LICENSE AGREEMENT
EXHIBIT
10.5
THIS
LICENSE AGREEMENT (this "Agreement") is made as of April 15, 2008 (the
“Effective Date”) by and between Hybrid Technologies, Inc., a Nevada corporation
having an address at 0000 Xxxx Xxxxxxxxxx, Xxxxx 000-000, Xxx Xxxxx, XX 00000
("Hybrid"), and Zingo Inc., a Nevada corporation having an address at 000 X.
Xxxxxx Xxxx., Xxxxx X0-000, Xxx Xxxxx, XX 00000. ("Zingo").
RECITALS
WHEREAS,
Hybrid owns and has the right to license the Patent Rights (defined below);
WHEREAS,
Hybrid desires to exclusively license to Zingo, and Zingo desires to obtain
a
license from Hybrid to, the Patent Rights;
NOW,
THEREFORE, the parties agree:
ARTICLE
1.
DEFINITIONS
The
terms, as defined herein, shall have the same meanings in both their singular
and plural forms.
1.1 “Affiliate”
means any corporation or other business entity in which Zingo owns or controls,
directly or indirectly, more than fifty percent (50%) of the outstanding stock
or other voting rights entitled to elect directors, or in which Zingo is owned
or controlled directly or indirectly by more than fifty percent (50%) of the
outstanding stock or other voting rights entitled to elect directors.
1.2 “Licensed
Field” means rechargeable lithium-ion batteries for hybrid vehicles
and other applications.
1.3 “Licensed
Product” means any product for which the manufacture, use, sale, offer for sale,
or importation would constitute, but for the license granted to Zingo by Hybrid
herein, an infringement of any Valid Claim within the Patent
Rights.
1.4 “Patent
Rights” means any and all patents and patent applications (including inventor's
certificates and utility models) listed on Exhibit A, including any
substitutions, extensions, reissues, reexaminations, renewals, divisions,
continuations, continuation-in-parts and foreign counterparts of any of the
foregoing.
1.5 “Retained
Field” means any products outside of the Licensed Field.
1.6 “Valid
Claim” means any patent claim within the Patent Rights that has not expired or
been held invalid in a final decision by a patent office or by a court of
competent jurisdiction.
ARTICLE
2.
GRANT
2.1 License.
Hybrid hereby grants to Zingo, and Zingo hereby accepts, a worldwide, exclusive,
perpetual license, under the Patent Rights, to make, use, sell, offer for sale
and import Licensed Products and practice any methods covered by the Patent
Rights, solely within the Licensed Field. Zingo shall have the right to
sublicense under this Agreement only with (i) the consent of Hybrid and (ii)
Hybrid’s approval of the terms of each such sublicense.
2.2 Developmental
Capital. Zingo shall invest not less than One Million Five Hundred Thousand
Dollars ($1,500,000) in the development of the Licensed Products in each of
the
first two years after the Effective Date, for a total investment of not less
than Three Million Dollars ($3,000,000) in the first two years after the
Effective Date.
2.3 Delivery.
Hybrid will deliver to Zingo tangible examples and prototypes of the Patent
Rights in the Licensed Field, including any schematics, diagrams, designs and
molds, held by Hybrid.
ARTICLE
3.
PREFERENTIAL
PURCHASE RIGHTS AND PRICING; LEASE
3.1 Preferential
Purchaser. Hybrid shall have the right to purchase its requirements of lithium
ion batteries from Zingo. Hybrid’s requirements of lithium ion batteries shall
be supplied to Hybrid in preference to, and on a priority basis as compared
with, supply and delivery arrangements in effect for other customers of
Zingo.
3.2 Sales
at
Cost. Hybrid’s cost for lithium ion batteries purchased from Zingo shall be
Zingo’s actual manufacturing costs for such batteries for the fiscal quarter of
Zingo in which Hybrid’s purchase takes place. Hybrid shall have the right to
audit Zingo’s manufacturing costs as provided in Article 4.
3.3 Lease.
Effective April 16, 2008, Zingo will lease approximately 5,000 square feet
of
space (“Leased Space”) in Hybrid’s North Carolina facility, such Leased Space to
be suitable for, and utilized by Zingo for, Zingo’s developmental and
manufacturing operations for Licensed Products pursuant to this Agreement.
The
Leased Space shall be leased by Hybrid to Zingo on a month-to-month basis at
a
monthly rental of $2,500, the monthly rental to be escalated five (5%) percent
annually.
3.4
Sale of
Equipment and Supplies. Effective April 16, 2008, Hybrid shall sell to Zingo
for
the purchase price of $29,005, and Hybrid hereby assigns, transfers and sells
to
Zingo, the equipment and supplies related to the Licensed Field listed on
Exhibit B hereto.
ARTICLE
4.
AUDIT
RIGHTS
4.1 Records
& Audits.
(a) Zingo
shall use reasonable efforts to keep accurate and correct records of all
Licensed Products manufactured, used, and sold, and sublicense fees received
under this Agreement. Such records shall be retained by Zingo for at least
two
(2) years following a given reporting period.
(b) All
records of Zingo and its Affiliates and Sublicensees shall be available during
normal business hours for inspection at the expense of Hybrid by a nationally
recognized certified public accountant selected by Hybrid and acceptable to
Zingo for the sole purpose of pricing of lithium batteries to Hybrid. Such
inspector shall not disclose to Hybrid any information other than information
relating to the accuracy of reports and payments made under this Agreement
or
other compliance issues. In the event that any such inspection shows an
overcharge to Hybrid in excess of ten percent (10%) for any twelve (12) month
period, then Zingo shall pay the cost of the audit as well as any additional
sum
that would have been not been payable by Hybrid had Zingo priced lithium ion
batteries sold to Hybrid correctly.
ARTICLE
5.
PATENT
MATTERS
5.1 Patent
Prosecution and Maintenance.
(a) Zingo
shall have the right to control, at its expense and with counsel of Zingo’s
choice, the prosecution and maintenance of the Patent Rights as they pertain
to
the Licensed Field (the “Licensed Field Patent Rights”). Hybrid shall provide
Zingo with copies of all relevant documentation relating to such prosecution.
Hybrid shall cooperate in good faith and use diligent efforts to support Zingo’s
prosecution and maintenance activities.
(b) Hybrid
agrees that if Zingo is unable because of Hybrid’s unavailability, dissolution
or for any other reason to secure any signatures in connection with the
prosecution and maintenance of the Licensed Field Patent Rights, then Hybrid
hereby irrevocably designates and appoints Zingo and its duly authorized
officers and agents as Hybrid’s agent and attorney in fact, to act for and in
Hybrid’s behalf and stead to execute and file any documents and to do all other
lawfully permitted acts to further the prosecution, issuance and maintenance
of
the Licensed Field Patent Rights with the same legal force and effect as if
executed by Hybrid.
(c) In
the
event Zingo desires to terminate or cease maintenance of any Licensed Field
Patent Rights, it shall notify Hybrid, and Hybrid shall have the opportunity
to
control, at its expense, the prosecution and maintenance of such Licensed Field
Patent Rights.
(d) Hybrid
will promptly provide to Zingo copies of all existing files and records
pertaining to the Licensed Field Patent Rights, including without limitation
all
office actions, drafts, receipts, drawings, correspondence, disclosures, models,
copies, prototypes, diagnostic reports, prior art and analyses.
5.2 Patent
Infringement.
(a) Each
party shall notify the other party in writing of any suspected infringements
of
the Patent Rights.
(b) Zingo
shall have the right, but not the obligation, to institute and control the
prosecution of a suit or to take any other action for any of the Licensed Field
Patent Rights. Hybrid agrees to take no action with respect to any third-party
infringement of Licensed Field Patent Rights unless expressly authorized to
do
so in writing by Zingo. Hybrid agrees to cooperate with Zingo in all respects,
to make employees of Hybrid available to testify, and to join in any such suit
as a voluntary plaintiff, upon Zingo’s request.
(c) Any
recovery or settlement obtained as a result of such suit or other action shall
be retained by Zingo, and Hybrid shall have no rights whatsoever in any such
recovery or settlement, except that any such recovery or settlement shall be
treated as a reduction in Zingo’s manufacturing costs, for purposes of
calculating sale prices of lithium ion batteries to Hybrid, after deduction
of
costs and expenses incurred by Zingo in bringing and controlling any such suit
or action.
(d) In
the
event the suspected infringement is in the Retained Field, then the parties
shall discuss in good faith and strategize regarding the institution and
prosecution of a suit or other action.
5.3 New
Inventions. Zingo shall have all rights, title and interest in and to any
improvements or modifications to the Patent Rights only as they pertain to
any
inventions within the Licensed Field that are conceived, reduced to practice
or
otherwise invented by or for Hybrid (the “Licensed Field Improvements”) during
the term of this Agreement. Hybrid hereby makes any assignments to accomplish
the foregoing ownership provision. Hybrid agrees to assist Zingo in every proper
way (including, without limitation, becoming a nominal party) to evidence,
record and perfect the assignment and to apply for and obtain recordation of
and
from time to time enforce, maintain and defend such proprietary right. In the
event it is not practical or feasible to assign rights within the Licensed
Field
separate from rights in the Retained Field, then Hybrid hereby grants to Zingo
an exclusive, perpetual, irrevocable, royalty-free, sublicensable license to
practice and exploit the Licensed Field Improvements.
5.4 Retained
Field. Hybrid shall continue as responsible for all research and development
relating to the Patent Rights and shall retain all rights, title and interest
in
and to the Patent Rights, or any improvements or modifications to the Patent
Rights only as they pertain to any inventions within the Retained Field that
are
conceived, reduced to practice or otherwise invented by or for Tru-Light (the
during the term of this Agreement (the “Retained Field Patent Rights”). Zingo
hereby makes any assignments to accomplish the foregoing ownership provision.
Zingo agrees to assist Hybrid in every proper way (including, without
limitation, becoming a nominal party) to evidence, record and perfect the
assignment and to apply for and obtain recordation of and from time to time
enforce, maintain and defend such proprietary right. In the event it is not
practical or feasible to assign rights within the Retained Field separate from
rights in the Licensed Field, then Zingo hereby grants to Hybrid an exclusive,
perpetual, irrevocable, royalty-free, sublicensable license to practice and
exploit such Retained Field Patent Rights.
ARTICLE
6.
TERMINATION
OF THE AGREEMENT
6.1 Term.
Unless terminated earlier in accordance with this Article, this Agreement shall
be effective beginning on the Effective Date and ending on the expiration date
of the longest-lived Valid Claim.
6.2 Termination
by Hybrid. If Zingo materially fails to perform or materially violates any
term
of this Agreement, then Hybrid may give written notice of default ("Notice
of
Default") to Zingo. If a Notice of Termination is sent to Zingo, this Agreement
shall automatically terminate on the effective date of that notice.
6.3 Termination
by Zingo. Zingo shall have the right at any time and for any reason, or no
reason at all, to terminate this Agreement upon a ninety (90) day written notice
to Hybrid. Said notice shall state Zingo’s reason for terminating this
Agreement.
6.4 Survival
on Termination. Articles 4,5, 6 and 8 shall survive the termination or
expiration of this Agreement.
6.5 Disposition
of Licensed Products on Hand. Upon termination of this Agreement, Zingo shall
return to Hybrid any tangible examples and prototypes of the Patent Rights
in
the Licensed Field, including any schematics, diagrams, designs and molds
delivered to Zingo by Hybrid pursuant to Section 2.3, and Zingo, its Affiliates
and Sublicensees may dispose of all previously made or partially made Licensed
Product within a period of one hundred and twenty (120) days of the effective
date of such termination provided that the sale of such Licensed Product by
Zingo, its Sublicensees, or Affiliates shall be subject to the terms of this
Agreement.
6.6 Treatment
of Sublicenses. Hybrid shall in good faith cooperate with Zingo to provide
comfort to any Zingo sublicenses of the consequences of the termination of
this
Agreement.
ARTICLE
7.
REPRESENTATIONS
AND WARRANTY
7.1 Representations
and Warranties.
(a) Hybrid
represents and warrants:
(1) that
it
is the sole owner of the Patent Rights and has the lawful right to grant this
license;
(2) that
none
of the Patent Rights are the subject of any pending interference, opposition,
cancellation or other challenge or adversarial proceeding;
(3) it
has
neither assigned nor granted any license or other rights to the Patent Rights
and it is under no obligation to grant any such license or rights to any third
party;
(4) there
are
no outstanding liens, encumbrances, third party rights, agreements or
understandings of any kind, either written, oral or implied, regarding the
Patent Rights which are inconsistent or in conflict with any provision of this
Agreement; and
(5) the
execution and delivery of this Agreement, and the performance by Hybrid of
its
obligations hereunder have been duly authorized by all necessary corporate
or
other action on the part of Hybrid, and no consents, waivers, or permissions
that have not already been granted are required for such actions.
7.2 HYBRID
HEREBY DISCLAIMS ANY IMPLIED WARRANTIES WITH RESPECT TO THE PATENT RIGHTS,
INCLUDING WITHOUT LIMITATION ANY WARRANTY OF MERCHANTABILITY OR WARRANTY OF
FITNESS FOR A PARTICULAR PURPOSE.
ARTICLE
8.
MISCELLANEOUS
PROVISIONS
8.1 Correspondence.
Any notice or payment required to be given to either party under this Agreement
shall be deemed to have been properly given and effective:
(a) on
the
date of delivery if delivered in person, or
(b) five
(5)
days after mailing if mailed by first-class or certified mail, postage paid,
to
the parties’ respective addresses set forth above, attention: President, or to
such other address as is designated by written notice given to the other
party.
8.2 Assignability.
Except as otherwise expressly provided under this Agreement, neither this
Agreement nor any right or obligation hereunder may be assigned or otherwise
transferred (whether voluntarily, by operation of law or otherwise) by either
party, without the prior express written consent of the other party; provided,
however, that either party may, without such consent, assign this Agreement
and
its rights and obligations hereunder in connection with the transfer or sale
of
all or substantially all of its business, whether through merger, reorganization
or otherwise. In the event Hybrid determines to transfer any of the Patent
Rights to any entity, Hybrid must notify such entity, and such entity must
acknowledge, that the Patent Rights are subject to this Agreement.
8.3 No
Waiver. No waiver by either party of any breach or default of any covenant
or
agreement set forth in this Agreement shall be deemed a waiver as to any
subsequent and/or similar breach or default.
8.4
Separate
Counsel for Zingo. Zingo Acknowledges and represents that it has been advised
by
its counsel as to this Agreement and has not been represented by Xxxxxxx &
Xxxxxxxx, P.C.
8.5 Failure
to Perform. In the event of a failure of performance due under this Agreement
and if it becomes necessary for either party to undertake legal action against
the other on account thereof, then the prevailing party shall be entitled to
reasonable attorney's fees in addition to costs and necessary
disbursements.
8.6 Governing
Laws. THIS AGREEMENT SHALL BE INTERPRETED AND CONSTRUED IN ACCORDANCE WITH
THE
LAWS OF THE STATE OF NEVADA, without regard to the conflicts of laws principles
thereof, but the scope and validity of any patent or patent application shall
be
governed by the applicable laws of the country of the patent or patent
application.
8.7 Force
Majeure. A party to this Agreement may be excused from any performance required
herein if such performance is rendered impossible or unfeasible due to any
catastrophe or other major event beyond its reasonable control, including,
without limitation, war, riot, and insurrection; laws, proclamations, edicts,
ordinances, or regulations; strikes, lockouts, or other serious labor disputes;
and floods, fires, explosions, or other natural disasters. When such events
have
abated, the non-performing party's obligations herein shall resume.
8.8 Headings.
The headings of the several sections are inserted for convenience of reference
only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement.
8.9 Entire
Agreement. This Agreement embodies the entire understanding of the parties
and
supersedes all previous communications, representations or understandings,
either oral or written, between the parties relating to the subject matter
hereof.
8.10 Amendments.
No amendment or modification of this Agreement shall be valid or binding on
the
parties unless made in writing and signed on behalf of each party.
8.11 Severability.
In the event that any of the provisions contained in this Agreement is held
to
be invalid, illegal, or unenforceable in any respect, such invalidity,
illegality or unenforceability shall not affect any other provisions of this
Agreement, and this Agreement shall be construed as if the invalid, illegal,
or
unenforceable provisions had never been contained in it.
IN
WITNESS WHEREOF, both Hybrid and Zingo have executed this Agreement, in
duplicate originals, by their respective and duly authorized officers on the
day
and year written.
Zingo,
Inc.:
Hybrid
Technologies, Inc.
/s/
Xxxxxxx Xxxxxxxx
/s/
Xxxxx
Xxxxxxxxx
By__________________________
By___________________________
(Signature)
(Signature)
Name:
Xxxxxxx
Xxxxxxxx
Name:
Xxxxx Xxxxxxxxx
Title:
Secretary
Title:
Chief Executive Officer
EXHIBIT
A
List
of
Patents and Patent Applications
22854-002-
“Rechargeable Battery Cathode Material”- PTO assigned application # 60/947,168
with a filing date of 06/29/2007- Inventor Xxxxxxxx, Xxxxxxx
EXHIBIT
B
Equipment
and Supplies to be Purchased from Hybrid Technologies, Inc.
|
Date
|
Vendor
|
Amount
|
PO
#
|
Equipment
and Supplies
|
|
|
|
|||
|
4/25/07
|
AHL
Machinery Corp
|
$21,750.00
|
1159
|
mixer,
temperature control system
|
|
10/19/07
|
Alfa
Aesar
|
$2,505.00
|
1186
|
titanium,
polyvinyl alcohol
|
|
$4,750
|
electric
hook up
|
|||
|
|
||||
|
Total
|
$29,005.00
|
