Exhibit 10.12.2
MEMORANDUM OF UNDERSTANDING DATED JANUARY 22, 1998 BETWEEN
THE COMPANY AND THERMO SOLUTIONS, INC.
INFORMATION PLACED IN BRACKETS [ ] HAS BEEN
OMITTED IN ACCORDANCE WITH A CONFIDENTIAL
TREATMENT REQUEST PURSUANT TO RULE 406 AND
HAS BEEN FILED SEPARATELY WITH THE COMMISSION
Memorandum of Understanding
between
Xxxxxx Technologies, Inc.
and
Thermo Solutions, Inc.
January 22, 1998
The Parties hereto agree to revise the existing License Agreement between the
Parties, dated May 22, 1996, in order to better reflect the specific product
offerings of Thermo Solutions as well as to establish certain performance
requirements under the License, subject to the provisions and understandings
which follow:
1. Scope of License - Xxxxxx grants Thermo Solutions an exclusive license
through December 31, 1998 to make, use, and sell certain shipping and/or storage
containers for temperature sensitive food products, as defined in Exhibit A (the
"licensed products") incorporating the Technology worldwide. Thermo Solutions is
further granted the rights to extend this exclusive license for two additional
one year options, at it's sole discretion, by committing to the Annual Purchase
Minimums in Section 5 herein by not later than September 30 of the preceding
year. The Parties further agree that certain other products may be added to this
Agreement, on a case by case basis, subject to the written mutual agreement of
the Parties.
2. License Fee - In return for the exclusive License granted above, Thermo
Solutions agrees to pay Xxxxxx annual License Fee payments in accordance with
the following schedule:
June 30, 1998 [This information has been omitted in accordance with a
Confidential Treatment Request and has been filed separately with
the Commission.]
*June 30, 1999 [This information has been omitted in accordance with a
Confidential Treatment *option years Request and has been filed
separately with the Commission.]
*June 30, 2000 [This information has been omitted in accordance with a
Confidential Treatment Request and has been filed separately with
the Commission.]
In addition to the above fee(s), Thermo Solutions agrees to perform each of the
following actions:
1. Design and produce at least one style of food storage or delivery
container incorporating Thermasorb(R) or ComforTemp(R) as part of
Thermo Solution's 1998 product line.
2. Aggressively promote the sale of these licensed products by, at a
minimum:
o prominently displaying the ComforTemp or Thermasorb based product
at one or more appropriate industry trade shows in each year of
the License;
o prominently featuring ComforTemp, Thermasorb and their logos in
at least one brochure, advertisement and piece of promotional
literature that includes the Licensed product in each year of the
License;
o prominently displaying the ComforTemp or Thermasorb hangtag
and/or mutually agreeable marking on all products sold containing
ComforTemp:
3. Royalties - In addition to the above License fee(s), Thermo Solutions agrees
to pay Xxxxxx the following royalty [This information has been omitted in
accordance with a Confidential Treatment Request and has been filed separately
with the Commission.] The royalties are to be paid to Xxxxxx within thirty days
following the end of each calendar quarter.
--------------------------------------------------------------------------------
1998 [This information has been omitted in accordance with a
Confidential Treatment Request and has been filed
separately with the Commission.]
--------------------------------------------------------------------------------
1999 and thereafter [This information has been omitted in accordance with a
Confidential Treatment Request and has been filed
separately with the Commission.]
--------------------------------------------------------------------------------
4. Sole Source Supply - The Parties hereto agree that Xxxxxx will be sole source
of supply for all ComforTemp foams and/or Thermasorb additives that may be
required by Thermo Solutions, their subcontractors and/or affiliates to support
all product development efforts and production requirements.
5. Purchase Minimums - In addition to any other amounts owed hereunder, Thermo
Solutions agrees to the following Annual Purchase Minimums of Thermasorb or
ComforTemp:
1998 2,000 lb.
*1999 20,000 lb.
*2000 50,000 lb. *option years
For calculation purposes, 1 lb. of Thermasorb equals 1 yard of ComforTemp foam.
The purchase orders shall reflect volume brackets, pricing, minimum purchase
requirements and minimum delivery requirements in accordance with Xxxxxx'x then
current price list.
6. Delivery of Product - In order to protect production lead times and customer
requirements, Thermo Solutions shall maintain an adequate inventory of
ComforTemp and Thermasorb on hand to support all order due within ninety (90)
days. All POs will be issued to Xxxxxx by Thermo Solutions not less than ninety
(90) days preceding Thermo Solutions' on-dock need dates.
7. Intellectual Property - All Technology licensed to Thermo Solutions under
this Agreement remains the exclusive intellectual property of Xxxxxx for the
commercial life of the Technology. However, if the Parties jointly develop, or
Thermo Solutions develops independently, patentable intellectual property
related to the licensed Technology during the term of this License, then that
Technology will become part of this Agreement with the License thereto granted
to Thermo Solutions in accordance with the License provisions in effect at that
time. Both Parties maintain their exclusive rights to previously developed
technology or any intellectual property not related to the Technology
independently developed by either party during the term of this License.
8. Best Effort Support - Both Parties hereto agree to support new product
development, new product introduction, promotion and sales of all licensed
products incorporating the Technology with the best efforts of the Parties. This
will include the active introduction and promotion of new products containing
the Technology by Thermo Solutions, and the reasonable technical support by
Xxxxxx of Thermo Solutions products containing the Technology.
XXXXXX TECHNOLOGIES, INC. THERMO SOLUTIONS, INC.
\s\ Xxxx Xxxxxx \s\ Xxxx Xxxxxxxxxxx
----------------------------- -----------------------------------
Xxxx Xxxxxx, Chairman and CEO Xxxx Xxxxxxxxxxx, President and CEO
Exhibit A - END-USE PRODUCTS
1. Insulated shipping and/or storage containers and container systems with
dimensions between 0.5 cubic feet and 6 cubic feet, including container
accessories related thereto, for temperature sensitive food products.
