EXHIBIT 10.7
EXCLUSIVE LICENSE AGREEMENT
This Exclusive License Agreement (hereinafter "Agreement") is entered
into by and between Lockheed Xxxxxx Corporation a Delaware corporation acting
through its Xxxxxx Systems (the "LICENSOR"), having its principal place of
business at P0 Xxx 000000, Xxxxxx, Xxxxx and OmniCorder Technologies, Inc. (the
"LICENSEE"), a corporation organized under the laws of Delaware and having a
principal place of business at 00 Xxxx Xxxx, Xxxxx Xxxxx, Xxx Xxxx 00000 as of
the 29 day of September 1998 (hereinafter "Effective Date").
WITNESSETH:
WHEREAS, the LICENSOR is the owner of the Subject Technology as defined
below; and
WHEREAS, the LICENSOR is willing to grant to the LICENSEE a royalty
bearing, worldwide, exclusive license to practice the Subject Technology in
certain Fields as defined below on the terms, and subject to the conditions, set
forth herein: and
WHEREAS, LICENSEE desires to obtain said exclusive license to practice
the Subject Technology on said terms and conditions.
NOW, THEREFORE, for and in consideration of the premises and other good
and valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, the Parties hereto expressly agree as follows:
1. DEFINITIONS AS USED HEREIN
1.1 "Subject Technology" shall mean the technology, know-how, methods,
inventions and confidential information related to LICENSOR's Enhanced Quantum
Well Infrared Photodetectors (EQWIPs) which were designed, developed and
invented by LICENSOR as of the Effective Date. The term Subject Technology shall
include U.S. Patent Number 5,539,206 entitled "Enhanced Quantum Well Infrared
Photodetector" by Xxxxxx X. Xxxxxxxx issued July 23, 1996, and all inventions
described or claimed therein, together with all patent, or like protection on
said inventions that have or may in the future be granted, whether in the United
States of America or any other country, and all substitutions for and divisions,
continuations, continuations-in-part, renewals, reissues, extensions and the
like on said applications and patents. The term Subject Technology shall also
include any improvement technology, know-how, methods, inventions, patent
applications, patents and maskworks made or obtained by LICENSOR in connection
with the EQWIPs, their materials or structure, LICENSOR's ongoing Advanced EQWIP
Project and any LICENSOR follow-on Projects thereto, so long as this Agreement
is in full force and effect. Subject Technology shall not include any
technology, know-how, methods, inventions, patent applications, patents,
maskworks or confidential information developed by any division, subsidiary or
Affiliate of Lockheed Xxxxxx Corporation other than Xxxxxx Systems.
1.2 "Licensed Products" shall mean and be limited to biomedical equipment that
incorporates or is intended to incorporate one or more EQWIPs or Advanced
EQWIPs, or that in any manner or to any extent incorporates or is intended to
incorporate, utilizes, or is made by the practice of,
any of the Subject Technology or any technology derived from or based upon any
of the Subject Technology, or that is covered in whole or in part by any patent,
maskwork or equivalent protection that is or becomes part of the Subject
Technology, whether or not the equipment is delivered or sold assembled or in
kit form.
1.3 "Field" shall mean and be limited to biomedical applications of the Subject
Technology.
1.4 "The Parties" shall mean the LICENSEE and the LICENSOR.
1.5 "Affiliate" shall mean any corporation, partnership, joint venture, or other
entity controlled by, controlling or under common control with a Party. Control
means fifty one percent (51%) or more stock or other equity ownership.
1.6 "QED" shall mean Quantum Epitaxial Designs, Inc., having a place of business
at 000 Xxxxxxxxxx Xxxxx, Xxxxxxxxx, XX 00000.
1.7 "Net Sales Revenue" shall mean the gross amount of monies (or the cash
equivalent of other than cash consideration) actually received by LICENSEE for
any Licensed Products that are sold to End-users, less any, credits and
allowances actually granted on account of rejections, returns or billing errors
and any transportation, shipping insurance, duties or taxes (other than federal
and state income taxes) actually paid. If the compensation is other than cash,
then the Net Sales Revenue shall be the cash equivalent of such other than cash
compensation.
1.8 "Sublicensee" shall mean a biomedical equipment manufacturer in which
LICENSEE has no financial or management interest, that is licensed by LICENSEE
pursuant to this Agreement to perform any of the rights and licenses granted to
LICENSEE in Paragraph 2.1 for which LICENSEE directly or indirectly receives
compensation.
1.9 "Sublicense" shall mean an agreement entered into by LICENSEE and a
Sublicensee which permits such Sublicensee to perform any of the rights or
licenses granted to LICENSEE in Paragraph 2.1 for which LICENSEE directly or
indirectly receives compensation.
1.10 "Sublicensing Revenue" shall mean all fees, royalties and other
compensation paid to LICENSEE by any Sublicensee for performing any rights or
licenses which are subject to this Agreement. If the compensation is other than
cash, then the Sublicensing Revenue shall be the cash equivalent of such other
than cash compensation.
1.11 "End-user" shall mean any person or entity that uses a Licensed Product for
other than manufacturing or test purposes. A Sublicensee shall not be considered
an End-user; however, it is recognized that a single person or entity may be
both a Sublicensee and an End-user.
1.12 "End-user Revenue" shall mean all rent, license, use, royalty, patient
transaction or other fees or income actually received by Licensee for the
license, lease or use of any Licensed Product by an End-user less any, credits
and allowances actually granted on account of rejections, returns or billing
errors and any duties or taxes (other than federal and state income taxes)
actually paid. if the compensation is other than cash, then the End-user Revenue
shall be the cash equivalent of such other than cash compensation.
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1.13 "Relevant Patent" shall mean and include any patent licensed by LICENSOR
hereunder including any patent under paragraph 7.1 which has not been declined
by LICENSEE under paragraph 7.1; U.S. Patent No. 5,539,206 together with all
patent or like protection on the inventions described or claimed therein that
have or may in the future be granted, whether in the United States of America or
any other country, and all substitutions for and divisions, continuations,
continuations-in-part, renewals, reissues, extensions and the like on said
applications and patents shall be deemed to be Relevant Patents.
1.14 "LICENSEE Improvement Technology" shall mean all modifications,
improvements, derivations and additions made by or for LICENSEE (or by or for
any Sublicensee of LICENSEE) to any of the Subject Technology, but only to the
extent that such modifications, improvements, derivations and additions are
incorporated in, or used in the manufacture,, fabrication or testing of, any
device, focal plane array or hybrid structure that includes an EQWIP, Advanced
EQWIP or other device or structure, or combination of devices or structures, at
least in part based upon, derived from or covered by any of the Subject
Tethno$ogy, and may comprise know-how, techniques, methods, manufacturing
processes, materials, designs, structures, maskworks, inventions and patents.
2. GRANT OF LICENSE
2.1 License Grant. The LICENSOR hereby grants to the LICENSEE an exclusive
worldwide, right and license, with the right to grant Sublicenses to others: (i)
to practice the Subject Technology in the Field, (ii) to make, have made and
import Licensed Products in the Field, (iii) to use Licensed Products in the
Field for manufacturing and test purposes, and (iv) to offer for sale, sell,
lease and license Licensed Products for use by End-users in the Field. The right
and license shall be non-assignable except to successors by merger or sale of
substantially all of LICENSEE's assets, or by written permission of LICENSOR,
which permission shall not be unreasonably withheld.
2.2 Nonexclusive Rights Retained by LICENSOR. The grant in Paragraph 2.1 shall
be subject to, restricted by and nonexclusive with respect to practice of the
Subject Technology by the LICENSOR and its Affiliates in the Field for further
research and development purposes only, and for all purposes in any field in
which LICENSEE does not retain an exclusive license hereunder.
3. MARKETING EFFORTS
3.1 Assiduous Marketing by LICENSEE. LICENSEE shall use its reasonable best
efforts to effect assiduously the introduction of Licensed Products into the
commercial market as soon as practicable after the Effective Date. Such efforts
shall include, but not be limited to at all times, marketing the Licensed
Products with at least the same diligence as LICENSEE employs for comparable
products marketed by LICENSEE.
3.2 Prohibition Against Conflicts. LICENSEE shall not, during the period
commencing on the Effective Date and extending for a period of two (2) years
thereafter ("Startup Period"), acquire or develop any technologies, processes or
products that the use, manufacture, marketing, leasing or sales of which would
in any manner prevent or conflict with LICENSEE's use of its
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best efforts to manufacture, market, lease and sell Licensed Products under this
Agreement. This prohibition shall in no manner preclude LICENSEE from acquiring
or developing during the Startup Period any technology or process (i) for use in
products that do not perform equivalent functions to those that could be
performed by biomedical equipment employing the Subject Technology, or (ii) for
use in, or in the manufacture of Licensed Products which are subject to the
terms and conditions of this Agreement including payment of royalties to
LICENSOR or (iii) which constitutes LICENSEE Improvement Technology that is
subject to the provisions of Paragraphs 7.2 and 7.3 hereof.
3.3 Grounds for Termination. Failure by LICENSEE to assiduously market Licensed
Products in accordance with Paragraphs 3.1 and 3.2 shall be grounds for
termination of this Agreement in accordance with Paragraph 10.2.
3.4 Continued Marketing. Sale and Lease of Products. Unless LICENSEE has
converted the exclusive license granted hereunder to a nonexclusive license
under Paragraph 5.3, at least 66% of all revenue derived by LICENSEE from the
manufacture, sale, lease and use of breast cancer screening and diagnosis
equipment, and 33% of all revenue derived by LICENSEE from the manufacture,
sale, lease and use of all biomedical equipment (including breast cancer
screening and diagnosis equipment) incorporating one or more infrared detector
focal plane arrays (collectively "IR-FPA Equipment"), shall employ the Subject
Technology and as such, shall constitute Licensed Products subject to payment of
royalties under paragraph 5.1 of this Agreement. If LICENSEE does not maintain
such level of production, sale, lease and license of Licensed Products, or pay
LICENSOR the same royalties that LICENSEE would have been required to pay if
such levels had been maintained (based on the average revenue received by
LICENSEE for all IR-FPA Equipment, but not less than the Minimum Royalties
specified in Paragraph 5.2), then the exclusive license granted hereunder shall
automatically become nonexclusive.
Notwithstanding the conversion of the license granted hereunder to a
nonexclusive license under this Paragraph or Paragraph 5.3, if the Licensed
Products manufactured, sold, leased and licensed by LICENSEE drops below 10% of
the total IR-FPA Equipment manufactured, sold, leased and licensed by LICENSEE,
LICENSOR shall have the right to terminate this Agreement in accordance with
Paragraph 10.2 if LICENSOR has the opportunity to grant an exclusive license to
a third party for use of the Subject Technology in the Field.
3.5 Penetration of Market Segments. It, at anytime after expiration of the
Startup Period, LICENSOR is approached or otherwise becomes aware of an
opportunity to license the Subject Technology in any market segment of the Field
that has not been developed by LICENSEE, LICENSOR shall notify LICENSEE and
shall have the right to require LICENSEE to undertake to develop such market
segment within-a reasonable period of time. If LICENSEE is unable or unwilling
to do so, all rights and licenses with respect to such market segment shall
revert to LICENSOR, and may thereafter be licensed to others on an exclusive or
nonexclusive basis. If LICENSOR fails to conclude any license with respect to
such opportunity within a reasonable period of time, the rights of LICENSEE to
such market segment will be reinstated, subject to any further opportunity which
arises in that market segment of the Field if it remains undeveloped by
LICENSEE. If LICENSOR concludes only a nonexclusive license, LICENSEE shall
retain a nonexclusive license with respect to such market segment of the Field.
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4. TECHNICAL AND MARKETING ASSISTANCE BY LICENSOR
4.1 LICENSOR shall provide LICENSEE with reasonable technical and engineering
assistance in the design, manufacture and use of EQWIPs for Licensed Products,
subject to the following:
(i) LICENSEE shall reimburse LICENSOR for all reasonable out of pocket
travel costs and other expenses associated with providing technical and
engineering assistance requested by LICENSEE at the rate of 1.33 times
actual costs and expenses (includes LICENSOR overhead); and
(ii) During the one (1) year period commencing on the Effective Date
(`Technical Assistance Period") LICENSOR shall provide up to eighty
(80) man-hours of technical and engineering assistance. Other than the
costs and expenses provided for in subparagraph 4.1 (i), the first
forty (40) man-hours of technical and engineering assistance services
shall be provided at no cost to LICENSEE; LICENSEE shall pay LICENSOR
for all additional man-hours of technical and engineering assistance
services at the rates of $126.25 per man-hour during 1998 and $128.75
per man-hour during 1999.
The rates and limitations for LICENSOR providing technical and engineering
assistance to LICENSEE beyond the Technical Assistance Period shall be
negotiated by the parties in good faith and shall be consistent with LICENSOR's
manpower availability and increased costs, if any, in providing such services.
4.2 Manufacturing Data Package. LICENSOR will provide a complete EQWIP
manufacturing data package to QED, a company licensed by LICENSOR to make EQW1Ps
for sale, lease and use outside of the FIELD; however, LICENSEE may purchase
EQWIPs from QED (or other manufacturer) for use in the FIELD under the have made
rights granted to LICENSEE in Paragraph 2.1 of this Agreement. The prices paid
by LICENSEE to QED (or other manufacturer) for any such EQWIPs will not include
any amount for royalties to LICENSOR as all royalties for such transactions
shall be paid by LICENSEE under this Agreement.
4.3 Purchase of Manufacturing Data Package by LICENSEE. In the event LICENSEE
decides to manufacture EQWIPs, or have them manufactured by other than QED,
LICENSOR agrees to furnish LICENSEE, upon written request, a complete up-to-date
manufacturing data package for a fee not to exceed the most favored price
offered by LICENSOR to any other licensee including QED.
5. PAYMENTS AND REPORTS
5.1 Running Royalty. LICENSEE shall pay the LICENSOR running royalties as
specified in Exhibit I - Royalties, attached hereto and made a part hereof by
this reference, for all sales, leases, licenses or other dispositions of
Licensed Products. Such running royalties shall be payable to the LICENSOR as
provided in Paragraph 5.4. No royalty will be paid for sale, lease, license or
other disposition of any equipment that does not include any of the LICENSOR's
Subject Technology or is not otherwise a Licensed Product.
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5.2 Minimum Royalties. In the event that the sum of all running royalties paid
on sales and leases under Paragraph 5.1 in any calendar year does not reach the
minimum amount agreed upon for such year, LICENSEE shall pay an additional
amount with the payment due for the period ending December 31 of such year, so
that the total amount paid for such year shall reach the minimum amount agreed
upon for such year, subject to the following:
(i) There shall be no minimum royalties for calendar years 1998;
(ii) The minimum royalties for 1999 and beyond are as specified in
Exhibit II, attached hereto and made a part hereof by this reference;
and
(iii) Running royalty amounts paid in excess of the minimum amount for
any calendar year shall not be applied to offset any shortfall to the
minimum amount for any other year.
5.3 Conversion to Nonexclusive License. LICENSEE may at its sole option, notify
LICENSOR in writing at least thirty (30) days prior to December 31 of any
calendar year, of its intent to convert the right and license granted in
Paragraph 2.1 to a nonexclusive license for all subsequent years; whereupon, the
right and license granted in Paragraph 2.1 shall become nonexclusive on January
31 of the following year, and payment of the minimum amount specified in
Paragraph 5.2 will not be required for such following year and all subsequent
years. Upon receipt of such notice, LICENSOR shall have the immediate right to
grant exclusive or nonexclusive licenses to third parties effective February 1
of such following year, subject to LICENSEE's retention of a nonexclusive
license during the term of this Agreement provided that LICENSEE meets the
minimum 10% requirement specified in Paragraph 3.4.
LICENSEE may reestablish its exclusive right and license at any time during the
term of this Agreement by written notice to LICENSOR of its intent to do so
accompanied by payment to LICENSOR of the full sum of the additional amounts
specified in Paragraph 5.2 for all years in which the minimum amount was not
paid; provided, however, LICENSEE's reestablished exclusive right and license
shall be subject to any and all rights and licenses granted by LICENSOR to third
parties during the period in which LICENSEE retained only a nonexclusive
license.
In addition, LICENSOR shall have the right to convert the exclusive license to a
nonexclusive license if LICENSEE fails to have in place in the Field, the
minimum number of royalty generating installations specified in Exhibit II.
5.4 Payment of Royalties. Payment of the royalties specified in Paragraphs 5.1
and 5.2 shall be made by the LICENSEE to the LICENSOR within thirty (30) days
after March 31, June 30, September 30 and December 31 of each year during the
term of this Agreement covering the quantity of Licensed Products sold, leased,
licensed or otherwise deployed in the field and the Net Sales Revenue, End-user
Revenue and Sublicensing Revenue received by LICENSEE during the preceding
calendar quarter. After termination or expiration of this Agreement, (I) a final
payment shall be made by LICENSEE covering the whole or partial final calendar
quarter and (ii) LICENSEE shall continue making payments as required under
paragraph 10.5(i). Each quarterly payment shall be accompanied by a written
statement of the quantity of Licensed
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Products sold during the preceding quarter, the quantity of Licensed Products
leased, licensed or otherwise deployed in the field (preceding quarterly
increment and cumulative total), the Net Sales Revenue, End-user Revenue and
Sublicensing Revenue received by LICENSEE during such preceding calendar
quarter, and the calculation of royalties due LICENSOR. Such written statements
shall be duly signed by an authorized signatory of LICENSEE.
5.5 Other Payments. Payment to the LICENSOR for the costs, expenses and services
specified in Sections 4 and 9 which are attributable to LICENSEE shall be made
by LICENSEE within thirty (30) days after receipt of LICENSOR's invoice
detailing such costs, expenses and services. Such invoices shall be submitted
for payment no more often than once per month.
5.6 Failure to Make Timely Payment. Should LICENSEE fail to make any payment
whatsoever due and payable to the LICENSOR hereunder, the LICENSOR may, at its
sole option, terminate this Agreement as provided in Paragraph 10.2
5.7 Method of Payment. All payments due hereunder are expressed in and shall be
paid by check payable in United States of America currency, without deduction of
exchange, collection or other charges, to the LICENSOR, or to the account of the
LICENSOR at such bank as the LICENSOR may from time to time designate by notice
to LICENSEE.
5.8 Late Payments to Accrue Interest. In the event that any payment due
hereunder is not made when due, such payment shall accrue interest beginning on
the tenth day following the due date thereof, calculated at the annual rate of
the sum of (a) two percent (2%) plus (b) the prime interest rate quoted by The
Wall Street Journal on the date said payment is due, the interest being
compounded on the last day of each calendar quarter, provided, however, that in
no event shall said annual interest rate exceed the maximum legal interest rate
for corporations. Each such overdue payment, when made, shall be accompanied by
all interest so accrued. Said interest and the payment and acceptance thereof
shall not negate or waive the right of the LICENSOR to seek any other remedy,
legal or equitable, to which it may be entitled because of the delinquency of
any payment.
5.9 Marketing Report. In addition to the statement required in Paragraph 5.4,
LICENSEE shall furnish to the LICENSOR within thirty (30) days after December 31
of each year during the term of this Agreement, a written report signed by the
appropriate LICENSEE officer detailing the actions taken by LICENSEE during the
preceding calendar year to comply with the provisions of Paragraph 3.1.
6. RECORDS AND INSPECTION
LICENSEE shall maintain or cause to be maintained a true and correct
set of records pertaining to the manufacture, sales, leases, licenses and other
transactions relating to Licensed Products by LICENSEE under this Agreement and
all Net Sales Revenue and End-user Revenue received by LICENSOR with respect
thereto. LICENSEE shall further maintain or cause to be maintained a true and
correct set of records pertaining to any Sublicenses granted hereunder and all
Sublicensing Revenue received by LICENSEE with respect thereto. During the term
of this Agreement and for a period of two (2) years thereafter, LICENSEE agrees
to permit Lockheed Xxxxxx Corporation's internal auditors, and/or an independent
accountant selected by the
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LICENSOR and reasonably acceptable to LICENSEE, at LICENSOR's sole option and
expense, to have access during ordinary business hours to such LICENSEE records
as may reasonably be required by such auditors and accountant to determine the
correctness of any report and/or payment made by LICENSEE under this Agreement.
The cost of any such audit shall be borne by LICENSOR; provided, however, in the
event that the audit reveals an underpayment of royalties by LICENSEE of more
than five percent (5%), the cost of the audit shall be reimbursed in full by
LICENSEE. If audit reveals an underpayment by LICENSEE of between five percent
(5%) and two percent (2%), LICENSEE shall reimburse fifty percent (50%) of the
cost of the audit to LICENSOR. LICENSOR's auditors and accountant shall maintain
in confidence, and shall not disclose to LICENSOR, any information concerning
LICENSEE or its operations or properties other than information directly
relating to the correctness of LICENSEE's reports and payments under this
Agreement.
7. IMPROVEMENTS
7.1 Disclosure of Improvements to LICENSEE. So long as this Agreement is in full
force and effect, LICENSOR shall to the extent of its right to do so, no later
than the time it is completed, built, fully tested and ready for use in
commercial production, disclose to LICENSEE improvements or modifications to the
Subject Technology made by LICENSOR or any third party for or on behalf of
LICENSOR. LICENSOR will also advise LICENSEE of any third party patent that it
is aware might be infringed by use of any such improvements or modifications.
LICENSEE's right and license with respect to such improvements and modifications
shall be the same as LICENSEE has with respect to any other Subject Technology
under paragraph 2.1; provided, however, that LICENSEE shall have the right to
decline a license under any patent issued to LICENSOR covering any such
improvement or modification by giving written notice to LICENSOR, whereupon such
patent shall not be considered a Relevant Patent and LICENSEE shall have no
right or license whatsoever with respect to the Subject Technology covered by
such patent.
7.2 Disclosure of LICENSEE Improvement Technology to LICENSOR. LICENSEE shall to
the extent of its right to do so, no later than the time it is completed, built,
fully tested and ready for use in commercial production, disclose to LICENSOR
all LICENSEE Improvement Technology for use by LICENSOR, its Affiliates and
sublicensees under Paragraph 7.3. LICENSEE will also advise LICENSOR of any
third party patent that it is aware might be infringed by use of any such
LICENSEE Improvement Technology.
7.3 Grant-Back of Nonexclusive License in LICENSEE Improvement Technology to
LICENSOR. With respect to all LICENSEE Improvement Technology that LICENSEE is
obligated to disclose to LICENSOR under Paragraph 7.2, LICENSEE shall to the
extent of its right to do so, grant, and hereby does grant to the LICENSOR and
its Affiliates, in all cases where, and to the extent that, LICENSEE does not
have or retain an exclusive right and license under this Agreement, a perpetual,
fully paid-up and royalty free nonexclusive, worldwide, right and license to
incorporate such LICENSEE Improvement Technology in products and to practice
such LICENSEE Improvement Technology to make, have made, use, offer for sale,
sell, lease and import products, including the right to grant sublicenses
thereunder. Such cases include and are limited to: (a) the nonexclusive rights
and licenses retained by LICENSOR and its Affiliates under Paragraph 2.2, (b)
the exclusive rights and licenses retained by LICENSOR and its
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Affiliates with respect to all uses of the Subject Technology outside of the
Field, (c) the nonexclusive rights and licenses which revert to LICENSOR upon
forfeit by LICENSEE of any of its rights to exclusivity under any of Paragraphs
3.4, 3.5 and 5.3, (d) any rights to exclusivity voluntarily relinquished to
LICENSOR by LICENSEE and, (e) upon the termination of this Agreement, LICENSOR
shall have and retain a non-exclusive right and license in all LICENSEE
Improvement Technology that LICENSOR was, or was entitled to be granted by
LICENSEE during the term of this Agreement. LICENSEE agrees to execute any and
all documents reasonably required by LICENSOR to effectuate the rights and
licenses granted to LICENSOR and its Affiliates hereunder.
7.4 Abandonment by LICENSEE. Prior to intentionally causing "abandonment or
"cancellation" (as such terms are used in 37CFR 1.135, 37CFR 1.138, 37 CFR 201.7
or like provisions of U.S. or foreign laws or regulations governing inventions,
patents, copyrights and maskworks) of any patent, invention, copyright, maskwork
or other legal right to any LICENSEE Improvement Technology to which LICENSOR is
entitled to a nonexclusive license under Paragraph 7.3, LICENSEE shall to the
extent of its right to do so, transfer and assign the same to LICENSOR; LICENSOR
shall continue to have nonexclusive rights and licenses in all other LICENSEE
Improvement Technology to which LICENSOR is entitled under Paragraph 7.3, and
such rights and licenses shall survive any expiration or termination of this
Agreement. If LICENSEE assigns any rights to LICENSOR prior to termination of
this Agreement, LICENSEE shall have and retain a license in all such assigned
rights of the same scope which LICENSEE has and retains with respect to Subject
Technology under this Agreement.
8. SUBLICENSES
All Sublicenses granted by LICENSEE of its rights hereunder to a
Sublicensee shall be subject to the terms of this License Agreement. LICENSEE
shall obtain prior written approval from the LICENSOR before entering into any
Sublicense with a Sublicensee. LICENSOR's approval shall not be unreasonably
withheld or delayed for any markets or territories that are not readily or fully
penetrable by LICENSEE so long as (i) LICENSOR's share of Sublicensing Revenue
generated by the Sublicense for transactions performed by the Sublicensee is at
least 50% of the amount LICENSOR would receive for the same transactions if
performed by the LICENSEE rather than the Sublicensee (e.g., at least 1.5% of
End-user Revenue but not less than $.38, .75% but not less than $.19 after
expiration/invalidity of all Relevant Patents and 1 .5% Net Sales Revenue for
outright sales of Licensed Products, .75% after expiration/invalidity of all
Relevant Patents), or (ii) despite LICENSOR's share of the Sublicensing Revenue
being less than the minimum stated in clause (I) LICENSEE agrees to pay LICENSOR
the minimum stated in (I), or (iii) the total Sublicensing Revenue consists of
an up-front fee and LICENSOR is unwilling or unable, within ninety (90) days of
being requested to approve the Sublicense, to find an equivalent Sublicensee
that is willing to pay a higher Sublicensing Revenue. It shall be deemed
reasonable for LICENSOR to withhold it's approval of any Sublicense (i) for any
market or territory that is capable of being readily and fully penetrable by
LICENSEE, or (ii) for which LICENSOR's share of the Sublicensing Revenue does
not fall within clauses (I), (ii) or (iii) of the previous sentence. LICENSEE
shall be responsible for its Sublicensees and shall not grant any rights which
are inconsistent with the rights granted to, and obligations of, LICENSEE
hereunder. Any act or omission of a Sublicensee that would be a breach of this
License Agreement if performed by LICENSEE shall be deemed to be a breach by
LICENSEE of this
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License Agreement. Each Sublicense shall make LICENSOR a third party beneficiary
with the right to enforce its provisions against unauthorized disclosure and use
of the Subject Technology, audit the Sublicensee's records to the same scope
provided in Section 6 hereof with respect to LICENSEE's records, and have the
Sublicense and royalties assigned to LICENSOR under Paragraph 10.5 (ii). No such
Sublicense shall contain any provision that. purports to grant any rights beyond
the rights granted to LICENSEE in this License Agreement. LICENSEE shall give
the LICENSOR prompt notification of the identity and address of each Sublicensee
with whom it concludes a Sublicense and shall supply the LICENSOR with a copy of
each such Sublicense.
9. PATENTS AND INFRINGEMENT
9.1 Patent Rights. LICENSOR shall, during the term of this Agreement, pay all
costs and expenses associated with the United States patent identified in
Paragraph 1.1, including maintenance fees. LICENSOR has the option, but not any
obligation, to pay the costs and expenses associated with foreign counterpart
patent applications and patents, and any United States and foreign patents on
improvements made by LICENSOR. In the event that LICENSOR decides not to file
any foreign or improvement patent application, or to discontinue any such patent
application or patent, LICENSOR will provide LICENSEE with reasonable advanced
notice of its intent to do so and an adequate opportunity for LICENSEE to pay
such costs and expenses; provided, however, that LICENSOR shall remain the sole
assignee of all such United States and foreign patents (notwithstanding the fact
that LICENSEE pays such costs and expenses) and all such patents shall remain
subject to any licenses which LICENSOR grants with respect thereto outside of
the Field.
9.2 Marking of Licensed Products. LICENSEE shall xxxx, and cause any
Sublicensees to xxxx with a Patent Number label, Licensed Products sold in
countries where a patent covering such Licensed Product, in whole or in part,
has issued.
9.3 Infringement of Patent Rights by Third Parties. With respect to the Subject
Technology, each Party shall promptly inform the other of any known or suspected
infringement of any patent right, or of any misuse, misappropriation, theft or
breach of confidence of any other proprietary right by any third party. So-long
as, and to the extent that, this Agreement remains in full force and effect,
LICENSEE shall have the right, but not the obligation, to institute (alone or
jointly with any other licensees of the Subject Technology that desire to
participate) an action for infringement, misuse, misappropriation, theft or
breach of confidence of the patent or other proprietary rights against such
third party. If LICENSEE fails to bring such an action or proceeding within a
period of three (3) months after receiving notice or otherwise having knowledge
of such infringement, the LICENSOR shall have the right, but not the obligation,
to prosecute at its own expense, any such claim. Should either the LICENSOR or
LICENSEE commence suit under the provisions of this Paragraph 9.3, and
thereafter elects to abandon the same, it shall give timely notice to the other
Party who may, if it so desires, continue prosecution of such action or
proceeding. All recoveries, whether by judgment, award, decree or settlement,
from infringement or misuse of the Subject Technology shall be apportioned as
follows: if LICENSEE brings the action or proceeding, LICENSEE shall first
recover an amount equal to two (2) times the costs and expenses incurred by
LICENSEE directly related to the prosecution of such action or proceeding and
the remainder shall be divided equally between LICENSEE and
10
the LICENSOR, if LICENSOR brings the action or proceeding, LICENSOR shall be
entitled to the entire amount recovered.
9.4 LICENSOR Consent Required to Settle. LICENSEE shall not settle any action
covered by Paragraph 9.3 without first obtaining the consent of LICENSOR, which
consent will not be unreasonably withheld.
10. TERM AND TERMINATION
10.1 Term. Unless earlier terminated as hereinafter provided, this Agreement
shall extend for the life of U.S. Patent No. 5,539,206 and all other Relevant
Patents that are in full force and effect, and for a period of five (5) years
thereafter. After expiration of such five-year period, LICENSEE shall have a
perpetual, royalty-free license to practice the Subject Technology of the same
scope as LICENSEE had on the date such five-year period expired, and no further
Minimum Annual Royalties or Minimum Royalty Generating Installations shall be
required.
10.2 Termination for Default by LICENSEE. In the event of default or failure by
LICENSEE to perform any of the terms, covenants or provisions of this Agreement,
LICENSEE shall have sixty (60) days after the giving of written notice of such
default by the LICENSOR to correct such default. If any default with respect to
any material obligation is not corrected within the said sixty (60) day period,
the LICENSOR shall have the right, at its option, to cancel and terminate this
Agreement. Failure of the LICENSOR to exercise its right of termination for
nonpayment or late payment of royalties or for any other reason shall not be
deemed to be a waiver of any right the LICENSOR might have, nor shall such
failure preclude the LICENSOR from exercising or enforcing said right upon any
subsequent failure by LICENSEE.
10.3 Termination for Insolvency of LICENSEE. The LICENSOR shall have the right,
at its option, to cancel and terminate this Agreement in the event that LICENSEE
shall: (a) become involved in insolvency, dissolution, bankruptcy or
receivership proceedings affecting the operation of its business or (b) make an
assignment of all or substantially all of its assets for the benefit of
creditors, or in the event that (c) a receiver or trustee is appointed for
LICENSEE, if, after the expiration of ninety (90) days following any of the
events enumerated above, LICENSEE shall have been unable to secure a dismissal,
stay or other suspension of such proceedings.
10.4 Termination by LICENSEE. LICENSEE may terminate this Agreement at any time
giving ninety (90) days prior written notice to LICENSOR.
10.5 LICENSEE Obligations Upon Termination. At the date of any termination of
this Agreement, if pursuant to Paragraph 10.2 upon failure to timely correct any
default by LICENSEE with respect to any material obligation after notice from
LICENSOR, if pursuant to Paragraph 10.3 as of the failure by LICENSEE to secure
a timely dismissal, stay or suspension of the enumerated proceeding and notice
from LICENSOR, or if pursuant to Paragraph 10.4 as of the expiration of ninety
(90) days after notice is given to LICENSOR by LICENSEE (hereinafter the
"Termination Date"), LICENSEE shall:
(i) immediately cease any and all practice of the Subject Technology
and the rights and licenses granted to LICENSEE hereunder, and return
to LICENSOR all tangible
11
copies of the Subject Technology in LICENSEE's possession; provided,
however, that subject to LICENSEE paying and continuing to pay all
running royalties to the LICENSOR in accordance with Paragraph 5.1 when
due, and otherwise complying with the terms of this Agreement, LICENSEE
may (A) sell, lease, license or otherwise place in the Field any
Licensed Products actually in LICENSEE's possession prior to the
Termination Date and (B) continue to collect End-user Revenue on all
such Licensed Products as well as those which LICENSEE leased, licensed
or otherwise placed in the Field prior to the date of termination;
(ii) transfer and assign to LICENSOR, any and all Sublicenses which may
have been granted by LICENSEE pursuant to the terms hereof; and
(iii) comply with the provisions of 7.2, 7.3 and 7.4.
10.6 Specific Performance of Obligations. LICENSEE warrants, represents and
agrees that damages alone are insufficient as a remedy for any breach of
LICENSEE's obligations under Subparagraphs 7.2, 7.3, 7.4 and 10.5 (ii) and
(iii), and in the event of any such breach, LICENSOR shall be entitled to relief
by specific performance. LICENSOR warrants, represents and agrees that damages
alone are insufficient as a remedy for any breach of LICENSOR's obligations
under Subparagraphs 4.3, 7.1 and 8, and in the event of any such breach,
LICENSOR shall be entitled to relief by specific performance.
10.7 Survival of Obligations. No expiration or termination of this Agreement
shall constitute a termination or a waiver of any rights of either Party against
the other Party accruing at or prior to the time of such termination or
expiration. The obligations of LICENSEE under Paragraphs 5, 6, 7, 15 and this
Section 10 shall survive expiration or termination of this Agreement and the
obligations of LICENSOR under Paragraph 15 and this Paragraph 10 shall survive
expiration or termination of this Agreement.
11. ASSIGNABILITY
This Agreement shall be binding upon and shall inure to the benefit of the
LICENSOR and its assigns and successors in interest, and shall be binding upon
and shall inure to the benefit of LICENSEE and the successor by merger or sale
of all or substantially all of its assets or businesses to which this Agreement
pertains, but shall not otherwise be assignable or assigned by LICENSEE without
prior written approval by the LICENSOR being first obtained, which approval
shall not be unreasonably withheld.
12. GOVERNMENTAL COMPLIANCE
LICENSEE shall at all times during the term of this Agreement and for so long as
it shall sell Licensed Products comply and cause its Sublicensees to comply with
all laws that may control the import, export, manufacture, use, sale, marketing,
distribution and other commercial exploitation of Licensed Products or any other
activity undertaken pursuant to this Agreement.
12
13. GOVERNING LAW
This Agreement shall be deemed to be subject to, and have been made under, and
shall be construed and interpreted in accordance with the laws of the State of
Texas, United States of America, without giving effect to the principles of
conflicts of laws. This Agreement is expressly acknowledged to be subject to all
federal laws including but not limited to the Export Administration Act of the
United States of America. No conflict-of-laws rule or law that might refer such
construction and interpretation to the laws of another state, republic, or
country shall be considered.
This Agreement is performable in part in Dallas, Texas and the Parties mutually
agree that personal jurisdiction and venue shall be proper in the state and
federal courts situated in Dallas, Texas and agree that any litigated dispute
will be conducted solely in such courts.
14. ADDRESSES
Any payment, notice or other communication pursuant to this Agreement shall be
sufficiently made or given on the date of mailing if sent to such Party by first
class mail, postage prepaid, addressed to it at its address below or as it shall
designate by written notice given to the other Party:
In the case of the LICENSOR: With a copy to:
X. X. Xxxxxx Xxxxxxx X. Xxxxxxx
Senior Vice President Legal Department
Lockheed Xxxxxx Corporation Lockheed Xxxxxx Corporation
Xxxxxx Systems Xxxxxx Systems
P0Box 650003 Mail Stop PT-28 P0 Box 650003 Mail Stop WT-05
Xxxxxx, XX 00000-0000 Xxxxxx, XX 00000-0000
In the case of LICENSEE:
Xxxx X. Xxxxx
President
OmniCorder Technologies, Inc.
00 Xxxx Xxxx Xxxx
Xxxxx Xxxxx, XX 00000
15. ADDITIONAL PROVISIONS
15.1 Use of Party's Name. LICENSEE agrees that it may not use in any way the
name Lockheed Xxxxxx or any derivation thereof (except in a factual manner to
confirm the existence of this Agreement and the parties respective rights and
obligations hereunder), or any trademark, logotype or symbol associated with the
LICENSOR, without the prior written consent of the LICENSOR. LICENSOR agrees
that it may not use in any way the name OmniCorder or any derivation thereof
(except in a factual manner to confirm the existence of this Agreement and the
parties respective rights and obligations hereunder), or any trademark, logotype
or symbol associated with the LICENSEE without the prior written consent of the
LICENSOR. If a Party
13
consents to the use of its name or xxxx in any advertisement, product circular,
catalog, trade show or trade journal, etc., the other Party shall provide such
Party with the proposed text or copy at least forty five (45) days before
publication, distribution or display and such Party shall have thirty (30) days
after receipt of such text or copy to modify the text, form or content in which
its name or xxxx is used.
15.2 Confidentiality. LICENSEE agrees to maintain the Subject Technology
provided by LICENSOR in strict confidence, and to use the same only in
accordance with this Agreement. Both parties agree to maintain information
related to the other's business in confidence to the extent that the same is
identified as being confidential by the disclosing party at the time of
disclosure and confirmed in writing within thirty (30) days. Such obligation of
confidentiality shall not apply to information which the recipient can
demonstrate: (i) was at the time of disclosure in the public domain; (ii) has
come into the public domain after disclosure through no fault of the recipient
party or in the case of LICENSEE, any Sublicensee of LICENSEE; (iii) was known
to the recipient party prior to disclosure thereof by the disclosing party, as
shown by contemporaneous documentation; (iv) was lawfully disclosed to the
recipient party by a third party which was not under an obligation of confidence
to the disclosing party with respect thereto; (v) which the recipient party can
reasonably demonstrate was independently developed by the recipient party, and
in the case of the LICENSEE, without practice of any of the Subject Technology;
or (vi) which the recipient party shall be compelled to disclose by law or legal
process, provided that such recipient party gave the disclosing party timely
notice and assistance in obtaining a secrecy order covering such disclosure. The
foregoing obligation of confidentiality shall survive termination of this
Agreement.
15.3 Indemnity. Each Party shall notify the other of any claim, lawsuit or other
proceeding related to any Subject Technology or Licensed Product.
15.3.1. LICENSEE agrees that it will defend, indemnify and hold
harmless the LICENSOR. its employees, officers, directors, and agents
and each of them (the
"LICENSOR Indemnified Parties), from and against any and all claims,
causes of action, lawsuits or other proceedings filed or otherwise
instituted against any of the LICENSOR Indemnified Parties related
directly or indirectly to, or arising out of:
15.3.1.1. Any injuries to persons or property which occur on
LICENSEEs or LICENSOR's premises as a result of the negligence
of LICENSEE or its employees, whether or not such claims,
causes of action, lawsuits or other proceedings and the costs
(including attorney's fees) related thereto, result in part
from the negligence of any of the LICENSOR Indemnified
Parties.
15.3.1.2. Any breach of contract, breach of warranty, product
liability, or injury or death to any person or property
resulting from (i) any use or misuse of any of the Subject
Technology or of any Licensed Product made by, for or on
behalf of, or imported, offered for sale, sold or leased by,
LICENSEE or any of its Sublicensees, or by any of its or their
suppliers or customers at any tier including, but not limited
to any research, patient testing, diagnostic interpretation or
treatment, or (ii) any design, process, manufacture, or
practice of any of the
14
Subject Technology, or the making, having made. importing,
using, offering for sale, selling or leasing of any Licensed
Products, by LICENSEE or any of its Sublicensees, or by any of
its or their suppliers or customers at any tier; whether or
not such use or misuse, or such design, process, manufacture,
or practice of the Subject Technology was suggested by
LICENSOR or is licensed hereunder, and whether or not even
though such claims, causes of action, lawsuits or other
proceedings and the costs (including attorney's fees) related
thereto, result in part from the negligence of any of the
LICENSOR Indemnified Parties.
15.3.1.3. Any act by LICENSEE or any of its Sublicensees, or
any of its or their suppliers or customers at any tier,
resulting in the infringement of any U.S. or foreign patent or
other intellectual property right covering or alleged to cover
(i) any material or process used to make or have made any
Licensed Product, or (ii) any modification, improvement or
addition to, combination with, or structure other than, the
EQWIP structure as described and claimed in LICENSOR's U.S.
Patent Number 5,539,206; whether or not such material,
process, modification, improvement, addition, combination or
structure was suggested by LICENSOR or is licensed hereunder.
LICENSEE shall not be required to indemnify LICENSOR for
infringement of any U.S. or foreign patent or other
intellectual property right covering or alleged to cover the
exact EQWIP structure as described and claimed in LICENSOR's
U.S. Patent Number 5,539,206; provided, that, LICENSEE does
not join LICENSOR as a party defendant in any claim, cause of
action, lawsuit or other proceeding filed or otherwise
instituted against LICENSEE except as provided in 15.3.2.
LICENSEE assumes full responsibility for all costs and
expenses related to claims, lawsuits and proceedings for-which
it is obligated to indemnify the LICENSOR indemnified Parties
hereunder, including, but not limited to, the payment of all
damages, settlements reasonable attorneys' fees and costs of
litigation or other defense. LICENSOR shall cooperate with
LICENSEE and provide LICENSEE with any relevant background
information requested by LICENSEE.
15.3.2 LICENSOR shall defend, indemnify and hold harmless the LICENSEE,
its employees, officers, directors, and agents and each of them (the
"LICENSEE Indemnified Parties"), with respect to any claims, causes of
action, lawsuits or other proceedings filed or otherwise instituted
against the LICENSEE Indemnified Parties for:
15.3.2.1. Any injuries to persons or property which occur on
LICENSOR's premises solely as the result of the negligence of
LICENSOR or its employees.
15.3.2.2. Any infringement of a U.S. patent that results from
the making, having made, importing, using, selling or leasing
by LICENSEE of EQWIPs that have the exact structure as
described and claimed in the above referenced U.S. Patent
Number 5,539,206, but shall not include any claims, causes of
action, lawsuits or other proceedings filed or otherwise
instituted against any LICENSEE
15
Indemnified Parties for infringement of any other U.S., or any
foreign, patent or other intellectual property right.
LICENSOR assumes full responsibility for all costs and
expenses related to claims, lawsuits and proceedings for which
it is obligated to indemnify the LICENSEE Indemnified Parties
hereunder, including, but not limited to, the payment of all
damages, settlements reasonable attorneys' fees and costs of
litigation or other defense. LICENSEE shall cooperate with
LICENSOR and provide LICENSOR with any relevant background
information requested by LICENSOR.
If LICENSOR cannot reasonably obtain the right for LICENSEE to
continue to practice any invention covered by a U.S. patent
that LICENSOR is required to defend LICENSEE against under
15.3.2.2 above, or provide LICENSEE with a non-infringing
alternative, then LICENSEE shall cease all further
manufacture, use, sale, lease and import of the infringing
EQWIP structure, and LICENSOR shall have no further obligation
to LICENSEE with respect to any further infringements; this
shall not relieve LICENSOR, however, of any of its obligations
to the LICENSEE Indemnified Parties under 15.3.2.2 resulting
from licensed activities performed by LICENSEE prior to
initiation of the claim, lawsuit or proceeding which LICENSOR
was obligated to defend against in.
15.4 Insurance. LICENSEE shall for so long as LICENSEE manufactures, uses or
sells any Licensed Product(s), maintain in full force and effect policies of (i)
worker's compensation and/or employers' liability insurance within statutory
limits, (ii) general liability insurance (with broad form general liability
endorsement) with limits of not less than five million dollars ($5,000,000) per
occurrence with no annual aggregate and (iii) products liability insurance, with
limits of not less than five million dollars ($5,000,000) per occurrence with no
annual aggregate. Such coverage(s) shall be purchased from a carrier or carriers
deemed acceptable to the LICENSOR with no annual aggregate and shall name the
LICENSOR as an additional insured. Upon request by the LICENSOR, LICENSEE shall
provide to the LICENSOR copies of said policies of insurance
15.5 The LICENSOR's Disclaimers. Neither The LICENSOR, nor any of its officers.
employees, directors, or agents assume any responsibility for the manufacture,
product specifications, sale or use of the Subject Technology or the Licensed
Products which are manufactured by or sold by LICENSEE or any Sublicensee of
LICENSEE.
15.6 Independent Contractors. The Parties hereby acknowledge and agree that each
is an independent contractor and that neither Party shall be considered to be
the agent, representative, master or servant of the other Party for any purpose
whatsoever, and that neither Party has any authority to enter into a contract,
to assume any obligation or to give warranties or representations on behalf of
the other Party. Nothing in this relationship shall be construed to create a
relationship of joint venture, partnership, fiduciary or other similar
relationship between the Parties.
16
15.7 DISCLAIMER OF WARRANTY. THE LICENSOR MAKES NO WARRANTIES OR
REPRESENTATIONS, EXPRESSED OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, WARRANTIES
OF FITNESS OR MERCHANTABILITY, REGARDING OR WITH RESPECT TO THE SUBJECT
TECHNOLOGY OR LICENSED PRODUCTS AND THE LICENSOR MAKES NO WARRANTIES OR
REPRESENTATIONS, EXPRESSED OR IMPLIED, OF THE VALIDITY OF ANY PATENT ISSUED WITH
RESPECT TO THE SUBJECT TECHNOLOGY OR LICENSED PRODUCTS OR OF THE ENFORCEABILITY
OF ANY PATENTS, OR THAT THE SUBJECT TECHNOLOGY OR LICENSED PRODUCTS ARE OR SHALL
BE FREE FROM INFRINGEMENT OF ANY PATENT OR OTHER RIGHTS OF THIRD PARTIES.
15.8 REPRESENTATIONS OF LICENSEE. THE LICENSEE WARRANTS AND REPRESENTS TO THE
LICENSOR THAT IT HAS EXAMINED THE SUBJECT TECHNOLOGY AND ACCEPTS SUCH TECHNOLOGY
AS-IS, THAT LICENSEE HAS DETERMINED THAT THE LICENSED TECHNOLOGY AS-IS MEETS ALL
OF ITS REQUIREMENTS, THAT RECEIPT OF THE SUBJECT TECHNOLOGY FROM LICENSOR GIVES
LICENSEE A HEAD-START AND OPPORTUNITY TO ADD A NEW PRODUCT TO ITS BUSINESS WHICH
IS CONSIDERED OF SIGNIFICANT VALUE TO LICENSEE AT LEAST EQUAL TO THE ROYALTIES
STATED HEREIN WHETHER OR NOT ANY ADDITIONAL PATENT EVER ISSUES THEREUPON OR ANY
PATENT IS HELD NONINFRINGED, OR THE SUBJECT TECHNOLOGY IS OR BECOMES KNOWN TO
OTHERS OR A PART OF THE PUBLIC DOMAIN. ACCORDINGLY, LICENSEE WARRANTS AND
REPRESENTS TO LICENSOR THAT IT WILL NOT SEEK ANY REDUCTION OF SUCH STATED
ROYALTIES IN THE EVENT THAT NO ADDITIONAL PATENT EVER ISSUES ON THE SUBJECT
TECHNOLOGY OR ANY PATENT IS HELD NONINFRINGED, OR THE SUBJECT TECHNOLOGY IS OR
BECOMES KNOWN TO OTHERS OR A PART OF THE PUBLIC DOMAIN. IN ADDITION, LICENSEE
WARRANTS AND REPRESENTS THAT IT WILL NOT EITHER DIRECTLY OR INDIRECTLY SEEK OR
ASSIST OTHERS IN SEEKING TO INVALIDATE THE ABOVE REFERENCED U.S. PATENT NO.
5,539,206; HOWEVER, IN THE EVENT THAT THE VALIDITY OF SUCH ABOVE REFERENCED US.
PATENT IS OTHERWISE CHALLENGED AND IS HELD INVALID, AND NO ADDITIONAL PATENTS
HAVE ISSUED TO LICENSOR COVERING THE SUBJECT TECHNOLOGY OR LICENSED PRODUCTS,
THEN THE ROYALTIES SHALL BE REDUCED IN ACCORDANCE WITH EXHIBIT I. LICENSOR
WARRANTS AND REPRESENTS THAT IT WILL NOT EITHER DIRECTLY OR INDIRECTLY SEEK OR
ASSIST OTHERS IN SEEKING TO INVALIDATE ANY LICENSEE PATENTS UNDER WHICH LICENSOR
HAS A LICENSE PURSUANT TO PARAGRAPH 7.3.
15.9 Non-Waiver. The Parties covenant and agree that if a Party fails or
neglects for any reason to take advantage of any of the terms provided for the
termination of this Agreement or if a Party, having the right to declare this
Agreement terminated, shall fail to do so, any such failure or neglect by such
Party shall not be a waiver or be deemed or be construed to be a waiver of any
cause for the termination of this Agreement subsequently arising, or as a waiver
of any of the terms, covenants or conditions of this Agreement or of the
performance thereof. None of the
17
terms, covenants and conditions of this Agreement may be waived by a Party
except by its written consent.
15.10 Reformation. All Parties hereby agree that neither Party intends to
violate any public policy, statutory or common law, rule, regulation, treaty or
decision of any government agency or executive body thereof of any country or
community or association of countries; that if any word, sentence, paragraph or
clause or combination thereof of this Agreement is found, by a court or
executive body with judicial powers having jurisdiction over this Agreement or
any of its Parties hereto, in a final unappealed order to be in violation of any
such provision in any country or community or association of countries, such
words, sentences, paragraphs or clauses or combination shall be inoperative in
such country or community or association of countries, and the remainder of this
Agreement shall remain binding upon the Parties hereto.
15.11 Force Majeure. No liability hereunder shall result to a Party by reason of
delay in performance caused by force majeure, that is circumstances beyond the
reasonable control of the Party, including, without limitation, acts of God,
fire, flood, war, civil unrest, labor unrest, or shortage of or inability to
obtain material as equipment.
15.12 Entire Agreement. The terms and conditions herein constitute the entire
agreement between the Parties and shall supersede all previous agreements,
either oral or written, between the Parties hereto with respect to the subject
matter hereof. No agreement of understanding bearing on this Agreement shall be
binding upon either Party hereto unless it shall be in writing and signed by the
duly authorized officer or representative of each of the Parties and shall
expressly refer to this Agreement.
IN WITNESS WHEREOF, the Parties hereto have executed and delivered this
Agreement in multiple originals by their duly authorized officers and
representatives on the respective dates shown below, but effective as of the
Effective Date.
LICENSOR LICENSEE
LOCKHEED XXXXXX CORPORATION OMNICORDER TECHNOLOGIES, INC.
XXXXXX SYSTEMS
BY: BY:
-------------------------------- ----------------------------------
TITLE: TITLE:
----------------------------- -------------------------------
DATE: DATE:
----------------------------- --------------------------------
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