EX-10.1
2
ex101.htm
EXHIBIT 10.1
Exhibit
10.1
AMENDMENT
# 2
to
the
NONEXCLUSIVE
FIELD OF USE LICENSE AGREEMENT
dated
March 29, 1999 (the "License Agreement")
by
and
between
XXXXXXX
KODAK COMPANY, on behalf of itself and its subsidiaries, ("Kodak")
and
eMAGIN
CORPORATION, formerly FED Corporation, ("eMagin")
This
Amendment # 2 shall amend and modify, to the extent of any inconsistency, the
provisions
of the
above-identified License Agreement, as follows:
WHEREAS
eMagin has acquired under the License Agreement certain licenses and other
rights relating to Kodak's patents and know-how related to organic
light-emitting diode (`OLED") technology and desires to eliminate and delay
certain of its current and future license payments to Kodak under the License
Agreement in order to have financial stability and to continue and grow its
business;
WHEREAS
eMagin has acquired certain of its own patents in OLED technology and one of
those patents, U.S. Patent 6,337,492 BI, entitled "Serially-Connected Organic
Light Emitting Diode Stack Having Conductors Sandwiching Each Light Emitting
Layer" issued January 8, 2002 is of interest to Kodak, and this Amendment #
2 to
the License Agreement is intended to grant to Kodak an exclusive license, and
sublicensing rights, and certain other rights under such patent subject to
and
in accordance with the terms, conditions and limitations set forth in this
Amendment # 2; and
WHEREAS
eMagin wishes to retain a nonexclusive license under the Licensed Patent
(as
hereinafter defined) conveyed to Kodak for the Field of Use (as defined in
the
License Agreement) and Kodak is agreeable to eMagin retaining such license
under
the Licensed Patent for such Field of Use subject to and in accordance with
the
terms, conditions and limitations set forth in this Amendment # 2.
In
consideration of these premises and of the mutual promises set forth below,
the
Parties agree as follows:
| 1.0 |
Add
the following definition to the License Agreement in Section 2.0
on
DEFINTIONS:
|
| 2.14. |
"Licensed
Patent"
means the invention disclosures, if available, patent applications
and
patents (including letters patent, industrial designs, process patents
and
inventor's certificates) related to U.S. Patent 6,337,492 BI, entitled
"Serially-Connected Organic Light Emitting Diode Stack Having Conductors
Sandwiching Each Light Emitting Layer" issued January 8, 2002 and
any
inventions disclosed therein and all patents and applications claiming
priority thereto
or sharing priority therewith, and any and all rights to any of the
foregoing
anywhere in the world, including any provisional applications,
substitutions, extensions, supplementary patent certificates, reissues,
reexaminations, renewals, divisions, continuations in part or in
whole,
continued prosecution applications, requests for continued examination,
and other similar filings or notices provided for under the laws
of the
United States or of any other
country.
|
| 2.0 |
Add
the following license grant to Kodak in the License Agreement in
Section
3.0 on
LICENSE GRANTS:
|
| 3.4 |
Grant
by eMagin.
Subject to the terms of this Agreement, eMagin hereby grants to Kodak
and
its Affiliates a fully paid-up, irrevocable, exclusive, world-wide,
license, including the right to sublicense third parties, under the
Licensed Patent to develop or have developed, make or have made,
use,
offer
to
sell, sell and import any tool, product, method, procedure, process
or
other subject matter whose manufacture, use, practice, or sale would
constitute, but for the license granted to Kodak pursuant to the
License
Agreement as amended by this Amendment # 2, an infringement of any
claim
of the Licensed Patent, including spare parts and components for
use in
displays inside or outside the Field of Use. The term of the foregoing
exclusive license shall be for the life of the Licensed Patent. In
connection with the foregoing exclusive license, eMagin hereby confirms
that under Section 18.6.3 of the License Agreement, eMagin has the
full
|
right
and
power to convey such exclusive license to Kodak. Notwithstanding that eMagin
has
granted the foregoing exclusive license to Kodak under the Licensed Patent,
Kodak acknowledges and agrees that eMagin shall retain a nonexclusive,
worldwide
license under the Licensed Patent in and only in the Field of Use, including
a
nonexclusive right to license third parties under the Licensed Patent,
in and
only in the Field of Use. Each party hereby acknowledges and agrees that
neither
party shall have any obligation to account for or share any royalties or
other
consideration that may be received in connection with the grant of any
sublicenses under their respective sublicensing rights under the Licensed
Patent.
| 3.0 |
Add
the following elimination and delay with respect to the payments
eMagin
owes or will
owe to Kodak under the License Agreement in Section 4.0 on ROYALTIES
AND
PAYMENTS :
|
| 4.8 |
Elimination
and Delay in Royalties to Kodak.
In
consideration for the rights granted to Kodak hereunder, eMagin
shall:
|
(a) |
owe
to Kodak no royalty payments under Section 4.2 (a) - (c) of the
License
Agreement for the first six (6) months (from January 1 through
June 30) of calendar year 2007; and
|
(b) |
be
granted a delay, without any interest, until December 1, 2007, of
the
remaining balance of Seventy Six Thousand Nine Hundred Seventy One
U.S.
Dollars ($76,971) that eMagin currently owes Kodak under Section
4.2 (a) -
(c) of the License Agreement on its royalty payment for the fourth
(4`h)
quarter of calendar year 2006, at which time such remaining balance
shall
be fully due and payable;
|
(c) |
be
granted a delay, without any interest, until December 1, 2007, of
the
annual minimum royalty payment of One Hundred Twenty Five Thousand
U.S.
Dollars ($125,000) that eMagin currently owes Kodak under Section
4.2 (d)
of the License Agreement as its annual minimum royalty payment due
January
1, 2007 for calendar year 2007, at which time such annual minimum
royalty
payment for 2007 shall be fully due and payable;
and
|
(d) |
be
granted a delay, without any interest, until
December 1, 2008 of the annual
minimum royalty payment of One Hundred Twenty Five Thousand
U.S. Dollars ($125,000) that eMagin will owe Kodak under Section
4.2 (d)
of the License Agreement as its annual minimum royalty payment
due January
1, 2008 for calendar year 2008, at which
time
such annual minimum royalty payment for 2008 shall be fully due
and
payable.
|
| 4.0 |
Add
the following provisions to the License Agreement with respect to
other
matters
relating to the Licensed Patent:
|
| 1. |
As
of the Effective Date of this Amendment #2 and with respect to the
Licensed Patent, eMagin hereby authorizes and designates Kodak to
have
full power and control and to have the sole authority, at Kodak's
sole
discretion, to prosecute Licensed Patent (including without limitation
prosecution of any patent interference proceeding or other proceeding
in
the U.S. Patent and Trademark Office involving the Licensed Patent),
maintain (or abandon as the case may be) the Licensed Patent and
enforce
in any country with respect to any and all third parties the Licensed
Patent. Kodak shall be responsible for the reasonable expenses relating
to
each of the foregoing actions. In this connection, however, as of
the
effective date of this Amendment #2, eMagin hereby acknowledges and
agrees
to fully cooperate and assist Kodak in undertaking any of the foregoing
actions, including without limitation: (a) promptly providing Kodak
with
full and complete access to all documentation, and information in
the
possession of eMagin and its counsel relating to prosecuting, maintaining
and enforcing the Licensed Patent in any patent office or in any
other
administrative or judicial proceeding
in any country, including without Iimitation, any patent office
actions,
maintenance fee payment information and other patent office,
administrative or judicial
communications and notices relating to the Licensed Patent; (b)
initiating,
at
Kodak's request and at its expense, any enforcement action against
any
third party as to the Licensed Patent; and (c) authorizing and signing
any
documents or power of attorney and taking any other actions requested
by
Kodak to evidence and
certify as to Kodak's rights to prosecute, maintain and enforce the
Licensed
Patent.
|
| 2. |
WITH
RESPECT TO THE PROSECUTION, MAINTENANCE OR ENFORCEMENT OF THE LICENSED
PATENT AT ANY TIME, WHETHER PRIOR TO, ON OR FOLLOWING THE EFFECTIVE
DATE
OF THIS AMENDMENT #2, KODAK SHALL HAVE NO LIABILITY TO EMAGIN OR
ANY OTHER
ENTITY RECEIVING ANY INTEREST IN THE LICENSED PATENT FROM EMAGIN,
FOR ANY
ACTION OR INACTION TAKEN OR NOT TAKEN BY KODAK. THIS LIMITATION OF
LIABILITY INCLUDES BUT IS NOT LIMITED TO INITIATING ANY ENFORCEMENT
ACTIONS, AND/OR MAKING OR PARTICIPATING IN ANY EXAMINATIONS, AMENDMENTS,
RESPONSES, APPEALS, ARGUMENTS, PAYMENTS, MAINTENANCE FEES OR ANNUITIES
RELATING TO ANY OF THE INTELLECTUAL PROPERTY RIGHTS GRANTED TO KODAK
UNDER
THIS AMENDMENT # 2.
|
All
other
terms and conditions of the above-referenced License Agreement shall remain
in
full
force
and effect.
AMENDED
AND AGREED TO EFFECTIVE THIS 14 DAY
OF
MAY, 2007.
XXXXXXX
KODAK COMPANY
| | |
EMAGIN
CORPORATION (formerly FED
CORPORATION
|
/s/ Xxxxx X.
Quatena | | | /s/ K.
C.
Park |
Signature | | |
Signature |
| | |
|
Xxxxx X.
Quatena
Printed
Name
| | | K. C. Park
Printed
Name
|
| | | |
Title:
Vice President | | | Title:
CEO/President |