Z CORPORATION NONEXCLUSIVE PATENT LICENSE AND SUBLICENSE AGREEMENT WITH VOXELJET
Exhibit 10.4
Z CORPORATION
NONEXCLUSIVE PATENT LICENSE AND SUBLICENSE AGREEMENT
WITH VOXELJET
This Agreement, effective as of the date set forth above the signatures of the parties below (the “Effective Date”), is between Z Corporation (“Z Corp.”), a Massachusetts corporation, with a principal office at 00 Xxxxx Xxxxxx, Xxxxxxxxxx, XX 00000 and Voxeljet Technology GmbH (“Voxeljet”), a corporation registered in Amtsgericht Augsburg (#HRB 17081), with a principal place of business at Am Xxxxxxxxx Xxxx 00, 00000 Xxxxxxxx, Xxxxxxx.
WHEREAS, The Massachusetts Institute of Technology (M.I.T.) and Z Corp. have previously entered into a Patent License Agreement dated as of December 21, 1994, as amended to date (the “M.I.T. License”), pursuant to which M.I.T. granted to Z Corp. a license to its Three Dimensional Printing patent portfolio (the “M.I.T. Patents”, listed in Appendix A);
NOW, THEREFORE, Z Corp. and Voxeljet hereby agree as follows:
1. Definitions.
1.1 “Field” shall means the manufacture, sale and operation of three dimensional printing equipment solely for the fabrication of plastic parts [***].
1.2 “Licensed Product” shall mean any product or part thereof that:
(a) absent the license or sublicense granted hereunder, would infringe one or more claims of the Licensed Patents; or
(b) is manufactured by using a Licensed Process or that, when used, practices a Licensed Process.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
1.3 “Licensed Process” shall mean any process that, absent the license or sublicense granted hereunder, would infringe one or more claims of the Licensed Patents or which uses a Licensed Product.
1.4 “Licensed Patents” shall mean those patents listed in Appendix A to this Agreement together with
(a) any divisionals, continuations, continuation-in-part applications, and continued prosecution applications (and their relevant international equivalents) of the Licensed Patents to the extent the claims of such applications are directed to subject matter specifically described in the resulting patents; and
(b) any patents resulting from reissues, reexaminations, or extensions (and their relevant international equivalents) of the patents described in (a) above.
1.5 “Net Sales” shall mean the total amount of all consideration received by Voxeljet from unaffiliated third parties in arm’s length transactions (whether such transaction takes the form of a sale, lease or other use) for Licensed Products and Licensed Processes, less the following:
(a) discounts allowed in amounts customary in the trade for quantity purchases, cash payments, prompt payments, wholesalers and distributors;
(b) sales, use and excise taxes, tariffs and/or duties directly imposed on any sale of a Licensed Product or Licensed Process;
(c) outbound transportation prepaid or allowed; and
(d) amounts allowed or credited on returns.
1.6 “Net Royalty Sales” shall mean Net Sales for which Voxeljet pays the royalty as a percentage [***], as described in Section 4.2 (a)-first paragraph, but shall not include Net Sales for which Voxeljet pays the minimum fixed royalty [***] as described in Sections 4.2 (a)-last paragraph, (b) and (c).
1.7 “Term” shall mean the term of this Agreement, which shall commence on the Effective Date and shall remain in effect until the earlier of (i) as to the M.I.T. Patents, the termination of the license to the M.I.T. Patents by Z Corporation or (ii) as to all Licensed Patents, the expiration or abandonment of all issued patents and filed patent applications within the Licensed Patents, unless earlier terminated in accordance with the provisions of this Agreement.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Licensed Products in the Field and to develop and perform Licensed Processes in the Field. Voxeljet shall not have the right to sublicense the Licensed Patents.
3. Voxeljet Diligence Obligations.
3.1 Voxeljet agrees to demonstrate reasonable efforts to commercialize the technology represented by the Licensed Patents in the Field.
3.2 Voxeljet agrees to insert the following use restriction language verbatim in all of its Quotations, Acceptance of Purchase Orders, and all other equivalent documentation in connection with any sale or lease of the equipment by Voxeljet to its customers:
The Equipment (including any use of the Equipment), is subject to limitations imposed under a Nonexclusive Patent Sublicense Agreement between Voxeljet and Z Corporation, and is to be used solely for the fabrication of plastic parts [***]. Other uses of the Equipment are strictly prohibited and may expose the user to liability for patent infringement.”
For the rights, privileges and license and sublicense granted hereby, Voxeljet shall pay the following amounts to Z Corp. in the manner hereinafter provided until the earlier of the expiration or termination of the last of the Licensed Patents or until the end of the Term:
4.1 Initial License Fee. Voxeljet shall pay to Z Corp. a one-time license/sublicense fee of [***], which shall be paid as follows: [***] of the Effective Date; [***] of the Effective Date; [***] of the Effective Date; and [***] of the Effective Date.
4.2 Royalties. Voxeljet shall pay to Z Corp. a running royalty in an amount equal to
(a) [***]
Subject in each instance to a minimum royalty of [***] for each 3D printer that is a Licensed Product. For sales made after [***], such minimum royalty shall be [***] for each 3D printer that is a Licensed Product.
(b) If Voxeljet uses a 3D printer that is a Licensed Product, other than a 3D printer purchased from Z Corp., for making parts for internal use or for sale to third parties, Voxeljet shall pay to Z Corp. a royalty of [***], which amount will be credited against the royalty due under subsection 4.2(a) above if the Licensed Product is subsequently sold by Voxeljet. For a 3D printer that is a
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Licensed Product, other than a 3D printer purchased from Z Corp., put into use after [***] for making parts for internal use or for sale to third parties, such royalty shall instead be [***]. No further royalty shall be payable by Voxeljet to Z Corp. upon use and sale of parts made by a 3D printer that is a Licensed Product beyond the royalty described above.
(c) If Voxeljet purchases a three dimensional printer that is a Licensed Product or related equipment from Z Corp. and modifies it for sale in the Field, Voxeljet shall pay to Z Corp., in addition to the purchase price for the equipment, a royalty of [***]. No further royalty shall be payable by Voxeljet to Z Corp. upon any subsequent sale of the equipment or sale of products made from the equipment to a third party. Z Corp. shall not be obligated to provide any warranty or service agreement with respect to any three dimensional printer or related equipment, parts or accessories which are purchased, modified or re-sold by Voxeljet.
5.1 Voxeljet shall keep full, true and accurate books of account containing all particulars that may be necessary for the purpose of showing the amounts payable to Z Corp. under this Agreement. Said books of account shall be kept at Voxeljet’s principal place of business. Said books of account and the supporting data shall be open at all reasonable times for [***] following the end of the calendar year to which they pertain to the confidential inspection, upon at least one week written notice, by a designated representative of Z Corp. for the purpose of verifying Voxeljet’s royalty statement or compliance in other respects with this Agreement. Should any such inspection result in the discovery of a greater than Ten Percent (10%) discrepancy to Z Corp.’s detriment, as verified by a designated independent auditor of Z Corp., Voxeljet shall be required to pay the full cost of such inspection. Z Corp. shall also have the right, upon at least 48 hours written notice, during normal business hours to inspect the operations and records of Voxeljet to ensure that it remains in compliance with the provisions of this Agreement.
5.2 Voxeljet shall deliver to Z Corp. no later than thirty (30) days following the end of each calendar quarter during the Term, commencing with the calendar quarter ending September 30, 2004, true and accurate reports showing all Net Sales that occurred during the quarter in question. The reports shall include at a minimum:
(a) the number of Licensed Products manufactured, leased or sold by Voxeljet during such quarter, as well as the customer name, location and intended use;
(b) the total Net Sales, Net Royalty Sales and Cumulative Net Royalty Sales, during such quarter, noting the applicable deductions provided in Section 1.5;
(c) running royalties due under Sections 4.2 (a) and (b); and
(d) total royalties due under this Agreement with respect to such calendar quarter.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
5.3 With each such report, Voxeljet shall pay to Z Corp. the royalties due and payable under this Agreement. If no royalties shall be due, Voxeljet shall so report. Any royalty payable under Section 4.2(c) shall be payable at the time such three dimensional printer or other equipment is purchased from Z Corp.
5.4 All payments under this Agreement should be made payable to “Z Corporation” and sent to the address identified in Section 14.1. Each payment should reference this Agreement and identify the obligation under this Agreement that the payment satisfies. All payments due under this Agreement shall be payable in United States dollars. Any payments by Voxeljet that are not paid on or before the date such payments are due under this Agreement shall bear interest until payment is made, to the extent permitted by law, at the rate of two percentage points above the Prime Rate of interest as reported in the Wall Street Journal on the date payment is due. The payment of such interest shall not prevent Z Corp. from pursuing any other remedy it may have as the result of any late payment made by Voxeljet.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
8. Indemnification and Insurance.
8.1 Indemnification.
(a) Indemnity. Voxeljet shall indemnify, defend, and hold harmless M.I.T. and Z Corp. and their trustees, directors, officers, faculty, students, employees, and agents and their respective successors, heirs and assigns (the “Indemnitees”), against any liability, damage, loss, or expense (including reasonable attorneys fees and expenses) incurred by or imposed upon any of the Indemnitees in connection with any claims, suits, actions, demands or judgments arising out of any theory of liability (including without limitation actions in the form of tort, warranty, or strict liability and regardless of whether such action has any factual basis) concerning any product, process, or service that is made, used, sold, imported, or performed pursuant to any right or license or sublicense granted under this Agreement.
(b) Procedures. The Indemnitees agree to provide Voxeljet with prompt written notice of any claim, suit, action, demand, or judgment for which indemnification is sought under this Agreement. Voxeljet agrees, at its own expense, to provide attorneys reasonably acceptable to M.I.T. and Z Corp. to defend against any such claim. The Indemnitees shall cooperate fully with Voxeljet in such defense and will permit Voxeljet to conduct and control such defense and the disposition of such claim, suit, or action (including all decisions relative to litigation, appeal, and settlement); provided, however, that any Indemnitee shall have the right to retain its own counsel, at the expense of Voxeljet, if representation of such Indemnitee by the counsel retained by Voxeljet would be inappropriate because of actual or potential differences in the interests of such Indemnitee and any other party represented by such counsel. Voxeljet agrees to keep M.I.T. and Z Corp. informed of the progress in the defense and disposition of such claim and to consult with M.I.T. and Z Corp. with regard to any proposed settlement.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
sell a product that was a Licensed Product under this Agreement or (ii) to perform a service that was a Licensed Process under this Agreement, and thereafter for a period of [***].
9. No Representations or Warranties.
NEITHER M.I.T. NOR Z CORP. MAKES ANY REPRESENTATIONS OR WARRANTIES OF ANY KIND CONCERNING THE PATENT RIGHTS, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, NONINFRINGEMENT, VALIDITY OF PATENT RIGHTS CLAIMS, WHETHER ISSUED OR PENDING, AND THE ABSENCE OF LATENT OR OTHER DEFECTS, WHETHER OR NOT DISCOVERABLE. Specifically, and not to limit the foregoing, M.I.T. and Z Corp. make no warranty or representation (i) regarding the validity or scope of the M.I.T. Patents, and (ii) that the exploitation of the M.I.T. Patents or any Licensed Product or Licensed Process will not infringe any patents or other intellectual property rights.
IN NO EVENT SHALL M.I.T., Z CORP., OR VOXELJET (EXCEPT AS PROVIDED IN SECTION 8.1), THEIR TRUSTEES, DIRECTORS, OFFICERS, EMPLOYEES AND AFFILIATES, BE LIABLE FOR INCIDENTAL OR CONSEQUENTIAL DAMAGES OF ANY KIND, INCLUDING ECONOMIC DAMAGES OR INJURY TO PROPERTY AND LOST PROFITS, REGARDLESS OF WHETHER M.I.T., Z CORP., OR VOXELJET SHALL BE ADVISED, SHALL HAVE OTHER REASON TO KNOW, OR IN FACT SHALL KNOW OF THE POSSIBILITY OF THE FOREGOING.
10. Assignment.
This Agreement is personal to Voxeljet and no rights or obligations may be assigned or otherwise transferred by Voxeljet without the prior written consent of Z Corp., which consent may be denied in Z Corp.’s absolute discretion. Z Corp. acknowledges that Voxeljet may wish to assign this Agreement in the event of an “Acquisition” (as such term is defined below) of Voxeljet. Z Corp. has no conceptual problem with such assignment as long as it is not counter to Z Corp.’s own business interests. Because it is impossible to foresee every possible situation, Z Corp. shall have the right to terminate this Agreement by written notice to Voxeljet upon any Acquisition of Voxeljet, but, before taking such action, agrees to consider Voxeljet’s interests as well as its own in making the decision whether to terminate this Agreement. Ultimately, Z Corp. shall make the decision based on its own business interests. For purposes of this Section 10, the term “Acquisition” means (a) a sale, merger or consolidation in a single transaction or series of related transactions in which securities possessing more than 50% of the total combined voting power of Voxeljet’s outstanding securities are transferred to a person or persons different from the persons who held those securities immediately prior to such transaction, or (b) the sale, transfer, or other disposition of all or substantially all of Voxeljet’s assets to one or more persons (other than any wholly owned subsidiary of Voxeljet) in a single transaction or series of related transactions.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
11. General Compliance with Laws.
11.3 Non-Use of Z Corp. or M.I.T. Name. Voxeljet shall not use the name of “Z Corporation”, “Massachusetts Institute of Technology,” “Lincoln Laboratory” or any variation, adaptation, or abbreviation thereof, or of any of their respective officers, directors, trustees, faculty, students, employees, or agents, or any trademark owned by Z Corp. or M.I.T., or any terms of this Agreement in any promotional material or other public announcement or disclosure without the prior written consent of Z Corp. and M.I.T. The foregoing notwithstanding, without the consent of Z Corp. and M.I.T., Voxeljet may state that it is nonexclusively licensed or sublicensed by Z Corp. under one or more of the patents and/or patent applications comprising the M.I.T. or Z Corporation Patents.
12. Termination.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
(a) Nonpayment. In the event Voxeljet fails to pay any amounts due and payable to Z Corp. hereunder, and fails to make such payments within thirty (30) days after receiving written notice of such failure, in addition to all other rights and remedies available to Z Corp. under applicable law or this Agreement, Z Corp. may terminate this Agreement immediately upon written notice to Voxeljet.
(b) Pre-termination Obligations. In no event shall termination of this Agreement release Voxeljet from the obligation to pay any amounts that became due under this Agreement on or before the effective date of termination.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
13.3 Dispute Resolution Procedures.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Sections 12.3(a) are pending. The parties shall cooperate in taking any actions necessary to achieve this result.
14. Miscellaneous.
If to Z Corp: |
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Z Corporation |
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00 Xxxxx Xxxxxx |
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Xxxxxxxxxx, XX 00000 |
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Attention: CEO |
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Tel: (000) 000-0000 |
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Fax: (000) 000-0000 |
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If to M.I.T.: |
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Technology Licensing Office, Room NE25-230 |
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Massachusetts Institute of Technology |
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00 Xxxxxxxxxxxxx Xxxxxx |
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Xxxxxxxxx, XX 00000-0000 |
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Attention: Director |
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Tel: (000) 000-0000 |
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Fax: (000) 000-0000 |
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If to Voxeljet: |
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Voxeljet Technology GmbH |
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Am Xxxxxxxxx Xxxx 00 |
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00000 Xxxxxxxx |
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Xxxxxxx |
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Attention: CEO |
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Tel: x00 (0) 000 00 00 000 |
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Fax: x00 (0) 000 00 00 000 |
All notices under this Agreement shall be deemed effective upon receipt. A party may change its contact information immediately upon written notice to the other party in the manner provided in this Section.
14.2 Governing Law; Consent to Jurisdiction. This Agreement and all disputes arising out of or related to this Agreement, or the performance, enforcement, breach or termination hereof, and any remedies relating thereto, shall be construed, governed, interpreted and applied in accordance with the laws of the Commonwealth of Massachusetts, U.S.A., without regard to conflict of laws principles, except that questions affecting the construction and effect of any patent shall be determined by the law of the country in which the patent shall have been granted. Any dispute which may arise out of or in connection with this Agreement shall be adjudicated
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
before a court located in Boston, Massachusetts and the parties hereby submit to the exclusive jurisdiction of the courts of the Commonwealth of Massachusetts located in Boston, Massachusetts and of the federal courts in Boston, Massachusetts with respect to any action or legal proceeding commenced by any party, and irrevocably waive any objection they now or hereafter may have respecting the venue of any such action or proceeding brought in such a court or respecting the fact that such court is an inconvenient forum, relating to or arising out of this Agreement, and the undersigned each consents to the service of process in any such action or legal proceeding by means of express courier and facsimile transfer, return receipt requested, in care of the address set forth below or such other address as each shall furnish in writing to the other parties hereto. In the event any such action is brought, whether at law or in equity, then the prevailing party shall be paid its reasonable attorney’s fees, expenses and disbursements arising out of such action.
The EFFECTIVE DATE of this Agreement is August 16, 2004.
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Z Corporation |
Voxeljet Technology GmbH | |||
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By: |
/s/ Xxxxxx Xxxxxxxxxxx |
By: |
/s/ Xxxx Xxxxxx | |
Name: |
Xxxxxx Xxxxxxxxxxx |
Name: |
Xxxx Xxxxxx | |
Title: |
CEO |
Title: |
CEO | |
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Approved as of the Effective Date: |
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The Massachusetts Institute of Technology |
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By: |
/s/ Xxxx X. Xxxxxx, Xx. |
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Name:. |
Xxxx X. Xxxxxx, Xx |
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Title: |
Associate Director |
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Technology Licensing Office |
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[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
Appendix A
Licensed Patents
M.I.T. Patents
1) X.X.X. Xxxx Xx. 0000
Xxxxxx Xxxxxx Xx. 0000000, Issued November 22, 1994
European Patent Convention Patent No. 0431924, Issued January 31, 0000
Xxxxxx Patent No. 0431924, Issued January 31, 0000
Xxxxxxx Patent No. P69025147.5, Issued January 31, 0000
Xxxxx Patent No. 0431924, Issued January 31, 0000
Xxxxx Patent No. 0000000, Issued December 12, 0000
Xxxxxx Patent Xx. 0000000, Xxxxxx Xxxxxxx 00, 0000
Xxxxxx Xxxxxxx Patent No. 0431924, Issued January 31, 0000
Xxxxxx Xxxxxx xx Xxxxxxx Xxxxxx Xx, 0000000, Issued April 20, 0000
Xxxxxx Xxxxxx xx Xxxxxxx Patent No. 5340656, Issued August 23, 1994
“Three-Dimensional Printing Techniques”
by Xxxxxxx X. Xxxx, Xxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxx X. Xxxxxxxx
2) X.X.X. Xxxx Xx. 0000
Xxxxxx Xxxxxx Xx. 0000000, Issued August 14, 2001
European Patent Convention Patent No. 0644809, Issued July 25, 2001
European Patent Convention Serial No. 00204516.9, Filed June 4, 0000
Xxxxxx Patent No. 0644809, Issued July 25, 0000
Xxxxxxx Patent No. 0644809, Issued July 25, 0000
Xxxxx Patent No. 0000000, Issued December 11, 0000
Xxxxxx Xxxxxxx Patent No. 0644809, Issued July 25, 0000
Xxxxxx Xxxxxx xx Xxxxxxx Patent No. 5387380, Issued February 7, 1995
“Three-Dimensional Printing Techniques”
by Xxxxx Xxxxxxxxx, Xxxxx X. Xxxxx, Xxxxxxx X. Xxxx, Xxxxx Xxxxxxxx, Tailin Fan, Xxxxxx Xxxxxxx, Xxxx X. Xxxxxx, Sang-Xxxx X. Xxx, Xxxxxx X. Xxxxxxxx, Xxxxxxx X. Xxxxx and Xxxxxx Xxxxxx
Z Corporation Patents
1) US 5,902,441
“Method of Three-Dimensional Printing”
2) US 6,007,318
“Method and Apparatus for Prototyping a Three-Dimensional Object”
3) US 6,416,850
“Three-Dimensional Printing Materials System”
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.
4) WO 2001/34371 (Z Corp. Reference: “Materials 8”)
“Material System and Methods of Three-Dimensional Printing”
5) WO 2001/78969 (Z Corp. Reference: “Materials 10”)
“Compositions for Three-Dimensional Printing of Solid Objects”
US 2001/0050031
“Compositions for Three-Dimensional Printing of Solid Objects”
[***] Certain information in this document has been omitted and filed separately with the Securities and Exchange Commission. Confidential treatment has been requested with respect to the omitted portions.