[EXHIBIT 10.44- Certain portions of this document have been
omitted in the publicly filed version of this document pursuant
to the Registrant's request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Omitted confidential information is indicated in brackets in this
Exhibit.]
SPD FILM LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
DAINIPPON INK AND CHEMICALS, INCORPORATED
This License Agreement ("Agreement") effective as of
March 30, 2006 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
DAINIPPON INK AND CHEMICALS, INCORPORATED, a
corporation formed under the laws of Japan (hereinafter called
"LICENSEE"). The "Effective Date" of this Agreement shall be
the date which is the last date of formal execution of this
Agreement by duly authorized representatives of the parties to
this Agreement as indicated on the signature page of this
Agreement.
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to
Light Valves, and Light Valve Film (both as hereinafter defined)
and of methods and apparatus relating to products incorporating
such concepts (which products, although all of which are not
currently in commercial use, can include, without limitation
thereto, windows for buildings and vehicles, sunvisors, sunroofs,
flat panel displays, eyewear and rear-view mirrors); and is
possessed of and can convey information and know-how for
such products and rights to manufacture, use and sell such
products; and
WHEREAS, LICENSEE currently has a separate license
agreement with LICENSOR in effect permitting LICENSEE,
among other things, to manufacture and sell SPD Emulsions (as
hereinafter defined); and
WHEREAS, LICENSEE is interested in continuing to
manufacture and sell SPD Emulsion under such said license
agreement, or in buying SPD Emulsion from other licensed
suppliers of LICENSOR, and manufacturing and selling Light
Valve Film (as hereinafter defined); and
WHEREAS, LICENSEE desires to acquire from
LICENSOR, and LICENSOR desires to grant to LICENSEE,
certain rights and licenses with respect to such Light Valve Film
of LICENSOR;
NOW, THEREFORE, in consideration of the promises and
the mutual covenants herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the
respective meanings set forth in this Article 1.
"Authorized User" means LICENSOR and/or any other person
or entity listed by LICENSOR on Schedule B hereof who has
been granted permission by LICENSOR to receive Light Valve
Film from LICENSEE under this Agreement. LICENSEE
agrees that LICENSOR in its sole judgment may amend
Schedule B hereof at any time during the term of this Agreement
for any reason by sending LICENSEE a written notice of such
amendment and specifying the reason for such change. The
persons or entities now or hereafter listed on Schedule B may
not include all of LICENSOR's current licensees and may
include prospective licensees of LICENSOR, and for legal or
practical reasons, LICENSOR may restrict whether or not Light
Valve Film may be sold, leased or transferred to such person or
entity, and/or the application that such Light Valve Film may be
used for by the recipient. LICENSEE agrees that it and its
permitted sublicensees hereunder shall cease all sales, leases, or
other dispositions of Light Valve Film to any person or entity
whose name is deleted from Schedule B by LICENSOR, unless
and until LICENSOR consents in writing to the resumption of
such sales, leases or other dispositions (a) immediately upon
receipt of any written notice from LICENSOR that any person
or entity is no longer included on Schedule B, or (b) if either
LICENSEE or its permitted sublicensees becomes aware that
any such person or entity listed on Schedule B or otherwise
receiving Light Valve Film is making any improper use of Light
Valve Film, in which case LICENSEE shall promptly notify
LICENSOR of such improper use.
"Emulsion License Agreement" means the License Agreement
effective as of June 25, 1999 between LICENSOR and
LICENSEE which remains in effect as of the Effective Date and
at all times that this Agreement is in effect in accordance with its
terms.
"Licensed Territory " means all countries of the world.
"Light Valve" means a variable light transmission device
comprising: a cell including cell walls, containing or adapted to
contain an activatable material, described hereinafter, such that a
change in the optical characteristics of the activatable material
affects the characteristics of light absorbed by, transmitted
through and/or reflected from the cell; means incorporated in or
on the cell, or separate therefrom for applying an electric or
magnetic field to the activatable material within the cell; and
coatings (including, but not limited to, electrodes), spacers,
seals, electrical and/or electronic components, and other
elements incorporated in or on or combined with the cell. The
activatable material, which the cell contains or is adapted to
contain, includes in it solid suspended particles, which when
subjected to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of the device, and
may be either in the form of a liquid suspension, gel, film or
other material.
"Light Valve Film" means a film or sheet using SPD
Technology (as defined in Section 12.1(a) hereof, including any
rights licensed by LICENSOR to LICENSEE hereunder) or
more than one thereof comprising a suspension of particles used
or intended for use solely in or as a Light Valve. The Light
Valve Film shall comprise either (a) a suspension of particles
dispersed throughout a continuous liquid phase enclosed within
one or more rigid or flexible solid films or sheets, or (b) a
discontinuous phase of a liquid comprising dispersed particles,
said discontinuous phase being dispersed throughout a
continuous phase of a rigid or flexible solid film or sheet. The
Light Valve Film may also comprise one or more other layers
such as, without limitation, a film, coating or sheet or
combination thereof, which may provide the Light Valve Film
with (1) scratch resistance, (2) protection from ultraviolet
radiation, (3) reflection of infrared energy, and/or (4) electrical
conductivity for transmitting an applied electric or magnetic
field to the activatable material. Also, any film used or usable in
a Light Valve which comprises SPD Emulsion shall be deemed
to be a Light Valve Film.
"SPD Emulsion" shall have the same meaning as such term is
used in the Emulsion License Agreement.
"Technical Information" means all useful information relating to
apparatus, methods, processes, practices, formulas, techniques,
procedures, patterns, ingredients, designs and the like including
(by way of example) drawings, written recitations of data,
specifications, parts, lists, assembly procedures, operating and
maintenance manuals, test and other technical reports and the
like owned or controlled by LICENSOR, to the extent they exist,
that relate to Light Valve Film (including SPD Emulsion) and
that consist of concepts invented or developed by LICENSOR
and which are deemed significant by LICENSOR. Know-how
of LICENSOR's suppliers and of LICENSOR's other licensees
and their sublicensees under licenses from LICENSOR shall not
be considered Technical Information owned or controlled by
LICENSOR.
2 GRANT OF LICENSE.
2.1 License. During the term of this Agreement,
LICENSOR hereby grants LICENSEE a non-exclusive right and
license to use (a) all of the Technical Information, if any,
(subject to Section 8.1 hereof), furnished by LICENSOR
pursuant to this Agreement or pursuant to the Emulsion License
Agreement, and (b) any invention claimed in (i) any of the
unexpired patents now or hereafter listed on Schedule A
attached hereto or (ii) unexpired patents which issue from
pending patent applications now or hereafter listed in Schedule
A, and any continuations, continuations-in-part, divisions,
reissues, reexaminations, or extensions thereof to make, and to
lease, sell, or otherwise dispose of Light Valve Film
manufactured by LICENSEE pursuant to this Agreement solely
to an Authorized User in the Authorized User's permitted
territory and for the applications specified and purpose permitted
on Schedule B hereof. The license granted pursuant to this
Section 2.1 shall be royalty-free to LICENSEE and its permitted
sublicensees hereunder. By virtue of the disclosure of Technical
Information and training provided by LICENSOR under this
Agreement and under the Emulsion License Agreement, all
Light Valve Film sold, leased or otherwise disposed of by or for
LICENSEE hereunder shall be considered to have been
manufactured at least in part using SPD Emulsion as well as the
Technical Information provided by LICENSOR. The foregoing
license is only a license with respect to Light Valve Film and
nothing contained in this Agreement shall permit LICENSEE to
make, sell, use or otherwise dispose of SPD Emulsion or other
Light Valve products.
2.2 No Other Rights. LICENSEE agrees that, except for
the specific licenses granted to it under Section 2.1 hereof to
make and sell Light Valve Film to Authorized Users,
LICENSEE has not acquired any rights or licenses under this
Agreement to use Light Valve Film or any components thereof
made by or for LICENSEE or its permitted sublicensees
hereunder pursuant to this Agreement except for the purposes of
research and development pursuant to Section 4.1 hereof and as
specifically licensed in Section 2.1 hereof.
2.3 Sublicenses. LICENSEE shall have the right to grant
non-exclusive sublicenses to any wholly-owned and controlled
subsidiary of LICENSEE, whose obligations to LICENSOR
hereunder LICENSEE hereby guarantees, and which
acknowledges to LICENSOR in writing that it wishes to become
a sublicensee hereunder prior to doing so and agrees to be bound
by the terms and conditions of this Agreement. All sublicenses
shall (i) be non-exclusive, (ii) terminate with the termination of
the rights and licenses granted to LICENSEE under Section 2.1
hereof, and be otherwise limited in accordance with the
limitations and restrictions which are imposed on the rights and
licenses granted to LICENSEE hereunder, (iii) contain
confidentiality provisions no less protective than those contained
in Section 12.1 hereof, and (iv) contain such other terms,
conditions, and licenses as are necessary to enable LICENSEE
to fulfill its obligations hereunder. LICENSEE shall send
LICENSOR a copy of every sublicense agreement or other
agreement entered into by LICENSEE in connection with a
sublicense hereunder within thirty (30) days of the execution
thereof. LICENSOR may terminate any such sublicense if there
is any change in the ownership or control of a sublicensee.
3 REPORTS AND RECORD-KEEPING.
3.1 Reports. Within 15 days after the end of each fiscal
quarter, LICENSEE shall send to LICENSOR a quarterly report
setting forth in reasonable detail the quantity of Light Valve
Film manufactured each quarter and the amount of Light Valve
Film sold, leased, disposed of, or delivered by or for LICENSEE
and its sublicensees during such quarter to Authorized Users and
samples provided to third parties, with the amounts sold or
otherwise provided to each Authorized User, including sample
recipients, and their identity clearly broken down. The first
report submitted under this Agreement shall cover the period
from the Effective Date to the end of the first quarter in which
Light Valve Film is produced hereunder. In addition,
LICENSEE shall provide LICENSOR with quarterly reports of
its activities involving the development of Light Valve Film.
LICENSEE shall also furnish to LICENSOR at the same time it
becomes available to any third party, a copy of each brochure,
standard price list, advertisement or other marketing and
promotional materials prepared, published or distributed by
LICENSEE or its sublicensees relating to Light Valve Film.
LICENSOR shall have the right, but not the obligation, to
approve any use by LICENSEE of LICENSOR's name, logo, or
other information about Light Valve Film, and to require the
correction of any inaccurate information.
3.2 Recordkeeping. LICENSEE shall keep and shall cause
each sublicensee to keep for six (6) years after the date of
submission of each report supported thereby, true and accurate
records, files, data and books of accounts that relate to the
manufacture, sale or other disposition of Light Valve Film,
reasonably required for the full computation and verification of
the information to be given in the statements herein provided
for. LICENSOR and LICENSEE agree that an independent
certified public accounting firm (selected by LICENSOR from
the largest ten certified public accounting firms in the United
States of America, or any country in the Licensed Territory)
may audit such records, files and books of accounts to determine
the accuracy of the statements given by LICENSEE pursuant to
Section 3.1 hereof. Such an audit shall be made upon
reasonable advance notice to LICENSEE and during usual
business hours. The cost of the audit shall be borne by
LICENSOR, unless the audit shall disclose a material breach by
LICENSEE of any term of this Agreement, or a material
inaccuracy in any report provided to LICENSOR by
LICENSEE, during the audited period, in which case
LICENSEE shall bear the full cost of such audit. The results of
the audit shall be kept confidential pursuant to the provisions of
Section 12.1 except to the extent required by a party hereto to
enforce its rights hereunder, or which is otherwise required to be
disclosed by law or under generally accepted accounting
principles.
3.3 Customer Referrals. Although LICENSOR is under no
obligation to do so, LICENSOR may from time to time refer
customers to LICENSEE. In the event that such customer
purchases, leases or rents products or services from LICENSEE
that involves the control of light other than SPD Emulsion or
Light Valve Film, LICENSEE shall include the details of such
transaction in its quarterly report under Section 3.1 hereof, and
shall pay LICENSOR a sales commission equal to 10% of the
amount received from such customer. No such payment shall be
due from LICENSEE to LICENSOR if the referred customer
was already a customer of LICENSEE prior to the date of
referral by LICENSOR, or if a division of LICENSEE other
than the Pigment Division of LICENSEE independently has
developed a relationship with such customer not as a result of
the referral by LICENSOR, and LICENSEE informs
LICENSOR of such fact at the time that the referral by
LICENSOR is made.
4 OBLIGATIONS OF LICENSOR AND LICENSEE.
4.1 Development of Light Valve Film. LICENSOR and
LICENSEE may cooperate to develop initial specifications for
Light Valve Film. LICENSEE shall then use its reasonable
efforts to produce Light Valve Film meeting such specifications
for the evaluation and use of LICENSOR and licensees and
prospective licensees of LICENSOR, and for use by LICENSEE
but only for internal research and development. After
consultation with LICENSEE, LICENSOR may at any time
propose additional size or other specifications of the Light Valve
Film to be produced under this Agreement with the disclosure of
additional Technical Information to LICENSEE with respect to
such size or other specifications of Light Valve Film.
LICENSEE may use all commercially reasonable efforts
throughout the term of this Agreement to improve the quality of
Light Valve Film. However, LICENSEE shall be solely
responsible for determining the specifications for all Light Valve
Film, and for any improvements therein.
4.2 LICENSOR Purchases. If LICENSEE is able to
develop and manufacture Light Valve Film suitable for use by
Authorized Users, upon request of LICENSOR and with
reasonable prior notice, LICENSEE shall sell and deliver to
LICENSOR, Light Valve Film or components thereof at
LICENSEE's prevailing market prices and in quantities
mutually agreed upon by LICENSOR and LICENSEE.
LICENSEE acknowledges that LICENSOR and its present
and/or future licensees (or entities who have been granted the
option of entering into license agreements with LICENSOR)
may independently manufacture (or have third parties
manufacture for them) and sell Light Valve Film under the terms
of agreements between them and LICENSOR, or may
independently manufacture and sell Light Valve Film which
LICENSOR produces, or has produced on its behalf. Nothing
contained in this Agreement shall impose any obligation on
LICENSOR or any other parties to purchase any Light Valve
Film from LICENSEE. Notwithstanding anything contained
herein to the contrary, during the term of this Agreement
LICENSOR may provide Light Valve Film obtained by
LICENSOR pursuant to this Section 4.2 to third parties so long
as LICENSOR does not receive from the recipient for the
provision of such Light Valve Film any monetary payment in
excess of LICENSOR's purchase price plus shipping,
administrative, overhead and related costs to such recipient.
4.3 Compliance. LICENSEE agrees that, without
limitation, any manufacture, sale, lease, use or other disposition
of Light Valve Film that is not in strict accordance with (1) the
provisions of this Agreement, (2) restrictions on the type of
product, or the territory in which such product may be, made,
used, sold or otherwise disposed of by or for an Authorized
User, or other provisions or restrictions, which are contained in
any other agreement in force between LICENSOR and an
Authorized User which is known to LICENSEE which relates to
Light Valves or Light Valve Film, or (3) the provisions of any
other agreement then in force to which LICENSEE is a party
and which relates to Light Valves or Light Valve Film, shall be
deemed a material breach of this Agreement.
4.4 End Users. LICENSEE agrees to require all direct
recipients of Light Valve Film to whom Light Valve Film is
sold, leased, or otherwise disposed of by LICENSEE or its
sublicensees, to look only to LICENSEE and not to LICENSOR
or its affiliates for any claims, warranties, or liability relating to
such Light Valve Film. LICENSEE agrees to take all steps to
reasonably assure itself that Light Valve Film sold, leased or
otherwise disposed of by or for LICENSEE is being used for
permitted applications and in the permitted territory only. If a
party which is not then listed on Schedule B hereto wishes to
obtain samples of Light Valve Film or to purchase Light Valve
Film from LICENSEE, LICENSEE shall notify LICENSOR and
shall refer such party to LICENSOR. If such party enters into a
suitable agreement with LICENSOR, LICENSOR shall inform
LICENSEE whether such party may then obtain samples or
purchase Light Valve Film from LICENSEE.
4.5 Laws and Regulations. LICENSEE agrees that it shall
be solely responsible for complying with all laws and
regulations affecting the manufacture, use and sale or other
disposition of Light Valve Film by LICENSEE and its
sublicensees, and for obtaining all approvals necessary from
governmental agencies and other entities. LICENSEE agrees to
maintain a file of all such approvals and to send LICENSOR a
copy of all such approvals (including English translations
thereof in the case of approvals required by any foreign country)
within 10 business days of any written request for such copies
by LICENSOR. LICENSEE represents and warrants to
LICENSOR that no approval from any governmental agency or
ministry, or from any third party, is required to effectuate the
terms of this Agreement or the transactions contemplated
hereby.
4.6 Purchase of Components from Others. By virtue of the
disclosure of Technical Information, other information, and
training, if any, provided from time to time by LICENSOR to
LICENSEE and to its other licensees, and each of their
sublicensees and affiliates, any component of a Light Valve,
including, without limitation, materials, suspensions, films,
polymers, coatings, particle precursors, and particles, SPD
Emulsion (each, a "Component"), which LICENSEE or its
sublicensees makes, has made for it, or purchases from any third
party for use in Light Valve Film shall be deemed to have been
manufactured at least in part using the Technical Information
provided by LICENSOR if LICENSEE or any supplier of a
Component to LICENSEE has had access to Technical
Information of any kind of LICENSOR or its licensees and their
sublicensees, consultants, subcontractors, agents or
representatives; provided, however, that a Component shall not
be deemed to contain Technical Information if LICENSEE can
conclusively demonstrate that a Component does not use SPD
Technology including any rights licensed by LICENSOR to
LICENSEE hereunder. LICENSEE and its sublicensees each
hereby agrees that (i) all Components shall be used only in strict
accordance with the provisions of this Agreement, and that such
Components may not be used for any other purpose or resold by
LICENSEE or its sublicensees except as specifically permitted
by the license granted in Section 2.1 hereof, and (ii) LICENSEE
and its sublicensees will only look to the manufacturer or
supplier of such Component or other item used by LICENSEE
or its sublicensees and not to LICENSOR or its affiliates for any
claims, warranties, or liability relating to such Component or
other item. LICENSEE acknowledges that LICENSOR has not
made any representations or warranties regarding the availability
of any Component, or the price thereof, and that in all respects
LICENSEE shall deal directly with the suppliers of such
Components and will obtain from them information regarding
availability, pricing, and/or other terms relating to such
Components.
4.7 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance of any material,
Component, or information provided hereunder, and LICENSEE
expressly acknowledges and agrees that any such material,
Component or information provided by LICENSOR hereunder
is provided "AS IS" and that LICENSOR makes no warranty
with respect thereto and DISCLAIMS ALL WARRANTIES,
EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED
TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE, WITH RESPECT THERETO, ITS USE OR ANY
INABILITY TO USE IT, OR THE RESULTS OF ITS USE. In
no event shall LICENSOR be liable for any damages, whether in
contract or tort (including negligence), including but not limited
to direct, consequential, special, exemplary, incidental and
indirect damages, arising out of or in connection with this
Agreement or the use, the results of use, or the inability to use
any material, Component or information provided hereunder.
4.8 Analysis. LICENSEE represents and agrees that it will
only incorporate Components received from authorized
suppliers into Light Valve Film and for no other purpose, and
that LICENSEE will not directly or indirectly attempt to
reverse-engineer any material provided to it hereunder by
LICENSEE or any supplier of any Component.
4.9 Personnel. LICENSEE agrees to assign personnel from
its technical staff who shall work on the development of Light
Valve Film during the term of this Agreement.
4.10 Promotional Activities. LICENSEE will undertake to
promote SPD Emulsions and Light Valve Film in any manner
that LICENSEE reasonably believes will benefit LICENSEE's
activities in the relevant market. LICENSEE, however, is under
no obligation to promote said products in any particular manner
or to any particular degree.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that
either party may adopt and use for SPD Emulsion, Light Valve
Film, or other products incorporating Light Valves are and shall
remain the exclusive property of the adopting party, and the
other party shall not obtain any rights and license to such marks
under this Agreement, but may inform others that the adopting
party has licensed or produced Light Valve Film, or products
incorporating Light Valves under such xxxx or marks, and may
use the adopting party's logo in connection therewith.
LICENSOR may require LICENSEE or its permitted
sublicensees to indicate on packaging that such product is
licensed from Research Frontiers Incorporated or to otherwise
include language and/or designations approved by LICENSOR
indicating an affiliation with Research Frontiers Incorporated.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times
ample product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement.
Upon request, LICENSEE shall provide LICENSOR of
evidence of such insurance.
6.2 Indemnification. LICENSEE, and its affiliates,
successors and assigns and sublicensees (each, an "Indemnifying
Party"), each hereby indemnify and agree to hold harmless
LICENSOR and its shareholders, officers, directors, agents and
employees (each, an "Indemnified Party"), against any liability,
damage, loss, fine, penalty, claim, cost or expense (including
reasonable costs of investigation and settlement and attorneys',
accountants' and other experts' fees and expenses) arising out of
any action or inaction by any Indemnifying Party relating to this
Agreement including an Indemnifying Party's manufacture, sale,
use, lease or other disposition of Light Valve Film, and related
materials (other than sales by LICENSEE to LICENSOR
pursuant to Section 4.2 hereof), or other use of the information
and rights granted hereunder. Any knowledge of LICENSEE's
or its sublicensee's activities by LICENSOR or its
representatives shall in no way impose any liability on
LICENSOR or reduce the responsibilities of LICENSEE
hereunder or relieve it from any of its obligations and warranties
under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the
right to file patent applications in the United States and in
foreign countries covering any invention made by such party.
7.2 Improvements and Modifications. (a) If during the
term of this Agreement, LICENSOR makes any improvements
or modifications which are invented or developed by or on
behalf of LICENSOR after the Effective Date of this Agreement
and on or before March 31, 2006, and which relate in any way to
or are useful in the design, operation, manufacture and assembly
of Light Valve Film, such improvements and modifications shall
from time to time be disclosed to LICENSEE and be
automatically included, on a non-exclusive basis, in the rights
and licenses granted pursuant to Section 2.1 hereof, and any
patents and/or patent applications relating thereto shall
automatically be added to Schedule A hereof.
(b) Any future improvements or modifications invented or
developed by or on behalf of LICENSEE, LICENSEE's
sublicensees and LICENSOR (other than as specifically
described in Sections 7.2(a)) after the Effective Date, if any,
which relate in any way to or are useful in the design, operation,
manufacture and assembly of SPD Emulsion, Light Valve Film
and/or to the suspensions or other components used or usable in
SPD Emulsion and/or Light Valve Film shall not be included in
this Agreement. Upon written request by the non-inventing
party, LICENSOR and LICENSEE shall negotiate with each
other regarding the grant of nonexclusive rights and licenses to
use such improvements and modifications, but neither party
shall be obligated to grant such rights and licenses to one
another. Notwithstanding anything contained herein to the
contrary, LICENSOR shall have the right to use, license and
sublicense any improvement, modification or invention which is
jointly developed by LICENSEE or its officers, directors,
employees, affiliates, contractors, or consultants, on the one
hand, and LICENSOR or its officers, directors, employees,
affiliates, contractors or consultants, on the other hand.
(c) During the term of this Agreement each of the parties
hereto agrees to inform the other in writing (without any
obligation to reveal details which would be confidential
information), at least as frequently as once a year in January of
each calendar year, if any significant improvements or
modifications (other than as specifically described in Section
7.2(a)) have been made relating to Light Valve Film, and as to
the general nature of any such improvements and modifications.
(d) Notwithstanding the foregoing, LICENSOR may, but
shall not be required to, voluntarily and without additional cost
to LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE
rights in such certain future improvements and modifications,
and any information so disclosed will be considered Technical
Information which LICENSEE shall be obligated to keep
confidential pursuant to Section 12.1 of this Agreement. In
connection therewith, LICENSOR, may voluntarily add patents
and/or patent applications to Schedule A hereof. No disclosure
of any information by LICENSOR shall in any way establish a
course of dealing or otherwise require LICENSOR to make any
future disclosure of information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that
any patent application now or hereafter listed on or incorporated
into Schedule A shall be filed or maintained in any foreign
country included in the Licensed Territory. If so designated and
if legally possible to do so, LICENSOR agrees to promptly file,
prosecute and maintain such applications and resulting patents,
and LICENSEE shall pay to LICENSOR the complete cost,
including reasonable attorney's fees, to file, prosecute and
maintain during the term of this Agreement any such patent
application and resulting patents specifically so designated by
LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. Materials. Upon request by LICENSEE, during the
term of this Agreement and when mutually convenient to
LICENSOR and LICENSEE, LICENSOR shall supply
LICENSEE with small quantities of materials related to Light
Valve Film for experimental use only by LICENSEE, and shall
charge LICENSEE $750 per man/day plus the cost of any other
materials used in making such materials, plus the cost of
shipping such materials to LICENSEE. Upon request by
LICENSEE, during the term of this Agreement and when
mutually convenient to LICENSOR and LICENSEE,
LICENSOR may make its personnel available to consult with
LICENSEE and its contractors, with compensation to
LICENSOR for such consultation to be mutually agreed to by
LICENSOR and LICENSEE. Each invoice submitted by
LICENSOR for such service shall include detailed explanations
of the charges, and, if requested by LICENSEE, copies of
receipts. The parties acknowledge that LICENSOR has no
obligation to transfer to LICENSEE any Technical Information
other than as may be embodied in such sample materials, and
that, other than sample materials, if any, that may be supplied by
LICENSOR as aforesaid, LICENSEE will be acquiring
materials from authorized suppliers other than LICENSOR.
8.2 Inquiries. LICENSEE and LICENSOR may also at any
time during the term of this Agreement make reasonable inquiry
by telephone, facsimile or mail to one another in regard to any
information or data furnished pursuant to this Agreement.
8.3 Visits. During all visits by either party to the facilities
of the other party, visitors shall comply with all reasonable rules
of the host company, and each party to this Agreement will
indemnify and hold the other party harmless from any liability,
claim or loss whatsoever (i) for any injury to, or, death of, any of
its employees or agents while such persons are present at the
facility of the other party; and (ii) for any damages to its own
property or to the property of any such employee or agent which
may occur during the presence of any such person at the facility
of the other party, regardless of how such damage occurs.
8.4 Sole Purpose. Any documentation or information
supplied pursuant to this Agreement by either party to the other
shall be used solely for the purposes set forth in this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION
RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall provide
appropriate notices of patents, or other similar notice of the
patent rights of the other party on all products utilizing the
patented inventions of the other party. Either party may add its
own patent notice to any copy or embodiment which contains its
patented inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and
exclusive owner of the patents and patent applications listed on
Schedule A, and that, except for the rights granted hereunder,
LICENSEE shall not have any rights or attempt to assert any
ownership rights in and to those patents and patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement shall extend from
the Effective Date to the date of termination of this Agreement.
Unless sooner terminated or extended, as herein provided for
below, this Agreement shall terminate upon the expiration of the
later of (A) the last to expire of the patents now or hereafter
listed in Schedule A hereof, and (B) the expiration of the period
in which LICENSEE is obligated to maintain confidential
Technical Information of LICENSOR pursuant to Section 12.1
hereof.
10.2 Termination by LICENSEE. LICENSEE may
terminate this Agreement effective as of December 31, 2012 or
as of any anniversary thereof by giving LICENSOR prior notice
thereof unless sooner terminated as hereinafter provided. Such
notice shall be made in writing and shall be given between 60
and 90 days prior to the effective date for which such
termination is to be effective. If LICENSEE decides to terminate
this Agreement for any reason, LICENSEE shall provide
LICENSOR, along with the aforementioned notice of
termination, with a written report describing the reasons for such
termination. After the expiration or termination of this
Agreement, LICENSEE shall have no right to sell, and no
obligation to manufacture and deliver, Light Valve Film to any
Authorized User or to any other party.
10.3 Termination by LICENSOR. LICENSOR may
terminate this Agreement at any time upon at least 30 days'
notice to LICENSEE if LICENSEE shall have failed to make
any payment when due or at any time breach any material term
of this Agreement and such payment is not made or such breach
is not cured within any applicable cure period specified in
Article 11 of this Agreement, or repeatedly provide inaccurate
reports hereunder, or if there has been a cessation by
LICENSEE of general operations or of work related to Light
Valve Film.
10.4 Effect of Termination. If this Agreement expires or is
terminated for any reason whatsoever, in addition to any other
remedies which one party may have against the other: (1) all of
LICENSEE's rights and licenses under this Agreement shall
cease, and LICENSEE shall immediately return to LICENSOR
all Technical Information furnished to LICENSEE under this
Agreement, together with all reproductions, copies and
summaries thereof; provided, however, that LICENSEE may
retain solely for archival purposes one copy of all such
documents in its legal department files, (2) at LICENSOR's
option, LICENSEE shall, within 30 days of the date of such
termination, either (A) sell and deliver to LICENSOR under the
terms specified in Section 4.2 any Light Valve Film which shall
then be in the possession of LICENSEE, and, if requested by
LICENSOR, LICENSEE shall finish and deliver to LICENSOR
any Light Valve Film in the process of manufacture as soon as
possible and, in any case, not later than 30 days after receiving
LICENSOR's request, and/or (B) with respect to any unsold
inventory and work in the process of manufacture, to complete
such work in process and sell any remaining inventory during
the period not to exceed six months from the date of termination
or expiration of this Agreement provided that at the completion
of such six-month period, LICENSEE shall promptly destroy
and dispose of any Light Valve Film (and Light Valve Film in
the process of manufacture) not sold under this Section 10.4 and
(3) if this Agreement is terminated for any reason or expires,
upon such termination or expiration, LICENSEE hereby grants
to LICENSOR a nonexclusive, royalty-free, irrevocable,
worldwide license with the right to grant sublicenses to others to
utilize all technical information, improvements and/or
modifications (whether or not the subject of patents or pending
patent applications) developed or invented by or on behalf of
LICENSEE and/or its sublicensees, subcontractors, or agents
hereunder through the date of such termination or expiration of
this Agreement relating to Light Valves, Light Valve Film or
SPD Emulsion which relate to or arise out of Technical
Information or materials disclosed or provided by LICENSOR
or its licensees and their sublicensees to, and upon such
termination or expiration, LICENSEE shall provide LICENSOR
in reasonable detail complete information regarding such
technical information, improvements and/or modifications, and
LICENSOR shall reimburse LICENSEE with the reasonable
costs of travel by personnel of LICENSEE if such travel is
requested by LICENSOR to facilitate the transfer of such
information. The foregoing license shall be self-effectuating,
but LICENSEE agrees upon written notice by LICENSOR at
any time hereafter to deliver to LICENSOR within 30 days of
such notice any document or other instrument reasonably
requested by LICENSOR to convey such license rights to
LICENSOR such as, by way of example, confirmations or
instruments of conveyance or assignment. No termination of
this Agreement by expiration or otherwise shall release
LICENSEE or LICENSOR from any of its continuing
obligations hereunder, if any, or limit, in any way any other
remedy one party may have against the other party.
Notwithstanding the foregoing, LICENSEE's obligations to
LICENSOR under Sections 3.1, 3.2, 4.6, 4.7, 4.8, 6.1, 6.2, 7.2,
8.5, 10.2, 10.4, 12.1, and Articles 13 and 14 shall survive any
termination or expiration of this Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events shall
constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's material breach or material failure
to punctually perform any of its duties and obligations under this
Agreement, which material breach or failure, if curable, remains
uncured for thirty (30) days after written notice of such breach
or failure is received by the breaching party; or (b) a material
misrepresentation is made by a party in any representation or
warranty contained in this Agreement and the misrepresented
facts or circumstances, if curable, remain uncured thirty (30)
days after written notice of such misrepresentation is received
by the breaching party; and, in either case, if such breach or
misrepresentation is not curable, termination shall occur thirty
(30) days after such misrepresentation or breach at the option of
the non-breaching party; or
11.1.2 The failure by a party upon request to provide the
other party with adequate assurances of its performance of all
obligations under this Agreement upon: (a) such first party's
filing of a voluntary petition in bankruptcy; (b) the filing of any
involuntary petition to have such first party declared bankrupt
which has not been dismissed within ninety (90) days of its
filing; (c) the appointment of a receiver or trustee for such first
party which has not been rescinded within ninety (90) days of
the date of such appointment; or (d) such first party otherwise
becoming insolvent or otherwise making an assignment for the
benefit of creditors.
11.2 Default by a Party. If there occurs an Event of
Default with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or
specific performance; and/or
(c) terminate this Agreement and the licenses granted to
LICENSEE hereunder whereupon the non-defaulting party shall
have no further obligations under this Agreement except those
which expressly survive termination.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees for
itself, its sublicensees, and their employees and agents that for
twenty (20) years from the later of the Effective Date or the
latest date of its receipt of information disclosed to LICENSEE
by LICENSOR pursuant to this Agreement, such information
shall be held in confidence; provided, however, there shall be no
obligation to treat as confidential information which is or
becomes available to the public other than through a breach of
this obligation, or which was already possessed by LICENSEE
in writing (or otherwise provable to be in the possession of
LICENSEE) prior to the Effective Date of this Agreement or the
Effective Date of the Emulsion License Agreement (and was not
received from LICENSOR) or which is shown by LICENSEE to
have been received by it from a third party who had the legal
right to so disclose it without restrictions and without breach of
any agreement with LICENSOR or its licensees. The burden of
proving the availability of any exception of confidentiality shall
be on the LICENSEE. LICENSOR shall affix an appropriate
legend on all written documentation given to LICENSEE which
contains confidential information. LICENSEE acknowledges
that the list of patent applications contained on Schedule A shall
be deemed to be confidential information. Other than for the oral
information conveyed during the training and/or visits
conducted pursuant to Sections 8.2 and 8.3 hereof, if any, all of
which shall be deemed to be confidential information, if
confidential information is otherwise conveyed orally by
LICENSOR after training and/or visits have been completed,
LICENSOR shall specify to LICENSEE at the time such
information is being conveyed (or in a subsequent letter
referring to the conversation) that the information conveyed is
confidential. It is understood and agreed that, unless otherwise
provided in a separate agreement between LICENSEE and
LICENSOR, LICENSEE has no obligation hereunder to provide
LICENSOR with any confidential or proprietary information,
and that LICENSOR shall have no obligation hereunder to
LICENSEE to maintain in confidence or refrain from
commercial or other use of any information which LICENSOR
is or becomes aware of under this Agreement. The terms and
provisions of this Agreement or any other agreement between
the parties shall not be considered confidential, and the parties
hereto acknowledge that, pursuant to the Securities Exchange
Act of 1934, as amended, and the regulations promulgated
thereunder, LICENSOR may file copies of this Agreement with
the Securities and Exchange Commission and with NASDAQ
and with any other stock exchange on which LICENSOR's
securities may be listed. LICENSEE agrees that for the period
of time during which LICENSEE is obligated to keep
information confidential hereunder, LICENSEE will not make,
use, sell, lease or otherwise dispose of products using or directly
or indirectly derived from confidential information or sample
materials supplied to LICENSEE by LICENSOR or its
licensees, sublicensees, or any of their affiliates relating to Light
Valve Film, SPD Emulsion or Light Valves or which otherwise
comprise suspended particles, which when subjected to a
suitable electric or magnetic field, orient to produce a change in
the optical characteristics of the suspension ("SPD
Technology") unless an agreement between LICENSOR and
LICENSEE permitting it to do so is in full force and effect and
the royalties, if any, provided in such agreement are being paid
to LICENSOR on such products. The term "SPD Technology"
shall not include technology (i) which does not directly or
indirectly incorporate SPD Technology, such as, but not limited
to, liquid crystal devices, electrochromic devices, or similar
technology, or (ii) which incorporate technology involving
suspended particles, which when subjected to a suitable electric
or magnetic field, orient to produce a change in the optical
characteristics of the suspension but which is independently
developed or licensed from third party(ies) and which is not in
any way directly or indirectly derived from any Technical
Information of LICENSOR or its licensees, sublicensees, or any
of their affiliates. LICENSEE shall have the burden of proving
by clear and convincing evidence that the availability of any
exception of confidentiality exists or that the foregoing
restrictions do not apply to a particular product. Nothing
contained in this section, however, shall be construed as
granting LICENSEE any rights or licenses with respect to any
Technical Information or patents of LICENSOR or its other
licensees or their sublicensees.
(b) LICENSEE will have the right to provide materials to,
and to disclose information of LICENSOR to a subcontractor
relating to this Agreement; provided, however, that LICENSEE
shall only disclose such information as is strictly necessary to
enable said subcontractor to perform its manufacturing task, and
provided that prior to disclosing any information to said
subcontractor, said subcontractor has signed a secrecy
agreement with LICENSEE at least as protective of
LICENSOR's Technical Information as the provisions of this
Agreement, including, without limitation, said subcontractor's
specific agreement to be bound by the provisions of Section 12.1
hereof to the same extent as LICENSEE. For such purposes,
LICENSEE may develop a standard form of secrecy agreement
for LICENSOR's approval, after which LICENSEE may use
such secrecy agreement with all subcontractors without
LICENSOR's prior approval of the secrecy agreement being
necessary. LICENSEE shall have all subcontractors sign said
secrecy agreement prior to the disclosure of Technical
Information to said subcontractor, and LICENSEE shall send
LICENSOR a copy of every such secrecy agreement within
thirty (30) days after the execution thereof.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party represents
and warrants to the other that:
13.1.1 Valid Agreement. The execution and delivery of
this Agreement by the officer or representative so doing, and the
consummation of the transactions contemplated hereby, have
been duly authorized by all necessary corporate action by
LICENSOR and LICENSEE and this Agreement is a valid and
binding obligation enforceable against the parties in accordance
with its terms, except to the extent limited by bankruptcy,
insolvency, moratorium and other laws of general application
relating to general equitable principles;
13.1.2 No Conflicts. Nothing herein conflicts with its
rights and obligations pursuant to any agreement by a party and
any other entity; and
13.1.3 Publicity. The parties shall have the right to use
non-confidential information, including but not limited to
information concerning this Agreement, a description of the
other party, and its logos for marketing, sales, technical
assistance, investor relations, disclosure and public relations
purposes, and that information permitted to be disclosed by a
party under this Section 13.1.3 may appear on such party's (or
its subsidiaries' or sublicensees') Internet web site, along with
links to the Internet web sites, and specific pages therefrom, of
the other party and its subsidiaries and sublicensees.
13.2 LICENSOR Representations. LICENSOR represents
and warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR represents
and warrants that it has the right to convey the rights and
licenses granted by this Agreement, and otherwise to perform its
obligations under this Agreement. LICENSOR has caused its
employees who are employed to do research, development, or
other inventive work to disclose to it any invention or
information within the scope of this Agreement and to assign to
it rights in such inventions and information in order that
LICENSEE shall receive, by virtue of this Agreement, the
licenses granted to it under Section 2.1 hereof.
13.2.2 Infringement. As of the date hereof, LICENSOR is
not aware of any claim for patent infringement or the
misappropriation of trade secrets, being asserted against it by
any third party; or of any infringement of the patents listed on
Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement (a)
that LICENSEE will be able to develop, manufacture, sell or
otherwise commercialize Light Valve Film, or (b) as to the
validity of any patent.
13.4 Representation. LICENSOR hereby represents and
warrants that, as of the Effective Date hereof, to the best of its
knowledge there have been no claims, actions or proceedings
brought or threatened against it or its licensees alleging that any
SPD Emulsion, Light Valve Film, and Light Valves
manufactured using Technical Information or other technical
information disclosed by LICENSOR constitutes infringement
of any patent of any third party.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be
interpreted, construed, governed and enforced in accordance
with and governed by the laws of the State of New York, and
LICENSOR and LICENSEE hereby submit to the exclusive
jurisdiction of the state or federal courts located in the County of
Nassau and State of New York for such purposes. Should any
dispute arise between LICENSOR and LICENSEE in
connection with this Agreement, LICENSOR and LICENSEE
shall first endeavor to settle such dispute in an amicable manner
through mutual consultation.
14.2 Confidentiality In Court Proceeding. In order to
protect and preserve the confidential information of a party
which the parties recognize may be exchanged pursuant to the
provisions of this Agreement, the disclosing party may request,
and the receiving party shall not oppose, the court in any action
relating to this Agreement to enter a protective order to protect
information which is confidential information under Section
12.1 and to seal the record in the action or to hold the
proceedings, or portion of the proceedings, in camera; provided,
that the requested terms do not prejudice the receiving party's
interests. Nothing, however, shall preclude either party from
thereafter moving to unseal its own records or to have matter
and information designated as confidential under any relevant
protective order designated otherwise in accordance with the
circumstances as they shall appear at that time.
14.3 Severability. If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the parties
shall negotiate in good faith to agree upon a substitute provision
that is legal and enforceable and is as nearly as possible
consistent with the intentions underlying the original provision.
If the remainder of this Agreement is not materially affected by
such declaration or finding and is capable of substantial
performance, then the remainder shall be enforced to the extent
permitted by law.
14.4 Waiver. Unless agreed to by the parties in writing to
the contrary, the failure of either party to insist in any one or
more instances upon the strict performance of any one or more
of the provisions of this Agreement, or to exercise any right
contained in this Agreement or provided by law, shall not
constitute or be construed as a waiver or relinquishment of the
performance of such provision or right or the right subsequently
to demand such strict performance or exercise of such right, and
the rights and obligations of the parties shall continue
unchanged and remain in full force and effect.
14.5 Captions. The captions and headings in this
Agreement are inserted for convenience and reference only and
in no way define or limit the scope or content of this Agreement
and shall not affect the interpretation of its provisions.
14.6 Assignment. This Agreement shall be binding on and
shall inure to the benefit of the parties and their successors and
assigns. However, LICENSEE agrees that it shall not assign this
Agreement or its rights hereunder without the prior written
consent of LICENSOR except to a successor to substantially all
of its business relating to Light Valves and whose obligations
hereunder are guaranteed to LICENSOR by LICENSEE.
LICENSOR may assign all of its rights and obligations
hereunder to any successor to any of its business interests or to
any company controlling or controlled by LICENSOR. All
assignees shall expressly assume in writing the performance of
all the terms and conditions of this Agreement to be performed
by the assigning party, and an originally signed instrument of
such assumption and assignment shall be delivered to the non-
assigning party within 30 days of the execution of such
instrument.
14.7 Schedules. All Schedules attached to this Agreement
shall be deemed to be a part of this Agreement as if set forth
fully in this Agreement.
14.8 Entire Agreement. This Agreement constitutes the
entire understanding and agreement between LICENSOR and
LICENSEE with respect to the subject matter hereof, supersedes
all prior agreements, proposals, understandings, letters of intent,
negotiations and discussions with respect to the subject matter
hereof and can be modified, amended, supplemented or changed
only by an agreement in writing which makes specific reference
to this Agreement and which is executed in writing by the
parties; provided, however, that either party may unilaterally
waive in writing any provision imposing an obligation on the
other.
14.9 Notices. Any notice required or permitted to be given
or made in this Agreement shall be in writing and shall be
deemed given on the earliest of (i) actual receipt, irrespective of
method of delivery, (ii) on the delivery day following dispatch if
sent by express mail (or similar next day courier service), or (iii)
on the sixth day after mailing by registered or certified air mail,
return receipt requested, postage prepaid and addressed as
follows:
LICENSOR: Xxxxxx X. Xxxx, Chairman and CEO
Research Frontiers Incorporated
000 Xxxxxxxxx Xxxx Xxxxx
Xxxxxxxx, Xxx Xxxx 00000-0000 XXX
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
LICENSEE: Xxxxx Xxxxxx
General Manager, R&D
Pigments & Chemicals
Technical Dept.
Dainippon Ink and Chemicals, Incorporated
00 Xxxxxxxxxxxxxxxx
Xxxxxx-Xxxxx Xxxxxxx-Xxx
Xxxxxxx-Xxx XXXXX
Facsimile: +81 (299) 93-8180
Telephone: +81 (299) 93-8152
or to such substitute addresses and persons as a party may
designate to the other from time to time by written notice in
accordance with this provision.
14.10 Bankruptcy Code. In the event that either party
should file a petition under the federal bankruptcy laws, or that
an involuntary petition shall be filed against such party, the
parties intend that the non-filing party shall be protected in the
continued enjoyment of its rights hereunder to the maximum
feasible extent including, without limitation, if it so elects, the
protection conferred upon licensees under section 365(n) of Title
17 of the U.S. Code. Each party agrees that it will give the other
party immediate notice of the filing of any voluntary or
involuntary petition under the federal bankruptcy laws.
14.11 Construction. This Agreement and the exhibits
hereto have been drafted jointly by the parties and in the event
of any ambiguities in the language hereof, there shall no be
inference drawn in favor or against either party.
14.12 Counterparts. This Agreement may be executed in
any number of counterparts, each of which shall be deemed an
original, but all of which shall constitute one and the same
instrument.
14.13 Status of the Parties. The status of the parties under
this Agreement shall be solely that of independent contractors.
No party shall have the right to enter into any agreements on
behalf of the other party nor shall it represent to any person that
it has such right or authority.
The parties, through their duly authorized representatives,
and intending to be legally bound, have executed this
Agreement, as of the date and year first above written,
whereupon it became effective in accordance with its terms.
RESEARCH FRONTIERS INCORPORATED
By:_/s/ Xxxxxx X. Harary________________
Xxxxxx X. Xxxxxx, President
Date: March 30, 2006
DAINIPPON INK AND CHEMICALS, INCORPORATED
By:/s/ Masao Tanaka_______________________________
Xxxxx Xxxxxx, General Manager, R&D
Pigments & Chemicals Technical Dept.
Date: March 29, 2006
Schedule A
(As of March 30, 2006)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
4,772,103 Xxxxxx X. Xxxx
"Light Valve Containing an Improved
Suspension, and Liquids Therefor" 9/20/88 8/8/06
5,002,701 Xxxxxx X. Xxxx
"Light Polarizing Materials and
Suspensions Thereof" 3/26/91 3/26/08
4,877,313 Xxxxxx X. Xxxx et al
"Light Polarizing Materials and
Suspensions Thereof" 10/31/89 2/10/09
5,093,041 Xxxxxx X. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 Xxxx Xxxxxxxxx
"Electro-Optical Light Modulator" 5/05/92 7/5/09
5,130,057 Xxxxxx X. Xxxx
"Light Polarizing Materials and
Suspensions Thereof" 7/14/92 10/31/06
5,279,773 Xxxxxx X. Xxxx
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
5,325,220 Xxxxxx X. Xxxx
"Light Valve With Low Emissivity
Coating As Electrode" 6/28/94 3/9/13
5,463,491 Xxxxxx X. Check III
"Light Valve Employing a Film Comprising
An Encapsulated Liquid Suspension And
Method of Making Such Film" 10/31/95 11/6/12
5,463,492 Xxxxxx X. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve" 10/31/95 11/6/12
5,461,506 Xxxxxx X. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing The Same" 10/24/95 5/11/13
5,467,217 Xxxxxx X. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing The Same" 11/14/95 5/11/13
5,516,463 Xxxxxx X. Check III et al
"Method of Making Light
Polarizing Particles" 05/14/96 07/08/14
5,650,872 Xxxxxx X. Xxxx et al
"Light Valve Containing
Ultrafine Particles" 07/22/97 12/08/14
5,728,251 Xxxxxx X. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve" 03/17/98 09/27/15
5,764,402 Xxxx-Xxxxxxxx Xxxxxx; Xxxxxx Xxxxx
Optical Cell Control System 06/09/98 04/24/15
5,838,482 Xxxxxx Xxxxxxxxx; Xxxxxx Xxxxxxx
Optical Cell 11/17/98 05/16/15
5,691,849 Xxxx Xxxxxxx; Xxxx-Xxxxxxxx Xxxxxx; Xxxxx Xxxx
Rear-View Assembly for a Vehicle
and an Adaptor Therefo 11/25/97 11/25/14
6,114,405 Xxxxxxx Xxxxxx et al
Ultraviolet Radiation-Curable
Light-Modulating Film for a Light
Valve, and Method of Making Same 09/05/00 10/09/17
6,156,239 Xxxxxx X. Xxxx et al
Light Polarizing Material, Liquid
Suspensions and Films Thereof, and Light
Valve Incorporating Same 12/05/00 02/26/19
6,271,956B1 Xxxxxx X. Xxxx et al
Method and Materials for Enhancing the
Adhesion of SPD Films and Light Valves
Comprising Same 08/07/01 03/02/20
6,301,040 Xxxxxxxxxx Xxxxxxxxxx et al
SPD Films Having Improved Properties and
Light Valves Comprising Same 10/09/01 05/24/20
6,334,967B1 Xxxxxx X. Xxxx et al
Light Polarizing Particles of Improved
Particle Size Distribution 01/01/02 12/21/20
(See also listing for PCT/US99/15508)
6,416,827 Xxxxxxxxxx Xxxxxxxxxx et al
SPD Films and Light Valves Comprising Same 07/09/02[10/27/20]
6,429,961B1 Xxxxxx X. Xxxxxx et al
Methods for Retrofitting Windows With Switchable
and Non-Switchable Window Enhancements and
Retrofitted Windows Produced Thereby 08/06/02 10/03/20
6,517,746 Xxxxxx X. Xxxx et al.
Polyhalide Particles and Light Valves
Comprising Same 02/11/03 01/05/21
6,522,446 Xxxxxx X. Xxxx
Anisometrically Shaped Metal Particles,
Liquid Suspensions and Films Thereof And
Light Valves Comprising Same 02/18/03 04/25/21
6,529,312B1 Xxxxxx X. Xxxx
Anisometrically Shaped Carbon and/or Graphite
Particles, Liquid Suspensions and Films Thereof
And Light Valves Comprising Same 03/04/03 06/07/19
[See also U.S. Patent No. 6,987,602 filed
December 27, 2002, a continuation-in-part of this patent]
6,606,185B2 Xxxxxx X. Xxxx
SPD Films and Light Valves Comprising Liquid
Suspensions of Heat-Reflective Particles of
Mixed Metal Oxides and Methods of Making
Such Particles 08/12/03 12/08/14
6,804,040 Xxxxxx X. Xxxxxxx, et al
Method and Device for Controlling Voltage
Provided to a Suspended Particle Device 10/12/04 02/13/23
6,897,997 Xxxxxx X. Xxxxxxx
Method and Device for Controlling Voltage
Provided to a Suspended Particle Device 05/24/05 02/13/23
(continuation-in-part of 6,804,040)
Xxxxxxxxxx Xxxxxxxxxx et al
6,900,923 "Siloxane Matrix Polymers and SPD Light Valve Films
Incorporating Same" 05/31/05 06/18/23
Xxxxxx X. Xxxx, et al
6,936,193 "SPD Light Valve Film Incorporating New
Suspending Media,and Light Valve
Incorporating Same" 08/30/05 04/14/23
6,987,602 B2 Xxxxxx X. Xxxx, et al
Anisometrically Shaped Carbon and/or Graphite
Particles, Liquid Suspensions and Films Thereof
And Light Valves Comprising Same 01/17/06 06/07/19
(continuation-in-part of patent 6,529,312B1)
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
PENDING INTERNATIONAL APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
Patent Number
or
Country Serial Number Issued Filed Expiration
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
FOREIGN PATENTS AND PATENT APPLICATIONS
Patent Number
or
Country Serial Number Issued Filed Expiration
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
Schedule B
(As of March 30, 2006)
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR
LIGHT VALVE FILM
Name of Customer Licensed Application Permitted Territory
Research Frontiers Incorporated All applications Worldwide
American Glass Products Architectural and automotive windows Worldwide
(except Korea)
AGC Automotive Americas Sunroof glass for other licensees Worldwide
Asahi Glass Co. Sunroof glass for other licensees Worldwide
Xxxxx Xxxxxxxx Corp. SPD displays Worldwide
BOS GmbH Variable light transmission sunshades and sunvisors Worldwide
BRG Group, Ltd. Architectural and automotive windows Worldwide
(except Korea)
Cricursa Xxxxxxxxx Curvados S.A.Architectural and automotive windows Worldwide
(except Korea)
Custom Glass Corporation Windows and sunroofs for
mass transit trains/busses Worldwide (except Korea)
X.X.XxXxxx de Nemours and Company Architectural and automotive windows Worldwide
(except Korea)
Glaverbel, S.A. Automotive vehicle rear-view mirrors, Worldwide
transportation vehicle sunvisors,and (except Korea
architectural and automotive windows for windows)
Global Mirror GmbH Rear-view mirrors and sunvisors Worldwide
Innovative Glass Corporation Architectural windows U.S., Canada, and Mexico
InspecTech Aero Service, Inc. Aircraft and marine windows worldwide
and cabin dividers (except Korea)
Isoclima S.p.A. Architectural and automotive windows Worldwide
(except Korea)
Kerros Ltd. (IntelliTint)Automotive windows and sunroofs Worldwide
(except Korea)
Laminated Technologies, Inc./LTI Smartglass Licensed to Worldwide
provide laminated SPD-Smart glass (except Korea)
to other licensees of Research Frontiers for windows)
and for certain architectural window
products to existing customers.
Leminur, Ltd. Architectural windows Russian Federation, Armenia
Azerbaijan,Belarus,Estonia,
Georgia,Kazakhstan, Kyrgyz
Republic, Latvia,Lithuania,
Moldova,Tajikistan,Turkmenistan.
Ukraine,and Uzbekistan.
N.V. Bekaert S.A. Architectural and automotive windows Worldwide (except Korea)
Xxxxxxxxxx plc Licensed to provide laminated SPD-Smart glass Worldwide
to other licensees of Research Frontiers.
Prelco Inc. Architectural windows, train and bus windows U.S., Canada,
and Mexico
SmartGlass Ireland Ltd. Architectural windows Republic of Ireland
SPD Technologies, Inc. Architectural windows Worldwide (except Korea)
Saint-Gobain Glass France, SA Architectural windows, automotive Worldwide
and other transportation vehicle (except Korea)
windows (other than aircraft
and spacecraft), kitchen and laundry
home appliance windows, and automotive
sunvisors and rear-view mirrors for
cars, SUVs, light trucks and other
transportation vehicles (other than as
original equipment mirrors on heavy
trucks, busses, construction vehicles,
firetrucks and other vehicles in
Class 5-8 or weighing over 16,000 pounds)
SPD Systems, Inc. Architectural, marine and appliance windows Worldwide
(except Korea)
ThermoView Industries, Inc. Architectural windows Worldwide
(except Korea)
Traco Inc. Architectural windows Worldwide
(except Korea)
Vision (Environmental Innovation) Ltd.Architectural windows United Kingdom
[INFORMATION REGARDING OTHER AUTHORIZED USERS WILL BE PROVIDED
BY LICENSOR TO LICENSEE FROM TIME TO TIME IN THE FUTURE]