7, 1995 |
“Three-Dimensional Printing Techniques” by Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxx Xxxxxxxx, Tailin Fan, Xxxxxx Xxxxxxx, Xxxx X. Xxxxxx, Sang-Xxxx X. Xxx, Xxxxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxxx Xxxxxx
2. | Canada Patent No. 2136748, Issued August 14, 2001 |
“Three-Dimensional Printing Techniques” by Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxx Xxxxxxxx, Tailin Fan, Xxxxxx Xxxxxxx, Xxxx X. Xxxxxx, Sang-Xxxx X. Xxx, Xxxxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxxx Xxxxxx
3. | Japan Patent No. 0000000, Issued December 11, 1998 |
“Three-Dimensional Printing Techniques” by Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxx Xxxxxxxx, Tailin Fan, Xxxxxx Xxxxxxx, Xxxx X. Xxxxxx, Sang-Xxxx X. Xxx, Xxxxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxxx Xxxxxx
4. | European Patent Convention (EPC), filed on June 4, 1993, |
European Patent Convention Patent No. 0644809, Issued July 25, 2001
Designated, | Issued, | |
Great Britain | United Kingdom Patent No. 0644809, Issued July 25, 0000 | |
Xxxxxxx | Germany Patent No. 0644809, Issued July 25, 0000 | |
Xxxxx | Abandoned | |
France | France Patent No. 0644809, Issued July 25, 0000 | |
Xxxxxx | Abandoned |
For M.I.T. Case No. 5997, “A Novel Face Coating Technique For Bodies With Large And Wide Pore Size Distributions,” by Xxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxxx Xxxxxxx and Xxxxxxx X. Xxxxx
1. | United States of America Patent No. 5490882, Issued February 13, 1996 |
“A Process For Removing Loose Powder Particles From Interior Passages Of A Body” by Xxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxxx Xxxxxxx and Xxxxxxx X. Xxxxx
2. | United States of America Patent No. 5814161, Issued September 29, 1998 |
“Ceramic Mold Finishing”
3. | United States of America Patent No. 6109332, Issued August 29, 2000 |
“Ceramic Mold Finishing”
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4. | Canada Patent No. 2146366, Issued March 7, 2000 |
“Ceramic Mold Finishing”
5. | Canada Serial No. 2290708, Filed November 22, 1993, pending |
“Cleaning And Finishing A Ceramic Mold”
6. | Japan Patent No. 0000000, Issued October 18, 2002 |
“Cleaning And Finishing A Ceramic Mold”
7. | European Patent Convention Serial No. 94902341.0, Filed November 22, 1993 European Patent Convention Patent No.0693001, Issued August 23, 2003 |
Designated, | Issued, | |
Great Britain | United Kingdom Patent No. 0693001, Issued August 27, 0000 | |
Xxxxxxx | Germany Patent No. 0693001, Issued August 27, 0000 | |
Xxxxx | Italy Patent No. 0693001, Issued August 27, 0000 | |
Xxxxxx | Xxxxxx Patent No. 0693001, Issued Xxxxxx 00, 0000 | |
Xxxxxx | Xxxxxx Patent No. 0693001, Issued August 27, 2003 |
For M.I.T. Case No. 6138, “3D Printing Improvement; Binder Approaches,” by Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxx Xxxxxxxx, Tailin Fan and Xxxxxxx X. Xxxxx
1. | United States of America Patent No. 6146567, Issued November 14, 2000 |
“Three Dimensional Printing Methods”
2. | United States of America Patent No. 5807437, Issued September 15, 1998 |
“Three Dimensional Printing System”
3. | European Patent Convention Patent No. 0686067, Issued August 2, 2000 |
Designated, | Issued, | |
Germany | Germany Patent No. 69425428.2-, Issued August 2, 2000 |
For M.I.T. Case No. 6924, “Continuous Jet Droplet Generator,” by Xxxxxxx X. Xxxxx and Xxxxx Xxxxx
1. | United States of America Patent No. 6070973, Issued June 6, 2000 |
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“Non-Resonant And Decoupled Droplet Generator” by Xxxxxxx X. Xxxxx and Xxxxx Xxxxx
2. | Japan Serial No. 10-549311, Filed May 7, 1998, abandoned |
3. | Canada Serial No. 2288832, Filed May 7, 1998, abandoned |
4. | European Patent Convention Serial No. 98920329.4, Filed May 7, 1998, abandoned |
For M.I.T. Case No. 7010, “Enhancement Of Thermal Properties Of Tooling Made By Solid Free Form Fabrication Techniques,” by Xxxxxx X. Xxxxx, Xxxxxx X. Xxxxxxxx and Xxxxxxx X. Xxxxx
1. | United States of America Patent No. 5775402, Issued July 7, 1998 |
“Enhancement of Thermal Properties of Tooling Made by Solid Free Form Fabrication Techniques” by Xxxxxx X. Xxxxx, Xxxxxx X. Xxxxxxxx and Xxxxxxx X. Xxxxx
2. | United States of America Patent No. 6112804, Issued September 5, 2000 |
“Enhancement Of Thermal Properties Of Tooling Made By Solid Free Form Fabrication Techniques” by Xxxxxx X. Xxxxx, Xxxxxx X. Xxxxxxxx and Xxxxxxx X. Xxxxx
3. | United States of America Patent No. 6354361, Issued March 12, 2002 |
“Tooling Made By Solid Free Form Fabrication Techniques Having Enhanced Thermal Properties” by Xxxxxx X. Xxxxx, Xxxxxx X. Xxxxxxxx and Xxxxxxx X. Xxxxx
4. | Canada Patent No. 2234365, Issued January 20, 2009 |
“Tooling Made By Solid Free Form Fabrication Techniques Having Enhanced Thermal Properties” by Xxxxxx X. Xxxxx, Xxxxxx X. Xxxxxxxx and Xxxxxxx X. Xxxxx
5. | Japan Patent No. 0000000, Issued May 29, 2009 |
“Tooling Made By Solid Free Form Fabrication Techniques Having Enhanced Thermal Properties” by Xxxxxx X. Xxxxx, Xxxxxx X. Xxxxxxxx and Xxxxxxx X. Xxxxx
6. | European Patent Convention Serial No. 96936116.2 , Filed October 1, 1996, Abandoned |
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For M.I.T. Case No. 7642, “Disintegrating Casting Shells,” by Xxxxxxx X. Xxxx, Xxxxxxx X. Xxxxx and Won B. Bang
1. | United States of America Patent No. 6397922, Issued June 4, 2002 |
“Molds for Casting with Customized Internal Structure to Collapse Upon Cooling and to Facilitate Control of Heat Transfer” by Xxxxxxx X. Xxxx, Xxxxxxx X. Xxxxx and Won B. Bang
2. | United States of America Patent No. 6629559, Issued October 7, 2003 |
“Molds for Casting with Customized Internal Structure to Collapse Upon Cooling and to Facilitate Control of Heat Transfer” by Xxxxxxx X. Xxxx, Xxxxxxx X. Xxxxx and Won B. Bang
3. | Canada Patent No. 2409349, Issued August 25, 2009 |
“Molds for Casting with Customized Internal Structure to Collapse Upon Cooling and to Facilitate Control of Heat Transfer” by Xxxxxxx X. Xxxx, Xxxxxxx X. Xxxxx and Won B. Bang
4. | European Patent Convention, Filed May 23, 2001, pending |
Designated, | Issued, | |
United Kingdom Italy France Germany |
For M.I.T. Case No. 7780, “Reactive Binders For Metal Parts Produced By Three Dimensional Printing,” by Xxxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxxxxxxxxx Xxxxxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxx Xxx
1. | United States of America Patent No. 6508980, Issued January 21, 2003 |
“Metal And Ceramic Containing Parts Produced From Powder Using Binders Derived From Salt” by Xxxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxxxxxxxxx Xxxxxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxx Xxx
2. | Canada Patent No. 2304339, Issued April 3, 2007 |
“Metal And Ceramic Containing Parts Produced From Powder Using Binders Derived From Salt” by Xxxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxxxxxxxxx Xxxxxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxx Xxx
3. | Japan Patent No. 0000000, Issued May 29, 2009 |
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“Metal And Ceramic Containing Parts Produced From Powder Using Binders Derived From Salt” by Xxxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxxxxxxxxx Xxxxxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxx Xxx
4. | European Patent Convention Patent No. 1039980, Issued November 24, 2004 |
“Metal And Ceramic Containing Parts Produced From Powder Using Binders Derived From Salt” by Xxxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxxxxxxxxx Xxxxxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxx Xxx
Designated, | Issued, | |
Great Britain | U.K. Patent No. 1039980, Issued November 24, 0000 | |
Xxxxxx | Xxxxxx Patent No. 1039980, Issued November 24, 0000 | |
Xxxxxxx | German Patent No. 1039980, Issued November 24, 2004 |
For M.I.T. Case No. 8873, “Infiltration Of A Net Shape Powder Metal Skeleton By A Similar Alloy With Melting Point Depressed To Create A Homogenous Final Part,” by Xxxxxx X. Xxxxx, Xxxx X. Xxxxxx and Xxxxxxx X. Xxxxx
1. | United States of America Patent No. 6719948, Issued April 13, 2004 |
“Techniques For Infiltration Of A Powder Metal Skeleton By A Similar Alloy With Melting Point Depressed” by Xxxxxx X. Xxxxx, Xxxx X. Xxxxxx and Xxxxxxx X. Xxxxx
2. | United States of America Patent No. 7060222, Issued June 13, 2006 |
“Infiltration Of A Powder Metal Skeleton Of A Similar Materials Using Melting Point Depressant” by Xxxxxx X. Xxxxx, Xxxx X. Xxxxxx and Xxxxxxx X. Xxxxx
3. | Canada Serial No. 2409728, Filed May 21, 2001, Abandoned |
“Infiltration Of A Net Shape Powder Metal Skeleton By A Similar Alloy With Melting Point Depressed To Create A Homogeneous Final Part”
4. | Japan Serial No. 2001-586621, Filed May 21, 2001, Abandoned |
“Infiltration Of A Net Shape Powder Metal Skeleton By A Similar Alloy With Melting Point Depressed To Create A Homogeneous Final Part”
5. | Japan Serial No. 2002-591188, Filed May 17, 2002, Pending |
“Infiltration Of A Powder Metal Skeleton Of A Similar Materials Using Melting Point Depressant”
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6. | European Patent Convention Serial No. 01945970.0, Filed May 21, 2001, Abandoned |
“Infiltration Of A Net Shape Powder Metal Skeleton By A Similar Alloy With Melting Point Depressed To Create A Homogeneous Final Part”
7. | European Patent Convention Serial No. 02771844.4, Filed May 17, 2002, Abandoned |
“Infiltration Of A Powder Metal Skeleton Of A Similar Materials Using Melting Point Depressant”
For M.I.T. Case No. 10327, “Transient Liquid Phase Infiltration of Steel,” by Xxxxxxx X. Xxxxx, Xxxxxx X. Xxxxx, Xxxx X. Xxxxxx, and Xxxxx X. Xxxxxx
1. | United States of America Patent No. 7250134, Issued July 31, 2007 |
“Infiltrating a Powder Metal Skeleton by a Similar Alloy with Depressed Melting Point Exploiting a Persistent Liquid Phase at Equilibrium, Suitable for Fabricating Steel Parts” by Xxxxxxx X. Xxxxx, Xxxxxx X. Xxxxx, Xxxx X. Xxxxxx, and Xxxxx X. Xxxxxx
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EXHIBIT A
Excluded Fields
Aprecia – License Agreement dated May 19, 2004
1.2 “FIELD” shall mean drug delivery products and pharmaceutical products in which such drug delivery products are implemented, in each case for human and veterinary use for all routes of administration including, without limitation, neutraceuticals and cosmetics, where such products are regulated by the U.S. Food and Drug Administration or any equivalent regulatory agency outside the United States (or any successor agency thereto).
Therics – 9th Amendment dated 7-14-2008
“FIELD OF USE” shall mean:
(a) BIOSTRUCTURES which (i) are made directly by 3DP, (ii) consist of tricalcium phosphate (TCP) and/or polymers containing at least 10% by-weight TCP, and (iii) if marketed in the United States, would require submission to, notification of, or approval by the United States Food and Drug Administration.
(b) machines for making BIOSTRUCTURES and accessory components sold with the BIOSTRUCTURE.
(c) functional prototypes of products falling into (a) above if fabrication of such prototypes is part of an intent and agreement to manufacture the product directly by 3DP, even if such manufacturing does not take place despite the good faith efforts of the parties.
“BIOSTRUCTURE” shall mean a LICENSED PRODUCT intended for use (i) as bone replacement or bone void filler or in bone repair, (ii) in orthopedic products such as internal fixation devices, cartilage and joints, and (iii) as dental devices both above and below the gum line. A BIOSTRUCTURE may contain pharmaceuticals or other active or inactive ingredients. Notwithstanding the above, a BIOSTRUCTURE shall not mean LICENSED PRODUCT intended for use as neural tissue or repair of neural tissue.
EXCLUDED FIELDS also include matrices, scaffolds or other supportive structures which may be used in combination with cells, tissues or organs; products for the repair of vascular or tubular tissues; organs including those incorporating a temporary or permanent cell line to produce naturally occurring substances that substitute for organ function; organs and tissues used as drug delivery systems; skin healing and replacement products; those elements of in vitro diagnostic devices which interact with human biological materials and contain the reactants specific to the test being performed; products intended for use as neural tissue or repair of neural tissue; and diagnostic scaffolds.
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Z Corporation – 7th Amendment dated 8-10-2004
The exclusive “FIELD OF USE” shall consist of FOU1 defined below. The following definitions are applicable to this FIELD OF USE:
PATTERN is defined as the positive of a part which is used in a subsequent series of negative-positive transformations to achieve a final part.
MOLD or TOOL is defined as the negative of a part or portion thereof which is used in one or more subsequent processes of negative-positive transformation to achieve a final part.
VOLUME shall mean the solid volume of a part, PATTERN, MOLD, or TOOL. By example, the VOLUME of a rectangular part with dimensions a, b, and c is “a times b times c”. If the same part were to have a square d-by-d hole through its entire c dimension length, the its VOLUME would be ((a times b times c) minus (d times d times c)).
FOU1 shall mean
(a) the fabrication of appearance models, and prototypes whose purpose is for visualization or the evaluation of form, fit, function, or aesthetics;
(b) the fabrication of PATTERNS which will subsequently be used to create a mold from which a final part will be made;
(c) the fabrication of MOLDS or TOOLS for creating parts which parts may not be greater than 10%-by-VOLUME metal; and
(d) the manufacture and sale of machines to be used for fabrication as set forth in (a), (b), and (c) of this FOU1.
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