LICENSE AGREEMENT
THIS LICENSE AGREEMENT made and entered into as of October 1, 1999, is between
AMPEX CORPORATION, a corporation of Delaware, having a place of business at
Redwood City, California ("LICENSOR"), and UltraCard, Inc., a corporation of
Nevada, having a place of business at Campbell, California ("LICENSEE").
WITNESSETH:
WHEREAS, LICENSOR has developed propriety and trade secret technology relating
to the recording and reproduction of information on magnetic media using a low
coercivity magnetic layer, generally referred to as "Keepered Media Technology,"
and has obtained patents in the United States and elsewhere relating to such
technology ("Keepered Media Patents"); and
WHEREAS, LICENSEE has developed propriety and trade secret technology for
enhancing the recording of information on magnetic media particularly suitable
for use as a recordable strip or surface on a transportable card or as a
portable card ("Magnetic Card"); and
WHEREAS, LICENSEE wishes to incorporate Keepered Media Technology in the
development of its Magnetic Cards and wishes to incorporate Keepered Media
Technology into its development, manufacture, use and/or sale of Magnetic Cards
and to that end, LICENSEE believes it appropriate to have, and is desirous of
acquiring and has requested LICENSOR to grant it, a non-exclusive licenses to
use its Keepered Media Technology in Magnetic Cards; and
WHEREAS, LICENSEE is desirous of having assurance that its Magnetic Cards may be
manufactured, used and sold throughout the world, without risk of infringement
of such patents of LICENSOR; and to that end, LICENSEE believes it appropriate
to have, and is desirous of acquiring, and has requested LICENSOR to grant it, a
non-exclusive license under the Keepered Media Patents for Magnetic Cards.
NOW, THEREFORE, in consideration of the foregoing and in consideration of the
mutual terms hereinafter set forth, the parties hereby agree as follows:
ARTICLE I
DEFINITIONS
Section 1. "MAGNETIC CARD" means a data card, transaction card, portable
-----------
card or other transportable card disposed for writing and reading storage of
information through use of linearly, radially, accurately or circumferentially
shaped tracks for storing magnetic signals, and which incorporates KEEPERED
MEDIA TECHNOLOGY.
Section 2. "MAGNETIC CARD RECORDER" means a recorder utilizing magnetic
-----------
media for recording and/or reproducing information on a MAGNETIC CARD.
Section 3. "REPLACEMENT PART" means a non-consumable component or
-----------
subassembly, covered by KEEPREED MEDIA PATENT or KEEPREED MEDIA PATENT
APPLICATION, for use in MAGNETIC CARD RECORDER previously sold, leased, used or
otherwise disposed of by LICENSEE under this Agreement.
Section 4. "LICENSED PRODUCT" means a MAGNETIC CARD, MAGNETIC CARD RECORDER,
----------
or REPLACEMENT PART covered by one or more of the claims of the KEEPERED MEDIA
PATENTS.
Page 1 of 11
Section 5. "KEEPERED MEDIA" means a recording medium using low coercivity
-----------
magnetic material to enhance its recording and/or reproducing characteristics.
Section 6. "KEEPERED MEDIA PATENTS" means the patents and utility models
-----------
listed on the attached SCHEDULE. A useful in MAGNETIC CARDS and MAGNETIC CARD
RECORDERS with respect to which LICENSOR shall have the right to grant licenses
of the scope herein granted without the payment of royalties or other
consideration to third parties, except for payments to an AFFILIATE of LICENSOR.
LICENSOR represents that it has used its best efforts to list in attached
SCHEDULE A all patents useful in MAGNETIC CARDS and MAGNETIC CARD RECORDERS in
the field of this license owned by it and issued or published prior to the date
of this Agreement. In the event that any of such patents have been omitted, they
will be added to SCHEDULE A at any time at the request of LICENSEE.
Section 7. "KEEPERED MEDIA PATENT APPLICATIONS" means all applications for
-----------
patent and utility model of any country of the world useful in MAGNETIC CARDS
and MAGNETIC CARD RECORDERS having a filing date prior to October 1, 1999, and
any counterpart patent applications of other countries, and any continuations,
reissues or divisionals of such applications, regardless of filing, which when
issued or published will become "KEEPERED MEDIA PATENTS." Upon request of
LICENSEE, LICENSOR will provide an updated copy of SCHEDULE A showing with
current information regarding KEPPERED MEDIA PATENTS.
Section 8. "KEEPERED MEDIA TECHNOLOGY" means the proprietary and trade
-----------
secret technology developed by LICENSOR and useful in the design, development,
manufacture, recording and reading of MAGNETIC CARDS using low coercivity
magnetic material to enhance its recording and/or reproducing characteristics.
Section 9. "LICENSED TRADEMARK" means "Keepered Media" in word, stylized,
-----------
graphic or logo form.
Section 10. "AFFILIATE" as used herein with reference to any party hereto,
------------
means any person, association, corporation or other legal entity in which such
party owns, directly or indirectly, a beneficial interest of ten percent (10%)
or more, or which, directly or indirectly, owns a beneficial interest of ten
percent (10%) or more in such, party, or which, directly or indirectly,
controls, or is controlled by, or under common control with, such party, For the
purpose of this definition, the terms "controls," "controlled by" or "under
common control with," as used with respect to any person, firm, corporation or
other legal entity means the possession, directly or indirectly, of the power to
direct or cause the direction of the management and policies of such person,
firm, corporation or other legal entity, whether through the ownership of voting
securities, or by contract, or otherwise.
Section 11. "SUBSIDIARY," as used herein with reference to a party hereto,
------------
means a corporation or other legal entity, more than fifty percent (50%) of
whose outstanding shares of stock or other securities entitled to cote for the
election of directories or other managing authority (other than any shares of
stock whose voting rights are subject to restriction) is owned or controlled by
such party, directly or indirectly.
Section 12. "ROYALTY YEAR" shall mean the twelve month period commencing
------------
from October 1 of each year.
ARTICLE II
GRANT OF LICENSE
Section 1. LICENSOR hereby grants to LICENSEE a personal, non-exclusive,
-----------
indivisible, non-transferable license under the KEEPERED MEDIA PATENTS and
KEEPERED MEDIA PATENT
Page 2 of 11
APPLICATION to which reference is made in Section 6 and 7, respectfully, of
ARTICLE I hereof, to make, and use, sell, lease or otherwise transfer LICENSED
PRODUCTS throughout the world. LICENSOR further grants to LICENSEE a personal,
non-exclusive, indivisible, non-transferable license to use KEEPERED MEDIA
TECHNOLOGY.
Section 2. The licenses granted under Section 1 of this Article II shall be
-----------
exclusive as long as LICENSEE shall meet and continue to meet the following
requirements:
a. LICENSEE shall establish and maintain a business for the manufacture and
sale of LICENSED PRODUCTS
b. LICENSEE shall make all minimum royalty payments required for exclusivity
under Section 3 of Article IV.
Upon any failure of LICENSEE to meet any of the requirements to maintain
LICENSEE's license under this Agreement as exclusive, the license shall become
non-exclusive forthwith and shall remain non-exclusive for the remaining term of
the License Agreement.
ARTICLE III
TERM
The term of the patent license herein granted shall commence as of the date
first set forth above and shall continue as to each KEEPERED MEDIA PATENT for
its life and as to each KEEPERED MEDIA PATENT APPLICATION for the life of any
patents issuing thereon, unless this license if terminated sooner in accordance
with the provisions of ARTICLE VIII, hereof. The term of the license herein
granted under KEEPERED MEDIA TECHNOLOGY shall commence as of the date first set
forth above and shall continue in perpetuity, unless his license is terminated
sooner in accordance with the provisions of ARTICLE VIII, hereof.
ARTICLE IV
PAYMENT AND ROYALTIES
Section 1. As to each MAGNETIC CARD manufactured by or for LICENSEE and sold
----------
or otherwise disposed of by LICENSEE or manufactured, sold or otherwise disposed
of by others under license for LICENSEE throughout the world until expiration of
the last to expire of the KEEPERED MEDIA PATENTS, LICENSEE shall pay the
following royalties to LICENSOR during each ROYALTY YEAR.
$0.05 per MAGNETIC CARD for the first 300 million MAGNETIC CARDS
$0.03 per MAGNETIC CARD for the next 300 million MAGNETIC CARDS
$0.01 per MAGNETIC CARD for each addition MAGNETIC CARD
Section 2. As to each MAGNETIC CARD manufactured, sold or otherwise disposed
----------
of by LICENSEE or manufactured, sold or otherwise disposed of by others under
license from LICENSEE throughout the world for a period of five (5) years after
expiration of the last to expire of the KEEPERED MEDIA PATENTS, LICENSEE shall
pay the following royalties to LICENSOR during each ROYALTY YEAR:
$0.02 per MAGNETIC CARD for the first 300 million MAGNETIC CARDS
$0.01 per MAGNETIC CARD for the next 300 million MAGNETIC CARDS
$0.005 per MAGNETIC CARD for each addition MAGNETIC CARD
Page 3 of 11
Section 3. As to LICENSED PRODUCTS other than MAGNETIC CARDS, the royalty
-----------
due until expiration of the last to expire of the KEEPERED MEDIA PATENTS shall
be three percent (3%) of net sales, which shall be gross sales less actual
discounts, sales commissions, freight, taxes and returns.
Section 4. The minimum royalties to be paid by LICENSEE to LICENSOR for all
-----------
LICENSED PRODUCTS to maintain it exclusivity shall be as follows:
First Year $ 0
Second ROYALTY YEAR Royalties of at least $875 thousand per quarter
Third ROYALTY YEAR Royalties of at least $15 million for the year
Fourth ROYALTY YEAR Royalties of at least $24 million for the year
Each Subsequent ROYALTY YEAR Royalties of at least $24 million for the year
Section 5. It is understood and agreed that all sums of money referred to in
----------
this Agreement as being payable by LICENSEE to LICENSOR shall be sums payable at
a United States Bank to be designated by LICENSOR, in the United States dollars.
Section 6. Within sixty (60) day after March 31, June 30, September 30 and
-----------
December 31 of each year, LICENSEE shall submit to LICENSOR an accurate written
report, duly certified once a year by LICENSEE's chief financial officer,
setting forth for LICENSEE, and for each sublicensee of LICENSEE, the number of
MAGNETIC CARDS sold, leased or otherwise transferred during the preceding
quarter, the total number of MAGNETIC CARDS sold, leased, or otherwise
transferred to date during the current year and the royalty payable. LICENSEE
also shall report the actual royalties paid if such amount is greater than the
royalties payable in order to maintain exclusivity.
Section 7. Payments provided for in this Agreement shall, when delinquent,
-----------
be subject to a late payment charge calculated at an annual rate of 3% over the
prime rate or successive prime rates in effect in New York, New York, U.S.A.
during the delinquency. However, if the rate of such late payment charge exceeds
the maximum permitted by law, such charge shall be reduced to such maximum rate.
ARTICLE V
RIGHT TO SUBLICENSEE
Section 1. LICENSEE's right to grant sublicenses under this License
-----------
Agreement shall be subject to the following prerequisites:
a. LICENSEE shall have satisfied and continues to satisfy the requirements
set forth in Section 2 of Article II to maintain an exclusive license
under this Agreement.
b. LICENSEE shall have notified LICENSOR of the identity of the proposed
sublicensee and received LICENSOR's written approval, which approval shall not
be unreasonably withheld.
Section 2. Any sublicense granted by LICENSEE shall be of a scope no greater
----------
than the non-exclusive license granted under Section 1 of this Article II.
Section 3. LICENSEE shall not have the right to grant sublicenses under the
-----------
LICENSED TRADEMARK.
Page 4 of 11
Section 4. LICENSEE shall not have the right to grant to any sublicensee the
----------
further right to grant any sublicenses.
Section 5. LICENSEE shall include a provision in each sublicense that
-----------
termination of the License Agreement shall terminate the sublicense.
Section 6. LICENSEE shall include a provision in each sublicense
-----------
substantially identical to Article VII hereof, but giving both LICENSEE and
LICENSOR the right audit. LICENSEE shall provide to LICENSEE a copy of the
results of any audit conducted by LICENSOR.
ARTICLE VI
TRADEMARKS
Section 1. LICENSOR hereby grants to LICENSEE for the term of this
-----------
Agreement, a non-exclusive license to affix or have affixed to the LICENSED
TRADEMARK to LICENSED PRODUCTS manufactured for sale or for use worldwide,
provided, however, that should LICENSEE intend to affix the LICENSED TRADEMARK
to the LICENSED PRODUCTS in any location or in any manner other than as already
approved by LICENSOR, LICENSEE shall submit an example of such use to LICENSOR
for LICENSOR's approval, which approval shall not be unreasonably withheld.
Section 2. The benefit of this Agreement shall be personal to LICENSEE who
-----------
shall not, without the prior written consent of LICENSOR, which consent shall
not be unreasonably withheld, assign the same or any part with any of its rights
of obligations hereunder. No rights are granted hereby to LICENSEE to grant
franchises or sublicenses with respect to the LICENSED TRADEMARK.
Section 3. LICENSEE shall submit to LICENSOR for prior approval samples of
-----------
all advertising or promotional material, packaging, or such other materials on
which the LICENSED TRADEMARK appear, or are intended to be used in relation to
the LICESED PRODUCTS, and LICENSEE agrees to make any requested changes to the
satisfaction of LICENSOR on such packaging, advertisements, and any other
materials bearing the LICENSED TRADEMARK. Once such approval has been given or
waived by LICENSOR, further approval of the same subject matter need not be
obtained for future or repeated use, except upon the request of LICENSOR in the
event LICENSOR adopts a material change in the any of the LICENSED TRADEMARK as
used in its business, but all such material shall be consistent with the
maintenance of the excellent reputation of LICENSOR.
Section 4. LICENSOR represents that it is the exclusive owner of the
-----------
LICENSED TRADEMARK. All use of the LICENSED TRADEMARK, or any of them, by
LICENSEE shall be for the benefit of and on behalf of LICENSOR, no rights are
assigned with respect to the LICENSED TRADEMARK, or any of them, except for the
right to use the LICENSED TRADEMARK pursuant to the Agreement; and neither
LICENSEE not its employees shall be a party to any application to register the
LICENSED TRADEMARK, or any of them, or any translation or imitation thereof,
LICENSEE shall not knowingly commit, cause, or be a party to any act
inconsistent with the preservation of the rights LICENSOR in and to the LICENSED
TRADEMARK.
Section 5. At the request of LICENSOR at LICENSOR's expense, LICENSEE shall
-----------
(a) furnish proof of use of the LICENSED TRADEMARK in any country in which it is
used by LICENSEE, and (b) execute any papers or documents necessary to protect
the rights of LICENSOR and such documents as may be reasonably required to
support such activity. LICENSOR shall bear the cost of any registration or
renewal of its proprietary rights in the LICENSED TRADEMARK, or any of them.
Page 5 of 11
Section 6. LICENSEE shall affix any notices, such as patent numbers, etc.,
-----------
as may be reasonably required by LICENSOR to any LICENSED PRODUCTS manufactured
under this Agreement. Such notices shall be affixed at a reasonably visible
location in the manner required by LICENSOR along with any other notices which
may be required by the local law in which the LICENSED PRODUCTS are manufactured
or sold.
Section 7. LICENSEE shall advise LICENSOR promptly upon becoming aware of
-----------
activity by any unlicensed third party which constitutes infringement of any of
the LICENSED TRADEMARK licensed hereunder. LICENSOR reserves the exclusive right
to decide whether to institute a lawsuit and to assume full control over the
proceedings thereof.
Section 8. The quality of all LICENSED PRODUCTS produced and sold under any
-----------
of the LICENSED TRADEMARK, shall be reasonably maintained by the LISENSEE to the
satisfaction of LICENSOR. LICENSEE will not use any of the LICENSED TRADEMARK on
any other product until it has received the approval of such use from LICENSOR,
which approval shall not be unreasonably withheld.
Section 9. Upon request of LICENSOR and with reasonable notice, LICENSEE
-----------
shall provide, during the initial approval process and at subsequent intervals,
the opportunity for a representative of LICENSOR to conduct inspections of the
manufacturing and storage operations of LICENSEE during normal business hours
with respect to any LICENSED PRODUCTS, for the purposed of verifying that the
nature and quality thereof and the use of the LICENSED TRADEMARK are in
compliance with the requirements of this Agreement. At the request of LICENSOR,
LICENSEE will supply for inspection of LICENSOR, or its authorized
representative, regular production samples of each model of product type of
LICENSED PRODUCTS (upon which any of the LICENSED TRADEMARK is used) or other
evidence showing the quality of the products provided by LICENSEE. In the event
the nature or quality of the LICENSED PRODUCTS or the use of any of the LICENSED
TRADEMARK is not in compliance with the requirements of this Agreement, and if
after reasonable notice to LICENSEE of at least 60 days, specifying the nature
of the deficiency and setting forth LICENSOR's recommendations as to how to
remedy such deficiency, the deficiency has not been corrected so as to comply
with the requirements of this Agreement, LICENSOR upon thirty (30) days notice
may at its sole discretion suspend the license to use the LICENSED TRADEMARK in
connection with the LICENSED PRODUCTS in question until the deficiency has been
corrected.
Section 10. LICENSEE shall indemnify and hold LICENSOR harmless against all
------------
claims, suits, costs, damages and judgements incurred, claimed or sustained by
third parties, whether for personal injury or otherwise, arising out of the
manufacture or sale of products or services under any of the LICENSED TRADEMARK.
ARTICLE VII
RECORDS
Section 1. LICENSEE will keep true records of account, including copies of
-----------
invoices and other records, in sufficient detail to enable the royalties payable
hereunder to be determined, and agrees to permit such invoices and records to be
audited at any reasonable time during business hours by an independent certified
public accountant selected by LICENSOR (which shall be a major national
accounting firm) to the extent necessary to verify the royalty reports and
payments herein provided for; provided, however, that said independent certified
public accountant shall report no details of his audit unless the audit shows
the reports to have been inaccurate. If such audit shows additional royalties to
be due, LICENSEE shall within thirty (30) days from the date of the audit report
either pay the additional amount to LICENSOR or object to such audit report, in
which event the details of the audit shall be made available to both parties. If
the additional royalties due for the period of the audit are greater than five
percent (5%) of the royalties reported and paid, LICENSEE shall pay
Page 6 of 11
the cost of the audit. If such audit report shows that excessive royalties have
been paid, LICENSOR and LICENSEE shall, prior to crediting such excess to
further royalties, be entitled to review such audit details, unless LICENSEE
shall waive the right to such credit. Any such information pertaining to the
audit shall be treated as confidential information.
ARTICLE VIII
INFRINGMENT BY THIRD PARTIES
Section 1. In the event either party determines that any of the LICENSED
-----------
PATENTS is infringed by a product within the scope of LICENSED PRODUCTS, as
defined herein, such party shall promptly notify the other party, in writing,
setting forth the basis for its belief of such infringement. LICENSOR and
LICENSEE shall meet and xxxxxx to determine action to be taken.
Section 2. LICENSOR shall have the right, but not the obligation to pursue
-----------
such infringement, including the filing of an infringement action, at
LICENSORS's sole expense.
Section 3. In the event LICENSOR, at any point in pursuing such
-----------
infringement, elects not pursue the infringement any further, LICENSOR may grant
to LICENSEE the right continue pursuit of such matter, including the filing of
an infringement action, at LICENSEE's sole expense, provided
a. LICENSEE has complied with all of its obligation under the Agreement
b. LICENSEE has maintained exclusivity as provided in Article II, Section 2,
and
c. LICENSEE has complied with any other reasonable requirements imposed by
LICENSOR as a condition for such action.
Section 4. In the event litigation is commenced by either party, such party
-----------
shall bear the burden of all expenses of such litigation, including, without
limitation, attorneys fees and court costs. The party bringing the action shall
timely provide to the other party, at its expense, complies of all pleadings and
other papers filed or received in connection with the suit. The other party
shall have the right to participate in any such litigation tough its owl legal
counsel, at its own sole expense.
Section 5. Any settlement of such litigation shall require the consent of
-----------
both parties, which consent shall not be unreasonably withheld, From the
proceeds of any settlement or final conclusion of any litigation, any amounts so
recovered shall be applied first to the reimbursement of the litigation
expenses, including attorneys fees, of the party bringing such suit. In the
event the proceeds are insufficient for such reimbursement, the
non-reimbursement of any unpaid litigation expenses shall be borne by such party
and no credits shall be allowed in any event against royalties due hereunder. In
the event the proceeds are in excess of the reimbursement, any remaining amount
shall be shared between the parties, two-third (2/3)to the party bringing suit
and one third (1/3) to the other party.
ARTICLE IX
TERMINATION
Section 1. LICENSEE acknowledges that this License Agreement and the
-----------
obligations herein undertaken are predicated upon LICENSOR's trade secrets and
proprietary information in the KEEPERED MEDIA TECHNOLOGY, as well as KEEPERED
MEDIA PATENTS and KEEPERED MEDIA PATENTS APPLICATIONS. Nothing in this Agreement
is intended to or shall be construed to require LICENSEE to take a license under
any KEEPERED MEDIA PATENTS or KEEPERED MEDIA PATENT APPLICATION listed in
SCHEDULE A, and any KEEPERED MEDIA PATENTS or KEEPERED MEDIA PATENT APPLICATION
may be deleted from such SCHEDULE upon thirty (30) days written notice prior
thereto, thereby relinquishing the license thereunder. If, in accordance with
the provisions of this Section, LICENSEE acts to delete all of the KEEPERED
MEDIA PATENTS and KEEPERED MEDIA PATENT APPLICATIONS
Page 7 of 11
from SCHEDULE A, then this Agreement shall terminate automatically upon the
effective date of such deletion.
Section 2. LICESEE shall not withhold any royalty payments because of an
-----------
alleged invalidity of any KEEPERED MEDIA PATENT, except as provided hereafter in
this section with respect to KEEPERED MEDIA PATENTS of the United States.
Royalty payments shall not be withheld by LICENSEE because of an alleged
invalidity of a KEEPERED MEDIA PATENT of the United States unless LICENSEE gives
LICENSOR thirty (30) days prior written notice of its intention and the basis of
the alleged invalidity. If LICENSEE withholds royalties because of an alleged
invalidity of a KEEPERED MEDIA PATENT if the United States, or gives notice of
its intention to do so, or challenges the validity of any such KEEPERED MEDIA
PATENT, LICENSOR shall have the right to unilaterally delete such KEEPERED MEDIA
PATENT from SCHEDULE A of this Agreement thereby terminating all license
privileges to LICENSEE thereunder, except as to this Agreement thereby
terminating all license privileges to LICENSEE thereunder, except as to any
LICENSED PRODUCT in respect of which a royalty had previously been paid to
LICENSOR pursuant to this Agreement. LICENSOR may exercise such right to delete
by notice to LICENSEE at any time after the right to delete such KEEPERED MEDIA
PATENT arises.
Section 3. If LICENSEE shall fail to render reports or make any payments as
-----------
and when due hereunder or shall otherwise be in default of any obligation of
this Agreement, LICENSOR shall have the right to give written notice thereof to
LICENSEE, and, if within sixty (60) days after the date of such notice, LICENSEE
shall not have cured such default, the LICENSOR may, at its option, cause this
Agreement to terminate forthwith by giving written notice to the effect to
LICENSEE.
Section 4 To the extent permitted by law, LICENSOR shall have the right to
----------
terminate this Agreement at any time upon or after filing by LICENSEE of a
petition in bankruptcy or insolvency, or upon or after the filing by LICENSEE of
any petition or answer seeking reorganization, readjustment or rearrangement of
the business of LICENSEE under any law or any government regulation relating to
bankruptcy or insolvency, or upon or after the appointment of a receiver for
all, or substantially all, of the property of LICENSEE, or upon or after the
making by LICENSEE of any assignment or attempted assignment for the benefit or
creditors, or upon or after the institution by LICENSEE of any proceedings for
the liquidation or winding up of its business, or for the termination of its
corporate charter; and upon the exercise of such right, this Agreement shall
terminate fifteen (15) days after notice in writing, to that effect, has been
given by LICENSOR to LICENSEE.
Section 5. No failure or delay on the part of LICENSOR to exercise its right
----------
of termination hereunder for any one or more defaults shall be construed to
prejudice its right of termination for such, or any other, or subsequent
default.
Section 6. Any termination as provided herein shall not in any way operate
-----------
to limit any of LICENSOR's rights of remedies, either at law or in equity, or to
relieve LICENSEE of any obligation, accrued prior to such termination.
ARTICLE X
NOTICES
All notices and demands which shall or may be given or required pursuant to this
Agreement shall be in writing and effective upon receipt. Any notice under this
Agreement shall be addressed to the party to whom such notice is to be given as
follows:
Page 8 of 11
LICENSOR:
---------
Ampex Corporation
000 Xxxxxxxx, X.X. 0000
Xxxxxxx Xxxx, XX 00000-0000
Attn: General Counsel
LICENSEE:
---------
UltraCard, Inc.
0000 X. Xxxxxx Xxx.
Xxxxxxxx, XX 00000-0000
Attn: President
ARTICLE XI
SUCCESSORS AND ASSIGNS
Section 1. Neither this Agreement nor any of the rights and other benefits
-----------
established by it shall be directly or indirectly assigned, transferred, divided
or shared by LICENSEE to or with any person, association, corporation or other
legal entity whatsoever, without prior written consent of LICENSOR, except to
successors by merger, acquisition, reorganization or consolidation of, or to
purchasers of, the entire business relation to the subject matter of this
Agreement and associated goodwill of LICENSEE, and except as provided in Section
2 of this ARTICLE.
Section 2. LICENSEE may, by thirty (30) days written notice to LICENSOR,
-----------
extend the rights, benefits and obligations of this Agreement to any SUBSIDIARY
of LICENSEE, but only for so long as it remains a SUBSIDIARY of LICENSEE. Each
notice shall state the name and address of such SUBSIDIARY. Thereupon, this
Agreement shall be binding upon and inure to the benefit of said SUBSIDIARY, but
not its SUBSIDIARIES, successors, or assigns. In the event of such extensions by
LICENSEE to a SUBSIDIARY, LICENSEE shall remain primarily liable for all
obligations of such SUBSIDIARY under this Agreement.
Section 3. This Agreement may be assigned by LICENSOR and shall inure to the
----------
benefit of such assigns and any successors of LICENSOR. LICENSOR shall provide
notice to LICENSEE of any such assignment.
ARTICLE XII
MISCELLANEOUS PROVISIONS
Section 1. It is the intention of the parties hereto that this Agreement
-----------
shall be construed, interpreted and applied in accordance with the laws of the
State of California, United States of America.
Section 2. This Agreement sets forth the only agreement and understanding of
----------
the parties on the subject of MAGNETIC CARDS and MAGNETIC CARD RECORDERS with
the exception of the Confidentiality Agreement dated as of August 27, 1999, and
except for that agreement which shall remain in force in accordance with its
terms, merger all prior discussions between them, terminated and supersedes any
prior negotiations, memoranda or agreements, whether oral or written, and
neither of the parties shall be bound by any conditions, definitions, warranties
or representations other than expressly provided in this Agreement. Or as duly
set forth on or subsequent to the date hereof in writing and signed by a proper
and duly authorized officer of the party to be bound thereby.
Page 9 of 11
Section 3. This Agreement has been prepared in the English language. It is
-----------
understood that the English text of this Agreement shall be the official
governing version of the Agreement. Each party will receive one English copy of
this Agreement executed by all other parties.
Section 4. Nothing contained in this Agreement shall be construed as:
-----------
(a) conferring an obligation upon either LICENSOR or LICENSEE to bring or
prosecute actions or suits against third parties for infringement; or
(b) an obligation by either party to furnish any technical information or
know-how to the other party.
Section 5. It is understood and agreed that no representation us made and no
----------
warranty is given by LICENSOR that LICENSED PRODUCTS manufactured, used, sold,
leased or otherwise disposed of by LICENSEE under the terms of this Agreement
are free of claims of infringement of the patent rights of third parties.
Section 6. In the event LICENSOR shall hereafter grant any license under the
----------
KEEPERED MEDIA PATENTS and KEEPERED MEDIA TECHNOLOGY for monetary consideration
including a royalty, at a rate more favorable than that provided herein,
LICENSOR shall notify LICENSEE thereof and effective upon the date of such other
license and for as long as such more favorable royalty rate is in effect, the
royalty rate applicable to the license granted to LICENSEE herein shall be
reduced to the royalty rate specified in such other license, but only if
LICENSEE accepts any less favorable monetary and other terms that may be
included in the agreement under which such other license is granted. This
Section shall not apply in cases where LICENSOR receives in lieu of or in
addition to a cash royalty, a grant of patent rights, a royalty-free or other
license, or other considerations than that provided in this Agreement.
Section 7. If any of the claims of a KEEPERED MEDIA PATENT shall be held to
-----------
be invalid or limited as to scope by a court of last resort, or by a lower court
of competent jurisdiction from whose decree no appeal is taken or certiorari
granted, within the period allowed therefor, the construction placed upon the
such KEEPERED MEDIA PATENT by the courts shall be followed from and after the
date of entry of the decree of such court, and royalties shall thereafter be
payable by LICENSEE only in accordance with such construction until the same
shall be modified or reversed by a subsequent court decree, and with respect to
claims which are by any such decree held to be invalid, LICENSEE shall be
relieved of its obligation to make reports and to pay royalties on LICENSED
PRODUCTS sold under and covered only by said claims, until the decision with
respect to such claims shall be modified or reversed by a subsequent court
decree.
Section 8. Unless otherwise specifically agreed to in writing by LICENSOR,
-----------
LICENSEE agrees not to use the trade name "AMPEX" or the trademark "AMPEX" in
any of their forms, in any manner with respect to LICENSED PRODUCTS. Unless
otherwise specifically agreed to in writing by LICENSOR and except as provided
under Article VI of this Agreement, LICENSEE agrees not to use any
identification names, marks, or symbols with respect to LICENSED PRODUCTS that
in any respect resemble those used on similar products manufactured by or for
LICENSOR.
Section 9. LICENSEE agrees that it will not export or reexport, directly or
-----------
indirectly, any products made under KEEPERED MEDIA PATENTS to any country in
violation of any United States export control laws or regulations as the same
may be modified from time to time.
Page 10 of 11
Section 10. LICENSOR and LICENSEE agree that neither will willfully disclose
-----------
the terms and conditions of this License Agreement except:
a. With the prior written consent of the other party, which consent shall not
be unreasonably withheld, or
b. By disclosure to a court or government body having jurisdiction to call
therefor, or
c. As may be necessary to establish its rights hereunder.
AMPEX CORPORATION ULTRACARD, INC.
By: /s/ XXX By: /s/ XXX
-------------------------- ----------------------------
Title: Vice President Title: President
----------------------- -------------------------
Date: November 12, 1999 Date: November 12, 1999
------------------------ --------------------------
Page 11 of 11
AMPEX CORPORATION
KEEPERED MEDIA PATENT LIST
SCHEDULE A - PART 2
Reference Number Country Patent No. Expiration date
---------------- -------- ------------------- ------------------
3219 U.S.A. 4985795 January 15, 0000
XXXXX 0000000 December 15, 2006
KOREA 103266 December 15, 0000
XXXXXX XX00000 December 31, 2002
3246 U.S.A. 5041922 July 23, 0000
XXXXXXX 594998 December 15, 0000
XXXXXX 1322407 September 21, 0000
XXXXX 0000000 December 15, 2006
KOREA 86611 December 15, 2001
TAIWAN NI-28422 January 15, 2003
3261 U.S.A 5153796 October 6, 2009
CANADA 1279726 January 29, 0000
XXXXX 0000000 December 15, 2006
KOREA 115084 December 15, 2006
TAIWAN NI-49682 May 26, 2005
3336 U.S.A. 5189572 February 23, 2010
3386 U.S.A. 5130876 December 8, 0000
XXXXX Application pending
KOREA Application pending
0000 X.X.X. 0000000 July 28, 2009
3849 U.S.A. 5729413 December 20, 2015
EURPAT Application pending
JAPAN Application pending
3856 U.S.A. 5870260 February 9,2017
U.S.A. Application pending
EURPAT Application pending
JAPAN Application pending
KOREA Application pending
3858 U.S.A. 5861220 August 6, 2016
3859 U.S.A. 5843565 October 31, 2016
P.C.T. Application pending
0000 X.X.X. 5830590 June 28, 2016
U.S.A. Application pending
EURPAT Application pending
JAPAN Application pending
Page 1
AMPEX CORPORATION
KEEPERED MEDIA PATENT LIST
SCHEDULE A-PART 1
Reference Title First Filing Date
Number
3219 MAGNETIC TRANSDUCER HAVING A SATURABLE KEEPER AND A Dec 13, 1985
RECORDING/REPRODUCING APPARATUS UTILIZING THE
TRANSDUCER
3246 MAGNETIC RECORDING MEDIUM HAVING A MAGNETICALLY Dec 13, 1985
3261 METHOD AND APPARATUS FOR MAGNETIC TRANSDUCING Dec 13, 1985
3336 MAGNETIC CONTROL OF A TRANSDUCER SIGNAL TRANSFER ZONE Mar 24, 1986
TO EFFECT TRACKING OF A PATH ALONG A RECORD MEDIUM
3386 SOLID STATE SCANNING TRANSDUCER THAT UTILIZES LOW FLUX Dec 8, 1989
DENSITIES
3512 THIN FILM MEMORY DEVICE HAVING SUPERCONDUCTOR KEEPER Jul 29, 1989
FOR ELIMINATING MAGNETIC DOMAIN CREEP
3849 TWO-GAP MAGNETIC READ/WRITE HEAD Dec 20, 1995
3856 IMPROVED MAGNETIC RECORDING SYSTEM HAVING A Dec 20, 1995
SATURABLE LAYER AND DETECTION USING MR ELEMENT
3858 METHOD AND APPARATUS FOR PROVIDING A MAGNETIC STORAGE Aug 6, 1996
AND REPRODUCING MEDIA WITH A KEEPER LAYER HAVING
LONGITUDINAL ANISOTROPY
3859 PARTICULATE MAGNETIC MEDIUM UTILIZING KEEPER Oct 31, 1996
TECHNOLOGY AND METHOD OF MANUFACTURE
3860 MAGNETIC STORAGE AND REPRODUCING SYSTEM WITH A LOW Jun 28, 1996
PERMEABILITY KEEPER AND A SELF-BIASED MAGNETORESISTIVE
REPRODUCE HEAD
Page 1
