Amendment No. 1 to the Technology License Agreement
Pursuant to Section 9.4 ("Amendments and Waivers") of the Technology
License Agreement [between the Company and Imatron, Inc. dated September 11,
1990], the parties agree to amend the Technology License Agreement as
follows:
In Section 1.4 the following changes are made: Subparagraph (ii) is
deleted and replaced with the following: "(ii) detection equipment for
all applications related to locating weapons, explosives, currency,
narcotics or other similar items in checked baggage, carry-on baggage, mail,
freight, parcels and other containers or other similar applications; and
(iii) ***.
Add a new Section 1.9: "Acquiror" means any party or entity who, after
the Effective Date of this Agreement, directly or indirectly acquires or
obtains control of substantially all of the assets or capital securities of
a party, whether by merger, acquisition, or otherwise.
In Section 2.1, the following changes are made: (a) delete the word
"perpetual" in line 2. and (b) at the end of the first paragraph in Section
2.1 add "Notwithstanding anything herein to the contrary, nothing in this
Agreement shall be construed to grant to Licensee a license to the
Confidential Information or Patents of an Acquiror of Imatron or any
Affiliate of such Acquirior other than those held by Imatron or an Affiliate
of Imatron immediately prior to the effective date of the transaction by
which that party becomes an Acquiror."
In Section 2.2 the following changes are made: (a) delete the word
"perpetual" in line 2. and (b)at the end of the section add "Notwithstanding
anything herein to the contrary, nothing in this Agreement shall be
construed to grant to Imatron a license to the Confidential Information or
Patents of an Acquiror of Licensee or any Affiliate of such Acquirior other
than those held by Licensee or an Affiliate of Licensee immediately prior to
the effective date of the transaction by which that party becomes an
Acquiror."
In Section 6.1, the following changes are made: (a) after the words
"written sublicenses" and before the words "under the technology rights" in
the third line of the section, insert the following phrase (including the
punctuation): ", either royalty bearing or royalty-free, without the right
to sublicense further," and (b) delete the phrase "and shall require that
further sublicenses also contain such provisions" in the last two lines of
the section.
In Section 6.2, the following changes are made: (a) delete the phrase
"or by any sublicensee of the Sublicensing Party" in the section's fifth
line and (b) delete the phrase "and shall require that further sublicenses
also contain such provisions" in lines thirteen and fourteen.
In Section 6.3, the following change is made: delete the phrase "or by
any sublicensee of the Sublicensing Party" in the second and third lines of
the section.
Add a new Section 6.4: "Implied Sublicenses. Licensee may sell, lease
or give away a product that embodies the Confidential Information or the
Imatron Patents, and Imatron may sell, lease or give away a product that
embodies the Licensee Confidential Information or the Licensee Patents,
without granting a sublicense under Sections 6.1, 6.2 and 6.3 of this
Agreement; provided that the terms of such a sale, lease or gift limit the
use of any technology licensed under this Agreement solely to the operation
of the purchased product."
In Section 8.1 the following changes are made: Delete "Termination by
Mutual Agreement. This Agreement may be terminated at any time by and in
accordance with" and replace with "Termination. This Agreement shall
terminate ten years after the execution of the Joint Research Effort Between
InVision Technologies, Inc. and Imatron, Inc. Unless sooner terminated
by...."
In Section 8.3 the following changes are made: at the end of the
section add: "The termination of this Agreement shall not terminate any
sublicense implied by a product sale under Section 6.4 of this Agreement."
In Section 9.3, the following change is made: after the words "all of
its business or assets" in lines eight and nine insert the following phrase
(including punctuation): ", in which event no intellectual property of such
succeeding party other than the intellectual property acquired by such
succession shall be subject to the rights and licenses granted herein".
Signed and effective on July 12, 1999 by the parties named below.
InVision Technologies, Inc. Imatron, Inc.
By: /s/ Xxxxxx Xxxxxxxx By: /s/ S. Xxxxx Xxxxx
------------------- ----------------------
Xxxxxx Xxxxxxxx S. Xxxxx Xxxxx
President and Chief President and Chief
Executive Officer Executive Officer
***Application for confidential treatment filed with the Freedom of
Information Act Office of the Securities and Exchange Commission
simultaneously with the filing of this redacted document.
