Exhibit 10.6
INTELLECTUAL PROPERTY CONTRIBUTION AGREEMENT
This AGREEMENT ("IP AGREEMENT") dated as of September 30, 2005 is between
Visteon Corporation, a Delaware corporation ("VISTEON"), Visteon Global
Technologies, Inc., a Michigan Corporation ("VGTI"), Automotive Components
Holdings, Inc. f/k/a VFH Holdings, Inc., a Delaware corporation, and Automotive
Components Holdings, LLC f/k/a VFH Holdings, LLC, a Delaware limited liability
company (the "COMPANY"), a wholly-owned subsidiary of Automotive Components
Holding, Inc.
WITNESSETH:
WHEREAS, Ford Motor Company, a Delaware corporation ("FORD") and Visteon
are parties to a Master Agreement (the "MASTER AGREEMENT") dated as of September
12, 2005 pursuant to which, among other things, Visteon has agreed to enter into
a Contribution Agreement (the "CONTRIBUTION AGREEMENT") with Automotive
Components Holdings, Inc., whereby, among other things, and subject to the terms
and conditions set forth therein, Visteon has agreed to contribute (or cause to
be contributed) to the Company (or one or more Subsidiaries of the Company)
certain intellectual property assets related to the Business as defined therein;
and
WHEREAS, Visteon, VGTI, Automotive Components Holdings, Inc. and the
Company have agreed to enter into this IP Agreement setting forth the
intellectual property assets to be contributed to the Company and associated
rights and limitations thereof.
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 Contribution
Agreement.
(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 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
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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 Software License and Contribution
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.
"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.
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"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.
"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 Company or one of its Affiliates
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or Subsidiaries 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.
"Trademarks" means trademarks, service marks and trade names.
"Trade Secrets" means business and technical methods, processes,
information, compilations 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
CONTRIBUTION
Section 2.01. Contribution. Visteon and VGTI hereby transfer and deliver,
or cause to be transferred and delivered, to the Company (or one or more
Subsidiaries of the Company formed pursuant to the Contribution Agreement as the
Company may designate prior to the Closing) at the Closing the Licensed
Intellectual Property Rights and Owned Intellectual Property Rights as set forth
in the Appendices attached hereto, subject to the rights and limitations set
forth therein, as a capital contribution, free and clear of all Liens, other
than Permitted Liens.
Section 2.02. Visteon and VGTI hereby transfer and contribute to the
capital of the Company their entire right, title, and interest in and to any and
all causes of action and rights of recovery for past infringement of the
Licensed Intellectual Property Rights and Owned Intellectual Property Rights
assigned to the Company in Section 2.01 above.
Section 2.03. The transfers provided in this Article 2 are subject to
existing and contingent obligations Visteon and VGTI may have under contracts
with third parties. As soon as practicable after execution of the Contribution
Agreement, Visteon, VGTI and the Company 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 Company
ownership, including transfer to the Company of the right to receive royalty
payments where required.
Section 2.04. Upon request by the Company, all documents and papers shall
be executed, and all commercially reasonable assistance shall be furnished by
Visteon and VGTI to enable the Company to obtain and perfect any and all rights
assigned to the Company in Section 2.01 above. Such assistance shall include,
but not be limited to, assistance needed to: (1) establish in the Company title
to Engineering Design Tools, Non-Patented Intellectual Property, Patents and
Trademarks; (2) enable the Company to apply for United States and foreign
patents; (3) enable the Company to apply for United States and foreign copyright
registrations; (4) enable the Company to apply for United States and
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foreign Trademark registrations; (5) enable the Company to prosecute, protect,
and enforce any rights assigned herein; and (6) enable the Company to grant
appropriate warranties of ownership when it licenses the subject matter
transferred herein to third parties.
Section 2.05. It is acknowledged by the parties that Visteon acquires
rights in intellectual property from third parties through its purchase orders
and other contracts that may include sublicense rights that are extendable to
others. In the event the Company is confronted with infringement claims by third
parties that could be offset or settled by the grant of a sublicense or
extension of other rights or protections from Visteon, Visteon agrees to grant
such sublicenses, rights or protections under terms that are agreeable to the
parties. To the extent allowable under such contracts and provided there is no
adverse effect to Visteon, Visteon shall sublicense any such rights to the
Company at a commercially reasonable rate established during good faith
negotiations. This agreement to sublicense is non-transferable upon the sale of
the business to a third party unless such third party is Ford Motor Company or
its Affiliates (including Mazda).
Section 2.06. 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 Non-Patented Intellectual Property of the
other party or Affiliate that it rightfully has in its possession after 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 2.07. Implied Licenses for Purchased Parts. Visteon and VGTI agree
to not assert against the Company or a customer of the Company 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 the Company
(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 systems or assemblies. Visteon shall provide reasonable notice to the
Company of any change in supplier of such products. The Company shall have a
commercially reasonable period in which to change to the newly selected Visteon
supplier.
ARTICLE 3
CONSIDERATION
Section 3.01. Consideration. The contributions made herein to the Company
are made by Visteon and VGTI pursuant to the obligations under the Contribution
Agreement and in consideration set forth therein.
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ARTICLE 4
REPRESENTATION AND WARRANTIES
Section 4.01. Representations and Warranties. The parties agree that all
representations and warranties relating to matters contemplated herein are set
forth in the Contribution Agreement.
ARTICLE 5
CONFIDENTIALITY
Section 5.01. Confidentiality. Visteon, VGTI and the Company 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 and
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, specifically
including Ford Motor Company, 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.
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.
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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 the Company:
Ford Motor Company
Office of the Secretary
One American Road
00xx Xxxxx Xxxxx Xxxxxxxxxxxx
Xxxxxxxx, Xxxxxxxx 00000
Facsimile No.: (000) 000-0000
E-mail: xxxxxxx@xxxx.xxx
with a copy to:
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, Nationally
Observed holiday or a jointly observed Company/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 the Company as part of the Engineering Design Tools and
Non-Patented Intellectual Property and to give full enabling effect to the
licenses granted hereunder, provided that the Company 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 the Company as required by the
Contribution 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
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have been transferred to Company at Closing pursuant to the Contribution
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 the Company or the appropriate Subsidiary of the Company
according to the appropriate grant in the Appendices attached hereto.
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 contributed to the Company. 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 contributed to the Company 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. This
agreement to cooperate is non-transferable upon the sale of the business to a
third party unless such third party is Ford Motor Company or its Affiliates
(including Mazda).
Section 7.04. Transferability. (A) To the extent permitted in this IP
Agreement or in the Appendices attached hereto, the Company'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 the
Company's obligations as stated therein.
(B) Either party may source a product produced at a facility under the
licenses granted herein to additional facilities in accordance with the terms of
this Agreement. The Licensed Intellectual Property Rights and Owned Intellectual
Property Rights granted herein that are necessary for the manufacture and sale
of such product shall be transferable, if allowed hereunder, to a purchaser of
each such facility but only if each such facility to be transferred to a
purchaser produces or is sourced to produce, through an executed, commercial
sourcing agreement, at least 35% of the total volume per period of such product
manufactured by the selling party at the time of the first sale of any such
facility producing such product. In the event that such production or sourcing
at such facility is less than 35% of the total volume of such product at the
time of sale, then such Licensed Intellectual Property Rights and Owned
Intellectual Property Rights are not transferable, except to Ford, without the
consent of the other party. Considerations for consent include, but are not
limited to, changes in industry volume, major technology
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shifts affecting the particular products and other commercial considerations
relevant at the time.
(C) Notwithstanding anything to the contrary in the Appendices attached
hereto, any licenses granted herein by VGTI to Company shall be sublicensable by
Company as follows: provided that Company does not itself manufacture products
or perform services covered by a license grant but is wholly owned by an entity
that 1) manufactures products or performs services covered by a license grant,
then Company shall be entitled to grant a sublicense to such entity or its
Subsidiary on identical terms as provided herein except that such sublicensee
shall not have any right to grant a further sublicense under any conditions. In
the event that Company does not itself manufacture products or perform services
covered by a license grant but has another Subsidiary of which it controls a
majority interest that does manufacture products or perform services covered by
a license grant, Visteon agrees to negotiate in good faith the grant of a
sublicense by the Company to such Subsidiary, except that such sublicensee shall
not have any right to grant a further sublicense under any conditions.
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
Contribution Agreement, to the extent they do not conflict with the terms and
conditions of this IP Agreement, are incorporated into this IP Agreement. In the
event of a conflict of terms, the terms of this IP Agreement shall control.
Section 7.07. Counterparts. This IP 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 Contribution
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 ---------------------------------
------------------------------
AUTOMOTIVE COMPONENTS HOLDINGS, LLC AUTOMOTIVE COMPONENTS HOLDINGS, INC.
By: /s/ Xxxxx X. Xxxxxx By: /s/ Xxxxx X. Xxxxxx
--------------------------------- ------------------------------------
Name: Xxxxx X. Xxxxxx Name: Xxxxx X. Xxxxxx
------------------------------- ----------------------------------
Title: President Title: President
------------------------------ ---------------------------------
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