SELLER LICENSE AGREEMENT
This SELLER LICENSE AGREEMENT ("Agreement") is effective as of May
28, 1999 ("Effective Date") from EG&G, Inc., a Massachusetts corporation
("Licensor") to The Xxxxxx-Xxxxx Corporation, a New York corporation located
at 000 Xxxx Xxxxxx, Xxxxxxx, XX 00000 ("Licensee").
WHEREAS, pursuant to Section 1.2 of the Purchase Agreement between
Licensor and Licensee dated as of March 8, 1999 ("Purchase Agreement"),
Licensee has agreed to sell to Licensor the assets of the Analytical
Instruments Business (as defined therein), which pursuant to Section 1.2(a)
include certain Intellectual Property (as defined therein), subject to the
License Agreements (as defined therein);
WHEREAS, pursuant to Section 4.8(b) of the Purchase Agreement, the
License Agreements include this Agreement, pursuant to which Licensor is
granting to Licensee a license to use the Intellectual Property (as defined
therein) set forth on Schedule 4.8(b) thereto and Exhibit A hereto; and
WHEREAS, pursuant to Sections 5.2(d) and 5.3(e) of the Purchase
Agreement, Licensor and Licensee must execute and deliver this Agreement to
each other at or prior to the Closing Date (as defined therein):
NOW, THEREFORE, in consideration of the premises and the mutual
promises and covenants contained herein and for other good and valuable
consideration (including that set forth in the Purchase Agreement), the
receipt and sufficiency of which are hereby acknowledged, the parties hereto
agree as follows:
Article 1. Grant of License.
Section 1.1. Patents. During the Term as set forth in Article 7,
Licensor hereby grants to Licensee a worldwide, non-exclusive, royalty-free
right and license to make, have made, use, import, distribute and sell
products under the United States and foreign patents and patent applications,
invention disclosures and other intellectual property rights listed on
Schedule A annexed hereto (the "Patents"), subject to Licensee's non-
competition obligations under Section 8.6 of the Purchase Agreement.
Section 1.2. Know-How. During the Term as set forth in Article 7,
Licensor hereby grants to Licensee a worldwide, non-exclusive, royalty-free
right and license to make, have made, use, import, distribute and sell
products using any and all trade secrets, know-how and technology related to
the Patents, that exist and are in Licensee's possession as of the Effective
Date and are not otherwise covered by the license grant in Section 1.1 (the
"Know-How"), subject to Licensee's non-competition obligations under Section
8.6 of the Purchase Agreement and the applicable Transition Agreement.
Section 1.3. Company Name. (a) During the Term as set forth in
Article 7, Licensor hereby grants to Licensee a worldwide, non-exclusive,
royalty-free right and license to use the name "Xxxxxx-Xxxxx" (the "Company
Name," together with the Patents and Know-How, the "Licensed Property")
solely as necessary to indicate the prior corporate ownership of the
Analytical Instruments Business by Licensee prior to the Effective Date, and
not in connection with sales of products by Licensee.
(b) The parties acknowledge that Licensee has an existing
inventory of tangible materials, including, without limitation, letterhead,
invoices and other business forms (the "Inventory") that bear the Company
Name. The parties agree that Licensee may continue to distribute or other-
wise make use of such Inventory in the ordinary course of business consistent
with past practice, subject to Licensee's obligations under Article 2 hereof.
Licensee also agrees that while Licensee makes use of the Inventory pursuant
to this Section 1.3, Licensee shall ensure that any contract signed with a
third party clearly and plainly communicates to such party that it is doing
business with Licensee and not Licensor. Licensee agrees that Licensee's
employees and agents shall not represent that they are or hold themselves to
be affiliated with Licensor. Licensee agrees that it will take all necessary
or desirable actions to minimize potential confusion as to the source of its
products viz-a-vis Licensor.
Article 2. Company Name Protection.
Section 2.1. Good Practice. Licensee shall use the Company Name in
good faith, in a dignified manner, and in accordance with good trademark and
industry practice wherever the Company Name is used. Unless approved by
Licensor, which approval shall not be unreasonably withheld, Licensee shall
refrain from using the Company Name in combination with the trademark of any
third party (i.e., other than Licensee) on the packaging of any products
bearing the Company Name, any advertising or promotional materials related to
such products or any other advertising or promotional materials of Licensee.
Section 2.2. Quality Standard. The quality of (i) the products
offered by Licensee under the Company Name; (ii) all advertising, promotional
and marketing materials with respect to the Company Name; and (iii) all
operations of the business bearing the Company Name shall operate with
quality standards at least as high as those of Licensee as of the Effective
Date. Licensee shall not do any act that brings Licensor or the Company Name
into disrepute.
Section 2.3. Representative Samples. Licensor has the right, at
reasonable intervals, to request representative samples of Licensee's
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products and advertising, promotional and marketing materials to ensure that
appropriate standards with respect to quality are being met.
Article 3. Reservation and Limitation of Rights.
Section 3.1. Reservation to Licensor. All rights not expressly
granted to Licensee in Article 1 are reserved to Licensor. Licensee
disclaims any right to use the Licensed Property except in accordance with
the express grants in Article 1. Licensee expressly agrees that its use of
the Licensed Property shall be consistent with all relevant terms of the
Purchase Agreement, including without limitation Section 8.6.
Section 3.2. No Other Property. Licensee acknowledges that
Licensor has no obligation to make available to Licensee any intellectual
property other than the Licensed Property, including any intellectual
property similar or identical thereto or to provide Licensee with any
modifications, updates, revisions, new developments or improvements to the
Licensed Property created or developed after the Effective Date.
Article 4. Ownership of Intellectual Property.
Section 4.1. Ownership by Licensor. Licensee agrees that, as
between Licensor and Licensee, Licensor is the sole and exclusive owner of
all right, title and interest in and to the Licensed Property, subject to the
licensed rights granted to Licensee hereunder. Licensee agrees not to
directly or indirectly question, attack, contest or in any other manner
impugn the validity and/or enforceability of the Licensed Property or
Licensor's rights therein, including without limitation, in any action in
which enforcement of a provision of this Agreement is sought; nor shall
Licensee willingly become a party adverse to Licensor in litigation in which
a third party contests the validity and/or enforceability of the Licensed
Property or Licensor's rights therein.
Section 4.2. Further Cooperation. Licensee shall, during the Term
and after termination hereof, execute such documents as Licensor may
reasonably request from time to time to evidence and record with all
appropriate authorities that all ownership right, title and interest in and
to the Licensed Property reside in Licensor.
Section 4.3. Survival. The provisions of this Article 3 shall
survive any termination of this Agreement.
Article 5. Maintenance. Licensor agrees to take actions, pay fees
and execute documents as reasonably necessary to (i) maintain legal
protection for any patents or registrations within the Licensed Property;
(ii) prosecute any applications within the Licensed Property; and (iii) seek
U.S. federal or foreign protection for all other Licensed Property (the
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foregoing, "Maintenance Obligations"). Licensee shall cooperate with
Licensor as necessary to enable Licensor to fulfill its Maintenance
Obligations. If Licensor chooses not to fulfill a Maintenance Obligation
with respect to any Licensed Property, Licensor shall notify Licensee
promptly of such decision and, in addition to Licensee's other remedies,
Licensee shall have the right, at Licensee's option, either (i) to perform
such Maintenance Obligations on Licensor's behalf and with Licensor's
cooperation, including the execution of all necessary documents by Licensor,
or (ii) to have such Licensed Property assigned to Licensee, at Licensee's
cost, subject to a worldwide, non-exclusive, royalty-free license back to
Licensor.
Article 6. Approvals and Applicable Laws.
Section 6.1. Compliance. Licensee shall, at its sole expense,
comply at all times with all applicable laws and regulations pertaining to
the use of the Licensed Property, including all laws governing the importing
and exporting of the applicable Licensed Property from or to any other nation
or sovereignty. Licensee shall comply with all applicable laws and
regulations in connection with its use and distribution of its products and
shall establish and maintain, and shall cause its employees, contractors,
consultants and agents to maintain a high standard of ethical business
practices in connection with the sale, use and distribution of its products.
Section 6.2. Notices. Licensee agrees to include on all Licensed
Property all notices and legends required by applicable law or regulations to
preserve and protect the validity of the Licensed Property and Licensor's
rights therein, to the extent that Licensee is aware of the use of such
Licensed Property (in particular, on products). Licensee shall not remove,
alter, cover or obfuscate any notices or other proprietary or restrictive
notice or legend placed or embedded by Licensor on or in the Licensed
Property or materials embodying any Licensed Property.
Article 7. Term. The term of this Agreement ("Term") commences on
the Effective Date and lasts, unless termination occurs under Article 7, (i)
with respect to the license granted in Section 1.1, until expiration of the
last patent listed on Schedule A; (ii) with respect to the license granted in
Section 1.2, in perpetuity; and (iii) with respect to the license granted in
Section 1.3, one year. As each license expires, the provisions in this
Agreement relating to such license shall expire, but the remainder of the
Agreement shall remain in full force and effect.
Article 8. Material Breach and Termination.
Section 8.1. Material Breach by Licensee. In the event that
Licensee materially breaches any of its obligations under this Agreement,
Licensor may, by written notice, require that Licensee take corrective
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action. Licensee shall immediately take whatever steps are necessary to
remedy the breach, at its sole cost and expense, or shall contest such breach
in writing to Licensor within 10 business days of receipt of notice thereof.
If Licensee does not (i) timely contest the notice of breach, (ii) remedy
such breach within 60 days of receipt of such notice or (iii) use its best
efforts within such 60-day period to cure such breach and make substantial
progress toward cure, Licensee shall immediately cease using any and all
Licensed Property affected by the breach until such breach is remedied. If
Licensee timely contests the breach, or if after the 60-day period expires,
Licensee has not cured the breach or made substantial progress toward cure,
Licensor may apply to a court of competent jurisdiction for appropriate
relief. If such court determines that a material breach of this Agreement
has occurred and has not been cured, or that Licensee has not made
substantial progress towards cure, or that such breach is not capable of
being cured in a reasonable amount of time, then Licensor shall be entitled
to all rights and remedies available at law or in equity, and Licensee shall
be deemed to have irrevocably and unconditionally consented to the entry of
an order by a court of competent jurisdiction granting an injunction against
further use of the Licensed Property in the manner that constituted the
material breach, but shall not be enjoined from non-breaching uses of the
Licensed Property.
Section 8.2. Default. Either party may terminate this Agreement
at any time, upon written notice, if the other party makes an assignment for
the benefit of creditors, admits in writing its inability to pay debts as
they mature, has a trustee or receiver appointed for a substantial part of
its assets, or, to the extent enforceable under the U.S. Bankruptcy Code, has
instituted against it a proceeding in bankruptcy which is acquiesced in, is
not dismissed within 120 days, or results in an adjudication of bankruptcy.
If such an event occurs, the non-bankrupt party shall have the right, in
addition to its other rights and remedies, to suspend the bankrupt party's
rights regarding the Licensed Property while the bankrupt party attempts to
remedy the situation.
Section 8.3. Assignment. The license granted in Section 1.3 shall
terminate immediately in the event of a change of control, or sale of
substantially all the assets, of Licensee.
Section 8.4. After Expiration/Termination. Upon expiration of any
license under Article 1 or termination of this Agreement, Licensor and
Licensee agree to cooperate so as best to preserve the value of the
applicable Licensed Property. Upon such expiration or termination, Licensee
agrees immediately to discontinue all use of the applicable Licensed
Property, and at Licensor's request, to destroy or return the same promptly
and certify that such action was taken.
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Article 9. Warranty Disclaimer. Licensee acknowledges that, with
respect to this agreement, Licensor makes no representation or warranty
whatsoever, as to ownership, value or non-infringement of the Licensed
Property. The Licensed Property is hereby licensed to Licensee on an "as is"
basis. Except as otherwise specified in this Article 9, there are no
warranties, either express or implied, respecting the Licensed Property,
including without limitation implied warranties of merchantability or fitness
for any particular purpose. Licensor makes no representation or warranties
to Licensee, either express or implied, nor assumes nor accepts any liability
to Licensee, with respect to the quality or sufficiency of any results to be
achieved by Licensee's use of the Licensed Property. Licensee expressly
assumes all risks if any, associated therewith.
Article 10.. Indemnification.
Section 10.1. By Licensee. Licensee agrees to defend, indemnify,
and hold harmless Licensor and its directors, officers, employees and agents
("Licensor Parties") against all damages, costs, expenses, settlements,
judgments, fines, liabilities and fees (including attorneys' fees and
litigation costs and expenses) ("Damages") incurred by any Licensor Parties
based upon, arising out of or relating to any action, suit or proceeding
brought by third parties ("Action") as a result of a breach of this Agreement
by Licensee.
Section 10.2. By Licensor. Licensor agrees to defend, indemnify,
and hold harmless Licensee and its directors, officers, employees and agents
("Licensee Parties") against all Damages incurred by any Licensee Parties
based upon, arising out of or relating to any Action as a result of a breach
of this Agreement by Licensor.
Section 10.3. Notification. All claims for indemnification by a
Licensor Party or Licensee Party, as the case may be (an "Indemnified
Party"), hereunder shall be asserted and resolved as set forth in this
Section 10.3. In the event that any written claim or demand for which
Licensor or Licensee, as the case may be (an "Indemnifying Party"), would be
liable to any Indemnified Party hereunder is asserted against or sought to be
collected from any Indemnified Party by a third party, such Indemnified Party
shall promptly notify the Indemnifying Party of such claim or demand and the
amount or the estimated amount thereof to the extent then feasible (which
estimate shall not be conclusive of the final amount of such claim or demand)
(the "Claim Notice"). The Indemnifying Party shall have 30 days from the
date of receipt of the Claim Notice (the "Notice Period") to notify the
Indemnified Party (i) whether or not the Indemnifying Party disputes the
liability of the Indemnifying Party to the Indemnified Party hereunder with
respect to such claim or demand and (ii) whether or not it desires to defend
the Indemnified Party against such claim or demand. All costs and expenses
incurred by the Indemnifying Party in defending such claim or demand shall be
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a liability of, and shall be paid by, the Indemnifying Party. Except as
hereinafter provided, in the event that the Indemnifying Party notifies the
Indemnified Party within the Notice Period that it desires to defend the
Indemnified Party against such claim or demand, the Indemnifying Party shall
have the right to defend the Indemnified Party by appropriate proceedings and
shall have the sole power to direct and control such defense. If any
Indemnified Party desires to participate in any such defense, it may do so at
its sole cost and expense. The Indemnified Party shall not settle a claim or
demand without the consent of the Indemnifying Party. The Indemnifying Party
shall not, without the prior written consent of the Indemnified Party,
settle, compromise or offer to settle or compromise any such claim or demand
on a basis which would result in the imposition of a consent order,
injunction or decree which would restrict the future activity or conduct of
the Indemnified Party or any subsidiary or affiliate thereof or if such
settlement or compromise does not include an unconditional release of the
Indemnified Party for any liability arising out of such claim or demand. If
the Indemnifying Party elects not to defend the Indemnified Party against
such claim or demand, whether by not giving the Indemnified Party timely
notice as provided above or otherwise, then the amount of any such claim or
demand or, if the same be contested by the Indemnified Party, that portion
thereof as to which such defense is unsuccessful (and the reasonable costs
and expenses pertaining to such defense), shall be the liability of the
Indemnifying Party hereunder, subject to the limitations set forth in
Sections 10.3(a) and 10.3(b). Licensor and Licensee shall each render to
each other such assistance as may reasonably be requested in order to insure
the proper and adequate defense of any such claim or proceeding.
(a) The indemnities provided in this Section 10.3 shall be the
sole and exclusive remedy of the Indemnified Party against the Indemnifying
Party at law or equity for any matter covered by Sections 10.1 and 10.2.
(b) The amount of any Damages for which indemnification is
provided under this Section 10.3 shall be computed net of any insurance
proceeds received by the Indemnified Party in connection with such Damages.
If the amount with respect to which any claim is made under this Section 10.3
(an "Indemnity Claim") gives rise to a currently realizable Tax Benefit (as
defined below) to the party making the claim, the indemnity payment shall be
reduced by the amount of the Tax Benefit available to the party making the
claim. To the extent such Indemnity Claim does not give rise to a currently
realizable Tax Benefit, if the amount with respect to which any Indemnity
Claim is made gives rise to a subsequently realized Tax Benefit to the party
that made the claim, such party shall refund to the Indemnifying Party the
amount of such Tax Benefit when, as and if realized. For the purposes of
this Agreement, any subsequently realized Tax Benefit shall be treated as
though it were a reduction in the amount of the initial Indemnity Claim, and
the liabilities of the parties shall be redetermined as though both occurred
at or prior to the time of the indemnity payment. For purposes of this
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Section 10.3(b), a "Tax Benefit" means an amount by which the tax liability
of the party (or group of corporations including the party) is reduced
(including, without limitation, by deduction, reduction of income by virtue
of increased tax basis or otherwise, entitlement to refund, credit or
otherwise) plus any related interest received from the relevant taxing
authority. Where a party has other losses, deductions, credits or items
available to it, the Tax Benefit from any losses, deductions, credits or
items relating to the Indemnity Claim shall be deemed to be realized
proportionately with any other losses, deductions, credits or items. For the
purposes of this Section 10.3(b), a Tax Benefit is "currently realizable" to
the extent it can be reasonably anticipated that such Tax Benefit will be
realized in the current taxable period or year or in any Tax Return with
respect thereto (including through a carryback to a prior taxable period) or
in any taxable period or year prior to the date of the Indemnity Claim. In
the event that there should be a determination disallowing the Tax Benefit,
the Indemnifying Party shall be liable to refund to the Indemnified Party the
amount of any related reduction previously allowed or payments previously
made to the Indemnifying Party pursuant to this Section 10.3. The amount of
the refunded reduction or payment shall be deemed a payment under this
Section 10.3 and thus shall be paid subject to any applicable reductions
under this Section 10.3.
(c) Each Indemnified Party shall be obligated in connection with
any claim for indemnification under this Section 10.3 to use all reasonable
efforts to mitigate Damages upon and after becoming aware of any event which
could reasonably be expected to give rise to such Damages.
(d) Notwithstanding anything to the contrary contained herein,
neither party hereto nor any affiliate of either of them shall be liable for
any consequential, punitive or special damages pursuant to this Agreement or
any of the agreements contemplated hereby.
Article 11. Confidentiality.
Section 11.1. Know-How. Licensee shall use commercially
reasonable efforts, including executing all necessary contractual provisions,
to prevent third parties from modifying, altering, changing, reproducing,
reverse engineering, dissembling, decompiling, distributing or copying the
Know-How or deriving any source code or algorithms therefrom.
Section 11.2. Confidential Information. In connection with this
Agreement, Licensor and Licensee (each a "Disclosing Party") may each
disclose certain Confidential Information (as hereinafter defined) to the
other party (each a "Receiving Party"). "Confidential Information," subject
to the provisions of Section 11.4, shall mean (i) any information disclosed
after the Effective Date and designated in writing as confidential,
proprietary, or marked with words of like import; and (ii) any information
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orally or visually conveyed, if the Disclosing Party provides specific
written notice that such oral or visual communication shall be deemed
Confidential Information and delivers such writing to the Receiving Party
within 10 days after the oral or visual conveyance.
Section 11.3. Restricted Disclosure. Each of Licensor and
Licensee acknowledge the confidential and proprietary nature of the other
party's Confidential Information and agree that as the Receiving Party, it
shall use the same level of care it accords its own confidential information
(but in any event, no less than a reasonable standard of care) not to reveal
or disclose any Confidential Information for any purpose (except as permitted
by the following sentence) to any third party not a Receiving Party, nor use
any Confidential Information for any purpose other than as contemplated
hereby, in each case, without the prior written consent of the Disclosing
Party. In the event that a Receiving Party wishes to disclose Confidential
Information to a third party (other than another Receiving Party), it may do
so only with the express written consent of the Disclosing Party or if the
third party is a reputable party and signs an agreement with the Receiving
Party that is appropriate under the circumstances and is reasonably
calculated to ensure the confidentiality of the applicable Confidential
Information. Upon request, the Disclosing Party shall have the right to
review such agreements to ensure that the foregoing obligation is fulfilled.
Section 11.4. Exceptions. Notwithstanding anything contained
herein to the contrary, Confidential Information shall not include
information which:
(a) at or prior to the time of disclosure by the Disclosing Party
was known to or independently developed by the Receiving Party as
evidenced by one or more documents, except to the extent unlawfully
appropriated by the Receiving Party or third party;
(b) at or after the time of disclosure by the Disclosing Party
becomes generally available to the public through no wrongful or
negligent act or omission on the Receiving Party's part;
(c) is later developed by the Receiving Party independent of any
Confidential Information it receives from the Disclosing Party:
(d) the Receiving Party receives from a third party free to make
such disclosure without breach of any legal obligation; or
(e) is required to be disclosed pursuant to any statute,
regulation, order, subpoena or document discovery request, provided that
prior written notice of such disclosure is furnished to the Disclosing
Party as soon as practicable in order to afford the Disclosing Party an
opportunity to seek a protective order (it being agreed that if the
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Disclosing Party is unable to obtain or does not seek a protective order
and the Receiving Party is legally compelled to disclose such
information, disclosure of such information may be made without
liability).
Section 11.5. Injunctive Relief. In view of the difficulties of
placing a monetary value on the Confidential Information, the Disclosing
Party may be entitled to a preliminary and final injunction without the
necessity of posting any bond or undertaking in connection therewith to
prevent any further breach of this Article 11 or further unauthorized use of
Confidential Information. This remedy is separate and apart from any other
remedy the Disclosing Party may have.
Section 11.6. Remedial Measures. Licensor or Licensee, as the
case may be, shall notify the Disclosing Party immediately upon discovery of
any prohibited use or disclosure of the Confidential Information, or any
other breach of this Article 11 by a Receiving Party, and shall fully
cooperate with the Disclosing Party to help the Disclosing Party regain
possession of the Confidential Information and prevent the further prohibited
use or disclosure of the Confidential Information.
Section 11.7. Term. The term of this Article 11 shall commence on
the Effective Date and last five years, and shall survive any earlier
termination of this Agreement.
Article 12. Infringement. Licensee agrees to notify Licensor
immediately after it becomes aware of any actual or threatened Infringement
of the Licensed Property by a third party. Licensee may not file any Action
alleging Infringement of the Licensed Property without the prior written
approval of Licensor. Licensor, in its absolute discretion, may file an
Action alleging Infringement of the Licensed Property without the consent of
Licensee. Licensee agrees to cooperate with Licensor, at Licensor's request
and expense, in any such Action. Licensor shall pay all costs and expenses
associated with and retain any and all such proceeds received in connection
with any such Action.
Article 13. Bankruptcy. The licenses to the Patents and Know-How
granted in Article 1 shall be deemed to be, for purposes of Section 365(n) of
the U.S. Bankruptcy Code, licenses to rights in "intellectual property" as
defined in Section 101 of the Bankruptcy Code. The parties agree that
Licensee shall retain and may fully exercise all of its rights and elections
under the Bankruptcy Code. In the event that a bankruptcy proceeding under
the Bankruptcy Code is commenced by or against Licensor, Licensee shall be
entitled, at its option, to: (a) retain all of its rights under this
Agreement (including without limitation the rights and licenses granted under
Article 1 hereof) pursuant to Section 365(n) of the U.S. Bankruptcy Code; or
(b) receive a complete duplicate of, or complete access to, all Patents and
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Know-How licensed hereunder constituting "intellectual property" under
Section 101 of the Bankruptcy Code and all embodiments thereof. If such
Patents or Know-How are not already in Licensee's possession, it shall be
promptly delivered to Licensee upon Licensee's written request (i) upon any
such commencement of a bankruptcy proceeding, unless Licensor elects to
continue to perform all of its obligations under this Agreement; or (ii) upon
the rejection of this Agreement by or on behalf of Licensor.
Article 14.. Miscellaneous.
Section 14.1. Notices. All notices, requests, demands 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 if delivered
personally, if telecopied or mailed, first class mail, postage prepaid,
return receipt requested, or by overnight courier as follows:
(a) If to Licensee:
The Xxxxxx-Xxxxx Corporation
000 Xxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxxx 00000
Attention: Secretary
Fax: (000) 000-0000
with a copy to:
Xxxxxxx Xxxxxxx & Xxxxxxxx
000 Xxxxxxxxx Xxxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxxxxxx X. Xxxxxx, Esq.
Fax: (000) 000-0000
(b) If to Licensor:
EG&G, Inc.
00 Xxxxxxx Xxxxxx
Xxxxxxxxx, Xxxxxxxxxxxxx 00000
Attention: General Counsel
Fax: (000) 000-0000
or to such other address as either party shall have specified by notice in
writing to the other party. All such notices, requests, demands and
communications shall be deemed to have been received on the date of personal
delivery or telecopy, on the third Business Day after the mailing thereof or
on the first day after delivery by overnight courier.
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Section 14.2. Entire Agreement. This Agreement (including the
Exhibits and Schedules hereto) constitutes the entire agreement between the
parties hereto and supersedes all prior agreements and understandings, oral
and written, between the parties hereto with respect to the subject matter
hereof.
Section 14.3. Binding Effects; Benefit. This Agreement shall
inure to the benefit of and be binding upon the parties hereto and their
respective successors and assigns. Nothing in this Agreement, expressed or
implied, is intended to confer on any Person other than the parties hereto or
their respective successors and assigns, any rights, remedies, obligations or
liabilities under or by reason of this Agreement.
Section 14.4. Assignments and Sublicenses. (a) This Agreement,
or any portion thereof or license therein, may not be assigned or sublicensed
by either party to a non-Affiliate (as defined in the Purchase Agreement),
either directly or indirectly, without the prior written consent of the
other; such consent not to be withheld unreasonably; provided that nothing
herein shall restrict such assignment, if any, by Licensee of its rights and
obligations under this Agreement as may be necessary to implement the
transactions relating to Celera Genomics Corporation publicly announced by
Licensee on September 23, 1998. Any attempted assignment by either party not
in accordance with this Section 14.4 shall be considered null and void ab
initio.
(b) Notwithstanding Section 14.4(a), Licensee may sublicense the
licenses granted in Sections 1.1 and 1.2 to the extent necessary for the
distributors and/or end users of Licensee's products to enjoy the benefits
thereof; however, Licensee shall not sublicense these licenses to third
parties for the independent manufacture, distribution, sale and/or use of
products under the Patents or Know-How.
(c) In the event of any permitted assignment, (i) this Agreement
shall be binding upon the successors and assigns of any assigning party; and
(ii) all reference herein to Licensor or Licensee shall mean both Licensor
and Licensee and their respective assignees, and the assignees shall not be
entitled to assign further this Agreement or sublicense rights governed
hereby without the prior written consent of the other party.
Section 14.5. Amendment; Waiver. This Agreement, including this
Section, may be amended, supplemented or otherwise modified only by a
written instrument executed by the parties hereto. No waiver by either party
of any of the provisions hereof shall be effective unless explicitly set
forth in writing and executed by the party so waiving. Except as provided in
the preceding sentence, no action taken pursuant to this Agreement, including
without limitation, any investigation by or on behalf of any party, shall be
deemed to constitute a waiver by the party taking such action of compliance
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with any representations, warranties, covenants, or agreements contained
herein, and in any documents delivered or to be delivered pursuant to this
Agreement. The waiver by any party hereto of a breach of any provision of
this Agreement shall not operate or be construed as a waiver of any
subsequent breach.
Section 14.6. Governing Law; Jurisdiction and Service of Process.
This Agreement shall be governed by, and construed in accordance with, the
laws of the State of New York. Any suit, action or proceeding against any
party with respect to this Agreement may be brought in a court of the United
States sitting in the City of New York in the State of New York or in the
Commonwealth of Massachusetts or, if jurisdiction is lacking in such a court,
in a court of record in the State of New York or the Commonwealth of
Massachusetts, and each party hereto hereby irrevocably waives, to the
fullest extent permitted by law, any objection that it may have, whether now
or in the future, to the laying of venue in, or to the jurisdiction of, any
and each of such courts for the purpose of any such suit, action or
proceeding and further waives any claim that any such suit, action or
proceeding has been brought in an inconvenient forum, and each hereby submits
to such jurisdiction.
Section 14.7. Further Assurances. Licensor and Licensee agree to
execute such further documentation and perform such further actions,
including the recordation of such documentation with appropriate authorities,
as may be reasonably requested by the other party hereto to evidence and
effectuate further the purposes and intents set forth in this Agreement.
Section 14.8. Section Headings; Table of Contents. The section
headings contained in this Agreement and the table of contents to this
Agreement are for reference purposes only and shall not affect the meaning or
interpretation of this Agreement.
Section 14.9. Severability. If any provision of this Agreement
shall be declared by any court of competent jurisdiction to be illegal, void
or unenforceable, all other provisions of this Agreement shall not be
affected and shall remain in full force and effect.
Section 14.10. Counterparts. This Agreement may be executed in
any number of counterparts, each of which shall be deemed to be an original
and all of which together shall be deemed to be one and the same instrument.
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IN WITNESS WHEREOF, the parties hereto have executed and delivered
this Agreement as of the date first above written.
EG&G, INC.
By:
Name:
Title:
Date:
THE XXXXXX-XXXXX CORPORATION
By:
Name:
Title:
Date:
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SCHEDULE A - PATENTS
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