NON-EXCLUSIVE LICENSE AND CROSS-LICENSE AGREEMENT
This
Non-Exclusive License and Cross-License Agreement (the “License”)
is
made and entered into effective as of May
30,
2008
(“Effective
Date”)
by and
between the XsunX, Inc., a Colorado Corporation ("XsunX"),
MVSystems, Inc., a Colorado Corporation (“MVSI”),
and
Xxxx Xxxxx (“Xx.
Xxxxx”),
an
individual (collectively, the “MVS
Parties”).
XsunX
and the MVS Parties hereinafter may be referred to individually as a
“party”
and
collectively as the “parties.”
RECITALS
A. WHEREAS,
XsunX and the
MVS
Parties are
parties to that certain Technology Sharing and License Agreement dated September
17, 2004, as amended (“Technology
Sharing and License Agreement”),
under
which the MVS Parties licensed certain technologies to XsunX, in accordance
with
the terms set forth therein, including, without limitation, the Licensed Patents
(as defined below).
B. WHEREAS,
XsunX and the MVS Parties are parties to that certain Expanded Use License
Agreement dated October 12, 2005 (“Expanded
Use License Agreement”),
under
which the Technology Sharing and License Agreement was amended to expand the
scope and use of certain technology, all in accordance with the terms set forth
therein. The Technology Sharing and License Agreement and the Expanded Use
License Agreement hereinafter are collectively referred to as the “Original
License Agreements.”
C. WHEREAS,
XsunX and MVSI are parties to those certain Phase
Agreements,
as
defined below, pursuant which MVSI agreed to undertake certain research and
development activities on a no-profit basis, all in accordance with the terms
set forth in the applicable Phase Agreement and in accordance with the terms
and
conditions set forth in the Original License Agreements.
D.
WHEREAS, the parties have determined
to terminate their business relationship and wish to have no obligation to
one
another after the date hereof, whether arising under the Original License
Agreements, the Phase Agreements or any other agreement between or among the
parties existing prior to the Effective Date, and to mutually release each
other, and, in furtherance of such goal, have contemporaneously herewith entered
into that certain Separation
Agreement and Mutual Release effective
as of May
30, 2008
(the
“Agreement”)
under
which Agreement any and all prior agreements between the parties, including
without limitation, the Original License Agreements (including all attachments
and agreements appended thereto, and all amendments, purported or otherwise)
and
the Phase Agreements (including all attachments thereto, and all amendments,
purported or otherwise) are being completely terminated with no surviving
obligations or duties, and pursuant to which Agreement, the parties desire
to
execute this License whereby (i) the MVS Parties shall license the Licensed
Patents to XsunX, and (ii) XsunX shall license the Derivative Works (as defined
below) to MVSI.
NOW
THEREFORE, in consideration of the foregoing Recitals, which are made a part
of
this License, the mutual covenants, agreements, representations, and warranties
contained in this License, and other good and valuable consideration, the
adequacy and receipt of which are hereby acknowledged, the parties agree as
follows:
AGREEMENT
1. DEFINITIONS.
In
addition to the terms defined elsewhere in this License and in any attached
exhibits or schedules, the following terms shall have the meanings set forth
below:
1
1.1. “Commercial
Development”
means
development, manufacturing, marketing, sale, offer(s) to sell, lease, licensing,
installation, application, service, training, use, import, export or other
promotional or market activities of any kind.
1.2. “Derivative
Works” shall
mean any product or process, including research or development related to such
product or process, whether in complete or incomplete form, developed by the
parties between September 17, 2004 and the Effective Date pursuant to the
Original License Agreements or the Phase Agreements and delivered to the parties
in connection therewith.
1.3. “IP
Rights”
means
all
forms of intellectual property rights or industrial property rights and
protections throughout the world, whether currently existing or hereafter
developed or acquired and whether now known or hereafter recognized, and whether
arising under United States (state or federal) or foreign common or statutory
law, granted by contract, license, or otherwise and including, without
limitation, all: (a) inventions and discoveries (whether patentable or
unpatentable and whether or not reduced to practice), utility models, and all
related patents, patent applications and patent disclosures, together with
all
reissuances, continuations, continuations-in-part, revisions, extensions and
reexaminations thereof; (b) trademarks, service marks, trade dress, slogans,
logos, together with all goodwill associated therewith, and all applications,
registrations and renewals in connection therewith; (c) copyrightable works,
all
copyrights and all applications, registrations and renewals in connection
therewith; (d) know-how, software programs (in object code and source code
form), modules, components, utilities, subsets, objects, program listings,
rights in databases, rights to confidential or other proprietary information
and
equivalent rights; (e) rights relating to substrate glazing agents and reagents,
disposables, chemical compounds and like materials; (f) any other proprietary
and/or intellectual property rights; (g) copies, personal property and tangible
embodiments of any of the foregoing (in whatever form or medium); and (h) any
improvements, modifications, enhancements and/or derivatives of the
foregoing.
1.4. “Licensed
Patents” means
the
following patents and patent application and any reissues, re-examinations,
divisionals, continuations and extensions thereof: (a)
U.S.
Patent No. 6,488,777 B2; (b) U.S. Patent No. 6,258,408 B1; and (c) U.S. Patent
Appl. No. 10/905,545 (Pub. No. US 2005/0150542 A1).
1.5. “MVS Improvement”
means
any innovation, variation, enhancement, modification, improvement, change
relating to, or derivative work of, the Licensed Patents or Derivative Works
which the MVS Parties, their Related Persons, sub-licensees or any of their
employees or agents or any other party engaged by the MVS Parties, make, author,
invent, discover, originate, conceive or reduce to practice solely or in
conjunction with others not a party to this License following the Effective
Date
of this License.
1.6. “Phase
Agreements”
means
the Xxxxx 0 Xxxxxxxxxxx Xxxxxxxxx, Xxxxx 0 Development Agreement, Phase 4
Development Agreement, and Phase 4 X4-Base Line Production
Agreement.
1.7. “Phase
2 Development Agreement”
means
that certain written agreement between XsunX and MVSI effective June 1, 2004,
as
amended.
1.8. “Phase
3 Development Agreement”
means
that certain written agreement between XsunX and MVSI effective February 22,
2005, as amended.
1.9. “Phase
4 Development Agreement”
means
that certain written agreement between XsunX and MVSI entitled “Four Terminal
Development” dated December 22, 2005, as amended, together with the “Addendum to
Phase 4 proposal” between XsunX and MVSI dated December 22, 2005.
2
1.10. “Phase
4 X4-Base Line Production Agreement”
means
that certain written agreement between XsunX and MVSI for work memorialized
in
proposals effective December 2, 2005.
1.11. “Related
Person”
means
any
person or entity directly, or indirectly through one or more intermediaries,
controlling, controlled by, or under common control with, a party to this
License, as the case may be and as context requires. For purposes of this
definition, “control” means the possession, directly or indirectly, of the power
to direct or cause the direction of the management and policies of a person
or
entity, whether through ownership of voting securities or otherwise; provided,
that a person or entity shall no longer be a Related Person when through loss,
divestment, dilution or other reduction of ownership or management or
operational responsibility, the requisite control no longer exists.
1.12. “Reserved
Fields of Use”
means
all
fields of use other than the XsunX Field of Use.
1.13. “XsunX
Field of Use”
means
Commercial Development by XsunX of commercial-grade (i.e.,
web
width 30 cms or more and nominal output exceeding 1 megawatt/year based on
1
shift operation) semi-transparent (greater than 5% transparency) and opaque
solar cells, photovoltaic technologies, solar cell panels and methods of
manufacture.
1.14. “XsunX Improvement”
means
any innovation, variation, enhancement, modification, improvement, change
relating to, or derivative work of, the Licensed Patents or Derivative Works,
which XsunX, its Related Persons, sub-licensees or any of their employees or
agents or any other party engaged by XsunX, make, author, invent, discover,
originate, conceive or reduce to practice solely or in conjunction with others
not a party to this License following the Effective Date of this
License.
2. GRANT
AND SCOPE OF RIGHTS.
2.1. Grant
and Scope of License.
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a)
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During
the term of this License and subject to the terms and conditions
hereof,
the MVS Parties grant to XsunX a worldwide, non-exclusive, royalty-free,
irrevocable, fully-paid up right and license, with
the right to sublicense under the terms of Section 2.2
(Sublicenses), to
use
and practice the Licensed Patents solely
in the XsunX Field of Use. For
the avoidance of doubt, the foregoing license grant to XsunX expressly
excludes the use, transfer and/or Commercial Development of the Licensed
Patents in the Reserved Fields of Use;
provided, however, that XsunX or its sub-licensee shall be permitted
to
develop non-commercial grade semi-transparent and opaque solar cells
solely for internal research and development of XsunX or its sub-licensee
and not for any use or sale or other transfer by XsunX or its sub-licensee
to a third party.
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3
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b)
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During
the term of this License and subject to the terms and conditions
hereof,
XsunX hereby grants to MVSI a worldwide, non-exclusive, royalty-free,
irrevocable, fully-paid up right and license, with
the right to sublicense under the terms of Section 2.2
(Sublicenses), to
use,
practice, modify, adapt, distribute, sell, transfer, and/or commercialize
the Derivative Works.
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2.2.Sublicenses.
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a)
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During
the term of this License and subject to the terms and conditions
hereof,
the MVS Parties grant to XsunX the right to grant
limited, non-transferable, revocable sublicenses
to third parties, without further right to sublicense, to use or
practice
the Licensed Patents solely
in the XsunX Field of Use and otherwise in
accordance with the rights, restrictions and obligations of XsunX
under
this License. Unless prohibited by law, XsunX shall ensure that the
terms
of any sub1icense granted by it prohibits its sub-licensees from
granting
to any other person a license of the rights granted to such sub-licensee
by XsunX .
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b)
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During
the term of this License and subject to the terms and conditions
hereof,
XsunX grants to MVSI the right to grant
limited, non-transferable, revocable sublicenses
to third parties, without further right to sublicense, to use, import,
sell and offer to sell the
Derivative Works in
accordance with the rights, restrictions and obligations of MVSI
under this License. Unless prohibited by law, MVSI
shall ensure that the terms of any sublicense granted by it prohibits
its
sub-licensees from granting to any other person a license of the
rights
granted to such sub-licensee by MVSI.
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c)
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Sublicenses
granted under this Section shall be in writing signed by each sub-licensee
and shall contain all of the material terms, conditions, restrictions
and
reservations of this License and shall preserve the rights and
reservations of each party existing under this License. Notwithstanding
anything herein to the contrary, any
breach of such terms or conditions of this License by any sub-licensee
shall be deemed to be a breach of this License by the party granting
such
sub-license. Without limiting any rights or remedies of either party
hereunder, provided herein or otherwise available at law or in equity,
each party hereby appoints and designates the other party as a third
party
beneficiary of each sublicense granted by such party; the party granting
the sublicense shall include in each sublicense a stipulation that
the
other party shall retain third party beneficiary rights to enforce
(in
such other party’s name, if required by law) such other party’s rights and
remedies in connection therewith.
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d)
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Termination
of this License by either party shall automatically operate as a
termination of any sublicense granted by the non-terminating party
pursuant to the Section 2 and an assignment by such non-terminating
party
to the terminating party of all of the non-terminating party’s right,
title and interest in and to such sublicense.
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e)
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Each
party shall be free to determine the royalties or pricing at which
it
enters into a permitted
sub-license.
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3. TERM,
DEFAULT AND TERMINATION.
3.1. Term.
This
License shall be effective upon the Effective Date and,
unless
sooner terminated by operation of law or pursuant to Section 3.3 of this
License,
shall
continue in force and effect from
the
Effective Date until the expiration of the last to expire of the patents
included within the Licensed Patents.
3.2. Default.
A
default
shall occur under this License in the event of: (a) any breach of a material
term of this License which is not cured (if curable) by the defaulting party
within thirty (30) business days after receiving written notice of default
from
the non-defaulting party; or (b) the
filing by a Party of a voluntary petition in bankruptcy or under any similar
insolvency law, or an assignment for the benefit of creditors, or the filing
of
an involuntary petition in bankruptcy or under any similar insolvency law which
remains undismissed thirty (30) days after such filing, or a levy or attachment
against all or substantially all of a Party’s assets, or if a Party ceases to
function as a going concern or ceases to conduct its operations in the normal
course of business or is wound up or dissolved or declared insolvent.
(c) A
default by any one of the MVS Parties shall be deemed a default of the other
of
the MVS Parties.
4
3.3. Termination.
In
the
event of a default under Section 3.2(a), 3.2(b) or 3.2(c), the non-defaulting
party may elect to terminate this License. Except as otherwise expressly
provided in this License, in the event of such termination, no residual rights
will remain with the parties and within fifteen (15) calendar days of such
termination: (a) MVSI shall cease all use of the Derivative Works and shall
notify any sublicensee of the Derivative Works that the sublicense is terminated
pursuant to this License and provide a copy of such notification to XsunX;
and
(b) XsunX shall cease all use of the Licensed Patents and shall notify any
sublicensee of the Licensed Patents that the sublicense is terminated pursuant
to this License and provide a copy of such notification to the MVS
Parties.
3.4. Other
Remedies; Preservation of Rights Under Section 365(n) of Bankruptcy
Code.
Subject
to the terms of this License, in the event of a default of this License, the
non-defaulting Party(ies)’s right to terminate this License pursuant to Section
3.3 shall be non-exclusive, and the non-defaulting Party(ies) shall be entitled
to pursue any additional or other remedy available by law. Without limiting
the
foregoing, nothing in this License shall be deemed a waiver with respect to
the
rights of any Party arising under Section 365(n) of the United States Bankruptcy
Code, 11 U.S.C. § 365(n), or any other remedy available by law.
3.5. Survival.
The
rights and obligations of the parties which by their nature are intended to
survive any such termination, shall survive the termination of this License
and
continue in force.
4. PROPRIETARY
RIGHTS.
4.1. Ownership
of Licensed Patents and/or Derivative Works.
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a)
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Subject
to the license granted to XsunX in Article 2 (Grant and Scope of
Rights)
and except for the Derivative Works, XsunX
acknowledges that, as between the
MVS Parties
and XsunX, the
MVS Parties
are
and shall remain the exclusive owner of all right, title and interest
in
and to the Licensed Patents. Except for the Derivative Works, if
XsunX or
any third party engaged by XsunX is deemed to have any ownership
interest
or rights in any of the Licensed Patents, then XsunX shall assign
and/or
cause such third party to assign, and XsunX does hereby irrevocably
and
royalty-free assign, all of such ownership interest and rights to
the
MVS Parties.
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b)
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Subject
to the license granted to MVSI
in
Article 2 (Grant and Scope of Rights) and except for the Licensed
Patents,
the
MVS Parties
acknowledge that, as between the
MVS Parties
and XsunX, XsunX is and shall remain the exclusive owner of all right,
title and interest in and to the Derivative Works. Except for the
Licensed
Patents, if MVSI
or
any third party engaged by the
MVSI is
deemed to have any ownership interest or rights in any of the Derivative
Works, then the
MVSI
shall assign and/or cause such third party to assign, and MVSI
hereby
does irrevocably and royalty-free assign, all of such ownership interest
and rights to XsunX.
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4.2. Ownership
of Improvements.
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a)
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As
between the
MVS Parties
and XsunX, any and all MVS Improvements, and all IP Rights therein,
shall
be the sole and exclusive property of the MVS Parties and are expressly
excluded from this License.
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b)
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As
between the
MVS Parties
and XsunX, any and all XsunX Improvements, and all IP Rights therein,
shall be the sole and exclusive property of XsunX and are expressly
excluded from this License.
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5
4.3. IP
Rights and Patent Prosecution; Maintenance; Disclaimer.
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a)
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The
MVS Parties shall have the sole right to file and maintain IP Rights
protections, perfections or registrations with respect to the Licensed
Patents and any the MVS Improvements and the issuance of such applications
or registrations shall be in the MVS Parties’ or their designee’s name.
Any IP Rights protections, perfections or registrations with respect
to
the Licensed Patents and/or MVS Improvements shall be prosecuted
to
issuance or final rejection or abandonment by the MVS Parties in
their
sole and absolute discretion; provided
however,
that the MVS Parties shall use commercially reasonable efforts to
prosecute U.S. Patent Appl. No. 10/905,545 (Pub. No. US 2005/0150542
A1)
(“Application”) to issuance or final rejection or abandonment and shall
provide to XsunX copies of all correspondence with the United States
Patent and Trademark Office regarding the Application within fifteen
(15)
days of delivery or receipt. If the MVS Parties determine to abandon
the
Application, the MVS Parties will provide timely notice to XsunX
and shall
provide to XsunX reasonable opportunity to continue to prosecute
or
maintain such Application, at XsunX’s sole cost and
expense.
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b)
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Notwithstanding
anything to the contrary contained in Section 4.3(a), XsunX acknowledges
and agrees that the prosecution of patent applications is uncertain
and
that certain claims therein may not be allowed or may receive narrower
breadth of scope than when originally filed and that patent applications
within the Licensed Patents may not issue as a U.S.
patent.
Therefore, the MVS Parties provide no representation or warranty
that any
of the Licensed Patents, including without limitation U.S. Patent
Appl.
No.10/905,545
(Pub.
No. US
2005/0150542 A1),
will issue as U.S.
Patents
or that the scope of claims coverage of any resulting patent issuing
thereon will have the same scope of claims coverage as when filed
by
the
MVS Parties.
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c)
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XsunX
shall have the sole right and obligation to file IP Rights
protections, perfections or registrations with respect to the Derivative
Works and any XsunX Improvements and the issuance of such applications
or
registrations shall be in XsunX’s or its designee’s name.
XsunX shall be solely responsible for filing, prosecution and maintenance
of any and all such IP Rights protections,
perfections or registrations
and for the maintenance and other management of the same.
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4.4. Markings;
Use of Names, Trade Names and Trademarks.
Each
party agrees that it will not use the name, trademark or other identifier of
the
other party for any advertising, promotion, or other commercially related
purpose without the express prior written consent of the other party, which
may
be withheld at such party’s sole discretion. Except as permitted by Section
8.10, nothing contained in this License shall be construed as conferring any
right to use in advertising, publicity or other promotional activities any
name,
trade name, trademark or other designation of a party hereto including any
contraction, abbreviation or simulation of any of the foregoing, unless the
express written permission of the other party has been obtained, provided that
each party may state the existence of this License and the fact that all of
the
parties entered into it.
5. NO
ONGOING OBLIGATIONS.
5.1. No
Technology Sharing; Consulting, Audit Rights.
The
parties hereby acknowledge and agree that with respect to this License, as
of
the Effective Date, there are no obligations between the parties to share or
collaborate with, deliver and/or disclose to the other party any further
information, whether oral and/or written, concerning the Licensed Patents,
the
Derivative Works and/or any processes related thereto, or any other information
or data pertaining to the licenses granted herein, and neither party shall
have
any such ongoing or future obligation in connection therewith. The parties
further acknowledge and agree that under this License, neither party has the
right to inspect or view each others’ books and records, and nothing in this
License is intended to confer or does confer on either party any such
right.
6
5.2. Infringement/Indemnifications.
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a)
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In
the case of a third party claim of infringement against a party (“accused
party”), the other party shall have no obligation to defend against such
claim nor to indemnify or hold harmless the accused party against
such
claim or procure the right for the accused party, or the accused
party’s
Related Persons or any of its sub-licensees, representatives, successors
or assigns to continue using the Licensed Patents and/or the Derivative
Works. Notwithstanding
the foregoing, in no event shall either party enter into a settlement
or
compromise of any claim of infringement if such settlement or compromise
would adversely affect the Licensed Patents or Derivative
Works.
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b)
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In
the case of a third party’s alleged infringement of the Licensed Patents
or the Derivative Works, the parties’ only obligation with respect to
third party infringement
shall be to promptly inform the other party of (i) any alleged
infringement of the Licensed Patents or the Derivative Works by a
third
party of which such party is aware and (ii) any actions or possible
actions by third parties which may affect the ownership or validity
of the
Licensed Patents or the Derivative
Works.
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c)
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If
a party elects to bring or defend against a legal action, such
action shall be at the sole expense of the party initiating or defending
such legal action and all
damages, awards, settlement proceeds or other recovery or special
or
punitive damages shall
belong solely and exclusively to such
party.
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6. REPRESENTATIONS,
WARRANTIES AND DISCLAIMER.
6.1. By
the
MVS Parties.
The MVS
Parties represent, warrant and covenant to XsunX that (a) the execution of
this
License and performance of the transactions contemplated by this License have
been approved by the MVS Parties and will not conflict with or result in any
breach of any of the terms, conditions or provisions of, or constitute a default
under, any agreement to which MVSI or Xx. Xxxxx is a party or by which MVSI
or
Xx. Xxxxx is bound, (b) the MVS Parties own or have licensed and sub-licensable
interest in the Licensed Patents and have the right to grant to XsunX the
license set forth herein, (c) this License, when duly executed and delivered,
shall constitute a legal and binding obligation of the MVS Parties enforceable
against the MVS Parties in accordance with its terms; (d) the Licensed Patents
are not subject to any lien, encumbrance or other interest of a third party;
(e)
as of the Effective Date, the MVS Parties are not aware of any infringement
of
the Licensed Patents by a third party; and (f) as of the Effective Date, MVSI
has delivered to XsunX all technical data, documentation and reports relating
to
its research, development or other work performed pursuant to the Original
License Agreements or the Phase Agreements.
6.2. By
XsunX.
XsunX
represents, warrants and covenants to the MVS Parties that (a)
the
execution of this License and performance of the transactions contemplated
by
this License have been approved by XsunX and will not conflict with or result
in
any breach of any of the terms, conditions or provisions of, or constitute
a
default under, any agreement to which XsunX is a party or by which XsunX is
bound; (b) XsunX owns or has a licensed and sub-licensable interest in the
Derivative Works and has the right to grant to MVSI the license set forth
herein; (c) this License, when duly executed and delivered, shall constitute
a
legal and binding obligation of XsunX enforceable against XsunX in accordance
with its terms; (d) the Derivative Works are not subject to any lien,
encumbrance or other interest of a third party; (e) as of the Effective Date,
XsunX is not aware of any infringement of the Derivative Works by a third party,
and (f) as of the Effective Date, XsunX has delivered to MVSI all technical
data, documentation and reports relating to the Derivative Works.
7
6.3. Disclaimer.
(a) The
express representations and warranties set forth in this Section 6 are the
sole
representations and warranties made by each party with respect to this License
and the transactions contemplated herein. Without limiting the generality of
the
foregoing, nothing
in
this License shall be construed as:
(1)
a
warranty or representation by the
MVS
Parties
as to
the validity or scope of the Licensed Patents, or a warranty or representation
by XsunX
as
to the
validity or scope of the Derivative Works;
(2)
an
obligation of either party to bring or prosecute actions or suits against third
parties for infringement;
(3)
an
obligation by MVSI or Xx. Xxxxx or XsunX to furnish any technical or other
assistance.
(b) THE
LICENSED PATENTS ARE PROVIDED “AS IS,” AND THE MVS PARTIES MAKE NO
REPRESENTATIONS OR WARRANTIES, CONDITIONS OR GUARANTEES, WHETHER EXPRESS,
IMPLIED, STATUTORY, ORAL OR IN WRITING OR OTHERWISE, INCLUDING, WITHOUT
LIMITATION, ANY IMPLIED WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR
PURPOSE, TITLE,
NONINFRINGEMENT OF THIRD PARTY RIGHTS, OR WARRANTIES ARISING FROM A COURSE
OF
DEALING, USAGE OR TRADE PRACTICE, AND THE SAME ARE HEREBY EXPRESSLY DISCLAIMED
TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW.
WITHOUT
LIMITING THE GENERALITY OF THE FOREGOING, THE MVS PARTIES DO NOT MAKE ANY
REPRESENTATION OR WARRANTY AS TO THE VALIDITY OR SCOPE OF THE LICENSED PATENTS
OR THE ACCURACY OR COMPLETENESS OF ANY INFORMATION DISCLOSED TO XSUNX IN
CONNECTION WITH THIS LICENSE. THE MVS PARTIES MAKE NO REPRESENTATION OR WARRANTY
THAT THE LICENSED PATENTS WILL MEET XSUNX’S REQUIREMENTS OR
EXPECTATIONS
OR THAT
THE EXERCISE OF THE RIGHTS GRANTED TO XSUNX WITH RESPECT TO THE LICENSED PATENTS
WILL NOT INFRINGE THE IP RIGHTS OF ANY THIRD PARTY. THE
MVS
PARTIES WILL NOT INDEMNIFY XSUNX, ITS EMPLOYEES, AGENTS, REPRESENTATIVES,
RELATED PERSONS OR ANY THIRD PARTY FOR ANY LOSSES, COSTS, LIABILITIES, DAMAGES,
FEES, OR EXPENSES WITH RESPECT TO THE LICENSED PATENTS, INCLUDING WITHOUT
LIMITATION, ANY CLAIMS THAT THE LICENSED PATENTS THEREIN INFRINGE THE IP RIGHTS
OF ANY THIRD PARTY. NO
ADVICE
OR INFORMATION, WHETHER ORAL OR WRITTEN, OBTAINED BY XSUNX FROM THE MVS PARTIES
OR THEIR
RELATED
PERSONS SHALL CREATE ANY WARRANTY, REPRESENTATION, OR GUARANTEE NOT EXPRESSLY
STATED IN THIS LICENSE.
(c) THE
DERIVATIVE WORKS ARE PROVIDED “AS IS,” AND XSUNX MAKES NO REPRESENTATIONS OR
WARRANTIES, CONDITIONS OR GUARANTEES, WHETHER EXPRESS, IMPLIED, STATUTORY,
ORAL
OR IN WRITING OR OTHERWISE, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED
WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, TITLE,
NONINFRINGEMENT OF THIRD PARTY RIGHTS, OR WARRANTIES ARISING FROM A COURSE
OF
DEALING, USAGE OR TRADE PRACTICE, AND THE SAME ARE HEREBY EXPRESSLY DISCLAIMED
TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW. WITHOUT LIMITING THE
GENERALITY OF THE FOREGOING, XSUNX DOES NOT MAKE ANY REPRESENTATION OR WARRANTY
AS TO THE VALIDITY OR SCOPE OF THE DERIVATIVE WORKS OR THE ACCURACY OR
COMPLETENESS OF ANY INFORMATION DISCLOSED TO MVSI IN CONNECTION WITH THIS
LICENSE. XSUNX MAKES NO REPRESENTATION OR WARRANTY THAT THE DERIVATIVE WORKS
WILL MEET MVSI’S REQUIREMENTS OR EXPECTATIONS OR THAT THE EXERCISE OF THE RIGHTS
GRANTED TO MVSI WITH RESPECT TO THE DERIVATIVE WORKS WILL NOT INFRINGE THE
IP
RIGHTS OF ANY THIRD PARTY. XSUNX WILL NOT INDEMNIFY MVSI, ITS EMPLOYEES, AGENTS,
REPRESENTATIVES, RELATED PERSONS OR ANY THIRD PARTY FOR ANY LOSSES, COSTS,
LIABILITIES, DAMAGES, FEES, OR EXPENSES WITH RESPECT TO THE DERIVATIVE WORKS,
INCLUDING WITHOUT LIMITATION, ANY CLAIMS THAT THE DERIVATIVE WORKS INFRINGE
THE
IP RIGHTS OF ANY THIRD PARTY. NO ADVICE OR INFORMATION, WHETHER ORAL OR WRITTEN,
OBTAINED BY MVSI FROM XSUNX, OR ITS
RELATED
PERSONS SHALL CREATE ANY WARRANTY, REPRESENTATION, OR GUARANTEE NOT EXPRESSLY
STATED IN THIS LICENSE.
8
7. LIMITATION
OF LIABILITY.
7.1. EXCEPT
AS
EXPRESSLY PROVIDED IN THIS SECTION, NEITHER PARTY OR ITS RESPECTIVE RELATED
PERSONS SHALL BE LIABLE TO THE OTHER PARTY FOR
ANY
INCIDENTAL, CONSEQUENTIAL (INCLUDING LOST PROFITS), PUNITIVE, INDIRECT, SPECIAL,
OR EXEMPLARY DAMAGES ARISING OUT OF OR RELATED TO THIS LICENSE OR THE
TRANSACTIONS CONTEMPLATED HEREIN, WHETHER BASED ON BREACH OF CONTRACT, TORT
(INCLUDING NEGLIGENCE), IP RIGHTS INFRINGEMENT, PRODUCT LIABILITY OR
OTHERWISE,
EVEN IF
THE OTHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
NOTWITHSTANDING ANYTHING HEREIN TO THE CONTRARY, THE LIMITATIONS SET FORTH
IN
THIS SECTION SHALL HAVE NO EFFECT UPON, AND SHALL NOT LIMIT LIABILITY FOR ANY
DAMAGES RESULTING FROM GROSS NEGLIGENCE OR WILLFUL MISCONDUCT.
8. MISCELLANEOUS.
8.1. Assignment.
This
License may be assigned or transferred, in whole or in part, whether by
operation of law or otherwise, by either party without the prior written consent
of the other party, provided the assigning party provides the other party with
contemporaneous written notice of such assignment or transfer.
8.2. Notices.
Any
notice, request, approval, authorization, consent, demand or other communication
required or permitted to be given or made pursuant to this License shall be
in
writing and shall be deemed given on the earliest of (a) actual receipt,
irrespective of the method of delivery, (b) on the delivery day following
dispatch if sent by express mail (or similar next day air courier service),
or
(c) on the sixth (6th) day after mailing by registered or certified United
States mail, return receipt requested, postage prepaid and addressed as
follows:
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If
to the MVS Parties:
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MVSystems,
Inc.
000
Xxxxxxxxx Xxxxxx, Xxxx X
Xxxxxx,
XX 00000
Attention:
Xx. Xxxx Xxxxx
Telephone
No.:(000) 000-0000 or (000) 000-0000
Facsimile
No.: (000) 000-0000
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9
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with
a copy to:
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Holland
& Xxxx LLP
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000
00xx Xxxxxx, Xxx. 0000
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Xxxxxx,
XX 00000-0000
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Phone:
(000) 000-0000
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Fax:
(000) 000-0000
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Attention:
Xxx X. Xxxxxxxx, Esq.
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If
to XsunX:
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XsunX,
Inc.
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00
Xxxxxxxxxx
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Xxxxx
Xxxxx, XX 00000
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Attn:
Xxx Xxxxxxxxx
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(Tel)
(000) 000-0000
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(Fax)
(000) 000-0000
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with
copy to:
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Xxxxx
X. Xxxx, Esq.
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Xxxxxxx
& Xxxxxx, LLC
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000
00xx Xxxxxx, Xxxxx 0000
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Xxxxxx,
Xxxxxxxx 00000
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(Tel)
(000) 000-0000
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(Fax)
(000) 000-0000
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or
to
such substitute addresses and persons as either party may designate to the
other
from time to time by written notice in accordance with this Section.
8.3. Choice
of Law; Dispute Resolution.
This
License shall be governed by and construed in accordance with the laws of the
State of Colorado, other than such laws, rules, regulations and case law that
would result in the application of the laws of a jurisdiction other than the
State of Colorado. Any suit to enforce any provision of this License, or arising
out of or based upon this License, shall be brought exclusively in the United
States District Court for the District of Colorado or the District Court in
and
for the City and County of Denver, State of Colorado. Each party hereby agrees
that such courts shall have in personam
jurisdiction and venue with respect to such party, and each party hereby submits
to the in personam
jurisdiction and venue of such courts and waives any objection based on
inconvenient forum. Process
in any action or proceeding referred to in this Section may be served on any
party anywhere in the world. The United Nations Convention on Contracts for
the
International Sale of Goods is hereby excluded from application to this License.
8.4. Counterparts.
This
License may be executed in two or more counterparts, each of which will be
deemed to be an original copy of this License and all of which, when taken
together, will be deemed to constitute one and the same agreement. Facsimile
signatures shall be effective as original signatures.
8.5. Headings;
Construction.
For
all
purposes of this License, except as otherwise expressly provided or unless
the
context otherwise requires: (a) the terms defined herein include the plural
as
well as the singular and vice-versa; (b) words importing gender include all
genders; (c) all references to this License and the words “herein”, “hereof”,
“hereto” and “hereunder” and other words of similar import refer to this License
as a whole and not to any particular Article, Section, or other subdivision;
(d)
all Article and Section headings are for convenience only and shall not affect
the interpretation or construction of this License, (e) the words “including,”
“included” and “includes” mean inclusion without limitation; and (f) in the
event of any conflict between the terms in the body of the Agreement and the
terms in this License, the terms of this License shall prevail to the extent
that there is such a conflict.
This
License is executed in the English language and that version of the Agreement
shall control despite any other version prepared in any other language, whether
or not executed. This
License has been drafted jointly by the parties and in the event of any
ambiguities in the language hereof, there shall be no inference drawn in favor
of or against either party.
10
8.6. Binding
Effect.
This
License shall be binding upon and inure to the benefit of the parties and their
respective permitted successors and assigns.
8.7. Entire
Agreement; Amendment. This
License constitutes the entire and exclusive statement of the parties’ agreement
with respect to its subject matter and supersedes any and all prior or
contemporaneous oral or written representations, understandings, or agreements
relating thereto. This License may be modified, supplemented or changed only
by
an agreement in writing which makes specific reference to this License and
which
is signed by the parties.
8.8. Waiver.
The
rights and remedies of the parties to this License are cumulative and not
alternative. Neither the failure nor any delay by any party in exercising any
right, power, or privilege under this License or the documents referred to
in
this License will operate as a waiver of such right, power, or privilege, and
no
single or partial exercise of any such right, power, or privilege will preclude
any other or further exercise of such right, power, or privilege or the exercise
of any other right, power, or privilege. To the maximum extent permitted by
applicable law, (a) no claim or right arising out of this License or the
documents referred to in this License can be discharged by one party, in whole
or in part, by a waiver or renunciation of the claim or right unless in writing
signed by the other party; (b) no waiver that may be given by a party will
be
applicable except in the specific instance for which it is given; and (c) no
notice to or demand on one party will be deemed to be a waiver of any obligation
of such party or of the right of the party giving such notice or demand to
take
further action without notice or demand as provided in this License or the
documents referred to in this License.
8.9. Severability.
In the
event that any one or more of the provisions contained in this License shall,
for any reason, be held to be invalid, illegal or unenforceable in any respect,
such invalidity, illegality or unenforceability shall not affect any other
provision of this License, and all other provisions shall remain in full force
and effect. If any of the provisions of this License is held to be excessively
broad or invalid, illegal or unenforceable in any jurisdiction, it shall be
reformed and construed by limiting and reducing it so as to be enforceable
to
the maximum extent permitted by law in conformance with its original
intent.
8.10. Publicity.
Except
as necessary for a Party to comply with its legal or financial reporting and
disclosure obligations, including filings by XsunX with the U.S. Securities
and
Exchange Commission and financial reporting by XsunX in conformity with
Generally Accepted Accounting Principles (GAAP), none of the Parties, nor any
of
their Related Persons, shall originate any publicity, news release or other
public announcement (“Announcements”),
written or oral, relating to this License or the existence of an arrangement
between the parties, without the prior written approval of the other party,
which approval shall not be unreasonably withheld.
8.11. No
Agency.
The
relationship of XsunX, on the one hand, and the
MVS
Parties
and
their respective successors in interest, on the other hand, is that of licensee
and licensor, and not one of principal and agent, joint venture or partnership.
Neither XsunX, on the one hand, nor MVS or Xx. Xxxxx, on the other hand, shall
have any authority to create or assume, in the name or on behalf of the other
party, any obligation, express or implied, nor to act or purport to act as
the
agent or the legally empowered representative of the other party for any purpose
whatsoever.
11
8.12. No
Individual Liability for Xx. Xxxxx.
Except
as to Sections 4.3(a) and 6.1, the Parties agree that no individual duties,
obligations or liabilities shall be deemed to arise under this License with
respect to Xx. Xxxxx.
8.13. Force
Majeure.
Neither
the MVS Parties nor XsunX shall be liable to the other for failure or delay
in
the performance of a required obligation, other than the payment of monies
due
and owing, if such failure or delay is caused by strike, riot, fire, flood,
natural disaster, or other similar cause beyond such party’s control, provided
that such party gives prompt written notice of such condition and resumes its
performance as soon as possible, and provided further that the other party
may
terminate the Agreement if such condition continues for an uninterrupted period
of ninety (90) days from the initial occurrence of such condition. Neither
the
MVS
Parties nor XsunX
is
entitled to relief under this Section to the extent that any event otherwise
constituting such event of force majeure results from the negligence or fault
of
the applicable party or its Related Persons.
IN
WITNESS WHEREOF,
the
parties hereto have caused this License to be effective as of the Effective
Date. The persons signing below warrant their authority to sign the Agreement
on
behalf of the MVS Parties and XsunX, respectively.
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MVSystems,
Inc.
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XsunX,
Inc.
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By
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By:
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Signature
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Signature
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Printed
Name
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Printed
Name
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Title
|
Title
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Date
|
Date
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Xx.
Xxxx Xxxxx
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By:
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Signature
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Printed
Name
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Date
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