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EXHIBIT 99.4
MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
SOLIGEN TECHNOLOGIES, INC.
PATENT LICENSE AGREEMENT
(EXCLUSIVE)
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TABLE OF CONTENTS
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WITNESSETH................................................. 1
1 DEFINITIONS............................................ 2
2 GRANT.................................................. 4
3 DILIGENCE.............................................. 6
4 ROYALTIES.............................................. 6
5 REPORTS AND RECORDS.................................... 8
6 PATENT PROSECUTION..................................... 9
7 INFRINGEMENT........................................... 10
8 PRODUCT LIABILITY...................................... 11
9 EXPORT CONTROLS........................................ 12
10 NON-USE OF NAMES....................................... 12
11 ASSIGNMENT............................................. 12
12 DISPUTE RESOLUTION..................................... 12
13 TERMINATION............................................ 13
14 PAYMENTS, NOTICES AND OTHER COMMUNICATIONS............. 14
15 MISCELLANEOUS PROVISIONS............................... 14
APPENDIX A................................................. 16
APPENDIX B................................................. 18
APPENDIX C................................................. 19
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MASSACHUSETTS INSTITUTE OF TECHNOLOGY
and
SOLIGEN TECHNOLOGIES, INC.
PATENT LICENSE AGREEMENT
This Agreement is made and entered into this ____ day of
______________, 199___, (the "EFFECTIVE DATE") by and between the MASSACHUSETTS
INSTITUTE OF TECHNOLOGY, a corporation duly organized and existing under the
laws of the Commonwealth of Massachusetts and having its principal office at 00
Xxxxxxxxxxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx 00000, X.X.X. (hereinafter
referred to as "M.I.T."), and SOLIGEN TECHNOLOGIES, INC., a corporation duly
organized under the laws of the State of Wyoming and having its principal office
at 00000 Xxxxxxxxx Xxxxxx, Xxxxxxxxxx, Xxxxxxxxxx 00000, X.X.X. (hereinafter
referred to as "LICENSEE").
WITNESSETH
WHEREAS, M.I.T. and LICENSEE (as Soligen, Inc.) entered into a License
Agreement dated October 18, 1991 (hereinafter the "PRIOR AGREEMENT");
WHEREAS, WDF Captial Corp. was created for the purposes of an equity
financing and became Soligen Technologies, Inc., which then acquired Soligen,
Inc.;
WHEREAS, Soligen, Inc., incorporated in the State of Delaware, is now a
wholly owned subsidiary of Soligen Technologies, Inc.;
WHEREAS, M.I.T. and LICENSEE desire to amend and restate the terms of
the PRIOR AGREEMENT, replacing all amendments and the addendum agreements
thereto, in accordance with the terms and conditions as set forth herein;
WHEREAS, M.I.T. and LICENSEE (formerly WDF Capital Corp.) have entered
into the following Agreements: M.I.T. Share Acquisition Agreement dated November
4, 1992, Escrow Agreement dated November 4, 1992, and Voluntary Pooling
Agreement dated February 15, 1993;
WHEREAS, M.I.T. is the owner of certain PATENT RIGHTS (as later defined
herein) relating to X.X.X. Xxxx Xx. 0000, "Xxxxx Dimensional Printing Techniques
(3DP)" by Xxxxxxx Xxxx, Xxxx Xxxxxxxx, Xxxxxxx Xxxxx and Xxxx Xxxxxxxx; M.I.T.
Case No. 5567, "Three-Dimensional Printing Techniques" by Xxxxx Xxxxxxxxx, Xxxxx
X. Xxxxx, Xxxxxxx Xxxx, Xxxxx Xxxxxxxx, Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx
Xxxx, Xxxxx
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Curodeau, Tailin Fan, Xxxxxx Xxxxxxx, Xxxx Xxxxxx, Sang-Xxxx Xxx, Xxxxxx
Xxxxxxxx, Xxxxxxx Xxxxx and Xxxxxx Xxxxxx; M.I.T. Case No. 5997, "Ceramic Mold
Finishing" by Xxxxx Xxxxx, Xxxxxxx Xxxx, Xxxxxx Xxxxxxx and Xxxxxxx Xxxxx;
M.I.T. Case No. 6138, "High Speed, High Quality Three Dimensional Printing" by
Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx Xxxx, Xxxxx Xxxxxxxx, Tailin Fan and
Xxxxxxx Xxxxx; M.I.T. Case No. 6995, "Powder Dispensing Techniques for
Successive Layered Fabrication of an Object" by Xxxxxxx Xxxxx; and X.X.X. Xxxx
Xx. 0000, "Xxxxxx Composition for Use in Three-Dimensional Printing" by Xxxxx X.
Xxxxx and has the right to grant licenses under said PATENT RIGHTS;
WHEREAS, M.I.T. desires to have the PATENT RIGHTS developed and
commercialized to benefit the public and is willing to grant a license
thereunder;
WHEREAS, LICENSEE has represented to M.I.T., to induce M.I.T. to enter
into this Agreement, that LICENSEE is experienced in the development,
production, manufacture, marketing and sale of products similar to the LICENSED
PRODUCT(s) (as later defined herein) and/or the use of the LICENSED PROCESS(es)
(as later defined herein) and that it shall commit itself to a thorough,
vigorous and diligent program of exploiting the PATENT RIGHTS so that public
utilization shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a license under the PATENT RIGHTS
upon the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual
covenants contained herein, the parties hereto agree as follows:
1 - DEFINITIONS
For the purposes of this Agreement, the following words and phrases
shall have the following meanings:
1.1 "LICENSEE" shall include a related company of SOLIGEN TECHNOLOGIES,
INC., the voting stock of which is directly or indirectly at least Fifty Percent
(50%) owned or controlled by SOLIGEN TECHNOLOGIES, INC., an organization which
directly or indirectly controls more than Fifty Percent (50%) of the voting
stock of SOLIGEN TECHNOLOGIES, INC. and an organization, the majority ownership
of which is directly or indirectly common to the ownership of SOLIGEN
TECHNOLOGIES, INC.
1.2 "PATENT RIGHTS" shall mean all of the following M.I.T. intellectual
property:
a. the United States patents listed in Appendix A;
b. the United States patent applications listed in Appendix
A, and divisionals, continuations and claims of
continuation-in-part applications which shall be directed
to subject matter specifically described in such patent
applications, and the resulting patents;
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c. any patents resulting from reissues or reexaminations of
the United States patents described in a. and b. above;
d. the Foreign patents listed in Appendix A;
e. the Foreign patent applications listed in Appendix A, and
divisionals, continuations and claims of
continuation-in-part applications which shall be directed
to subject matter specifically described in such Foreign
patent applications, and the resulting patents;
f. Foreign patent applications filed after the EFFECTIVE DATE
in the countries listed in Appendix B and divisionals,
continuations and claims of continuation-in-part
applications which shall be directed to subject matter
specifically described in such patent applications, and
the resulting patents; and
g. any Foreign patents, resulting from equivalent Foreign
procedures to United States reissues and reexaminations,
of the Foreign patents described in d., e. and f. above.
1.3 A "LICENSED PRODUCT" shall mean any product or part thereof which:
a. is covered in whole or in part by an issued, unexpired
claim or a pending claim contained in the PATENT RIGHTS in
the country in which any such product or part thereof is
made, used or sold; or
b. is manufactured by using a process or is employed to
practice a process which is covered in whole or in part by
an issued, unexpired claim or a pending claim contained in
the PATENT RIGHTS in the country in which any LICENSED
PROCESS is used or in which such product or part thereof
is used or sold.
1.4 A "LICENSED PROCESS" shall mean any process which is covered in
whole or in part by an issued, unexpired claim or a pending claim contained in
the PATENT RIGHTS.
1.5 "ANCILLARY PRODUCT" shall mean any product sold by LICENSEE for use
with or in LICENSED PRODUCTS or LICENSED PROCESSES, such as, but not limited to,
binders, powders, extra print-heads, replacement parts, hardware and/or software
upgrades, etc.
1.6 "END-PRODUCT" shall mean any product produced and sold by LICENSEE
using LICENSED PRODUCTS or LICENSED PROCESSES.
1.7 "NET SALES" shall mean LICENSEE's xxxxxxxx for LICENSED PRODUCTS,
LICENSED PROCESSES, ANCILLARY PRODUCTS and END-PRODUCTS produced, used
transferred or sold hereunder less the sum of the following:
a. discounts allowed in amounts customary in the trade for
quantity purchases, cash payments, prompt payments,
wholesalers and distributors;
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b. sales, tariff duties, use taxes and/or value-added taxes,
such as GST charged in Canada and VAT charged throughout
Europe, directly imposed and with reference to particular
sales;
c. outbound transportation prepaid or allowed;
d. amounts allowed or credited on returns; and
e. all packaging and shipping costs separately billed.
No deductions shall be made for commissions paid to individuals whether
they be with independent sales agencies or regularly employed by LICENSEE and on
its payroll, or for cost of collections. Subject to deductions for bad debts,
LICENSED PRODUCTS shall be considered sold when billed out or invoiced. LICENSEE
can deduct from NET SALES all accounts or portions thereof, without duplication,
which are unpaid for ninety (90) days or more; provided that any such amounts
which are deducted from NET SALES and are subsequently collected will be added
back to NET SALES in the period in which they are collected. Notwithstanding the
foregoing, the maximum deduction permitted for bad debts in any reporting period
will be five percent (5%) of LICENSEE's xxxxxxxx for such period.
1.8 "TERRITORY" shall mean worldwide.
1.9 "FIELD OF USE ONE" shall mean:
a) the manufacture by 3D Printing of ceramic components for
use as a mold or, part of a mold for metal casting and the
sale of machines for such use. Applications where ceramic
parts form all or part of the casting mold are included,
except, the ceramic component must be removed before the
casting is put into use.
b) the manufacture by 3D Printing of wax components for use
as a pattern in investment casting and the sale of
machines for such use.
c) the manufacture by 3D Printing of ceramic patterns and
cores for metal casting and the sale of machines for such
use.
d) and shall exclude, for example, but not limited to, the
following: ceramic parts for end use; ceramic metal-matrix
preforms; electronic packaging; the direct manufacture of
parts or forms from metal, graphite, polymer materials and
materials other than those used in molds or patterns for
casting as permitted in this Paragraph 1.9 (a), (b), and
(c) herein;, and medical devices for direct use in or on
the body.
1.10 "FIELD OF USE TWO" shall mean the manufacture of ceramic abraders
for use to form graphite EDM electrodes.
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1.11 "TANGIBLE PROPERTY" shall mean any Alpha or Beta machines created
by the 3D Printing Consortium at M.I.T.
1.12 "EXCLUSIVE" or "EXCLUSIVITY" shall mean exclusive or exclusivity
but for the rights described in Appendix C.
2 - GRANT
2.1 M.I.T. hereby grants to LICENSEE the right and license in the
TERRITORY for the FIELD OF USE ONE to practice under the PATENT RIGHTS and, to
the extent not prohibited by other patents, to make, have made, use, lease, sell
and import LICENSED PRODUCTS and to practice the LICENSED PROCESSES, until the
expiration of the last to expire of the PATENT RIGHTS, unless this Agreement
shall be sooner terminated according to the terms hereof.
2.2 M.I.T. hereby grants to LICENSEE the nonexclusive right and license
in the TERRITORY for the FIELD OF USE TWO to practice under the PATENT RIGHTS
and, to the extent not prohibited by other patents, to make, have made, use,
lease, sell and import LICENSED PRODUCTS and to practice the LICENSED PROCESSES,
until the expiration of the last to expire of the PATENT RIGHTS, unless this
Agreement shall be sooner terminated according to the terms hereof.
2.3 LICENSEE agrees to cooperate in good faith with M.I.T. to resolve
potential conflicts over LICENSEE's FIELD OF USE and the fields of use of
M.I.T.'s other 3D Printing licensees.
2.4 LICENSEE agrees that LICENSED PRODUCTS leased or sold in the United
States shall be manufactured substantially in the United States.
2.5 In order to establish a period of EXCLUSIVITY for LICENSEE, M.I.T.
hereby agrees that it shall not grant any other license to make, have made, use,
lease, sell and import LICENSED PRODUCTS or to utilize LICENSED PROCESSES in the
TERRITORY for the FIELD OF USE ONE during the period of time commencing with the
EFFECTIVE DATE and terminating with October 1, 2006 (hereinafter the "EXCLUSIVE
PERIOD"). The EXCLUSIVE PERIOD may be extended upon the mutual consent of M.I.T.
and LICENSEE.
2.6 At the end of the EXCLUSIVE PERIOD, the license granted hereunder
in FIELD OF USE ONE shall become nonexclusive and shall extend to the end of the
term or terms for which any PATENT RIGHTS have been or shall be issued, unless
sooner terminated as hereinafter provided.
2.7 M.I.T. reserves the right to practice under the PATENT RIGHTS for
noncommercial research purposes and to use the TANGIBLE PROPERTY.
2.8 M.I.T. currently intends, at its sole discretion, and subject to
third party rights, to grant to LICENSEE the right to use, and to incorporate
into this Agreement, improvement
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technology developed by the M.I.T. Three Dimensional Printing Consortium which
is necessary for or will enhance LICENSEE's right and license to make, use, and
sell the LICENSED PRODUCTS and to practice the LICENSED PROCESSES in the
TERRITORY for the FIELD OF USE ONE or FIELD OF USE TWO.
2.9 If LICENSEE discovers, invents or acquires (other than as a result
of Paragraph 2.8 hereof) any improvement to the subject matter of any of the
claims, inventions and/or processes disclosed under the PATENT RIGHTS during the
term of this Agreement, LICENSEE shall be deemed to be the owner of all rights
arising out of any such improvement including the right to obtain patent
protection therefor in all countries at its expense and the right to
manufacture, use and sell such improvements, provided that LICENSEE shall
license such improvements to M.I.T. during the term of this Agreement on a
perpetual, royalty-free, non-exclusive basis without the right to sublicense.
2.10 Nothing in this Agreement shall be construed to confer any rights
upon LICENSEE by implication, estoppel or otherwise as to any technology or
patent rights of M.I.T. or any other entity other than the PATENT RIGHTS,
regardless of whether such patent rights shall be dominant or subordinate to any
PATENT RIGHTS.
3 - DILIGENCE
3.1 LICENSEE shall use its best efforts to bring one or more LICENSED
PRODUCTS or LICENSED PROCESSES to market through a thorough, vigorous and
diligent program for exploitation of the PATENT RIGHTS and to continue active,
diligent marketing efforts for one or more LICENSED PRODUCTS or LICENSED
PROCESSES throughout the life of this Agreement.
3.2 In addition, LICENSEE shall adhere to the following milestones:
a. LICENSEE shall permit an in-plant inspection by M.I.T. on
or before December 31, 1996, and thereafter permit
in-plant inspections by M.I.T. at regular intervals with
at least twelve (12) months between each such inspection.
b. LICENSEE's cumulative sales shall be according to the
following schedule:
March 1996 - March 1997....................................................... US $3,000,000;
March 1997 - March 1998....................................................... US $3,500,000;
March 1998 - March 1999....................................................... US $4,000,000;
March 1999 - March 2000....................................................... US $4,500,000;
March 2000 - March 2001....................................................... US $5,000,000;
March 2001 - March 2002....................................................... US $6,000,000;
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March 2002 - March 2003....................................................... US $8,000,000;
March 2003 - March 2004 and each year thereafter............................. US $10,000,000;
3.3 LICENSEE's failure to perform in accordance with either Paragraph
3.1 or 3.2 above shall be grounds for M.I.T. to terminate this Agreement
pursuant to Paragraph 13.3 hereof.
4 - ROYALTIES
4.1 For the rights, privileges and license granted hereunder, LICENSEE
shall pay royalties to M.I.T. in the manner hereinafter provided to the end of
the term of the PATENT RIGHTS or until this Agreement shall be terminated:
a. License Maintenance Fees of Fifty Thousand Dollars
($50,000) per year payable on December 31, 1998 and on
December 31 of each year thereafter; provided, however,
License Maintenance Fees may be credited to Running
Royalties subsequently due on NET SALES for each said
year, if any. License Maintenance Fees paid in excess of
Running Royalties shall not be creditable to Running
Royalties for future years.
b. Running Royalties in an amount equal to Four and One Half
Percent (4.5%) of NET SALES of the LICENSED PRODUCTS and
LICENSED PROCESSES used, leased or sold by and/or for
LICENSEE; provided however that during the period
commencing with the EFFECTIVE DATE and terminating on
December 15, 1998, M.I.T. shall waive the first Fifty
Thousand Dollars ($50,000) of Running Royalties due
pursuant to this Paragraph 4.1(b).
c. After the payment of Five Hundred Thousand Dollars
($500,000) in Running Royalties for the sale of metal END
PRODUCTS made using LICENSED PRODUCTS and/or LICENSED
PROCESSES pursuant to this Paragraph 4.1(b), the royalty
rate due for sale of metal END PRODUCTS shall be reduced
from Four and One Half Percent (4.5%) to Two and One
Quarter Percent (2.25%).
d. No Running Royalty shall be due on the sale of 3D Printing
machines sold to another 3D Printing licensee for use in
that licensee's field of use.
e. For the sale of machines to members of the Three
Dimensional Printing Consortium in good standing, the
following royalty reductions shall apply and LICENSEE
shall reduce its quoted price under such circumstances by
the equivalent dollar amount:
i. For members that have participated in the Consortium
for two (2) years or more at the time of purchase,
and only for the first ten machines purchased per
year, LICENSEE shall reduce the royalty due M.I.T.
under Paragraph 4.1(b) by Ten Percent (10%).
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ii. For members that have participated in the Consortium
for four (4) years or more at the time of purchase,
and only for the first ten machines purchased per
year, LICENSEE shall reduce the royalty due M.I.T.
under Paragraph 4.1(b) by Twenty Percent (20%).
iii. For members that have participated in the Consortium
for six (6) years or more at the time of purchase,
and only for the first ten machines purchased per
year, LICENSEE shall reduce the royalty due M.I.T.
under Paragraph 4.1(b) by Twenty-Five Percent (25%).
f. M.I.T. agrees to provide LICENSEE, from time to time, or
upon request with information about the membership of the
Three Dimensional Printing Consortium sufficient to
fulfill LICENSEE's obligations under Paragraph 4.1(e).
g. M.I.T. shall have the right to invest in additional shares
of Common Stock, on a pro rata basis, at the same price as
is granted to other investors purchasing Common Stock, as
part of an equity investment in LICENSEE.
4.2 All payments due hereunder shall be paid in full, without deduction
of taxes or other fees which may be imposed by any government, except as
otherwise provided in Paragraph 1.7(b).
4.3 No multiple royalties shall be payable because any LICENSED
PRODUCT, its manufacture, use, lease or sale are or shall be covered by more
than one PATENT RIGHTS patent application or PATENT RIGHTS patent licensed under
this Agreement.
4.4 Royalty payments shall be paid in United States dollars in
Cambridge, Massachusetts, or at such other place as M.I.T. may reasonably
designate consistent with the laws and regulations controlling in any foreign
country. If any currency conversion shall be required in connection with the
payment of royalties hereunder, such conversion shall be made by using the
exchange rate prevailing at the Chase Manhattan Bank (N.A.) on the last business
day of the calendar quarterly reporting period to which such royalty payments
relate.
5 - REPORTS AND RECORDS
5.1 LICENSEE shall keep full, true and accurate books of account
containing all particulars that may be necessary for the purpose of showing the
amounts payable to M.I.T. hereunder. Said books of account shall be kept at
LICENSEE's principal place of business or the principal place of business of the
appropriate division of LICENSEE to which this Agreement relates. Said books and
the supporting data shall be open at all reasonable times for five (5) years
following the end of the calendar year to which they pertain, to the inspection
of M.I.T. or its agents for the purpose of verifying LICENSEE's royalty
statement or compliance in other
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respects with this Agreement. Should such inspection lead to the discovery of a
greater than Ten Percent (10%) discrepancy in reporting to M.I.T.'s detriment,
LICENSEE agrees to pay the full cost of such inspection.
5.2 LICENSEE, within ninety (90) days after March 31, and within sixty
(60) days after June 30, September 30 and December 31 of each year, shall
deliver to M.I.T. true and accurate reports, giving such particulars of the
business conducted by LICENSEE and its sublicensees under this Agreement as
shall be pertinent to diligence under Article 3 and royalty accounting
hereunder. These reports shall include at least the following:
a. number of LICENSED PRODUCTS leased or sold by LICENSEE;
b. total xxxxxxxx for LICENSED PRODUCTS, LICENSED PROCESSES,
ANCILLARY PRODUCTS and END-PRODUCTS, subtotaling the
number of metal END PRODUCTS, leased or sold by LICENSEE,
c. accounting for NET SALES, noting the deductions applicable
as provided in Paragraph 1.7;
d. Running Royalties due under Paragraph 4.1(b), noting any
reductions taken under Paragraph 4.1(e); and
e. total royalties due;
5.3 With each such report submitted, LICENSEE shall pay to M.I.T. the
royalties due and payable under this Agreement. If no royalties shall be due,
LICENSEE shall so report.
5.4 On or before the ninetieth (90th) day following the close of
LICENSEE's fiscal year, LICENSEE shall provide M.I.T. with LICENSEE's certified
financial statements for the preceding fiscal year including, at a minimum, a
balance sheet and an income statement.
5.5 The amounts due under Articles 4 and 6 shall, if overdue, bear
interest until payment at a per annum rate Two Percent (2%) above the prime rate
in effect at the Chase Manhattan Bank (N.A.) on the due date. The payment of
such interest shall not foreclose M.I.T. from exercising any other rights it may
have as a consequence of the lateness of any payment.
6 - PATENT PROSECUTION
6.1 M.I.T. shall apply for, seek prompt issuance of, and maintain the
PATENT RIGHTS during the term of this Agreement. Appendix B is a list of the
foreign countries in which patent applications corresponding to the United
States Patent applications listed in Appendix A shall be filed. Appendix B may
be amended by mutual agreement of both parties. The filing, prosecution and
maintenance of all PATENT RIGHTS applications and patents shall be the primary
responsibility of M.I.T.; provided, however, LICENSEE shall have reasonable
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opportunities to advise M.I.T. and shall cooperate with M.I.T. in such filing,
prosecution and maintenance.
6.2 Payment of all fees and costs relating to the filing, prosecution
and maintenance of the PATENT RIGHTS unique to the FIELD OF USE ONE shall be the
responsibility of LICENSEE, whether such fees and costs were incurred before or
after the EFFECTIVE DATE. (As of July 1, 1996, there are no PATENT RIGHTS unique
to the FIELD OF USE ONE). LICENSEE shall pay such fees and costs to M.I.T.
within thirty (30) days of invoicing; late payments shall accrue interest and
shall be subject to Paragraph 5.5.
In addition, LICENSEE shall be responsible for payment of LICENSEE's
appropriate share of fees and costs relating to the filing, prosecution and
maintenance of those PATENT RIGHTS required to practice in the FIELD OF USE ONE
or FIELD OF USE TWO but which rights are shared with other licensees, whether
such fees and costs were incurred before or after the EFFECTIVE DATE; except
that for M.I.T. Case Nos. 4972 and 5567, LICENSEE shall not be responsible for
payment of any costs incurred prior to October 17, 1991. LICENSEE's share of
future fees and costs relating to the filing, prosecution and maintenance of
shared PATENT RIGHTS shall be due and payable to M.I.T. within thirty (30) days
of invoicing; late payments shall accrue interest and shall be subject to
Paragraph 5.5.
In the event future licensees under the PATENT RIGHTS contribute to
past patent costs and fees, LICENSEE shall receive a pro rata credit against its
share of future patent costs and fees.
7 - INFRINGEMENT
7.1 LICENSEE shall inform M.I.T. promptly in writing of any alleged
infringement of the PATENT RIGHTS by a third party and of any available evidence
thereof.
7.2 M.I.T. shall have the right, but shall not be obligated, to
prosecute at its own expense all infringements of the PATENT RIGHTS and, in
furtherance of such right, LICENSEE hereby agrees that M.I.T. may include
LICENSEE as a party plaintiff in any such suit, without expense to LICENSEE. The
total cost of any such infringement action commenced or defended solely by
M.I.T. shall be borne by M.I.T., and M.I.T. shall keep any recovery or damages
for past infringement derived therefrom.
7.3 If within six (6) months after having been notified of an alleged
infringement, M.I.T. shall have been unsuccessful in persuading the alleged
infringer to desist and shall not have brought and shall not be diligently
prosecuting an infringement action, or if M.I.T. shall notify LICENSEE at any
time prior thereto of its intention not to bring suit against any alleged
infringer in the TERRITORY for the FIELD OF USE ONE, then, and in those events
only, LICENSEE shall have the right, but shall not be obligated, to prosecute at
its own expense any infringement
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of the PATENT RIGHTS in the TERRITORY for the FIELD OF USE ONE, and LICENSEE
may, for such purposes, use the name of M.I.T. as party plaintiff; provided,
however, that such right to bring such an infringement action shall remain in
effect only during the EXCLUSIVE PERIOD. No settlement, consent judgment or
other voluntary final disposition of the suit may be entered into without the
consent of M.I.T., which consent shall not unreasonably be withheld. LICENSEE
shall indemnify M.I.T. against any order for costs that may be made against
M.I.T. in such proceedings.
7.4 In the event that LICENSEE shall undertake litigation for the
enforcement of the PATENT RIGHTS, or the defense of the PATENT RIGHTS under
Paragraph 7.5, LICENSEE may withhold up to One Hundred Percent (100%) of the
payments otherwise thereafter due M.I.T. under Article 4 hereunder and apply the
same toward reimbursement of up to half of LICENSEE's expenses, including
reasonable attorneys' fees, in connection therewith. Any recovery of damages by
LICENSEE for each such suit shall be applied first in satisfaction of any
unreimbursed expenses and legal fees of LICENSEE relating to such suit, and next
toward reimbursement of M.I.T. for any payments under Article 4 past due or
withheld and applied pursuant to this Article 7. The balance remaining from any
such recovery shall be divided equally between LICENSEE and M.I.T.
7.5 In the event that a declaratory judgment action alleging invalidity
or noninfringement of any of the PATENT RIGHTS in the FIELD OF USE ONE shall be
brought against M.I.T. or LICENSEE, M.I.T., at its option, shall have the right,
within thirty (30) days after commencement of such action, to take over the sole
defense of the action at its own expense. If M.I.T. shall not exercise this
right, LICENSEE may take over the sole defense at LICENSEE's sole expense,
subject to Paragraph 7.4.
7.6 In any infringement suit as either party may institute to enforce
the PATENT RIGHTS pursuant to this Agreement, the other party hereto shall, at
the request and expense of the party initiating such suit, cooperate in all
respects and, to the extent possible, have its employees testify when requested
and make available relevant records, papers, information, samples, specimens,
and the like.
8 - PRODUCT LIABILITY
8.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend and hold M.I.T., its trustees, directors,
officers, employees and affiliates, harmless against all claims, proceedings,
demands and liabilities of any kind whatsoever, including legal expenses and
reasonable attorneys' fees, arising out of the death of or injury to any person
or persons or out of any damage to property, resulting from the production,
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manufacture, sale, use, lease, consumption or advertisement of the LICENSED
PRODUCT(s) and/or LICENSED PROCESS(es) or arising from any obligation of
LICENSEE hereunder.
8.2 LICENSEE shall obtain and carry in full force and effect
commercial, general liability insurance, including product liability and errors
and omissions insurance, which shall protect LICENSEE and M.I.T. with respect to
events covered by Paragraph 8.1 above.
8.3 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, M.I.T.,
ITS TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES, AND AFFILIATES MAKE NO
REPRESENTATIONS AND EXTEND NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING BUT NOT LIMITED TO WARRANTIES OF MERCHANTABILITY, FITNESS FOR A
PARTICULAR PURPOSE, VALIDITY OF PATENT RIGHTS CLAIMS, ISSUED OR PENDING, AND THE
ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. NOTHING IN THIS
AGREEMENT SHALL BE CONSTRUED AS A REPRESENTATION MADE OR WARRANTY GIVEN BY
M.I.T. THAT THE PRACTICE BY LICENSEE OF THE LICENSE GRANTED HEREUNDER SHALL NOT
INFRINGE THE PATENT RIGHTS OF ANY THIRD PARTY. IN NO EVENT SHALL M.I.T., ITS
TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND AFFILIATES BE LIABLE FOR INCIDENTAL
OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGE OR INJURY TO
PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER M.I.T. SHALL BE ADVISED, SHALL
HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY OF THE
FOREGOING.
9 - EXPORT CONTROLS
LICENSEE acknowledges that it is subject to United States laws and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
Act, as amended and the United States Department of Commerce Export
Administration Regulations). The transfer of such items may require a license
from the cognizant agency of the United States Government and/or written
assurances by LICENSEE that LICENSEE shall not export data or commodities to
certain foreign countries without prior approval of such agency. M.I.T. neither
represents that a license shall not be required nor that, if required, it shall
be issued.
10 - NON-USE OF NAMES
LICENSEE shall not use the names or trademarks of the Massachusetts
Institute of Technology or Lincoln Laboratory, nor any adaptation thereof, nor
the names of any of their employees, in any advertising, promotional or sales
literature without prior written consent
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obtained from M.I.T., or said employee, in each case, except that LICENSEE may
state that it is licensed by M.I.T. under one or more of the patents and/or
applications comprising the PATENT RIGHTS.
11 - ASSIGNMENT
This Agreement is not assignable and any attempt to do so shall be
void.
12 - DISPUTE RESOLUTION
12.1 Except for the right of either party to apply to a court of
competent jurisdiction for a temporary restraining order, a preliminary
injunction, or other equitable relief to preserve the status quo or prevent
irreparable harm, any and all claims, disputes or controversies arising under,
out of, or in connection with the Agreement, including any dispute relating to
patent validity or infringement, which the parties shall be unable to resolve
within sixty (60) days shall be mediated in good faith. The party raising such
dispute shall promptly advise the other party of such claim, dispute or
controversy in a writing which describes in reasonable detail the nature of such
dispute. By not later than five (5) business days after the recipient has
received such notice of dispute, each party shall have selected for itself a
representative who shall have the authority to bind such party, and shall
additionally have advised the other party in writing of the name and title of
such representative. By not later than ten (10) business days after the date of
such notice of dispute, the party against whom the dispute shall be raised shall
select a mediation firm in the Boston area and such representatives shall
schedule a date with such firm for a mediation hearing. The parties shall enter
into good faith mediation and shall share the costs equally. If the
representatives of the parties have not been able to resolve the dispute within
fifteen (15) business days after such mediation hearing, then any and all
claims, disputes or controversies arising under, out of, or in connection with
this Agreement, including any dispute relating to patent validity or
infringement, shall be resolved by final and binding arbitration in Boston,
Massachusetts under the rules of the American Arbitration Association, or the
Patent Arbitration Rules if applicable, then obtaining. The arbitrators shall
have no power to add to, subtract from or modify any of the terms or conditions
of this Agreement, nor to award punitive damages. Any award rendered in such
arbitration may be enforced by either party in either the courts of the
Commonwealth of Massachusetts or in the United States District Court for the
District of Massachusetts, to whose jurisdiction for such purposes M.I.T. and
LICENSEE each hereby irrevocably consents and submits.
12.2 Notwithstanding the foregoing, nothing in this Article shall be
construed to waive any rights or timely performance of any obligations existing
under this Agreement.
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13 - TERMINATION 13.1 If LICENSEE shall cease to carry on its business,
this Agreement shall terminate upon notice by M.I.T.
13.2 Should LICENSEE fail to make any payment whatsoever due and
payable to M.I.T. hereunder, M.I.T. shall have the right to terminate this
Agreement effective on thirty (30) days' notice, unless LICENSEE shall make all
such payments to M.I.T. within said thirty (30) day period. Upon the expiration
of the thirty (30) day period, if LICENSEE shall not have made all such payments
to M.I.T., the rights, privileges and license granted hereunder shall
automatically terminate.
13.3 Upon any material breach or default of this Agreement by LICENSEE
(including, but not limited to, breach or default under Paragraph 3.3), other
than those occurrences set out in Paragraphs 13.1 and 13.2 hereinabove, which
shall always take precedence in that order over any material breach or default
referred to in this Paragraph 13.3, M.I.T. shall have the right to terminate
this Agreement and the rights, privileges and license granted hereunder
effective on ninety (90) days' notice to LICENSEE. Such termination shall become
automatically effective unless LICENSEE shall have cured any such material
breach or default prior to the expiration of the ninety (90) day period.
13.4 LICENSEE shall have the right to terminate this Agreement at any
time on six (6) months' notice to M.I.T., and upon payment of all amounts due
M.I.T. through the effective date of the termination.
13.5 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination; and Articles 1, 8, 9, 10, 12,
13.5, and 15 shall survive any such termination. LICENSEE may, however, after
the effective date of such termination, sell all LICENSED PRODUCTS, and complete
LICENSED PRODUCTS in the process of manufacture at the time of such termination
and sell the same, provided that LICENSEE shall make the payments to M.I.T. as
required by Article 4 of this Agreement and shall submit the reports required by
Article 5 hereof.
14 - PAYMENTS, NOTICES AND OTHER COMMUNICATIONS
Any payments, notice or other communication pursuant to this Agreement
shall be sufficiently made or given on the date of mailing if sent to such party
by certified first class mail, return receipt requested, postage prepaid,
addressed to it at its address below or as it shall designate by written notice
given to the other party:
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In the case of M.I.T.:
Director
Technology Licensing Office
Massachusetts Institute of Technology
00 Xxxxxxxxxxxxx Xxxxxx, Xxxx X00-000
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
In the case of LICENSEE:
President
Soligen Technologies, Inc.
00000 Xxxxxxxxx Xxxxxx
Xxxxxxxxxx, Xxxxxxxxxx 00000
15 - MISCELLANEOUS PROVISIONS
15.1 All disputes arising out of or related to this Agreement, or the
performance, enforcement, breach or termination hereof, and any remedies
relating thereto, shall be construed, governed, interpreted and applied in
accordance with the laws of the Commonwealth of Massachusetts, U.S.A., except
that questions affecting the construction and effect of any patent shall be
determined by the law of the country in which the patent shall have been
granted.
15.2 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument signed by the parties.
15.3 The provisions of this Agreement are severable, and in the event
that any provisions of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of the law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
the remaining provisions hereof.
15.4 LICENSEE agrees to xxxx the LICENSED PRODUCTS sold in the United
States with all applicable United States patent numbers. All LICENSED PRODUCTS
shipped to or sold in other countries shall be marked in such a manner as to
conform with the patent laws and practice of the country of manufacture or sale.
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15.5 The failure of either party to assert a right hereunder or to
insist upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
IN WITNESS WHEREOF, the parties have duly executed this Agreement the
day and year set forth below.
MASSACHUSETTS INSTITUTE OF TECHNOLOGY SOLIGEN TECHNOLOGIES, INC.
By __________________________________ By_______________________________
Name_________________________________ Name_____________________________
Title________________________________ Title____________________________
Date_________________________________ Date_____________________________
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APPENDIX A
PATENT RIGHTS on the EFFECTIVE DATE
UNITED STATES PATENT RIGHTS
M.I.T. Case No. 4972
U.S. Patent No. 5,204,055, Issued on April 20, 1993
U.S. Patent No. 5,340,656, Issued on August 23, 1994
"Three Dimensional Printing Techniques (3DP)"
By Xxxxxxx Xxxx, Xxxx Xxxxxxxx, Xxxxxxx Xxxxx and Xxxx Xxxxxxxx
M.I.T. Case No. 5567
U.S. Patent No. 5,387,380, Issued on February 7, 1995
"Three-Dimensional Printing Techniques"
By Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx Xxxx, Xxxxx Xxxxxxxx, Xxxxx
Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx Xxxx, Xxxxx Xxxxxxxx, Tailin Fan, Xxxxxx
Xxxxxxx, Xxxx Xxxxxx, Sang-Xxxx Xxx, Xxxxxx Xxxxxxxx, Xxxxxxx Xxxxx and Xxxxxx
Xxxxxx
M.I.T. Case No. 5997
U.S. Patent No. 5,490,882, Issued on February 13, 1996
U.S. Serial No. 600,215, Filed February 12, 1996
"Ceramic Mold Finishing"
By Xxxxx Xxxxx, Xxxxxxx Xxxx, Xxxxxx Xxxxxxx and Xxxxxxx Xxxxx
X.X.X. Xxxx Xx. 0000
X.X. Xxxxxx Xx. 000,000, Filed February 5, 1996 (FWC of U.S. Serial No. 619,470,
Filed February 18, 1993)
"High Speed, High Quality Three Dimensional Printing"
By Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx Xxxx, Xxxxx Xxxxxxxx, Tailin Fan and
Xxxxxxx Xxxxx
X.X.X. Xxxx Xx. 0000
X.X. Xxxxxx Xx. 000,000, Filed April 14, 1995
"Powder Dispensing Techniques for Successive Layered Fabrication of an Object"
By Xxxxxxx Xxxxx
X.X.X. Xxxx Xx. 0000
X.X. Xxxxxx Xx. 000,000, Filed December 29, 1995
"Binder Composition for Use in Three-Dimensional Printing"
By Xxxxx X. Xxxxx
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FOREIGN PATENT RIGHTS
M.I.T. Case No. 4972
Canada Xxx No. 2,031,562, Issued November 22, 0000
Xxxxx Serial No. 415702/90, Filed December 10, 1990
Great Britain Xxx No. 041924, Issued January 31, 0000
Xxxxxxx Xxx No. 041924, Issued January 31, 0000
Xxxxx Xxx No. 041924, Issued January 31, 0000
Xxxxxx Xxx No. 041924, Issued January 31, 0000
Xxxxxx Xxx No. 041924, Issued January 31, 1996
"Three Dimensional Printing Techniques (3DP)"
By Xxxxxxx Xxxx, Xxxx Xxxxxxxx, Xxxxxxx Xxxxx and Xxxx Xxxxxxxx
X.X.X. Xxxx Xx. 0000
Xxxxx Serial No. 501598/94, Filed June 4, 0000
Xxxxxx Serial No. 2136748, Filed June 4, 1993
Europe Serial No. 93914384.8, Filed June 4, 1993
"Three-Dimensional Printing Techniques"
By Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx Xxxx, Xxxxx Xxxxxxxx, Xxxxx
Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx Xxxx, Xxxxx Xxxxxxxx, Tailin Fan, Xxxxxx
Xxxxxxx, Xxxx Xxxxxx, Sang-Xxxx Xxx, Xxxxxx Xxxxxxxx, Xxxxxxx Xxxxx and Xxxxxx
Xxxxxx
X.X.X. Xxxx Xx. 0000
Xxxxxx Xxxxxx Xx. 0000000, Filed November 22, 0000
Xxxxx Serial No. 513304/94, Filed November 22, 1993
Europe Serial No. 94902341.0, Filed November 22, 1993
"Ceramic Mold Finishing"
By Xxxxx Xxxxx, Xxxxxxx Xxxx, Xxxxxx Xxxxxxx and Xxxxxxx Xxxxx
X.X.X. Xxxx Xx. 0000
Xxxxxxx Xxx No. 0686067, Issued _________
"High Speed, High Quality Three Dimensional Printing"
By Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx Xxxx, Xxxxx Xxxxxxxx, Tailin Fan and
Xxxxxxx Xxxxx
M.I.T. Case No. 6998
"Binder Composition for Use in Three-Dimensional Printing"
By Xxxxx X. Xxxxx
As of July 1, 1996, no foreign protection exists. A decision must be made PRIOR
TO DECEMBER 29, 1996 whether to seek foreign protection.
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APPENDIX B
DESIGNATED FOREIGN COUNTRIES
Foreign countries in which PATENT RIGHTS shall be filed, prosecuted and
maintained in accordance with Article 6:
For M.I.T. Case No. 4972:
Canada
Japan
Italy
Great Britain
Germany
France
Sweden
For M.I.T. Case No. 5567:
Europe, designating:
Great Britain Luxembourg Greece
France Netherlands Ireland
Germany Spain Monaco
Austria Sweden Portugal
Belgium Switzerland
Italy Denmark
Canada
Japan
For M.I.T. Case No. 5997:
Europe, designating:
Great Britain Luxembourg Greece
France Netherlands Ireland
Germany Spain Monaco
Austria Sweden Portugal
Belgium Switzerland
Italy Denmark
Canada
Japan
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For M.I.T. Case No. 6138:
Germany
For M.I.T. Case No. 6998:
As of July 1, 1996, no countries have been designated. A decision must
be made PRIOR TO DECEMBER 29, 1996 whether to seek foreign protection.
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APPENDIX C
Third Party Rights
Third party rights in the FIELD OF USE ONE existing as of July 1, 1996.
1. Royalty-free, non-exclusive license rights of the United States Government
per FAR 52.227-11.
2. Alcoa has waived its rights in the original Field of Use, as set forth in
Paragraphs 1.9 (a) and (b) herein, pursuant to their sponsorship of the LFM
Program; provided however, that if Alcoa should desire to acquire a machine or
device covered by M.I.T. Case No. 4972 and if:
(a) after six months of good faith negotiations with LICENSEE,
Alcoa and LICENSEE do not reach agreement on commercially
reasonable terms for the specifications, price, delivery
of said machine(s) manufactured under M.I.T. Case No.
4972; or
(b) if Alcoa should indicate to LICENSEE a desire to discuss
such negotiations and such does not conclude in an
agreement as just described; or
(c) if LICENSEE is unwilling or unable to enter into good
faith negotiations with Alcoa; or
(d) if LICENSEE is unable or unwilling to produce a machine
according to Alcoa's specifications;
then Alcoa shall have the right to build or have built such a machine, or
otherwise satisfy Alcoa's need or desire therfor as Alcoa sees fit, for Alcoa's
internal use.
3. Within six months of their notification of the filing of a patent
application, members of the Three Dimensional Printing Consortium have the right
to elect one of the following:
A. a non-exclusive, non-transferable, royalty-free license for internal
non-commercial purposes.
B. a non-exclusive, non-transferable (without the right to sublicense)
royalty-bearing commercial license.
If the member fails to notify M.I.T. of an intent to negotiate a license
within six months of notification that an application has been filed, the
member is deemed to have waived its rights to negotiate a license to the
invention. With the exception of the patent application filed for M.I.T.
Case No. 6998, all of the PATENT RIGHTS set forth in Appendix A of this
Agreement were filed, and notification was sent, more than six months ago
and, therefore, none of the members of the Three Dimensional Printing
Consortium are entitled to elect
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licenses pursuant to the Consortium Agreement. The Three Dimensional
Printing Consortium Members were notified of the patent filing for Case
No. 6998 on July ___, 1996. To date, no member has indicated a desire
to negotiate for a license under these patent rights.
