EXHIBIT 10.1
LICENSE AGREEMENT
THIS AGREEMENT, effective March 2, 1998 ("Effective Date") is entered
into by MPM Corporation ("MPM" or "Licensor"), having a place of business at 00
Xxxxx Xxxx, Xxxxxxxx, Xxxxxxxxxxxxx, and Quad Systems Corporation ("Quad" or
"Licensee"), having a place of business at 0000 Xxxxxxxx Xxxx, Xxxxxx Xxxxx,
Xxxxxxxxxxxx 00000-0000.
WHEREAS Licensor has the right to grant licenses to the patents and
patent applications attached hereto as Schedule A and any patents which may
issue thereon, including any continuations, divisions, reissues or
reexaminations thereof worldwide, hereinafter referred to as "Patent Rights";
WHEREAS Licensee wishes to obtain a nonexclusive license under the
Patent Rights upon the terms and conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the mutual promises contained
herein, the parties hereto agree as follows:
1. License. The Licensor hereby grants to the Licensee, its divisions
and subsidiaries, and the Licensee hereby accepts from the Licensor, upon the
terms and conditions hereinafter specified, a paid-up, non-exclusive,
non-transferable license to practice the inventions covered by the Patent Rights
in the country or countries in which the Patent Rights are or hereafter become
effective, in the manufacture, have made, use, offer for sale, import, export
and sale of Licensed Products (meaning any and all products of Licensee covered
by one or more claims of the patents listed in Schedule A), to the full end of
the terms for which the Patent Rights are issued, unless sooner terminated as
hereinafter provided. No other, further, or different license (including the
right to sublicense) is granted or implied.
2. Payment. Licensee or its designee shall pay to Licensor the amount
of one million dollars ($1,000,000). The payments to Licensor by Licensee shall
be made in U.S. dollars by direct transfer to the Account of MPM, Account No.
93649-55829-00101 at Fleet Bank, Providence, RI (ABA #000000000) or such other
bank account designated by MPM in writing, as follows:
April 5, 1998 $250,000
July 5, 1998 250,000
October 5, 1998 250,000
December 30, 1998 250,000
3. Release. Licensor releases Licensee, and all purchasers, customers
and users of Licensed Products acquired from Licensee, from all claims, demands
and rights of action which Licensor may have on account of any infringement or
alleged infringement of any of the Patent Rights by the manufacture, use, sale,
offer for sale, importation or other disposition of Licensed Products which,
prior to the Effective Date of this Agreement, were manufactured, used, sold,
offered for sale, imported or otherwise disposed of by Licensee.
4. Marking. Licensee shall place in a conspicuous location on the
Licensed Products, a patent notice in accordance with 35 U.S.C. ss.287.
5. Miscellaneous Provisions.
5.1 Licensor does not give Licensee any indemnity against costs,
damages, expenses or royalties arising out of proceedings brought against
Licensee or any customer, purchaser or user of Licensed Products manufactured or
sold by Licensee, by any third party. Should Licensee be sued for infringement
of any patent or patents of a third party by reason of manufacture, use sale,
offer for sale or importation or other disposition of the Licensed Products,
Licensor shall, on request, assist Licensee in its defense to any such action to
the extent that in all of the circumstances it is reasonable to do so, but shall
otherwise be under no obligation in respect thereof. All costs of any such
action shall be borne by Licensee.
5.2 Upon any breach or default of this Agreement by either Licensee or
Licensor, the non-defaulting party may terminate this Agreement by providing 30
days written notice to the defaulting party. Said notice shall become effective
at the end of the notice period unless, during such notice period, the
defaulting party shall cure such breach or default. It is agreed that the
failure of Licensee to make any of the payments set forth in Paragraph 2 hereof
shall constitute a breach of this Agreement.
5.3 If Licensee shall become bankrupt or insolvent and/or if the
business of Licensee shall be placed in the hands of a receiver, assignee, or
trustee, whether by the voluntary act of the Licensee or otherwise, the license
granted as part of this Agreement shall immediately terminate.
5.4 Nothing in this Agreement shall be construed as:
(a) Requiring the filing of any patent application; or
(b) A warranty or representation as to the validity or scope of any
patent;or
(c) Conferring by implication, estoppel or otherwise, any license or
other right beyond those expressly provided above; or
(d) Creating any form of partnership, joint venture or any form of
mutual undertaking under which acts of either party are chargeable in any manner
to the other party; or
(e) Creating any form of license to the other party under any rights
not specifically granted herein.
5.5 Neither this Agreement, nor any license, in whole or in part, shall
be assignable except with the prior written permission of the other party.
5.6 Any statement, notice, request or other communication hereunder
shall be deemed sufficiently given to the addressee if delivered by hand or sent
by Federal Express or comparable overnight courier air service to a party at the
address set forth below for such party, or such other address as a party may
from time to time designate by written notice:
For MPM:
MPM Corporation
00 Xxxxx Xxxx
Xxxxxxxx, XX 00000
Attention: Chief Executive Officer
Copy to:
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, XX 00000
Attention: A. Xxxxx Xxxxxxxx
For Quad:
Quad Systems Corporation
0000 Xxxxxxxx Xxxx
Xxxxxx Xxxxx, XX 00000-0000
Attention: Chief Executive Officer
5.7 No waiver of any default, express or implied, made by either party
hereto shall be binding upon the party making such waiver in the event of a
subsequent default.
5.8 This Agreement sets forth the entire agreement and understanding
between the parties as to the subject matter hereof and merges all prior
discussions between them, and neither of the parties shall be bound by any
conditions, definitions, warranties, understandings or representations with
respect to such subject matter other than as expressly provided herein, or in
any written agreement between the parties executed subsequent to the date of
execution hereof, and signed by a duly authorized representative of the party to
be bound thereby.
5.9 If any article or subpart thereof of this Agreement shall be held
invalid or unenforceable, it shall be deemed to be severed herefrom with the
remaining articles and subparts thereof remaining in full force and effect.
5.10 No changes or modifications are to be made to this Agreement
unless evidenced in writing and signed for and on behalf of the parties.
5.11 The headings in this Agreement are for convenience only and not
intended to have any legal effect.
5.12 The construction and performance of this Agreement shall be
governed by the laws of the Commonwealth of Massachusetts and of the United
States of America and the parties hereby submit to the jurisdiction of the
Commonwealth of Massachusetts for resolution of any dispute related to this
Agreement or the performance thereunder.
5.13 This Agreement may be executed in one or more counterparts, each
of which shall constitute one and the same document.
5.14 Any press releases must be approved by both parties.
Agreed to:
MPM Corporation (Licensor)
By: /s/ Xxxx Xxxxxxx Date: March 2, 1998
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Title: CTO
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Quad Systems Corporation (Licensee)
By: /s/ Xxxxx X. Xxxxx Date: March 2, 1998
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Title: President & CEO
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