LICENSE AGREEMENT
EXECUTION
VERSION
This
LICENSE AGREEMENT (this “Agreement”),
dated
as of June 28, 2006 (the “Effective
Date”),
is
entered into by and between Innovative Card Technologies, Inc., a Delaware
corporation (“Licensee”),
and
nCryptone, S.A. (formerly known as AudioSmartCard, S.A.), a corporation
organized under the laws of France (“Licensor”).
Terms
used but not otherwise defined in this Agreement shall have the meanings
assigned to them in that certain Asset Contribution Agreement, dated as of
June 28, 2006 (the “Asset
Contribution Agreement”),
by
and among Licensee, Licensor, and Prosodie, S.A.
RECITALS
A. Licensor
and Licensee have entered into the Asset Contribution Agreement whereby Licensor
has transferred the Contributed Assets to Licensee.
B. In
addition to the Contributed Assets, Licensor owns certain intellectual property
rights including, but not limited to, the Licensed Patents (as defined below),
that relate to a microchip capable of emitting monophonic pre-recorded musical
tones and that is embedded in Licensee’s financial transaction and similar cards
that Licensee markets presently under the brand name “MusicCard” (including any
future upgrades thereto or improvements thereon, the “MusicCard”).
C. As
a
condition to its entering into the Asset Contribution Agreement, Licensee has
required that Licensor enter into this Agreement and license the Licensed
Patents to Licensee pursuant to the terms hereof.
AGREEMENT
In
consideration of the mutual covenants and promises contained in this Agreement
and for good and valuable consideration, the receipt and adequacy of which
are
hereby acknowledged, the parties to this Agreement agree as
follows:
ARTICLE
I.
DEFINED
TERMS
1.1 “dollars”
or
“$”
means
United States dollars.
1.2 “Intellectual
Property Right”
means
any right relating to any Intellectual Property.
1.3 “Know-How”
means
confidential or proprietary information related to the MusicCard or any
components thereof that is known by Licensor as of the Effective Date and is
not
generally known to the public, including without limitation, designs,
manufacturing and operating specifications and processes, know-how, formulae,
customer and supplier lists, shop rights, designs, drawings, patterns, trade
secrets, confidential information, technical data, databases, data compilations
and collections developed by employees or independent contractors of Licensor
and useful in connection with the development, manufacture, use or sale of
the
MusicCard, which is owned or controlled by Licensor as of the Effective
Date.
1.4 “Licensed
Patents”
means
any and all patents and patent applications listed on Schedule 1
attached
hereto and incorporated herein by reference and all foreign counterpart patents,
reissues, continuations, continuations-in-part, revisions, extensions, divisions
and reexaminations thereof.
1.5 “Patent
Expiration”
means,
with respect to a particular patent, that patent’s expiration, abandonment,
cancellation, award to a party other than Licensor in an interference
proceeding, or a final declaration of invalidity or unenforceability by a court
or other authority of competent jurisdiction (including final rejection in
a
re-examination or re-issue proceeding) from which no further appeal has or
can
be taken, or being rendered unenforceable for any other reason.
1.6 “Valid
Claim”
means
(a) an issued claim affecting a Licensed Patent that has not
(i) expired or been canceled, (ii) been declared invalid by an
unreversed and unappealable decision of a court or other appropriate body of
competent jurisdiction, (iii) been admitted to be invalid or unenforceable
through reissue, disclaimer or otherwise, and/or (iv) been abandoned in
accordance with or as permitted by the terms of this Agreement or by mutual
written consent; or (b) a claim included in a pending patent application
within the Licensed Patents that is being actively prosecuted in accordance
with
this Agreement and that has not been (i) canceled, (ii) withdrawn from
consideration, (iii) finally determined to be unallowable by the applicable
governmental authority for whatever reason (and from which no appeal is or
can
be taken), and/or (iv) abandoned in accordance with or as permitted by the
terms of this Agreement or by mutual written consent.
ARTICLE
II.
GRANT
OF LICENSE
2.1 Initial
Grant of License.
Subject
to the terms and conditions of this Agreement, Licensor hereby grants to
Licensee, and Licensee accepts, a non-exclusive, non-transferable,
non-assignable, non-sublicenseable object code-only right and license to (i)
make, have made, use, sell and have sold products and services which but for
this license would infringe the Licensed Patents, solely for use in the
MusicCard and (ii) use the Know-How internally solely for the purpose of
exercising its rights under clause (i) above with respect to the MusicCard
(the
“Licensed
Rights”).
Notwithstanding anything herein to the contrary, Licensor shall only be required
to deliver such Know-How as it determines, in its commercially reasonable
judgment, is required for Licensee to fully exploit the MusicCard. Nothing
contained in this Agreement shall be interpreted as to obligate Licensor to
provide Licensee with any support services or manpower.
2.2 Conversion
of License upon Receipt of Licensed Patents Additional
Consideration.
Following the receipt by Licensor of the Licensed Patents Additional
Consideration (as defined below) pursuant to Section 3.2,
the
license granted pursuant to Section 2.1
shall
convert, subject to the terms and conditions of this Agreement, to a fully
paid-up, royalty-free, transferable, assignable, sublicenseable license (all
other terms remaining as set forth in Section 2.1).
If the
Licensed Patents Additional Consideration is not paid to Licensor under the
terms hereof on or before the License Payment Date, this Agreement, all licenses
hereunder and the Licensed Rights shall immediately become void and of no
further force or effect, except with respect to provisions of this Agreement
which survive termination.
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2.3 Term
and Termination.
(a) The
term
of this Agreement shall be for a term commencing on the Effective Date and,
unless sooner terminated, extending until the Patent Expiration of the last
to
expire of all patents included in the Licensed Patents or until there remains
no
Valid Claim under the Licensed Patents, whichever occurs earlier.
(b) Prior
to
the payment of the Licensed Patents Additional Consideration pursuant to
Section 3.2
and the
conversion of the license pursuant to Section 2.2,
if:
(i) either
party breaches any of the material terms, conditions or agreements of this
Agreement, then except where this Agreement provides for a different
consequence, the other party may terminate this Agreement, at its option and
without prejudice to any of its other legal and equitable rights and remedies,
by giving the breaching party thirty (30) days notice in writing, particularly
specifying the breach. Such notice of termination shall not be effective if
the
other party cures the specified breach within such thirty (30) day period,
or,
in the case of breaches not reasonably curable within such thirty (30) days,
if
such party commences the cure thereof within such thirty (30) day
period
and cures the specified breach within ninety (90) days of receipt of such
written notice; and
(ii) notwithstanding
the foregoing, if either party becomes the subject of a voluntary or involuntary
bankruptcy proceeding that is not dismissed within forty-five (45) days of
its
commencement, the other party shall have the right to terminate this
Agreement.
(c) Following
the payment of the additional consideration pursuant to Section 3.2
and the
conversion of the license pursuant to Section 2.2,
this
Agreement may only be terminated by Licensee, with or without cause, on such
date as is indicated in a written notice delivered to Licensor pursuant to
Section 5.2
(such
date to be determined in Licensee’s sole and absolute discretion).
(d) Upon
any
termination pursuant to this Section 2.3,
Licensee shall have ninety (90) days in which to sell-off existing inventories
of products including one or more components covered by the Licensed Patents.
All sublicenses granted pursuant to this Agreement shall terminate
immediately.
(e) The
parties agree that this Agreement is intended to be and shall be deemed to
be an
intellectual property license within the meaning of Section 365(n) of the United
States Bankruptcy Code, as amended, for purposes of the protections afforded
to
licensees thereunder.
ARTICLE
III.
LICENSE
FEES
3.1 Initial
License Fee.
On the
Effective Date, Licensee shall pay Licensor an upfront licensing fee of ten
dollars ($10) for the Licensed Rights.
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3.2 Additional
License Fee.
On the
first anniversary of the Closing Date (the “License
Payment Date”),
Licensee shall deliver to Licensor, by wire transfer of immediately available
funds to a bank account designated by Licensor at least three Business Days
prior to the License Payment Date or by certified check or other means
acceptable to Licensee and Licensor, an amount equal to $1,000,000 (the
“Licensed
Patents Additional Consideration”);
provided that
Licensee, in its sole discretion, may pay the Licensed Patents Additional
Consideration to Licensor in advance of the License Payment Date less
a
discount equal to the product of (i) 5% of the Licensed Patents Additional
Consideration and (ii) a fraction (A) the numerator of which is the number
of
days prior to the License Payment Date that such payment is made and (B) the
denominator of which is 365 days. The Licensed Patents Additional Consideration
is nonrefundable, in whole or in part, notwithstanding any termination of this
Agreement or claim hereunder.
3.3 Withholding
Taxes.
Licensee shall be entitled to deduct and withhold from the consideration
otherwise payable pursuant to this Agreement to Licensor such amounts as may
be
required to be deducted and withheld with respect to the making of such payment
under the Code, or under any provision of state, local or foreign Tax law.
To
the extent that amounts are so withheld and paid over to the appropriate taxing
authority, such withheld amounts shall be treated for all purposes of this
Agreement as having been paid to such person in respect of which such deduction
and withholding was made.
ARTICLE
IV.
LICENSED
PATENTS
4.1 Prosecution.
Licensor shall continue the prosecution of all pending applications for patents
included within the Licensed Patents in those jurisdictions where such pending
applications have been filed as of the Effective Date through (i) appeal, (ii)
issuance or (iii) if commercially reasonable, abandonment. Licensor notify
Licensee in writing of any actual change in the status or any decision to change
the status thereof prior to any decision to change the status.
4.2 Maintenance.
Licensor shall timely make all maintenance fee and annuity payments on all
the
Licensed Patents and shall maintain the Licensed Patents in good
standing.
4.3 Enforcement.
Licensor shall, at its election and expense, have the right, but not the
obligation, to prosecute any and all claims against third parties for
infringement of any Licensed Patent. If Licensor finds it necessary or
desirable, it may join Licensee as a party in any suit or proceeding against
third parties alleging infringement of any Licensed Patent.
ARTICLE
V.
MISCELLANEOUS
5.1 Confidentiality.
Any
information acquired by one of the respective parties from another of the
respective parties concerning existing or contemplated products, services,
Intellectual Property Rights (including, without limitation, the Licensed
Patents and the Know-How) processes, techniques, Know-How or data owned by
and
confidential to the disclosing party, (herein referred to as “Confidential
Information”),
unless provided for elsewhere in this Agreement, is and shall be the property
of
the disclosing party and shall be maintained in confidence and not used by
the
receiving party except as necessary to perform the duties set forth in this
Agreement. The obligation of confidentiality under this Section 5.1
shall
not apply to Confidential Information that:
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(a) is
now or
comes to be in the public domain through no fault of the receiving
party;
(b) is
released expressly stating that it is without restriction to the receiving
party
by the disclosing party in writing;
(c) is
lawfully obtained by the receiving party from third parties under no duty of
confidentiality to the disclosing party; or
(d) can
be
demonstrated by competent proof to have been known or hereafter developed by
the
receiving party independently of any disclosure of Confidential Information
by
the disclosing party.
The
receiving party agrees to treat Confidential Information with the same degree
of
care to avoid disclosure as it employs with respect to its own Confidential
Information and in no event less than commercially reasonable care.
5.2 Notices.
All
notices, requests, demands, Third Party Claims and other communications which
are required or may be given under this Agreement shall be in writing and shall
be deemed to have been duly given when received if personally delivered; when
transmitted if transmitted by confirmed facsimile with a copy sent by another
means specified herein; the Business Day after it is sent if sent for next
day
delivery to a domestic address by recognized overnight delivery service (e.g.
Federal Express); and five Business Days after the date mailed by certified
or
registered mail, postage prepaid, if sent by certified or registered mail,
return receipt requested. In each case notice shall be sent to:
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If
to Licensor, addressed to:
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nCryptone
S.A.
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000,
xxx Xxxxxxxx
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00000
Xxxxxxxx Xxxxx
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Xxxxxx
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Attn:
André Saint-Mleux
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Phone:
x00 (0) 0 00 00 00 64
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Fax:
x00 (0) 0 00 00 00 26
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With
a copy to:
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Xxxxx
& XxXxxxxx
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00,
xxxxxx Xxxxxx
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XX
0000
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00000
Xxxxx Cedex 16
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France
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Attn: Xxxxxx
Xxxxxx
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Phone:
x00 (0) 0 00 00 00 61
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Fax:
x00 (0) 0 00 00 00 03
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If
to Licensee, addressed to:
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Innovative
Card Technologies, Inc.
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Xxxxxxxx Xxxx., Xxxxx 0000
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Xxx
Xxxxxxx, Xxxxxxxxxx 00000
Attn: Bennet
Tchaikovsky, CPA, Esq.
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Telephone:
(000) 000-0000
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Fax:
(000) 000-0000
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With
a copy to:
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Xxxxxx
& Xxxxxxx LLP
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000
Xxxx Xxxxx Xxxxxx, Xxxxx 0000
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Xxx
Xxxxxxx, Xxxxxxxxxx 00000
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Attn:
Xxxxx X. Xxxxxxx, Esq.
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Telephone:
(000) 000-0000
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Fax:
(000) 000-0000
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or
to
such other place and with such other copies as either party may designate as
to
itself by written notice to the others.
5.3 Recordation
of this Agreement.
Where
required or otherwise as reasonably recommended by Licensee’s counsel, Licensor
shall file this Agreement with any relevant governmental or quasi-governmental
offices and registers. Licensor agrees to give or obtain any document or
signature which may be required for such filings. If Licensor fails to make
any
such filings in a timely manner, Licensor appoints Licensee as its
attorney-in-fact for the purpose of making such filings. The costs resulting
from these formalities shall be borne exclusively by Licensor and, in the event
that Licensee incurs any expenses in connection with any filings pursuant to
this Section 5.3,
Licensor will promptly reimburse Licensee for all such reasonable
expenses.
5.4 Representations
and Warranties.
(a) Each
of
the parties represents and warrants that that it is authorized to enter into
this Agreement, and that it has secured such authorizations and approvals from
its board of directors or as otherwise appropriate in furtherance of entering
into this Agreement.
(b) Licensor
represents and warrants that it has the right and authority to grant the license
granted hereunder and perform its other obligations contained
herein.
5.5 Rules
of Construction.
The
parties agree that they have been represented by counsel during the negotiation
and execution of this Agreement and, therefore, waive the application of any
law, regulation, holding or rule of construction providing that ambiguities
in
any agreement or other document will be construed against the party drafting
such agreement or document.
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5.6 Titles.
The
titles, captions or headings of the Articles and Sections herein are inserted
for convenience of reference only and are not intended to be a part of or to
affect the meaning or interpretation of this Agreement.
5.7 Entire
Agreement.
This
Agreement, including the schedules attached hereto, and any other agreements,
documents and written understandings referred to herein or otherwise entered
into or delivered by the parties hereto on the date of this Agreement,
constitute the entire agreement and understanding and supersede all other prior
covenants, agreements, undertakings, obligations, promises, arrangements,
communications, representations and warranties, whether oral or written, by
any
party hereto or by any director, officer, employee, agent, Affiliate or
Representative of any party hereto. There are no covenants, agreements,
undertakings or obligations with respect to the subject matter of this Agreement
other than those expressly set forth or referred to herein or in other
agreements, documents and written understandings entered into or delivered
by
the parties hereto on the date of this Agreement, and no representations or
warranties of any kind or nature whatsoever, express or implied, including
any
implied warranties of merchantability or fitness for a particular purpose,
are
made or shall be deemed to be made herein by the parties hereto except those
expressly made herein.
5.8 Assignment
and
Sublicense.
(a) Neither
this Agreement nor any of the rights or obligations hereunder may be assigned
by
Licensor without the prior written consent of Licensee.
(b) Prior
to
the payment of the Licensed Patents Additional Consideration pursuant to
Section 3.2
and the
conversion of the license pursuant to Section 2.2,
Licensee shall not assign or sublicense any of its rights or obligations
hereunder. Following the payment of the additional consideration pursuant to
Section 3.2
and the
conversion of the license pursuant to Section 2.2,
Licensee may, upon written notice to Licensor indicating the identity of any
proposed assignee or sublicensee, freely assign and sublicense its rights and
obligations hereunder; provided,
however,
that
Licensee shall not assign this Agreement or grant any sublicense hereunder
to
any person that produces or distributes products or provides services in direct
competition with the products and services of Licensor; provided further
that any
sublicense granted by Licensee under this Agreement shall contain terms and
conditions at least as restrictive as those contained in this Agreement and
shall contain no rights to further sublicense; provided further
that any
permitted assignee or transferee must expressly consent in writing to be bound
by the terms and conditions of this Agreement.
(c) Notwithstanding
anything herein to the contrary, either party may, with written notice to the
other party, assign this Agreement (i) to the survivor in a merger involving
such party, (ii) to the acquirer of all or substantially all of such party’s
assets, stock, or a business unit related to this license agreement or (iii)
an
Affiliate of such party.
(d) Any
sublicense granted or assignment or transfer in violation of this Section 5.8
shall be
void and without effect.
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5.9 Amendment
or Modification.
This
Agreement may not be amended except in an instrument in writing signed on behalf
of each of the parties hereto. No amendment, supplement, modification or waiver
of this Agreement shall be binding unless executed in writing by the party
to be
bound thereby.
5.10 No
Other Representations or Warranties.
EXCEPT
AS EXPRESSLY SET FORTH HEREIN, LICENSOR EXPRESSLY DISCLAIMS ANY REPRESENTATIONS,
WARRANTIES OR CONDITIONS, EXPRESS OR IMPLIED, STATUTORY OR OTHERWISE, WITH
RESPECT TO THE LICENSED PATENTS, KNOW-HOW, LICENSED RIGHTS AND ANY OTHER MATTERS
CONTEMPLATED BY THIS AGREEMENT, INCLUDING ANY IMPLIED WARRANTIES OF
MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, OR VALIDITY OF TECHNOLOGY
(PATENTED OR UNPATENTED), OR NONINFRINGEMENT.
5.11 Waiver.
Except
where a specific period for action or inaction is provided herein, neither
the
failure nor any delay on the part of any party in exercising any right, power
or
privilege under this Agreement or the documents referred to in this Agreement
shall operate as a waiver thereof, nor shall any waiver on the part of any
party
of any such right, power or privilege, nor any single or partial exercise of
any
such right, power or privilege, preclude any other or further exercise thereof
or the exercise of any other such right, power or privilege. The failure of
a
party to exercise any right conferred herein within the time required shall
cause such right to terminate with respect to the transaction or circumstances
giving rise to such right, but not to any such right arising as a result of
any
other transactions or circumstances.
5.12 Severability.
If any
term or other provision of this Agreement is invalid, illegal or incapable
of
being enforced as a result of any rule of law or public policy, all other terms
and other provisions of this Agreement shall nevertheless remain in full force
and effect so long as the economic or legal substance of the transactions
contemplated by this Agreement is not affected in any manner materially adverse
to any party. Upon such determination that any term or other provision is
invalid, illegal or incapable of being enforced, the parties hereto shall
negotiate in good faith to modify this Agreement so as to effect the original
intent of the parties as closely as possible in an acceptable manner to the
end
that the transactions contemplated by this Agreement are fulfilled to the
greatest extent possible.
5.13 Burden
and Benefit.
This
Agreement shall be binding upon and shall inure to the benefit of, the parties
hereto and their respective successors and permitted assigns. This Agreement
and
all of its conditions and provisions are for the sole and exclusive benefit
of
the parties hereto and their respective successors and permitted assigns, and
nothing in this Agreement, express or implied, is intended to confer upon any
Person other than the parties hereto any rights or remedies of any nature
whatsoever under or by reason of this Agreement or any provision
hereof.
5.14 Governing
Law.
This
Agreement (and any claim or controversy arising out of or relating to this
Agreement) shall be governed by the law of the State of New York without regard
to conflict of law principles that would result in the application of any law
other than the law of the State of New York.
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5.15 Consent
to Jurisdiction.
Subject
to Section 5.18
hereof,
each party to this Agreement hereby irrevocably and unconditionally submits,
for
itself and its property, to the exclusive jurisdiction of any New York State
court, or Federal court of the United States of America, sitting in New York,
and any appellate court from any thereof, (i) should emergency relief be
required, (ii) for the purposes of enforcing any judgment rendered pursuant
to
the foregoing, (iii) for the purposes of enforcing any arbitration award under
Section 5.18
hereof
or (iv) in the event a Dispute is determined to be unarbitrable pursuant to
an
arbitration decision rendered in application of Section 5.18
hereof,
and each of the parties hereby irrevocably and unconditionally (a) agrees
not to commence any such action or proceeding except in such courts,
(b) agrees that any claim in respect of any such action or proceeding may
be heard and determined in such New York State court or, to the extent permitted
by law, in such Federal court, (c) waives, to the fullest extent it may
legally and effectively do so, any objection which it may now or hereafter
have
to the laying of venue of any such action or proceeding in any such New York
State or Federal court, and (d) waives, to the fullest extent permitted by
law, the defense of an inconvenient forum to the maintenance of such action
or
proceeding in any such New York State or Federal court. Each of the parties
hereto agrees that a final judgment in any such action or proceeding shall
be
conclusive and may be enforced in other jurisdictions by suit on the judgment
or
in any other manner provided by law. Each party to this Agreement irrevocably
consents to service of process in the manner provided for notices in
Section 5.2.
Nothing
in this Agreement will affect the right of any party to this Agreement to serve
process in any other manner permitted by law.
5.16 Waiver
of Trial by Jury.
EACH
PARTY TO THIS AGREEMENT ACKNOWLEDGES AND AGREES THAT ANY CONTROVERSY WHICH
MAY
ARISE UNDER THIS AGREEMENT IS LIKELY TO INVOLVE COMPLICATED AND DIFFICULT
ISSUES, AND THEREFORE IT HEREBY IRREVOCABLY AND UNCONDITIONALLY WAIVES ANY
RIGHT
IT MAY HAVE TO A TRIAL BY JURY IN RESPECT OF ANY LITIGATION DIRECTLY OR
INDIRECTLY ARISING OUT OF OR RELATING TO THIS AGREEMENT AND ANY OF THE
AGREEMENTS DELIVERED IN CONNECTION HEREWITH OR THE TRANSACTIONS CONTEMPLATED
HEREBY OR THEREBY. EACH PARTY CERTIFIES AND ACKNOWLEDGES THAT (A) NO
REPRESENTATIVE, AGENT OR ATTORNEY OF ANY OTHER PARTY HAS REPRESENTED, EXPRESSLY
OR OTHERWISE, THAT SUCH OTHER PARTY WOULD NOT, IN THE EVENT OF LITIGATION,
SEEK
TO ENFORCE EITHER OF SUCH WAIVERS, (B) IT UNDERSTANDS AND HAS CONSIDERED
THE IMPLICATIONS OF SUCH WAIVERS, (C) IT MAKES SUCH WAIVERS VOLUNTARILY,
AND (D) IT HAS BEEN INDUCED TO ENTER INTO THIS AGREEMENT BY, AMONG OTHER
THINGS, THE MUTUAL WAIVERS AND CERTIFICATIONS IN THIS SECTION 5.16.
5.17 Legal
Fees.
If any
party to this Agreement brings an action to enforce its rights under this
Agreement, the prevailing party shall be entitled to recover its costs and
expenses, including without limitation reasonable legal fees, incurred in
connection with such action, including any appeal of such action.
5.18 Arbitration.
It is
understood and agreed between the parties hereto that if the transactions
contemplated by the Asset Contribution Agreement are consummated, from and
after
the Closing Date, any and all claims, grievances, demands, controversies, causes
of action or disputes of any nature whatsoever (including, but not limited
to,
tort and contract claims, and claims upon any law, statute, order, or
regulation) (hereinafter “Disputes”),
arising out of, in connection with, or in relation to this Agreement or
questions of arbitrability under this Agreement, shall be resolved pursuant
to
the following procedures:
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(a) Any
party
may send another party or parties written notice identifying the matter in
dispute and invoking the procedures of this Section (the “Dispute
Notice”).
Within 14 days from delivery of the Dispute Notice, each party involved in
the
dispute shall meet at a mutually agreed location in New York City, New York,
for
the purpose of determining whether they can resolve the dispute themselves
by
written agreement.
(b) All
Disputes arising under this Agreement which are not settled amicably as
specified above shall be referred to and finally determined by arbitration
in
accordance with the Rules of Arbitration of the International Chamber of
Commerce as in force at the time when initiating the arbitration. The
arbitration panel shall consist of three arbitrators. Licensor shall select
one
arbitrator and Licensee shall select one arbitrator. The two arbitrators
selected by the parties shall mutually agree upon the third arbitrator. The
place of arbitration shall be New York, New York. The language to be used in
the
arbitration proceedings shall be English. The arbitration decision shall be
final and binding upon the parties and the parties agree that any award granted
pursuant to such decision may be entered forthwith in any court of competent
jurisdiction.
5.19 Specific
Performance.
Each of
the parties hereto acknowledges and agrees that the other parties would be
damaged irreparably, and in a manner for which monetary damages would not be
an
adequate remedy, in the event any of the provisions of this Agreement are not
performed in accordance with its specific terms or otherwise are breached.
Accordingly, each of the parties hereto agrees that the other parties shall
be
entitled to an injunction or injunctions to prevent breaches of the provisions
of this Agreement and to enforce specifically this Agreement and the terms
and
provisions hereof in any action instituted in any court of the United States
or
any state thereof having jurisdiction over the parties and the matter, in
addition to any other remedy to which they may be entitled, at law or in
equity.
5.20 Cumulative
Remedies.
All
rights and remedies of either party hereto are cumulative of each other and
of
every other right or remedy such party may otherwise have at law or in equity,
and the exercise of one or more rights or remedies shall not prejudice or impair
the concurrent or subsequent exercise of other rights or remedies.
5.21 Expenses.
Except
as otherwise expressly provided herein, all costs and expenses incurred in
connection with this Agreement and the transactions contemplated herein shall
be
paid by the party incurring such expenses.
5.22 Representation
by Counsel.
Each
party hereto represents and agrees with each other that it has been represented
by or had the opportunity to be represented by, independent counsel of its
own
choosing, and that it has had the full right and opportunity to consult with
its
respective attorney(s), that to the extent, if any, that it desired, it availed
itself of this right and opportunity, that it or its authorized officers (as
the
case may be) have carefully read and fully understand this Agreement in its
entirety and have had it fully explained to them by such party’s respective
counsel, that each is fully aware of the contents thereof and its meaning,
intent and legal effect, and that it or its authorized officer (as the case
may
be) is competent to execute this Agreement and has executed this Agreement
free
from coercion, duress or undue influence.
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5.23 Execution
and Counterparts.
This
Agreement may be executed in one or more counterparts, each of which when
executed shall be deemed an original and all of which together shall constitute
one and the same instrument. The parties agree that this Agreement shall be
legally binding upon the electronic transmission, including by facsimile or
email, by each party of a signed signature page to this Agreement to the other
party.
5.24 Survival.
Article V
and
Sections 5.10,
5.15,
5.16
and
5.18
shall
survive the expiration or termination of this Agreement for any reason;
provided,
however,
that
termination pursuant to Section 2.3(b)
shall
not relieve a defaulting or breaching party from any liability to the other
party hereto.
5.25 LIMITATION
OF LIABILITY.
IN NO
EVENT WILL EITHER PARTY BE LIABLE TO THE OTHER PARTY FOR (1) ANY INDIRECT,
INCIDENTAL, SPECIAL, EXEMPLARY, CONSEQUENTIAL (INCLUDING BUT NOT LIMITED TO,
LOSS OF INCOME, PROFIT, OR SAVINGS) OR PUNITIVE DAMAGES ARISING OUT OF OR IN
CONNECTION WITH THE AGREEMENT, EVEN IF THE RESPONSIBLE PARTY HAD BEEN ADVISED
OF
THE POSSIBILITY OF SUCH DAMAGES OR EVEN IF SUCH DAMAGES WERE REASONABLY
FORESEEABLE OR (2) AN AMOUNT IN EXCESS OF THE LICENSED PATENTS ADDITIONAL
CONSIDERATION ACTUALLY PAID TO LICENSOR.
[Signature
Page Follows]
11
IN
WITNESS WHEREOF, the parties hereto have caused this Agreement to be duly
executed on their respective behalf, by their respective officers thereunto
duly
authorized, all as of the day and year first set forth above.
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INNOVATIVE
CARD TECHNOLOGIES, INC.
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By:
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Name:
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Title:
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nCRYPTONE,
S.A.
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By:
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Name:
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Title:
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12
SCHEDULE
1
LICENSED
PATENTS
1) #EP
1 031
229
2) U.S.
#6,748,359 - Method for transmitting acoustic signals from a memory or chip
card, and card for implementing said method.
3) App.
#519539/00
S-1
