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CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS,
HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
EXHIBIT 10.16
AMENDMENT A TO
PATENT LICENSE AGREEMENT (INTERNATIONAL)
THIS AMENDMENT A TO PATENT LICENSE AGREEMENT (INTERNATIONAL) ("AMENDMENT
A") is made and entered into effective as of June 16, 1997 (the "Amendment A
Date"), by and between CALIPER TECHNOLOGIES CORP., a Delaware corporation having
its principal place of business at 0000 Xxxxxxxxxx Xxxxxx, Xxxx Xxxx, Xxxxxxxxxx
00000 ("Licensee"), and LOCKHEED XXXXXX ENERGY RESEARCH CORPORATION ("LMER"), a
Delaware corporation whose address for notices is Xxxx Xxxxxx Xxx 0000, Xxx
Xxxxx, Xxxxxxxxx 00000-0000. Capitalized terms used in this Amendment A that are
not otherwise defined herein shall have the same meanings as such terms arc
defined in the Prior Agreement (as defined below).
RECITALS
A. Licensee and LOCKHEED XXXXXX ENERGY SYSTEMS, INC. ("Energy Systems")
entered into a Patent License Agreement dated September 1, 1995 (the "Prior
Agreement"), under which Energy Systems granted to Licensee a sole commercial
license outside the United States to manufacture, use, sell, or offer for sale
Products.
B. Energy Systems, by virtue of an assignment dated February 14, 1997, did
assign its undivided right, title, and interest in the Proprietary Rights to
LMER.
C. The parties desire to amend the terms of the Prior Agreement to replace
Energy Systems with LMER as licensor, to establish royalty rates on Products as
contemplated in Exhibit B1 of the Prior Agreement; to alter the terms of
Sublicense Royalties under Exhibit B2 of the Prior Agreement; to revise Section
6 pertaining to patent prosecution and reimbursement of patent costs; and to
make one correction. The Prior Agreement, as amended by this Amendment A, shall
constitute the "Agreement."
NOW, THEREFORE, the parties agree as follows:
I. AMENDMENT OF THE PRIOR AGREEMENT.
The parties hereby agree to amend the terms of the Prior Agreement as of
the Amendment A Date as provided below.
1.1 ROYALTIES. The second paragraph of Exhibit B 1 of the Prior
Agreement is hereby deleted and shall be replaced by the following provisions:
"Licensee shall pay to LMER earned royalties on Net Sales of
Products in the following amounts:
(a) Licensee shall pay to LMER a [*] royalty on Net Sales of
Chips; provided, however that if Licensee must pay royalties to one or
more third parties on sales of
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Chips ("Third Party Payments"), then the royalty to LMER on Chips shall be
reduced by [*] of the Third Party Payments, but not lower than a minimum
of [*] of Net Sales of Chips in any quarter. "Chips" shall mean chips
consisting of a glass or polymer base with reservoirs, microchannels or
similar features and a glass or polymer cover, which chips are covered by
one or more Claims of the Proprietary Rights licensed hereunder.
(b) Licensee shall pay to LMER a [*] royalty on Net Sales of
Products other than Chips.
1.2 SUBLICENSE ROYALTIES. Exhibit B2 of the Prior Agreement is
hereby amended to delete the last sentence of the first paragraph, so such
paragraph will read in its entirety as follows:
"In order to maximize the commercialization of the "Products"
and LMER's overall income from this Agreement, Licensee may grant
sublicenses to third parties under which Licensee agrees to pay LMER a
"Sublicense Royalty" of [*] percent [*] of the total "Sublicensing
Revenue" owed Licensee under said sublicenses."
1.3 PATENT PROSECUTION AND COSTS. Article 6 of the Prior Agreement
is hereby amended to read in its entirety as follows:
"6. PATENT PROSECUTION.
6.1 LMER shall, during the term of this Agreement, seek
patent protection for the Proprietary Rights listed in Exhibit A. The
securing of patent protection for all Proprietary Rights shall be the sole
responsibility and at the sole discretion of LMER; provided, however that
(i) Licensee shall have a reasonable opportunity to review and comment on
patent filings in advance and to consult and cooperate with LMER in
securing patent protection, and (ii) LMER will timely keep Licensee
advised of the status of such prosecution and maintenance by providing
Licensee with copies of all official communications, amendments and
responses with respect to the patent applications and patents contained in
the Proprietary Rights. Licensee may request and LMER, at its sole
discretion, may seek patent extension for patents licensed under the
Proprietary Rights listed in Exhibit A, under such applicable laws and
regulations where such patent extension rights are available currently or
are available in the future. In the event that LMER elects to abandon a
patent application included in the Proprietary Rights or elects not to
seek an extension of a patent included in the Proprietary Rights, it will
so notify Licensee at least ninety (90) days prior to any applicable
deadline. Upon receipt of such notice, and to the extent allowed by the
LMER Prime Contract with DOE, Licensee may, following written notice to
LMER, seek, at its own expense, a waiver from DOE to continue the
prosecution of such application or extend such application at Licensee's
expense.
6.2 [*], relating to the securing of patent protection
for the Proprietary Rights after the Amendment A Date ("Patent Costs")
shall be the responsibility of Licensee. LMER shall xxxx Licensee for [*],
and Licensee shall [*] LMER within thirty (30) days of receipt of the
invoice."
1.4 CORRECTIONS.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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In the Prior Agreement, replace every occurrence of the term "Lockheed
Xxxxxx Energy Systems, Inc." with the term "Lockheed Xxxxxx Energy Research
Corporation".
In the Prior Agreement, replace every occurrence of the term "Energy
Systems, Inc." with the term "LMER".
In the Prior Agreement, replace every occurrence of the term
"DE-AC05-84OR21400" with the term "DE-AC05-96OR22464."
In the first line of Section 7.3 of the Prior Agreement, the cross
reference to Section 6.2 is hereby amended to refer to Section 7.2 instead.
II. MISCELLANEOUS.
2.1 NO OTHER CHANGES. Except as expressly provided in this Amendment
A, all terms of the Prior Agreement shall remain in full force and effect.
2.2 COUNTERPARTS. This Amendment A may be executed in two or more
counterparts, each of which shall be deemed an original, but both of which
together shall constitute one and the same instrument.
IN WITNESS WHEREOF, the parties have executed this Amendment A in
duplicate originals by their authorized officers as of the date and year first
above written.
LOCKHEED XXXXXX ENERGY RESEARCH CORPORATION
By: /s/ Xxxxxxx X. Xxxxxx
-------------------------------------
Name:
-------------------------------------
Title:
-------------------------------------
Date: 6/16/97
-------------------------------------
CALIPER TECHNOLOGIES CORPORATION
By: /s/ Xxxxxxx X. Xxxxx
-------------------------------------
Name: Xxxxxxx X. Xxxxx
-------------------------------------
Title: VP Science & Technology
-------------------------------------
Date: 6-23-97
-------------------------------------
LOCKHEED XXXXXX ENERGY SYSTEMS,
INCORPORATION
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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By: /s/ Xxxxxxx X. Xxxxxx
-------------------------------------
Name:
-------------------------------------
Title:
-------------------------------------
Date: 6/16/97
-------------------------------------
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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SOLE COMMERCIAL PATENT LICENSE AGREEMENT
THIS AGREEMENT, made effective on the 1st day of September, 1995, by and
between LOCKHEED XXXXXX ENERGY SYSTEMS, INC., (hereinafter "Energy Systems"), a
corporation organized and existing under the laws of the State of Delaware and
whose address for notices is Xxxx Xxxxxx Xxx 0000, Xxx Xxxxx, Xxxxxxxxx
00000-0000, and CALIPER TECHNOLOGIES, CORP. (hereinafter "Licensee"), a
corporation organized and existing under the laws of the State of Delaware and
whose address for notices is 0000 Xxxxxxxx Xxxxxx, Xxxxx 000, Xx Xxxxx,
Xxxxxxxxxx 00000. Energy Systems and Licensee are herein after referred to as
the "Party" or "Parties."
WITNESS:
A. Energy Systems, pursuant to Xxxxxxxx Xx. XX-XX00-00XX00000 (hereinafter
"Prime Contract") with the United States Government as represented by the
Department of Energy (hereinafter "DOE") has developed and/or obtained rights to
Proprietary Rights relating to Products, as defined below, subject to the DOE
non-exclusive, nontransferable, irrevocable, paid-up license for the United
States Government and certain march-in rights and any other conditions of
waivers granted by the DOE; and
B. Licensee desires to obtain rights, outside the United States, under
Energy Systems' Proprietary Rights.
C. This Agreement supersedes the patent license agreement between Energy
Systems and Caliper Microanalytic Systems, Inc., effective February 14, 1995,
and any obligations contained in said agreement.
THEREFORE, in consideration of the foregoing premises, covenants and
agreements contained herein, the Parties hereto agree to be bound as follows:
1. DEFINITIONS
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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1.1 "Affiliate" shall mean any entity which controls, is controlled by or is
under common control with Licensee, where "control" means beneficial ownership
of more than fifty percent (50%) of the outstanding shares or securities.
1.2 "Proprietary Rights" shall mean all inventions or discoveries covered by the
claims and specifications in the Energy Systems PCT filing listed in Exhibit A
attached hereto and hereby incorporated into this Agreement by reference and any
and all patents issuing on any such patent application, including, without
limitation, all continuations, continuations-in-part, divisions, reissues,
reexaminations and temporal extensions of any of the foregoing.
1.3 "Products" shall mean any and all products manufactured, used, sold or
transferred by Licensee, or manufactured, used or sold by Licensee's Affiliates
or "Sublicensee(s)," covered by one or more Claims, including Dominant Claims as
defined below, of the Proprietary Rights licensed hereunder.
1.4 "Dominant Claims" shall mean claims [*] of the PCT filing set forth in
Exhibit A and included in the Proprietary Rights, pending on the date of
execution of this Agreement.
1.5 "Other Field" shall mean the field of "Analysis of Nucleic Acids for
Diagnostic Applications and Non-Electrophoretic Means of Gene Discovery."
1.6 "Net Sales" shall mean the total amounts received by Licensee and its
Affiliates for the commercial sale of Products by Licensee or its Affiliates,
less allowances for returns of Products, discounts, commissions, allowances
actually granted (including any allowances for bad debt), transportation and
delivery charges, including insurance premiums, and excise or other taxes on
Products. Net Sales in the case of Products used or transferred by Licensee
shall mean the fair market value of Products as if they were sold to an
unrelated third party in similar quantities. It is the Parties' intention that
"Net Sales" will not include any transfer of Products to any Affiliate, unless
the Affiliate is the end user of such Products.
With respect to any product that is developed and sold by Licensee or its
Affiliates and is comprised in part of one or more Products and of one or more
other products or parts which could be sold separately (a "Combination
Product"), Net Sales shall be determined by
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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multiplying the amounts received by Licensee or its Affiliates attributable to
Combination Products by a fraction, the numerator of which is the fair market
value of the Product included in the Combination Product, and the denominator of
which is the sum of the fair market value of such Product and the fair market
value of the products or parts which are not Products. Whenever possible, the
fair market value of the Product included in the Combination Product will be the
market price at which such Product is sold on a stand-alone basis; provided that
fair market value shall be determined reasonably and in good faith by Licensee
in the event that no market price is available.
1.7 "New Developments" shall mean any improvements based on the Proprietary
Rights, and any inventions or discoveries in the field of miniaturization of
instrumentation for analysis and synthesis by the inventor of the Proprietary
Rights, which are designed to be used in combination with Products based on the
Proprietary Rights herein. These do not include improvements, inventions or
discoveries for which the title to same may be elected by another company under
existing Energy Systems policies, unless such rights revert to Energy Systems
and are applicable to the definition of "New Developments" as defined in this
paragraph.
1.8 "Sublicensee" shall mean third parties (other than Affiliates) to whom
Licensee has granted a sublicense.
1.9 "Sublicensing Revenue" shall mean the amount actually paid to Licensee by a
Sublicensee, in consideration for the sublicense, including any license fees,
royalties and milestone payments. Sublicensing Revenue shall not mean research
and development support payments (other than in consideration for the
Proprietary Rights) and any payments to Licensee by a Sublicensee to compensate
Licensee for the grant of rights to any other intellectual property of Licensee.
1.10 "Claim" shall mean a pending claim of the patent application within the
Proprietary Rights or a claim of an issued and unexpired patent within the
Proprietary Rights that has not
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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been held unenforceable, unpatentable, or invalid by a decision of a court of
competent jurisdiction, and that has not been admitted to be invalid or
unenforceable through reissue, disclaimer or otherwise.
2. GRANTS
2.1 Subject to the terms and conditions of this Agreement, Energy Systems hereby
grants to Licensee and its Affiliates, outside the United States, the exclusive
(non-governmental) commercial right and license to manufacture, use, sell or
offer for sale Products, with the right to grant sublicenses in all fields,
excluding the "Other Field" as defined herein under the same non-financial terms
and conditions as this license for a Sublicense Royalty as provided in Exhibit
B2 hereof. Licensee agrees to provide Energy Systems a copy of each sublicense
granted prior to the effective date thereof.
2.2 For a period of [*] from the time Energy Systems notifies Licensee, in
writing, of any New Development (as limited by the definition in 1.7 above),
Licensee shall have the right of first refusal to negotiate in good faith, with
Energy Systems, the same right and license for any New Development. During this
period, the Parties will exclusively negotiate with each other. If the Parties
are unable to reach agreement during this period, Energy Systems will have the
right, during an additional [*] period, to execute a license with a third party
or parties, on terms which are no more favorable than those last offered to
Licensee by Energy Systems during the initial period. If a license agreement is
not reached with a third party or parties by Energy Systems for any New
Development, Energy Systems agrees to offer Licensee more favorable terms than
those initially offered.
2.3 In the event that [*]. Energy Systems shall so notify Licensee, and Licensee
shall have the right to [*], upon payment to Energy Systems of an amount equal
to [*], and, by amendment of Exhibit B, the [*] agreed to in this Agreement by
Licensee. Such [*] shall occur to the extent that the [*].
2.4 Energy Systems hereby agrees not to grant to any other party right and
license to Proprietary Rights in accordance with the three above paragraphs, as
long as Licensee abides
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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by the terms and conditions of this Agreement, unless required to so grant such
right and license in accordance with Federal Statutory or Regulatory enactments
conditioning the waiver of rights to Energy Systems by the DOE, particularly as
set forth in 41 CFR 9-9.109-(6)i; 10 CFR Part 781; or 37 CFR Part 404.
2.5 Licensee agrees that any Products for use or sale in the United States shall
be manufactured substantially in the United States.
2.6 Licensee agrees to affix appropriate markings of the applicable Energy
Systems Proprietary Rights (and the fact that Energy Systems was the source of
these rights) upon or in association with Licensee's Products and Licensee
agrees to use its best efforts to follow any guidance from Energy Systems
concerning such markings.
2.7 Should Licensee fail to meet the developmental commitments described in
Exhibit C, Energy Systems shall have the option, to be exercised on [*] written
notice to Licensee at any time during the [*] period following the date that
such developmental commitment was to be achieved, to convert this license grant
to a non-exclusive license. Energy Systems agrees to negotiate with Licensee, in
good faith, a lower royalty rate for such non-exclusive license, than the rate
contained in Exhibit B. Furthermore, such royalty rate shall [*].
3. ROYALTIES AND COMMERCIALIZATION PLAN
3.1 In consideration of the right and license granted herein, Licensee agrees to
the provisions of Exhibit B and Exhibit C attached hereto and hereby
incorporated herein by reference.
3.2 No royalties shall be owing on any Products produced for or under any
Federal governmental agency contract pursuant to the DOE non-exclusive license
for Federal governmental purposes but only to the extent that Licensee can show
that the Federal government received a discount on Product sales which discount
is equivalent to or greater than the amount of any such royalty that would
otherwise be due. Any sales for Federal governmental purposes shall be reported
under the Records and Reports Section herein below by providing: (a) a Federal
government contract number; (b) identification of the
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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Federal government agency; and (c) a description as to how the benefit of the
royalty-free sale was passed onto the Federal government.
3.3 The royalty provisions of Exhibit B shall be [*].
3.4 Upon termination of this Agreement for any reason whatsoever, any royalties
that remain unpaid, and any pro-rata portion that is due Energy Systems per
Article 10.6, shall be properly reported and paid to Energy Systems within
thirty (30) days of any such termination.
3.5 In the event Licensee is required to withhold taxes under the laws of any
foreign country for the account of Energy Systems, then such payments will be
made by Licensee on behalf of Energy Systems to the appropriate governmental
authority, and Licensee shall furnish proof of payment of such tax together with
official or other appropriate evidence issued by the appropriate government
authority. Any such tax actually paid on Energy Systems' behalf shall be
deducted from royalty payments then due and owing Energy Systems.
4. RECORDS AND REPORTS
4.1 Licensee agrees to keep adequate records of Licensee, its Affiliates and
Sublicensees in sufficient detail to enable royalties and Sublicensing Revenue
payable hereunder to be determined and to provide such records for inspection by
authorized representatives of Energy Systems, with reasonable notice, at any
time during regular business hours of Licensee up to a maximum of two times per
calendar year. Licensee agrees that any additional records of Licensee, its
Affiliates and Sublicensees as Energy Systems may reasonably determine are
necessary to verify the above records, shall also be provided to Energy Systems
for inspection. If the audit discloses that Energy Systems was underpaid
royalties by at least five percent (5.0%) for any calendar half-year, then
Licensee shall reimburse Energy Systems for any documented and reasonable Energy
Systems costs associated with the audit, together with an amount equal to the
additional royalties to which Energy Systems is entitled as disclosed by the
audit.
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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4.2 Beginning in calendar year 1997, and within thirty (30) calendar days after
the close of each calendar half-year during the term of this Agreement (i.e.,
January 31 and July 31), Licensee will furnish Energy Systems a written report
providing: (a) all Net Sales outside of the United States in U.S. Dollars during
the preceding calendar half-year period, including any Federal governmental
agency under section 3.2 herein above, if none so indicate; (b) amount of
royalties due in U.S. Dollars for the preceding calendar half-year period
pursuant to the provisions hereof; and (c) payment of the royalties due in U.S.
Dollars payable to the order of Lockheed Xxxxxx Energy Systems, Inc., pursuant
to the report to be transmitted in accordance with the "Notices" section of this
Agreement herein below.
4.3 Should Licensee fail to make any payment to Energy Systems within the time
period prescribed for such payment, then the unpaid amount shall bear interest
at the rate of one and one half percent (1.5%) per month from the date when
payment was due until payment in full, with interest, is made.
5. TECHNICAL ASSISTANCE
5.1 Energy Systems agrees, upon the written request of Licensee, to assist
Licensee in obtaining necessary DOE approvals for technical assistance at Energy
Systems' facilities under appropriate agreements. The cost of such technical
assistance shall be paid for by the Licensee.
5.2 Energy Systems agrees to permit its employees, within Energy Systems'
corporate policy guidelines then in effect and subject to DOE requirements then
in effect, to provide consulting services to Licensee with reference to
Licensee's use and commercial exploitation of the Proprietary Rights as
contemplated herein. Licensee shall make payment directly to the individual
consultant(s) for all such services.
6. PATENT PROSECUTION
6.1 Energy Systems shall have full control over prosecution and maintenance of
the patent applications and patents contained in the Proprietary Rights. Energy
Systems will use, at its sole discretion, reasonable efforts to establish patent
protection for the information,
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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inventions and discoveries included in the Proprietary Rights and will timely
keep Licensee advised of the status of such prosecution and maintenance by
providing Licensee with copies of all official communications, amendments and
responses with respect to the patent applications and patents contained in the
Proprietary Rights. In addition, with respect to New Developments which are
licensed by Energy Systems to Licensee, Licensee may offer, at its own expense,
assistance to Energy Systems in the drafting of claims and specifications. In
the event that Energy Systems elects to abandon a patent application included in
the Proprietary Rights, it will so notify Licensee within ninety (90) days of
its proposed abandonment. Upon receipt of such notice, and to the extent allowed
by the Energy Systems Prime Contract with DOE, Licensee may, following written
notice to Energy Systems, seek, at its own expense, a waiver from DOE to
continue the prosecution of such application at Licensee's expense.
6.2 Energy Systems agrees to expend up to [*] U.S. Dollars [*] for foreign
patenting expenses associated with the Proprietary Rights of Exhibit A.
Additional expenditures associated with such expenses will be incurred by
Licensee by reimbursement to Energy Systems within 30 days of Licensee's receipt
of such documented and previously agreed upon foreign patenting expenses by
Energy Systems.
7. INFRINGEMENT BY THIRD PARTIES
7.1 Licensee shall give notice of any discovered or threatened third-party
infringement of Proprietary Rights to Energy Systems. In the event that Energy
Systems does not take appropriate action to stop or prevent such infringement [
* ] after receiving such notice and diligently pursue such action, Licensee has
the right to take appropriate action to stop and prevent the infringement,
including the right to file suit.
7.2 Except for any liability resulting from any negligent acts or omissions of
Energy Systems, in the event that Licensee files suit to stop infringement or
defends any action against the validity of the patent, [*].
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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7.3 Licensee may, however, [*] under the terms of this Agreement at such time as
[*] are reported to Energy Systems in accordance with the Records and Reports
Section herein above.
7.4 All recoveries, damages and awards, [*]. To the extent Licensee's
recoveries, damages and awards [*]. In such event, Licensee will provide [*].
7.5 The Parties hereby agree to cooperate with each other in the prosecution of
any such legal actions or settlement actions undertaken under this section and
each will provide to the other all pertinent data in its possession which may be
helpful in the prosecution of such actions; provided, however, that [*] in
providing data and other information necessary to the conduct of the action.
7.6 The Party having filed such action [*], except that any settlement which
affects or admits issues of patent validity shall require the advance written
approval of Energy Systems.
7.7 In the event any Product becomes the subject of a claim for patent or other
proprietary-right infringement anywhere in the world by virtue of the
incorporation of the Proprietary Rights herein, the Parties shall promptly give
notice to the other and meet to consider the claim and the appropriate course of
action. Licensee shall have the right to conduct the defense of any such suit
brought against Licensee and shall have the sole right and authority to settle
any such suit, [ * ]. Energy Systems shall cooperate with Licensee, as
reasonably requested by Licensee, in connection with defense of such claim, at
Licensee's expense.
8. REPRESENTATIONS AND WARRANTIES
8.1 Energy Systems represents and warrants that Exhibit A contains a complete
and accurate listing of all the Proprietary Rights licensed and that Energy
Systems has the right to grant the rights, licenses, and privileges granted
herein.
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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8.2 Energy Systems represents and warrants that there are no claims of
infringement filed against Energy Systems for practicing the Exhibit A
Proprietary Rights anywhere in the world.
8.3 Except as set forth herein above, Energy Systems makes NO REPRESENTATIONS OR
WARRANTIES, express or implied, with regard to the infringement of proprietary
rights of any third party.
8.4 Licensee acknowledges that the export of any of the Proprietary Rights from
the United States or the disclosure of any of the Proprietary Rights to a
foreign national may require some form of license from the U.S. Government.
Failure to obtain any required export licenses by Licensee may result in
Licensee subjecting itself to criminal liability under U.S. laws.
9. DISCLAIMERS
9.1 Neither Energy Systems, the DOE, nor persons acting on their behalf will be
responsible for any injury to or death of persons or other living things or
damage to or destruction of property or for any other loss, damage, or injury of
any kind whatsoever resulting from Licensee's manufacture, use, or sale of
materials, information, or Proprietary Rights hereunder. In no event will Energy
Systems, the DOE, or any person acting on behalf of any of them be liable for
any incidental, special or consequential damages resulting from the license
granted pursuant to this Agreement or the use or commercial development of the
Proprietary Rights.
9.2 EXCEPT AS SET FORTH HEREINABOVE, NEITHER ENERGY SYSTEMS, THE DOE, NOR
PERSONS ACTING ON THEIR BEHALF MAKE ANY WARRANTY, EXPRESS OR IMPLIED: (1) WITH
RESPECT TO THE MERCHANTABILITY, ACCURACY, COMPLETENESS, OR USEFULNESS OF ANY
SERVICES, MATERIALS, OR
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BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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INFORMATION FURNISHED HEREUNDER; (2) THAT THE USE OF ANY SUCH SERVICES,
MATERIALS, OR INFORMATION WILL NOT INFRINGE PRIVATELY OWNED RIGHTS; (3) THAT THE
SERVICES, MATERIALS, OR INFORMATION FURNISHED HEREUNDER WILL NOT RESULT IN
INJURY OR DAMAGE WHEN USED FOR ANY PURPOSE: OR (4) THAT THE SERVICES, MATERIALS,
OR INFORMATION FURNISHED HEREUNDER WILL ACCOMPLISH THE INTENDED RESULTS OR ARE
SAFE FOR ANY PURPOSE, INCLUDING THE INTENDED OR PARTICULAR PURPOSE. FURTHERMORE,
ENERGY SYSTEMS AND THE DOE HEREBY SPECIFICALLY DISCLAIM ANY AND ALL WARRANTIES,
EXPRESS OR IMPLIED, FOR ANY PRODUCTS MANUFACTURED, USED, OR SOLD BY LICENSEE.
NEITHER ENERGY SYSTEMS NOR THE DOE SHALL BE LIABLE FOR CONSEQUENTIAL OR
INCIDENTAL DAMAGES IN ANY EVENT.
9.3 Licensee agrees to indemnify Energy Systems, the DOE, and persons acting on
their behalf for all damages, costs, and expenses, including attorneys' fees,
arising from, but not limited to, [*].
10. TERM OF AGREEMENT AND EARLY TERMINATION
10.1 This Agreement shall extend from the effective date of this Agreement to
the date of expiration of the last-to-expire of the patents which arise from the
Proprietary Rights of Exhibit A, on a country-by-country basis. This Agreement
is subject to early termination as set forth herein below and the terms and
conditions set forth in Exhibit B and Exhibit C attached hereto and hereby
incorporated into this Agreement by reference thereto.
10.2 Either Party shall have the right to terminate this Agreement without
judicial resolution upon written notice to the other after a breach of any
provision by the other Party has gone uncorrected for sixty (60) days after the
other Party has been notified in writing of such breach. Practice of the
licensed Proprietary Rights outside the scope of the grant by Licensee, its
Affiliates, and Sublicensees shall be an uncorrectable breach of this Agreement
and this Agreement may be terminated upon written notice thereof by Energy
Systems.
10.3 This Agreement shall terminate automatically upon the extinguishment of all
of the Exhibit A Proprietary Rights, for any reason, but only after the time for
appealing said extinguishment has expired.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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10.4 Licensee shall provide notice to Energy Systems of its intention to file a
voluntary petition in bankruptcy or of another party's intention to file an
involuntary petition in bankruptcy for Licensee, said notice to be received by
Energy Systems at least thirty (30) days prior to filing such a petition.
Licensee's failure to provide such notice to Energy Systems of such intentions
shall be deemed a material, pre-petition, incurable breach of this Agreement.
10.5 Licensee agrees that this Agreement shall automatically terminate upon any
attempt by Licensee to offer Licensee's rights under this Agreement as
collateral to a third party.
10.6 Licensee may terminate this Agreement without further payment upon written
notice to Energy Systems, if such notice is received by Energy Systems on or
before December 31, 1995. On any decision to terminate, made after December 31,
1995, Licensee agrees to pay Energy Systems the pro rata portion of the next
payment obligation that is due. Such portion of the next payment obligation due
shall be based on a period which ends sixty days after Licensee submits, to
Energy Systems, a written notice of termination.
10.7 Termination under any of the provisions of this Article of the license
granted to Licensee in this Agreement shall terminate all sublicenses which may
have been granted by Licensee, provided that any Sublicensee may elect to
continue its sublicense by advising Energy Systems in writing, within sixty (60)
days of the Sublicensee's receipt of written notice of such termination, of its
election, and of its agreement to assume, in respect to Energy Systems, all the
obligations (including obligations for payment) contained in its sublicensing
agreement with Licensee. Any sublicense granted by Licensee shall contain
provisions corresponding to those of this paragraph respecting termination and
the conditions of continuance of sublicenses.
11. RIGHTS OF PARTIES AFTER TERMINATION
11.1 Neither Party shall be relieved of any obligation or liability under this
Agreement arising from any act or omission committed prior to the effective date
of such termination. In the event of expiration of this Agreement or termination
of this Agreement for any reason
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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whatsoever, the rights and obligations of the Parties under Sections 8.1, 8.2,
10 and 12 shall survive any expiration or termination of this Agreement.
11.2 From and after any termination of this Agreement, Licensee shall have the
right to sell any Products that Licensee had already manufactured prior to
termination, provided that all royalties and reports required herein above shall
be timely submitted to Energy Systems.
11.3 From and after any termination of this Agreement, Licensee shall not
manufacture, nor have manufactured any Products pursuant to this Agreement.
11.4 The rights and remedies granted herein, and any other rights or remedies
which the Parties may have, either at law or in equity, are cumulative and not
exclusive of others. On any termination, Licensee shall duly account to Energy
Systems and transfer to it all rights to which Energy Systems may be entitled
under this Agreement.
12. CONFIDENTIALITY
12.1 The Parties agree that during the term of this Agreement and for a period
of three (3) years after it terminates, a Party receiving information of the
other Party, which is marked "confidential," will not use or intentionally
disclose such confidential information to any third party without prior written
consent of the disclosing Party, except to those necessary to enable the Parties
to perform under this Agreement or as may be required by the Energy Systems
Prime Contract with the DOE under the same restrictions as set forth herein.
12.2 A Party shall have no obligations with respect to any portion of such
confidential information of the other Party which:
a) is publicly disclosed through no fault of any Party hereto, either before or
after it becomes known to the receiving Party; or
b) was known to the receiving Party prior to the date of this Agreement which
knowledge was acquired independently and not from the other Party; or
c) is subsequently disclosed to the receiving Party in good faith by a third
party which has a right to make such a disclosure; or
d) has been published by a third party as a matter of right; or
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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e) is subsequently independently invented or discovered by the receiving Party
without reference to the other Party's confidential information.
13. FORCE MAJEURE
13.1 No failure or omission by Energy Systems or by Licensee in the performance
of any obligation under this Agreement shall be deemed a breach of this
Agreement or create any liability if the same shall arise from acts of God, acts
or omissions of any government or agency thereof, compliance with requests,
recommendations, rules, regulations, or orders of any governmental authority or
any office, department, agency, or instrumentality thereof, fire, storm, flood,
earthquake, accident, acts of the public enemy, war, rebellion, insurrection,
riot, sabotage, invasion, quarantine, restriction, transportation embargoes, or
failures or delays in transportation.
14. NOTICES
14.1 All notices and reports shall be addressed to the Parties hereto as
follows:
If to Energy Systems:
Business Manager, Technology Transfer Facsimile No.:
Lockheed Xxxxxx Energy Systems, Inc. (000) 000-0000
000 Xxxxxxxx Xxxx Verify No.:
Xxx Xxxxx, Xxxxxxxxx 00000-0000 (000) 000-0000
If to Licensee:
President Facsimile No.
Caliper Technologies Corp. (619) 454-5329
0000 Xxxxxxxx Xxxxxx, Xxxxx 000 Verify No.:
Xx Xxxxx, Xxxxxxxxxx 00000 (000) 000-0000
14.2 All minimum and royalty payments due Energy Systems shall be sent to:
Lockheed Xxxxxx Energy Systems, Inc.
Department 888058
Xxxxxxxxx, Xxxxxxxxx 00000-0000
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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14.3 Any notice, report or any other communication required or permitted to be
given by one Party to the other Party by this Agreement shall be in writing and
either (a) served personally on the other Party, (b) sent by express, registered
or certified first-class mail, postage prepaid, addressed to the other Party at
its address as indicated above, or to such other address as the addressee shall
have previously furnished to the other Party by proper notice, (c) delivered by
commercial courier to the other Party, or (d) sent by facsimile to the other
Party at its facsimile number indicated above or to such other facsimile number
as the Party shall have previously furnished to the other Party by proper
notice, with machine confirmation of transmission.
15. NON-ABATEMENT OF ROYALTIES
15.1 Energy Systems and Licensee acknowledge that certain of the Proprietary
Rights may expire prior to the conclusion of the term of this Agreement;
however, Energy Systems and Licensee agree that the royalty rates provided for
herein above shall be uniform and undiminished except pursuant to this
Agreement.
16. WAIVERS
16.1 The failure of either Party at any time to enforce any provisions of this
Agreement or to exercise any right or remedy shall not be construed to be a
waiver of such provisions or of such rights or remedy or the right of either
Party thereafter to enforce each and every provision, right or remedy.
17. MODIFICATIONS
17.1 It is expressly understood and agreed by the Parties hereto that this
instrument contains the entire agreement between the Parties with respect to the
subject matter hereof and that all prior representations, warranties, or
agreements relating hereto have been merged into this document and are thus
superseded in totality by this Agreement. This Agreement may be amended or
modified only by a written instrument signed by the duly authorized
representatives of both of the Parties.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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18. HEADINGS
18.1 The headings for the sections set forth in this Agreement are strictly for
the convenience of the parties hereto and shall not be used in any way to
restrict the meaning or interpretation of the substantive language of this
Agreement.
19. LAW
19.1 This Agreement shall be construed according to the laws of the State of
Tennessee and the United States of America.
20. ASSIGNMENT
20.1 Upon timely written approval by Energy Systems, not to be unreasonably
withheld, Licensee may assign this Agreement and the rights of Licensee
thereunder to any of its Affiliates, any purchaser of all or substantially all
of its assets or to any successor corporation, including a successor corporation
resulting from any merger or consolidation of Licensee with or into such
corporation. Any assignee of Licensee must abide by the terms and conditions of
this Agreement, in conformance with all Energy Systems obligations to DOE under
the Prime Contract. Upon written notice to Licensee, Energy Systems may transfer
its Administration of this Agreement to DOE or its designee, and Energy Systems
shall have no further responsibilities except for the confidentiality and/or
non-disclosure obligations of this Agreement.
21. SEVERABILITY
21.1 If any term, condition or provision of this Agreement is held to be
unenforceable other than as provided in Article 13, all other terms, conditions,
and provisions of this Agreement shall be deemed valid and enforceable to the
extent possible.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
duly executed in their respective names by their duly authorized
representatives.
"ENERGY SYSTEMS"
LOCKHEED XXXXXX ENERGY SYSTEMS, INC.
By: /s/ Xxxxxxx X. Xxxxxx
------------------------------------
Name (typed): Xx. Xxxxxxx X. Xxxxxx
-----------------------------
Title: Vice President, Technology Transfer
------------------------------------
Date: 1 Sept 95
------------------------------------
"LICENSEE"
CALIPER TECHNOLOGIES, CORP.
By: /s/ Xxxxxxxx X. Xxxx
------------------------------------
Name (typed): Xxxxxxxx X. Xxxx
-----------------------------
Title: President
------------------------------------
Date: September 1, 1995
------------------------------------
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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EXHIBIT A, PROPRIETARY RIGHTS
[*].
Initials:
Energy Systems: /s/ WRM
---------------------------
Date: 1 Sept 95
---------------------------
Licensee: /s/ LAB
---------------------------
Date: September 1, 1995
---------------------------
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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EXHIBIT B1, EXECUTION FEE, ROYALTIES AND
MINIMUM ANNUAL ROYALTIES AMOUNTS
In consideration of the rights and licenses granted herein, Licensee
agrees to pay Energy Systems an up-front fee of [*] U.S. Dollars [*], with a
payment of [*] on execution of the Agreement, and [*] on the six-month
anniversary date of execution.
The royalty rate shall not exceed [*] Percent [*] of Net Sales of
Products. Energy Systems agrees to negotiate with Licensee in good faith, a
lower royalty rate, provided adequate and documented justification for a lower
royalty rate is supplied to Energy Systems by Licensee. Such royalty rate shall
not be less than [*] Percent [*] of Net Sales of Products.
Licensee shall be entitled to credit [*] percent [*] of any royalty paid
to a non-Affiliate third party by Licensee in order for Licensee to be able to
make, use, and sell Products against the royalty payable in this Exhibit B
herein above; provided that in no event will the royalty payable in this Exhibit
B herein above be reduced by more than [*] percent [*] in any quarter as a
result of the credit available to Licensee under this paragraph.
The minimum annual royalties shall be calculated as follows:
If, by the third anniversary date of execution, the royalties on Net Sales
of Products shall not equal the minimum annual royalty amount of [*] U.S.
Dollars [*], then Licensee shall pay the difference between the amount of actual
royalties paid and the minimum annual royalty within thirty (30) days of said
anniversary date.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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If, by the [*] anniversary date of execution, and each anniversary date
thereafter, a U.S. Patent with Dominant Claims [*], based on the Proprietary
Rights of Exhibit A, has issued, Licensee shall pay Energy Systems the minimum
annual royalty amount of [*] or royalties on actual Net Sales of Products,
whichever amount is greater. If such U.S. patent issuance does not occur by the
[*] anniversary date of execution, the minimum annual royalty amount will remain
at [*]. Such a payment requirement will automatically increase to a [ * ] annual
minimum royalty amount, due on yearly anniversary dates, beginning with the
execution anniversary date of the year in which such patent issuance, with the
issuance of Dominant claims [*], occurs.
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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EXHIBIT B2, SUBLICENSE ROYALTIES
In order to maximize the commercialization of the "Products" and Energy
Systems' overall income from this Agreement, Licensee may grant sublicenses to
third parties under which Licensee agrees to pay Energy Systems a "Sublicense
Royalty" of [*] percent [*] of the total "Sublicensing Revenue" owed Licensee
under said sublicenses. In no event shall the sum of "Sublicensing Royalty" and
royalty on Licensee's Net Sales paid to Energy Systems by Licensee be less than
the royalty Energy Systems would have received from Licensee's Net Sale of
Products.
NOTICE
THIS EXHIBIT CONTAINS FINANCIAL AND COMMERCIAL INFORMATION THAT IS
BUSINESS CONFIDENTIAL AND THE PARTIES HEREBY AGREE NOT TO USE OR DISCLOSE THIS
EXHIBIT TO ANY THIRD PARTY WITHOUT THE ADVANCE WRITTEN APPROVAL OF THE OTHER
PARTY HERETO, EXCEPT TO THOSE NECESSARY TO ENABLE THE PARTIES TO PERFORM UNDER
THIS AGREEMENT OR AS MAY BE REQUIRED BY THE ENERGY SYSTEMS CONTRACT WITH THE DOE
THE SAME RESTRICTIONS AS SET FORTH HEREIN.
Initials:
Energy Systems: /s/ WRM
---------------------------
Date: 1 Sept 95
---------------------------
Licensee: /s/ LAB
---------------------------
Date: September 1, 1995
---------------------------
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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EXHIBIT C, DEVELOPMENT AND COMMERCIALIZATION PLAN
Licensee agrees to invest in the development of technology and markets for
Products by committing Licensee's resources in accordance with the following:
For expenditures associated with [*]
[*]
[*]
[*]
[*]
[*]
For expenditures associated with [*]
[*]
[*]
[*]
[*]
[*]
[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
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EXHIBIT C., CONTINUED
Progress and substantiation of Licensee meeting these requirements shall
be provided to Energy Systems in the form of an annual written report submitted
to Energy Systems by Licensee or at a meeting between the Parties to be held at
the mutual convenience of said Parties, but no later than December 31, 1996 and
each anniversary thereafter.
NOTICE
THIS EXHIBIT CONTAINS FINANCIAL AND COMMERCIAL INFORMATION THAT IS
BUSINESS CONFIDENTIAL AND THE PARTIES HEREBY AGREE NOT TO USE OR DISCLOSE THIS
EXHIBIT TO ANY THIRD PARTY WITHOUT THE ADVANCE WRITTEN APPROVAL OF THE OTHER
PARTY HERETO, EXCEPT TO THOSE NECESSARY TO ENABLE THE PARTIES TO PERFORM UNDER
THIS AGREEMENT OR AS MAY BE REQUIRED BY THE ENERGY SYSTEMS CONTRACT WITH THE DOE
UNDER THE SAME RESTRICTIONS AS SET FORTH HEREIN.
Initials:
Energy Systems: /s/ WRM
---------------------------
Date: 1 Sept 95
---------------------------
Licensee: /s/ LAB
---------------------------
Date: September 1, 1995
---------------------------
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[*] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS AMENDED.
