EXHIBIT (e)(12)
CONSULTING AGREEMENT
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THIS AGREEMENT is made as of the 6th day of September, 2001 (the
"Agreement"), by and between Hewlett-PACKARD COMPANY, a Delaware corporation
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("HP", references to HP throughout this Agreement include HP's subsidiaries and
affiliates), and XXXXXXX XXXXX, a resident of Israel residing at 00 Xxxxxx Xxx
Xxx Xxxxxx, Xxx Xxxxx, Xxxxxx ("Xxxxx").
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WHEREAS, Xxxxx is the founder of Indigo N.V., a corporation organized under
the laws of The Netherlands ("Indigo"), an inventor of Indigo's core Liquid
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Electro-Photography technology ("LEP"), and is the prime architect of Indigo's
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business and product strategies;
WHEREAS, HP and Indigo are parties to an Offer Agreement and other
agreements relating thereto (the "Agreements"), dated September 5, 2001,
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pursuant to which, among other things, HP will offer to purchase all of Indigo's
outstanding common shares on the terms and conditions of the Agreements;
WHEREAS, both HP and Xxxxx desire the successful integration of the Indigo
business and operations (the "LEP Business") into HP, the growth of the LEP
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Business following such integration, and the overall future success of HP;
WHEREAS, Xxxxx conceived, made, discovered or developed or was an inventor
of intellectual property related to the LEP Business;
WHEREAS, in furtherance of these common interests and in connection with
the Agreements (i) HP desires to have access to Xxxxx'x experience and knowledge
regarding LEP, the LEP Business, and the printing and imaging industry in
general, as well as to Xxxxx'x insights into potential technological synergies
and business opportunities both from within HP and outside of HP (ii) Xxxxx
desires to influence HP at the highest levels, both with respect to the LEP
Business and to HP's overall business strategy and direction and (iii) Xxxxx and
HP desire to confirm that all of Xxxxx'x intellectual property rights related to
the LEP Business have been assigned to Indigo; and
WHEREAS, Xxxxx is willing to perform Consulting services upon the terms and
conditions set forth herein.
NOW, THEREFORE, in consideration of the mutual covenants contained herein
and of the mutual benefits provided herein, the parties hereto agree as follows:
1. Appointment. HP hereby appoints Xxxxx to the position of a Strategic
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Advisor to the HP Chief Executive Officer (the "CEO"). In this capacity, he
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shall advise the CEO of HP, as well as other senior HP executives, on relevant
strategic technology, product, market and business matters, particularly
regarding HP's printing and imaging business. Xxxxx'x primary objectives will be
to contribute to the success of the LEP business within HP and the successful
integration of Indigo into HP. Xxxxx'x title may be amended during the term of
this Agreement as determined by the CEO.
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2. Services. Xxxxx hereby agrees that he shall advise HP regarding the
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following matters (the "Services"):
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(a) Identification of technological synergies and business opportunities
both from within HP and outside of HP;
(b) Integration of the LEP Business into the operations of HP;
(c) Strategic planning and tactics regarding printing and imaging products
and markets; and
(d) Other matters as reasonably requested by HP.
In addition, Xxxxx shall promote the interests of HP and assist its CEO by
accepting, in his discretion, suitable industry and public speaking engagements
that are mutually acceptable to Xxxxx and HP. These engagements will be arranged
by or cleared by the Communications function within Imaging and Printing
Systems.
3. Efforts; Exclusivity. Xxxxx will determine, in his sole discretion, the
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level of effort and time that he shall apply to the performance of the services
described herein. Except as provided herein, Xxxxx assumes no specific duties or
responsibilities. Subject to the non-compete provisions pursuant to Section 8
below, Xxxxx will be free to pursue any other activities.
4. Compensation; Obligations of HP. Xxxxx'x sole compensation for Services
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rendered pursuant to this Agreement shall be the performance by HP of its
obligations and duties under this Agreement. In order to enable Xxxxx to perform
the Services described herein, and as consideration for Xxxxx'x agreement to
perform them, HP will provide the following services and facilities during the
term of this Agreement:
(a) Access/Participation. Subsequent to Xxxxx and HP entering into a
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mutually satisfactory intellectual property agreement, HP agrees in its sole
discretion to xxxxx Xxxxx access to HP technical programs, research and
development projects (including projects of HP Labs) and HP facilities primarily
relating to the printing and imaging business as required to perform the service
described in Section 2. Xxxxx may, in HP's sole discretion, participate in
technology and design reviews, as well as senior management meetings and
strategy sessions related to the LEP Business. HP's CEO shall meet with Xxxxx
from time to time at her convenience. Other senior HP executives and senior
managers shall meet with Xxxxx at times and venues of mutual convenience.
(b) Consultation. Both parties agree to consult regularly with one
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another regarding:
(i) significant matters affecting the LEP product offerings
and/or the LEP Business;
(ii) significant issues relating to the integration of the LEP
Business into HP's operations, including issues of cultural integration; and
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(iii) significant issues affecting HP's revenues from the LEP
Business.
(c) Office Space, Support Equipment, Staffing. HP will (at its
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expense) continue to maintain an office for Xxxxx in Israel, comparable to, and
adjacent to, the office of the General Manager of the LEP Business and will
provide Xxxxx with other services and support, as customarily provided to such
General Manager, including, inter alia: (i) reasonable administrative,
secretarial and other office support services, (ii) home, office and lap-top
computers with access to HP's e-mail network and management information systems,
and (iii) reasonable local, long-distance and mobile telephone service for
Israel and outside of Israel;
(d) Laboratory Space. HP will, at HP's expense, provide reasonable
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maintenance and upkeep to Xxxxx'x private laboratory at its LEP Business
facilities in Israel (the "Laboratory") which shall be (i) at least sixty (60)
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square meters in area, (ii) reasonably equipped with instrumentation and
materials comparable to general research laboratory facilities maintained by HP,
and (iii) supported, from time to time as required by Xxxxx, by technical staff,
but not to exceed the equivalent of two full-time laboratory
technicians/engineers. Xxxxx will have free access to the Israel LEP Business
facilities at all times. The Laboratory will be accessible to Xxxxx at all times
and to others only as authorized by Xxxxx and HP. Xxxxx will have access to the
laboratory while this Agreement is effective or some other period of time
mutually agreed upon by Xxxxx and HP, and may use the laboratory for any lawful
purpose whatsoever.
(e) Expense Reimbursements. HP will pay or reimburse Xxxxx for all
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reasonable travel, entertainment or other expenses that he may incur during the
term of this Agreement in connection with the performance of Services hereunder.
5. Intellectual Property.
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(a) Assignment. Xxxxx agrees that all copyrightable material, models,
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devices, reports, tooling, schematics and other diagrams, instructional
material, notes, records, drawings, algorithms, trade secrets, computer
programs, designs, technology, discoveries, ideas, know-how, processes,
formulas, compositions, data, techniques, improvements, inventions (whether
patentable or not), works of authorship, title, patents, patent rights,
copyrights, mask work rights, trade secret rights, and other intellectual
property (hereinafter collectively referred to as the "Intellectual Property")
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in LEP (and improvements to HP's LEP products) which have been or are conceived,
made, discovered or developed by Xxxxx, or of which Xxxxx is an inventor, either
solely or in collaboration with others, prior to or during the term of this
Agreement (the "LEP IP") shall, to the extent such items are subject to the
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copyright laws of the United States, constitute "work made for hire" under
United States and Israeli copyright laws and Indigo, with respect to LEP IP
developed or invented prior to the date of this Agreement, and HP, with respect
to LEP IP developed or invented on or subsequent to the date of and this
Agreement during the term, shall be afforded all rights of ownership incident
thereto under such laws, as well as all U.S. and Israeli patent, trademark,
trade name and other intellectual property rights related thereto, and all
rights of ownership under the patent, trademark, trade name and other
intellectual property laws of any other country. Notwithstanding the foregoing,
and regardless of whether the LEP IP qualifies as "work made for hire" status
and/or treatment under United States and Israeli copyright laws, such LEP IP is
the sole property of Indigo or HP, as
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applicable, and Xxxxx hereby expressly agrees to grant, assign and convey (or
cause to be granted, assigned or conveyed) to Indigo or HP, as applicable, all
of Xxxxx'x right, title, and interest, if any, in and to all LEP IP, and all
underlying intellectual property rights including copyright, patent, trademark,
mask work, trade name and other proprietary interests related thereto. Xxxxx, at
HP's expense, shall do all things, including executing all documents, at the
request of HP, reasonably required to vest in Indigo or HP, as applicable, the
rights granted, assigned and conveyed to Indigo or HP, as applicable, herein.
(b) Ownership. Xxxxx shall be the sole and exclusive owner of all
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Intellectual Property, other than that assigned to HP under Section 5(a),
conceived, made, discovered or developed independently by Xxxxx, or of which
Xxxxx is the sole inventor, beginning on the effective date hereof, and HP shall
have no rights whatsoever in or to such Intellectual Property.
(c) Further Assurances. Xxxxx agrees to promptly disclose to HP any
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LEP inventions or works of authorship made in connection with this Agreement.
Xxxxx agrees to assist HP, or its designee, at the expense of HP, in every
proper way to secure rights in the LEP IP of HP and any copyrights, patents,
mask work rights or other intellectual property rights relating thereto in any
and all countries, including the disclosure to HP of all pertinent information
and data with respect thereto, the execution of all applications,
specifications, oaths, assignments and all other instruments which HP shall deem
necessary in order to apply for and obtain such rights and in order to assign
and convey to HP, its successors, assigns and nominees the sole and exclusive
right, title and interest in and to such LEP IP, and any copyrights, patents,
mask work rights or other intellectual property rights relating thereto. Xxxxx
further agrees that his obligation to execute or cause to be executed, when it
is in his power to do so, any such instrument or papers shall continue after the
termination of this Agreement. Xxxxx will deliver all LEP IP to HP upon the
earlier of completion of the Services or the request of HP. To the extent
permitted by law, Xxxxx waives any moral rights, such as the right to be named
as author, the right to modify, the right to prevent mutilation and the right to
prevent commercial exploitation, whether arising under the Berne Convention or
otherwise.
(d) Maintenance of Records. Xxxxx agrees to keep and maintain adequate
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and current written records of all LEP IP made by him (solely or jointly with
others) during the term of this Agreement. The records will be in the form of
notes, sketches, drawings, and any other format that may be specified by HP. The
records will be available to and remain the sole property of HP at all times and
will be returned to HP upon the earlier of completion of the Services or the
request of HP.
(e) Pre-Existing Materials. Xxxxx agrees that if in the course of
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performing the Services, he incorporates into any LEP IP developed hereunder any
invention, improvement, development, concept, discovery or other proprietary
information owned by him or in which he has an interest, (i) he shall inform HP,
in writing, before incorporating such invention, improvement, development,
concept, discovery or other proprietary information into any LEP IP; and,
whether or not he complies with the foregoing, (ii) HP is hereby granted and
shall have a nonexclusive, royalty-free, perpetual, irrevocable, worldwide
license (including the right to sublicense) use, reproduce, distribute, perform,
display prepare derivative works of, make, have made, modify, sell and export
sell such item as part of or in connection with such LEP IP. Xxxxx shall not
incorporate any invention, work of authorship, mask work, protectable design,
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improvement, development, concept, discovery, trade secret or other proprietary
information owned in whole or in part by any third party into any LEP IP without
prior written permission of HP.
(f) Attorney-in-Fact. Xxxxx agrees that, if HP is unable because of
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Xxxxx'x unavailability, dissolution, mental or physical incapacity, or for any
other reason, to secure Xxxxx'x signature for the purpose of applying for or
pursuing any application for any United States or foreign patents or mask work
or copyright registrations covering the Intellectual Property assigned to HP in
Section 5, then Xxxxx hereby irrevocably designates and appoints HP and its duly
authorized officers and agents as Xxxxx'x agent and attorney-in-fact, to act for
and on Xxxxx'x behalf to execute and file any such applications and to do all
other lawfully permitted acts to further the prosecution and issuance of
patents, copyright and mask work registrations with the same legal force and
effect as if executed by Xxxxx.
(g) Inventions Assigned to the United States. Xxxxx agrees to assign
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to the United States government all of his right, title, and interest in and to
any and all LEP IP whenever such full title is required to be in the United
States by a contract between HP and the United States or any of its agencies.
(h) Representations and Warranties. Xxxxx hereby represents and
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warrants that (i) all LEP IP will be his original work; (ii) to the best of his
knowledge, the LEP IP will not infringe the copyright, patent, trade secret, or
any other intellectual property right of any third party; (iii) the LEP IP will
not be obscene, libelous, or violate the right of privacy or publicity of any
third party; and (iv) the LEP IP will not contain any virus, trap door, worm, or
any other device that is injurious or damaging to software or hardware used in
conjunction with the LEP IP.
(i) Notice. Xxxxx will give HP notice immediately if at any time he
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knows or reasonably should know of any third party claim to any intellectual
property provided by him to HP pursuant to this Agreement.
6. Confidentiality.
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(a) Definition. "Confidential Information" means (i) any proprietary
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information, technical data, trade secrets or know-how of HP, including, but not
limited to, research, product plans, products, services, suppliers, employee
lists and employees, customers lists and customers (including, but not limited
to, customers of HP on whom Xxxxx called or with whom Xxxxx became acquainted
during the term of the consultancy relationship), markets, software,
developments, inventions, processes, formulas, technology, designs, drawings,
engineering, hardware configuration information, marketing, finances, budgets or
other business information disclosed by HP either directly or indirectly in
writing, orally or by drawings or inspection of parts or equipment; (ii) any
information which HP has identified to Xxxxx as confidential, proprietary or
non-public business information and/or trade secrets of HP, and (iii) any
information which Xxxxx would reasonably recognize as confidential and
proprietary to HP. For the purposes of this Agreement, the term "Confidential
Information" shall not include any information which (1) now is or hereafter
becomes known or available to the public other than as the result of a
disclosure by Xxxxx in breach hereof, (2) becomes known or available to
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Xxxxx on a nonconfidential basis from a source other than HP which Xxxxx
does not reasonably believe is prohibited from disclosing such information to
Xxxxx by obligation to HP, (3) is developed by Xxxxx independently of, or was
known by or available to Xxxxx prior to, any disclosures made by HP to Xxxxx of
such information, (4) is disclosed by HP to a third party without substantially
the same restrictions as set forth herein, (5) is required to be disclosed by
Xxxxx by order of a court of competent jurisdiction, administrative agency or
governmental body, or by any law, rule or regulation, or by subpoena, or any
other administrative or legal process, or by applicable regulatory or
professional standards, or (6) is disclosed with the consent of HP.
(b) Non-Disclosure. Xxxxx will not, during or subsequent to the term
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of this Agreement, disclose, sell, license, publish, or otherwise make available
Confidential Information for any purpose whatsoever, except to the extent
necessary to perform the Services as directed by HP (in which case such
disclosure is only permitted to authorized employees of HP). Xxxxx further
agrees not to disclose the Confidential Information to any third party. It is
understood that said Confidential Information shall remain the sole property of
HP. Xxxxx further agrees to take all reasonable precautions to prevent any
violation of these provisions (or the other provisions of this Agreement),
including, securing and protecting HP's Confidential Information in a manner
consistent with the maintenance of HP's confidential and proprietary rights in
the information.
(c) Third Party Confidential Information. Xxxxx recognizes that HP has
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received and in the future will receive from third parties their confidential or
proprietary information subject to a duty on HP's part to maintain the
confidentiality of such information and to use it only for certain limited
purposes. Xxxxx agrees that he owes HP and such third parties, during the term
of this Agreement and thereafter, a duty to hold all such confidential or
proprietary information in the strictest confidence and not to disclose it to
any person, firm or corporation or to use it except as necessary in carrying out
the Services for HP consistent with its agreement with such third party.
(d) Former Employer's Confidential Information. Xxxxx agrees that he
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will not, during the term of this Agreement, improperly disclose any proprietary
information or trade secrets of any former or current employer or other person
or entity with which he has an agreement or duty to keep in confidence
information acquired by him, if any, and that he will not bring onto the
premises of HP any unpublished document or proprietary information belonging to
such employer, person or entity unless consented to in writing by such employer,
person or entity.
7. Conflicting Obligations. Xxxxx certifies that he has no outstanding
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agreement or obligation that is in conflict with any of the provisions of this
Agreement, or that would preclude him from complying with the provisions hereof,
and further certifies that he will not enter into any such conflicting agreement
during the term of this Agreement,
8. Non-Compete. During the term of this Agreement and for a period of
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twenty-four (24) months after expiration or termination hereof for any reason,
Xxxxx will not directly or indirectly (as principal, shareholder, officer,
director, employee, Consultant/Employment, partner, agent, advisor or otherwise)
own, manage, control, participate in, consult with, render
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service for, or in any manner engage in any business activity which competes
with the commercial printing business of HP anywhere in the world, including,
without limitation, the fields of electrophotographic printing or pigment
dispersion, provided, that notwithstanding the provisions of this Section,
nothing herein shall prevent Xxxxx from acquiring and owning shares of any
publicly-traded company.
9. Non-Solicitation. Xxxxx agrees that for the term of this Agreement and
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for a period of twenty-four (24) months immediately following the termination of
this Agreement for any reason, that he will not: (i) either directly or
indirectly solicit, induce, recruit or encourage any of HP's directors,
officers, employees or consultants to leave their employment, or attempt to
solicit, induce or recruit any of the directors, officers, employees or
Consultant/Employments of HP, either for Xxxxx or for any other person or
entity; or (ii) either directly or indirectly solicit any licensor to or
customer of HP or licensee of HP's products that are known to Xxxxx, with
respect to any business, products or services that are competitive to the
products or services offered by HP's commercial printing business as of the date
of termination of this Agreement.
10. Term and Termination.
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(a) Term. This Agreement shall become effective upon the Closing Time
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(as such term is defined in that certain Offer Agreement) of the transactions
under the Agreements (the "Effective Date") and shall remain in effect until the
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first to occur of (i) the termination of this Agreement as provided below, or
(ii) the fifth (5th) anniversary of the Effective Date.
(b) Termination. Subsequent to the second anniversary of the Effective
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Time, this agreement may be terminated by either party at any time, with or
without cause, by sixty (60) days' notice to the other party. In the event of
either party's breach of this Agreement, this Agreement may be terminated
immediately upon reasonable notice.
(c) Survival. Upon such termination all rights and duties of the
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parties toward each other shall cease except:
(i) HP shall be obliged to pay or reimburse Xxxxx, within thirty
(30) days of the effective date of termination, all reasonable expenses owing to
Xxxxx relating to Services completed and accepted by HP prior to the termination
date in accordance with the provisions of Section 4(e) (Expense Reimbursements)
hereof; and
(ii) each of Sections 5, 6, 8, 9 and 10(c) shall survive
termination of this Agreement.
11. Notices. Any and all notices hereunder shall, in the absence of
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receipted hand delivery, be deemed duly given when mailed, if the same shall be
sent by registered or certified mail, return receipt requested, and the mailing
date shall be deemed the date from which all time periods pertaining to a date
of notice shall run. Notices shall be addressed to the parties at the following
addresses:
If to Xxxxx: 00 Xxxxxx Xxx Xxx Xxxxxx
Xxx Xxxxx, Xxxxxx
Facsimile:
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With copies to: ____________________________________
____________________________________
____________________________________
Attention: _________________________
Facsimile:
If to HP: Hewlett-Packard Company
0000 Xxxxxxx Xxxxxx
Xxxx Xxxx, Xxxxxxxxxx 00000
Attention:
Facsimile:
With copies to: Xxxxxx Xxxxxxx Xxxxxxxx & Xxxxxx
Professional Corporation
000 Xxxx Xxxx Xxxx
Xxxx Xxxx, Xxxxxxxxxx 00000-0000
Attention: Xxxxx X. Xxxxxxx, Esq.
Xxxxx X. Xxxxx, Esq.
Facsimile No.: (000) 000-0000
12. Independent Contractor Status. It is the express intention of the
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parties that Xxxxx is an independent contractor. The parties hereto acknowledge
and agree that this Agreement does not create an employer/employee relationship
between the parties.
13. Benefits. Xxxxx acknowledges and agrees and it is the intent of the
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parties hereto that Xxxxx receive no HP-sponsored benefits from HP either as a
Consultant or employee. Such benefits include, but are not limited to, paid
vacation, sick leave and medical insurance. If Xxxxx is reclassified by a state
or federal agency or court as an employee, Xxxxx will become a reclassified
employee and will receive no benefits except those mandated by state or federal
law, even if by the terms of HP's benefit plans in effect at the time of such
reclassification, Xxxxx would otherwise be eligible for such benefits. Xxxxx
shall HP harmless on account of any insurance premiums or other employment
benefits.
14. Amendments. No amendment or waiver of any provision of this Agreement,
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or consent to any departure by either party from any such provision, shall in
any event be effective unless the same shall be in writing and signed by the
parties to this Agreement and then such amendment, waiver or consent shall be
effective only in the specific instance and for the specific purpose for which
given.
15. Assignment. Neither this Agreement nor any right hereunder or interest
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herein may be assigned or transferred by Xxxxx without the express written
consent of HP. Xxxxx warrants that he will not engage the services of
independent contractors to provide any Services under this Agreement without the
prior written consent of HP. Any assignment without consent is voidable by HP.
16. Entire Agreement. This Agreement shall constitute the entire Agreement
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and understanding between the parties with respect to the subject matter hereof,
and shall supersede
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and preempt any and all previous oral and written (and all contemporaneous
oral) representations, negotiations, commitments, agreements and understandings
relating hereto.
17. Applicable Law. This Agreement shall be construed and enforced in
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accordance with the internal laws of the State of New York, without reference to
conflict of law principles, and shall inure to the benefit of, and be binding
upon, Xxxxx and HP and their respective successors and assigns. Each of the
parties hereto irrevocably consents to the exclusive jurisdiction and venue of
any court within the State of New York, in connection with any matter based upon
or arising out of the Agreement or the matters contemplated herein, agrees that
process may be served upon such party in any manner authorized by the laws of
State of New York for such persons and waives and covenants not to assert or
plead any objection which such party might otherwise have to such jurisdiction,
venue and process.
18. Attorneys' Fees. In any court action at law or equity which is brought
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by one of the parties to enforce or interpret the provisions of this Agreement,
the prevailing party will be entitled to reasonable attorney's fees, in addition
to any other relief to which that party may be entitled.
19. Severability. The invalidity or unenforceability of any provision of
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this Agreement, or any terms thereof, shall not affect the validity of this
Agreement as a whole, which shall at all times remain in full force and effect.
20. No Continuing Waiver. The waiver of any party of any breach of this
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Agreement shall not operate or be construed to be a waiver of any subsequent
breach.
21. Counterparts. This instrument may be executed in one or more
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counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same Agreement.
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IN WITNESS WHEREOF, the parties have caused this Agreement to be executed
and delivered by their duly authorized officers or agents as set forth below as
of the date first set forth above.
HEWLETT-PACKARD COMPANY
By: /s/ XXXX X. XXXXXXX
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Name: Xxxx X. Xxxxxxx
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Title: VP, Strategy and Corporate Development
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XXXXXXX XXXXX
/s/ XXXXXXX XXXXX
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Xxxxxxx Xxxxx
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