CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
Exhibit 10.11
LICENSE AGREEMENT
This Agreement made and entered into as of the 24th day of
January, 2000 by and between DISKXPRESS US, INC., a corporation duly organized
and existing under the laws of the state of Delaware, having its registered
office at 00 Xxx Xxxxxxx Xxxx, Xxxxx, Xxxxxxxx 00000 X.X.X. (hereinafter
referred to as "DISKXPRESS"); and IQROM Solutions, Inc., a corporation duly
organized and existing under the laws of the State of Nevada, having its
principal office at 0000 Xxxxxx Xxxx Xxxxx, Xxxxx 000-X, Xxxxxxx, Xxxxxxx
(hereinafter referred to as "IQROM"); and XXXXXX COMPANY OF JAPAN, LIMITED, a
corporation duly organized and existing under the laws of Japan, having its
principal office at 12, 3-chome, Xxxxxx-xxx, Xxxxxxxx-xx, Xxxxxxxx 000, Xxxxx
(hereinafter referred to as "JVC").
WITNESSETH
WHEREAS, DISKXPRESS is the owner of U.S. Patent Nos. 5,982,736
and 6,078,557, and any and all of reissues, divisions, continuations and
continuations-in-part relating to certain unique card-type of optically readable
and/or recordable media;
WHEREAS, DISKXPRESS has, pursuant to a Patent License
Agreement dated April 7, 2000, granted to IQROM an exclusive right and license
under the Licensed DISKXPRESS Patents, as defined below, to use, market,
distribute, sell and import optically readable and/or recordable media;
WHEREAS, DISKXPRESS has, pursuant to a Supply Agreement dated
April 7, 2000, agreed to exclusively supply optically readable CD cards to IQROM
manufactured by DISKXPRESS;
WHEREAS, JVC has been engaged in, among other things,
manufacture and sale of certain card-type of optically readable and/or
recordable media, and have a plan to apply such patents owned or controlled by
DISKXPRESS to such media; and
WHEREAS, JVC is the owner of Japanese Patent No.2,580,820,
U.S. Patent Nos. 5,204,852, and any and all of reissues, divisions,
continuations, continuations-in-part and foreign counterparts thereof relating
to card type recordable optical media with a ROM portion;
WHEREAS, JVC is desirous of obtaining from DISKXPRESS and
DISKXPRESS and IQROM are willing to grant a license and right to make, sell and
otherwise dispose of the card type optically readable and/or recordable media
using such patents.
WHEREAS, DISKXPRESS and IQROM are desirous of obtaining from
JVC and JVC is willing to grant a license and right to make, use, sell and
otherwise dispose of the card type optically recoradable optical media with a
ROM portion;
NOW, THEREFORE, the parties hereto agree as follows:
Article 1. Definitions:
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
For the purpose of this Agreement, the following terms shall have respective
meanings set forth below:
(1) "Licensed DISKXPRESS Patents" shall mean U.S. Patent Nos. 5,982,736 and
6,078,557, and any and all of reissues, divisions, continuations and
continuations-in-part owned or controlled by DISKXPRESS, or to which
DISKXPRESS has sufficient rights to perform the obligations set forth
herein.
(2) "Licensed JVC Patents" shall mean Japanese Patent No.2,580,820, U.S.
Patent Nos. 5,204,852,and any and all reissues, division,
continuations, continuations-in-part and foreign counterparts owned or
controlled by JVC.
(3) "Licensed ROM Product" shall mean the card type read-only optical media
covered by the Licensed DISKXPRESS Patents.
(4) "Licensed R Product" shall mean the card type recordable optical media
without ROM portion covered by the Licensed DISKXPRESS Patents.
(5) "Licensed Branded R Product" shall mean a Licensed R Product bearing
JVC's brand names.
(6) "Licensed Hybrid Product" shall mean the card type recordable optical
media with ROM portion covered by the Licensed DISKXPRESS Patents and
Licensed JVC Patents.
(7) "Licensed Product" shall mean Licensed ROM Product, Licensed R Product,
Licensed Branded R Product and Licensed Hybrid Product.
(8) "Affiliates" shall mean any corporation or other kind of business
organization, in which either party now or hereafter has a direct or
indirect ownership or control.
Article 2. Grant of License
[Confidential Information Filed Separately with the Securities
and Exchange Commission]
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
(6) JVC grants to DISKXPRESS and IQROM a non-exclusive, non-transferable
and indivisible license and right to manufacture, have manufactured,
use, sell or otherwise dispose of Licensed Hybrid Products covered by
the Licensed JVC Patents.
Confidential Information filed separately with the Securities and
Exchange Commission].
(8) IQROM acknowledges the rights and license granted herein to JVC in
consideration for the licenses granted to DISKXPRESS by JVC, pursuant
to the Licensed JVC Patents.
[Confidential Information filed separately with the Securities and
Exchange Commission].
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
[Confidential Information filed separately with the Securities and
Exchange Commission].
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
[Confidential Information filed separately with the Securities and Exchange
Commission].
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
Article 12. Assignment
Neither this Agreement nor any licenses or rights hereunder granted, in whole or
in part, shall be assignable or otherwise transferable by a party without the
prior written consent of the other party. Any attempted assignment or transfer
of this Agreement or any of the rights or licenses granted hereunder without
such prior written consent shall be null and void. Notwithstanding the
foregoing, no consented-to assignment or transfer shall be effective unless such
third party transferee agrees in writing to be bound by the transferor's
obligations hereunder.
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
Article 13. Notices
All notices, requests, demands, instructions, consents or other communications
required or permitted to be given under this Agreement shall be in writing and
shall be deemed to have been duly given if (i) delivered personally, (ii)
transmitted by prepaid telegram, telex or facsimile, (iii) mailed postage
prepaid by certified mail, return receipt requests, (iv) sent by a nationally
recognized express courier service, postage or delivery charges prepaid, at the
address hereinafter specified, or to such other address as the parties may
advise each other in writing from time to time. Any notice shall be addressed as
follows:
As to DISKXPRESS:
With a copy to
Xx. Xxx Xxxx Xxxxxx X. Xxxxxxxxx, Esq.
CEO Stroock & Stroock & Xxxxx LLP
0000 Xxxxxx Xxxxxx, Xxxxx Floor 000 Xxxxxx Xxxx
Xxxxxxxxxxxx, XX 00000 0000 Xxx Xxxx, Xxx Xxxx 00000
As to IQROM
With a copy to
Xx. Xxxxx Xxxxxxx Xxxxxx X. Xxxxxxxxx, Esq.
0000 Xxxxxx Xxxx Xxxxx, Xxxxx 000-X, Xxxxxxx & Stroock & Xxxxx LLP
Xxxxxxx, Xxxxxxx 00000 000 Xxxxxx Xxxx
Xxx Xxxx, Xxx Xxxx 00000
As to JVC
Mr. Tokio Nohara
Associate Director
General Manager of
Legal and Intellectual Property Dept.
12, 3-chrome, Xxxxxx-xxx,
Xxxxxxx-xx, Xxxxxxxx 000, Xxxxx
Article 14. Force Majeure
Neither party shall be liable for failure to perform its part of this Agreement
during the period when such failure is due to Acts of God, fire, flood, war and
other similar causes beyond the control of the parties.
Article 15. Applicable Law and Jurisdiction
This Agreement shall be governed by and interpreted under the laws of the State
of New York. The courts of the State of New York shall have jurisdiction over
all disputes which may arise with respect to the execution, interpretation and
performance of this Agreement.
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement signed in
tripricate copies, each party keeping one copy.
On: 24 January 2001 DISKXPRESS
------------------------------------ DISKXPRESS US, INC.
At: Bourton on the Water
------------------------------------
/s/ Xxx Xxxx
-----------------------------------
On: Jan. 19, 2001 JVC
------------------------------------ XXXXXX COMPANY OF JAPAN, LIMITED
At: Yokohama, Japan
------------------------------------
/s/ Xxxxxx Xxxxxxxxx
-----------------------------------
Xxxxxx Xxxxxxxxx, Managing Director
On: 24 January 2001 IQROM
------------------------------------ IQROM SOLUTIONS, INC.
At: Bourton on the Water
------------------------------------
/s/ Xxx Xxxx
-----------------------------------
CONFIDENTIAL TREATMENT REQUESTED BY IQROM COMMUNICATIONS, INC.
