INTELLECTUAL PROPERTY RIGHTS
LICENSE AGREEMENT
SURGX CORPORATION
(LICENSOR)
XXXXXX-XXXXXX COMPANY
(LICENSEE)
INTELLECTUAL PROPERTY RIGHTS LICENSE AGREEMENT
THIS AGREEMENT, effective as of August ____, 1997 (the "Effective
Date"), is by and between SURGX CORPORATION, a Delaware corporation, having its
principal office at 0000 Xxxxxx Xx., Xxxxxxx, Xxxxxxxxxx 00000 (hereinafter
"Licensor") and XXXXXX-XXXXXX COMPANY, a Delaware corporation, having a
principal office at 000 Xxx Xxxxx Xxxx, Xxxxxxxxxx, Xxxxxxxx 00000 (hereinafter
"Licensee").
WHEREAS, Licensor has been engaged in the development of products, with
respect to which it is possessed of certain proprietary rights and engineering
production knowledge essential to or helpful in the manufacture of the Licensed
Products as defined herein, and owns, has or may have in the future the right to
grant licenses with respect to certain inventions, copyrights, and other
industrial and intellectual property, technical and production data, and other
secret and confidential information relating to the manufacture of the Licensed
Products;
WHEREAS, Licensee desires to obtain from Licensor certain patent rights,
technical assistance, technical and production know-how, and services of
technical representatives, including drawings, designs, and specifications,
formulae, data, information and engineering assistance relating to Licensed
Products, to the extent the same is possessed by Licensor, and Licensor has the
right to grant the same, to assist Licensee in manufacturing and selling the
Licensed Products as hereinafter set forth;
WHEREAS, Licensor is willing to provide Licensee with the technical
assistance, technical and production know-how, and services of technical
representatives, in connection with the manufacture and sale of Licensed
Products hereunder, to the extent and upon the terms and conditions hereinafter
set forth;
WHEREAS, Licensor is willing to direct its technical competence to
certain projects to advance certain technologies to hopefully urge the toward
commercialization; and Licensee is desirous of having that occur; and
WHEREAS, the parties wish to expand on some of the understandings
reached in their July 1996 Intellectual Property Rights License Agreement and
delete or add more appropriate terms and conditions thereto;
NOW, THEREFORE, in consideration of the premises and the mutual
covenants hereinafter contained, Licensor and Licensee covenant and agree as
follows:
1. DEFINED TERMS.
1.1 "AFFILIATE" means any person controlling, controlled by (either
directly or indirectly) or under common control with Licensee or Licensor as
applicable.
1.2 "AGREEMENT" means this Intellectual Property Rights License
Agreement between Licensee and Licensor and all attachments, exhibits,
schedules, lists or other documents expressly called out herein.
1.
1.3 "CONFIDENTIAL INFORMATION" has the meaning set forth in Section
12.1.
1.4 "DISCLOSING PARTY" shall mean a Party or an Affiliate thereof
that discloses Confidential Information to the other Party or an Affiliate
thereof.
1.5 "GROSS PROFIT" means under United States generally accepted
accounting principles: (i) the aggregate sum of revenue recognized by Licensee,
its Affiliates and any sublicensee from sales or other dispositions of Licensed
Products to unaffiliated third parties net of freight out, returns and credits
allowed and taken ("Net Sales"); (ii) minus Licensee's cost of sales at standard
costs including direct and indirect labor and associated fringe benefits, scrap,
perishable tooling, supplies and maintenance on machinery and equipment (only
costs associated with the manufacture of Licensed Products will be included in
standard costs); (iii) plus or minus, as applicable, operating variances from
standard costs of sales; (iv) minus semi-variable costs equal to 5% of Net Sales
for selling commissions and distribution costs; (v) minus amortization
associated with incremental machinery and equipment used in the manufacture of
the Licensed Products (using a 10 year useful life); and (vi) minus amortization
associated with development costs incurred by Licensor and reimbursed by
Licensee as described in Section 3.3 hereof using a 5-year amortization period.
1.6 "IMPROVEMENTS" shall mean those supplements, changes, revisions,
updates, advancements, corrections, and modifications to the Technical
Information or Licensed Intellectual Property Rights including developments in
Microgap technology and any manufacturing process improvements made during the
term of this Agreement which are necessary or useful for the manufacture, use or
sale of Licensed Products.
1.7 "LICENSEE COMPONENTS" means the materials, components and
processes of Licensee which are not covered by the Licensed Intellectual
Property Rights which, in combination with the SurgeTape Material and SurgeTape,
form the Licensed Products.
1.8 "LICENSED INTELLECTUAL PROPERTY RIGHTS" shall mean, solely with
respect to Licensed Products, Licensor's interest in any patents, patent
applications, inventions (including but not limited to the inventions and patent
applications listed on Attachment 1.5), the "SurgX" trademark, the SurgeTape
trademark, Technical Information and copyrights owned, controlled, conceived,
developed and applied for or obtained by Licensor at any time before or during
the term of this Agreement to the extent such rights are necessary or essential
for the manufacture, use and sale of the Licensed Products. Wherever used in
this Agreement, Licensed Intellectual Property Rights includes any such rights
relating to Improvements of Licensor.
1.9 "LICENSED PRODUCTS" means discrete components and connector
products described on Attachment 1.6 which utilize the Licensed Intellectual
Property Rights and incorporate either the SurgeTape Material or SurgeTape.
1.10 "SURGETAPE MATERIAL" means a polymeric provided in a solvated
liquid form that can be used to provide electrical overstress (EOS) or
electrostatic discharge (ESD) protection for integrated circuits (IC's). The
SurgeTape Material can be applied between signal lines and the ground plane of
an electrical board assembly, a connector and other applications where it can be
positioned between signal lines and ground. The SurgeTape Material has a high
impedance, and
2.
low leakage state during normal circuit operation. During an EOS or an ESD
event, the SurgeTape Material has a low impedance state that shunts the
offending charge to the ground plane. The capacitance of the devices using
SurgeTape Material is typically less than 1 picofarad. The mechanical
flexibility and the semiconducting characteristics of the SurgeTape Material
allow for a wide variety of packaging concepts, including arrays in which a
common ground is used with multiple signal lines. Specifically, the SurgeTape
Material is covered by the patent applications listed on Attachment 1.5.
1.11 The SurgeTape Material shall specifically exclude ICs and
applications therefor and other SurgX products, such as, without limitation, the
family of products identified by Licensor as SurgX Epoxy Packages or custom
SurgX applications such as a layer on a printed circuit board and novel
packaging, including hybrid designs and multichip modules.
1.12 "SURGETAPE" means a flexible film of proprietary polymer-based
material that can be applied between signal lines and a ground plane that has a
high impedance and low leakage state during normal circuit operation. During an
electrical overstress (EOS) or electrostatic discharge (ESD) event, the polymer
has a low impedance state that shunts the offending charge to the ground plane.
Specifically, SurgeTape is covered by the patent applications listed on
Attachment 1.5.1, if any.
1.13 "ICS" means an interconnected array of active and passive
elements integrated with a single semiconductor substrate or deposited or
deposited on the substrate by a continuous series of compatible processes, and
capable of performing at least one complete electronic circuit function.
Abbreviated.
1.14 "MICROGAP" means properties of and technics for forming gaps in a
substrate which may be filled with SurgeTape Material to provide voltage surge
suppression properties.
1.15 "MINIMUM ANNUAL ROYALTIES" has the meaning set forth in Section
5.2.
1.16 "PARTIES" shall mean XxXxxx-Xxxxxx Company and SurgX Corporation.
1.17 "RECEIVING PARTY" has the meaning set forth in Section 12.2.
1.18 "ROYALTY YEAR" means a period of twelve (12) months used to
measure the royalties payable to Licensor. The "First Royalty Year" is the
twelve (12) month period which commenced on ____________________ _____, 1997,
the "Second Royalty Year" is the twelve (12) month period which immediately
follows the "First Royalty Year", and so on for subsequent Royalty Years.
1.19 "TECHNICAL ASSISTANCE" means providing the appropriate Licensor
personnel to assist personnel of Licensee in becoming trained in the use of
Technical Information to be delivered or provided hereunder to the extent such
Technical Information is necessary or essential for the manufacture, use or sale
of Licensed Products and Improvements thereto.
1.20 "TECHNICAL INFORMATION" means trade secrets, know-how, drawings,
designs, specifications and industrial, commercial and scientific information
controlled by Licensor and
3.
disclosed to Licensee under this Agreement. Whenever used in this Agreement,
Technical Information includes any information relating to Improvements of
Licensor.
1.21 "TERRITORY" means worldwide.
2. GRANT OF LICENSE.
2.1 Licensor grants to Licensee an exclusive license with respect to
SurgeTape Material and SurgeTape, both within the Territory, and both to use (i)
the Licensed Intellectual Property Rights; and (ii) the Technical Information,
solely to manufacture, use, and sell these as Licensed Products.
2.1.1 Licensed Products shall include application of SurgeTape
to ICs if Licensor grants a license to an unaffiliated third party for
application of SurgeTape to ICs.
2.2 Subject to Section 5.2 hereof, the exclusive license granted to
Licensee under Section 2.1 of this Agreement shall be for a period of twenty
(20) years commencing on the first day of the month in which Licensee makes its
initial sale of a Licensed Product. Thereafter, the exclusive license granted to
Licensee hereunder shall continue on a nonexclusive basis. Notwithstanding the
provisions of Section 2.1, Licensee will permit Licensor to grant a
non-exclusive license to Iriso Electronics Company, Ltd., a Japanese corporation
("lriso") allowing Iriso to manufacture, use and sell Licensed Products,
excluding ICs, in Japan incorporating or utilizing the Licensed Intellectual
Property Rights to utilize the Technical Information, provided that Iriso shall
have no right to sell any Licensed Products (a) outside of Japan or (b) to a
distributor that would sell any Licensed Products outside of Japan. However,
Licensor may grant Iriso the right to sell Licensed Products to an original
equipment manufacturer or to an added value reseller in Japan that may
incorporate such Licensed Products into goods that are sold outside of Japan.
2.3 Licensee is not authorized to grant a sublicense to any third
party without Licensor's prior written consent; PROVIDED, HOWEVER, that Licensee
may grant a sublicense to any of its Affiliates without Licensor's prior written
consent. No Affiliate or sublicensee may be granted a sublicense pursuant to the
terms of this Agreement unless it shall first agree in writing to be bound by
all of the terms of this Agreement. The revenues and costs of any Affiliate or
sublicensee, directly related to any sublicense properly granted hereunder and
falling within the definition of Gross Profit, shall be aggregated with the
revenues and costs of Licensee for the purpose of determining the royalties
payable to Licensor pursuant to Section 5.1 hereof.
3. DEVELOPMENT AND COMMERCIALIZATION OF THE LICENSED PRODUCTS AND PRODUCT
MODIFICATIONS.
3.1 In partial consideration for the licenses granted to Licensee in
Section 2 and in partial consideration of the development of the Licensed
Products and product modifications and enhancements as described in this Section
3, Licensee has previously paid Licensor the amount of One Hundred Thousand
Dollars ($100,000). In addition, Licensee has paid Licensor an additional Six
Hundred Fifty Thousand Dollars ($650,000) by check delivered to Licensor on July
16, 1996; receipt of which Seven Hundred Fifty Thousand Dollars ($750,000) total
is hereby acknowledged by Licensor. Licensee further agrees to pay Licensor One
Million Seven
4.
Hundred Thousand Dollars ($1,700,000) which shall be credited as
non-refundable prepaid minimum royalties for Royalty Years one to four. Such
One Million Seven Hundred Thousand Dollar ($1,700,000) payment shall be made
in six (6) equal monthly installments on the first day of each calendar month
beginning on August 1, 1997, with the first actual payment on September 1,
1997 including the payments for August 1997 and September 1997.
3.3 Upon execution of the Agreement, both Parties will use their good
faith reasonable efforts to develop the Licensed Products and bring them to
commercialization as soon as feasible within the agreed period therefor. It is
understood by Licensee, in particular with respect to production and utilization
of SurgeTape, that commercialization may not be possible in spite of the
Parties' efforts. In connection therewith, Licensor will provide Licensee with
the following:
3.3.1 During the term of this Agreement, Training, Technical
Information and Technical Assistance required to allow Licensee to manufacture
the Licensed Products in its facilities to the extent that commercialization of
the Licensed Products, particularly the SurgeTape, has been proven feasible by
Licensor;
3.3.2 As soon as reasonably possible, a final report
documenting all processing requirements and procedures necessary for Licensee to
manufacture the Licensed Products to the extent that commercialization of the
Licensed Products, particularly the SurgeTape, has been proven feasible by
Licensor; and
3.3.3 As soon as reasonably possible, the technology necessary
to improve the SurgeTape Material for broader product application as follows:
(a) Trigger voltage = 200 V.
(b) Clamping voltage = 25 V.
3.3.4 Within six (6) months of the Effective Date of this
Agreement, those deliverables concerning laser-formed microgap technology set
forth in Attachment 3.3.4.
3.3.5 Within six (6) months of the Effective Date of this
Agreement, those deliverables concerning SurgeTape set forth in Attachment
3.3.4.
3.3.6 The six (6) month duration set forth in Sections 3.3.4
and 3.3.5 may be adjusted upon mutual approval by the Parties as necessary to
focus resources to suit priorities that may shift as development activities
proceed.
3.4 Licensor also agrees to work at its own expense toward and expend
commercially reasonable efforts in developing information, processes, techniques
and means for commercializing the manufacture of SurgeTape for six (6) months
after the Effective Date hereof. Licensor shall not be penalized or deemed to
have breached any obligation under this Agreement if it fails to develop viable
methods and means for commercializing the manufacture of SurgeTape.
5.
3.5 To the extent that Licensor specifically undertakes any Licensed
Product modifications or enhancements at Licensee's written request (other than
the product modifications and enhancements described in Section 3.3.3 above
which will be undertaken by Licensor at its sole expense), Licensee shall
reimburse Licensor for its development costs as described below in conducting
such modifications or enhancements, including any additional capital equipment
that Licensee requires to perform such modifications and enhancements. The
development costs incurred by Licensor to be reimbursed by Licensee shall
consist of direct and indirect labor and associated fringe benefits of
Licensor's employees and independent contractors as allocated to the project,
scrap, perishable tooling, supplies, maintenance on machinery and equipment,
capital equipment costs, material costs and travel costs. The development costs
incurred by Licensor will be amortized over a period of five (5) years and
capital equipment cost incurred by Licensee will be amortized over a period of
ten (10) years and the annual amortization will be included in the cost
structure of the Licensed Products for the purpose of determining annual
royalties based on Gross Profits (or if annual royalties are based on net sales,
the royalties based on net sales will be reduced by an equivalent amount to
account for the annual amortization).
3.7 All inventions or other intellectual property conceived or
reduced to practice jointly by the employees or independent contractors of the
Parties, as a result of this collaboration and during the term of this
Agreement, shall be jointly owned by the Parties and shall be included in the
license without charge to Licensee, provided that all expenses incurred to file,
obtain, maintain, register or perfect any patents or other intellectual property
right based on such joint inventions or intellectual property is equally shared
by the Parties. If one joint invention owner declines to contribute its share of
expenses to file, issue and maintain a patent based thereon or to register or
perfect a right in the jointly created intellectual property, the Party paying
such expenses shall own the resultant patent or intellectual property right paid
for. In any event, the joint owner of an invention or other intellectual
property right under this Section 3.7 shall have no duty of accounting to the
other joint owner. Licensee shall not grant a sublicense in such jointly owned
inventions or intellectual property without the prior written consent of
Licensor.
3.8 Licensee may utilize the SurgX and SurgeTape trademarks in
connection with the sale and promotion of the respective Licensed Products to
which they apply. Licensee may also utilize its trade names or trademarks in
conjunction with the SurgX and SurgeTape trademarks in connection with the sale
and promotion of the Licensed Products, provided that no composite trademarks
are formed thereby. Licensor and Licensee shall enter into a Trademark License
Agreement, that defines the permitted uses of the SurgX and SurgeTape
trademarks, in the form attached hereto as Attachment 3.8 before Licensee may
use these Licensor trademarks.
4. DISCLOSURE OF TECHNICAL INFORMATION.
4.1 Licensor shall disclose and furnish to Licensee all Technical
Information necessary or essential for the incorporation and use of SurgeTape
Material and SurgeTape in the manufacture, use and sale of the Licensed
Products. Disclosure of Technical Information, to the extent such Technical
Information is in documentary or fixed form, shall be by delivery of two copies
of the most recent versions thereof. Delivery of Technical Information shall be
completed in compliance with the schedule of Attachment 4.1.
6.
4.2 To the extent that Technical Information is not available in
documentary or fixed form, disclosure shall be made by Licensor, at its expense,
providing Technical Assistance to Licensee, including training and consultation
normally sufficient to demonstrate the practical use of the Technical
Information, and to communicate information applicable thereto in such detail as
to reasonably permit Licensee to understand and make full use thereof in the
establishment and operation of a production capability for Licensed Products,
and to exercise the rights and licenses granted herein. Such Technical
Assistance will be performed at the request of Licensee, consistent with the
Technical Information delivery schedule of Attachment 4.1, by qualified Licensor
technical personnel, at Licensee's manufacturing plants and locations. During
such visits, Licensor personnel shall observe such rules and regulations as are
applicable to employees of Licensee, and Licensor shall indemnify Licensee from
any liability which might be asserted or claimed against Licensee, arising out
of said visits by Licensor's personnel, including personal injury to or property
damage caused by such personnel. Licensee will provide, at no cost to Licensor,
reasonable facilities for such training and Technical Assistance, including
access to office space, secretarial support and local phone use for Licensor
personnel engaged in such training and Technical Assistance. Notwithstanding
Section 2.3 hereof, Licensee may not sublicense the rights contained in this
Section 4.2 without the specific prior written approval of Licensor.
4.3 By arrangement with Licensor, Licensee may, at its expense, send
qualified personnel to Licensor's establishment for training for the purpose of
enabling Licensor to demonstrate and Licensee's employees to observe, the
manufacturing and engineering operations and the application and use of
Technical Information pertaining to the Licensed Products. The identity and
number of any such personnel, and the date and duration of each such visit shall
be such as Licensor and Licensee mutually agree. During such visits, Licensee's
personnel shall observe such rules and regulations as are applicable to
employees of Licensor, and Licensee shall indemnify Licensor from any liability
which might be asserted or claimed against Licensor arising out of said visits
by Licensee's personnel, including personal injury to or property damage caused
by such personnel. Licensor will provide, at no cost to Licensee, reasonable
facilities for such training, including access to office space, secretarial
support and local phone use for Licensee's personnel engaged in such training.
4.4 After delivery of the Technical Information pursuant to
Attachment 4.1, Licensee's personnel may direct correspondence or telephone
inquiries to Licensor's personnel requesting reasonable amounts of Technical
Assistance and oral explanation concerning Licensor's method of manufacturing,
Technical Information or operation of the Licensed Products, and Licensor agrees
to promptly respond to such inquiries and to supply such assistance to the
extent it is in the possession of, or known to, Licensor, and at the place and
times upon which the Parties may mutually agree.
4.5 Licensor agrees to promptly notify Licensee of any defect or
error discovered in the Technical Information, and of any corrective action,
revisions or customer notice made by Licensor with regard thereto.
4.6 During the term of this Agreement, Licensor shall promptly
disclose and deliver to Licensee any Improvements conceived or reduced to
practice in whole or in part by Licensor. Licensor also agrees to promptly
deliver sufficient information to allow Licensee to incorporate
7.
such Improvements into the Licensed Products. During the term of this
Agreement, Licensee shall promptly deliver to Licensor any Improvements
conceived or reduced to practice in whole or in part by Licensee. Licensee
also agrees to promptly deliver sufficient information to allow Licensor to
incorporate such Improvements into the Licensed Products.
5. ROYALTIES.
5.1 Commencing with the First Royalty Year, Licensee shall pay to
Licensor an annual royalty for the licenses granted herein equal to Twenty five
percent (25%) of the Gross Profit recognized by Licensee, its Affiliates and any
sublicensee on the sale of Licensed Products during the relevant Royalty Year.
The Parties acknowledge that it is their desire to ultimately convert this
royalty to a royalty based upon net sales of the Licensed Products (instead of
Gross Profit) but they do not have sufficient experience to currently calculate
the appropriate royalty rate. Therefore, the Parties agree that after four (4)
years from the Effective Date of this Agreement, they shall discuss in good
faith a royalty rate based on net sales which provides the same economic
allocation as that intended by the royalty based on Gross Profit. Unless both
Parties execute a written amendment to this Agreement setting forth the terms of
the royalty based on net sales, any promises, agreements or understandings made
by the Parties during their discussions and negotiations will not be binding on
the Parties. If the Parties do not execute a written amendment to this Agreement
setting forth the terms of the royalty based on net sales, then Licensee shall
continue to pay Licensor an annual royalty based on Gross Profit as described
above.
5.2 In order to maintain the licenses granted to it under Section 2.1
hereof, including the exclusivity of the exclusive license for its twenty (20)
year period as described in Section 2.3, Licensee shall insure that the annual
royalties payable to Licensor are no less than the following amounts ("Minimum
Annual Royalties"):
Royalty Year Minimum Annual Royalties
1st $0
2nd $200,000
3rd $500,000
4th and 5th $1,000,000 (each Royalty Year)
6th through 20th $2,500,000 (each Royalty Year)
If in any Royalty Year after the fourth, the royalties based on Gross Profit
(or net sales, if applicable) are less than the Minimum Annual Royalties,
Licensee, at its option, has the right to pay up the difference to a total
equaling the respective year's Minimum Annual Royalty. If Licensee elects not
to pay up the difference to a total equaling the respective year's Minimum
Annual Royalty, then the exclusive license granted hereunder shall become a
fully non-exclusive license for the remaining term of this Agreement, subject
to the rights of the Licensor to terminate this Agreement as set forth in
Section 14.4. In the event the exclusive license reverts to a non-exclusive
license because Licensee elects not to pay the Minimum Annual Royalties, the
Licensee shall no longer be liable for payment of Minimum Annual Royalties but
shall continue to be liable for royalties based on the Gross Profit (or net
sales, if applicable) of Licensed Products sold.
8.
5.3 As a matter of convenience, to protect Licensor's Licensed
Intellectual Property Rights and as an acknowledgment that Licensee is not
currently in the business of producing any resettable electrostatic discharge
protection products or products incorporating any resettable electrostatic
discharge protection products, Licensee agrees that the royalty under this
Section 5 shall apply to all resettable electrostatic discharge protection
products which are covered by (a) the Licensed Intellectual Property Rights or
(b) Improvements of Licensee.
5.4 Subject to Section 5.3, nothing in this Agreement shall be deemed
to prohibit Licensee from conceiving, reducing to practice, developing, making,
using, marketing or otherwise distributing or promoting products competitive
with the Licensed Products produced hereunder, provided that Licensee does not
breach any provision of Section 12 or disparage the Licensed Products produced
hereunder in doing so.
6. PAYMENTS.
6.1 Royalties (including Minimum Annual Royalties) are due and
payable for each quarter of each Royalty Year within forty five (45) days after
the end of each quarter of each such Royalty Year.
6.2 All payments payable by Licensee to Licensor are assigned by
Licensor and shall be paid in U.S. dollars by Licensee to Oryx Technology
Corporation, 0000 Xxxxxxx Xxxxxxx, Xxxxxxx, Xxxxxxxxxx 00000.
7. RECORDS, REPORTS AND INSPECTION.
7.1 Licensee shall at all times keep complete and proper records of
all Licensed Products manufactured, used or sold by Licensee, its Affiliates and
any sublicensee. Sales or dispositions shall be considered as made on the date
of the invoice or shipment, whichever occurs first.
7.2 Within forty five (45) days after the end of each quarter of each
Royalty Year during the term of this Agreement, Licensee shall send to Licensor
a full statement in writing identifying separately the total number of pieces in
each product category of Licensed Products sold by Licensee, its Affiliates and
any sublicensee during the preceding quarter of such Royalty Year, together with
a computation of royalties due Licensor.
7.3 Licensor shall have the right, upon giving at least thirty (30)
days' advance notice, at any time during normal business hours, to audit the
records of Licensee, any sublicensee and any Affiliate to which Licensee has
granted a sublicense by having an independent auditor examine the books and
records of Licensee, any sublicensee and any Affiliate to which Licensee has
granted a sublicense relating to the computation of royalties on the Licensed
Products. Licensee, any sublicensee and any Affiliate to which Licensee has
granted a sublicense shall keep the records available for inspection for three
(3) years after expiration of the Royalty Year in which they are made and
Licensor's right to audit the records of Licensee, any sublicensee and any
Affiliate to which Licensee has granted a sublicense shall not extend beyond
such three year period. Licensor shall, and shall cause its independent auditor
to maintain the confidentiality of all information, books and records examined
during such audit. Licensor will bear the expense of
9.
any such audit unless the audit shows an underpayment of more than five
percent (5%) for the applicable period, in which case Licensee shall bear the
expense of the audit.
8. WARRANTY.
8.1 Licensor warrants that it has the right to grant a license to the
rights licensed hereunder and that there are no outstanding assignments, grants,
licenses, encumbrances or obligations inconsistent with licenses granted under
this Agreement.
8.2 To the knowledge of Licensor and its Affiliates as of the
Effective Date, Licensor warrants that the Licensed Intellectual Property Rights
do not interfere with, infringe upon, misappropriate or otherwise conflict with
any intellectual property rights of third parties and Licensor and its
Affiliates have never received any charge, complaint, claim or notice alleging
any such interference, infringement, misappropriation or violation. To the
knowledge of Licensor and its Affiliates, no third party has interfered with,
infringed upon, misappropriated or otherwise come into conflict with any of the
Licensed Intellectual Property Rights.
9. INDEMNIFICATION.
9.1 Licensor agrees to indemnify Licensee, its agents, employees,
officers, directors and representatives (the "Licensee Group") against any and
all losses and expenses arising from any claims, demands, actions, suits, or
prosecution (collectively, a "Claim") that may be initiated against the Licensee
Group by an unaffiliated third party relating to infringement claims
(specifically including claims that may arise from the patents described in
Attachment 9.1 hereof) which are the result of the incorporation or combination
of the SurgeTape Material or SurgeTape with Licensee Components in the Licensed
Products manufactured, used or sold by Licensee in the Territory, pursuant to
the terms of this Agreement. Licensor will have no such obligation (i) unless it
is promptly notified by Licensee of any Claim or threat of a Claim PROVIDED,
HOWEVER, that delay or failure to so notify shall not relieve Licensor of its
indemnity obligations unless and to the extent Licensor is thereby damaged, (ii)
unless upon Licensor's request and expense, Licensee cooperates reasonably in
any such Claim, (iii) to the extent the Claim involves specifications provided
by Licensee or any change or addition to or modification of such Licensed
Intellectual Property Rights or any use or application thereof different from
the commercial uses and applications of Licensor as of the date of this
Agreement or (iv) for any settlement Licensor does not approve in advance in
writing. Licensee, at its sole cost and expense, may elect to join Licensor to
defend such Claim so long as Licensee is an exclusive licensee hereunder. If any
resolution of such a Claim results in the payment of a royalty by Licensee to a
third party as necessary to make, use, or sell Licensed Products, such royalty
shall be allocated to Gross Profit to the extent such royalty accrues on the
manufacture, use or sale of the Licensed Products (or if royalties are based on
net sales rather than Gross Profit, twenty five percent (25%) of such third
party royalties shall be deducted from and credited against any royalties
otherwise due to Licensor under this Agreement).
9.2 Licensee agrees to indemnify Licensor, its agents, employees,
officers, directors and representatives (the "Licensor Group") against any and
all losses and expenses arising from any claims, demands, actions, suits or
prosecution (collectively, a "Claim") that may be initiated against the Licensor
Group by an unaffiliated third party relating to infringement claims which
10.
are the result of the use or sale of Licensee Components which are
incorporated in the Licensed Products manufactured, used or sold by Licensee
in the Territory pursuant to the terms of this Agreement. Licensee will have
no such obligation (i) unless it is promptly notified by Licensor of any Claim
or threat of a Claim PROVIDED, HOWEVER, that delay or failure to so notify
shall not relieve Licensee of its indemnity obligations unless and to the
extent Licensee is thereby damaged, (ii) unless upon Licensee's request and
expense Licensor cooperates reasonably in any such Claim and (iii) for any
settlement Licensee does not approve in advance in writing. Licensor, at its
sole cost and expense, may elect to join Licensee to defend such Claim. If any
resolution of such a Claim results in the payment of a royalty by Licensor to
a third party as necessary to make, use or sell Licensed Products (other than
the patent rights specified in Attachment 1.5 to the extent such patent rights
are incorporated in the Licensed Products), such royalty shall be allocated to
Gross Profit to the extent such royalty accrues on the manufacture, use or
sale of the Licensed Products (or if royalties are based on net sales rather
than Gross Profit, twenty five (25%) of such third party royalties shall be
deducted from and credited against any royalties otherwise due to Licensor
under this Agreement).
10. IMPROVEMENTS.
10.1 Licensor agrees to disclose to Licensee any Improvements made by
Licensor relating to the Licensed Intellectual Property Rights and where
applicable, the Optional Licensed Intellectual Property Rights, developed,
conceived or reduced to practice by Licensor during the term of this Agreement
and to grant Licensee the right to use the Improvements in the manufacture, use
and sale of the Licensed Products at no additional cost under the same terms and
conditions of this Agreement for the term of this Agreement.
10.2 Licensee agrees to disclose to Licensor any Improvements made by
Licensee, its Affiliates or any sublicensee relating to the Licensed
Intellectual Property Rights and where applicable, the Optional Licensed
Intellectual Property Rights, developed, conceived or reduced to practice by
Licensee during the term of this Agreement and to grant Licensor a worldwide,
royalty-free license to any such Improvements for the term of this Agreement. To
the extent that any such Improvement as made by Licensee can only be used or
sold with reference to the Licensed Products or such Improvement constitutes an
enhancement or improvement to the SurgeTape Material or SurgeTape, Licensor
shall have the full right to sublicense such Improvement. Conversely, to the
extent any such Improvement has uses both with reference to the Licensed
Products and other products of Licensee, Licensor shall have no right to
sublicense such Licensee Improvement without the prior written consent of
Licensee.
11. MANUFACTURE AND SUPPLY OF SURGETAPE MATERIAL AND SURGETAPE.
11.1 Pursuant to the terms of a Supply Agreement to be negotiated and
entered into by the Parties, Licensor shall manufacture, or have manufactured
for it, and shall sell to Licensee all of Licensee's forecasted requirements for
the SurgeTape Material and SurgeTape at a price equal to Licensor's cost for
such material as defined on Attachment 11.1. In the event the Parties are unable
in good faith to negotiate and enter into a Supply Agreement, the terms and
conditions of the supply arrangement will be governed by this Section 11. At
least four (4) months prior to each delivery date, Licensee shall deliver a
forecast to Licensor of Licensee's quantity requirements for the SurgeTape
Material and SurgeTape. Licensee shall act in a commercially
11.
reasonable manner to schedule orders to avoid creating production capacity
problems for Licensor. The SurgeTape Material and SurgeTape delivered to
Licensee shall be F.O.B. Licensee's manufacturing facility in the Continental
United States. Licensor shall use reasonable commercial efforts to deliver the
SurgeTape Material and SurgeTape by the applicable delivery date. All customs,
duties, costs, taxes, insurance premiums and other expenses related to
transportation and delivery shall be at Licensee's expense. Licensor agrees to
deliver SurgeTape Material and SurgeTape to Licensee in conformity with
Licensee's forecast, free of material and workmanship defects and meeting the
Parties' mutually agreed upon quality control requirements.
11.2 Licensee shall have the right, upon giving at least thirty (30)
days' advance notice, at any time during normal business hours, to audit
Licensor's records by having an independent auditor examine the books and
records of Licensor relating to the cost of the SurgeTape Material and
SurgeTape. Licensor shall keep the records available for inspection for three
years after each date of delivery of the SurgeTape Material and SurgeTape and
Licensee's right to audit Licensor's records shall not extend beyond such three
year period. Licensee shall, and shall cause its independent auditor to,
maintain the confidentiality of all information, books and records examined
during such audit. Licensee shall bear the expense of any such audit unless the
audit shows an overpayment of more than 5% for the applicable period, in which
case Licensor shall bear the cost of the audit.
11.3 Licensee shall have the right to self-manufacture the SurgeTape
Material or SurgeTape if: (i) Licensor fails to meet its obligations under the
Supply Agreement, or under this Section 11 if the Parties have not entered into
a Supply Agreement, with regard to delivering Licensee's forecasted requirements
for the SurgeTape Material or SurgeTape under the terms and conditions of the
Supply Agreement, or under this Section 11 if the Parties have not entered into
a Supply Agreement (unless such failure is a result of a breach or anticipatory
breach of this Agreement by Licensee), and such failure continues for a period
of sixty (60) days after written notice thereof to Licensor, or (ii) Licensor
becomes insolvent, or a case or proceeding under bankruptcy, insolvency or
similar law is commenced by or against Licensor, but not by Licensee or a party
acting in its behalf, and is not dismissed within forty five (45) days or
Licensor makes a general assignment for the benefit of creditors. If Licensee
has the right to self-manufacture the SurgeTape Material or SurgeTape pursuant
to Section 11.3(i) or (ii) hereof, Licensee shall exercise its right to
self-manufacture the SurgeTape Material or SurgeTape by giving written notice
thereof to Licensor and immediately upon receipt of such notice Licensor shall
provide Licensee with any and all Technical Information and Technical Assistance
to allow Licensee to manufacture the SurgeTape Material or SurgeTape. If any
event of force majeure disrupts the supply of SurgeTape Material or SurgeTape to
Licensee which disruption continues for a period of sixty (60) days, then,
notwithstanding Section 22.2, Licensor shall find an alternate source to supply
the SurgeTape Material or SurgeTape to Licensee or shall allow Licensee to
self-manufacture the SurgeTape Material or SurgeTape; PROVIDED, HOWEVER, that
the foregoing shall apply only during the time period that the disruption in the
supply of SurgeTape Material or SurgeTape as a result of an event of force
majeure continues.
11.4 Upon execution of this Agreement, as a precautionary measure to
insure all information relating to the manufacture of the SurgeTape Material or
SurgeTape is available to Licensee in the event Licensee exercises its right to
self-manufacture the SurgeTape Material or SurgeTape, Licensor shall deliver all
of the documents relating to the manufacture of the SurgeTape Material or
12.
SurgeTape that are necessary for Licensee to self-manufacture the SurgeTape
Material or SurgeTape to an escrow agent mutually agreed to by the parties, it
being understood by Licensee that Licensor may not have and may not develop any
documents or information relating to the successful manufacture of SurgeTape.
The escrow agent shall hold all of such documents in escrow pursuant to the
terms of an Escrow Agreement between the parties. The Escrow Agreement shall
provide that the escrow agent will not disclose such documents to Licensee
unless and until Licensee issues its written notice to both Licensor and the
escrow agent that it is exercising its right to self-manufacture the SurgeTape
Material or SurgeTape and Licensor has not provided the escrow agent with notice
within ten (10) days thereafter that it is disputing Licensee's right to
self-manufacture the SurgeTape Material or SurgeTape. Licensor and Licensee
shall enter into an Escrow Agreement in the form attached hereto as Attachment
11.4.
12. NONDISCLOSURE.
12.1 Prior to and during the term of this Agreement, the Parties have
made and will make certain disclosures to each other regarding information which
is proprietary and confidential to them in their businesses (the "Confidential
Information"). In order to constitute Confidential Information, information
being disclosed must either be in writing and marked as being proprietary or
confidential or, if given orally, must be identified as proprietary when stated
and confirmed in writing to be proprietary within thirty (30) days of the
original oral disclosure. In particular, Licensee recognizes that the Licensed
Intellectual Property Rights and the confidential nature, thereof are critical
to the business of Licensor and that Licensor would not enter into this
Agreement without assurance that such technology and information and the value
thereof will be protected as provided in this Section 12 and elsewhere in this
Agreement. Accordingly, each party agrees as follows:
12.2 The party receiving such information (the "Receiving Party")
agrees (i) to hold the Disclosing Party's Confidential Information in confidence
and to take all reasonable precautions to protect such Confidential Information
(including, without limitation, all precautions the Receiving Party employs with
respect to its confidential materials), (ii) not to divulge any such
Confidential Information or any information derived therefrom to any third
person, (iii) not to make any use whatsoever at any time of such Confidential
Information except as expressly authorized in this Agreement, and (iv) not to
remove or export from the United States or reexport any such Confidential
Information or any direct product thereof (e.g., Licensed Products by whomever
made) to Afghanistan, the Peoples' Republic of China or any Group Q, S, W, Y or
Z country (as specified in Supplement No. 1 to Section 770 of the U.S. Export
Administration Regulations, or a successor thereto) or otherwise except in
compliance with and with all licenses and approvals required under applicable
export laws and regulations, including without limitation, those of the U.S.
Department of Commerce. Any employee given access to any such Confidential
Information must have a legitimate "need to know" and shall have executed the
standard form of the confidentiality agreement of the Receiving Party. Without
granting any right or license, the Disclosing Party agrees that the foregoing
clauses (i), (ii) and (iii) shall not apply with respect to information the
Receiving Party can document (i) is in or (through no improper action or
inaction by the Receiving Party or any Affiliate, sublicensee, agent or
employee) enters the public domain, or (ii) was rightfully in its possession or
known by
13.
it prior to receipt from the Disclosing Party, or (iii) was rightfully
disclosed to it by another person without restriction, (iv) was disclosed by
the Disclosing Party to a third party on an unrestricted nonconfidential
basis, or (v) was independently developed by the Receiving Party by persons
without access to such information and without use of any Confidential
Information of the Disclosing Party. If the Receiving Party believes that
information that a Disclosing Party has identified as Confidential Information
is no longer Confidential Information due to the circumstances in the
immediately preceding sentence, the Receiving Party shall establish same by
clear and convincing evidence prior to making a disclosure of such
information. Each party's obligations under this Section 12.2 (except under
clause (iv) of the first sentence) shall terminate five (5) years after the
termination of this Agreement.
12.3 Immediately upon any termination or expiration of the Receiving
Party's license under Section 13, the Receiving Party will turn over to the
Disclosing Party all Confidential Information of the Disclosing Party and all
documents or media containing any such Confidential Information and any and all
copies or extracts thereof.
12.4 Licensor recognizes that Licensee may have a need to furnish
Technical Information received hereunder to third parties in the exercise of
rights granted hereunder, and to customers (e.g., OEM) incorporating Licensed
Products into other equipment. Licensee may disclose such Technical Information
to any such third party for its use in the exercise of the rights granted by
Licensor hereunder, solely for the benefit of Licensee, provided such disclosure
is made to such third parties under a written agreement containing restrictions
on disclosure and use equivalent to those contained in this Section 12.
13. TERM.
13.1 This Agreement shall begin on the Effective Date. This Agreement
shall remain in effect, unless terminated at an earlier date pursuant to Section
14 herein, for a period of twenty (20) years or until the expiration of or
failure to maintain the last issuing patent which is included in Licensed
Intellectual Property Rights, whichever is greater. Notwithstanding the
foregoing, Licensee shall have the option to extend the term of this Agreement
on a year-to-year basis by providing written notice of its election to extend
the term within sixty (60) days prior to the expiration of the initial term or
any extended term. Any extension of this Agreement shall be subject to all terms
and conditions herein, provided that Licensee shall be obligated to pay only
seventy five percent (75%) of the royalties that it would have been obligated to
pay during the initial term of this Agreement.
14. TERMINATION.
14.1 This Agreement may be terminated at any time prior to the
expiration of its normal term by the mutual written agreement of the Parties.
14.2 This Agreement may be terminated by Licensor upon written notice
to Licensee if Licensee fails to make any payment when due hereunder and such
lack of timely payment is not remedied within thirty (30) days from written
notice thereof. However, the Licensor may not terminate the Agreement to the
extent there is a bona fide dispute as to the amount of royalties
14.
due, provided the amount of royalties not in dispute are paid by Licensee
within the thirty (30) day cure period.
14.3 This Agreement may be terminated by either party upon written
notice to the other party:
14.3.1 immediately, if the other party defaults under or
breaches any of the terms of this Agreement and such default or breach is not
remedied within a period of sixty (60) days after written notification thereof
(except breach of the payment obligation, as set out above); or
14.3.2 immediately, if a material provision of this Agreement is
held invalid or unenforceable by the determination of a court of competent
jurisdiction; or
14.4 This Agreement may be terminated by Licensor upon thirty (30)
days' prior notice to Licensee given within the one (1) year period following
the applicable Royalty Year and the payment of Seven Hundred Fifty Thousand
Dollars ($750,000) to Licensee in the event:
14.4.1 Licensee has failed to pay the Minimum Annual Royalties
applicable to the Second or Third Royalty Year and has not cured within the
thirty (30) day notice period; or
14.4.2 Licensee has failed to pay a minimum of One Million
Dollars ($1,000,000) in royalties to Licensor each year during the Fourth
through Tenth, inclusive, Royalty Years and has not cured such default within
the thirty (30) day notice period.
14.5 If this Agreement is terminated pursuant to Section 14.4 above,
the Licensee shall retain a license to manufacture, use and sell the Licensed
Products under the Licensed Intellectual Property Rights or Optional Licensed
Intellectual Property Rights if applicable, but such license shall be limited to
the manufacture, use and sale of Licensed Products to those customers of
Licensee who have previously purchased Licensed Products (such customers to be
derived by a customer/product sales history and Licensee may sell to any such
existing customer only those pieces in each product category of the Licensed
Products that such customer had purchased from Licensee prior to the termination
of this Agreement). During the term of such limited license and until the
expiration of the term of this Agreement under Section 13 hereof: (i) Licensee
shall continue to pay Licensor royalties based on Gross Profit (or net sales, if
applicable) as provided in Section 5.1; and (ii) Licensee may continue to obtain
SurgeTape Material according to the terms of Section 11.
15. RIGHTS AFTER TERMINATION OR EXPIRATION.
15.1 Except to the extent necessary for Licensee to exercise its
rights under Section 14.5, upon the termination of this Agreement under Sections
14.1, 14.2, 14.3 or 14.4, Licensee shall: (i) immediately cease all further use
of Technical Information and manufacture of Licensed Products, but shall be
allowed to continue to use or sell Licensed Products manufactured prior to the
date of termination of this Agreement provided, Licensee continues to pay
Licensor any royalties relating to such use or sales; (ii) Licensee shall cease
all use of the Licensed Intellectual Property Rights and if applicable, (iii)
Licensee will return to Licensor or destroy and provide Licensor a complete list
of all Technical Information, including all specifications and drawings, and all
copies thereof.
15.
15.2 Termination or expiration of this Agreement (i) shall not release
Licensee from its obligation to make payment in full of all royalties which have
accrued to that date, (ii) shall not relieve the Parties from all other
obligations or liabilities under this Agreement which expressly extend beyond
the termination or expiration and (iii) shall not be construed as a waiver of
any rights, claims (including claims for damages), or obligations that have
accrued up to and including the date of termination or expiration. In
particular, it is understood that Sections 3.4, 5, 6, 7, 9, 12, 15, 16 and 20
hereof shall survive any termination or expiration of this Agreement.
16. LITIGATION AND FILING MATTERS.
16.1 Licensor retains the sole right and discretion to file and
prosecute patent applications, maintain patents and apply for intellectual
property rights in the Territory relating to the Licensed Intellectual Property
Rights, or any Improvements, but not joint inventions. At Licensee's request
while Licensee remains an exclusive licensee hereunder, Licensor will discuss
its decision on these matters with Licensee, but Licensee will not attempt to
file or prosecute any such patent applications or maintain any such patent (i)
except as Licensor may, in its sole discretion, approve in writing and (ii)
except that Licensee may continue maintenance of licensed patents issued in the
Territory if Licensor elects not to do so. Licensor's existing relevant patents
and patent applications in the Territory are listed on Attachment 1.5.
16.2 If Licensee becomes aware of any product or activity of any third
party that involves infringement or violation of any Licensed Intellectual
Property Right or Optional Licensed Intellectual Property Rights in the
Territory, then Licensee shall promptly notify Licensor in writing of such
infringement or violation. Licensor may in its discretion take or not take
whatever action it believes is appropriate; if Licensor elects to take action,
Licensee will reasonably cooperate therewith at Licensor's expense. Licensor
will indemnify Licensee for any damages, expenses, costs and fees in connection
with Licensor's actions under this Section 16.2.
If Licensor does not, within ninety (90) days after receipt of such a
notice of a patent infringement within the scope of Licensee's license
hereunder, commence action directed towards restraining or enjoining such patent
infringement, Licensee, so long as it is an exclusive licensee hereunder may
take such legally permissible action as it deems necessary or appropriate to
enforce Licensor's patent rights and restrain such infringement. Licensor agrees
to cooperate reasonably in any such action initiated by Licensee including
supplying essential documentary evidence and making essential witnesses then in
Licensor's employment available. As part of such cooperation, Licensee may join
Licensor as a party, if the need arises, although such joinder shall be entirely
at Licensee's expense. Licensee will indemnify Licensor for any damages,
expenses, costs and fees in connection with Licensee's actions under this
Section 16.2. Nothing in this Section 16.2 allows Licensee or requires Licensor
to disclose the Licensed Intellectual Property Rights or Optional Licensed
Intellectual Property Rights except the patent rights set forth in Attachment
1.5.
If Licensor solely initiates and prosecutes any such an action under
this Section 16.2, all legal expense (including court costs and attorneys' fees)
shall be for Licensor's account and it shall be entitled to all amounts awarded
by way of judgment, settlement or compromise.
16.
Licensee may join, solely at its own expense, an action prosecuted by
Licensor and any amounts awarded by way of judgment shall be allocated between
Licensor and Licensee as the court shall determine each party has been damaged.
In the event Licensor elects not to initiate suit and if Licensee solely
initiates and prosecutes such an action, all legal expenses (including court
costs and attorneys' fees) shall be for Licensee's account and it shall be
entitled to all amounts awarded by way of judgment, settlement, or compromise.
16.3 Licensee understands that Licensor has not conducted
comprehensive patent searches in all of the countries in the Territory.
16.4 INCIDENTAL AND CONSEQUENTIAL DAMAGES. NEITHER PARTY WILL BE
LIABLE UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY FOR ANY
INCIDENTAL OR CONSEQUENTIAL DAMAGES OR FOR LOST PROFITS WITH RESPECT TO ANY
SUBJECT MATTER OF THIS AGREEMENT EXCEPT A BREACH OF SECTION 12. NOTWITHSTANDING
THE FOREGOING, THIS SECTION 16.4 SHALL NOT LIMIT THE INDEMNITY OBLIGATION OF THE
PARTIES UNDER SECTION 9 WITH RESPECT TO CLAIMS OF THIRD PARTIES.
16.5 LIMITATION OF OBLIGATIONS AND LIABILITY. LICENSOR WILL NOT BE
LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER ANY CONTRACT,
NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY FOR COST OF PROCUREMENT OF
SUBSTITUTE GOODS, SERVICES, TECHNOLOGY OR RIGHTS OR FOR ANY AMOUNTS AGGREGATING
IN EXCESS OF AMOUNTS PAID TO IT HEREUNDER.
17. WAIVER OF DEFAULT.
17.1 The failure of either party at any time to enforce or require
performance of any of the provisions of this Agreement, or to exercise any right
or option herein provided, shall in no way be construed to be a waiver of that
or any other provision of this Agreement or to affect the right of such party
thereafter to enforce each and every such provision. All waivers shall be in
writing and signed by the waiving party. No waiver by either party of any
default of the other party shall be held to be a waiver of any other or
subsequent default.
18. RELATIONSHIP OF PARTIES.
18.1 It is agreed that the Parties are independent contractors and not
partners, joint venturers or otherwise affiliated. Neither party has any right
or authority to assume, create or incur any liability or obligation of any kind,
express or implied, against, in the name of, or on behalf of the other party.
19. NOTICE.
19.1 Any notice pursuant to this Agreement shall be in writing and
shall be deemed given (i) when delivered by hand or mail, (ii) when transmitted
by telecopier, with confirmation of receipt; provided that a copy is sent at
about the same time by registered or certified mail,
17.
return receipt requested, or (iii) three days after being sent by Express
Mail, Federal Express or other express delivery service, to the addressee at
the following addresses or telecopier numbers (or to such other address or
telecopier number as a party may specify from time to time by notice):
If to Licensor: SurgX Corporation
Attention: President
0000 Xxxxxx Xx.
Xxxxxxx, XX 00000
Facsimile: (000) 000-0000
if to Licensee: Bussmann Division of XxXxxx-Xxxxxx Company
Attention: President
000 Xxx Xxxxx Xxxx
Xxxxxxxxxx, XX 00000
Facsimile: (000) 000-0000
with copy to: Xxxxxx Industries, Inc.
Attention: General Counsel X.X. Xxx 0000
Xxxxxxx, Xxxxx 00000 XXX Facsimile: (000) 000-0000
20. DISPUTE RESOLUTION.
20.1 Any dispute or claim arising out of, or in connection with, this
Agreement which is not settled to the mutual satisfaction of the Parties within
thirty (30) days (or such longer period as may be mutually agreed upon) from the
date that either party informs the other in writing that such dispute or
disagreement exists, shall be submitted to mediation conducted by a mediator
mutually acceptable to the Parties. In the event the Parties cannot resolve the
dispute or claim through mediation, then the claim or dispute shall be finally
settled by binding arbitration in the counties of Alameda, San Mateo or Santa
Clara, California in accordance with the rules of the American Arbitration
Association by three (3) arbitrators appointed in accordance with said rules in
effect on the date that such notice is given. The decision of the arbitrators
shall be final and binding upon the Parties and judgment upon any award rendered
by all or a majority of the arbitrators may be entered in any court of competent
jurisdiction. Each party shall bear the cost of preparing its case. The cost of
the arbitration, including the fees and expenses of the arbitrators, will be
shared equally by the Parties unless the arbitrators' award otherwise provides.
The Parties agree that, any provision of applicable law notwithstanding, they
will not request, and the arbitrators shall not have authority to award punitive
damages against any party or Parties. Either party may request a court to
provide interim or provisional relief and such a request shall not be deemed
incompatible with the agreement to arbitrate or as a waiver of that agreement.
21. ASSIGNMENT.
21.1 This Agreement shall be binding upon the Parties and their
permitted successors and assigns. Licensor may assign or delegate any of its
rights or obligations under this Agreement to an Affiliate with notice to
Licensee provided the Licensor remains liable for its
18.
performance under this Agreement. Licensee may assign or delegate any of its
rights or obligations under this Agreement to an Affiliate with notice to
Licensor provided Licensee remains liable for its performance under this
Agreement. Except for assignments to Affiliates as described above, neither
party may assign any of its rights or obligations to a third party without the
prior written consent of the other party which consent shall not be
unreasonably withheld or delayed.
22. MISCELLANEOUS.
22.1 GOVERNING LAW. This Agreement shall be governed by and construed
in accordance with the substantive laws of Delaware and the United States
without regard to conflicts of laws provisions thereof and without regard to the
United Nations Convention on Contracts for the International Sale of Goods.
Subject to Section 20 and unless otherwise elected by Licensor in writing for
the particular instance (which Licensor may do at its option), the sole
jurisdiction and venue for actions related to the subject matter hereof shall be
the U.S. federal courts having within their jurisdiction the location of
Licensor's principal place of business. Both parties consent to the jurisdiction
of such courts and agree that process may be served in the manner provided
herein for giving of notices or otherwise as allowed by California or federal
law. In any action or proceeding to enforce rights under this Agreement, the
prevailing party shall be entitled to recover costs and attorneys' fees.
22.2 FORCE MAJEURE. Neither party hereto shall be responsible for any
failure to perform its obligations under this Agreement (other than obligations
to pay money or obligations under Sections 9, 12 or 16) if such failure is
caused by acts of God, war, strikes, revolutions, lack or failure of
transportation facilities, laws or governmental regulations or other causes
which are beyond the reasonable control of such party. Obligations hereunder,
however, shall in no event be excused but shall be suspended only until the
cessation of any cause of such failure. In the event that such force majeure
should obstruct performance of this Agreement for more than three (3) months,
the parties hereto shall consult with each other to determine whether this
Agreement should be modified. The party facing an event of force majeure shall
use its best endeavors in order to remedy that situation as well as to minimize
its effects. A case of force majeure shall be notified to the other party by
telex or telefax within five (5) days after its occurrence and shall be
confirmed by a letter.
22.3 EXPORT CONTROL. Each party hereby agrees to comply with all
export laws and restrictions and regulations of the Department of Commerce or
other United States or foreign agency or authority, and not to knowingly export,
or allow the export or re-export of any Licensed Intellectual Property Rights or
Licensed Products or derivative of the Licensed Intellectual Property Rights or
the Licensed Products or any direct product thereof in violation of any such
restrictions, laws or regulations, or, without all required licenses and
authorizations, to Afghanistan, the Peoples' Republic of China or any Group Q,
S, W, Y or Z country specified in the then current Supplement No. 1 to Section
770 of the U.S. Export Administration Regulations (or any successor supplement
or regulations).
22.4 SEVERABILITY. If any provision of this Agreement is held
illegal, invalid or unenforceable by a court of competent jurisdiction, that
provision will be limited or eliminated to
19.
the minimum extent necessary so that this Agreement shall otherwise remain in
full force and effect and enforceable.
22.5 ENTIRE AGREEMENT. This Agreement constitutes the entire
agreement between the Parties and supersedes all prior agreements, including but
not limited to the parties' July 1996 Intellectual Property Rights License
Agreement, negotiations or discussions between them regarding the subject matter
hereof.
22.6 NO THIRD-PARTY BENEFICIARIES. This Agreement shall not confer
any rights or remedies upon any person or entity other than the Parties and
their respective successors and permitted assigns.
22.7 HEADINGS. The section headings contained in this Agreement and
in the attachments are inserted for convenience only and shall not affect the
meaning or interpretation of this Agreement.
22.8 AMENDMENTS AND WAIVERS. No amendment of any provision of this
Agreement or any Attachments hereto shall be valid unless it is in writing and
signed by each party.
22.9 INCORPORATION OF SCHEDULES. The attachments identified in this
Agreement are incorporated by reference and made a part of this Agreement.
22.10 COUNTERPARTS. This Agreement may be executed in any number of
counterparts with the same effect as if the signatures to each counterpart were
upon a single instrument, and all such counterparts together shall be deemed an
original of this Agreement.
On the date indicated below, each party by an authorized representative
executes this Agreement in duplicate, each of which shall be considered an
original.
AGREED TO ON BEHALF OF AGREED TO ON BEHALF OF
SURGX CORPORATION BY XXXXXX-XXXXXX COMPANY BY
Name: Name:
---------------------------- -----------------------------
Title: Title:
---------------------------- -----------------------------
Date: Date:
---------------------------- -----------------------------
20.
ATTACHMENT 1.5
INVENTION: LICENSED POLYMER MATERIAL
The inventions constituting the SurgeTape Material are covered by the following
patent applications and any continuations, divisionals, continuations in part,
as well as foreign counterparts which may be assigned to Licensor, it being
understood that these patents and applications cover inventions which may be
broader than those used solely in the SurgeTape Material:
Patent Application File Date
020327-002 07/14/94 SurgX Devices
020327-003 07/14/94 SurgX Manufacturing and ESD Devices
020327-005 01/22/96 Printed Circuit Board Designs for ESD
(list SurgeTape patent applications here)
ATTACHMENT 1.6
The term "Licensed Products" shall mean: Discrete products to be mounted on
printed circuit boards for the purpose of providing ESD protection, which
discrete products are manufactured by depositing SurgeTape Material on a rigid
substrate such as a FR-4 printed circuit board or a ceramic substrate. Examples
of such discrete products include 1206, 0805, 0603 surface mount packages and
board mounted network array packages. Such discrete products shall also include
discrete arrays for placement on or in connectors such as X X, D-subminiature
and other connectors.
Licensed Products shall include other SurgX products, such as, without
limitation, the family of products identified by SurgX as SurgTape (including
discrete components and connector arrays made from SurgTape), SurgX Epoxy
Packages, or custom SurgX applications such as a layer in a printed circuit
board and novel packaging, including hybrid designs and multichip modules.
ATTACHMENT 3.3.4
SURGX / SURGETAPE MANUFACTURING PROCESS DEVELOPMENT
DELIVERABLE DATE
----------- ----
1. Project Definition
- Project Statement: A concise statement of the Middle of month 1
projects purpose that helps establish
agreement of the overall goal.
- Project objectives: What do we plan to have at
the end of the project.
- Work breakdown structure: Listing of the human
resources, facilities, equipment and
materials/supplies, including the amount and
cost.
- Resource requirements: Listing of the human
resources, facilities, equipment and
materials/supplies, including the amount and
cost.
2. DETAILED PROJECT PLAN
- Responsibility assignment matrix: Listing of Middle of month 1
person(s) responsible for each task of the
work breakdown structure list.
- Grant chart showing the anticipated start and
completion date of each task:
3. PROJECT MONITORING AND CONTROL
- Reporting of progress, potential problems and Monthly
potential opportunities, project
modifications.
- Revised Xxxxx Chart
- Project expense report
- Test reports and lab notes
4. PROPOSED MANUFACTURING METHOD
- Practical manufacturing process flow and End of month 6
procedures.
- Identify potential raw material and equipment
suppliers.
5. LASER MACHINING OF SURG-X DEVICES
- Identify up to three appropriate substrate
materials (surface mount and connector
components).
- Recommend optimum gap geometry and electrode
materials with respect to performance and
manufacturability for filled and untilled
polymers.
- Specify filled and untilled polymers used, and
encapsulants, if any.
- Propose practical manufacturing process flow.
- Identify potential vendors and equipment
suppliers.
- Target trigger voltages -< 50V, 150V, 450V1.
- All test reports and lab notes.
2.
ATTACHMENT 3.8
TRADEMARK LICENSE AGREEMENT
TRADEMARK LICENSE AGREEMENT
THIS TRADEMARK LICENSE AGREEMENT ("Agreement") is effective as of this ___
day of August, 1997 ("Effective Date"), by an between SURGX CORPORATION
("Licensor"), a Delaware corporation, having offices at 0000 Xxxxxx Xxxxxx,
Xxxxxxx, Xxxxxxxxxx 00000, and XXXXXX-XXXXXX COMPANY ("Licensee"), a Delaware
corporation, having offices at 000 Xxx Xxxxx Xxxx, Xxxxxxxxxx, Xxxxxxxx 00000.
In consideration of the mutual covenants and promises contained herein, the
parties hereto agree as follows:
1. DEFINITIONS.
The following terms shall have the meanings set forth below:
(a) "AFFILIATE" means any person controlling, controlled by (either
directly or indirectly) or under common control with Licensee.
(b) "LICENSE AGREEMENT" shall mean the Intellectual Property Rights
License Agreement, of even Effective Date herewith, entered into by the parties
hereto.
(c) "LICENSED MARKS" shall mean solely the trademark SurgX-Registered
Trademark- and the trademark SurgeTape-TM- PROVIDED, HOWEVER, that the
appearance and/or style of either trademark may change from time to time in
Licensor's sole discretion. As of the Effective Date hereof, the trademark
SurgX-Registered Trademark- is the subject of trademark registration and pending
applications 74/461054. Trademark SurgeTape-TM- is a common law trademark for
which an application to register has not yet been submitted.
(d) "PRODUCT" shall mean the "Licensed Products" as defined in the
License Agreement.
(e) "TERRITORY" shall mean the world.
2. LICENSE RIGHT GRANTED.
(a) In partial consideration of the consideration set forth in the
License Agreement, Licensor hereby grants to Licensee, and Licensee accepts,
upon the terms and conditions set forth herein, a non-transferable (subject to
Section 9 herein), non-sublicensable (subject to Section 9 herein), royalty-free
license to use the Licensed Xxxx in the Territory solely in connection with the
Product.
(b) Licensee hereby acknowledges and agrees that, except as set forth
herein, Licensee has no rights, title or interest in or to the Licensed Marks
and that all use of the Licensed Marks by Licensee shall inure to the benefit of
Licensor. Licensee shall not have the right to use either of the Licensed Marks
as a trade name, company name, trade style or fictitious business name.
(c) Licensee understands and agrees that it does not have the right
to use the Licensed Marks in any manner that conflicts with the rights of any
third party. If, in Licensor's sole determination, Licensee's use of the
Licensed Xxxx infringes the rights of any third party or weakens or impairs
Licensor's rights in the Licensed Xxxx, including but not limited to the
creation of a composite xxxx, then Licensee agrees to immediately terminate or
modify such use in accordance with Licensor's instructions. In the event
Licensee fails to terminate or modify such use as directed by Licensor, Licensor
may terminate this Agreement and the license granted hereunder.
(d) Licensee acknowledges that it is often difficult, particularly in
foreign countries, to obtain clear, registered title to trademarks. Accordingly,
Licensee agrees that the rights granted herein exist only to the extent that
Licensor owns such rights, and (except as specifically set forth herein or in
the License Agreement) no warranty, express or implied, is made with respect
thereto or to the Licensed Xxxx or with respect to the rights of any third
parties that may conflict with the rights granted herein. If the laws of any
country included in the Territory require that a trademark be registered prior
to use in order to fully protect the owner of the trademark, the license granted
herein with respect to the Licensed Xxxx shall not extend to such country until
the Licensed Xxxx has been registered there at Licensor's expense under
appropriate classes relating to the Product. Licensor and Licensee shall
cooperate in constituting Licensee as a registered user (or its equivalent) of
the Licensed Xxxx in each of the countries comprising the Territory in which
such Licensed Xxxx is registered or may be registered, and in which such
registered user filing is required. Any expenses for constituting Licensee as a
registered user in any country shall be borne by Licensee.
(e) Licensor agrees to defend, indemnify and hold Licensee harmless
from any and all costs and expenses (including reasonable attorney's fees),
liabilities, damages or other loss resulting from or relating to an infringement
by the Licensed Marks of any trademark, service xxxx or trade name right of a
third party; provided that (i) Licensor is promptly notified of any and all
threats, claims and proceedings related thereto; provided, further that no delay
on the part of Licensee to notify Licensor shall relieve Licensor from its
indemnity obligations hereunder unless (and then solely to the extent) the
Licensor is thereby damaged; (ii) Licensor shall have sole control of the
defense and/or settlement thereof; (iii) upon Licensor's request and expense,
Licensee immediately ceases use of the offending Licensed Xxxx; and (iv) upon
Licensor's request and expense, Licensee provides Licensor with reasonable
assistance and information available to Licensee for such defense. The foregoing
obligation of Licensor does not apply to the extent any liabilities, costs or
expenses result from (a) Licensee continuing the allegedly infringing activity
after being notified thereof or after being informed of modifications that would
have avoided the alleged infringement or (b) if Licensee's use of the Licensed
Xxxx is not strictly in accordance with the terms and provisions of this
Agreement.
3. QUALITY STANDARDS.
(a) Licensor shall have the right to control the quality of the
Products sold under the Licensed Xxxx solely as provided herein. Licensee shall
furnish to Licensor, at no expense to Licensor, pre-production samples of the
Product in the form that Licensee intends to manufacture and sell under either
of the Licensed Marks to allow Licensor to review the quality of the Product,
which shall be of a quality at least equal to that of Licensee's other fuse
products
2.
in production. Thereafter, upon the request of Licensor, Licensee shall
furnish, at no expense to Licensor, production samples of the Product Licensee
intends to sell under each of the Licensed Marks to allow Licensor to monitor
the quality of the Product.
(b) Licensee agrees to adopt the level of quality as set forth in
Section 3(a) hereof for the Product manufactured and sold under the Licensed
Marks as the minimum standard of quality for the Product.
(c) Licensor shall have the right to request Licensee to make any
changes and/or corrections to the Product manufactured and sold by Licensee
under the Licensed Xxxx as may be required to maintain the quality standard
prescribed by Licensor in Section 3(a) above, and Licensee agrees to make and
incorporate said changes or corrections at Licensee's sole cost and expense.
(d) Licensee shall utilize the Licensed Marks in accordance with
Section 3.5 of the License Agreement. Upon Licensor's request, Licensee shall
furnish to Licensor, at no expense to Licensor, samples of all literature and
materials containing the Licensed Xxxx that Licensee distributes or intends to
distribute. Licensor shall have the right to control the quality of all
marketing materials bearing the Licensed Xxxx and Licensee's use of the Licensed
Xxxx solely as provided herein. If Licensor believes that the Licensed Xxxx is
being used in a manner that could diminish License's rights in or protection of
the Licensed xxxx, Licensee agrees, at Licensee's sole cost and expense, to make
whatever reasonable changes and/or corrections Licensor deems necessary to
protect the Licensed Xxxx.
(e) Licensee agrees that it shall not engage, participate or
otherwise become involved in any activity or course of action that diminishes
and/or tarnishes the image and/or reputation of the Licensed Marks.
(f) Licensee agrees to comply with all applicable local, state,
federal and foreign laws and, at all times, to conduct its activities under this
Agreement in a lawful manner.
(g) Licensee agrees to use the Licensed Marks in accordance with and
only on or in connection with the Product.
4. USE AND DISPLAY OF LICENSED XXXX.
(a) Licensee acknowledges and agrees that the presentation and image
of the Licensed Marks should be uniform and consistent with respect to all
services, activities and products associated with the Licensed Marks.
Accordingly, Licensee agrees to use the Licensed Marks solely in the manner
which Licensor shall specify from time to time in Licensor's sole discretion. In
particular, Licensee agrees to use the Licensed Marks as adjectives, coupled at
least the first time they are used in marketing material, brochures,
advertisements, manuals or other documents with a generic term (for example:
SurgX-Registered Trademark- liquid) and not as verbs or nouns.
(b) All usage by Licensee of the Licensed Marks shall include the
registered or common law trademark symbol and shall be in the following form, as
appropriate: SurgX-Registered Trademark- or SurgeTape-TM-. All marketing
materials printed, distributed or electronically transmitted by
3.
Licensee and containing the Licensed Marks shall include the appropriate one
of the following notices:
1) SurgX-Registered Trademark- is a registered trademark of SurgX
Corporation, or
2) SurgeTape-TM- is a trademark of SurgX Corporation.
5. TERM AND TERMINATION.
(a) This Agreement shall commence on the Effective Date and shall
continue in effect for a period coterminous with the term of the License
Agreement, unless earlier terminated in accordance with the terms and conditions
set forth herein.
(b) This Agreement shall automatically terminate upon termination
(for whatever reason) of the License Agreement. If under the License Agreement
Licensor extends to Licensee a sell-off period within which to sell the Product
to certain existing customers of Licensee, Licensee shall have the right to
continue using the Licensed Marks in connection with its marketing and
distribution efforts only for such Products and only for the duration of such
sell-off period.
(c) This Agreement and the license granted herein may be terminated
by Licensor if licensee fails to perform or comply with a material provision of
this Agreement and such breach or default is not cured by Licensee within thirty
(30) days after written notice of termination is received by License.
(d) Except as expressly set forth in Section 5(b) above, Licensee
shall immediately cease all use of the Licensed Xxxx upon expiration or
termination of this Agreement.
6. COOPERATION AND PROTECTION.
(a) Licensee agrees to reasonably cooperate with and assist Licensor
in protecting and defending the Licensed Marks and shall promptly notify
Licensor in writing of any infringements, claims or actions by others (which
come to the attention of Licensee) in derogation of either of the Licensee
Marks; PROVIDED, HOWEVER, that Licensor shall have the sole right to determine
whether any action shall be taken on account of any such infringement, claim or
action. Licensee shall not take any action on account of any such infringement,
claim or action without the prior written consent of Licensor.
(b) Licensee agrees not to apply for registration of the Licensed
Xxxx (or any xxxx confusingly similar thereto) anywhere in the Territory.
Licensor may elect to apply for registration of the Licensed xxxx in a
particular country(ies) within the Territory at its expense, and, in such event
and if applicable, Licensee agrees to reasonably assist and cooperate with
Licensor in connection therewith.
7. INDEMNIFICATION.
Licensee agrees to defend, indemnify and hold Licensor harmless from and
against any and all costs and expenses (including reasonable attorneys' fees),
liabilities, damages or other
4.
loss arising out of Licensee's actions or omission to act under this Agreement
or Licensee's organization, business or activities.
8. INDEPENDENT CONTRACTORS.
The parties hereto are independent contractors and are not partners, joint
venturers or otherwise affiliated, and neither party has any right or authority
to bind the other in any way.
9. ASSIGNMENT.
Licensee may not assign this Agreement or any of its rights or obligations
under this Agreement without the prior written consent of Licensor; PROVIDED,
HOWEVER, Licensee may assign or delegate any of its rights or obligations under
this Agreement to an Affiliate with notice to Licensor (and without Licensor's
consent), provided Licensee remains liable for its performance under this
Agreement.
10. NOTICE.
Any notice pursuant to this Agreement shall be in writing and shall be
deemed given (i) when delivered by hand or mail, (ii) when transmitted by
telecopies, with confirmation of receipt; provided that a copy is sent at about
the same time by registered or certified mail, return receipt requested, or
(iii) three (3) days after being sent by Express Mail, Federal Express or other
express delivery service, to the addressee at the following addresses or
telecopier numbers (or to such other address or telecopier number as a party may
specify from time to time by notice):
If to Licensor: SurgX Corporation
Attention: President
0000 Xxxxxx Xxxxxx
Xxxxxxx, XX 00000
Facsimile: (000) 000-0000
If to Licensee: Bussmann Division of XxXxxx-Xxxxxx Company
Attention: President
000 Xxx Xxxxx Xxxx
Xxxxxxxxxx, XX 00000
Facsimile: (000) 000-0000
with copy to: Xxxxxx Industries, Inc.
Attention: General Counsel
X.X. Xxx 0000
Xxxxxxx, XX 00000
Facsimile: (000) 000-0000
11. GENERAL.
(a) AMENDMENT, MODIFICATION AND WAIVER. The failure of either party
to enforce its rights or to require performance by the other party of any term
or condition of this
5.
Agreement shall not be construed as a waiver of such rights or of its right to
require future performance of that term or condition. Any amendment or
modification of this Agreement or any waiver of any breach of any term or
condition of this Agreement must be in a writing signed by both parties in
order to be effective, and any such waiver shall not be construed as a waiver
of any continuing or succeeding breach of such term or condition, a waiver of
the term or condition itself or a waiver of any right under this Agreement.
(b) GOVERNING LAW. This Agreement shall be governed and interpreted
under the laws of the State of Delaware without regard to the conflicts of
interest provisions thereof.
(c) HEADINGS. Headings and captions are for convenience of reference
only and shall not be deemed to interpret, supersede or modify any provision of
this Agreement.
(d) SEVERABILITY. In the event that any provision of this Agreement
shall be determined to be illegal or unenforceable, that provision will be
limited or eliminated to the minimum extent necessary so that this Agreement
shall otherwise remain in full force and effect and enforceable.
(e) ENTIRE AGREEMENT. Upon execution by both parties, this Agreement
shall constitute the entire agreement between the parties with respect to the
subject matter hereof and supersedes all discussions, negotiations, agreements
and past dealings, either oral or written, between or among the parties relating
to the subject matter hereof, including but not limited to the Trademark
Agreement having an Effective Date of _______________, 1996 by and between the
parties hereto.
(f) DISPUTE RESOLUTION. Any dispute or claim arising out of, or in
connection with, this Agreement which is to settled to the mutual satisfaction
of the parties within thirty (30) days (or such longer period as may be mutually
agreed upon) from the date that either party informs the other in writing that
such dispute or disagreement exists, shall be submitted to mediation conducted
by a mediator mutually acceptable to the parties. In the event the parties
cannot resolve the dispute or claim through mediation, then the claim or dispute
shall be finally settled by binding arbitration in the counties of Alameda, San
Mateo or Santa Clara, California, in accordance with the rules of the American
Arbitration Association by three (3) arbitrators appointed in accordance with
said rules in effect on the date that such notice is given. The decision of the
arbitrators shall be final and binding upon the parties and judgment upon any
award rendered by all or a majority of the arbitrators may be entered in any
court of competent jurisdiction. Each party shall bear the cost of preparing its
case. The cost of the arbitration, including the fees and expenses of the
arbitrators, will be shared equally by the parties unless the arbitrators' award
otherwise provides. The parties agree that, any provision of applicable law
notwithstanding, they will not request, and the arbitrators shall not have
authority to award punitive damages against any party or parties. Either party
may request a court to provide interim or provisional relief and such a request
shall not be deemed incompatible with the agreement to arbitrate or as a waiver
of that agreement.
(g) SURVIVAL. Sections 2(e), 5(b), 6(b), 7, 1 l(b) and 1 l(f) hereof
shall survive the termination of this Agreement.
6.
(h) COUNTERPARTS. This Agreement may be executed in any number of
counterparts with the same effect as if the signatures to each counterpart were
upon a single instrument, and all such counterparts together shall be deemed an
original of this Agreement.
IN WITNESS WHEREOF, the parties hereto have each caused this Agreement to
be executed by their authorized representatives as of the date first above
written.
SURGX CORPORATION XXXXXX-XXXXXX COMPANY
By By
Printed Name Printed Name
Title Title
7.
ATTACHMENT 4.1
DELIVERY SCHEDULE FOR
TECHNICAL INFORMATION
1. SurgX Specification and Manufacturing Procedures Control Documents
2. R5-11 Environmental Test Results
3. SurgX ESD QC Test Procedure
All items to be delivered on or before July 22, 1996.
ATTACHMENT 9.1
526 0848 Foldback Switching Material and Devices
514 2263 Surface Mount Device with Overvoltage Protection Feature
5189 387 Surface Mount Device with Foldback Switching Overvoltage
Protection Feature
506 8634 Overvoltage Protection Device and Material
497 7357 Overvoltage Protection Device and Material
524 8517 Paintable/Coatable Overvoltage Protection Devices and Devices
Made Therefrom
ATTACHMENT 11.1
Licensor's cost of the SurgeTape Material shall equal Licensor's standard costs
for the SurgeTape Material including direct and indirect labor and associated
fringe benefits, scrap, perishable tooling, supplies, and maintenance on
machinery and equipment. Only costs directly associated with the manufacture of
SurgeTape Material will be included in standard costs.
ESCROW AGREEMENT
BETWEEN
SURGX CORPORATION
(LICENSOR)
AND
XXXXXX-XXXXXX COMPANY
(LICENSEE)
AND
BURNS, DOANE, XXXXXXX & XXXXXX
(ESCROW AGENT)
ESCROW AGREEMENT
TABLE OF CONTENTS
PAGE
1. Deposits. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
2. Representations of Licensor to Licensee . . . . . . . . . . . . . . . 2
3. Notice of Default . . . . . . . . . . . . . . . . . . . . . . . . . . 2
4. Disputes. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
5. Payment to Escrow Agent . . . . . . . . . . . . . . . . . . . . . . . 3
6. Termination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
7. Waiver, Amendment or Modification; Severability . . . . . . . . . . . 3
8. Notices . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
9. Limitation on Escrow Agent's Responsibility and Liability . . . . . . 3
10. Counterparts. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Schedule A Description of Materials Containing the Escrow Information
Relating to the Manufacture of the Liquid Polymer Material
and SurgeTape
ESCROW AGREEMENT
ESCROW AGREEMENT dated as of July 12, 1996 by and among SurgX Corporation,
having its principal offices at 00000 Xxxxxxx Xxxxxxx, Xxxxxxx, Xxxxxxxxxx
(hereinafter the "Licensor"); XxXxxx-Xxxxxx Company, a Delaware corporation
having its principal offices at 000 Xxx Xxxxx Xxxx Xxxxxxxxxx, Xxxxxxxx
(hereinafter the "Licensee"); and Burns, Doane, Xxxxxxx & Xxxxxx, LLP, a law
firm having an office at 0000 Xxxx Xxxx Xxxx, Xxxxxxxx 0, Xxxxx 000, Xxxxx Xxxx,
Xxxxxxxxxx (hereinafter the "Escrow Agent").
WITNESSETH:
WHEREAS, the Licensor and the Licensee have entered into a Intellectual
Property Rights License ("License Agreement"), a copy of which is appended
hereto and made a part hereof, pursuant to which the Licensor has agreed to
license to the Licensee patents, patent applications, information, technology
and rights relating to Licensed Products which incorporate the SurgeTape
Material; and
WHEREAS, it is the policy of the Licensor not to disclose the information
to allow another party to self-manufacture the SurgeTape Material including
technical and production know-how, drawings, designs, specifications, formulas,
data, trade secrets and other information relating to the manufacture of the
SurgeTape Material ("Escrow Information") except as provided in an applicable
Escrow Agreement; and
WHEREAS, Licensor and Licensee agree that upon the occurrence of certain
events described in Section 3(a) hereof, the Licensee shall be able to obtain
the Escrow Information for the SurgeTape Material, and accordingly, the Licensor
agrees to deliver said Escrow Information to the Escrow Agent; and
WHEREAS, capitalized terms not otherwise defined herein shall have the
meaning set forth in the License Agreement;
NOW, THEREFORE, in consideration of the mutual covenants contained herein
and for other valuable consideration, the adequacy and receipt of which are
hereby acknowledged, the Licensor, the Licensee and the Escrow Agent hereby act
and agree as follows:
1. DEPOSITS
The Escrow Agent agrees to accept from the Licensor the Escrow Information
(as more fully described in Schedule A hereto) and revisions thereof as provided
in Section 2 hereof. The Escrow Agent will issue to the Licensor a receipt for
the Escrow Information upon delivery. The Escrow Information held by the Escrow
Agent shall remain the exclusive property of the Licensor, and the Escrow Agent
shall not use the Escrow Information or disclose the same to any third party
except as specifically provided for herein. The Escrow Agent will hold the
Escrow Information in safekeeping at its offices hereinabove indicated unless
and until the Escrow Agent receives notice pursuant to the terms of this
Agreement that the Escrow Agent is to deliver the
Escrow Information to Licensee, in which case the Escrow Agent shall deliver
the Escrow Information to Licensee, subject, however, to the provisions of
this Escrow Agreement.
2. REPRESENTATIONS OF LICENSOR TO LICENSEE
Licensor represents and warrants to Licensee that: (i) the Escrow
Information constitutes all of the information necessary to allow a reasonably
skilled engineer, without reference to any other material or the help of any
other person to manufacture the SurgeTape Material; and (ii) Licensor will
promptly supplement the Escrow Information delivered hereunder with all
Improvements thereof developed by Licensor from time to time pursuant to the
License Agreement so that the Escrow Information constitutes the most current
information available relating to the manufacture of the SurgeTape Material.
3. NOTICE OF DEFAULT
(a) The Licensor shall be deemed to be in default of its
responsibilities to Licensee for purposes of this Escrow Agreement if: (i)
Licensor fails to meet the obligations referred to in Section 11.3(i) of the
License Agreement; (ii) Licensor becomes insolvent, or a case or proceeding
under bankruptcy, insolvency or similar law is commenced by or against Licensor
and is not dismissed within 45 days or Licensor makes a general assignment for
the benefit of creditors; or (iii) if any event of force majeure disrupts the
supply of SurgeTape Material to Licensee which disruption continues for a period
of 60 days and Licensor fails to find an alternate source to supply the
SurgeTape Material to Licensee or allow Licensee to self-manufacture the
SurgeTape Material. Licensee shall give a sworn statement (the "Notice of
Default") to Licensor of any such default by the Licensor stating that such
default has not been cured with a copy of such notice to the Escrow Agent.
(b) If the Licensor desires to dispute the Notice of Default, the
Licensor shall, within ten business (10) days after the receipt of the copy of
the Notice of Default from the Licensee, deliver to Licensee a sworn statement
(the "Affidavit") saying that no default has occurred or such default has been
cured and Licensor shall provide a copy of such Affidavit to the Escrow Agent,
whereupon the provisions of Section 4 hereof will become applicable. If the
Escrow Agent receives the Affidavit within said ten (10) business days, the
Escrow Agent shall continue to hold the Escrow Information in accordance with
this Escrow Agreement. If the Escrow Agent does not receive the Affidavit within
said ten (10) business days, the Escrow Agent is authorized and directed to
deliver the Escrow Information to the Licensee.
(c) Following a release of the Escrow Information as provided in
Section 3, Licensee shall have the non-exclusive right to use the released
material as and only as authorized by Section 11 of the License Agreement.
Additionally, Licensee shall be required to maintain the confidentiality of the
related materials and technology in accordance with the terms of the License
Agreement.
4. DISPUTES
(a) In the event that Licensor files the Affidavit with the Escrow
Agent in the manner and within the time period set forth in Section 3(b) hereof,
the Escrow Agent shall not release the Escrow Information to Licensee except in
accordance with (i) a final decision of the
2.
arbitration panel as hereinafter provided, or (ii) receipt of an agreement
with notarized signatures of both Licensor and Licensee, authorizing the
release of the Escrow Information to Licensee.
(b) Disputes arising under this Agreement shall be referred
immediately to, and finally settled by, binding arbitration pursuant to the
provisions of Section 20 of the License Agreement. The Escrow Agent shall give
prompt effect to any authenticated arbitration award. This agreement to
arbitrate shall survive termination of this Agreement.
5. PAYMENT TO ESCROW AGENT
As payment for its services hereunder, the Licensor shall reimburse the
Escrow Agent for its reasonable out-of-pocket expenses incurred in connection
with the discharge by the Escrow Agent of its duties and responsibilities under
this Escrow Agreement.
6. TERMINATION
This Escrow Agreement shall terminate on the termination of the License
Agreement or upon the mutual written agreement of Licensor and Licensee.
7. WAIVER, AMENDMENT OR MODIFICATION; SEVERABILITY
This Escrow Agreement shall not be waived, amended, or modified except by
the written agreement of all the parties hereto. Any invalidity, in whole or in
part, of any provision of this Escrow Agreement shall not affect the validity of
any other of its provisions.
8. NOTICES
All notices required to be given hereunder shall be in writing and shall be
deemed given if delivered personally (upon recipient's actual receipt), if
mailed by certified or registered mail, return receipt requested (upon the date
of delivery to recipient), or if by nationally recognized air courier which
confirms delivery (upon date of delivery to the recipient), to the parties at
their respective addresses hereinabove written, or at such other address as
shall be specified hereinabove in writing to all other parties.
9. LIMITATION ON ESCROW AGENT'S RESPONSIBILITY AND LIABILITY
(a) The Escrow Agent shall maintain the Escrow Information in a safe
and shall provide the same degree of care for the Escrow Information as it
maintains for its valuable documents and those of its customers lodged in the
same location.
(b) The Escrow Agent shall be protected in acting upon any written
notice, request, waiver, consent, receipt or other paper or document furnished
to it, not only in assuming its due execution and the validity and effectiveness
of its provisions but also as to the truth and acceptability of any information
therein contained, which it in good faith believes to be genuine and what it
purports to be.
(c) In no event shall the Escrow Agent be liable for any act or
failure to act under the provisions of this Escrow Agreement except where its
acts are the result of its gross
3.
negligence or willful misconduct. The Escrow Agent shall have no duties except
those which are expressly set forth herein, and it shall not be bound by any
notice of a claim, or demand with respect thereto, or any waiver,
notification, amendment, termination or rescission of this Escrow Agreement,
unless in writing received by it, and, if its duties are affected, unless it
shall have given its prior written consent thereto.
(d) The Licensor and Licensee hereby agree, jointly and severally, to
indemnify the Escrow Agent against any loss, liability, or damage (other than
any caused by the gross negligence or willful misconduct of the Escrow Agent),
including reasonable costs of litigation and counsel fees, arising from and in
connection with the performance of its duties under this Agreement. The Licensor
and Licensee will not bring a suit or file a claim against the Escrow Agent for
any act or failure to act under the provisions of this Escrow Agreement except
where its acts are the result of its gross negligence or willful misconduct.
10. COUNTERPARTS
This Escrow Agreement may be executed in any number of counterparts with
the same effect as if the signatures to each counterpart were upon a single
instrument, and all such counterparts together shall be deemed an original of
this Escrow Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Escrow Agreement to
be duly executed as of the year and date first above written.
SURGX CORPORATION ("LICENSOR")
Attest:
By:
--------------------------------- ------------------------------
XXXXXX-XXXXXX COMPANY ("LICENSEE")
Attest:
By:
--------------------------------- ------------------------------
BURNS, DOANE, XXXXXXX & XXXXXX
("ESCROW AGENT")
Attest:
By:
--------------------------------- ------------------------------
4.
