EXHIBIT 10.1
LICENSE AND SUPPLY AGREEMENT
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This License and Supply Agreement (the "Agreement") is made as of the 8th
day of February, 2001 ("Effective Date"), by and between Memry Corporation
("Supplier"), a Delaware corporation having its principal executive offices at
00 Xxxxxxxx Xxxxx, Xxxxxxxxxx, Xxxxxxxxxxx 00000, and Memry Europe, N.V.
("Customer"), a Belgian corporation having its principal executive offices at
Xxxxxxxxxx 0000, X-0000 Xxxx-xx-Xxxx, Xxxxxxx.
R E C I T A L S
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WHEREAS, Memry Holdings, S.A., a Belgian corporation and a subsidiary of
Supplier ("Holdings"), and Xxxxxxxx Xxx Xxxxxxxxxx ("Buyer") are parties to a
Stock Purchase Agreement, dated as of the date hereof, as amended from time to
time (the "Purchase Agreement"), pursuant to which Buyer contemporaneously with
the execution and delivery hereof is acquiring the capital stock of Customer
from Holdings; and
WHEREAS, Customer desires to secure for itself an uninterrupted source of
Products (as defined herein) from Supplier upon the terms and conditions set
forth herein; and
WHEREAS, Customer desires to secure for itself an uninterrupted source of
Alloy (as defined herein) from Supplier, and Supplier is willing to supply the
Alloy to Customer, both upon the terms and conditions set forth herein; and
WHEREAS, conditional upon Supplier being granted the Patents (as defined
herein), Customer desires to have a perpetual right and license to the Patents
and Supplier is willing to grant such a license, upon the terms and conditions
set forth herein; and
WHEREAS, Customer desires to have a perpetual right and license to the
Electropolishing Technology and the Tubing Technology (both as defined herein),
and Supplier is willing to grant such licenses, upon the terms and conditions
set forth herein.
NOW, THEREFORE, in consideration of the foregoing recitals, the mutual
covenants of the parties herein and other good and valuable consideration, the
receipt and adequacy of which is hereby acknowledged, the parties hereby agree
as follows:
A. DEFINITIONS. For purposes of this Agreement, the following terms shall
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have the following respective meanings:
"Affiliate" means (i) any of (or any combination of ) Buyer, Dmitri
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Xxxxxxxxx, Xxxxx Bruninx and Xxx-Xxxx Xxx, (ii) any spouse or descendant of such
a person, or a spouse of such a descendant, (iii) a trustee of a trust primarily
for the benefit of a person or persons described in (i) and (ii) above, (iv) a
personal representative of any individual described in clauses (i) and/or (ii)
above who is deceased or adjudicated to be incompetent, and/or (v) a corporation
or partnership owned entirely by persons or entities described in clauses (i)
through (iv) above; provided, however, that Xxx-Xxxx Xxx (and any person or
entity described in clauses (ii) through (v) above by virtue of the fact that
Xx. Xxx is described in clause (i) above) shall only be an Affiliate for
purposes of this Agreement if Xx. Xxx (combined with any such person or entity)
does not own more than 10% of any class of equity of the Customer.
"Alloy" or "Alloys" shall mean the SMC Alloys and the TWC Alloys.
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"Business Day" means a day on which (i) banks are not required or
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authorized to be closed in New York, New York, or (ii) banks in Brussels,
Belgium are open for regular business.
"Confidential Information" means any information or data of Supplier
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determined by Supplier to be confidential and/or proprietary disclosed to
Customer pursuant to Part C. of this Agreement; provided, however, that
information and data shall not be deemed to be Confidential Information if:
(a) it is available to the public at the time of disclosure to the
receiving party, or thereafter becomes available to the public through no fault
of the receiving party, but in such event only as of such later date;
(b) it is independently made available to the receiving party by a
third party without restrictions on disclosure; or
(c) it is known to the receiving party before disclosure to the
receiving party by the disclosing party.
"Control" means the ability to appoint fifty percent (50%) or more of the
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board of directors of a corporation (or similar governing body of a different
business entity) and/or the ownership of fifty percent (50%) or more of the
common stock of a corporation (or similar equity of a different business
entity).
"Electropolishing Licensed Technology" means the surface preparation
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technique for polishing materials, components and devices of NiTi based shape
memory alloys with or without one or more additional alloying elements such as,
but not limited to, V, Cu, Nb, Fe, Cr, Pd, Hf, Pt, where metal is preferentially
dissolved from high points on an anodic surface by passage of an electric
current through a conductive bath, to produce a smooth and/or reflecting
surface, currently used by Supplier.
"Hollows" shall mean SMA materials purchased by Supplier from Special
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Metals Corporation (or, in the future, if Supplier purchases the same from
Teledyne Xxx Xxxxx, from Teledyne Xxx Xxxxx) that Supplier then has turned into
the base material for its Tubing Products by a third party.
"License" has the meaning set forth in Section C.1.(a) below.
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"Licenses" means the License, the Tubing License and the Electropolishing
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License.
"Manufacturing Within Europe and Asia" shall be deemed to have occurred if
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either (i) value shall have been added to the Product and/or product utilizing
the Licenses (not including value added by surface cleaning/preparation,
passivation, inspection, sales, marketing or packaging functions), by
manufacturing processes occurring within Europe and Asia subsequent to the time
of the sale of the Product or product by Customer, or (ii) with respect to
products utilizing the Electropolishing License, if no further value is added to
the product by manufacturing processes anywhere in the world subsequent to the
time of the sale of the
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product by Customer and the products are sold by Customer only to manufacturers,
and not to distributors. By way of example, if Customer sells tube to a European
based distributor, which distributor sells the tube "as-is" to a European
manufacturer which then laser cuts the tube and resells it to a U.S.
manufacturer, manufacturing within Europe and Asia shall have occurred pursuant
to clause (i) above. However, if Customer sells tube to a European distributor
who sells the tube to a customer outside of Europe and Asia, no Manufacturing
within Europe and Asia shall have occurred pursuant to clause (i) above. By way
of further example, Manufacturing Within Europe and Asia will be deemed to have
occurred pursuant to clause (ii) if Customer sells polished tube to a European
based manufacturer who resells the polished tube to a U.S. manufacturer if no
further manufacturing is done to the polished tube by the U.S. manufacturer.
However, if Customer sells polished tube utilizing the Electropolishing License
to a European distributor who resells to a U.S. manufacturer, no Manufacturing
Within Europe and Asia shall have occurred pursuant to clause (ii) above.
"N/T Patents" means, if and when issued, the Supplier's three patents
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pending described on Annex II hereto under the heading "Patents Pending".
"Patents" means all of the Supplier's patents described on Annex II to the
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Supplemental Letter, including the N/T Patents.
"Permitted Customers" means customers of Customer that both (i) have their
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corporate headquarters situated in Europe or Asia (and have the headquarters of
any direct or indirect parent entity situated in Europe and Asia) and (ii)
either utilize the Products and/or products utilizing the Licenses, as the case
may be, for "Manufacturing Within Europe and Asia" or, if they do not, agree
that the Products or products will be used only within Europe and Asia. For
purposes of clause (i) of this definition of Permitted Customers, but not for
purposes of clause (ii), if a Permitted Customer is a customer of Customer and,
after being a customer of Customer, is purchased by an entity whose headquarters
is situated outside of Europe and Asia, said customer shall not cease to be a
Permitted Customer by virtue of the parenthetical requirement in said clause
(i).
"Person" means an individual, a partnership, a corporation, an association,
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a joint stock company, a trust, a limited liability company, a joint venture, an
unincorporated organization, or a governmental entity (or any department,
agency, or political subdivision thereof).
"Product" or "Products" shall mean, collectively, the Alloy and the Tubing
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Products.
"SMC Alloys" shall mean the SMA materials produced and/or sold by Special
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Metals Corporation and purchasable by Supplier from time to time (and shall
specifically include Hollows).
"Supplemental Letter" means a letter from Supplier to Customer being
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delivered simultaneously with the execution and delivery hereof containing the
information described herein.
"Transfer" means any transfer, sale, assignment, pledge, encumbrance or
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other disposition, irrespective of whether any of the foregoing are effected
voluntarily or involuntarily, by operation of law or otherwise, or whether inter
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vivos or upon death.
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"Tubing Licensed Technology" means the methods for manufacturing seamless
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metal tubes as described in U.S. Patent Number 5,709,021, and the Supplier's
related know-how, as described on Annex
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II to the Supplemental Letter. The Tubing Licensed Technology specifically
includes any patents that may be applied for subsequent to the date hereof if
(and only if) the invention or inventions covered by such patent(s) were in
existence on the date hereof.
"Tubing Product" or "Tubing Products" shall mean Supplier's nitinol tubing
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products set forth on Annex I to the Supplemental Letter.
"TWC Alloys" shall mean the SMA materials produced and/or sold by Teledyne
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Xxx Xxxxx and purchasable by Supplier from time to time (including, if and when
Supplier starts purchasing Hollows from Teledyne Xxx Xxxxx, Teledyne Xxx Xxxxx).
Various other defined terms used herein are defined throughout this
Agreement.
B. SUPPLY AGREEMENT PROVISIONS.
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1. Basic Agreement.
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(a) Subject to the terms, provisions and conditions hereinafter set
forth, for a period of three (3) years from the date of this Agreement (the
"Tubing Supply Term"), Supplier agrees to sell Tubing Products to Customer as
ordered by Customer; provided, however, that Customer agrees to sell Tubing
Products only to Permitted Customers.
(b) Subject to the terms, provisions and conditions hereinafter set
forth, for a period lasting until the first to occur of (i) ten (10) years from
the date of this Agreement and (ii) such time as Supplier is no longer able to
purchase TWC Alloy from its supplier (the "TWC Alloy Supply Term"), Supplier
agrees to sell TWC Alloys to Customer as ordered by Customer.
(c) Subject to the terms, provisions and conditions hereinafter set
forth, for a period lasting until the first to occur of (i) five (5) years from
the date of this Agreement and (ii) such time as Supplier is no longer able to
purchase SMC Alloy from its supplier (the "SMC Alloy Term"), Supplier agrees to
sell SMC Alloys to Customer as ordered by Customer.
2. Specifications. The Tubing Products shall meet Supplier's published
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specifications (or, where applicable, agreed upon specifications) for the Tubing
Products, as modified from time to time. The Product Managers defined in Section
F.2 below shall be responsible for amending said specifications by mutual
consent from time to time as required to reflect agreed upon specifications.
Sales of Alloys hereunder shall be made on an "as-is, where-is" basis only.
3. Pricing.
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(a) The initial purchase price for each Tubing Product listed on Annex
I to the Supplemental Letter in any particular quantity shall be provided by
Supplier to Customer upon Customer's request, and shall be the price for such
Product until such time as Supplier notifies Customer of any changes thereto.
The parties agree that Supplier may amend the purchase price for each Tubing
Product at any time during the term hereof by ninety (90) days prior written
notice to Customer to reflect the prices at which Tubing Products are generally
available to third parties; provided, however, that, notwithstanding anything to
the contrary in the preceding portion of this Section B.3(a), Supplier agrees
that the price
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charged by it to Customer for any Tubing Product shall be the lowest price being
charged at such time by Supplier (or that was charged during the preceding sixty
(60) days) for that Tubing Product to its other customers purchasing Tubing
Products in similar quantities.
(b) The purchase price for each Alloy will be a price equal to the sum
of (x) 115% of the direct costs of Supplier to purchase such Alloy from its
supplier at the time of Customer's order (including, in the case of Hollows,
both the cost of acquiring the unimproved Alloy from Special Metals Corporation
or Teledyne Xxx Xxxxx and the cost of having the unimproved Alloy turned into
Hollows by a third party), plus (y) Supplier's customary freight costs. The
purchase price for Alloys will change as the costs to Supplier of acquiring and
shipping the Alloys changes (and Supplier agrees to notify Customer promptly
upon becoming aware of any such changes).
4. Terms and Conditions.
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(a) Purchase Orders. Customer shall purchase Tubing Products and
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Alloys by submitting to Supplier purchase orders for specific Tubing Products
and/or Alloys. Purchase orders shall specify the type and quantity of Tubing
Products and/or Alloys to be purchased, the price, the delivery date (which
shall not be less than one week for Tubing Products in stock and ten weeks for
Tubing Products not in stock, in each case at the time of the purchase order),
the purchase order number, and, in the case of Tubing Products only, any
requisite test report and certification requirements. Purchase orders shall be
deemed accepted by Supplier ten (10) Business Days after receipt, unless
Supplier notifies Customer within said period that it is rejecting such purchase
order. Supplier will only be allowed to reject purchase orders for Alloys if
and to the extent Supplier is not able to obtain the ordered Alloys from its
supplier at the price and/or for the delivery date specified by Customer.
Supplier will only be allowed to reject Purchase Orders for Tubing Products if
both (i) Supplier, using its reasonable commercial efforts, believes it is
unable to supply such Tubing Products within the time ordered by Customer (given
Supplier's other commitments) and (ii) Customer's ordered quantity of Tubing
Products in the applicable fiscal quarter exceeds both (x) U.S. $200,000 and (y)
125% of the Tubing Products ordered by Customer in the immediately prior fiscal
quarter.
(b) Payment Terms; Invoice. Payment terms are net thirty (30) days
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after Customer's receipt of Supplier's invoice or shipment (whichever is later).
The Customer description and part number must be referenced on all invoices and
packing lists. All outstanding sums owed to Supplier by Customer shall accrue
interest at a rate of 1.0% per month (or any part thereof) if unpaid within ten
(10) days after the due date therefor. Notwithstanding anything to the contrary
set forth in this Part B., in no event shall Supplier be required to accept a
purchase order from Customer, or provide Customer with thirty (30) day terms, if
the extension of such credit would cause Customer to owe Supplier (after giving
effect to the amount of such purchase order) U.S. $300,000 or more, except to
the extent that Customer supplies Supplier with a satisfactory irrevocable
letter of credit (or other security satisfactory to Supplier) for amounts owed
Supplier in excess of U.S. $300,000.
(c) Terms and Conditions. Except as otherwise provided herein, each
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sale hereunder shall be governed by Supplier's standard terms and conditions as
defined from time to time (the "Sale Terms"). Such terms and conditions hereby
are incorporated herein by this reference. Supplier's current standard terms and
conditions are annexed to the Supplemental Letter as Annex III thereto. Any
preprinted terms submitted by Customer are superseded by the terms of this
Agreement. In the event of any inconsistency between this Agreement and the
Sale Terms, this Agreement shall be controlling.
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(d) Delivery. Standard delivery for Tubing Products is ten (10) weeks
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after receipt of Customer's order for Tubing Products not in stock and one week
for Tubing Products in stock. The parties may agree on shorter lead times to
meet Customer's needs. If Supplier does not meet the committed ship date
Customer may, without waiving any claims hereunder, (i) extend the time for
delivery, or (ii) cancel all or any part of the purchase order. Delivery for
Alloys shall be based upon the amount of time it takes Supplier to acquire the
Alloy from its supplier and Supplier shall have no liability to Customer for
failure to timely deliver Alloy except (and only to the extent) such delay
results from Supplier's negligence or misconduct. The delivery dates for all
Tubing Products and Alloys sold pursuant to this Agreement shall be deemed to be
the dates on which they are placed by Supplier into the possession of Customer's
designated carrier, packed and ready for shipment to Customer's designated
location. Invoices shall not precede the delivery date. Supplier shall ship
Tubing Products and Alloy F.O.B., Supplier's facilities in either greater San
Francisco, California or Connecticut, U.S.A.; provided, however that, at
Supplier's option, Alloy may be "drop shipped" F.O.B. the relevant supplier's
facilities. All Products and Alloy shall be shipped by Customer's designated
standard carrier unless otherwise specified by Customer. Delivery shall be made
to Customer's plant at Herk de Stad, Belgium, unless otherwise specified by
Customer in writing.
(e) Warranty. Supplier warrants the Tubing Products as set forth in
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the Sale Terms. These warranties shall inure to the benefit of Customer, its
successors and assigns and to subsequent purchasers of the Tubing Products, and
shall survive acceptance and use of, and payment for, the Tubing Products.
Supplier makes no product warranties whatsoever with respect to the Alloys;
provided, that Supplier will use all commercially reasonable efforts to
cooperate with Customer to try to make available to Customer the benefit of any
product warranties with respect to the Alloy made to Supplier by the supplier of
the Alloys.
(f) Returns.
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(i) Supplier agrees to accept return of any Tubing Product that
fails to function as warranted in Section B.4(e) and in accordance with the
specifications specified in the applicable purchase order. In the event of
a return of a Tubing Product pursuant to this Section B.4(f), Supplier
shall perform testing and analysis of the returned Tubing Product and issue
a written report to Customer explaining the cause of the failure. Supplier
agrees to replace returned Tubing Products with new Tubing Products or to
credit Customer for the full amount of the purchase price. IN NO EVENT
SHALL SUPPLIER BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR CONSEQUENTIAL
DAMAGES RESULTING FROM THE USE OF ANY OF THE TUBING PRODUCTS BY ANY PERSON.
IN NO EVENT SHALL SUPPLIER BE LIABLE FOR ANY DAMAGES, INCLUDING WITHOUT
LIMITATION INCIDENTAL, SPECIAL AND CONSEQUENTIAL DAMAGES, RESULTING FROM
THE USE OF ANY OF THE ALLOYS BY ANY PERSON.
(ii) Any claim for breach of warranty hereunder must be presented
to the Supplier, in writing, within sixty (60) days after receipt of the
Tubing Product by Customer and must state that a claim hereunder is
probable. Failure to notify Supplier as aforesaid within such specified
period shall constitute a waiver of the claim. Claims must be accompanied
by supporting proof to the extent reasonably available.
(g) Insurance.
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(i) On written request from Customer, Supplier shall deliver to
Customer a certificate of insurance evidencing that Supplier maintains
product liability insurance for the Tubing Products and Alloys in an amount
that is usual and customary for Supplier's business.
(ii) Customer shall maintain product liability insurance for any
products incorporating the Tubing Products and/or the Alloys in an amount
that is usual and customary for Customer's business and, upon written
request from Supplier, will deliver to Supplier a certificate of insurance
evidencing the same.
5. Termination. Each of the SMC Alloy Supply Term, the TWC Alloy Supply
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Term and the Tubing Supply Term may be terminated at any time during its term as
follows:
(a) by mutual written consent of the parties at any time;
(b) by either party following thirty (30) days notice to the other
party that such second party is in breach of any of its material obligations
under Part B. of this Agreement and a failure of the breaching party to cure the
breach within the thirty (30) day period (unless the breach is not curable in
which case the the SMC Alloy Supply Term, the TWC Alloy Supply Term or the
Tubing Supply Term, as applicable, shall terminate immediately following such
notice). If either party fails to keep or perform any of its material
obligations under this Part B. and such default continues for a period of thirty
(30) days after the defaulting party has been notified of the default by the
other party, then the non-defaulting party may suspend this Part B. forthwith
upon written notice to the other party until such time as the default has been
cured. However, a non-defaulting party who has suspended performance pursuant
to this Section B.5(b) shall not be precluded from terminating any one or more
of the SMC Alloy Supply Term, the TWC Alloy Supply Term or the Tubing Supply
Term pursuant to any other provision, or from pursuing its other lawful rights
in the event that the defaulting party does not cure the default prior to such
termination.
Nothing in this Section B.5 in any way shall extend the SMC Alloy Supply
Term, the TWC Alloy Supply Term or the Tubing Supply Term.
C. LICENSES
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1. License Grants.
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(a) In the event that any one or more of the N/T Patents is issued to
Supplier, and only in such event, Supplier hereby grants to Customer a
worldwide, irrevocable (except as provided in Section C.5 below), transferable,
non-exclusive right and license to such issued N/T Patents (with the rights of
sublicense and assignment) to use the underlying patented technology (the
"License"), such License to be effective from and after the date of the issuance
of any such N/T Patent. The License is without representation or warranty as to
the N/T Patents and/or the underlying patented technology.
(b) Supplier hereby grants to Customer a worldwide, irrevocable
(except as provided in Section C.5 below), non-transferable, non-exclusive right
and license (without the rights of sublicense and assignment) to use and develop
the Tubing Licensed Technology (the "Tubing License") for sales to Permitted
Customers (and only for sales to Permitted Customers), such Tubing License to be
effective from and after the date hereof. The Tubing License is without
representation or warranty as to the Tubing License Technology.
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(c) Supplier hereby grants to Customer a worldwide, irrevocable
(except as provided in Section C.5 below), non-transferable, non-exclusive right
and license (without the rights of sublicense and assignment) to use and develop
the Electropolishing Licensed Technology (the "Electropolishing License," with
the Tubing License and the License, collectively, the "Licenses") for sales to
Permitted Customers (and only for sales to Permitted Customers), such
Electropolishing License to be effective from and after the date hereof. The
Electropolishing License is without representation or warranty as to the
Electropolishing Licensed Technology.
(d) None of the Licenses includes the right to use and/or develop any
improvements, additions and/or accretions to any of the N/T Patents, the Tubing
Licensed Technology and/or the Electropolishing Licensed Technology created,
invented or discovered subsequent to the date hereof by or under Supplier.
2. Covenants of Customer.
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(a) Customer shall pay to Supplier an eight percent (8%) royalty,
payable quarterly in arrears, by the end of the first month of the subsequent
quarter, on the Tubing License.
(b) Customer shall pay to Supplier a seven percent (7%) royalty,
payable quarterly in arrears, by the end of the first month of the subsequent
quarter, on the Electropolishing License.
(c) Customer shall not pay a royalty to Supplier on the License.
(d) At reasonable times during the terms of the Electropolishing
License and the Tubing License and for twelve (12) months after the later of (i)
the termination of the Electropolishing License or (ii) the termination of the
Tubing License, Supplier or a third party representative of Supplier reasonably
acceptable to Customer, upon reasonable notice and during Customer's normal
business hours, shall have the right to conduct an audit of the relevant
portions of Customer's books of account to verify compliance with the covenants
set forth in this Section C.2. Customer immediately shall pay any overdue
payments under this Section C.2, with interest thereon at the rate of 1.5% per
month (or the maximum permitted by applicable law, if less) from the due date
until paid. Except as set forth below, such audit(s) may be conducted no more
than once in any year. Supplier shall bear the costs of the audit; provided,
however, that if the audit reveals overdue payments in excess of five percent
(5%) of the total amount payable for any calendar quarter, Customer shall pay
the reasonable costs of such audit and for each such audit Supplier shall have
the right to conduct another audit during the same twelve month period at
Customer's cost.
3. Covenants of Supplier.
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(a) Except as set forth in Section C.3(b) below, Supplier shall pay
any applicable maintenance fees for each and every Patent in force for the life
of such Patent at Supplier's own expense. Supplier agrees to prosecute such
applications in a commercially reasonable manner to maximize (giving due regard
for the circumstances) patent protection that may be obtained thereon. Supplier
agrees, from time to time and on a reasonable basis, to inform Customer about
the status of the prosecution of said patent applications.
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(b) Notwithstanding anything in Section C.3(a) to the contrary, in
the event that Supplier no longer desires to prosecute and/or maintain any one
or more Patents as aforesaid, Supplier shall, upon request of the Customer,
assign such Patent(s) without representation or warranty to Customer, upon which
transfer Supplier's obligations pursuant to Section C.3(a) will terminate as to
such Patent(s).
(c) Supplier agrees not to enter into any agreement or contract, or
relating to the Patents or grant any rights or undertake any obligations to any
third party which would materially and adversely affect Customer's rights under
Part C. of this Agreement.
(d) Supplier promptly shall inform Customer on a continuing basis of
material developments regarding the Patents, including without limitation any
material change in the status of any Patents (or patent applications therefor)
and of any material notices of infringement, misuse, or misappropriation
relating to the Patents.
(e) Supplier shall cooperate with Customer to transfer to Customer,
through its employees, the know-how included within the Electropolishing License
and the Tubing License. Such cooperation shall include allowing representatives
of Customer access to Supplier's facilities for five (5) full Business Days for
purposes of learning such know-how. All such know-how transferred to Customer
shall remain the property of Supplier only, and Customer's rights thereto shall
remain limited to its rights under the Electropolishing License or the Tubing
License, as the case may be. In addition, all such know-how shall be
Confidential Information hereunder, and shall remain subject to the provisions
of Section D.2 below.
4. Patent Infringement.
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(a) Notification of Infringement. If either party to this Agreement
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believes that any of the Patents licensed hereunder is being infringed by a
third party, the party believing that such infringement has occurred promptly
shall identify the Patent(s) and the third party and give notice to the other
party in writing.
(b) Infringement of Licensed Technology. In the event of an actual or
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alleged infringement of any of the Patents licensed hereunder, Supplier shall
have the exclusive right, at its own expense, to bring legal action to enjoin
such infringement and for damages; provided, however, if Supplier fails to
institute such legal action within one hundred and eighty (180) days after being
notified by Customer pursuant to Section C.4(a) hereof, or otherwise becoming
aware of such infringement, then Customer is hereby granted the right, if it so
desires, bring such legal action at its own expense.
5. Termination.
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(a) The terms and provisions of Section C.1.(a) shall terminate, as
to each Patent licensed thereby, upon the earlier to occur of (i) the expiration
of such Patent or (ii) prior to the issuance of such Patent, Supplier forwarding
to Customer a writing from Supplier's patent counsel stating that such Patent
will not (for whatever reason) be issued. The terms and provisions of Sections
C.1.(b) and (c), insofar as they relate to any Patent or patent only, shall
terminate upon the expiration of such Patent or patent.
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(b) In addition, each of the Tubing License and the Electropolishing
License granted under this Part C. (i) immediately shall terminate in the event
that it is transferred (or purported to be transferred) to a third party by
Customer, or if direct or indirect Control of Customer is transferred to or
otherwise acquired by any Person other than Xxxxxxxx Xxx Xxxxxxxxxx or an
Affiliate, or if an event occurs after which Xxxxxxxx Xxx Xxxxxxxxxx and
Affiliates, as a group, beneficially own less than a majority of the Customer
immediately after such event, or (ii) shall terminate following thirty (30) days
notice by Supplier to Customer that Customer is in breach of any of its material
obligations under this Part C. and a failure of Customer to cure the breach
within the thirty (30) period (unless the breach is not curable in which case
said Licenses shall terminate immediately following such notice).
D. INTELLECTUAL PROPERTY/CONFIDENTIALITY PROVISIONS.
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1. Limited Licenses.
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(a) Each party hereby acknowledges the other's ownership of all
right, title and interest in and to any trademarks and trade names which the
other uses to sell the Products. Neither party shall acquire any interest
therein by virtue of this Agreement or the performance by either party of their
respective duties and obligations hereunder.
(b) Each party reserves the right to approve any uses by the other of
the first party's proprietary names and marks in the Tubing Products and Alloys
(and related packaging materials) in advance. Any use by one party of another
party's proprietary names and marks shall comply with all directions of manner
of usage given by the party owning the name or xxxx from time to time.
2. Confidential Information.
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(a) The Customer shall, from the date of disclosure of any
Confidential Information by the Supplier and for a period of ten (10) years
thereafter, use the Confidential Information of the Supplier so disclosed solely
for its own internal use consistent with this Agreement, not disclose the
information to any person or persons outside its organization, and disclose the
information to any person or persons within its organization only on a "need to
know" basis.
(b) If the Customer is compelled to make a disclosure of any
Confidential Information of the other party by law or government rule or
regulation:
(i) such disclosure shall be limited to the extent required;
and
(ii) the Supplier shall have an opportunity to review the
information at least thirty (30) days before disclosure (or, if not
possible, as much time as is practicable under the circumstances); and
(iii) the Customer shall promptly apply for applicable
protective orders.
Notwithstanding the foregoing, such review shall not make the Customer
responsible for the content of the disclosure.
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(c) For the period commencing on the date hereof and continuing
through the second anniversary of each of Parts B and C hereof, each party
agrees that it will not, and that it will direct its employees, directors or
consultants not to, make any statement that is professionally or personally
disparaging about or adverse to, the interests of the other, or any of the
other's officers, directors, shareholders or employees including, but not
limited to, any statement that disparages any person, product, service,
finances, financial condition, capabilities or other aspect of the business of
the other or any of its officers, directors, shareholders or employees
(provided, however, that this Section D.2(c) does not prevent a party from
making true and non-misleading statements about the other party while competing
for customers).
E. MISCELLANEOUS.
-------------
1. Status of Parties.
-----------------
(a) The parties expressly agree that the relationship established by
this Agreement as between Supplier and Customer is solely one of independent
parties to an agreement, and neither party shall have any right to, or shall
exercise any supervision or direction over, the other or any of its employees.
Nothing contained herein shall create a partnership, joint venture, or any other
business relationship between Supplier and Customer, other than those
specifically created hereunder.
(b) Except as expressly provided herein, neither party shall have any
authority to obligate or bind the other with respect to any matter, or make any
contract, sale, agreement, warranty or representation, express or implied, on
behalf of the other.
(c) Each party shall conduct business solely in its own name and not
that of the other party and shall not use the words "Agent," "Agency" or words
of similar import on stationery, signs, documents, telephone listings, or
otherwise in connection with the name of the other party ( it being agreed and
understood that nothing in this Section E.1.(c) shall limit any of the licenses
to use a trade name set forth in Part C. above).
2. Product Managers. During the term of this Agreement, the parties
----------------
shall each designate one (1) Product Manager who shall be responsible for
managing the day-to-day business relationship between Supplier and Customer
("Product Manager"). The Product Managers shall confer on a regular basis.
3. Special Audits. In addition to Supplier's financial audit rights
--------------
pursuant to Section C.2.(d) above, Customer shall have the right to audit
Supplier's books and records to determine whether the price Supplier is being
charged for Tubing Products is in accord with the proviso of Section B.3.(a)
above, and Supplier shall have the right to audit Customer's manufacturing
processes to determine whether Customer is selling products utilizing one or
more of the Electropolishing License or the Tubing License without paying
royalties thereon, both in accordance with this Section E.3. Each party shall
have the right to perform such an audit only through an independent auditor (or,
in the case of Supplier's rights hereunder, an independent auditor along with an
independent metallurgist or independent metals engineer) who signs a
confidentiality agreement with the party being audited agreeing not to disclose
to the party performing the audit any information (i) in the case of an audit by
Customer, other than the price that should have been charged to Customer
(without disclosing any other information, such as what products Supplier sells
to
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whom and at what prices and in what volumes), or (ii) in the case of an audit by
Supplier, other than whether Customer is utilizing the Electropolishing License
and/or the Tubing License without paying royalties and, if so, the amount owed
Supplier by Customer thereby. Audits pursuant to this section shall be at
reasonable times, upon reasonable notice and during normal business hours. Any
overcharges of Customer by Supplier, or any underpayments by Customer to
Supplier, shall immediately be paid by the appropriate party with interest
thereon at the rate of 1.5% per month (or the maximum permitted by applicable
law, if less) from the date payment for Tubing Products was made by Customer, or
payment of royalties was due from Customer, as the case may be. Except as set
forth below, such audits may be conducted no more than once in any year. The
party ordering the audit shall bear the costs of the audit; provided, however,
that if the audit of Supplier reveals overcharges in excess of five percent (5%)
of the total amount paid by Customer for Tubing Products in any calendar
quarter, or if the audit of Customer reveals that Customer was treating sales of
products utilizing the Electropolishing License or the Tubing License as if such
products were not utilizing the same, the party being audited shall bear the
reasonable costs of such audit and for each such audit and the party ordering
the audit shall have the right to conduct another similar audit during the same
twelve month period at the cost of the party being audited.
4. Limitation on Liability. Notwithstanding anything set forth herein to
-----------------------
the contrary, Customer shall have no liability to Supplier, and Supplier shall
have no right to terminate its obligation to sell Tubing Products pursuant to
Section B.1(a), the Tubing License and/or the Electropolishing License, as the
case may be, by virtue of Tubing Products, or products utilizing the Tubing
License and/or the Electropolishing License, as the case may be, being sold to
other than Permitted Customers, if each of the following conditions is
satisfied: (i) at the time of sale by Customer, Customer reasonably believed it
was selling to a Permitted Customer; (ii) the contract between Customer and its
customer contained assurances that the Products or products would only be used
in a manner that made Customer's sale of the same a sale to a Permitted
Customer, and Customer's right to enforce and seek damages for breach of such
assurances was assignable to Supplier; and (iii) upon Supplier's request,
Customer assigns the contract rights described in clause (ii) above to Supplier
and Customer thereafter cooperates with Supplier as reasonably requested by
Supplier in connection with any legal actions brought by Supplier against
Customer's customer or with any attempts by Supplier to cause Customer's
customer to act in a manner to make itself a Permitted Customer.
5. Entire Agreement. This Agreement (together with Annexes attached
----------------
hereto as such Annexes may be amended from time to time in accordance with this
Agreement) constitutes the entire Agreement between Supplier and Customer with
respect to the matters covered hereby. All prior or contemporaneous agreements,
whether written or oral, and all proposals, understandings and communications
between or involving Supplier and Customer are hereby canceled and superseded.
This Agreement may be amended only by a written instrument executed by both
parties.
6. Amendments and Waivers. No amendment of any provision of this
----------------------
Agreement shall be valid unless the same shall be in writing and signed by the
Supplier and the Customer. No waiver by either party of any default,
misrepresentation, or breach of warranty or covenant hereunder, whether
intentional or not, shall be deemed to extend to any prior or subsequent
default, misrepresentation or breach of warranty or covenant hereunder or affect
in any way any rights arising by virtue of any prior or subsequent such
occurrence.
7. Severability. If any provision of this Agreement is held to be
------------
unenforceable for any reason, it shall be adjusted rather than voided, if
possible, in order to achieve the intent of the parties to the
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extent possible. In any event, all other provisions of this Agreement shall be
deemed valid and enforceable to the full extent.
8. Succession and Assignment. This Agreement shall be binding upon and
-------------------------
inure to the benefit of the parties named herein and their respective successors
and permitted assigns (provided, however, that nothing in this Section E.8 shall
in any way overrule the provisions regarding the termination of the Licenses
pursuant to Section C.5(b) above). Customer may not assign either this Agreement
or any of its rights or interests hereunder without the prior written approval
of the Supplier. For purposes of the foregoing sentence, an event after which
causes Control of the Customer to be acquired by anyone other than Xxxxxxxx Xxx
Xxxxxxxxxx and Affiliates, or an event by which Xxxxxxxx Xxx Xxxxxxxxxx and
Affiliates beneficially own less than a majority of the Customer immediately
after such event, shall be deemed to constitute an assignment.
9. Force Majeure. Neither Supplier nor Customer shall be liable for its
-------------
failure to perform its obligations under this Agreement due to events beyond its
reasonable control including, but not limited to, strikes, riots, wars, fire,
acts of God, labor unrest and acts in compliance with applicable law, regulation
or order (whether valid or invalid) of any governmental body.
10. Applicable Law/Dispute Resolution. This Agreement and all
---------------------------------
transactions hereunder shall be governed by and construed according to the laws
of the State of Connecticut, U.S.A. excluding the choice of law rules thereof.
Any dispute arising from this Agreement shall be settled by arbitration in
accordance with the rules of CEPANI ("Centre belge pour l'etude et la pratique
de l'arbitrage national et international/Belgisch centrum voor studie en
praktijk van nationale en internationale arbitrage") by three (3) arbitrators
appointed in accordance with such rules. The proceedings shall take place in
Brussels, Belgium and shall be conducted in English. Nothing in this Section 10
shall prevent a party from seeking injunctive relief pending a decision of an
arbitrator pursuant to this Section 10 or to enforce such a decision in any
court having jurisdiction over the party against whom injunctive relief or
enforcement is sought.
11. Notices. Any notice or other communication required or which may be
-------
given hereunder shall be in writing and shall be sent by registered mail,
delivered personally, or sent by reputable overseas overnight or 2-day courier,
charges prepaid, to the parties at the following addresses or at such other
addresses as shall be specified by the parties by like notice, and shall be
deemed given when so delivered personally, or if sent by reputable overseas
overnight or 2-day courier, two Business Days after the date of mailing, or if
sent by registered mail, five Business Days after the date of mailing, as
follows:
If to the Customer:
Memry Europe, N.V.
Daelemveld 1113
X-0000 Xxxx-xx-Xxxx
Xxxxxxx
Attention: Xxxxxxxx Xxx Xxxxxxxxxx
If to the Supplier:
Memry Corporation
00 Xxxxxxxx Xxxxx
-00-
Xxxxxxxxxx, Xxxxxxxxxxx 00000
Attention: Xx. Xxxxx X. Xxxxx
Copy (which shall not constitute notice) to:
Xxxx Xxxxx & Xxxxxxx LLP
Xxx Xxxxxxxx Xxxxxx
Xxxxx 0000
Xxxxxxxx, Xxxxxxxxxxx 00000
Attention: Xxxxx X. Xxxxx, Esq.
Either party may send any notice, request, demand, claim or other communication
hereunder to the intended recipient at the address set forth above using any
other means (including personal delivery, expedited courier, messenger service,
telecopier, telex, ordinary mail, or electronic mail), but no such notice,
request, demand, claim or other communication shall be deemed to have been duly
given unless and until it actually is received by the intended recipient. Either
party may change the address to which notices, requests, demands, claims and
other communications hereunder are to be delivered by giving the other party
notice in the manner herein set forth.
12. Indemnification. Customer agrees to indemnify and hold harmless
---------------
Supplier from any damage, loss, cost or liability (including legal fees and
expenses and the cost of enforcing this indemnity) arising out of or resulting
from a claim (whether or not valid) of a third party regarding or relating to
(i) the direct or indirect resale of Tubing Products or Alloys sold to Customer
hereunder and/or (ii) products of Customer made utilizing one or more of the
Licenses (provided, however, as to clause (i) (but only insofar as it relates to
Tubing Products), such indemnification obligation is limited if and to the
extent that such liability arises from the breach of the warranties provided for
herein by Supplier relating to the applicable Tubing Products).
13. Attorneys' Fees. If legal action is commenced pursuant to Section
---------------
E.10above, the prevailing party shall be paid by the other party reasonable
attorneys' fees and expenses.
14. Counterparts. This Agreement may be executed in counterparts, each of
------------
which shall be deemed an original, but which together shall constitute one and
the same instrument.
15. Headings. The headings of the Sections of this Agreement are for
--------
convenience and shall not be used to interpret this Agreement.
16. Delivery of E-Mail. For one year subsequent to the date hereof,
------------------
Supplier agrees to use commercially reasonable efforts to forward to Customer,
at an e-mail address to be supplied by Customer to Supplier from time to time,
any and all e-mails meant for Customer and its employees that are received by
Supplier. Supplier will endeavor not to read more of the e-mails than is
necessary to correctly forward the same.
17. Sale of NT 07. The parties acknowledge that Customer has in its
-------------
possession approximately BEF 3,000,000 of 3.5" bar stock of NT 07 raw material
(the "Bar Stock"). Supplier agrees, to the extent (and only to the extent) that
the Bar Stock (i) falls within Supplier's published material
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specifications, and (ii) is needed by Supplier for production in the ordinary
course of Supplier's business, to order said Bar Stock from Customer for
purchase over the next twelve months. All such orders (i) will be subject to
acceptance by Customer, (ii) will be priced at Customer's inventory cost as of
the date hereof, shipping f.o.b. Customer's facility, and (iii) will otherwise
be on the terms and conditions for sale by which Products are sold to Customer
under Article II hereof.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
by their duly authorized representatives and it shall be effective as of the
date first above written.
MEMRY CORPORATION MEMRY EUROPE, N.V.
/s/ Xxxxx X. Xxxxx /s/ Xxxxxxxx Xxx Xxxxxxxxxx
By: ________________________ By: __________________________
Name: Xxxxx X. Xxxxx Name: Xxxxxxxx Xxx Xxxxxxxxxx
Title: Chairman and CEO Title: President
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