EXHIBIT 10(f)
LICENSE AGREEMENT
BETWEEN
SANDIA CORPORATION
AND
SUPERCONDUCTIVE COMPONENTS, INC.
LICENSE NUMBER 95-C00131
TABLE OF CONTENTS
ARTICLE I - DEFINITIONS ....................................................1
ARTICLE II - LICENSE .......................................................2
ARTICLE III - ROYALTY, FEES AND PAYMENTS ...................................3
ARTICLE IV - STATEMENTS, REPORTS AND PAYMENTS ..............................3
ARTICLE V - GOVERNMENT RIGHTS ..............................................4
ARTICLE VI - DURATION AND TERMINATION.......................................4
ARTICLE VII - WARRANTY, LIABILITY AND INDEMNIFICATION.......................5
ARTICLE VIII - GENERAL PROVISIONS ..........................................6
ARTICLE IX - ASSIGNMENT ....................................................7
ARTICLE X - PREFERENCE FOR U.S. INDUSTRY ...................................7
ARTICLE XI - GOVERNMENT RIGHTS AND SPONSORSHIP..............................7
ARTICLE XII - EXPORT CONTROL ...............................................8
ARTICLE XIII - CONTROLLING LAW .............................................8
ARTICLE XIV - ENTIRE AGREEMENT .............................................8
EXHIBIT A .................................................................10
i
LICENSE AGREEMENT
This License Agreement, effective on the date of last signature hereto, is by
and between Sandia Corporation ("Sandia"), a corporation whose principal place
of business is located in Albuquerque, New Mexico, and Superconductive
Components, Inc. ("SCI"), a corporation whose principal place of business is
located in Columbus, Ohio.
WITNESSETH THAT:
WHEREAS, Sandia manages and operates a federally-owned facility known
as Sandia National Laboratories for the United States Department of
Energy ("DOE") under Contract DE-AC04-94AL85000;
WHEREAS, Sandia his developed and acquired, may further develop and
acquire, and may further become, the assignee of Sandia Patent Rights
(as defined herein);
WHEREAS, Sandia desires to license Sandia Patent Rights in support of
technology transfer to United States industries to enhance the United
States' competitiveness;
WHEREAS, the United States Government is neither a party to nor assumes
any liability for activities of Sandia in connection with this License
Agreement;
WHEREAS, Sandia has either been granted or will request a waiver from
DOE for Sandia Patent Rights. Under the terms of this waiver, the
United States Government reserves a nonexclusive license in Sandia
Patent Rights;
WHEREAS, at the time of conception of the invention comprising Sandia
Patent Rights, Sandia was operated by American Telephone & Telegraph
Company CAT&T") under Xxxxxxxx Xx. XX-XX00-00XX00000 with the DOE under
which AT&T reserved nonexclusive license in Sandia Patent Rights; and
WHEREAS, SCI desires to obtain from Sandia, and Sandia is willing to
make available to SCI, a license under Sandia Patent Rights to make,
use and sell certain products in accordance with the terms and
conditions set forth herein, including the payment of moneys,
NOW, THEREFORE, in consideration of the agreements of the respective Parties
hereto, and for the faithful performance of this License Agreement, it is hereby
agreed as follows:
ARTICLE I - DEFINITIONS
1.1 "Sandia" and "SCI" may each be referred to as a "Party" or, collectively as
"Parties" to this License Agreement.
1.2 "Sandia Patent Rights" shall mean the United States patent set forth in
EXHIBIT A, which is incorporated by reference hereto and made a part
hereof, and any division, continuation, continuation-in-part, or reissue
thereof, or any foreign counterpart thereof.
1.3 "Licensed Product" shall mean any product that is, or is produced by a
process that is, operated under any claim of Sandia Patent Rights.
1.4 "Net Sales Price" shall mean:
(a) In respect of Licensed Product sold, leased or transferred in normal
arm's length commercial transactions between SCI and non-Affiliates,
the Net Sales Price shall mean the gross sales price of licensed
Product charged to SCI customer's without any deductions other than
the following relating to such transactions where applicable: (1)
prompt payment and other trade discounts, (2) allowances for return of
defective shipments, (3) transportation and packing charges, and (4)
sales and excise taxes, to the extent that such items are separately
stated in invoices or appear as items of allowance in the records of
SCI.
(b) In the event SCI makes, sells, leases or transfers systems combining
Licensed Product with other systems, the Net Sales Price of Licensed
Product shall be calculated in the manner set forth in Paragraphs
1.4(a) of this Article I, except that the gross sales price for
Licensed Product in such combination shall be SCI's gross sales price
for the same quantities of the same or substantially similar Licensed
Product not in such combination or, if no such gross sales price
exists, then the fair market value thereof.
1.5 "Government" shall mean the United States of America and agencies thereof.
ARTICLE II - LICENSE
2.1 Subject to the terms and conditions of this License Agreement, Sandia
hereby grants SCI a nontransferable, nonexclusive right and license for SCI
to make and have made Licensed Product under one or more claims of Sandia
Patent Rights; to sell, lease or transfer Licensed Product; and for SCI's
customers to use Licensed Product sold, leased or transferred by SCI for
which royalties have been paid hereunder to Sandia.
2.2 Sandia releases SCI and all purchasers or users of Licensed Product
acquired, mediately or immediately, from SCI from all claims, demands and
rights of action in which Sandia may have on account of any infringement or
alleged infringement of any Sandia Patent Rights by the manufacture, use,
lease, sale, as other disposition of Licensed Product which prior to the
effective date of this License Agreement were manufactured, used, sold or
otherwise disposed of by SCI.
2.3 Express or implied licenses and rights outside the scope of Article II are
expressly excluded.
2
ARTICLE III -ROYALTY, FEES AND PAYMENTS
3.1 SCI agrees that as initial consideration for Sandia's grant of the rights
and licenses set forth in this License Agreement, SCI will pay to Sandia
the sum of ten thousand dollars ($10,000) within thirty (30) days of the
effective date of this License Agreement.
3.2 In further consideration for the licenses and other rights granted by
Sandia herein, SCI agrees to pay to Sandia a running royalty of five
percent (5%) of the Net Sales Price of Licensed Product made, sold, leased,
or transferred by SCI during the term of this License Agreement.
ARTICLE IV - STATEMENTS, REPORTS AND PAYMENTS
4.1 For the purpose of computing royalties hereunder, a Licensed Product shall
be considered sold or leased when billed out, when shipped out or when paid
for, whichever shall first occur.
4.2 SCI shall render to Sandia by January 31 of each calendar year, while this
License Agreement exists, a royalty statement reporting each amount SCI
invoices its customers for Licensed Product during the preceding accounting
period beginning respectively on the preceding January 1. The statement
shall give all information necessary for the determination of royalties
payable hereunder. SCI shall accompany each such statement with the payment
of all such royalties due Sandia, computed in accordance with Article IV.
If for any accounting period no royalty payment shall be due, SCI shall
submit a written statement to that effect.
4.3 SCI shall keep true and accurate records in such manner and detail as to
permit the verification of all royalties paid and payable under this
License Agreement. Such records shall be made available during ordinary
business hours for inspection at SCI's ordinary place of business by
authorized representatives of Sandia. SCI shall be obligated to retain such
records for at least five (5) years after the report to which such records
pertain is rendered to Sandia.
4.4 All royalties payable by SCI hereunder shall be paid to Sandia at the
address specified in Article VIII hereof in United States of America
dollars in the total amounts provided for in this License Agreement, Any
taxes, assessments or charges assessed or imposed by an entity or
government other than by the Government of the United States of America or
any state or local government in the United States of America, that Sandia
or SCI or any other party shall be required to pay with respect to such
royalty, shall be borne by SCI.
4.5 The rate of exchange to be used in calculating royalties payable by SCI for
an accounting period shall be the rate of exchange published by the WALL
STREET JOURNAL on the last business day of such accounting period.
3
4.6 Without excusing Prompt Payment of royalties due, any and all royalties
left unpaid after the aforementioned date in Paragraph 4.2 of this Article
IV, shall bear interest at the prime rate in effect at the First Security
Bank of Albuquerque, New Mexico, on the date that payment of said royalties
becomes due, Plus three (3) percentage points.
4.7 The DOE may require Sandia to report on the utilization or the effect of
using Sandia Patent Rights in the commercial marketplace. In this regard,
SCI agrees to cooperate with and assist Sandia in making all such reports.
4.8 SCI will provide to Sandia on July 31 of each year a report on SCI's
utilization of superconductive powder technology. The report will include
information on the economic impact of the technology on SCI. Examples
include but not limited to: dollar and percentage change in sales and
number of jobs created or eliminated, changes in efficiency of operations,
changes in SCI's competitive position in the industry, and how the Sandia
technology and Licensed Product compares with similar domestic and
international technologies and products.
ARTICLE V - GOVERNMENT RIGHTS
5.1 SCI will not pay royalty on Licensed Product sold to the Government or a
contractor for the benefit of any Government contract (pursuant to the
Government's nonexclusive reserved license).
5.2 In transactions involving the Government, Licensed Product and SCI, SCI
must maintain true and accurate records that the Government received a
discount equal to or greater than the amount of royalty that SCI would have
paid had the Government not been involved. Any sale to a Government agency
shall be reported by providing: (a) identification of the Government
agency, (b) identification of the Government contract number, and (c) a
description of SCI's lost royalty amount due to the transaction with the
Government.
ARTICLE VI - DURATION, AND TERMINATION
6.1 The right and license granted to SCI under Article II and the obligation to
pay royalty under Article III shall continue until January 1, 2015, or
until the expiration of Sandia Patent Rights, whichever occurs first,
unless earlier terminated as specified in Article VI. Except for SCI's
right and license granted under Article II, all other provisions relating
to SCI and intended to survive the date set forth in Paragraph 6.1, and the
expiration of Sandia Patent Rights and any such early termination, shall
survive.
6.2 Following termination of the rights and licenses granted by Sandia under
this License Agreement, as specified in Paragraphs 6.3 through 6.5 hereof,
SCI shall have no further rights and licenses under Article II.
6.3 Termination of SCI's right and license under this License Agreement for any
reason shall not relieve SCI of any obligation or liability accrued either
before or after the termination.
4
6.4 Sandia may terminate the Rights and licenses granted by Article II if SCI
shall at any time:
(a) defaults in the payment of any royalty;
(b) commits any breach of this License Agreement; or
(c) makes any false statement;
and fails to remedy or cure any such default, breach or false statement
within sixty (60) days after written notice of the default, breach or false
statement is given by Sandia.
6.5 Sandia may terminate the rights and licenses granted by Article II by
giving written notice to SCI in the event SCI experiences any of the
following events: dissolution, insolvency, filing of a voluntary petition
in bankruptcy, adjudication as a bankrupt pursuant to an involuntary
petition, appointment by a court of a temporary or permanent receiver,
trustee or custodian for its business, or an assignment for the benefit of
creditors. Such termination shall be effective immediately upon the giving
of such notice.
ARTICLE VII - WARRANTY, LIABILITY AND INDEMNIFICATION
7.1 Sandia warrants that it has the right to grant the rights and licenses in
Article II.
7.2 Sandia makes no warranty, express or implied, as to the accuracy or utility
of any Sandia Patent Rights. Sandia further makes no warranty, express or
implied, that the use of any Sandia Patent Rights made available to SCI
under this License Agreement will not infringe any United States or foreign
patent, copyright, or trade secret. Under this License Agreement, Sandia
Patent Rights is made available to SCI on an "AS-IS" basis.
EXCEPT FOR THE WARRANTIES EXPRESSLY PROVIDED HEREIN, ALL WARRANTIES,
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILTY AND FITNESS FOR A PARTICULAR PURPOSE, ARE EXCLUDED
HEREUNDER.
7.3 Sandia and the Government and their agents, officers and employees shall
not be liable for any loss, damage, injury or other casualty of whatsoever
kind, or by whomsoever caused, to the person or property of anyone,
including SCI and its Affiliates, arising out of or resulting from the
licenses granted to SCI herein, or the accuracy and validity of Sandia
Patent Rights, or from any system in the Field of Use or component thereof
made, used, sold, leased or transferred by SCI or its Affiliates, and SCI
agrees for itself, its successors and assigns, to defend, indemnify and
hold Sandia and the Government, harmless from and against all claims,
demands, liabilities, suits or actions (including all reasonable expenses
and attorney's fees incurred by or imposed on SCI or its Affiliates in
connection therewith) for such loss, damage, injury or other casualty.
5
7.4 Sandia makes no warranty or guarantee in respect of the validity of Sandia
Patent Rights.
7.5 Sandia shall retain the sole right to bring litigation for infringement of
Sandia Patent Rights. SCI shall promptly bring to Sandia's attention any
information of which SCI is aware of relating to third party infringement
of Sandia Patent Rights.
ARTICLE VIII - GENERAL PROVISIONS
8.1 SCI shall not, without the express written consent of Sandia, make any
verbal or written statements or perform any act indicating that Sandia
endorses or approves, or has endorsed or approved, any Licensed Product.
Specifically, SCI shall not, without the express written consent of Sandia,
associate or in any way connect any name or trademark of Sandia or its
Affiliates with any Licensed Product. However, SCI may indicate that
Licensed Product is manufactured, sold, leased or used under a license
granted by Sandia.
8.2 Any notice with respect to this License Agreement shall be deemed given on
the date when sent by facsimile transmission with receipt of confirmation
or when mailed by registered mail, return receipt requested, addressed to
the Party to be notified at its address set forth below or such other
address as is designated by writing:
Sandia Corporation:
FOR STATEMENTS AND NOTICES:
Sandia Corporation
Attention: Licensing Coordinator, Org. 4200
Mailstop 1380
X.X. Xxx 0000
Xxxxxxxxxxx, XX 00000-0000
Phone: (000) 000-0000
Facsimile: (000) 000-0000
FOR PAYMENTS:
Sandia Corporation
Attention: Assistant Treasurer, Org. 10602
Mailstop 0189
X.X. Xxx 0000
Xxxxxxxxxxx, XX 00000-0000
6
FOR SCI:
Superconductive Components, Inc.
Attention: Mr, X. X. Xxxxxx
0000 Xxxxxxxxxx Xxxxxx
Xxxxxxxx, XX 00000
Phone: (000) 000-0000
Facsimile: (000) 000-0000
8.3 The waiver of a breach of this License Agreement or the failure of either
Party to exercise any right under this License Agreement shall in no event
constitute a waiver as to any other breach, whether similar or dissimilar
in nature, or prevent the exercise of any right under this License
Agreement.
8.4 SCI agrees to affix appropriate statutory patent markings to all materials
included in Licensed Product made hereunder and covered by issued and
unexpired claims of Sandia Patent Rights, and otherwise to modify such
notice as Sandia may from time to time direct in conformity with the patent
statutes.
8.5 The Index and Headings used in this License Agreement are for reference
purposes only and shall not be used in the interpretation of this License
Agreement.
ARTICLE IX - ASSIGNMENT
9.1 SCI shall not, without the prior written consent of Sandia, assign this
License Agreement of any rights hereunder except to a successor to the
business of SCI who shall agree to be bound to the same extent as SCI by a
the terms and conditions of this License Agreement.
9.2 Sandia may assign or otherwise transfer this License Agreement or any
rights hereunder to any assignee or transferee who shall agree to be bound
to the same extent as Sandia by all the terms and conditions of this
License Agreement.
ARTICLE X - PREFERENCE FOR U.S. INDUSTRY
10.1 SCI agrees that any products embodying Sandia Patent Rights or produced
through the use of Sandia Patent Rights will be designed, developed and
manufactured substantially in the United States.
ARTICLE XI - GOVERNMENT RIGHTS AND SPONSORSHIP
11.1 The Government is granted for itself and others acting on its behalf a
paid-up, nonexclusive, irrevocable, worldwide license in Sandia Patent
Rights to make, have made, use or sell Sandia Patent Rights.
7
11.2 MARCH-IN RIGHTS. The Parties agree and understand that the Government
retains "march-in" rights, in accordance with the procedures set forth in
35 USC 203 and any supplemental regulations promulgated by the DOE.
11.3 NEITHER THE GOVERNMENT NOR THE DOE, NOR ANY OF THEIR. EMPLOYEES, MAKES ANY
WARRANTY, EXPRESS OR IMPLIED, OR ASSUMES ANY LEGAL LIABILITY OR
RESPONSIBILITY FOR THE ACCURACY, COMPLETENESS, OR USEFULNESS OF ANY
INFORMATION, APPARATUS, PRODUCT, OR PROCESS DISCLOSED, OR REPRESENTS THAT
ITS USE WOULD NOT INFRINGE PRIVATELY OWNED RIGHTS.
11.4 SCI acknowledges that the DOE has audit and inspection. rights over an
activities conducted at Sandia's location. SCI hereby permits the exercise
of such rights in conjunction with SCI's activities which may involve
proprietary information disclosed to Sandia hereunder; provided, however,
that any disclosure to SCI is further protected under 18 USC 1905.
ARTICLE XII - EXPORT CONTROL
12.1 SCI shall abide by the export control laws and regulations of the United
States Department of Commerce and other United States governmental
regulations relating to the export of Sandia Patent Rights. Failure to
obtain an export control license or other authority from the Government may
result in criminal liability under U.S. laws.
ARTICLE XIII - CONTROLLING LAW
13.1 This License Agreement is made in Albuquerque, New Mexico, U.S.A., and
shall be governed by and construed in accordance with the laws of the State
of New Mexico. The Parties agree to the exclusive jurisdiction of the
courts of Now Mexico or the United States District Court for New Mexico.
ARTICLE XIV - ENTIRE AGREEMENT
14.1 Each Party warrants and represents that the execution and delivery of this
License Agreement by Sandia and SCI has not been induced by any promises,
representations, warranties or other agreements, other than those
specifically expressed. This License Agreement includes EXHIBIT A and
embodies the entire understanding between SCI and Sandia Corporation with
respect to the subject matter described within this License Agreement. This
License Agreement shall supersede all previous communications,
representations or undertakings, either verbal or written, between SCI and
Sandia with regard to License Agreement.
14.2 No modification of this License Agreement shall be valid or binding upon
the Party against whom enforcement of the modification is sought, unless
the modification is made in writing and signed by duly authorized
representatives of both Sandia and SCI.
8
IN CONSIDERATION OF THE FOREGOING TERMS AND CONDITIONS, Superconductive
Components, Inc. and Sandia Corporation have caused this License Agreement to be
executed in duplicate by their duly authorized representatives. This License
Agreement will be effective on the last day and year written below.
SANDIA CORPORATION:
By: /s/ Xxxxxx X. Siemens
----------------------------
Xxxxxx X. Siemens
Title: Director, Technology Partnerships and
Commercialization
Date: 2/26/96
------------------------------
SUPERCONDUCTIVE COMPONENTS, INC.
By: /s/ Xxxx X. Xxxxxx, Xx.
------------------------------
Xxxx X. Xxxxxx, Xx.
Title: Vice President
------------------------------
Date: 2/19/96
------------------------------
THIS LICENSE AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY IN ANY MANNER
UNLESS DULY EXECUTED BY AN AUTHORIZED REPRESENTATIVE OF BOTH PARTIES.
9
EXHIBIT A
SANDIA PATENT (SD-4548)
This is a technique for preparing highly pure, homogeneous precursor powder
mixtures for metal oxide superconductive ceramics. The mixtures are prepared by
instantaneous precipitation from stoichiometric solutions of metal salts, such
as nitrates, at 9 - 12 pH by addition of solutions of non-complexing pyrolzable
cations such as alkyammonium and carbonate ions.
U. S. Patent Number 4,839,339
10
