Exhibit 10.14
INTELLECTUAL PROPERTY LICENSE AGREEMENT
This AGREEMENT ("IP AGREEMENT") dated as of October 1, 2005 is between
Visteon Corporation, a Delaware corporation ("VISTEON"), Visteon Global
Technologies, Inc., a Michigan Corporation ("VGTI"), and Ford Motor Company, a
Delaware corporation ("FORD").
WITNESSETH:
WHEREAS, Ford and Visteon have agreed to enter into: (i) a Visteon "B"
Purchase Agreement dated as of September 12, 2005, pursuant to which Ford has
agreed to consummate the transactions contemplated thereby, including the
purchase and sale of the Shares, on the terms and conditions set forth therein;
(ii) a Visteon "A" Transaction Agreement dated as of September 12, 2005 (the
"VISTEON "A" TRANSACTION AGREEMENT") whereby, among other things, and subject to
the terms and conditions set forth therein, Ford has agreed to provide financial
assistance to Visteon in connection with the restructuring of the businesses of
Visteon; and (iii) certain commercial arrangements or certain modifications to
existing commercial arrangements with respect to the businesses of Visteon;
WHEREAS, Visteon and Automotive Components Holdings, Inc. (f/k/a VFH
Holdings, Inc.) ("ACH"), a Delaware corporation, have entered into a
Contribution Agreement dated as of September 12, 2005 (the "Contribution
Agreement") pursuant to which, among other things, Visteon has contributed (or
cause to be contributed) to ACH certain intellectual property and software
assets related to the Business, as defined in the Contribution Agreement;
WHEREAS, in furtherance of the restructuring of the Visteon businesses,
Ford desires to receive and Visteon and VGTI desire to grant to Ford licenses
under certain intellectual property.
NOW THEREFORE, in consideration of the above premises and the mutual
covenants herein contained, and for other good and valuable consideration given
by each party hereto to the other, the sufficiency and receipt of which are
hereby acknowledged, the parties hereto, for themselves, their successors and
permitted assigns, intending to be legally bound, agree as follows:
ARTICLE 1:
DEFINITIONS
Section 1.01. Definitions. (a) Capitalized terms used but otherwise not
defined herein shall have the meanings as assigned to them in the Visteon "A"
Transaction Agreement and the Contribution Agreement. In the event of any
discrepancy between the definitions used in those Agreements and definitions
used in this Agreement, the definitions herein shall apply.
(b) The following terms, as used herein, have the following meanings:
"Company Only Products and Technologies" means the following products and
technologies manufactured only by the Company as of the Closing Date, for
manufacture and sale to any customer, including any improvements or developments
for currently
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produced products or those in the current cycle plan for Plants which have
passed the Visteon CDP Gate 2 (or equivalent) approval, except that any such
improvements or developments 1) that are subject to pre-existing contractual
obligations that prevent transfer to Company are not to be included or 2) that
are subject to a joint development agreement with non-Ford OEM's, or other
suppliers, subject to mutual agreement of inclusion, or exclusion, between the
parties: Driveshafts, Catalytic Converters, Body Stampings, Stabilizer Bars,
Steering Columns, RV Steering Gears, Steering Pumps, Seat Foam, Wiper Motors,
Glass.
"Copyrights" mean (i) any copyright in any original works of authorship in
technology fixed in any tangible medium of expression as set forth in 17 U.S.C.
Section 101 et. seq., whether registered or unregistered, including any
applications for registration thereof, (ii) any corresponding foreign copyrights
under the laws of any jurisdiction, in each case, whether registered or
unregistered, and any applications for registration thereof, and (iii) Common
Law or moral rights under the laws of any jurisdiction.
"Core Shared Products and Technologies" means Shared Products and
Technologies for any of the following products or technologies: HVAC Air
Handling Systems, HVAC Manual Controls, Heater Cores, Radiators, Cooling Modules
(FEM), Headlamps, Rear Lamps, Cockpit Modules, Instrument Panels, Consoles, Door
Panels/Trim, Glove Box, Sys/Finish Panel/Defroster Grilles, Air Induction
Systems.
"Derivative Work" means a work of authorship based on one or more
preexisting works, including, without limitation, a translation, condensation,
transformation, expansion or adaptation, which, if prepared without
authorization of the owner of the copyright of such preexisting work, would
constitute a copyright infringement. The term "Derivative Work" does not include
the preexisting work upon which the Derivative Work is based.
"Engineering Design Tools" means product specific tools or data (software
or hardcopy) specifically designed or utilized to design, model, simulate, or
visualize the product or process used to make the product including all
supporting documentation for such tools. Examples may include: CAD, CAE, CAM,
Knowledge Based Engineering applications and Engineering Design Manuals or Check
Lists. Specifically excluded from this definition are standard computer design
tools and software which are covered under the IT agreement. All of the
Engineering Design Tools listed in any Attachment to an Appendix are subject to
the terms of any preexisting contracts. Such Engineering Design Tools are
provided on an "as-is" basis, without any commitments by either party that
maintenance or any other support will be provided in the future.
"Ford" means Ford Motor Company and its Subsidiaries and Affiliates,
including Mazda Motor Corporation and its Subsidiaries and Affiliates, except
where specifically noted.
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"Invention Disclosure" means a disclosure of an invention which (i) is
written for the purpose of recording the conception or reduction to practice of
an invention, and (ii) is maintained with a control number in the owning party's
records.
"Joint Venture Company" means a company in which Visteon or one or more of
its Subsidiaries or Affiliates owns or controls, directly or indirectly, more
than 33% of the voting shares or other equity interest.
"Mask Work Rights" means (i) any rights in mask works as defined in 17
U.S.C. Section 901, whether registered or unregistered, including applications
for registration thereof, and (ii) any foreign rights in semiconductor
topologies under the laws of any jurisdiction, whether registered or
unregistered, including applications for registration thereof.
"Non-Core Shared Products and Technologies" means Shared Products and
Technologies for any of the following products or technologies: Axles, Power
Take-off Unit (PTU), Manual Steering Gears, HPAS Steering Gears, Ignition
Systems, Air Charging Assemblies, Throttle Bodies, Fuel Charge Assemblies, Fuel
Injectors, Air/Fuel Charging Assemblies, Integrated Air/Fuel Modules, Fuel
Pumps.
"Non-Patented Product Design IP and Manufacturing IP " means all (1)
research, product designs, technological models, algorithms, manufacturing
processes, design processes, behavioral models, logic diagrams, schematics, test
vectors, know-how, computer and electronic data processing and other apparatus
programs and software (object code and source code), optical, hydraulic and
fluidic apparatus and processes, chemical processing, databases and
documentation thereof, technical information, data, specifications, drawings,
records, documentation, mask works, Invention Disclosures, works of authorship
or other creative works, or websites, all of which exist at the Closing Date,
and (2) Trade Secrets, Mask Work Rights, and Copyrights, related to those items
described in (1) above and which exist at the Closing Date, for which Visteon
has the right to assign or to grant licenses, including those stated in the
Appendices hereof. Such Non-Patented Intellectual Property is provided on an
"as-is" basis, without any commitments by either party that maintenance or any
other support will be provided in the future.
"Patents" means those worldwide patents (including patents of importation,
patents of confirmation, patents of improvement, patents and certificates of
addition and utility model patents, as well as divisions, reissues,
continuations, continuations-in-part, reexamination certificates, renewals and
extensions of any of the foregoing), pending patent applications, Invention
Disclosures submitted prior to the Closing Date and patent applications based
thereon and patents which may issue from such applications after the Closing
Date for which Visteon has the right to assign or to grant licenses and which
are identified in the Appendices hereof.
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"Region" means any one country of a group in North America, South America,
Europe, Africa and Asia Pacific (including but not limited to China, Korea,
Japan, Viet Nam, Australia and India).
"Shared Products and Technologies" means products made at both Visteon and
Plants as of the Closing Date, for manufacture and sale to any customer,
including any improvements or developments for currently produced products or
those in the current cycle plan for Plants which have passed the Visteon CDP
Gate 2 (or equivalent) approval, except that any such improvements or
developments 1) that are subject to pre-existing contractual obligations that
prevent transfer to Ford are not to be included or 2) that are subject to a
joint development agreement with non-Ford OEM's, or other suppliers, subject to
mutual agreement of inclusion, or exclusion, between the parties.
"Trade Secrets" means business and technical methods, processes,
compilations, information and know-how that are not publicly known and which
give the owner a competitive advantage in its business. Such Trade Secrets are
provided on an "as-is" basis, without any commitments by either party that
maintenance or any other support will be provided in the future.
ARTICLE 2
LICENSE GRANT
Section 2.01. Grant. Visteon and VGTI hereby grant, or to cause to be
granted, to Ford licenses under certain Licensed Intellectual Property Rights
and Owned Intellectual Property Rights as set forth in the Appendices attached
hereto (the "LICENSED INTELLECTUAL PROPERTY"), subject to the rights and
limitations set forth therein.
Section 2.02. The licenses granted in this Article 2 are subject to
existing and contingent obligations Visteon and Visteon's Affiliates may have
under contracts with third parties. As soon as practicable after execution of
this Intellectual Property License Agreement, Visteon, VGTI and Ford will review
and take action using commercially reasonable efforts consistent with Section
2.05 of the Contribution Agreement to modify those contracts which are affected
by the transfers provided in this Article 2, and take such actions as are
necessary to reflect rights now accruing to Ford.
Section 2.03. Upon request by Ford, all documents and papers shall be
executed, and all reasonable assistance shall be furnished by Visteon and
Visteon Affiliates to enable Ford to obtain and perfect any and all rights
licensed to Ford in this Article 2. Such assistance shall include, but not be
limited to, commercially reasonable assistance needed to enable Ford to grant
appropriate warranties, where applicable, to third parties.
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Section 2.04. Notwithstanding the definitions used in Article 1 herein,
each party and its Affiliates have the right to retain and use documents and
things that describe or contain any Licensed Intellectual Property that it
rightfully has in its possession as of the Closing Date, provided that such
copies and things shall be subject to the rights and limitations as specified in
the Appendices attached hereto and the confidentiality obligations of Article 5
herein.
Section 2.05. Implied Licenses for Purchased Parts. Visteon and VGTI agree
to not assert against Ford or any customer of Ford any intellectual property
right owned by Visteon or VGTI for the manufacture, use or sale of products
covered by such intellectual property right, provided that such products are
used in systems or assemblies manufactured by or for Ford for use in its
vehicles (pursuant to the rights and limitations of this IP Agreement) and are
purchased from the then current Visteon suppliers used by Visteon to supply such
products for such assemblies. Visteon shall provide reasonable notice to Ford of
any change in supplier of such products. Ford shall have a commercially
reasonable period in which to change to the newly selected Visteon supplier.
ARTICLE 3
CONSIDERATION
Section 3.01. Consideration. The licenses granted to Ford are made by
Visteon and VGTI pursuant to the obligations under the Master Agreement, the
Visteon B Purchase Agreement and the Visteon A Transaction Agreement and in
consideration set forth therein.
ARTICLE 4
REPRESENTATION AND WARRANTIES
Section 4.01. Representations and Warranties. To the knowledge of Visteon,
neither Visteon nor any Affiliate of Visteon has infringed, misappropriated or
otherwise violated any Intellectual Property Right of any third party, and no
person has infringed, misappropriated or otherwise violated any Licensed
Intellectual Property.
Section 4.02. To the knowledge of Visteon, none of the Licensed
Intellectual Property has been adjudged by a court of competent jurisdiction
invalid or unenforceable in whole or part, and, to the knowledge of Visteon, all
such Licensed Intellectual Property are valid and enforceable. Visteon or an
Affiliate of Visteon holds all right, title and interest in and to all the
Licensed Intellectual Property, free and clear of any Lien.
Section 4.03. With respect to pending applications and applications for
registration of the Licensed Intellectual Property, Visteon is not aware of any
reason that would reasonably be expected to prevent any such application or
application for
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registration from being granted with coverage substantially equivalent to the
latest amended version of the pending application or application for
registration. To the knowledge of Visteon, none of the patents and patent
applications included in the Licensed Intellectual Property is currently the
subject of an interference, protest, opposition, public use proceeding or third
party reexamination request.
ARTICLE 5
CONFIDENTIALITY
Section 5.01. Confidentiality. Visteon, VGTI and Ford each agree to hold in
confidence, and to use only as permitted by the licenses granted by this
Agreement, all Non-Patented Intellectual Property, Engineering Design Tools or
other information designated by the disclosing party in writing or by
appropriate stamp or legend as "CONFIDENTIAL" or some similar marking of like
importance, or where the nature of the information is such that a reasonable
person who deals with such information would believe that a party intends or is
obligated to maintain it as confidential (hereinafter "Confidential
Information"). The receiving party agrees to use the same degree of care, but no
less than a reasonable degree of care, to prevent the unauthorized use and
disclosure of the Confidential Information to third parties as it uses to
protect its own confidential information of like importance. Except as specified
below, the obligations of this Section 5.01 shall terminate on December 31,
2009, after which the party having received the Confidential Information shall
limit further disclosure in the same manner as that party protects its own
confidential information of like importance.
Section 5.02. Notwithstanding any other provision of this Agreement, the
obligations of restricted disclosure and use specified herein will not apply to
Confidential Information which:
(a) is available as of the Closing Date or later becomes available to the
public without breach of this Agreement; or
(b) is authorized for release in writing by the disclosing party prior to the
applicable disclosure; or
(c) is lawfully obtained from a third party or parties without a duty of
confidentiality; or
(d) is disclosed to a third party by the disclosing party without a similar
duty of confidentiality; or
(e) is at any time developed by the receiving party independently of any
related disclosure(s) from the disclosing party.
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Section 5.03. With regard to any Confidential Information disclosed
pursuant to this Agreement, the receiving party shall not be liable for
unauthorized disclosure of such Confidential Information pursuant to judicial
action or governmental regulations or requirements, provided that the receiving
party notifies the disclosing party of the need for such disclosure within a
reasonable period of time before such disclosure is required.
Section 5.04. Notwithstanding any other provisions of this Article 5, and
provided it is not otherwise restricted under this Agreement, disclosure of
Confidential Information by a licensed party under this Agreement to a third
party will be permitted only to the extent necessary to carry out the license
grants herein, and only after such third party agrees to adhere to
confidentiality provisions at least as restrictive as those adhered to by the
receiving party under this Agreement and to use such Confidential Information
only to provide products to, or purchase products from, the receiving party
herein.
Section 5.05. With respect to Confidential Information that includes
software of the type embedded in a product or associated tools, disclosure by a
receiving party under this Agreement to a third party will be permitted only to
the extent necessary to carry out the license grants herein, and further
provided that such third party agrees to: protect such software for a period of
at least five (5) years from date of disclosure; use such software only to
provide products to, or design, test and manufacture products for, or purchase
products from, the licensed party herein; and limit access to its employees
having a need to use such software to provide products to, or design, test and
manufacture products for, or purchase products from, the licensed party herein.
ARTICLE 6
NOTICE
Section 6.01. Notice. All notices and other communications hereunder shall
be in writing and shall be deemed to have been duly given when delivered in
person, by telecopy with answer back, by express or overnight mail delivered by
a nationally recognized air courier (delivery charges prepaid), by registered or
certified mail (postage prepaid, return receipt requested) or by e-mail with
receipt confirmed by return e-mail to the respective parties as follows:
if to Ford:
FORD Global Technologies, Inc.
Xxx Xxxxxxxx Xxxx. Xxxxx 000 Xxxx
Xxxxxxxx, Xxxxxxxx 00000
Attention: President and CEO
Telecopy: (000) 000 0000
E-mail: xxxxxxxx@xxxx.xxx
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if to Visteon or VGTI:
VISTEON Global Technologies, Inc.
Xxx Xxxxxxx Xxxxxx Xxxxx
Xxx Xxxxx Xxxxxxxx, Xxxxxxxx 00000
Attention: Chief Intellectual Property Counsel
Telecopy: (000) 000-0000
E-mail: xxxxxxx@xxxxxxx.xxx
or to such other address as the Party to whom notice is given may have
previously furnished to the other in writing in the manner set forth above. Any
notice or communication delivered in person shall be deemed effective on
delivery. Any notice or communication sent by e-mail, telecopy or by air courier
shall be deemed effective on the first Business Day following the day on which
such notice or communication was sent (provided that a confirming copy is
dispatched by regular mail on the same date as such e-mail or telecopy
communication is sent). Any notice or communication sent by registered or
certified mail shall be deemed effective on the fifth Business Day following the
day on which such notice or communication was mailed. As used in this Section
6.01, "Business Day" means any day other than a Saturday, a Sunday or a jointly
observed Ford/Visteon holiday.
ARTICLE 7
MISCELLANEOUS
Section 7.01. Obligation to Disclose Technology. Visteon and VGTI each
agree to put forth a good faith effort to deliver copies of documents and
information requested by Ford as part of this Agreement and to give full
enabling effect to the licenses granted hereunder, provided that Ford agrees to
pay for the reasonable administrative costs for copying and delivering the
requested copies of documents and information. The foregoing obligation to copy
and deliver the requested documents and information shall terminate for any
requests communicated after April 1, 2006.
Section 7.02. Inadvertent Omissions: Visteon and VGTI have used good faith
efforts to identify all Licensed Intellectual Property Rights and Owned
Intellectual Property Rights to be transferred to Ford as required by this
Agreement. To the extent any Licensed Intellectual Property Rights and Owned
Intellectual Property Rights are discovered or identified at any time before or
after the Closing Date which had they been discovered or identified prior to the
date hereof would have been transferred to Ford pursuant to this Agreement but
are still in Visteon's or any of Visteon's Affiliates' possession, Visteon shall
immediately transfer and promptly deliver them (or cause them to be delivered)
to Ford according to the appropriate grant in the Appendices attached hereto.
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To Visteon's knowledge, the appendices and attachments hereto include all
Licensed Intellectual Property Rights and Owned Intellectual Property Rights
existing as of June 15, 2005 to be licensed to Ford. The parties agree that
within 30 days after Closing, they will cooperate and identify all other
Licensed Intellectual Property Rights and Owned Intellectual Property Rights to
be licensed to Ford pursuant to this Agreement that are conceived, created,
developed, or identified for contribution between June 15, 2005 and Closing. The
parties agree that such Licensed Intellectual Property Rights and Owned
Intellectual Property Rights will be added to the appropriate appendix herein.
In the event that new circumstances exist at Closing that affect the original
disposition of an asset pursuant to this Agreement, the parties will meet and
mutually agree to the correct disposition of such asset.
Section 7.03. Defensive Protection Measures. For a period of five (5) years
from the Closing Date, the parties shall cooperate reasonably and in good faith,
to the extent consistent with each party's own business objectives and
agreements with third parties, in the event that either party is involved in
technology litigation or other controversies in which it would be helped in some
way by the other party's relevant knowledge. Such cooperation may include, by
way of example, cooperation with respect to knowledge of prior art.
Section 7.04. Transferability. To the extent permitted in the Appendices
attached hereto, Ford's obligations and limitations set forth therein may be
transferred to third parties, provided however, that such third parties must
agree to assume, in writing, all of Ford's obligations as stated therein.
Section 7.05. Assignability. Except to the extent expressly prohibited by
this IP Agreement, either party may, directly or indirectly, in whole or in
part, whether by operation of law or otherwise, assign or transfer this
Agreement, without the other party's prior written consent. Without limiting the
foregoing, this IP Agreement will be binding upon and inure to the benefit of
the parties and their permitted successors and assigns.
Section 7.06. Other Terms. All other terms and conditions of the Master
Agreement, the Visteon B Purchase Agreement and the Visteon A Transaction
Agreement, to the extent they do not conflict with the terms and conditions of
this Agreement, are incorporated into this Agreement. In the event of a conflict
of terms, the terms of this Agreement shall control.
Section 7.07. Counterparts. This Agreement may be executed in two or more
counterparts, all of which, taken together, shall be considered to be one and
the same instrument.
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ARTICLE 8
TERM AND TERMINATION
Section 8.01. This Agreement will terminate upon the expiration date of the
last-to-expire of the intellectual property rights that are the subject of
Section 2.01 above.
Section 8.02. Either party may terminate this Agreement upon ninety (90)
days written notice to the other for failure to fulfill any obligations
hereunder; provided, however, if during the ninety (90) day period such
obligations have been fulfilled, this Agreement shall continue in full force and
effect as it would have done had such notice not been given.
WHEREFORE, the parties have signed this Intellectual Property License
Agreement.
VISTEON CORPORATION VISTEON GLOBAL TECHNOLOGIES, INC.
By: /s/ Xxxxx X. Xxxxxx By: /s/ Xxxxx X. Xxxxxx
--------------------------------- ------------------------------------
Name: Xxxxx X. Xxxxxx Name: Xxxxx X. Xxxxxx
------------------------------- ----------------------------------
Title: Executive Vice President and Title: Vice President
Chief Financial Officer ---------------------------------
------------------------------
FORD MOTOR COMPANY
By: /s/ Xxxxx X. Xxxxxxx
---------------------------------
Name: Xxxxx X. Xxxxxxx
-------------------------------
Title: Executive Vice President and
Chief Financial Officer
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