PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT.
LICENSE AGREEMENT
BETWEEN
SANDIA CORPORATION
AND
VIGA TECHNOLOGIES CORPORATION
LICENSE NUMBER 95-C00154
TABLE OF CONTENTS
Page
ARTICLE I--DEFINITIONS........................................................2
ARTICLE II--LICENSE AND OWNERSHIP.............................................3
ARTICLE III--THE PARTIES' DUTIES..............................................5
ARTICLE IV--ROYALTY AND LICENSE FEES..........................................5
ARTICLE V--STATEMENTS, REPORTS AND PAYMENTS...................................5
ARTICLE VI--NONDISCLOSURE.....................................................6
ARTICLE VII--DURATION AND TERMINATION.........................................8
ARTICLE VIII--WARRANTY, LIABILITY AND INDEMNIFICATION........................10
ARTICLE IX--GENERAL PROVISIONS...............................................11
ARTICLE X--ASSIGNMENT .......................................................12
ARTICLE XI--PREFERENCE FOR U.S. INDUSTRY.....................................13
ARTICLE XII--GOVERNMENT SPONSORSHIP..........................................13
ARTICLE XIII--EXPORT CONTROL.................................................13
ARTICLE XIV--PATENT PROSECUTION..............................................13
ARTICLE XIV--MARCH IN RIGHTS.................................................14
ARTICLE XVI--CONTROLLING LAW.................................................14
ARTICLE XVII--ENTIRE AGREEMENT...............................................14
EXHIBIT A1...................................................................15
EXHIBIT A2...................................................................16
EXHIBIT A3...................................................................17
EXHIBIT B....................................................................18
EXHIBIT C....................................................................19
EXHIBIT D....................................................................22
LICENSE AGREEMENT
PREAMBLE
This License Agreement, effective upon gaining permission from the DOE, if
required, to grant this license and on the date of last signature hereto, is
by and between Sandia Corporation ("Sandia"), a corporation whose principal
place of business is located in Albuquerque, New Mexico, and VIGA Technologies
Corporation ("VIGA"), a corporation whose principal place of business is
located in Albuquerque, New Mexico.
WITNESSETH THAT:
WHEREAS, Sandia manages and operates a federally-owned facility known
as Sandia National Laboratories for the United States Department of
Energy ("DOE") under contract DE-AC04-94AL85000 ("Contract");
WHEREAS, Sandia has developed and acquired, and may further develop
and acquire, Sandia Software and Sandia Promotional Materials (as
defined herein); and Sandia is, and may further become, the assignee
of Sandia Patent Rights (defined herein);
WHEREAS, Sandia has either been granted or will request a waiver of
title from DOE for Sandia Patent Rights and permission from DOE to
assert copyright for Sandia Software. Under the terms of such
permission, the United States Government reserves a nonexclusive
license in Sandia Patent Rights and Sandia Software for use by or on
behalf of the United States Government;
WHEREAS, Sandia desires to license Sandia Patent Rights, Sandia
Software and Sandia Promotional Materials in support of technology
transfer to United States industries to enhance the United States'
competitiveness;
WHEREAS, VIGA desires access to a Sandia virtual reality development
laboratory in order to advance its technology;
WHEREAS, VIGA has stated in writing that it will have as principals
of its company certain Sandia employees and/or Sandia contractors;
WHEREAS, under the terms of its Contract, Sandia must ". . . obtain
approval of the Contracting Officer prior to any . . . exclusive
licensing, . . . of Intellectual Property to any person who currently
is, or within the preceding two years has been, a Contractor/
Laboratory employee and/or consultant or to a company in which said
person is a principal . . .".
WHEREAS, the United States Government is neither a party to nor
assumes any liability for activities of Sandia in connection with
this License Agreement; and
WHEREAS, at the time of conception of the invention comprising Sandia
Patent Rights, Sandia was operated by American Telephone & Telegraph
Company ("AT&T") under Xxxxxxxx Xx. XX-XX00-00XX00000 with the DOE
under which AT&T reserved nonexclusive licenses in Sandia Patent
Rights. Under the AT&T contract, AT&T's rights to the patent do not
extend to the copyrights to the Sandia Software which is being
licensed under this License Agreement.
NOW, THEREFORE, in consideration of the agreement between Sandia and VIGA, and
in consideration of the faithful performance of this License Agreement, it is
hereby agreed as follows:
ARTICLE I--DEFINITIONS
1.1 "Sandia" and "VIGA"' may each be referred to as a "Party" or,
collectively, as "Parties," to this License Agreement.
1.2 "Sandia Software" shall mean all technical information and data
relating to the Sandia-developed computer program as described in
EXHIBIT A2 and EXHIBIT A3, including any improvements and
modifications relating to the Sandia-developed computer program prior
to April 30, 1995. However, the term Sandia Software shall not
include technical information or data acquired from third parties
which are subject to nondisclosure restrictions, thereby preventing
disclosure. Further, the term Sandia Software shall not include
technical information or data acquired from third parties which
require accounting to the third parties.
1.3 "Derivative Works" shall mean any work which is based on one or more
existing works, and includes any revision, modification, translation,
abridgment, condensation, expansion, enhancement, collection,
compilation or any other form in which the work may be recast,
transformed or adopted.
1.4 "Sandia Patent Rights" shall mean the United States patent
application(s) set forth in EXHIBIT Al, which are incorporated by
reference hereto and made a part hereof, and any division,
continuation, continuation-in-part, or reissue thereof, or any
foreign counterpart thereof.
1.5 "VIGA Software" shall mean all Derivative Works of Sandia Software
developed by VIGA, or software which operates under one or more
claims of Sandia Patent Rights.
1.6 "VIGA Systems" shall mean those products relating to existing user
tools, application handler packages, and multidimensional
visualization display environments of virtual reality systems which
use any part, portion or routine of VIGA Software (EXHIBIT A2 and
EXHIBIT A3).
1.7 "VIGA Business Activities" shall mean those activities entered into
by VIGA whereby VIGA Systems or VIGA Software is used, sold, leased,
transferred or developed
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* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT
by VIGA.
1.8 "Sandia Promotional Material" shall mean reproducible, single copies
of text, brochures, pictures and video information related to Sandia
Software and listed in EXHIBIT B.
1.9 "Sublicensee" shall mean third party entities that have been licensed
by VIGA to use the VIGA Software.
1.10 "Value Added Reseller (VAR)" shall mean Sublicensees having the right
to market and distribute VIGA Software as well as produce Derivative
Works thereof.
1.11 "Net Selling Price" shall mean [ * ]
1.12 "Gross Revenue" is the total amount invoiced to a customer for VIGA
Software or VIGA Systems.
1.13 "Adjustments" shall include [ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
1.14 "Cost of Goods Sold" shall include [ * ]
[ * ]
[ * ]
1.15 "Government" shall mean the United States of America and agencies
thereof.
1.16 An "Affiliate" of a Party shall mean any person, partnership, company
or entity which, directly or indirectly is controlled by or is under
common control with such Party. For the purpose of this definition,
ownership or control, directly or indirectly, of greater than fifty
percent (50%) of the capital stock of a corporation or other entity
carrying the right to vote for or elect directors shall be deemed to
constitute ownership or control thereof.
ARTICLE II--LICENSE AND OWNERSHIP
2.1 Subject to the terms and conditions of this License Agreement, and
the rights reserved to DOE and AT&T, Sandia hereby grants VIGA a
nontransferable, limited exclusive, worldwide right and license to
use and reproduce Sandia Software, a license to develop Derivative
Works of Sandia Software, and a right to distribute and sublicense
VIGA Software.
-3-
2.2 Provided that VIGA meets its performance obligations under Article
III, Sandia agrees to refrain from executing additional licenses of
Sandia Software and Sandia Patent Rights for a period of five (5)
years from the effective date of this License Agreement. At the end
of the five (5) year period, VIGA may request an extension of time in
which Sandia will refrain from executing additional licenses. Sandia
has the right to make the final decision concerning such an extension
at this time. In the event that VIGA's request for such an extension
of time is denied by Sandia, a nonexclusive license will
automatically issue and continue in force to VIGA upon payment of
royalties as set forth in this License Agreement.
2.3 Sandia further grants to VIGA the right to extend the right and
license granted it under Paragraph 2.1 of Article II to each of
VIGA's Affiliates upon Sandia's prior written approval of each such
extension, which approval will not be unreasonably withheld, provided
that each such Affiliate licensed by extension, hereinafter "Licensed
Affiliate," agrees to be bound by all of the terms and conditions of
this License Agreement to the same extent as VIGA. Upon such
extension to a Licensed Affiliate, VIGA as used herein shall be
deemed to include any and all Licensed Affiliates. For the purposes
of this License Agreement, the operations of such Licensed Affiliates
shall be deemed to be the operations of VIGA who shall be primarily
responsible therefor.
2.4 Sandia further grants VIGA the right to use, reproduce and distribute
Sandia Promotional Material provided that the Sandia Thunderbird logo
and references to Sandia, Sandia National Laboratories, SNL or Sandia
Corporation are removed from any and all reproductions of Sandia
Promotional Material which VIGA distributes.
2.5 Sandia further grants VIGA the right to sublicense VIGA Software to
others, including VARs, to market and distribute VIGA Software to
end-users, alone or in combination with other software, as well as
the right to produce Derivative Works of VIGA Software, provided that
such Sublicensees agree to be bound to the terms of this License
Agreement to the same extent as VIGA.
2.6 Subject to the terms and conditions of this License Agreement, VIGA
hereby grants Sandia, a paid-up, irrevocable, nonexclusive, license
to use and reproduce VIGA Software, and to develop Derivative Works
based on VIGA Software. Sandia's right and license to use and copy
VIGA Software shall be limited to internal use at Sandia.
2.7 Sandia shall retain ownership of Sandia Software at all times.
Therefore, no ownership interest in Sandia Software is transferred to
VIGA under this License Agreement. Sandia reserves the right to
create derivative works to Sandia Software.
2.8 VIGA shall retain ownership of VIGA Software at all times. Therefore,
no ownership interest in VIGA Software is transferred to Sandia under
this License Agreement.
2.9 Express or implied rights beyond the scope of Article II are
expressly excluded. Specifically excluded from the grants under
Article II are the right to sell, lease or transfer all or any part
of Sandia Software to others separate and apart from VIGA Software.
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* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
ARTICLE III--THE PARTIES' DUTIES
3.1 Within thirty (30) days of the effective date of this License
Agreement, Sandia shall make available to VIGA the Sandia Software as
specified in EXHIBIT A2 and EXHIBIT A3, and Sandia Promotional
Material as specified in EXHIBIT B.
3.2 VIGA agrees to undertake a thorough, vigorous and diligent effort for
commercializing Licensed Product and to conduct business activities
as set forth in EXHIBIT D.
3.3 If and when VIGA makes enhancements, modifications, or corrections
(improvements) to VIGA Software, VIGA agrees to provide to Sandia a
copy of the latest released version of VIGA Software reflecting the
improvements within three (3) months of the development of such
improvements.
3.4 If and when Sandia makes improvements to the VIGA Software, Sandia
agrees to make such improvements available to VIGA when available for
use at Sandia. VIGA has no obligation to incorporate such
improvements into VIGA Software.
ARTICLE IV--ROYALTY AND LICENSE FEES
4.1 In consideration of Sandia granting the rights and licenses under
Article II, VIGA agrees to pay to Sandia fees and royalties on VIGA
Software and VIGA Systems as set forth in EXHIBIT C.
4.2 For VIGA Business Activities with the Government and for which VIGA
sells products covered by one or more claims of Sandia Patent Rights,
VIGA shall [ * ]
[ * ]
ARTICLE V--STATEMENTS, REPORTS AND PAYMENTS
5.1 For the purpose of computing royalties hereunder, VIGA Business
Activities shall be considered provided or sublicensed when payment
is received by VIGA.
5.2 VIGA shall render to Sandia by January 31st and July 31st of each
calendar year, while this License Agreement exists, a semi-annual
statement reporting each amount VIGA invoices its customers for VIGA
Business Activities during the preceding semiannual accounting period
beginning respectively on the preceding July 1st or January 1st. The
statement shall give all information necessary for the determination
of royalties payable hereunder. [ * ]
[ * ]
VIGA shall accompany each such statement with the payment of all such
royalties due Sandia, computed in accordance with Article IV. If for
any semiannual accounting period no royalty payment shall be due,
VIGA shall submit a written statement to that effect.
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* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
5.3 VIGA shall maintain true and accurate records in such manner and
detail as to permit the verification of all royalties paid and all
royalties due under this License Agreement. Such records shall be
made available during ordinary business hours for inspection at
VIGA's ordinary place of business by authorized representatives of
Sandia. VIGA shall be obligated to retain these records for five (5)
years after the last semi-annual statement is rendered to Sandia.
5.4 All royalties payable by VIGA hereunder shall be paid to Sandia at
the address specified in Article IX hereof in United States of
America dollars in the total amounts provided for in this License
Agreement.
5.5 Any taxes, assessments or charges assessed or imposed by a foreign
entity or government that Sandia shall be required to pay on
royalties due Sandia, shall be borne by VIGA.
5.6 The rate of exchange to be used in calculating royalties payable by
VIGA for an accounting period shall be the rate of exchange published
by the Wall Street Journal on the nearest business day of the month
in which VIGA received payment.
5.7 Without excusing prompt payment of fees and royalties due, any and
all royalties left unpaid after becoming due as specified in
Paragraphs 4.1 and 5.2 shall bear interest at [ * ]
in effect at the First Security Bank of Albuquerque, New Mexico, on the
date the payment of royalties becomes due [ * ]
5.8 The DOE may require Sandia to report on the utilization or the effect
of using Sandia Software and Sandia Patent Rights in the commercial
marketplace. In this regard, VIGA agrees to cooperate with and assist
Sandia in making all such reports.
ARTICLE VI--NONDISCLOSURE
6.1 VIGA shall treat all Sandia Software as proprietary which Sandia has
now made or in the future will make available to VIGA. VIGA further
agrees not to disclose Sandia Software to third parties, except as
provided for in Paragraphs 6.3, 6.4 and 6.5. VIGA agrees to use
Sandia Software, only to the extent necessary, for the enjoyment of
VIGA's right and license granted under this License Agreement.
6.2 VIGA's obligations of nondisclosure and non-use of Sandia Software
under this License Agreement shall continue for fifteen (15) years
from the effective date of this License Agreement, regardless of
termination of any right and license granted under Article II for any
reason.
6.3 VIGA shall limit access to Sandia Software, and may disclose Sandia
Software to only those employees and contractors who require access
for VIGA's enjoyment of its right and license under this License
Agreement. VIGA shall ensure that such employees and contractors are
obligated to treat Sandia Software as proprietary in the same manner
and
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to an equivalent extent as VIGA is required to treat Sandia Software
proprietary under this License Agreement.
6.4 This License Agreement does not restrict or impair the right of VIGA
to use, disclose or otherwise deal with any part of technical
information or data which
(a) is or becomes generally available to the public through no
wrongful act of VIGA;
(b) was in the possession of VIGA prior to the time Sandia
Software was acquired by VIGA, and was not acquired directly
or indirectly from Sandia or from others under an obligation
of nondisclosure;
(c) is independently made available to VIGA by a third party
without the legal obligation of secrecy, provided the third
party did not acquire it directly or indirectly from Sandia;
(d) is independently developed by VIGA without the use of
Sandia's proprietary information.
6.5 For the purpose of Paragraph 6.4 of Article VI, a specific aspect of
technical information or data shall not be deemed to be publicly
available or in the possession of VIGA because the specific aspect is
embraced by general disclosures generally available to the public or
in the possession of VIGA, unless the specific aspect is embraced by
general disclosures generally available to the public or in the
possession of VIGA, unless the specific aspect and its specific
principle of operation is also generally available to the public or
in the possession of VIGA prior to disclosure by Sandia.
6.6 Sandia shall treat all VIGA Software as proprietary which VIGA has
now made or in the future will make available to Sandia. Sandia
further agrees not to disclose VIGA Software to third parties, except
as provided for in Paragraphs 6.8, 6.9 and 6.10. Sandia agrees to use
VIGA Software, only to the extent necessary, for the enjoyment of
Sandia's right and license granted under this License Agreement.
6.7 Sandia's obligations of nondisclosure and non-use of VIGA Software
under this License Agreement shall continue for five (5) years from
the effective termination date of this License Agreement.
6.8 Sandia shall limit access to VIGA Software, and may disclose VIGA
Software only to those employees, contractors and customers who
require access for Sandia's enjoyment of its right and license under
this License Agreement. Sandia shall ensure that such employees,
contractors and customers are obligated to treat VIGA Software as
proprietary in the same manner and to an equivalent extent as Sandia
is required to treat VIGA Software proprietary under this License
Agreement.
-7-
6.9 This License Agreement does not restrict or impair the right of
Sandia to use, disclose or otherwise deal with any part of technical
information or data which:
(a) is or becomes generally available to the public through no
wrongful act of Sandia;
(b) was in the possession of Sandia prior to the time VIGA
Software was acquired by Sandia, and was not acquired
directly or indirectly from VIGA or from others under an
obligation of nondisclosure;
(c) is independently made available to Sandia by a third party
without the legal obligation of secrecy, provided the third
party did not acquire it directly or indirectly from VIGA;
or
(d) is independently developed by Sandia without the use of
VIGA's proprietary information.
6.10 For the purpose of Paragraph 6.9, a specific aspect of technical
information or data shall not be deemed to be publicly available or
in the possession of Sandia because the specific aspect is embraced
by general disclosures generally available to the public or in the
possession of Sandia, unless the specific aspect is embraced by
general disclosures generally available to the public or in the
possession of Sandia, unless the specific aspect and its specific
principle of operation is also generally available to the public or
in the possession of Sandia prior to disclosure by VIGA.
6.11 VIGA acknowledges that the DOE has audit and inspection rights
over all activities conducted at Sandia's location. VIGA hereby
permits the exercise of such rights in conjunction with Sandia's
activities which may involve VIGA Software to Sandia hereunder;
provided, however, that any disclosure to DOE is further protected
under 18 USC 1905.
ARTICLE VII--DURATION AND TERMINATION
7.1 The rights and licenses granted to VIGA under Article II and the
obligation to pay fees and royalties under Article IV shall continue
for twenty (20) years from the effective date of this License
Agreement unless earlier terminated as specified in Article VII. At
the end of this twenty (20) year period, the rights and licenses
granted to VIGA under this License Agreement shall convert to a
paid-up license. Except for the rights and licenses of Article II,
all other provisions relating to VIGA are intended to survive the
date set forth in Paragraph 7.1 and any such early termination, shall
survive.
7.2 If VIGA's rights and licenses under this License Agreement are
terminated for any reason, VIGA shall have no further right and
license as listed under Article II, and shall have no further right
to receive or possess Sandia Software, or to receive technical
assistance as specified in Article III. Furthermore, VIGA shall
immediately return to Sandia all drawings, data, memoranda and
information, in written or physical form, relating to
-8-
Sandia Software, whether prepared by VIGA or Sandia, including all
copies in VIGA's possession. VIGA shall be permitted to retain one
(1) copy of Sandia Software received under this License Agreement, so
that VIGA can continue its maintenance services to the existing
Sublicensees of VIGA Software.
7.3 Termination of VIGA's right and license under this License Agreement
for any reason shall not relieve VIGA or Sandia of any obligation or
liability accrued either before or after the termination.
7.4 Sandia may terminate or reduce, by conversion to a nonexclusive
license, the right and license granted under Article II at its sole
discretion if VIGA, at any time:
(a) defaults in the payment of any fee or royalty due to Sandia;
(b) commits any material breach of this License Agreement;
(c) makes any false statement;
(d) does not meet performance obligations set forth in Article
III; or
(e) does not make available improvements (see Paragraph 3.3) of
VIGA Software Systems to Sandia as set forth in Article III.
and fails to remedy or cure the above-identified causes, within sixty
(60) days after Sandia gives written notice to VIGA of the default of
any of the above-identified causes.
7.5 Sandia may terminate or reduce the rights and licenses granted by
Article II at its sole discretion, if the royalties for any annual
accounting period are less than the minimum set forth in EXHIBIT C,
by giving VIGA a written notice of its election to do so, specifying
an effective date not less than sixty (60) days from the date of such
notice. VIGA may prevent such termination or reduction in rights by
paying before the effective date of such termination or reduction
specified in such notice, the difference between royalties accrued
and paid by VIGA for the annual accounting period and the minimum
due.
7.6 Sandia may terminate VIGA's rights and licenses granted by Article II
by giving written notice to VIGA in the event that VIGA experiences
any of the following events: dissolution, insolvency, filing of a
voluntary petition in bankruptcy, adjudication as a bankrupt pursuant
to an involuntary petition, appointment by a court of a temporary or
permanent receiver, trustee or custodian for its business, or an
assignment for the benefit of creditors. This termination will become
effective immediately upon Sandia giving written notice to VIGA.
7.7 The Parties further agree that VIGA shall be required to sublicense
Sandia Software to third parties seeking the right to use VIGA
Software under reasonable terms and conditions.
-9-
Should VIGA refuse to grant such sublicense(s), Sandia shall consider
such refusal a breach of this License Agreement in accordance with
Paragraph 7.4.
7.8 Notwithstanding any early termination or reduction of VIGA's rights
and licenses under this License Agreement:
(a) the sublicenses of the VIGA Software to VIGA's existing
Sublicensees will survive and continue;
(b) VIGA shall be permitted to grant additional sublicenses to
VIGA Software for orders received prior to the effective
date of such termination; and
(c) VIGA shall be permitted to continue maintenance services to
its Sublicensees of VIGA Software.
7.9 VIGA may terminate the right and license granted under this License
Agreement if Sandia, at any time:
(a) commits any material breach of this License Agreement; or
(b) makes any false statement;
and fails to remedy or cure the above-identified breach of agreement
or making of false statement, within sixty (60) days after VIGA gives
written notice to Sandia of the breach or false statement.
ARTICLE VIII--WARRANTY, LIABILITY AND INDEMNIFICATION
8.1 Both Parties warrant that they have the right to grant the rights and
licenses in Article II.
8.2 Sandia makes no warranty, express or implied, as to the accuracy or
utility of any Sandia Software. Sandia further makes no warranty,
express or implied, that the use of any Sandia Software or Sandia
Patent Rights will not infringe any United States or foreign patent
or copyright. Sandia Software and Sandia Patent Rights are made
available to VIGA on an "AS-IS" basis.
EXCEPT FOR THE WARRANTIES EXPRESSLY PROVIDED HEREIN, ALL
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO
THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR
A PARTICULAR PURPOSE, ARE EXCLUDED HEREUNDER.
8.3 Sandia and the Government, and their agents, officers and employees
shall not be liable for any loss, damage, injury or other casualty of
whatsoever kind, or by whomsoever caused, to the person or property
of anyone, including VIGA, its Affiliates and Sublicensees, arising
out of or resulting from the licenses granted to VIGA herein, or the
accuracy and validity of Sandia Software. VIGA agrees for itself, its
successors and assigns, to defend, indemnify and hold Sandia and the
Government, harmless from and
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against all claims, demands, liabilities, suits or actions (including
all reasonable expenses and attorney's fees incurred by or imposed on
VIGA in connection therewith) for such loss, damage, injury or other
casualty.
8.4 Sandia shall retain the sole right to bring litigation for
infringement of Sandia Patent Rights or Sandia Software. VIGA shall
promptly bring to Sandia's attention any information of which VIGA is
aware relating to third party infringement of Sandia Patent Rights or
Sandia Software. If Sandia fails to initiate action to resolve such
third party infringement within six (6) months of receiving notice
from VIGA, VIGA may upon sixty (60) days advance written notice to
Sandia, initiate action to resolve such third party infringement.
ARTICLE IX--GENERAL PROVISIONS
9.1 VIGA shall not, without the express written consent of Sandia, make
any verbal or written statements or perform any act indicating that
Sandia endorses or approves, or has endorsed or approved, any VIGA
Software. VIGA may, however, indicate that VIGA Software is licensed
under rights and licenses granted by Sandia.
9.2 Any notice with respect to this License Agreement shall be deemed
given on the date when sent by facsimile transmission with receipt of
confirmation by the receiving party, or when mailed by registered
mail, return receipt requested, addressed to the Party at its address
set forth below:
For Sandia:
STATEMENTS AND NOTICES:
Sandia Corporation
Attention: Licensing Coordinator, Org. 4200
Reference: License # 95-C00154
Mailstop 1380
X.X. Xxx 0000
Xxxxxxxxxxx, XX 00000-0000
Phone: (000) 000-0000
Facsimile: (000) 000-0000
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PAYMENTS:
Sandia Corporation
Attention: Assistant Treasurer, Org. 10602
Reference: License # 95-C00154
Mailstop 0189
X.X. Xxx 0000
Xxxxxxxxxxx, XX 00000-0000
For VIGA:
VIGA Technologies Corporation
Attention: Xxxxxx X. Xxxxxx, CEO
0000 Xxx Xxxxxxx, XX
Xxxxxxxxxxx, XX 00000
Phone: (000) 000-0000
Fax: (000) 000-0000
9.3 The waiver of a breach of this License Agreement, or the failure of
either Party to exercise any right under this License Agreement,
shall not constitute a waiver as to any other breach, whether similar
or dissimilar in nature, or prevent the exercise of any right under
this License Agreement.
9.4 The Index and Headings used in this License Agreement are for
reference purposes only and shall not be used in the interpretation
of this License Agreement.
9.5 VIGA agrees to affix appropriate statutory patent and copyright
markings to all materials including VIGA Software covered by Sandia
Patent Rights and copyrights and otherwise to modify such notice as
Sandia may from time to time direct in conformity with the patent and
copyright statutes.
ARTICLE X--ASSIGNMENT
10.1 VIGA shall not, without the prior written consent of Sandia, assign
this License Agreement or any rights hereunder except to a successor
to the business of VIGA who shall agree to be bound to the same
extent as VIGA by all the terms and conditions of this License
Agreement.
10.2 Sandia may assign or otherwise transfer this License Agreement or any
rights hereunder to any assignee or transferee and will notify VIGA
of such assignment or transfer.
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ARTICLE XI--PREFERENCE FOR U.S. INDUSTRY
11.1 VIGA agrees that VIGA Software will be designed, developed and
manufactured substantially in the United States.
ARTICLE XII--GOVERNMENT SPONSORSHIP
12.1 The Government is granted for itself and others acting on its behalf
a paid-up, nonexclusive, irrevocable worldwide license in Sandia
Software to reproduce, prepare derivative works, perform publicly and
display publicly. Beginning five (5) years after granted by DOE, July
7, 1994, the Government is granted for itself and others acting on
its behalf a paid-up, nonexclusive, irrevocable, worldwide license in
Sandia Software to reproduce, prepare derivative works, distribute
copies to the public, perform publicly and display publicly, and to
permit others to do so.
NEITHER THE GOVERNMENT, THE DOE, NOR ANY OF THEIR EMPLOYEES, MAKES
ANY WARRANTY, EXPRESS OR IMPLIED, OR ASSUMES ANY LEGAL LIABILITY OR
RESPONSIBILITY FOR THE ACCURACY, COMPLETENESS, OR USEFULNESS OF ANY
INFORMATION, APPARATUS, PRODUCT, OR PROCESS DISCLOSED, OR REPRESENTS
THAT ITS USE WOULD NOT INFRINGE PRIVATELY OWNED RIGHTS.
ARTICLE XIII--EXPORT CONTROL
13.1 VIGA shall abide by the export control laws and regulations of the
United States Department of Commerce and other United States
governmental regulations relating to the export of VIGA Software and
Sandia Software. Failure to obtain an export control license or other
authority from the Government may result in criminal liability under
U.S. laws.
ARTICLE XIV--PATENT PROSECUTION
14.1 The cost of preparing, filing, prosecuting and maintaining Sandia
Patent Rights shall be borne by Sandia.
14.2 VIGA shall have the right to request that Sandia obtain patent
protection for Sandia Patent Rights in foreign countries if available
and if VIGA so desires. VIGA must notify Sandia of its decision to
obtain foreign patents. Such a notice concerning foreign filing shall
be in writing and must identify the foreign countries in which patent
protection for Sandia Patent Rights is desired. The absence of such a
notice from VIGA to Sandia shall be considered an election by VIGA
not to secure foreign patent protection for Sandia Patent Rights.
-13-
14.3 The preparation, filing and prosecuting of all foreign patent
applications filed at VIGA's request, as well as the maintenance of
all resulting patents, shall be at the sole expense of VIGA. Such
patents shall be held in the name of Sandia and shall be obtained
using counsel of Sandia's choice.
14.4 VIGA's obligation to underwrite and to pay patent prosecution costs
shall continue for so long as this License Agreement remains in
effect, provided, however, that VIGA terminate its obligations with
respect to any given patent application or patent upon three (3)
months written notice to Sandia. Sandia will use its best efforts to
curtail patent costs when such a notice is received from VIGA. Sandia
may continue prosecution and/or maintenance of such applications(s)
or patent(s) at its sole discretion and expense; provided, however,
that VIGA shall have no further rights or licenses thereunder.
14.5 Sandia shall have the right to file patent applications at its own
expense in any country in which VIGA has not elected to secure patent
rights, and such applications and resultant patents shall not be
subject to this License Agreement.
14.6 VIGA shall not be rebilled by Sandia for U.S. patent prosecution and
maintenance costs.
ARTICLE XIV--MARCH IN RIGHTS
15.3 The Parties agree and understand that the Government retains certain
"march-in" rights, in accordance with the procedures set forth in 35
USC 203 and any supplemental regulations promulgated by the DOE.
ARTICLE XVI--CONTROLLING LAW
16.1 This License Agreement is made in Albuquerque, New Mexico, U.S.A.,
and shall be governed by and construed in accordance with the laws of
the State of New Mexico except as these would require the application
of the laws of another jurisdiction. The Parties agree to the
exclusive jurisdiction of the courts of New Mexico or the United
States District Court of New Mexico.
ARTICLE XVII--ENTIRE AGREEMENT
17.1 Each Party warrants and represents that the execution and delivery of
this License Agreement by Sandia and VIGA have not been induced by
any promises, representations, warranties or other agreements, other
than those specifically expressed. This License Agreement includes
EXHIBITS Al, A2, A3, B, C and D and embodies the entire understanding
between VIGA and Sandia with respect to the subject matter described
within this License Agreement. This License Agreement shall supersede
all previous communications, representations or undertakings, either
verbal or written, between VIGA and Sandia with regard to Sandia
Software.
-14-
17.2 No modification of this License Agreement shall be valid or binding
upon the Party against whom enforcement of the modification is
sought, unless the modification is made in writing and signed by duly
authorized representatives of both Sandia and VIGA.
IN CONSIDERATION OF THE FOREGOING TERMS AND CONDITIONS, VIGA Technologies
Corporation and Sandia Corporation have caused this License Agreement to be
executed in duplicate by their duly authorized representatives. This License
Agreement will be effective when executed and when all conditions as set forth
above in the preamble are completed.
SANDIA CORPORATION:
By: /s/ Xxxxxx X. Siemens
--------------------------------------------
Xxxxxx X. Siemens
Title: Director, Technology Transfer and
Commercialization Center
---------------------------------------
Date: 10/9/95
---------------------------------------
VIGA TECHNOLOGIES CORPORATION:
By: /s/ Xxxxxx X. Xxxxxx
--------------------------------------------
Xxxxxx X. Xxxxxx
Title: Chief Executive Officer
---------------------------------------
Date: September 29, 1995
---------------------------------------
THIS LICENSE AGREEMENT DOES NOT BIND OR OBLIGATE EITHER PARTY IN ANY MANNER
UNLESS DULY EXECUTED BY AN AUTHORIZED REPRESENTATIVE OF BOTH PARTIES.
-15-
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT A1
PATENT: Multidimensional, User-Oriented, Synthetic Environment (SD-5340)
(Patent Application 230,802)
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
THE CONTENTS OF THIS EXHIBIT ARE TRADE SECRETS OF LICENSEE AND SHALL NOT BE
DISCLOSED TO ANY THIRD PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO
THE PROVISIONS OF 18 USC 1905.
-15-
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT A2
COPYRIGHT: Multidimensional, User-Oriented, Synthetic Environment (SCR-0158)
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
THE CONTENTS OF THIS EXHIBIT ARE TRADE SECRETS OF LICENSEE AND SHALL NOT BE
DISCLOSED TO ANY THIRD PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO
THE PROVISIONS OF 18 USC 1905.
-16-
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT A3
APPLICATION HANDLER PACKAGES & DATA
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
THE CONTENTS OF THIS EXHIBIT ARE TRADE SECRETS OF LICENSEE AND SHALL NOT BE
DISCLOSED TO ANY THIRD PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO
THE PROVISIONS OF 18 USC 1905.
-17-
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT B
Sandia Promotional Materials
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
THE CONTENTS OF THIS EXHIBIT ARE TRADE SECRETS OF LICENSEE AND SHALL NOT BE
DISCLOSED TO ANY THIRD PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO
THE PROVISIONS OF 18 USC 1905.
-18-
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT C
LICENSING FEES AND ROYALTIES
C.1: Licensing Fee Schedule
VIGA shall pay Licensing Fees in accordance with the following:
Amount Year Ending
[ * ] December 31, 1995
[ * ] December 31, 1996
[ * ] December 31, 1997
[ * ] December 31, 1998
[ * ] December 31, 1999
------------- -----------------
[ * ] TOTAL
C.2: Earned Royalty Rates
[ * ]
THE CONTENTS OF THIS EXHIBIT ARE TRADE SECRETS OF LICENSEE AND SHALL NOT BE
DISCLOSED TO ANY THIRD PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO
THE PROVISIONS OF 18 USC 1905.
-19-
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT C (CONTINUED)
LICENSING FEES AND ROYALTIES
C.2.a: Royalty Rate on VIGA Systems
VIGA shall pay earned royalties [ * ] in accordance with the following:
ROYALTY RATE
ON YEAR
VIGA SYSTEMS ENDING
[ * ] December 31, 1995
[ * ] December 31, 1996
[ * ] December 31, 1997
[ * ] December 31, 1998
[ * ] December 31, 1999
[ * ] December 31, 2000
[ * ] December 31, 2001
[ * ] and each year thereafter
[ * ]
C.2.b: Royalty Rate on VIGA Software
VIGA shall pay earned royalties [ * ] in accordance with the following:
ROYALTY RATE
ON YEAR
VIGA SOFTWARE ENDING
[ * ] December 31, 1995
[ * ] December 31, 1996
[ * ] December 31, 1997
[ * ] December 31, 1998
[ * ] December 31, 1999
[ * ] December 31, 2000
[ * ] December 31, 2001
[ * ] and each year thereafter
[ * ]
THE CONTENTS OF THIS EXHIBIT ARE TRADE SECRETS OF LICENSEE AND SHALL NOT BE
DISCLOSED TO ANY THIRD PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO
THE PROVISIONS OF 18 USC 1905.
-20-
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT C (CONTINUED)
LICENSING FEES AND ROYALTIES
C.3: Minimum Annual Royalty Schedule
Minimum Royalty
Due Sandia Year Ending
[ * ] December 31, 1995
[ * ] December 31, 1996
[ * ] December 31, 1997
[ * ] December 31, 1999
--- -----------------
Thereafter
THE CONTENTS OF THIS EXHIBIT ARE TRADE SECRETS OF LICENSEE AND SHALL NOT BE
DISCLOSED TO ANY THIRD PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO
THE PROVISIONS OF 18 USC 1905.
-21-
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT D
VIGA shall meet the following minimum standards of diligence in order to
maintain the rights as set forth in Article II.
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
[ * ]
THE CONTENTS OF THIS EXHIBIT ARE TRADE SECRETS OF LICENSEE AND SHALL NOT BE
DISCLOSED TO ANY THIRD PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO
THE PROVISIONS OF 18 USC 1905.
-22-
PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT.
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
Amendment 1
to License Agreement Between
Sandia Corporation and
VIGA Technologies Corporation (#95-C00154)
1.16 (AMENDED) An "Affiliate" of a Party shall mean any person,
partnership, company or entity which, directly or indirectly, is
controlled by or is under common control with such Party. For the
purpose of this License Agreement, MUSE Technology, Inc. shall be
deemed to be an Affiliate of Viga.
3.4 (AMENDED) If and when Sandia makes improvements to the VIGA Software,
Sandia agrees to make such improvements available to VIGA when
available for use at Sandia. VIGA has no obligation to incorporate
such improvements into VIGA Software. Moreover, VIGA will not be
required to pay any additional royalty than would otherwise be
required.
4.2 (AMENDED) For VIGA Business Activities with the Government and for
which VIGA sells products covered by one or more claim of Sandia Patent
Rights, VIGA shall
[ * ]
[ * ] That is, VIGA shall [ * ]
[ * ]
[ * ]
5.8 The DOE may require Sandia to report on the utilization or the effect
of using Sandia Software and Sandia Patent Rights in the commercial
marketplace. In this regard, VIGA agrees to cooperate with and assist
Sandia in making all such reports.
6.1 (AMENDED) VIGA shall treat all Sandia Software as proprietary which
Sandia has now made or in the future will make available to VIGA.
VIGA further agrees not to disclose Sandia Software to third parties,
except as provided for in Paragraphs 6.3, 6.4 and 6.5 or in
connection with a sublicense of VIGA Software. VIGA agrees to use
Sandia Software, only to the extent necessary, for the enjoyment of
VIGA's right and license granted under this License Agreement.
6.5 (AMENDED) For the purpose of Paragraph 6.4 of Article VI, a specific
aspect of technical information or data shall not be deemed to be
publicly available or in the possession of VIGA because the specific
aspect is embraced by general disclosures generally available to the
public or in the possession of VIGA, unless the specific aspect is
embraced by general disclosures generally available to the public or
in the possession
of VIGA, [unless the specific aspect] and its specific principle of
operation is also generally available to the public or in the
possession of VIGA prior to disclosure by Sandia.
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
6.10 (AMENDED) For the purpose of Paragraph 6.9, a specific aspect of
technical information or data shall not be deemed to be publicly
available or in the possession of Sandia because the specific aspect
is embraced by general disclosures generally available to the public
or in the possession of Sandia, unless the specific aspect is
embraced by general disclosures generally available to the public or
in the possession of Sandia, [unless the specific aspect] and its
specific principle of operation is also generally available to the
public or in the possession of Sandia prior to disclosure by VIGA.
EXHIBIT C.3 (AMENDED):
C.3: Minimum Annual Royalty Schedule
Minium Royalty
Due Sandia Year Ending
[ * ] December 31, 1995
[ * ] December 31, 1996
[ * ] December 31, 1997
[ * ] December 31, 1998
[ * ] December 31, 1999
-----------------
Thereafter
VIGA Technologies Corporation and Sandia Corporation have caused this
Amendment 1 to be executed in duplicate by their duly authorized
representatives. This Amendment 1 will be effective when executed.
SANDIA CORPORATION: VIGA TECHNOLOGIES CORPORATION:
By: /s/ Xxxxxx X. Siemens By: /s/ Xxxxxx X. Xxxxxx
------------------------------------ --------------------------
Xxxxxx X. Siemens Xxxxxx X. Xxxxxx
Title: Director, Technology Transfer and Title: Chief Executive Officer
Commercialization Center -----------------------
---------------------------------
Date: 2/6/96 Date: 2/20/96
---------------------------------- ------------------------
AMENDMENT TO LICENSE AGREEMENT
VIGA TECHNOLOGIES CORPORATION
#95-C00154
AMENDMENT #95-C00154-A002
The following change shall be made to the License Agreement between VIGA
Technologies Corporation and Sandia Corporation and will become effective on
the last day and year written below.
Pursuant to Paragraph 10.1 of this license agreement, Sandia approves the
assignment of this license agreement from VIGA Technologies Corporation to
MUSE Technologies, Inc.
Address:
MUSE Technologies, Inc.
0000 Xxxxxxxx XX, Xxxxx 000
Xxxxxxxxxxx, XX 00000
Phone: (000) 000-0000
Fax: (000) 000-0000
This License Agreement, together with its amendments, constitutes the entire
agreement of the Parties with respect to the subject matter hereof, and
supersedes all prior agreements, negotiations, representations and
understandings between the Parties related thereto.
Agreed for VIGA Technologies Corporation
by /s/ Xxxxxx X. Xxxxxx date 7/15/96
---------------------------- --------------------
Chief Executive Officer
Agreed for MUSE Technologies, Inc.
by /s/ Xxxxxx X. Xxxxxx date 7/15/96
----------------------------- --------------------
Chief Executive Officer
Agreed for Sandia Corporation:
by /s/ Xxxxxx X. Siemens date 7/8/96
---------------------------- --------------------
Xxxxxx X. Siemens
Director, Technology Partnerships
PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT.
AMENDMENT NO. 3
TO
LICENSE AGREEMENT DATED OCTOBER 9, 1995
BETWEEN
SANDIA CORPORATION
AND
MUSE TECHNOLOGIES, INC.
LICENSE NUMBER 95-C00154
This Amendment No. 3 to License Agreement Dated October 9, 1995 Between
Sandia Corporation ("Sandia") and Muse Technologies, Inc. ("Muse") License
Number 95-C00154 (the "License Agreement"), as amended, is made between Sandia
and Muse as of the date of the last signature fixed hereto.
WHEREAS, Sandia and Muse have entered into the License Agreement with
respect to certain software and related intellectual property rights as
described in said License Agreement. Capitalized terms used herein and not
defined shall have the meanings ascribed thereto in the License Agreement; and
WHEREAS, Sandia and Muse desire to amend certain terms of the License
Agreement as hereinafter set forth.
NOW, THEREFORE, in consideration of the mutual covenants and
agreements herein contained, the parties hereto hereby agree as follows:
1. Amendment of License Agreement to extend the period of exclusivity
The parties hereto desire to extend the worldwide exclusivity of the
license granted pursuant to the License Agreement. Accordingly,
Section 2.2 of the License Agreement is hereby replaced as follows:
Provided Muse meets its performance obligations under
Article III, Sandia agrees to refrain from executing
additional licenses of Sandia Software and Sandia Patent
Rights for a period of ten (10) years from the effective
date of this License Agreement. At the end of the ten (10)
year period, Muse may request an extension of time in which
Sandia will refrain from executing additional licenses.
Sandia has the right to make the final decision concerning
such an extension at this time. In the event that Muse's
request for such an extension of time is denied by Sandia, a
non-exclusive license will automatically issue and continue
in force to Muse upon payment of royalties as set forth in
this License Agreement.
PAGE 1 OF 8
MUSE SOFTWARE/PATENT LICENSE; LICENSE NUMBER; 95-C00154; AMENDMENT NO. 3
2. Effective date of the Amendment
This Amendment No. 3 shall become effective upon the date of the last
signature fixed hereto.
3. Licensing fees and royalties
In consideration of Sandia agreeing to amend the License Agreement
according to this Amendment No. 3, Muse agrees to pay to Sandia
license fees and royalties in accordance with Exhibit C of this
Amendment No. 3 which hereby replaces Exhibit C of the License
Agreement.
4. Effect on License Agreement
The License Agreement shall continue in full force and effect as
amended by this Amendment No. 3 and all prior amendments not
heretofore superceded. From and after the date hereof, all references
to the License Agreement shall be deemed to mean the License
Agreement as amended by this Amendment No. 3 and all prior amendments
not heretofore superceded.
5. Governing Law
This Amendment No. 3 shall be governed by and construed in accordance
with the domestic laws of the State of New Mexico without giving
effect to any choice of law or conflict of law provision or rule that
would cause the application of the laws of any jurisdiction other
than the State of New Mexico.
6. Counterparts
7. This Amendment No. 3 may be executed in any number of counterparts,
each of which will be deemed an original but all of which together will
constitute one and the same instrument.
8. Statements and Payments
Section 9.2 of the License Agreement is hereby replaced as follows:
Notices under this License Agreement shall be sufficient if
mailed by certified or registered mail, return receipt
requested, if sent by facsimile, if personally delivered to
the Parties or if deposited in a nationally recognized
overnight carrier. Notices by mail shall be deemed received
three days after deposited in the U.S. mail, certified or
return receipt requested or the third business day following
the
PAGE 2 OF 8
MUSE SOFTWARE/PATENT LICENSE; LICENSE NUMBER; 95-C00154; AMENDMENT NO. 3
deposit of such notice in a nationally recognized overnight
carrier. Notices to the Parties as appropriate, shall be
sent to the address of such Party specified in Article IX of
this License Agreement:
For Sandia Corporation
Delivery of Muse Software:
Sandia National Laboratories
Attention: Sandia/Muse Technical Manager, Org. 9215
Reference License Number: 95-C00154
0000 Xxxxxx XX
Xxxxxxxx 0000
Xxxxxxxxxxx, XX 00000
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
Statements and Notices:
Sandia National Laboratories
Attention: Licensing Administrator, Org. 4211
Reference License Number: 95-C00154
0000 Xxxxxx XX
Xxxxxxxx 0000
Xxxxxxxxxxx, XX 00000-0000
Telephone: (000) 000-0000
Facsimile: (000) 000-0000
Payments:
Sandia National Laboratories
Reference License Number: 95-C00154
c/o NationsBank
X.X. Xxx 00000
Xxxxxxxxxxx, XX 00000
PAGE 3 OF 8
MUSE SOFTWARE/PATENT LICENSE; LICENSE NUMBER; 95-C00154; AMENDMENT NO. 3
For Muse
Muse Technologies, Inc.
Attention: Licensing Administration
Reference Sandia License Number: 95-C00154
0000 Xxxxxxxx XX, Xxxxx 000
Xxxxxxxxxxx, XX 00000
Telephone: 000-000-0000
Fax: 000-000-0000
IN WITNESS WHEREOF, this Amendment No. 3 has been duly executed and
delivered by the authorized officer of each party hereto as of the date first
above written.
SANDIA CORPORATION
By: /s/ Xxxxxx X. Siemens 7/14/98
-----------------------------------------
Name:
Title: Director
MUSE TECHNOLOGIES, INC.
By: /s/ Xxxxxx X. Xxxxx
-----------------------------------------
Name: Xxxxxx X. Xxxxx
Title: President
Sandia Legal Review
/s/ S.t
-------------------
PAGE 4 OF 8
MUSE SOFTWARE/PATENT LICENSE; LICENSE NUMBER; 95-C00154; AMENDMENT NO. 3
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT C
LICENSING FEES AND ROYALTIES
C.l: Licensing Fee Schedule
Muse shall pay Licensing Fees in accordance with the following:
Amount Year Ending
[ * ] December 31, 1995
[ * ] December 31, 1996
[ * ] December 31, 1997
On or before thirty (30) days from
[ * ] the execution date of Amendment No. 3
[ * ] December 31, 1998
On or before twelve
months (12) from the
execution date of
[ * ] Amendment No. 3
[ * ] December 31, 1999
[ * ] TOTAL
PAGE 5 OF 8
MUSE SOFTWARE/PATENT LICENSE; LICENSE NUMBER; 95-C00154; AMENDMENT NO. 3
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT C (CONTINUED)
LICENSING FEES AND ROYALTIES
C.2: Earned Royalty Rates
[ * ]
[ * ]
C.2.a: Royalty Rate on Muse Systems
Muse shall pay earned royalties [ * ]
in accordance with the following:
Royalty Rate Year Ending
on
MUSE Systems
[ * ] December 31, 1995
[ * ] December 31, 1996
[ * ] December 31, 1997
[ * ] December 31, 1998
[ * ] December 31, 1999
[ * ] December 31, 2000
[ * ] December 31, 2001
[ * ] December 31, 2002
[ * ] December 31, 2003
[ * ] December 31, 2004
[ * ] December 31, 2005
[ * ] December 31, 2006
[ * ] and each year thereafter
[ * ]
THIS EXHIBIT CONTAINS TRADE SECRETS AND SHALL NOT BE DISCLOSED TO ANY THIRD
PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO THE PROVISIONS OF
17 USC 1905.
PAGE 6 OF 8
MUSE SOFTWARE/PATENT LICENSE; LICENSE NUMBER; 95-C00154; AMENDMENT NO. 3
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT C (CONTINUED)
LICENSING FEES AND ROYALTIES
C.2.b: Royalty Rate on Muse Systems
Muse shall pay earned royalties [ * ]
in accordance with the following:
Royalty Rate Year Ending
on
MUSE Systems
[ * ] December 31, 1995
[ * ] December 31, 1996
[ * ] December 31, 1997
[ * ] December 31, 1998
[ * ] December 31, 1999
[ * ] December 31, 2000
[ * ] December 31, 2001
[ * ] December 31, 2002
[ * ] December 31, 2003
[ * ] December 31, 2004
[ * ] December 31, 2005
[ * ] December 31, 2006
[ * ] and each year thereafter
[ * ]
THIS EXHIBIT CONTAINS TRADE SECRETS AND SHALL NOT BE DISCLOSED TO ANY THIRD
PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO THE PROVISIONS OF
17 USC 1905.
PAGE 7 OF 8
MUSE SOFTWARE/PATENT LICENSE; LICENSE NUMBER; 95-C00154; AMENDMENT NO. 3
* OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT.
EXHIBIT C (CONTINUED)
LICENSING FEES AND ROYALTIES
C.3: Minimum Annual Royalty Schedule
Royalty Rate Year Ending
on
MUSE Systems
[ * ] December 31, 1995
[ * ] December 31, 1996
[ * ] December 31, 1997
[ * ] December 31, 1998
[ * ] December 31, 1999
[ * ] December 31, 2000
[ * ] December 31, 2001
[ * ] December 31, 2002
[ * ] December 31, 2003
[ * ] December 31, 2004
[ * ] December 31, 2005
[ * ] December 31, 2006
[ * ] and each year thereafter
THIS EXHIBIT CONTAINS TRADE SECRETS AND SHALL NOT BE DISCLOSED TO ANY THIRD
PARTY EXCEPT TO GOVERNMENT PERSONNEL WHO ARE SUBJECT TO THE PROVISIONS OF
17 USC 1905.
PAGE 8 OF 8
