EXHIBIT 10.15
TECHNOLOGY LICENSE AGREEMENT
This Technology License Agreement ("Agreement") is entered into as of January
13, 2003 (the "Effective Date"), by and between Data International, Ltd., a
Taiwan corporation, whose principal office is located at 5 Fl. Xx 00 Xxxx 000,
Xxxx-Xxxx, Xxxxxx Xxxxx, Xxxxxx, XXX ("Licensor"), and TFS-DI., a Arizona
corporation, and a wholly owned subsidiary of Three-Five Systems, Inc. whose
principal office is located in Tempe, Arizona ("Licensee"). Licensor and
Licensee are each sometimes referred to herein as a "Party" and together as the
"Parties."
BACKGROUND
A. Licensor has rights in certain patents, technology, and know-how that
it wishes to license to Licensee, so that Licensee may sell, market and offer to
sell Products (as defined below) utilizing same.
B. Licensee desires a worldwide license as described in this Agreement.
C. In connection with such license, Licensee desires to purchase from
Licensor, and Licensor desires to sell to Licensee, the Associated Assets (as
defined below) on the terms and conditions set forth in this Agreement.
AGREEMENT
For good and valuable consideration, the adequacy of which is hereby
acknowledged, the Parties agree as follows:
1.0 DEFINITIONS.
1.1 "ANCILLARY AGREEMENTS" means, collectively, the (i) Xxxx of Sale in
substantially the form attached hereto as Exhibit 1.1(i) and made a part hereof,
(ii) Assignment and Assumption Agreement in substantially the form attached
hereto as Exhibit 1.1(ii) and made a part hereof and, (iii) subject to the terms
and conditions of this Agreement, each other document and instrument reasonably
requested by Licensor and/or Licensee that is necessary to confirm the transfer
of the Associated Assets to Licensee, and Licensee's ownership thereof, on and
after the Effective Date.
1.2 "ASSOCIATED ASSETS" means the Personal Property, the Lease, the
Website, the Non-Compete Agreement and the Books and Records.
1.3 "BOOKS AND RECORDS" means all books, records, books of account,
financial records, financial statements, files, data and papers, whether in hard
copy, computer format or otherwise, used or held for use by Licensor or any of
its subsidiaries in connection with or related to the Associated Assets.
1.4 "CONFIDENTIAL INFORMATION" means all information disclosed in any
manner to a Receiving Party by a Disclosing Party including, but not limited to,
business or technical information, know-how, technology, inventions,
formulations, improvements, specifications,
designs and concepts, regardless of the manner in which such information is
disclosed. Information that would otherwise qualify as Confidential Information
shall not be considered as such if the Receiving Party can show that any one of
the following conditions exists.
(i) The Receiving Party knew (as can be shown by documentary
evidence predating the Effective Date) the information prior
to disclosure by the Disclosing Party and held it without
restriction as to further disclosure.
(ii) Another source lawfully disclosed the information to the
Receiving Party and did not restrict the Receiving Party in
the further use or disclosure of the information.
(iii) The information was already in the public domain when the
Disclosing Party disclosed it to the Receiving Party, or
entered the public domain after the Disclosing Party disclosed
it to the Receiving Party, but through no fault of the
Receiving Party.
(iv) Public disclosure is required by government regulation or
order. In such case the Receiving Party shall publicly
disclose the minimum amount of Confidential Information
necessary to comply with the regulation or order. If possible,
Confidential Information disclosed under this Section shall be
designated as confidential or proprietary.
1.5 "CUSTOMERS" means Licensor and/or DI-Florida current or past
customers.
1.6 "DI-FLORIDA" means Data International of North America, LLC.
1.7 "DISCLOSING PARTY" means a Party that discloses information to the
other Party. "RECEIVING PARTY" means a Party that receives information from the
other Party.
1.8 "IMPROVEMENT" or "IMPROVEMENTS" mean any invention, discovery,
know-how or technology developed by Licensee, and includes any change,
extension, or improvement to the Licensed Technology.
1.9 "LAW" means any federal, state, local or foreign law, statute,
ordinance, rule, regulation, code, license, permit, authorization, approval,
consent, legal doctrine, order, judgment, decree, award, injunction,
requirement, judicial or regulatory agency interpretation, policy or guidance or
agreement with any governmental authority having jurisdiction over the
transactions contemplated by this Agreement.
1.10 "LEASE" means the Office Lease Agreement dated March 31, 2000,
pertaining to the Premises.
1.11 "LICENSE" means the License granted by Licensor to Licensee under
this Agreement.
1.12 "LICENSED TECHNOLOGY" means any Patents, know-how, show-how, trade
secrets, and Confidential Information and other intellectual property rights now
owned or licensed by, or
-2-
hereafter acquired or licensed by, Licensor and that are necessary for or useful
in the use or sale of the Products. Improvements are specifically excluded from
the Licensed Technology.
1.13 "MARKS" means any trademarks, service marks or trade names used by
Licensee in connection with the distribution, use, marketing or sale of
Products.
1.14 "NON-COMPETE AGREEMENT" means the Non-Compete Agreement dated as of
the Effective Date, between Khaled R. Khuda and Licensor.
1.15 "PATENT" or "PATENTS" means any worldwide, foreign or domestic
patents, and patent continuations or extensions now owned or licensed by, or
hereafter acquired or licensed by, Licensor and that are necessary for or useful
in the use or sale of the Products.
1.16 "PERSONAL PROPERTY" means all of the tangible personal property owned
by Licensor and located at the Premises, as specifically described on Exhibit
1.15 attached hereto and made a part hereof.
1.17 "PREMISES" means the real property located at 0000 Xxxxxxxxxx Xxxx.,
Xxxxx 000, Xxxxxxx, Xxxxxxx 00000.
1.18 "PRODUCT" or "PRODUCTS" means all products manufactured by Licensor
for Licensee, including Liquid Crystal Displays ("LCD") and LCD related
products.
1.20 "PURCHASE ORDERS" means all Product purchase orders (including
Purchase Order backlog) placed by Customers with either Licensor and/or
DI-Florida.
1.21 "PURCHASE ORDER LOSS" means (a) a purchase order not transferred to
Licensee and/or (b) remit to payment designation located on a purchase order not
listing or designating Licensee as payee.
1.22 "SUPPLY AGREEMENT" means the Supply Agreement in substantially the
form attached hereto as Exhibit 1.18 and made a part hereof.
1.23 "TERRITORY" means Xxxxx Xxxxxxx, Xxxxxxx Xxxxxxx xxx Xxxxx
Xxxxxxx.
1.24 "SUPPLY AGREEMENT" means the agreement between the Licensor and
Licensee, whereby the Licensor manufactures and delivers certain Products to
Licensee, as ordered by Licensee.
1.25 "WEBSITE" means all rights in internet web sites and internet domain
names used by DI-Florida.
2.0 TECHNOLOGY LICENSE GRANT. Licensor grants to Licensee and Licensee hereby
accepts an exclusive, perpetual license within the Territory, and a
non-exclusive license worldwide, under the Licensed Technology to market,
distribute, sell and offer to sell Products in all fields of use.
Notwithstanding the foregoing, in situations where Licensee's customers (a) are
former customers of DI-Florida or (b) place sample, prototype, tooling, or
production orders directly with Licensee, Licensees rights under the License
Technology pursuant to this Agreement shall be exclusive.
-3-
3.0 SALE AND PURCHASE OF ASSOCIATED ASSETS. As of the Effective Date, subject to
the terms and conditions of this Agreement, Licensor shall sell, assign,
transfer and convey to Licensee, and Licensee shall purchase and acquire from
Licensor, all of Licensor's right, title and interest in and to the Associated
Assets. Part of the Associated Assets shall be Customer Purchase Orders and
Purchase Order(s) backlog.On or before the Effective Date, Licensor shall convey
title to the Associated Assets to Licensee by (a) delivery of the Ancillary
Agreements to Licensee and (b) confirming authorization for the appropriate
domain name registrar(s) to transfer ownership of the Website to Licensee.
4.0 LICENSE FEE. In consideration for the License and the Associated Assets,
Licensee shall pay Licensor a license fee totaling US $4 million, payable as
follows:
4.1 Licensee shall pay Licensor US $1 million in cash or other immediately
available funds on or before the Effective Date; and
4.2 Licensee shall deliver a promissory note (the "Note") of Licensee as "Maker"
in favor of Licensor as "Payee" in the original principal amount (including
interest) of US $3 million ("Indebtedness"), payable not later than the second
anniversary of the Effective Date, in the form attached hereto as Exhibit 4.2
and made a part hereof; provided, however, that the principal amount of the Note
(the "Principal Amount") is subject to the following adjustments:
(i) The Indebtedness shall be reduced on the first anniversary of
the Effective Date in an amount equal to 25% of the
"Shortfall" for the year 2003. For purposes of this Agreement,
the "Shortfall" for 2003 shall be the amount by which $2
million exceeds the total gross margin dollars earned by the
Licensee on all Products shipped by Licensee in 2003 (as
determined in accordance with generally accepted accounting
principles).
(ii) The Indebtedness shall be reduced on the second anniversary of
the Effective Date in an amount equal to 25% of the
"Shortfall" for the year 2004. For purposes of this Agreement,
the "Shortfall" for 2004 shall be the amount by which $2
million exceeds the total gross margin dollars earned by the
Licensee on all Products shipped by Licensee in 2004 (as
determined in accordance with generally accepted accounting
principles). If no Shortfall occurred for 2004, and if a
Shortfall occurred for 2003, then an additional amount shall
be paid to Payee on the second anniversary of the Note equal
to 25% of the "Excess" for the year 2004. For purposes of this
Agreement, the "Excess" for 2004 shall be the amount by which
the total gross margin dollars earned by the Licensee on all
Products shipped by Licensee in 2004 (as determined in
accordance with generally accepted accounting principles)
exceeds $2 million. However, in no event shall the Excess in
2004 be more than the Shortfall for 2003;
(iii) The Indebtedness shall be reduced by the amount of any loss,
expense or damages incurred by Licensee arising out of
Licensor's breach of any of its representations, warranties or
covenants made herein; and
-4-
(iv) The Indebtedness shall be reduced by a percentage equal to (a)
the number of calendar months remaining after any termination
of the License (beginning with the first calendar month after
the date of such termination) until and including the month in
which the second anniversary of the Effective Date occurs,
divided by (b) twenty-four (24).
(v) The Indebtedness shall be reduced by the amount of any loss,
expense or damages incurred by Licensee arising out of
Licensor's breach of any terms and conditions contained in the
Supply Agreement.
(vi) The Indebtedness shall be reduced, on a dollar for dollar
basis, by the amount of any loss, expense or damages incurred
by Licensee arising out of Purchase Order or Purchase Order
backlog Loss.
(vii) The Indebtedness shall be reduced, on a dollar for dollar
basis, by the amount of any loss, expense or damages incurred
by Licensee where the Customers do not qualify Licensee do
business with them or do not place Licensee on the Customers
approved vendor list ("AVL").
(viii)The Indebtedness shall be reduced, on a dollar for dollar
basis, by the amount of any loss, expense or damages incurred
by Licensee on any Products returned by Customers after the
Effective Date of this Agreement.
5.0 PATENT MARKING. Licensee shall xxxx all Products falling within the scope of
one or more Patents with patent marking or other applicable legends in a manner
approved by Licensor in order to conform to applicable marking statutes,
including 35 U.S.C. Section 287.
6.0 CONFIDENTIALITY.
6.1 Limited Distribution. The Receiving Party shall limit access to
Confidential Information to each of its employees who (a) has a need to know the
Confidential Information for the purposes set forth in this Agreement, and (b)
is under a written obligation to hold the Confidential Information in confidence
under terms and conditions at least as restrictive as those in this Agreement.
The Receiving Party shall copy Confidential Information only as reasonably
necessary for it to complete the purposes of this Agreement.
6.2 Limitations on Use or Disclosure. The Receiving Party shall hold
Confidential Information in confidence in accordance with this Agreement and the
Receiving Party may use Confidential Information only for the purposes set forth
in this Agreement. In the event the Receiving Party intends to disclose the
Confidential Information to a third party, the Confidential Information shall be
disclosed (a) only after obtaining written authorization from the Disclosing
Party, and (b) only if said third party is under a written obligation, approved
of in advance by the Disclosing Party, to hold the Confidential Information in
confidence under terms and conditions at least restrictive as those in this
Agreement. The Receiving Party shall not disclose Confidential Information to
any third party except as set forth in this Agreement.
-5-
6.3 Duty of Care. The Receiving Party shall satisfy its obligations to
protect Confidential Information from misuse or unauthorized disclosure by
exercising reasonable care. Such care shall include protecting Confidential
Information using those practices required by law to maintain the Confidential
Information as a trade secret.
6.4 Return of Confidential Information. The Receiving Party shall, upon
the termination of this Agreement, (a) destroy all received Confidential
Information, including copies, then in its possession or control, or (b) return
all such Confidential Information and copies to the Disclosing Party.
7.0 IMPROVEMENTS.
7.1 All Improvements shall be owned solely by Licensee and shall be
considered the Confidential Information of Licensee.
7.2 If any Improvement constitutes patentable subject matter, Licensee
shall have the sole right to file for and obtain patent protection thereon
throughout the world. Licensee shall be responsible for all fees, including
governmental and attorneys fees, related to any such patent applications or the
maintenance of any resulting patents. Any patent with one or more claims
directed to an Improvement shall not be included within the definition of Patent
or within the definition of Licensed Technology.
8.0 SUBLICENSES. Licensee shall have the right during the term of this Agreement
to sublicense third parties to sell, distribute or market Products. Any such
sublicense shall be in accordance with a written sublicense agreement that
includes identical standards and restrictions as those contained in this
Agreement.
9.0 THIRD-PARTY VIOLATIONS.
9.1 In the event Licensee becomes aware of any information indicating that
a third party may be infringing or misappropriating, or may have infringed or
misappropriated (collectively, "violation") any of the Licensed Technology,
Licensee shall, in its sole discretion, determine whether to bring a claim or
action to stop the violation.
9.2 All expenses and costs incurred by Licensee in the course of any
action, including litigation, pursuant to Section 9.1 shall be paid by Licensee.
All recoveries including, but not limited to, awards of damages, statutory
damages, and awards of attorneys' fees, expenses and/or costs, obtained in the
course of any such action shall be paid to Licensee.
9.3 If Licensor desires its own attorney in any such action, it shall pay
its own attorneys fees and related costs.
10.0 THIRD-PARTY CHALLENGES.
10.1 In the event that any third party alleges that a Product infringes
any intellectual property rights of such third party, Licensor shall indemnify
and hold harmless Licensee against any and all claims or damages resulting from
such infringement.
-6-
10.2 If a Product is held to infringe the intellectual property rights of
a third party and Licensee is required to pay a royalty to such party for the
right to continue to sell such Product, or if settlement of any claim of rights
similarly so requires, Licensor shall be required make such payments or Licensee
may terminate this Agreement for cause in accordance with Section 16.0.
11.0 ASSISTANCE. The Parties shall fully cooperate with each other in any such
action as set forth in Sections 9.0 and 10.0.
12.0 NONUSE OF MARKS. Licensor shall not use or register (a) any of the Marks
(regardless of style, presentation or language in which Licensor may reproduce
the Xxxx, or whether used in conjunction with another xxxx, word, term, phrase,
name, design or logo), or (b) any xxxx, work, term, phrase, name, design or logo
that is confusingly similar to any of the Marks.
13.0 CONDITIONS PRECEDENT. The effectiveness of this Agreement is subject to the
satisfaction of the following conditions as of the Effective Date:
13.1 All of Licensor's representations and warranties set forth in this
Agreement shall be true and correct.
13.2 There shall have been no order or preliminary or permanent injunction
entered in any action or proceeding before any United States federal or state
court or any foreign court of competent jurisdiction or any governmental
authority that has jurisdiction over the enforcement of any applicable Laws
making illegal or prohibiting the consummation of the transactions contemplated
by this Agreement;
13.3 No action, suit, or proceeding shall be pending before any court or
quasi-judicial court or administrative agency of any federal, state, local or
foreign jurisdiction or before any arbitrator wherein an unfavorable injunction,
judgment, order, decree, ruling, or charge would (i) legally prevent
consummation of the transactions contemplated by this Agreement, or (ii) cause
the transactions contemplated by this Agreement to be rescinded following
consummation;
13.4 Licensor, as holder of a majority ownership interest in DI-Florida,
shall have procured the release of any and all non-compete, non-solicitation and
other employment-related agreements between DI-Florida and any of its employees;
13.5 Licensee shall have delivered a certificate to Licensor acknowledging
that it has hired such current or past employees of DI-Florida as Licensee deems
necessary or desirable, to Licensee's satisfaction, in its sole and absolute
discretion.
13.6 DI-Florida shall have assigned any and all right, title and interest
it may have in and to the Personal Property, the Lease, the Website and the
Books and Records to Licensor.
13.7 Licensor and Licensee shall have executed and delivered to each other
a duly executed counterpart of the Supply Agreement.
13.8 Licensor shall have contacted all Customers and shall have had them
execute a letter acknowledging and agreeing to (a) all Purchase Order being
transferred to Licensee and/or
-7-
(b) agreeing to change immediately the remit to payment designation located on
its Purchase Orders designating Licensee as payee.
14.0 REPRESENTATIONS AND WARRANTIES. Licensor represents and warrants to
Licensee that:
14.1 For the term of the License, (i) Licensor is either the sole owner,
or exclusive licensee of, all of the Licensed Technology and that no third party
has the right to use, or to authorize another to use, any of the Licensed
Technology in competition with Licensee within the Territory and (ii) Licensor
has the right and authority to grant the license described herein;
14.2 The use of the Licensed Technology does not infringe upon or
misappropriate the rights of any third party;
14.3 There has been no holding, decision or judgment rendered by any
governmental authority that would limit, cancel or question the validity of any
of the Licensed Technology;
14.4 Licensor has received no notice of any adversely held patent, patent
right, trademark, service xxxx, trade name, trade secret, copyright, or other
proprietary right of any other person or notice of any claim of any other person
that would affect the validity or value of the Licensed Technology, nor has
Licensor made a claim against any person, relating to any of the Licensed
Technology and Licensor has no knowledge of any basis for any such claim;
14.5 Neither Licensor nor any of its respective officers, directors,
shareholders or affiliates have any commitment or legal obligation, absolute or
contingent, to any other person or firm other than Licensee to sell, assign,
transfer or effect a sale of any of the Associated Assets, other than in the
ordinary course of business;
14.6 Licensor has good and marketable title to the Personal Property and
the Personal Property is in good operating condition and repair, subject to
ordinary wear and tear;
14.7 Licensor enjoys peaceful and undisturbed possession of the Premises
and there are no leases, subleases, licenses, occupancy agreements, options,
rights, concessions or other agreements or arrangements, written or oral,
granting to any third party the right to purchase, use or occupy the Premises or
any portion thereof;
14.8 Neither Licensor nor any of its respective officers, directors,
employees, shareholders or affiliates has employed or made any agreement with
any broker, finder or similar agent or any person or firm which will result in
an obligation to pay any finder's fee, brokerage fees or commission or similar
payment in connection with the transactions contemplated hereby;
14.9 The execution and delivery of, and Licensor's performance under, this
Agreement are within its powers and have been duly authorized by all requisite
entity action;
14.10 The persons executing this Agreement on Licensor's behalf are duly
authorized to do so and thereby bind it hereto;
-8-
14.11 This Agreement is Licensor's valid, legal and binding obligation,
enforceable in accordance with the terms hereof, and does not conflict with or
violate any Law applicable to either Party; and
14.12 Licensor's performance under this Agreement will not result in the
breach of, or constitute a default under, any agreement or other instrument to
which it is a party or by which it is bound.
15.0 INDEMNIFICATION.
15.1 In the event of an unauthorized disclosure of Confidential
Information by the Receiving Party, employee of a Receiving Party or third party
to whom a Receiving Party disclosed Confidential Information, the Receiving
Party shall indemnify the Disclosing Party for (a) any monetary damages
resulting from the unauthorized disclosure, and (b) reasonable legal fees
associated with obtaining an injunction related to and/or monetary damages
resulting from the unauthorized disclosure.
15.2 Each Party (the "Indemnifying Party") shall indemnify and hold the
other (the "Indemnified Party") harmless for, from and against any and all
claims, liabilities, loss, expense (including reasonable attorney fees) or
damages arising out of (i) the Indemnifying Party's breach of this Agreement,
provided that the Indemnified Party shall, with reasonable promptness, notify
the Indemnifying Party of any such claim, demand, or suit and shall fully
cooperate in the defense thereof; (ii) the conduct of the Indemnifying Party's
business; (iii) any grossly negligent act or willful misconduct by the
Indemnifying Party or any of its agents, contractors, servants or employees, (v)
any and all fees, costs and expenses incurred by or on behalf of the Indemnified
Party in the investigation of or defense against any and all of the foregoing
claims, and (vi) the Indemnifying Party's breach of any of its representations,
warranties or covenants made herein. The Indemnifying Party shall have the right
to designate counsel to defend against such claims and suits; however, at the
Indemnified Party's option, the Indemnified Party shall have the right to
participate in the defense with its own counsel at its own expense. In no event
shall any such claims or suits affecting the rights of a Party be settled
without the prior written consent of that Party.
16.0 LICENSE TERM AND TERMINATION.
16.1 Unless terminated sooner in accordance with this Agreement, the
License shall continue until Licensee ceases distributing, selling or marketing
Products or in perpetuity, whichever comes first.
16.2 Licensee may terminate the License upon ten (10) days written notice
to Licensor if (a) Licensee discovers or determines that any of Licensor's
representations and warranties set forth in this Agreement are inaccurate or
untrue in any material respect, or (b) the Licensor fails to comply in any
material respect with any term or condition of this Agreement and such failure
to comply is not corrected within the foregoing ten (10) day notice period. In
the event that the Licensee terminates this Agreement in accordance with (a) or
(b) above, then, any monies or obligations owed by Licensee to Licensor under
the Note shall cease and be terminated without penalty to Licensee.
-9-
16.3 The License may be terminated by the mutual, written consent of the
Parties.
16.4 Sections 6.0, 7.0 and 11.0 shall survive the termination of the
License.
16.5 Upon expiration or termination, for any reason or cause, of the
License, Licensee and any sublicensee of Licensee shall immediately cease all
use of the Licensed Technology and shall not use any Licensed Technology
thereafter; provided, however, that Licensee shall be entitled to market and
distribute any existing inventory of Products for a period of three months after
termination.
17.0 FURTHER ASSURANCES. Licensor shall, at any time and from time to time, upon
the request of Licensee, promptly and duly execute and deliver any and all such
further instruments and documents and take such further action as Licensee may
reasonably request to obtain the full benefits of this Agreement and of the
rights and powers herein granted.
18.0 ASSIGNMENT.
18.1 Licensee may assign this Agreement or any right or duty hereunder
without the express prior written consent of the other Party. Licensor may not
assign this Agreement or any right or duty hereunder without the express prior
written consent of Licensee.
18.2 If assigned, the rights and obligations under this Agreement shall
accrue to and be binding upon the permitted assigns or successors to this
Agreement.
19.0 NOTICE.
19.1 Any notice required or provided for by the terms of this Agreement
shall be in writing, and any notices, reports, and statements provided for
hereunder shall be sent by (i) personal delivery, (ii) registered or certified
mail, (iii) facsimile transmission, or (iv) commercial overnight delivery
service, to the Party to be served therewith at the address set forth below:
If to Licensor: Data International, Ltd.
------------------------
------------------------
With a copy to:
------------------------
------------------------
------------------------
If to Licensee: Three-Five Systems, Inc.
0000 Xxxxx Xxxxxx Xxxxx
Xxxxx, Xxxxxxx 00000
Attn: General Counsel
A change in mailing address for the foregoing purposes may be made
by either Party by giving written notice thereof to the other Party.
-10-
19.2 Each communication given under this Section 19.0 shall be deemed to
have been given on the date of personal delivery, two (2) business days
following deposit thereof with the United States Postal Service (postage
prepaid), or one (1) business day following delivery of such communication to
the delivery service or facsimile transmission thereof.
20.0 RIGHT TO INJUNCTION AND ATTORNEY'S FEES.
20.1 Each Party agrees that any breach of this Agreement by it or any of
its employees, agents, officers or directors or any other third person acting in
concert with it or on its behalf may cause irreparable harm and result in
significant commercial damage to the other Party. It is further understood and
agreed that monetary damages would not be a sufficient remedy for any breach of
this Agreement and that, in addition to monetary damages and all other rights
and remedies available at law to the non-breaching Party shall be entitled to
equitable relief, including injunctive relief, specific performance and/or the
granting of an immediate restraining order and/or preliminary injunction
(without posting bond) enjoining any such breach or reasonably anticipated
breach as a remedy. Such equitable remedies shall not be deemed to be the
exclusive remedies for a breach of this Agreement but shall be in addition to
all other remedies available at law or equity.
20.2 If a Party prevails in any action against the other for a breach of
the terms of this Agreement, including a restraining order and/or injunction,
then, in addition to any damages that may be awarded to the prevailing Party, it
shall be entitled to recover its reasonable attorney fees and other litigation
costs from the other Party in connection with such litigation, including any
appeal therefrom.
21.0 FORCE MAJEURE.
21.1 If the performance of this Agreement, or any obligation under this
Agreement, is prevented, restricted or interfered with by reason of fire, flood,
earthquake, explosion or other casualty or accident, strikes or labor disputes,
inability to procure or obtain delivery of parts, supplies or power, war or
other violence, any law, order, proclamation, regulation, ordinance, demand or
requirement of any governmental agency, or any other act or condition whatsoever
beyond the reasonable control of the affected Party, the Party so affected, upon
giving prompt notice to the other Party, shall be excused from such performance
to the extent of such prevention, restriction or interference; provided,
however, that the Party so affected shall take all reasonable steps to avoid or
remove such cause of nonperformance and shall resume performance under this
Agreement with dispatch whenever such causes are removed.
21.2 If a Party was required to meet a scheduled date of performance of
any obligation during such period of nonperformance, then the date for
performance shall be extended by a period equal to the period of nonperformance.
22.0 CHOICE OF LAW AND FORUM; SERVICE OF PROCESS.
22.1 This Agreement is made under, and shall be governed by and construed
in accordance with, the laws of the United States and the internal laws of the
State of Arizona, without reference to its principles of conflicts of law. This
Agreement shall be deemed executed in Tempe, Arizona.
-11-
22.2 The United States District Court for the District of Arizona and the
state courts of Arizona located in Maricopa County shall have exclusive
jurisdiction over any dispute involving this Agreement or the Licensed
Technology, and each Party consents to personal jurisdiction in such courts.
Licensor acknowledges that (i) Licensee is headquartered in Tempe, Arizona, (ii)
the majority of Licensee's records and employees are in Tempe, Arizona, and
(iii) Maricopa County, Arizona is the most convenient locale for legal
proceedings between the Parties. The Parties agree that either or both of them
may file a copy of this Section 22.0 with any court of competent jurisdiction as
written evidence of the knowing, voluntary and bargained agreement between the
Parties irrevocably to waive any objections to venue or to convenience of forum.
22.3 Process in any proceeding involving a dispute arising out of or
relating to this Agreement or the Licensed Technology may be served on either
Party anywhere in the world in any manner authorized under Section 19.0 above.
23.0 CHOICE OF LAW FOR NON-US PATENTS. Any dispute between the Parties
concerning the scope, interpretation or validity of a non-US patent shall be
determined by the laws governing same.
24.0 ENTRY OF JUDGMENT. Each Party agrees that any judgment rendered by a court
of competent jurisdiction may be enforced against it in any jurisdiction
throughout the world. Each Party further agrees that it will not take legal
action in any country or forum to prevent the entry or enforcement of any
judgment rendered against it, other than to appeal the decision of a court of
competent jurisdiction as set forth in Section 22.0.
25.0 MISCELLANEOUS.
25.1 Entire Agreement. This Agreement sets forth the entire agreement and
understanding of the Parties with respect to the subject matter hereof and
merges all prior discussions with respect to same. Any modification to this
Agreement must be in writing and signed by a duly authorized agent of the
Party(ies) to be bound.
25.2 Independent Contractors. The Parties are independent contractors.
Each shall bear its own costs and expenses incurred in connection with this
Agreement. Neither Party has the authority to bind the other to any third party
agreement, except as may be mutually agreed to in a separate writing. In no
event shall either Party be liable for any debts of the other Party to its
customers or its other creditors unless provided for in this Agreement or in a
separate writing.
25.3 Severance. In the event a court of competent jurisdiction finds any
provision herein illegal or unenforceable, the illegal or unenforceable
provision shall be enforced, if possible, to the greatest extent allowed by law
in accordance with the Parties' intent as reflected by this Agreement. If said
provision cannot be enforced, the remainder of the Agreement shall be enforced
to the greatest extent possible, and the offending provision shall be treated as
though not a part of this Agreement.
25.4 No Waiver Of Rights. Neither failure of either Party to give notice
of any breach or indulgence or waiver of its rights under this Agreement shall
affect its position under this Agreement or shall be construed as a waiver of
its right to give such notice for any subsequent
-12-
breach. Nor shall any failure to give notice constitute a waiver or release of
any breach committed by a Party unless such breach shall be expressly waived in
writing.
25.5 Interpretation. This Agreement shall be interpreted in accordance
with its fair meaning, and no provision of this Agreement shall be interpreted
for or against either party hereto because that party or that party's counsel
drafted such provision.
25.6 Counterparts. This Agreement may be executed in any number of
counterparts and by each of the Parties hereto in separate counterparts, each of
which, when so executed and delivered, shall be an original, but all such
counterparts shall together constitute but one and the same instrument.
[Remainder of page intentionally blank]
-13-
IN WITNESS WHEREOF, Licensor and Licensee have executed this Agreement
effective as of the Effective Date.
Licensor: DATA INTERNATIONAL, LTD.
By /s/ X.X. Xxxxx /s/ Xxxxx Xxxx
------------------------------- -----------------------------------
Name X.X. Xxxxx Name Xxxxx Xxxx
----------------------------- -----------------------------------
Title President Title Vice President
---------------------------- ----------------------------------
Date Jan/10/2003 Date Jan/10/03
----------------------------- -----------------------------------
Licensee: TFS-DI
By /s/ Xxxxxx Xxxxxxx
-------------------------------
Name Xxxxxx Xxxxxxx
-----------------------------
Title Secretary
----------------------------
Date January 13, 2003
-----------------------------
