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Exhibit 10.18
CONFIDENTIAL TREATMENT REQUESTED
UNDER 17 C.F.R. SECTIONS 200.80(b)(4),
200.83 AND 240.24b-2
LICENSE AGREEMENT
THIS AGREEMENT is made this first day of June, 1998 (the "Effective
Date") by and between AUTHENTIC, Ltd., a Japanese subsidiary corporation of NEC
(hereinafter "NEC") with an office and place of business at 3-14-1 Hisamoto
Takatsu-ku, Xxxxxxxx Xxxx, Xxxxxxxx-Xxx 000-0000, Xxxxx (hereinafter "Authentic"
or "Licensee") and AMERICAN TECHNOLOGY CORPORATION, a Delaware corporation with
an office and place of business at 00000 Xxxxxxx Xxxxx Xxxxx Xxxxx, Xxx Xxxxx,
Xxxxxxxxxx 00000, Xxxxxx Xxxxxx of America (hereinafter "ATC").
RECITALS
WHEREAS, ATC has developed and has rights to sound reproduction systems
known as Stratified Field Technology(TM) (SFT(TM)) and picoSonic(TM) Transducer
Technology (picoSonic(TM)) for which ATC has applied for patents; and,
WHEREAS, ATC has developed certain proprietary exciter materials (PEM) for
use in the manufacture of SFT and picoSonic systems; and
WHEREAS, ATC has demonstrated the use of its SFT system in computer
product components similar to those manufactured by Authentic and used by NEC;
and,
WHEREAS, ATC has developed certain trademarks regarding this system
including, but not limited to, Stratified Field Technology and picoSonic(TM) for
which registration has been requested in the United States Patent and Trademark
Office; and
WHEREAS, Authentic wishes to utilize this SFT system in its products; and
WHEREAS, Authentic, and ATC are willing to enter into License and/or
Volume Purchase Agreements, as applicable, for the manufacture and use of SFT
and picoSonic technologies for Licensed Products;
NOW, THEREFORE, the parties hereto agree as follows:
1. DEFINITIONS.
A. "LICENSED INFORMATION" shall mean ATC's confidential or proprietary
information, trade secrets, designs, drawings, reports, memoranda, blueprints
and know-how relating to the inventions disclosed and claimed in the Licensed
Patents filed and pending, and inventions for which patents have not yet been
filed but which relate to SFT and picoSonic, but only to the extent the rights
thereunder are necessary for the Licensed Products to fulfill the specifications
of Exhibit B.
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B. "LICENSED PATENTS" shall mean (1) any and all of ATC's patents and
applications therefore identified in Exhibit A and all continuations,
continuations in part, divisionals, reissues and reexaminations thereof, (2) any
and all applications subsequently filed by ATC to the extent the rights
thereunder are necessary for the Licensed Product to fulfill the specifications
of Exhibit B and (3) any and all patents licensed or acquired by ATC to the
extent the rights thereunder are necessary for the Licensed Product to fulfill
the specifications of Exhibit B.
C. "LICENSED PRODUCT" or "LICENSED PRODUCT" shall mean the product or
those categories of products identified in Exhibit D, which fulfill the
specifications of Exhibit B and thereby contain an implementation of some or all
of the SFT Technology, and which also bear one or more of the Licensed
Trademarks on the Licensed Product or packaging therefor. ATC shall determine,
in its sole discretion, whether any particular product falls within a category
of products identified in Exhibit D and/or fulfills the specifications of
Exhibit B.
D. "LICENSED RIGHTS" shall mean the combination of Licensed Patents and
Licensed Information.
E. "LICENSED TRADEMARKS" shall mean, collectively, the trademarks
identified in the United States trademark registrations and applications
therefor identified in Exhibit C hereto, the trademarks identified in all
applications and registrations in any country which claim priority from the
United States trademark applications and registrations identified in Exhibit C,
or which are identical to or similar to a trademark identified in any United
States trademark application, the rights to which are owned by ATC, any
combination of words, and/or symbols containing the listed federally registered
trademarks here after adopted by ATC from time to time, and any other
trademarks, trade names and logos used by ATC in connection with the SFT system.
F. "FIELD OF USE" shall mean sound reproduction devices utilized in
conjunction with [...***...], as manufactured by NEC Personal Computer Division
("NEC-PC").
G. "XXXX LOCATION" shall mean the primary viewing surface of all
Licensed Products.
H. "PROPRIETARY EXCITER MATERIAL" or "PEM" shall mean the material(s)
developed by and proprietary to ATC which are required to manufacture the SFT
and picoSonic systems.
2. RIGHTS GRANTED.
A. LICENSES GRANTED TO LICENSEE.
ATC hereby grants to Licensee, under the Licensed Rights and subject to
the payment of royalties and compliance with the other terms and conditions of
this Agreement, and restricted to the Field of Use, the following:
(i) A nontransferable, nonexclusive (subject to Paragraph C of
this Section 2), worldwide, royalty-bearing license to make, use, offer to sell,
sell and import into the United States the Licensed Products;
* CONFIDENTIAL TREATMENT REQUESTED
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(ii) A nontransferable, nonexclusive (subject to Paragraph C of
this Section 2) worldwide license to use the Licensed Rights for developing
improvements to the Licensed Products; and
(iii) A nontransferable, nonexclusive (subject to Paragraph C of
this Section 2) worldwide license to use the Licensed Trademarks in connection
with the identification, advertisement, marketing, distribution and sale of the
Licensed Products.
B. SUBLICENSING.
Licensee shall have no right to sublicense the Licensed Rights or Licensed
Trademarks; provided, however, that Licensee shall be permitted to:
(i) sublicense the Licensed Rights for the manufacture of Licensed
Products to one or more third party manufacturers for the sole purpose of
manufacturing the Licensed Products for sale directly to and only to Licensee,
but only if (a) Licensee and such manufacturer enter into a sublicense agreement
with terms which are no less favorable to ATC or that the terms of this
Agreement and (b) such sublicense is approved in writing by ATC prior to its
effective date, which approval shall not be unreasonably withheld.
(ii) sublicense the Licensed Rights for developing improvements to
the Licensed Products to one or more developers for the sole purpose of
developing improvements to the Licensed Products (subject to Section 3.D) but
only if (a) Licensee and such developer enter into a sublicense agreement with
terms which are no less favorable to ATC than the terms of this Agreement and
(b) such sublicense is approved in writing by ATC prior to its effective date,
which approval shall not be unreasonably withheld.
C. EXCLUSIVE LICENSING PERIOD.
During the [...***...] immediately following the Effective Date, ATC shall
not grant a license to the Licensed Rights or Licensed Trademarks to any other
manufacturer of products within the Field of Use.
3. OBLIGATIONS OF LICENSEE.
A. CONFIDENTIALITY.
Licensee acknowledges that the Licensed Rights are the confidential,
proprietary information of ATC. Licensee agrees not to use, disclose, or grant
use of the Licensed Rights except as expressly authorized by this Agreement.
Upon termination of this Agreement Licensee shall make no use whatsoever of the
Licensed Rights and shall not disclose the Licensed Information to any third
parties.
* CONFIDENTIAL TREATMENT REQUESTED
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B. PATENT/COPYRIGHT MARKING.
Licensee shall conspicuously xxxx on a publicly exposed surface of all
Licensed Products manufactured, distributed or sold by Licensee, and inside each
instruction, servicing or other manual distributed with, or prepared for use
with respect to, any Licensed Product, appropriate patent and copyright markings
identifying all Licensed Patents and all copyrights of ATC applicable to such
Licensed Product and identifying ATC as the owner of the Licensed Patents and
copyrights. The content, form and language used in such marking shall be in
accordance with the laws and practices of the country where such Licensed
Products are manufactured, marketed, distributed and sold.
C. USE OF LICENSED TRADEMARKS.
The parties hereby agree to avoid public confusion, Licensee's rights and
obligations concerning the use of the Licensed Trademarks shall be as follows:
(i) Licensee agrees to place at least one of the Licensed
Trademarks (in accordance with at least one of the examples described in Exhibit
C) on each Licensed Product (unless determined by ATC to be reasonably
infeasible) and at each Xxxx Location. The Licensed Trademarks may only be used
on, or in reference to, Licensed Products. Licensee agrees to submit for review
and prior written approval by ATC, prior to use or publication, a representative
copy of all packaging, advertising, manuals and other collateral materials used
by Licensee that bear one or more of the Licensed Trademarks.
(ii) The ownership of the Licensed Trademarks shall be indicated
whenever they are used by Licensee. Specifically, Licensee shall place the
following notice on each Licensed Product:
"Stratified Field Technology(TM)" and "SFT(TM)" are marks owned by
and used under written License from American Technology Corporation,
San Diego, CA (USA).
"picoSonic(TM)" is a xxxx owned by and used under written License
from American Technology Corporation, San Diego, CA (USA).
(iii) Licensee shall acknowledge that the Licensed Products are
manufactured under license from ATC by placing one of the following notices on a
publicly exposed primary surface of all Licensed Products made, used, offered
for sale or sold by Licensee:
"Incorporates components of Stratified Field Technology under
license from American Technology Corporation"
"Incorporates the Stratified Field Technology under license from
American Technology Corporation"
"SFT under license from American Technology Corporation"
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(iv) Licensee shall require all persons or entities to whom it sell
Licensed Products to place the Licensed Trademarks and the other notices
referred to in paragraphs (1), (2) and (3) above on all descriptive,
instructional, advertising, marketing, packaging and other materials prepared by
or for such Purchaser which contain a direct or indirect description or
reference to the SFT, the Licensed Products or the benefits to be derived
therefrom.
(v) Except with ATC's prior written approval, Licensee further
agrees that it will not file any application for registration in any country of
any xxxx, symbol or phrase which is identical to, similar to or likely to be
confused with the Licensed Trademarks. Licensee further agrees and acknowledges
that, if it has obtained or obtains in the future, in any country, any right
title or interest in any xxxx, symbol or phrase which is identical to, similar
to or likely to be confused with the Licensed Trademarks, then Licensee has
acted or will act as an agent for the benefit of ATC for the limited purpose of
obtaining such registrations and assigning such registrations (and all right,
title and interest in such xxxx, symbol or phrase) to ATC. Licensee further
agrees to execute any and all instruments deemed by ATC to be necessary to
transfer such registrations or such right, title or interest to ATC.
(vi) ATC will advise Licensee of ensuing grants of registration for
the Licensed Trademarks, and Licensee agrees to comply with all applicable laws
and practices of the countries wherein such marks are used and/or registered
relating to the marking of notices of registrations and the recording of
Licensee as a registered or licensed user of the Licensed Trademarks.
(vii) The Licensed Trademarks may not be used in direct combination
with any other trade names, trademarks or symbols, except as specified in
Exhibit E. Moreover, the trade names, trademarks and symbols of Licensee may not
be used in any way that may suggest that Licensee is a division, affiliate or
subsidiary of ATC, or that the relationship between the two parties to the
Agreement is anything other than that of licensor-licensee.
(viii) The expense of obtaining and maintaining registrations for
the Licensed Trademarks shall be borne by ATC. The expense of registering or
recording Licensee as a registered user or otherwise complying with the laws of
any country pertaining to such registration or the recording of trademark
agreements shall he borne by Licensee.
(ix) Licensee shall furnish a written report to ATC of all
countries where Licensed Products are manufactured, marketed, distributed or
sold (a) within thirty (30) calendar days after each calendar year and (b) prior
to any manufacture, marketing, distribution or sale by Licensee of any Licensed
Product in any country not previously reported to ATC.
(x) Licensee shall not refer to the Licensed Products as
incorporating any technology other than the Licensed Rights and will not use
trademarks other than the Licensed Trademarks in reference to the Licensed
Products.
D. IMPROVEMENTS BY LICENSEE.
If Licensee shall hereafter during the term of this Agreement bring about
any improvements relating to the performance or manufacture of the Licensed
Products or otherwise relating to the Licensed Rights, including such
improvements brought about by Licensee's
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vendors, sublicensees or subcontractors ("Improvements"), Licensee shall
promptly disclose such Improvements to ATC in confidence. The ownership of
Improvements shall be determined as follows:
(i) If an Improvement is based upon or relates to the Licensed
Information or other proprietary information which is disclosed to Licensee in
connection with this Agreement, or which is disclosed within the Licensed
Patents or which comes within the scope of a claim or claims of the Licensed
Patents, then such Improvement shall become the sole property of ATC. If the
Improvement is patentable, Licensee shall assign and hereby does assign to ATC
its entire right, title and interest in the Improvement and any patent issuing
thereon in any country of the world. ATC shall and hereby does grant to Licensee
a non-exclusive right to use such Improvement and any such patent in accordance
with the terms of this Agreement, and such Improvement and patent shall be
deemed part of the Licensed Rights.
(ii) If an Improvement is not based upon or does not relate to the
Licensed Information or other proprietary information which is disclosed to
Licensee in connection with this Agreement, or which is disclosed within the
Licensed Patents or which comes within the scope of a claim or claims of the
Licensed Patents, then such Improvement shall become the property of Licensee
and ATC shall retain, and/or Licensee shall and hereby does grant to ATC, an
unrestricted, perpetual, irrevocable royalty-free non-exclusive license to fully
exercise all intellectual property rights with respect to such Improvement (with
the right to sublicense).
E. IMPROVEMENTS BY ATC.
If (1) ATC shall hereafter during the term of this Agreement bring about
any improvements in the Licensed Rights relating to the performance or
manufacturing of the Licensed Products, including any such improvements brought
about by ATC's vendors, other licensees or subcontractors and (2) such
improvements are necessary for Licensee to manufacture, distribute and sell the
Licensed Products or otherwise meet any updated specifications for the Licensed
Products set forth in Exhibit B, then to the extent permitted by the U.S.
Government and by third party rights, if applicable, ATC shall promptly disclose
the existence and general nature of such improvements to Licensee in confidence
and ATC shall and hereby does grant Licensee a non-exclusive right to use such
improvements in accordance with the terms of this Agreement as if such
improvements were part of the Licensed Rights.
4. PAYMENTS.
A. All payments shall be made in United States Dollars.
B. TECHNOLOGY TRANSFER FEE. Authentic shall pay to ATC a technology
transfer fee in the amount of $250,000.00 as follows:
[...***...] within [...***...] after the Effective Date of this
Agreement;
[...***...] within [...***...] after [...***...];
[...***...] within [...***...] after [...***...].
* CONFIDENTIAL TREATMENT REQUESTED.
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C. PERIODIC ROYALTY.
(i) Exhibit E lists the Licensed Products together with their ATC
Part Number and the minimum number of each product that is to be sold or
otherwise transferred each month. Additionally, the section value and royalty
calculation method is set forth in Exhibit E.
(ii) QUARTERLY ROYALTY PAYMENT. The quarterly royalty shall be paid
to ATC by Authentic so as to be received by ATC within [thirty] calendar days
after the end of each calendar quarter, i.e., April 30th, July 30th, October
31st and January 31st. The quarterly royalty shall be that amount due to ATC as
calculated by multiplying the section royalty rate by the number of products
sold or otherwise transferred by Authentic for each Licensed Product for the
respective quarter, as set forth in Exhibit E. In no event, shall the quarterly
royalty amount paid to ATC, be less than the section royalty rate multiplied by
the minimum number of Licensed Products for that quarter as set forth in Exhibit
E.
D. SALE OF MATERIAL.
ATC agrees to provide and sell, and Authentic agrees to exclusively accept
and purchase from ATC, the Proprietary Exciter Material "PEM required to
manufacture the SFT and picoSonic systems. Such sale and purchase costs to
Authentic shall be included as a component of the License Royalty fees defined
in Exhibit E attached hereto. Authentic agrees to issue purchase orders to ATC
in a rolling six (6) month forecast which cover at least the minimum annual
quantities as set forth in Exhibit E.
5. FORECASTS.
Exhibit E sets forth the Agreement as to Minimum Quantities of each
Licensed Product for the period from the Effective Date through the end of
calendar year 1999. These Minimum Quantities are based upon forecasts developed
by the parties in the negotiations of this Agreement. These forecasts and the
resulting Minimum Quantities may be reviewed and adjusted by the parties every
six (6) months after the Effective Date. On October 1, 1999, or at another date
in October agreed upon by the parties, the parties shall commence good faith
negotiations for the establishment of forecasts and Minimum Quantities of the
Licensed Products for the calendar year 2000. Thereafter, each year on October
1, or the next business day after October 1, if that date falls on a weekend,
the parties shall commence negotiations for the establishment of forecasts and
Minimum Quantities for the Licensed Products for the following calendar year. In
no event shall the Minimum Quantities established for any particular year be
less than 25% more than the Minimum Annualized Quantities established for the
immediately preceding year.
6. EXCLUSIVITY.
The period of exclusivity for the Field of Use, as set forth in Section
2.C. above shall continue so long as Authentic sales or transfers of the
Licensed Products equal or exceeding the Minimum Quantities as established in
Section 5 above and set forth in Exhibit E.
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7. BOOKS, RECORDS AND RIGHT OF INSPECTION.
A. BOOKS AND RECORDS.
Authentic shall keep complete books of account and records of all Licensed
Products which are manufactured, sold, distributed or otherwise disposed of, and
all transactions relating to Authentic's activities in connection with this
Agreement. Such books and records shall be kept in accordance with generally
accepted accounting principles, consistently applied, and shall be retained by
Authentic and kept available for at least three (3) years after the termination
of this Agreement for inspection, copying and/or auditing by ATC.
B. RIGHT OF INSPECTION.
ATC shall have the right, through an independent auditor selected by ATC
and at ATC's expense, to inspect and copy the books of account and records
referred to in Paragraph A of this Section 7, and to interview the employees,
agents and accountants responsible for the preparation and maintenance of such
books of account and records on behalf of Authentic for the purpose of verifying
the accuracy of such books and records and the reports provided for herein;
provided, however, that such examination shall be made during normal business
hours upon reasonable notice and not more than twice per calendar year. If, as a
result of any such examination, an error of more than 2.5% is discovered in the
amount of royalty payments or the number of units manufactured or sold, as
specified in any report specified in Section 8 below, (1) then the costs related
to such inspection shall be borne by Authentic and (2) ATC shall thereafter have
the right to conduct such examinations not more often that once per calendar
quarter.
ATC agrees not to divulge to third parties any confidential information
obtained from the books and records of Authentic as a result of such inspections
unless such information (a) was known to ATC prior to its acquisition by ATC as
a result of such inspection, (b) becomes known to ATC from sources other than
Authentic or, (c) becomes a matter of public knowledge other than by breach of
this Agreement by ATC.
8. PAYMENTS AND REPORTS.
Royalty payments shall be calculated and reported for each calendar month.
All royalty payments due under this Agreement shall be paid in United States
Dollars within 30 days of the end of each calendar quarter. Each royalty payment
shall be accompanied by a report in sufficient detail to permit confirmation of
the accuracy of the royalty payment made, including, without limitation the
quantity of Licensed Products sold or otherwise transferred during the month and
the method by which the calculation of royalties was performed. Such report
shall be in a form and format as agreed upon by the parties.
All payments by Licensee shall be made free and clear of, and without
reduction for, any and all taxes, including, without limitation, sales, use,
property, license, value added, excise, franchise, income, withholding or
similar taxes, other than such taxes which are imposed by the United States or
any political subdivision thereof based on the net income of ATC. Any such taxes
which are otherwise imposed on payments to ATC shall be the sole responsibility
of Licensee.
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9. INDEMNIFICATION.
A. INFRINGEMENT INDEMNITY.
ATC shall indemnify and hold Authentic harmless from all costs, loss,
damage and liability, except consequential damages, which may be incurred on
account of the infringement of any United States patent arising out of the sale
or use of Licensed Products, to the extent such infringement is based upon
Licensee's use of the Licensed Rights, and ATC shall, at its own expense, defend
all claims, suits or actions or infringement of patents against Authentic,
provided ATC is promptly notified of such claims, suits and actions, given all
evidence in Authentic's possession, provide reasonable assistance in and sole
control of the defense thereof and all negotiations for it's settlement or
compromise. In the event of such a charge of infringement, ATC's obligation
under this Agreement shall be fulfilled if ATC:
(i) Obtains a third party license allowing Authentic to continue
to use or sell the infringing product.
(ii) Replaces or modifies the infringing product so as to be
substantially equal but non-infringing.
In no event shall ATC's liability to Authentic for the patent infringement
be greater than the amount Authentic has paid to ATC in royalty for the
infringing product.
ATC shall not have any liability to Authentic under any provision of this
Section 9 if the Patent infringement is based upon a use of a product in a
manner for which it was not designed, or if the Licensed Product would not
infringe but for (i) Licensee-made modifications to the Licensed Product or (ii)
combinations of the Licensed Product with other technology. The above states the
entire liability of ATC with respect to infringement of patents.
B. LIABILITY INDEMNITY.
Licensee agrees to indemnify, hold harmless and defend ATC against any and
all claims, suits, losses, damages, costs, fees and expenses resulting from or
arising out of its manufacturing, use and/or sale of the Licensed Products,
including, but not limited to, any damages, losses or liabilities whatsoever
with respect to death or injury to any person and damage to any property arising
from the possession, manufacture, use, sale or administration of the Licensed
Products by Licensee.
10. WARRANTY DISCLAIMER.
ATC warrants that the PEM material furnished under this Agreement will, at
the time of initial shipment, be in conformity with ATC's proprietary
specifications and free from defects in material and workmanship. ATC will, at
it's option, repair or replace any PEM material that does not conform to this
warranty. Authentic shall within thirty (30) days notify ATC in writing of any
defects and obtain ATC's approval for return of the PEM material to ATC.
EXCEPT AS EXPRESSLY PROVIDED HEREIN, ATC HEREBY EXPRESSLY DISCLAIMS ANY
AND ALL WARRANTIES OF ANY KIND OR NATURE, WHETHER
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EXPRESS OR IMPLIED, RELATING TO THE LICENSED RIGHTS OR THE LICENSED PRODUCTS,
INCLUDING WITHOUT LIMITATION THE IMPLIED WARRANTIES OF TITLE, NONINFRINGEMENT,
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE. Nothing contained in this
Agreement shall be construed as either a warranty or representation by ATC as to
the validity or scope of any Licensed Patents. Licensee will not pass through to
its end users or any other third party the warranties made by ATC hereunder and
will expressly indicate to its customers distributors that they must look solely
to Licensee in connection with any problems, warranty claims or other matters
concerning the Licensed Products.
11. TERM AND TERMINATION,
A. TERM OF AGREEMENT.
This Agreement shall commence on the Effective Date and shall continue for
a period of five (5) years thereafter, unless terminated earlier as provided in
this Section 11. Upon termination or expiration, all licenses granted to
Licensee hereunder shall terminate, provided, however, that Licensee shall be
entitled to sell units of Licensed Products manufactured prior to termination or
expiration for a period of six months after such termination or expiration.
B. TERMINATION FOR CAUSE.
This Agreement may be terminated for cause by one party for a material
breach by the other party. Failure to make payments when due shall constitute a
material breach. Should a party believe there has been a material breach by the
other party, then that party shall send written notice setting forth the breach
to the other party. The other party shall have sixty (60) days to cure the
breach, except for breach of the duty to make payments when due, which must be
cured within fifteen (15) days. If the breach is not cured by the end of this
period, the first party may provide written notice to the other party
terminating this Agreement for cause. Said termination shall be effective ten
(10) after the issuance of such notice.
C. TERMINATION OF CONVENIENCE.
Either party may terminate this Agreement for convenience upon six (6)
month notice to the other party.
D. NOTICE.
All notices herein shall be made by registered mail or by a delivery
service which provides a delivery receipt. Said notice shall be made to
Authentic at the following address:
3-14-1- Hisamoto Takatsu-ku
Xxxxxxxx Xxxx, Xxxxxxxx-Xxx 000-0000
Xxxxx
Attention: Xxxxx 0gawa
and to ATC at the following address:
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13114 Evening Creek Drive South
San Diego, California 92128
United States of America
Attention: Xxxxxxx X. Xxxxxx
or to such address as may be designated in writing by either party.
E. SURVIVAL.
Sections 3, 4, 7, 8, 9, 10, 13 and 14 shall survive any termination or
expiration of this Agreement.
12. DISCLOSURES CONCERNING RELATIONSHIP.
Neither party shall make any disclosure concerning the substance of this
Agreement nor issue any public release or announcement concerning their
relationship, except as mutually agreed in advance or otherwise required by law.
It is agreed that permission to release information will not be unreasonably
withheld by either ATC or Authentic.
13. APPLICABLE LAW.
This Agreement is made in accordance with and shall be governed and
construed in accordance with the laws of the State of California, without regard
to conflicts of laws rules. All disputes arising hereunder shall be adjudicated
in the state and federal courts having jurisdiction over disputes arising in San
Diego County, California, and Licensee hereby consents to the jurisdiction of
such courts. The official language of this Agreement is English.
14. LIMITATION OF LIABILITY.
IN NO EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER FOR ANY LOST PROFITS,
LOST SAVINGS, OR ANY OTHER INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES, EVEN
IF SUCH PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, ARISING OUT
OF OR IN CONNECTION WITH THIS AGREEMENT.
IN NO EVENT SHALL ATC'S TOTAL LIABILITY TO LICENSEE HEREUNDER EXCEED THE
AMOUNT PAID BY LICENSEE TO ATC UNDER THIS AGREEMENT.
15. WAIVER.
No waiver of any provision of this Agreement or any rights or obligations
of either party hereunder shall be affective, except pursuant to a written
instrument signed by the party or parties waiving compliance and any such
written waiver shall be effective only in the specific instance and for the
specific purpose stated in such writing.
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16. AMENDMENTS IN WRITING.
Any amendments or additions to this Agreement shall not be valid unless
executed in writing by duly authorized representatives of the panics hereto.
17. ASSIGNMENT.
This Agreement may not voluntarily assigned in whole or in part by either
party, without the prior written consent of the other party, except upon merger,
consolidation or other transfer of all or substantially all of the assets of
either party. Either party may, however, assign this Agreement to its wholly or
majority owned subsidiaries without the prior written consent of the other, as
long as transferor remains liable hereunder.
18. SEVERABILITY.
Whenever possible, each provision of the Agreement will be interpreted in
such manner as to be effective and valid under applicable law, but if any
provision of the Agreement is held to be prohibited by or invalid under
applicable law, such provision will be ineffective only to the extent of such
prohibition or invalidity, without invalidating the remainder of the Agreement.
19. EXPORT CONTROL.
Licensee acknowledge that the manufacture and sale of the Licensed
Products is subject to the export control laws of the United States of America,
including the U.S. Bureau of Export Administration regulations, as amended, and
hereby agrees to obey any and all such laws. Licensee agree not to take any
actions that would cause either party to violate the U.S. Foreign Corrupt
Practices Act of 1977, as amended.
20. ENTIRE AGREEMENT.
This Agreement constitutes the entire understanding and agreement between
the parties with respect to the transactions contemplated herein and supersedes
any and all prior oral or written communications with respect to the subject
matter herein. This Section does not apply to the Proprietary Information
Exchanged Agreement entered into by the parties on April 22, 1998 which
agreement remains in full force and effect.
IN WITNESS WHEREOF, the parties have signed this Agreement as of the date
first written above.
AUTHENTIC, LTD.: AMERICAN TECHNOLOGY CORPORATION:
By: /s/ XXXXXXXX XXXXX By: /s/ XXXX X. XXXXXXXX
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Xxxxxxxx Xxxxx Xxxx X. Xxxxxxxx
Title: President Title: Chairman/Chief Executive Officer
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EXHIBIT A
LICENSED PATENTS
AMERICAN TECHNOLOGY CORPORATION
INTELLECTUAL PROPERTY FOR ATC STRATIFIED FIELD TRANSDUCER CONFIDENTIAL
[...***...]
* CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT B
SPECIFICATIONS
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EXHIBIT C
LICENSED TRADEMARKS
Stratified Field Technology(TM)
SFT(TM)
picoSonic(TM)
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EXHIBIT D
LICENSED PRODUCTS
An Audio sound reproduction device, sound panel and/or transducer "unit" for use
in NEC-PC [...***...].
Such sound reproduction device, panel and/or transducer shall be limited only to
the following dimensions:
Unique single Device or Panel or Transducer sound reproduction surface
area of up to [...***...].
* CONFIDENTIAL TREATMENT REQUESTED
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EXHIBIT E
ROYALTY CALCULATION AND RATE
Each Licensed Product unit, as defined above, containing ATC SFT and picoSonic
technologies as defined herein shall bear a [...***...] for the period of this
Agreement.
ATC and Authentic shall meet quarterly and agree upon the minimum number of
units to be subject to Royalty payments during the six (6) months period
following the date of the meeting. During the first six (6) months following the
Effective Date of the Agreement, Authentic agrees to a minimum of [...***...] of
Licensed Product to be supplied under this Agreement to it's Field of Use.
* CONFIDENTIAL TREATMENT REQUESTED
