Exhibit 10.31
DEFINITIVE AGREEMENT
BETWEEN
SNAP-ON TECHNOLOGIES, INC.
(SNAP-ON)
AND
IMAGE GUIDED TECHNOLOGIES, INC.
(IGT)
Dated: June 30, 1999
DEFINITIVE AGREEMENT
SIGNATURE PAGE
ACKNOWLEDGEMENT
Each party acknowledges that it has read these Agreements, understands them,
and agrees to be bound by their terms.
In witness whereof, the parties have caused this Definitive Agreement to be
executed as of this 30th day of June, 1999.
IMAGE GUIDED TECHNOLOGIES, INC. SNAP-ON TECHNOLOGIES, INC.
By By
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Typed Name Typed Name
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Title Title
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Contact Contact
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Phone # ( ) Phone # ( )
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DEFINITIVE AGREEMENT
GENERAL TERMS
This definitive agreement ("Definitive Agreement") is entered into this 30th
day of June, 1999 and is by and between Snap-on Technologies, Inc.
("Snap-on") and Image Guided Technologies, Inc. ("IGT") and is intended to
establish a new relationship between the parties for the purposes of having
IGT transition to Snap-on, manufacturing and use rights to certain
intellectual property defined herein, exclusively, within a defined field of
use, so as to allow Snap-on to internalize the manufacture of certain IGT
localizers currently manufactured by IGT for Snap-on.
This document is intended as the Definitive Agreement between the parties and
will include a "Defined Field Patent License Agreement", a "Software License
Agreement", a "Manufacturing Agreement", and a "Consulting Agreement" to
allow IGT to provide maintenance services to Snap-on from date of execution
hereof, through December 31, 1999.
This Definitive Agreement contains general terms and conditions applicable to
each above referenced agreement and each agreement, intended to be a part of
the Definitive Agreement, is herein incorporated by reference (the Definitive
Agreement, and each of the above referenced agreements are sometimes
collectively herein referred to as the "Agreements"), and execution of the
signature cover page hereof is evidence of acceptance of all terms and
conditions of these Agreements.
In the event of any conflict between the terms of this Definitive Agreement
and the individual terms set forth in any of the above referenced single
agreements the terms of the Definitive Agreement shall govern. Any questions
or matters arising under these Agreements as to the validity, construction,
or performance hereof shall be determined in accordance with the laws of the
State of Illinois, without regard to its conflict of laws principles.
1. COLLECTIVE DEFINITIONS
Each agreement contained within this Definitive Agreement contains
definitions specific to that agreement. The parties agree that the following
definitions shall apply to all the Agreements.
1.1 "Associated Documentation" shall mean the IGT documentation listed in
Schedule "B" hereof.
1.2 "Licensed Field" shall mean uses directly and exclusively pertaining
to design, manufacture, maintenance and repair of automobiles, trucks and
golf carts.
1.3 "Licensed Products" shall mean any and all products that are within
the scope of the Patents and/or Programs, and/or the Technology defined
hereinbelow, but limited to use within the Licensed Field.
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1.4 "Patents" shall mean those patents recited in the DEFINED PATENT
LICENSE AGREEMENT (EXCLUSIVE), and as more fully set forth in Schedule "B"
hereof.
1.5 "Programs" shall have the meaning set forth in the SOFTWARE LICENSE &
DISTRIBUTION AGREEMENT and as more fully set forth in Schedule "B" hereof.
1.6 "Technology" shall mean all components of the technology (including,
software Programs, firmware, copyrighted materials, trade secrets, mask
works, mechanical designs, subassemblies, circuit designs, hardware, and/or
technical information) licensed hereunder and as more fully set forth in
Schedule "B" hereof.
2. TERM OF AGREEMENT
These Agreements shall terminate at such time as Snap-on shall cease making
or selling Licensed Products.
3. TERMINATION FOR BREACH
Either party may terminate any single Agreement herein, for material breach
of such Agreement, upon sixty (60) days prior written notice, if said breach
is not cured by the other party within such period (or longer period if the
parties agree in writing). It is understood that if Snap-on fails to pay IGT
$500,000 within thirty days of Acceptance of the Programs or commercial use
by Snap-on, pursuant to the Software License and Distribution Agreement,
regardless of cause, IGT shall have the right, in addition to any other
rights and remedies it may have under the Agreements, to return any payments
it received to Snap-on and terminate the Agreements.
4. CONFIDENTIALITY
The parties agree that each of them shall, during the term of these
Agreements and for three (3) years thereafter, take all reasonable steps
necessary to safeguard the secrecy and confidentiality of, and proprietary
rights to, the confidential information of the other party disclosed
hereunder (including, without limitation, the Programs, Associated
Documentation, product plans, marketing and/or other business plans,
technical specifications, marketing information and/or customer lists),
provided such information is in written or other tangible form and is
designated as confidential in writing or, if disclosed orally or visually, is
identified as confidential at the time of disclosure and is described in
writing delivered to the other party within thirty (30) business days after
disclosure. Each party will use all commercially reasonable efforts to
prevent the disclosure of confidential information to any third party
(excluding third parties permitted access to the Source Code under Section
3.2.1 below); provided, however, that this provision shall not be construed
to restrict the disclosure of information which (i) is or becomes publicly
known or readily ascertainable by the public; or (ii) is received by the
recipient from a third party without breaching any obligation owed to the
disclosing party to the extend that disclosure by such recipient is not
restricted by the third party; or (iii) is independently developed by or for
the recipient; or (iv) is lawfully required or requested for use by a
governmental agency or in a court proceeding, or must be disclosed by
operation of law.
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5. CONTINUING OBLIGATIONS
The termination of these Agreements for any reason shall not relieve any
party of (i) its obligations to make payments to the other party which may
have accrued hereunder, but which remained unpaid as of the date of
termination; (ii) to maintain its confidentiality obligations hereunder; and
(iii) to indemnify against certain actions. The termination of these
Agreements shall not in any manner terminate, abrogate, or otherwise limit or
curtail the rights and licenses previously granted to Sublicensees pursuant
to these Agreements, including Snap-on's right to continue to support its
customers for the applications that include or access the Technology.
6. LATE PAYMENTS
Interest shall be assessed on any past due amounts under the Agreements and
shall accrue at the rate of 1.5% per month or the maximum rate permitted by
applicable law.
7. FORCE MAJEURE
Neither party shall be liable for any delays in the performance of any of its
obligations hereunder due to causes beyond its control, including but not
limited to, fire, strike, war, riots, acts of any civil or military
authority, judicial action, acts of God, or other casualty or natural
calamity.
8. INDEPENDENT CONTRACTOR
In making and performing these Agreements, the parties act and shall act at
all times as independent contractors and nothing contained in these
Agreements shall be construed or implied to create an agency, partnership or
employer and employee relationship between Snap-on and IGT, or between any
party hereto and any officer or employee of the other party. At no time shall
either party make commitments or incur any charges or expenses for or in the
name of the other party.
9. SEVERABILITY
The invalidity or unenforceability of one or more provisions of these
Agreements shall not affect the validity or enforceability of any of the
other provisions hereof, and these Agreements shall be construed in all
respects as if such invalid or unenforceable provisions were omitted.
10. ARBITRATION
Except as provided below in the section entitled "Injunctive Relief," all
differences or disputes between the parties hereto pertaining to, relating to
or arising out of these Agreements or the breach thereof shall be finally
settled by arbitration before a single arbitrator knowledgeable in the field
of data processing and software, in accordance with the then-current rules of
the American Arbitration Association ("Rules"). The place of arbitration will
be Chicago, Illinois, by mutual
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consent of the parties hereto. Any judgement rendered by the arbitrators may
be entered in any court having jurisdiction hereof.
11. INJUNCTIVE RELIEF
Each party acknowledges that the other believes that its confidential
information is unique property of extreme value to the other party, and the
unauthorized use or disclosure thereof would cause the other party
irreparable harm that could not be compensated by monetary damages.
Accordingly, each party agrees that, in addition to any other rights and
remedies the aggrieved party may have, the other may seek injunctive and
preliminary relief to remedy any actual or threatened unauthorized use or
disclosure of the other party's confidential information. Each party may also
seek injunctive relief for Patent or copyright infringement.
12. HEADINGS
The heading of the articles and sections used in these Agreements are
included for convenience only and are not used in construing or interpreting
this Agreement.
13. ADVERTISING
It is herein agreed that Snap-on's name will not be used in any written
advertising or marketing promotion of IGT except with Snap-on's prior written
consent. Nothing herein shall prohibit IGT from making appropriate
disclosures for securities law purposes.
14. CONSENT TO BREACH NOT A WAIVER
No terms or provisions hereof shall be deemed waived and no breach excused,
unless such waiver or consent shall be in writing and signed by the party
claimed to have waived or consented. Any consent by any party to, or waiver
of, a breach by the other, whether express or implied, shall not constitute a
consent to, waiver of, or excuse for any other different or subsequent breach.
15. SURVIVAL OF TERMS
The terms, provisions, representations and warranties contained in these
Agreements that by their sense and context are intended to survive the
performance thereof by either or both parties hereunder, shall so survive the
completion of performance and termination of these Agreements, including the
making of any and all payments due hereunder.
16. REPRESENTATIONS AND WARRANTIES OF IGT
Except as may be set forth on a schedule hereto, IGT hereby represents and
warrants to Snap-on that (i) IGT has no knowledge of any threatened or
pending claim alleging the use of Technology, within the scope of any claim
of any IGT Patent, infringes any patent or copyright, or that the Technology
includes one or more trade secrets, or any other proprietary right of any
third party, within the Licensed Field; (ii) IGT owns all right, title and
interest in and to the Technology
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within the Licensed Field, free and clear of all liens, security interests,
charges or encumbrances by third parties; and (iii) IGT has full right, power
and authority to enter into this Agreement and to carry out its obligations
hereunder.
17. LIMITATION OF WARRANTIES
OTHER THAN THE REPRESENTATIONS SET FORTH IN THIS AGREEMENT, IGT MAKES NO
WARRANTIES EXPRESS OR IMPLIED, CONCERNING THE TECHNOLOGY, INCLUDING THE
IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.
IT IS EXPRESSLY AGREED THAT IGT SHALL NOT BE LIABLE, OR IN ANY WAY
RESPONSIBLE FOR THE COMMERCIAL SUCCESS OF THE PROGRAM OR ANY ENHANCEMENT
THEREOF.
18. LIMITATION OF LIABILITY
18.1. EXCEPT FOR VIOLATIONS OF THE LICENSES AND RIGHTS GRANTED HEREUNDER
(INCLUDING, WITHOUT LIMITATION, UNAUTHORIZED DISCLOSURE, COPYING, OR USE OF
THE SOURCE CODE, EACH PARTY AGREES THAT ITS LIABILITY HEREUNDER FOR DAMAGES
OF ANY KIND, WHETHER DIRECT OR INDIRECT AND REGARDLESS OF THE FORM OF ACTION
OR THEORY OF LIABILITY SHALL NOT EXCEED, AS THE CASE MAY BE, THE CHARGES
ACTUALLY PAID OR DUE (OR TO BE DUE UNDER THE APPLICABLE AGREEMENT) AND OWING
HEREUNDER WITH RESPECT TO THE APPLICABLE AGREEMENT. IN NO EVENT SHALL EITHER
PARTY BE LIABLE FOR INDIRECT, SPECIAL, INCIDENTAL, OR CONSEQUENTIAL DAMAGES
HOWEVER INCURRED OR DESIGNATED.
18.2. Notwithstanding the foregoing, each party shall be responsible for
bodily injury or damage to the other party's personnel and physical property
resulting from negligent or intentional acts or omissions of its employees,
agents, or representatives.
19. TRADEMARKS
IGT hereby licenses Snap-on to use it's the IGT xxxx Pixsys-TM- in Snap-on
product and marketing literature only on Products obtained from IGT, provided
Snap-on shall adequately acknowledge and publish IGT ownership of said
trademark. IGT makes no representations or warranties as to it Pixsys-TM-
trademark or the title thereto, the rigHt granted hereunder to use such
trademark is "as is".
Snap-on may license and sell products under any name it deems appropriate
without requirement to acknowledge any IGT orgin.
Snap-on shall use IGT product and corporate name (i) on the documentation it
provides for the Programs; and (ii) on the title screen for the various
application platforms covered under this Agreement.
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20. COPYRIGHTS
Subject to the limitations and agreements contained herein, and to the rights
and licenses granted to Snap-on by these Agreements, IGT shall have sole and
exclusive right, title, and interest in and to its copyright for any and all
elements of the Technology, EXCLUDING specifically any improvements, updates,
enhancements and copies of such improvements, updates, or enhancements made
by or for Snap-on. Snap-on shall reproduce an appropriate IGT copyright
notice on the documentation for the applications covered under these
Agreements and the package and/or media containing the non-excluded
Technology. Snap-on agrees not to delete any IGT copyright notices from any
of the Technology. Snap-on agrees to protect IGT copyrights in the Technology
by taking all reasonable safeguards to protect them as well as its own
copyrights in its application software contemplated hereunder.
IGT agrees to enable Snap-on to register IGT's copyrightable materials
(including maskworks) in IGT's name in the United States of America; provided
the method of such registration is reasonably acceptable to IGT and does not
disclose any confidential or proprietary information of IGT.
21. SALE OR ASSIGNMENT
Except in the case of an assignment to a parent or subsidiary, or purchaser
of all or substantially all of its business assets, or in the case of an
assignment by IGT to a purchaser of all or substantially all its localizer
business, or in the case of a merger between one party and another business
entities neither party may assign, delegate or transfer these Agreements or
any or all of its rights or obligations hereunder, without the prior written
consent of the other party, which consent shall not be unreasonably withheld.
22. ENTIRE AGREEMENT
These Agreements sets forth the entire agreement between the parties hereto
with respect to the subject matter hereof and supersedes any and all prior
agreements, understandings, promises and representations made by either party
to the other concerning the subject matter hereof and the terms applicable
hereto. These Agreements may not be released, discharged, amended or modified
in any manner except by an instrument in writing signed by both parties
hereto.
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II. DEFINED FIELD PATENT LICENSE AND TECHNOLOGY AGREEMENT
(EXCLUSIVE)
THIS AGREEMENT is effective as of June 30, 1999 between a Snap-on
Technologies, Inc. ("Snap-on") and Image Guided Technologies, Inc. ("IGT")
and is appended and incorporated within the Definitive Agreement between the
parties of equal date.
2.1 Background of Agreement
IGT represents that it owns certain U.S. patents as recited herein, and is
prepared to grant an exclusive license thereunder to Snap-on within the
Licensed Field; and
Snap-on wishes to acquire an exclusive license under said Patents and
Technology of IGT for purposes of selling products and services within the
Licensed Field.
2.2 Definitions
As used herein, the following terms shall have the meanings set forth below:
2.2.1 "Patent or Patents" means the following listed patents and/or patent
applications, patents to be issued pursuant thereto, and all divisions,
continuations, and reissues, thereof (see Schedule "W" hereof).
A list of documents reciting Technology owned by IGT, and to be licensed to
Snap-on is attached hereto as Schedule "B".
For purposes of this document, "Technology" shall mean those trade secrets
and know how recited at said Schedule "B".
2.2.2 "Effective Date" shall be the 30th day of June 1999.
2.2.3 "Licensed Territory" means worldwide, meaning anywhere in the world.
2.3 License Grant
IGT hereby grants to Snap-on, only within the Licensed Field and within the
Licensed Territory, a license under said Patents and Technology to make, use,
and sell Licensed Products in any manner deemed appropriate by Snap-on,
including, but not limited to, use in any Snap-on product or service. No
license under said Patents or Technology is granted, and no license should be
implied with respect to activities of Snap-on outside either the Licensed
Field or the Licensed Territory.
The license granted pursuant to this paragraph shall be exclusive within the
Licensed Field, with the right to grant sub-licenses for the term of this
Agreement.
2.4 License Fees and Royalty
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Snap-on shall, as a license fee, pay to IGT, as defined below, the sum of
$500,000 as a one time only fully paid-up license fee. No further payments or
royalties of any kind shall be due to IGT after the above described license
fee has been paid in full as set forth below.
2.5 Sub-licensing
Sub-licensing in the Licensed Field and within the Licensed Territory shall
be the exclusive right of Snap-on. It is the intent of the parties that
sub-licenses shall be available to qualified third parties under fair and
reasonable terms as deemed appropriate by Snap-on in its sole discretion. Any
such Sub-license shall be a non-exclusive license that is licensed only from
Snap-on to third parties in accordance with appropriate license terms.
Snap-on shall supply IGT with a master copy of the license agreement to be
used with Licensed Product licensed by Snap-on to any third party. Any
license agreement entered into between Snap-on and a third party licensee
shall include terms substantially in conformance with the master copy of the
license agreement.
Income received by Snap-on from any said licensed third party shall remain
the sole property of Snap-on.
2.6 Intellectual Property Indemnification
2.6.1 IGT Indemnification. IGT shall defend any suit or proceeding brought
against Snap-on to the extent it is based on a claim that the IGT Product or
any modification of the IGT Product by Snap-on which is within the scope of
any IGT patent claim issued on or prior to the date of these Agreements and
licensed hereunder directly infringes within the Licensed Field a patent or
copyright issued by the United States; provided IGT is notified promptly in
writing and given authority, information and assistance for the defense of
the suit or proceeding. IGT shall pay all damages and costs awarded against
Snap-n in such suit or proceeding or settlement, if IGT has been given full
control of the defense and the negotiations for settlement, if any, of the
suit or proceeding (any settlement shall require the consent of Snap-on which
shall not be unreasonably withheld). If the IGT Product or said modification
is held in such suit or proceeding to directly infringe a patent or copyright
of the United States or is, in IGT's opinion, likely to be held to directly
infringe such a patent or copyright, IGT may, at its option and expense,
either (a) procure for Snap-on the right to continue using the IGT Product,
(b) replace the IGT Product with non-infringing product, (c) modify the IGT
Product so that it becomes a non-infringing product, or (d) require return of
the IGT Product and refund the purchase price for the IGT Product. IGT shall
have no liability to Snap-on if the infringement or claim thereof is based
upon the use of the IGT Product in combination with other products, devices
or software outside the terms of these Agreements. IN NO EVENT SHALL IGT's
OBLIGATIONS UNDER THIS PARAGRAPH EXCEED THE TOTAL ROYALTY DUE FROM SNAP-ON
HEREUNDER. THIS SECTION STATES THE ENTIRE LIABILITY OF IGT FOR PATENT OR
COPYRIGHT INFRINGEMENT UNDER THESE AGREEMENTS.
2.6.2 Snap-on's Indemnification. Except as set forth above, Snap-on shall
defend any suit or proceeding brought against IGT to the extent it is based on a
claim that Snap-on's product (i.e., a
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product other than the IGT Product or said modification) infringes a patent
or copyright issued by the United States; provided that Snap-on is notified
promptly in writing and given authority, information and assistance for the
defense of the suit or proceeding. Snap-on shall pay all damages and costs
awarded against IGT in such suit or proceeding or settlement, if Snap-on has
been given full control of the defense and of the negotiations for the
settlement, if any, of the suit or proceeding (any settlement shall require
the consent of IGT which shall not be unreasonably withheld). IN NO EVENT
SHALL SNAP-ON'S OBLIGATIONS UNDER THIS PARAGRAPH EXCEED THE TOTAL ROYALTY
PAID TO IGT HEREUNDER. THIS SECTION STATES THE ENTIRE LIABILITY OF SNAP-ON
FOR PATENT OR COPYRIGHT INFRINGEMENT UNDER THESE AGREEMENTS WITHIN THE
LICENSED FIELD.
2.6.3 Enforcement of Patent and Copyright. If Snap-on has reason to believe
there exists a bona fide claim against any third party for infringement of
any IGT Patent or copyright licensed hereunder within the Licensed Field,
and, in the event IGT does not agree to prosecute such infringement claim
within sixty days after notice from Snap-on, then Snap-on at its own expense
shall have the right to prosecute such claim in IGT's name if necessary,
subject to consultation with IGT and any decision to settle or abandon the
prosecution shall be made only on consent of both IGT and Snap-on, which
consent shall not be unreasonably withheld.
2.7 Payments
The following schedule shall be used to define the delivery schedule and
payment schedule between the parties.
Payments provided for in this Agreement, when overdue, shall bear interest at
a rate, per annum, equal to two percent (2%) in excess of the Prime Rate
published by the Wall Street Journal at the time such payment is due, and for
the time period until payment is received by IGT.
2.8 Expiration of Patent Rights
The Patent licenses granted hereunder shall be eligible to be bought back
from Snap-on by IGT, at a price to be negotiated, separately as to each
Patent licensed hereunder, after five years from the execution of the
Definitive Agreement, or five years from the issue date thereof, which ever
is later, if Snap-on has not commercialized that Patent within that five-year
period within the Licensed Field. A Patent shall be deemed to have been
commercialized if Snap-on has created a commercial product with such Patent.
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III. SOFTWARE LICENSE & TECHNOLOGY DISTRIBUTION AGREEMENT
THIS AGREEMENT is effective as of June 30, 1999 between a Snap-on
Technologies, Inc. ("Snap-on") and Image Guided Technologies, Inc. ("IGT")
and is appended to and incorporated with that certain Definitive Agreement
between the parties of equal date.
WITNESSETH
WHEREAS IGT is engaged in the business of designing and developing software
and other works of authorship and has developed proprietary software products
and related Technology, collectively called ("Program(s)"); and
WHEREAS, Snap-on wishes to market one or more Programs within the Licensed
Field, in conjunction with various applications and platforms as set forth
herein; and
NOW, THEREFORE, in consideration of the covenants and agreements contained
herein, Snap-on and IGT hereby agree as follows:
3.1. DEFINITIONS
As used in this Agreement, the following words and phrases shall be defined
as follows:
3.1.1 "Program(s)"
Shall mean IGT proprietary software Programs and Associated Documentation as
defined in Schedule B.
3.1.2 "Copy"
Shall mean a single copy of a Program covered under this Agreement.
3.1.3 "Snap-on"
Shall mean Snap-on or any wholly or majority-owed subsidiary or any other
companies in which Snap-on holds a fifty percent (50%) or greater controlling
interest. IGT agrees that Snap-on may, at its option, designate that any such
subsidiary or controlled corporation may exercise the rights granted Snap-on
under this Agreement.
3.1.4 "Distributor"
Shall mean any entity, which is duly authorized by Snap-on to sublicense
and/or manufacture or otherwise reproduce the Programs.
3.1.5 "Sublicensee"
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Shall mean any entity that has been sublicensed by Snap-on or by a
Distributor to use the Programs.
3.1.6 "Transition Plan"
Shall mean the agreed-on transition plan for transfer of the source code and
Technology to Snap-n found in Schedule "A" including timetables, milestones,
and dependencies known to Snap-on and IGT at the time of this Agreement. The
parties may modify the Transition Plan from time-to-time to reflect changes
in timing or additional dependencies upon agreement.
3.1.7 "Acceptance"
Shall mean the process detailed in Section 3.3.1 and 3.3.2 below whereby
Snap-on verifies that the Programs and related Technology as delivered to
Snap-on by IGT (i) substantially conform to the published specifications as
found in the Associated Documentation and/or (ii) provide substantially
equivalent functional access as found in an equivalent Program as marketed by
IGT under the Windows 95 operating system.
3.1.8 "Source Code"
Shall mean the underlying source program listings, algorithms and internal
documentation that are used to generate the Programs in object code form.
3.2. GRANT OF RIGHTS
3.2.1 "SOURCE CODE LICENSE"
(i) Upon execution of this Agreement, subject to Snap-on making payment of
the Source Code License Fee as specified in Schedule "C", IGT grants to
Snap-on a personal, exclusive, non-transferable, fully paid-up license to
use, copy and modify (or have copied and have modified) the Source Code for
the Program solely in connection with the Licensed Products solely for use
within the Licensed Field, including, but not limited to porting, maintenance
and support of the Programs.
Snap-on shall be responsible for preventing the unauthorized disclosure,
copying or use of the Source Code or any part thereof to an unauthorized
third party, and shall be liable for any damages IGT incurs or suffers from
any such unauthorized disclosure, copying or use. Said damages to be limited
to the Source Code license fee as recited herein. Snap-on shall have no
obligation to deliver any enhancement to the Source Code to IGT. It will
further limit the distribution of such Source Code within its organization
too only those with a need to know, will allocate the source code to groups
within its organization to limit any one individual having access to the
source code, and will take all commercially reasonable steps necessary to
prevent its unauthorized disclosure.
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The delivery of Source Code to Snap-on under this Agreement shall be the
version(s) of the Programs current as of the effective date of this
Agreement, and as more fully defined in Schedule "B" hereof.
The Source Code and other deliverables from IGT, including supported
environments as detailed in Schedule "B".
The Programs Source Code, and all modifications made to it (subject to the
limitations in Section 3.2.1), shall at all times remain the trade secret,
confidential and exclusive property of IGT, and the confidentiality
restrictions as to such Program Source Code shall survive during the term of
these Agreements and for five (5) years thereafter.
3.2.2 "INITIAL TRANSITION PROJECT"
Upon execution of this Agreement IGT shall begin the Transition Plan work
specified in the Transition Plan to transfer the Programs to Snap-on. IGT
will supply to Snap-on, at Snap-on's expense, the necessary hardware and
software specified in the Transition Plan or as may be reasonably required by
Snap-on during the course of such Transition work (under the terms of an
appropriate Equipment Loan Agreement).
Snap-on agrees to make the payments specified in Schedule "C" for each
milestone upon Acceptance by Snap-on of the source code version of the
Programs that represent the results of the Transition work to that milestone.
3.2.3 "SUBLICENSING RIGHTS"
IGT grants to Snap-on during the term of this Agreement, a personal,
exclusive right and license to sublicense, manufacture (copy and have
copied), distribute, and market only in conjunction with sales of an Licensed
Product (as defined above), for use exclusively within the Licensed Field:
(a) Snap-on versions of IGT software (in Object Code only) and/or (b) the
Programs (in Object Code only), provided that IGT has performed the
Transition under the rights granted to it under this Agreement. Any such
license or sublicense shall take place (or have previously taken place)
evidenced by a writing (which need not specifically relate to the Programs,
but must conform substantially to the terms of Schedule "H") between Snap-on
and each of such third parties.
3.2.4 "DISTRIBUTORS"
IGT further grants to Snap-on, during the term of this Agreement, the right
to appoint authorized third parties to exercise on behalf of Snap-on the
rights and licenses as set forth in Section 3.2.3 above as to the Programs.
3.2.5 "ASSOCIATED DOCUMENTATION"
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IGT further grants to Snap-on, during the term of this Agreement, a personal,
exclusive, non-transferable, fully paid-up license to use, distribute, copy
and modify (or have copied and have modified), solely in connection with the
distribution of the Licensed Products, only within the Licensed Field, the
Associated Documentation as defined herein).
3.3. DELIVERY AND ACCEPTANCE
3.3.1 "ACCEPTANCE"
Within five (5) business days after IGT sends a notice to Snap-on that it
wishes to begin to achieve the final Transition milestones recited in the
Transition Plan for each of the Programs, IGT shall deliver (a) the relevant
Program to Snap-on in object code form, and (b) the Source Code to the
relevant Program that corresponds to said object code. Thereafter, Snap-on
shall perform such tests as it deems necessary to verify that the specific
Program provides substantially equivalent functionality as does the
equivalent Program as developed and marketed by IGT and substantially
conforms to its published specifications.
When Snap-on verifies that the Transitioned Program provides substantially
equivalent functionality as does the equivalent Program developed and
marketed by IGT, and when Snap-on verifies that it is able to rebuild object
code versions from the Source Code for such Programs, then Snap-on shall
submit to IGT a written Acceptance notice for the specific Program. Upon
acceptance hereunder of all Program(s) source code, payment shall be due from
Snap-on as defined in Schedule "C". If, as a result of such tests Snap-on
finds that the specific Program does not provide such substantially
equivalent functionality, Snap-on shall provide to IGT a written rejection
notice reciting said deficiencies in such functionality.
Unless IGT consents in writing beforehand, such consent not to be
unreasonably withheld, should Snap-on ship or sublicense one or more Programs
to a Sublicensee or Distributor, then Acceptance of the Programs shall be
deemed to have occurred.
A similar process shall be applied as Snap-on verifies that the Transitioned
Technology provides substantially equivalent functionality as does the
equivalent Technology developed and marketed by IGT, and this Acceptance
shall be completed when Snap-on verifies that it is able to build the
Technology in-house.
3.3.2 "CORRECTED VERSIONS"
As soon as reasonably possible following the receipt by IGT of any rejection
notice under 3.3.1 above, IGT shall provide Snap-on with a corrected version
of the specific Program that cures any deficiencies noted in such rejection
notice, at which the Acceptance testing process by Snap-on described in
Section 3.3.1 above shall be reiterated. If after such additional Acceptance
testing, Snap-on again submits a rejection notice to IGT as provided above,
IGT will again submit as soon as reasonably possible another corrected
version of the Programs.
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This submission and correction process shall continue until (i) the specific
Program is Accepted by Snap-on or (ii) until ninety (90) days have passed
after the initial submission of the specific Program for Acceptance, unless,
prior to the expiration of such ninety (90) day period, the parties agree in
writing to extend such period.
At the end of such ninety (90) day period, if the Programs are not Accepted
by Snap-on, and Snap-on has not commercialized a Product incorporating such
Program(s), and the parties have not agreed to extend the period, then, the
parties agree to submit to arbitration as identified in this Agreement. Such
arbitration shall determine the party's rights to return or retain Source
Code for the Program(s), and the other licenses granted under these
Agreements.
3.4. FEES AND PAYMENTS
3.4.1 "FEES"
In consideration for the rights granted Snap-on under this Agreement, Snap-on
agrees to pay the fees specified in Schedule "C".
3.4.2 "PAYMENTS"
Payment by Snap-on of the Source Code License Fee shall be made as specified
in Schedule "C".
All payments shall be made in U.S. dollars.
3.5. SUPPORT AND MAINTENANCE
3.5.1 "TECHNICAL SUPPORT"
For the period from effective date through December 31, 1999 (or any extended
period mutually agreed to by the parties, for IGT to manufacture localizers
for Snap-on), IGT shall provide Snap-on with Extended Support for the
Programs consistent with IGT's Product Support Policy (Schedule "I'"). IGT's
Extended Support obligations to Snap-on may be modified upon mutual written
consent of the parties. These obligations shall not extend to any of the
Programs that are not Accepted by Snap-on as provided hereinabove.
IGT agrees, during the period ending December 31, 1999 (and any extension
thereof as provided herein) to update (in the form of Maintenance Releases)
the Programs, provided that the appropriate Maintenance Fees as per Schedule
"F", have been paid by Snap-on.
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IV.
AGREEMENT FOR CONSULTING SERVICES
BY AND BETWEEN
Image Guided Technologies, Inc.
(Consultant)
AND
Snap-on Technologies, Inc.
(Snap-on)
Dated: June 30, 1999
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AGREEMENT FOR CONSULTING SERVICES
THIS AGREEMENT is effective as of June 30, 1999 between a Snap-on
Technologies, Inc. ("Snap-on") and Image Guided Technologies, Inc. ("IGT")
and is appended to and incorporated within that certain Definitive Agreement
between the parties of equal date.
Subject to the terms and conditions of this Agreement, IGT agrees to provide
and Snap-on agrees to accept the Services recited hereinbelow.
4.1. Definitions
4.1.1. "Services" mean those software maintenance and/or consulting services,
which are more fully described in Work Specifications issued hereunder, for
the fees set forth herein.
4.1.2. "Work Specifications" mean those documents substantially in the form
attached hereto as Exhibit IV-A, with appropriate insertions, issued by
Snap-on and accepted by IGT in reference to this Agreement. Said Work
Specifications are hereby incorporated from time to time into and made a part
of this Agreement by reference, when executed by the parties.
4.2. Scope of Services
No Services shall be provided by virtue of this Agreement alone, but shall
require the issuance and acceptance of one or more said Work Specification.
As appropriate, said Work Specifications shall identify without limitation,
the Services to be performed, results to be achieved the cost, the start
date, and the criteria for completion.
4.3. Term
4.3.1. This Agreement shall be effective when signed by both parties and
thereafter shall remain in effect until December 31, 1999, unless earlier
terminated by either party as provided herein.
4.3.2. Each Work Specification shall be effective when signed by both parties
and thereafter shall remain in effect until terminated as provided herein,
4.4. Personnel, Staffing and Direction
IGT shall provide all necessary personnel, adjudged by IGT and acceptable to
Snap-on as qualified to perform the Services defined in a Work Specification.
The daily activities of IGT's personnel assigned to work with Snap-on in
accordance with the requirements set forth in a Work Specification shall be
directed by Snap-on or by IGT's supervisor acting at the direction of Snap-on.
4.5. Working Arrangement
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4.5.1. The Services provided hereunder shall be performed at either Snap-on's
or IGT's premises, as mutually agreed by the parties.
4.5.2. Snap-on agrees to provide reasonable working space, computer related
resources, materials (i.e. ribbons, paper, etc.), and any other services and
materials which may be necessary in connection with the performance of
Services, including particularly a desk, a phone, and other office and
support services normally provided by Snap-on to Snap-on's own employees of
similar status. Snap-on shall not unreasonably alter the working environment
once established, nor substitute other working arrangements unreasonably
often regardless of relative quality.
4.6. Compensation
Snap-on shall pay IGT for Services provided under each Work Specification (i)
at an hourly rate; (ii) at a flat rate per project, task, or Work
Specification; or (iii) at any other rate mutually agreed upon by Snap-on and
IGT and set forth in the applicable Work Specification. In the event that
payment is based on an hourly rate, Snap-on shall pay IGT for actual hours
spent engaged in providing the Services contemplated by a Work Specification
or actual hours spent engaged in providing support services necessary for the
successful performance of the Product(s) contemplated under a Work
Specification.
4.7. Travel and Other Expenses
4.7.1. Snap-on shall reimburse IGT for all reasonable travel and other
expenses (over and above the normal daily expenses of working and commuting)
in connection with Services furnished under a Work Specification.
4.7.2. All travel and other expenses must be authorized in writing by an
authorized representative of Snap-on prior to same being incurred.
4.8. Taxes
Snap-on shall reimburse IGT for any sales tax, use tax, or any similar fee
levied on Services provided hereunder by IGT, provided said taxes or fees are
paid by IGT and imposed by state or federal law.
4.9. Invoicing and Payment
IGT shall invoice Snap-on for the Services furnished and for the approved
travel and other expenses incurred under a Work Specification during the
preceding month, week or other invoicing period described in the applicable
Work Specification. Snap-on shall pay invoices issued pursuant to this
Agreement within thirty (30) days after the receipt thereof.
4.10. Intentionally Left Blank.
4.11. Confidential Information
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4.11.1 Each party acknowledges that all material and information marked as
"Confidential", "Secret" or containing such other reasonable marking showing
that the materials are to be protected, and which has or will come into the
possession or knowledge of each in connection with this Agreement or the
performance hereof, consists of confidential and proprietary information,
whose disclosure to or use by third parties will be damaging. Both parties,
therefore, agree to hold such material and information in strictest
confidence, not to make use thereof other than for the performance of this
Agreement, nor to release or disclose such information or material to any
persons who have not been officially notified in writing that they are
expressly binding themselves not to improperly use or disclose said
information, provided that such verification shall not relieve the party of
any liability for unauthorized disclosure or use of the confidential
information.
4.11.2. Snap-on and IGT further agree that this Agreement shall not restrict
the rights of IGT, except as specifically acknowledged in writing, to
undertake similar work for other clients either concurrently or in the
future, provided that Snap-on's rights of proprietary information as provided
above are preserved.
4.12. Guarantees
IGT warrants that all Services performed under a Work Specification shall be
performed to the best of its, and its personnel's, ability and in a good
workmanlike manner.
4.13. Excusable Delays
4.13.1. Neither party to this Agreement shall be held liable for failure to
comply with any of the terms of this Agreement when such failure has been
caused solely by fire, war, insurrection, government restrictions, force
majeure (Acts of God) or other causes, beyond the control and not due to the
fault of either party involved, provided such party uses due diligence to
remedy such delay.
4.13.2 It is understood and agreed that the Services provided by IGT
hereunder will be based entirely upon the Snap-on's direction and/or Snap-on
determined specifications, therefore, the Snap-on understands that changes,
including but not limited to changes either in data supplied, requirements,
specifications, or objectives; will cause delays and affect estimates, if
any, of the amount of Services required and their completion dates.
4.14. Termination
4.14.1. This Agreement may be terminated as follows:
(i) By either party, without cause, upon thirty (30) days prior
written notice to the other party on or before December 31, 1999;
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(ii) By either party, in the event that the other party fails to
comply with any material term or condition hereof and such failure is not
remedied within thirty (30) days, after written notice thereof has been given
to the other party;
(iii) By either party, in the event that the other party becomes
insolvent, makes an assignment for the benefit of creditors, suffers or
permits the appointment of a receiver or trustee in bankruptcy or similar
officer for all or parts of its business or assets; or
(iv) By either party, in the event that the other party avails
itself of or becomes subject to any bankruptcy proceeding under federal law
or any statute of any state relating to insolvency or the protection of
rights of creditors.
4.14.2. Each Work Specification may be terminated as follows:
(i) As provided in the applicable Work Specification;
(ii) By either party, upon thirty (30) days prior written notice to
the other party; or
(iii) Automatically, upon completion of the Services and/or delivery
of the Product(s) specified in the applicable Work Specification.
4.14.3. Termination shall in no way relieve either party of duties or
obligations incurred prior to such termination.
4.14.4. Upon termination of this Agreement, each party shall immediately
return to the other, all papers, materials, programs, documentation,
equipment and other property of the other party held by each party for the
purpose of carrying out its obligations hereunder. Each party shall assist
the other party in the orderly termination of this Agreement as may be
necessary for the non-disrupted business continuation of each party.
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