EXHIBIT 10.4C
***: CERTAIN MATERIAL HAS BEEN OMITTED PURSUANT TO A REQUEST FOR CONFIDENTIAL
TREATMENT. SUCH OMITTED MATERIAL HAS BEEN FILED WITH THE SECURITIES EXCHANGE
COMMISSION.
TECHNOLOGY LICENSE AND SUPPLY AGREEMENT
This Technology License and Supply Agreement is made and entered into
by and between NDC, Automation, Inc., a Delaware corporation, with its principal
place of business at 0000 Xxxxxxx Xxxxx, Xxxxxxxxx, Xxxxx Xxxxxxxx 00000
("SUPPLIER") and Mentor AGVS, Division of Xxxxxx-Xxxxxx Corporation, an Ohio
corporation, with its principal place of business located at 0000 Xxxxxxxx
Xxxxxxx, Xxxxxxxxxxxx Xxxxxxx, XX 00000, "BUYER") as of the 1st day of December,
1999.
WHEREAS, SUPPLIER is the exclusive licensee in North America of certain
patents, software and know-how related to automatic guided vehicle systems and
is the exclusive distributor in North America for certain control components and
equipment based on such patents, software and know-how which has been designed
by, manufactured for, and sold by NDC Xxxxxxx et Xxxxxxxx XX ("NDC"), a Swedish
company; and
WHEREAS, BUYER designs, manufactures (or has manufactured), installs
and services complete automatic guided vehicle systems ("AGVS"); and
WHEREAS, BUYER desires to use SUPPLIER's know-how, support and AGVS
control components and equipment in BUYER's AGVS; and
WHEREAS, the purpose of this agreement is to set forth the terms and
conditions pursuant to which SUPPLIER shall license its technology and supply
its products to BUYER and support BUYER in its use of the same.
NOW THEREFORE, in consideration of these premises, the covenants
exchanged herein and other good and valuable consideration, the parties agree as
follows:
A G R E E M E N T
1 Grant of License.
1.1 Subject to the terms and conditions of this Agreement and during its Term,
SUPPLIER grants to BUYER and BUYER accepts a non-exclusive license and right to
use SUPPLIER's
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Technology (as hereinafter defined) and AGVS control components
and equipment within the Territory (as hereinafter defined) for the following
purposes:
(1) to market, sell, design, manufacture, assemble, install and
set-up and service AGVS for end-users; notwithstanding the
above, BUYER may sell AGVS to end- users outside the
Territory, using SUPPLIER's Technology, AGVS control
components and equipment, provided that design, manufacturing
and assembly have been done within the Territory
(2) to sublicense third party contractors at its direction to
manufacture, assemble, install, set-up and service AGVS
designed and sold by BUYER.
1.2 The "SUPPLIER's Technology" shall consist of all patents, information,
processes, solutions, techniques, software and documentation licensed to or and
owned by SUPPLIER which relate to any of the navigation, control communication,
or decision-making functions of an AGVS or the design, use, manufacture,
installation, set-up or servicing of an AGVS as the same now exists or may be
developed or acquired by or licensed to SUPPLIER during the Term hereof.
1.3 The "Territory" shall consist of the countries of North America.
2 License Fee.
BUYER shall pay to SUPPLIER an annual license fee of *** payable as follows:
(1) The first annual license fee shall be due and payable upon
execution of this Agreement;
(2) subsequent annual license fees shall be due and payable on
each Anniversary of the date of this Agreement.
3. Performance Credits.
3.1 BUYER agrees to order and accept delivery for engineering, support services
and AGVS control components and equipment totaling at least *** in each Contract
Year during the Term of this Agreement. If BUYER fails to meet this minimum,
SUPPLIER may terminate the Agreement in accordance with paragraph 5.3.
3.2 SUPPLIER will grant to BUYER a *** performance credit in each Contract Year
of this Agreement if SUPPLIER has invoiced BUYER *** or more during the previous
Contract Year, and a *** performance credit in each Contract Year of this
Agreement if SUPPLIER has
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invoiced BUYER *** or more during the previous Contract Year for products and
services, including but not limited to AGVS control components and equipment,
motors and drives, batteries and chargers, etc.
3.3 SUPPLIER shall notify BUYER as to the performance credit earned with respect
to the sales made in any Contract Year no later than one month after the
contract year ends.
3.4 BUYER shall be entitled to purchase AGVS control components, equipment,
engineering services, training and other support from SUPPLIER according to the
discount and pricing schedule attached hereto (Exhibit 1). SUPPLIER reserves the
right to revise its prices annually upon giving BUYER sixty (60) days prior
written notice.
3.5 BUYER shall also be entitled to purchase spare parts and services under a
separate Service & Support Agreement and SUPPLIER agrees to negotiate the terms
of such an agreement in good faith with BUYER.
4 Obligations of the Parties.
4.1 SUPPLIER shall provide, upon reasonable advance request and at a mutually
agreeable time, up-date training at rates according to Exhibit 1. SUPPLIER will
also facilitate participation at NDC's scheduled courses in Sweden for BUYER's
qualified employees.
4.2 SUPPLIER shall provide software and upgrades of such software at terms in
accordance with Exhibit 1, as the same may be released generally by SUPPLIER
from time to time.
4.3 BUYER shall pay the travel and living expenses of its personnel when
receiving training or assistance, and BUYER shall reimburse SUPPLIER for its
reasonable out-of-pocket expenses when traveling to provide training or other
support.
5 Term and Termination.
5.1 This Agreement shall be deemed effective from December 1, 1999 upon
execution and shall continue in full force and effect until November 30, 2002,
(the "Term") unless sooner terminated or extended pursuant hereto. This
Agreement shall be automatically extended for successive additional terms of one
year each (each an additional "Term') unless either party, at least ninety (90)
days prior to the expiration of the then current Term gives notice to the other
that the Agreement shall not be renewed.
5.2 The period from December 1 to the following November 30 during any Term
shall be known as a Contract Year.
5.3 This Agreement may be terminated by either party if the other commits a
material breach of this Agreement and does not cure such breach within thirty
(30) days after receiving notice
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of the breach and the sender's intent to terminate or immediately upon giving
notice in the event the receiving party ceases business as a going concern,
assigns this Agreement in violation of its terms, files for bankruptcy or for
the appointment of a trustee, receiver, conservator or the like of its business
or assets, dissolves or adopts a plan of dissolution or liquidation.
5.4 This Agreement may also be terminated by mutual, written consent between the
parties.
6 Ownership and Confidentiality.
6.1 All AGVS Technology provided to BUYER by SUPPLIER shall be and remain the
exclusive property of SUPPLIER, and BUYER shall not acquire any right, title or
interest in the same, in the name and style "SUPPLIER" or in the goodwill
thereof.
6.2 BUYER shall and hereby does grant to SUPPLIER, its successors and assigns, a
perpetual, irrevocable, non-exclusive license and right with right to sublicense
to use all improvements to the SUPPLIER Technology and all inventions,
discoveries, patents and information, whether patented or not, which relate to
SUPPLIER or derive from SUPPLIER Technology which it develops, creates or
acquires pursuant to a development contract during the Term of this Agreement,
at terms mutually agreed in writing between the parties.
6.3 BUYER shall not use, copy or distribute SUPPLIER Technology except as
expressly authorized hereby.
6.4 BUYER shall use efforts no less stringent then it uses to protect its own
valuable proprietary information and, in any event, no less than reasonable to
protect the confidentiality of all SUPPLIER Technology. BUYER shall limit
disclosure of SUPPLIER Technology to its own employees who have a need to know
and to outside contractors, consultants or sublicensees who are bound, in
writing, to protect the confidentiality and proprietary nature of the SUPPLIER
Technology and not to use it except in support of BUYER's AGVS projects. Such
writings shall be for SUPPLIER's benefit and may be enforced by it. The
foregoing obligations shall not apply to information which is or becomes
publicly known through no act or omission of BUYER or its contractors,
representatives or sublicensees.
6.5 BUYER shall return all expressions or tangible recordings of AGVS Technology
to SUPPLIER upon the expiration or termination of this Agreement for any reason.
7 General.
7.1 Any notice required or contemplated by this agreement shall be sufficient if
in writing and delivered personally, by courier service such as Federal Express
or if deposited with the U.S. Postal Service, first class, certified or
registered mail, postage paid, addressed as follows or to such other address as
a party may give to the other by notice:
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If to SUPPLIER: NDC Automation, Inc.
0000 Xxxxxxx Xxxxx
Xxxxxxxxx, Xxxxx Xxxxxxxx 00000
Attention: Xxxxx Xxxxxxxxx, President
If to BUYER: MENTOR AGVS
0000 Xxxxxxxx Xxxxxxx
Xxxxxxxxxxxx Xxxxxxx, XX 00000
Attention: Xxxxxxx Xxxxx, Vice President
7.2 All sales of AGVS control components and equipment and engineering services
shall be governed exclusively by the terms of the relevant purchase order and by
SUPPLIER's standard terms and conditions of sale, copies of which are attached
and incorporated herein by reference (Exhibits 2 and 3).
7.3 Neither party may assign this Agreement without the express, prior consent
of the other party. Any purported assignment in violation of this provision
shall be void. Assignment shall include any assignment by operation of law,
including merger.
7.4 The relationship created by this Agreement is solely that of
Supplier/Licensor and Buyer/Licensee. Neither party shall be nor hold itself out
as the legal representative of the other, and no relationship of principal and
agent, franchisor and franchisee, employer and employee is created hereby.
7.5 The failure or delay by one party in enforcing its rights hereunder with
respect to any breach or failure of performance by the other shall not be deemed
a waiver; and the waiver by one party of any right or remedy hereunder on one
occasion shall not be deemed a waiver of any other right or remedy or on any
other occasion.
7.6 This Agreement and any claim or controversy arising out of or related to it
shall be governed exclusively by the domestic law of the State of North
Carolina.
7.7 This Agreement replaces any and all prior agreements and constitutes the
entire expression of agreement between the parties with respect to its terms,
understandings, statements and representations being merged herein. It may not
be amended or modified orally, but only by a written agreement signed by both
parties. Each party represents that the other has not made any statement or
premise on which it has relied which is not expressed herein.
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IN WITNESS WHEREOF, the parties have executed this Agreement by the signature of
their duly authorized representatives as of the date first above appearing.
MENTOR AGVS NDC AUTOMATION, INC.
By: /s/ Xxxxx Steel By: /s/ Xxxxx Xxxxxxxxx
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Title: President Title: President
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