STRATEGIC RELATIONSHIP AND LICENSE AGREEMENT
--------------------------------------------
This Agreement is between The Xxxxx Xxxxxxx University, a
corporation of the State of Maryland, acting through its Applied
Physics Laboratory having a place of business at 00000 Xxxxx Xxxxxxx
Xxxx, Xxxxxx, XX 00000-0000 (hereinafter "JHU/APL") and the Link Plus
Corporation, a Delaware corporation, having a place of business at
0000 Xxxxxxxx Xxxxxx Xxxxx, Xxxxxxxx Xxxx, Xxxxxxxx 00000 (hereinafter
"COMPANY").
RECITALS
--------
JHU/APL, by virtue of its role as a government contractor and
educational institution, carries out scientific and applied research
and development through its staff and is committed to licensing
JHU/APL INTELLECTUAL PROPERTY (hereinafter defined) in a manner that
will benefit the public by bringing , the results of that research and
development into widespread use through the distribution of useful
products and the utilization of new processes, but is without capacity
to commercially develop, manufacture, and distribute any such product
or processes itself.
JHU/APL has developed and intends to continue to develop certain
valuable inventions, copyrighted matter, proprietary technical
information, know-how, show-how and/or trade secrets comprising the
JHU/APL INTELLECTUAL PROPERTY.
The Xxxxx Xxxxxxx University through JHU/APL has acquired or is
entitled to acquire through assignment or otherwise all right, title
and interest, with the exception of certain retained rights by the
United States Government, in said valuable inventions, copyrighted
matter, proprietary technical information, know-how, show-how and/or
trade secrets.
COMPANY desires to commercially develop, manufacture, use and
distribute products and processes embodying the JHU/APL INTELLECTUAL
PROPERTY throughout the world.
NOW, THEREFORE, in consideration of the foregoing premises and
the following mutual covenants, and other good and valuable
consideration, the receipt of which is hereby acknowledged, and
intending to be legally bound hereby, the parties agree as follows:
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Exhibit 10-3
ARTICLE 1 - DEFINITIONS
-----------------------
1.1 "AFFILIATED COMPANY" or "AFFILIATED COMPANIES" shall mean any
corporation, company, partnership, joint venture or other entity which
controls, is controlled by or is under common control with COMPANY.
For purposes of this section 1.1, control shall mean the direct or
indirect ownership of at least fifty percent (50%).
1.2 "CORE TECHNOLOGY" shall mean technology related to
LINCOMPEX speech compression/decompression.
1.3 "EFFECTIVE DATE" of this Strategic Relationship and License
Agreement shall mean the date the last party hereto has executed this
Agreement.
1.4 "EXCLUSIVE LICENSE" shall mean a grant by JHU/APL to COMPANY
of exclusive rights in the-JHU/APL INTELLECTUAL PROPERTY, subject to
any rights retained by the United States Government in accordance with
P.L. 96-517, as amended by P.L. 98-620, and with the provisions of the
U.S. Government contracts under which the JHU/APL INTELLECTUAL
PROPERTY was developed, and further subject to the retained right of
JHU/APL to make, have made, provide, use, copy, modify, distribute and
practice LICENSED PRODUCTS) and LICENSED PROCESSES) for its non-profit
purposes in connection with its research, education and public service
missions including the provision of research and development services
for federal, state and local governments.
1.5 "JHU/APL IMPROVEMENT(S)" shall mean improvements in CORE
TECHNOLOGY comprising any inventions, copyrighted matter, technical
information, know-how, show-how and/ or trade secrets comprising
JHU/APL PATENT RIGHTS (hereinafter defined) and JHU/APL UNPATENTED
INTELLECTUAL PROPERTY (hereinafter defined) that results from the R&D
AGREEMENTS (hereinafter defined) whether funded by JHU/APL, COMPANY or
the United States Government and made either solely by a JHU/APL
employee or jointly by a JHU/APL employee and a COMPANY employee in
the LICENSED FIELD. JHU/APL IMPROVEMENTS) shall not include devices
and improvements that are specific deliverables defined in a contract
between JHU/APL and Company.
1.6 "JHU/APL INTELLECTUAL PROPERTY" shall mean, individually
and collectively, JHU/APL PATENT RIGHTS and JHU/APL UNPATENTED
INTELLECTUAL PROPERTY.
2
Exhibit 10-3
1.7 "JHU/APL PATENT RIGHTS" shall mean:
a. any future filed U.S. patent applications) relating to
the invention disclosures) listed in Appendix A, and the
inventions disclosed and claimed therein and patents issuing
thereon, and all continuations, divisions, and reissues
based thereon, and any corresponding foreign patent
applications, and any patents, patents of addition, or other
equivalent foreign patent rights issuing, granted or
registered thereon; and
b. any additional U.S. patent applications filed on behalf of
JHU/APL (whether invented solely by JHU/APL or jointly by
JHU/APL and COMPANY) and directed to patentable features
that may be contained within the JHU/APL UNPATENTED
INTELLECTUAL PROPERTY.
1.8 "JHU/APL UNPATENTED INTELLECTUAL PROPERTY" shall mean and
include: JHU/APL's copyrighted matter, proprietary technical information,
know-how, show-how and/or trade secrets associated with CORE
TECHNOLOGY including all schematics, drawings, test and operating
software (including source, object, and firmware), engineering
analyses, reliability analyses, special manufacturing processes, and
quality assurance plans and procedures, and any other required
technical information or documentation developed by JHU/APL. The above
includes, but is not limited to, what is:
a. existing as of the EFFECTIVE DATE and delivered to COMPANY
prior to the EFFECTIVE DATE, or under this Agreement or under
the R&D AGREEMENTS;
b. disclosed in the invention disclosures) listed in Appendix A;
c. developed by JHU/APL or jointly by JHU/APL and COMPANY
pursuant to the R&D AGREEMENTS;
d. provided during the performance of work under the R&D
AGREEMENTS; or
e. representing and included in JHU/APL IMPROVEMENT(S).
1.9 "LICENSED FIELD" shall mean the field concerning improving
the quality of voice, data, and video signals over both wired and
wireless networks.
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Exhibit 10-3
1.10 "LICENSED PRODUCT(S)" shall mean any device or other product:
a. the manufacture, use or sale of which would constitute, but
for the license granted to COMPANY pursuant to this Agreement,
an infringement of a claim of JHU/APL PATENT RIGHTS
(infringement shall include, but is not limited to, direct,
contributory, or inducement to infringe); or
b. embodying, that was made using, that is derived primarily from
or based substantially on JHU/APL UNPATENTED INTELLECTUAL
PROPERTY.
1.11 "LICENSED PROCESS(ES)" shall mean any process or method
performed on behalf of a third party or used in the manufacture or use
of a product:
a. the practice of which would constitute, but for the license
granted to COMPANY pursuant to this Agreement, an infringement
of a claim of JHU/APL PATENT RIGHTS (infringement shall
include, but is not limited to, direct, contributory, or
inducement to infringe); or
b. the practice of which uses, is derived primarily from or based
substantially on the JHU/APL UNPATENTED INTELLECTUAL PROPERTY.
1.12 "NET SALES", subject to section 8.8 below, shall mean gross
revenues of any nature including, but not limited to, sales and
licensing fees, maintenance and service fees, access payments and
other amounts billed by COMPANY, AFFILIATED COMPANIES and COMPANY's
sublicensees from the sale, lease or other disposal of LICENSED
PRODUCTS) or the practice or performance of LICENSED PROCESSES) less
a. credits (including credit card charge-backs) or allowances,
refunds or discounts, if any, actually granted on account of
price adjustments, recalls, rejection or return of items
previously sold, leased or otherwise disposed of;
b. excises, sales taxes, value added taxes, consumption taxes,
duties, or other taxes imposed upon and paid with respect to
such sales (excluding income or franchise taxes of any kind);
and
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Exhibit 10-3
c. separately itemized insurance and transportation costs
incurred in shipping the LICENSED PRODUCT(S).
1.13 "R&D AGREEMENTS" shall mean agreements relating to sponsored
research, facility use and/or technical assistance negotiated or to be
negotiated between JHU/APL and COMPANY pertaining to research and
development directed to the CORE TECHNOLOGY, whether funded by
JHU/APL, COMPANY or the United States Government.
1.14 "BASIC ORDERING AGREEMENT" shall mean a two-way task order
contract for R&D, facility usage, or engineering services.
1.15 "SUBLICENSE REVENUES", shall mean consideration of any kind
for sublicensee sales of LICENSED PRODUCTS) or LICENSED PROCESS(ES),
including but not limited to cash, equity, and other consideration,
whether in the form of up front fees or milestone fees, and including
any premium paid by the sublicensee over Fair Market Value for stock
of COMPANY, received by COMPANY from a sublicensee in consideration
for a sublicense to JHU/APL INTELLECTUAL PROPERTY granted by COMPANY;
however, not included in SUBLICENSE REVENUES are amounts paid to
COMPANY by the sublicensee for product development and research work
performed by COMPANY, or third parties on its behalf. The term "Fair
Market Value" as used in this paragraph shall mean the average price
at which the stock in question is publicly trading for sixty (60) days
prior to the announcement of its purchase by the sublicensee or if the
stock is not publicly traded, the value of such stock as determined by
the most recent private financing of COMPANY or if no private
financing has occurred, then as reasonably determined by COMPANY's
accountants.
1.16 "TERRITORY" shall mean the world.
ARTICLE 2 - GRANTS
------------------
2.1 Subject to the terms and conditions of this Agreement,
JHU/APL hereby grants to COMPANY an EXCLUSIVE LICENSE to make, use,
market, sell, offer to sell, import, copy, modify, distribute,
publicly display and perform, and practice the LICENSED PRODUCTS) and
LICENSED PROCESSES) in the TERRITORY under the JHU/APL INTELLECTUAL
PROPERTY in the LICENSED FIELD.
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Exhibit 10-3
2.2 JHU/APL grants the COMPANY the right to evaluate all of
JHU/APL's patents on noise reduction pertaining to RF communications.
JHU/APL and the COMPANY shall mutually determine which patents shall
be licensed to the COMPANY. Terms for licenses will be determined
separately for each patent, and shall be subject to the terms and
conditions of this Agreement; however, JHU/APL shall not be required
to offer a license and COMPANY shall not be required to accept a
license to any specific JHU/APL patent.
2.3 COMPANY may sublicense others under this Agreement and amend
existing sublicenses provided that the terms of any such sublicense
shall be no less favorable to COMPANY than this Agreement is to
JHU/APL and no broader in scope and no less restrictive on the
sublicensee than this Agreement is on COMPANY and are otherwise
consistent with the terms of this Agreement and include provisions for
the payment of JHU/APL's royalties, indemnification of JHU/APL and the
flow down of the limited warranties contained herein, and further
provided that COMPANY provides a copy of each such sublicense
agreement and amendment to an existing sublicense agreement to JHU/APL
within five (5) business days after its execution. Any sublicense
agreement and amendment to an existing sublicense agreement either not
consistent with the terms of this Agreement or not containing royalty,
indemnification and warranty provisions as set forth above, must be
submitted to JHU/APL prior to its execution for review and approval,
and COMPANY shall provide at least ten (10) business days for
JHU/APL's review.
2.4 All JHU/APL IMPROVEMENTS) shall be exclusively licensed to
COMPANY under this Agreement.
ARTICLE 3 - R&D AGREEMENTS
--------------------------
3.1 JHU/APL and COMPANY agree to consider entering into future
R&D AGREEMENTS. JHU/APL will consider funding such R&D AGREEMENTS
under its XXX prototype Development Grant Program, up to a maximum of
Seventy Five Thousand Dollars ($75,000) per year to further develop
the CORE TECHNOLOGY at APL. Such R&D AGREEMENTS can also include
matching funds by the company. The parties are under no obligation to
enter or to fund any specific R&D AGREEMENT that is proposed.
ARTICLE 4 - BASIC ORDERING AGREEMENT
------------------------------------
4.1 JHU/APL and COMPANY agree to enter into a two-way BASIC
ORDERING AGREEMENT (BOA) for R&D, facility usage and engineering
services. The BOA shall support
6
Exhibit 10-3
the COMPANY's new product development or application engineering, and
the parties intend for the BOA to have a duration of at least five
years. The parties are under no obligation to enter or to fund any
specific task under a proposed BOA AGREEMENT.
ARTICLE 5 - TECHNICAL PROGRAM BUSINESS PLAN
-------------------------------------------
5.1 The COMPANY shall complete a Technical Program Business
Plan (TPBP) on a quarterly basis. The first TPBP is due within two
weeks from the EFFECTIVE DATE of this Agreement. TPBPs shall include
marketing and R&D plans.
ARTICLE 6 CONFLICT OF INTEREST
------------------------------
6.1 COMPANY understands and agrees that JHU/APL has a technical
direction agent relationship with the United States Government which
requires that JHU/APL avoid any work under any contract or agreement
that would jeopardize its or its employees' ability to act for the
United States Government as an impartial or neutral evaluator.
Therefore, JHU/APL shall at all times under this Agreement retain the
right to refuse to accept any subcontract or other agreement to
perform any work under any such subcontract or other agreement between
JHU/APL and COMPANY which in JHU/APL's sole discretion would create an
actual or perceived organizational or individual conflict of interest.
ARTICLE 7 - PATENT INFRINGEMENT
-------------------------------
7.1 Each party will notify the other promptly in writing when
any infringement by another is uncovered or suspected.
7.2 COMPANY shall have the first right to enforce any patent or
copyright within JHU/APL INTELLECTUAL PROPERTY against any
infringement or alleged infringement thereof, and shall at all times
keep JHU/APL informed as to the status thereof. COMPANY may, in its
sole judgment and at its own expense, institute suit against any such
infringer or alleged infringer and control, settle, and defend such
suit in a manner consistent with the terms and provisions hereof and
recover, for its account, any damages, awards or settlements resulting
therefrom, subject to section 7.4. This right to xxx for infringement
shall not be used in a capricious manner. JHU/APL shall reasonably
cooperate in any such litigation at COMPANY's expense.
7
Exhibit 10-3
7.3 If COMPANY elects not to enforce any patent within the
JHU/APL INTELLECTUAL PROPERTY, then it shall so notify JHU/APL in
writing within six (6) months of receiving notice that an infringement
exists, and JHU/APL may, in its sole judgment and at its own expense,
take steps to enforce any patent or copyright and control, settle, and
defend such suit in a manner consistent with the terms and provisions
hereof, and recover, for its own account, any damages, awards or
settlements resulting therefrom.
7.4 Any recovery by COMPANY under section 7.2 shall be deemed to
reflect loss of commercial sales, and COMPANY shall pay to JHU/APL out
of such recovery the royalties it would have otherwise received in
light of the infringing sales net of all reasonable costs and expenses
associated with each suit or settlement. If the cost and expenses
exceed the recovery, then onehalf (1/2) of the excess shall be
credited against royalties payable by COMPANY to JHU/APL hereunder in
connection with sales in the country of such legal proceedings,
provided, however, that any such credit under this section 7.4 shall
not exceed fifty percent (50%) of the royalties otherwise payable to
JHU/APL with regard to sales in the country of such action in any one
calendar year, with any excess credit being carried forward to future
calendar years.
ARTICLE 8 - PAYMENTS. ROYALTY AND RESEARCH AND DEVELOPMENT SUPPORT
------------------------------------------------------------------
8.1 REIMBURSEMENT OF COSTS AND EXPENSES: COMPANY will reimburse
JHU/APL for the reasonable costs of preparing, filing, prosecuting and
maintaining JHU/APL PATENT RIGHTS in all countries except the United
States as set forth in paragraph 9.1 of this Agreement. COMPANY shall
reimburse JHU/APL within thirty (30) days of receipt of an invoice
from JHU/APL.
8.2 COMPANY shall pay to JHU/APL a License Execution fee for
executing this Strategic Relationship and Licensing Agreement as
follows:
a. Payment of a two percent (2%) equity share in the
COMPANY, payable to JHU/APL in COMPANY common stock
on the EFFECTIVE DATE of this Agreement. For purposes
of sharing with JHU/APL employees any cash revenues
resulting from the conversion of the equity, under the
JHUIAPL Intellectual Property Policy, one percent of
the equity will be allocated as Category A and one
percent as Category C equity. A two percent (2%) equity
share is 178,002 shares.
b. Payment of $2000 due within 90 days of the EFFECTIVE
DATE of this Agreement.
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Exhibit 10-3
c. Payment of $2000 per year, due on each anniversary of
the EFFECTIVE DATE, for the term of this Agreement.
8.3 COMPANY shall set aside 4% of company stock on the EFFECTIVE
DATE of this Agreement (as treasury stock) allocatable to JHU/APL as
partial consideration for future license fees or for XXX prototype
grants.
8.4 For the term of this Agreement, COMPANY shall pay to JHU/APL
a running royalty for each LICENSED PRODUCTS) sold, leased or
otherwise disposed of or for the practice or performance of LICENSED
PROCESSES) by COMPANY, AFFILIATED COMPANIES and COMPANY's sublicensees
as follows:
a. A percentage of NET SALES to be negotiated and recorded
in an amendment to this Agreement, said percentage to
be based on the value of JHU/APL IMPROVEMENTS
licensed under this Agreement, but shall be no less than
2.5% and not more than 7.5%. No royalties shall accrue
and no royalties shall be due to JHU/APL until after the
first of such amendments has been executed by both
parties to this Agreement.
b. COMPANY shall pay to JHU/APL fifty percent (50%) of all
SUBLICENSE REVENUES received by COMPANY.
8.5 COMPANY shall provide to JHU/APL within sixty (60) days of
the end of each March, June, September and December after the
EFFECTIVE DATE of this Agreement, a written report to JHU/APL of the
amount of LICENSED PRODUCTS) sold, leased or otherwise disposed of and
LICENSED PROCESSES) practiced or performed, the total NET SALES of
such LICENSED PRODUCTS) and LICENSED PROCESS(ES), and the running
royalties due to JHU/APL as a result of NET SALES by COMPANY,
AFFILIATED COMPANIES and sublicensees thereof. Payment of any such
royalties due shall accompany such report. Until COMPANY, an
AFFILIATED COMPANY or a sublicensee has achieved a first commercial
sale of a LICENSED PRODUCTS) or LICENSED PROCESS(ES), a report shall
be submitted at the end of every June and December after the EFFECTIVE
DATE of this Agreement and will include a full written report
describing COMPANY's, AFFILIATED COMPANIES' or sublicensee's technical
efforts towards meeting the milestones set forth in Article 5.
8.6 COMPANY shall make and retain, for a period of three (3)
years following the period of each report required by section 8.5,
true and accurate records, files and books of account
9
Exhibit 10-3
containing all the data reasonably required for the full computation
and verification of sales and other information required in section
8.5. Such books and records shall be in accordance with generally
accepted accounting principles consistently applied. COMPANY shall
permit the inspection and copying of such records, files and books of
account by JHU/APL or its agents during regular business hours upon
ten (10) business days' written notice to COMPANY. Such inspection
shall not be made more than once each calendar year. All costs of such
inspection and copying shall be paid by JHU/APL, provided that if any
such inspection shall reveal that an error has been made in the amount
equal to five percent (5%) or more of such payment, such costs shall
be borne by COMPANY. COMPANY shall include in any agreement with its
AFFILIATED COMPANIES or its sublicensees which permits such party to
make, use or sell the LICENSED PRODUCTS) or practice or perform the
LICENSED PROCESS(ES), a provision requiring such party to retain
records of sales, leases or other disposals of LICENSED PRODUCTS) and
the practice or performance of LICENSED PROCESSES) and other
information as required in section 8.5 and permit JHU/APL to inspect
such records as required by this section 8.6.
8.7 In order to insure JHU/APL the full royalty payments
contemplated hereunder, COMPANY agrees that in the event any LICENSED
PRODUCTS) shall be sold to an AFFILIATED COMPANY or sublicensee or to
a corporation, firm or association with which COMPANY shall have any
agreement, understanding or arrangement with respect to consideration
(such as, among other things, an option to purchase stock or actual
stock ownership, or an arrangement involving division of profits or
special rebates or allowances) the royalties to be paid hereunder for
such LICENSED PRODUCTS) shall be based upon the greater of: 1) the net
selling price at which the purchaser of LICENSED PRODUCTS) resells
such product to the end user, 2) the net service revenue received from
using the LICENSED PRODUCTS) in providing a service, 3) the fair
market value of the LICENSED PRODUCTS) or 4) the net selling price of
LICENSED PRODUCTS) paid by the purchaser.
8.8 All payments under this Agreement shall be made in U.S.
Dollars.
8.9 Where royalties are due hereunder for sales of LICENSED
PRODUCTS) in a country where, by reason of currency regulations or
taxes of any kind, it is impossible or illegal for COMPANY, an
AFFILIATED COMPANY, or COMPANY's sublicensee to transfer royalty
payments to JHU/APL for NET SALES in that country, such royalties
shall be deposited by COMPANY, an AFFILIATED COMPANY, or COMPANY's
sublicensee in JHU/APL's name in whatever currency is allowable in an
accredited bank in that country that is reasonably acceptable to
JHU/APL.
10
Exhibit 10-3
8.10 Any and all income or similar taxes imposed or levied on
account of the receipt of royalties payable under this Agreement which
are required to be withheld by COMPANY, an AFFILIATED COMPANY, or
COMPANY's sublicensee shall be paid by COMPANY, such AFFILIATED
COMPANY, or COMPANY's sublicensee on behalf of JHU/APL and shall be
paid to the proper taxing authority. Proof of payment shall be secured
and sent to JHU/APL by COMPANY, such AFFILIATED COMPANY, or COMPANY's
sublicensee as evidence of such payment in such form as required by
the tax authorities having jurisdiction over COMPANY, such AFFILIATED
COMPANY, or COMPANY's sublicensee. Such taxes shall be deducted from
the royalty that would otherwise be remittable by COMPANY, such
AFFILIATED COMPANY or COMPANY's sublicensee.
ARTICLE 9 - PATENT RIGHTS AND CONFIDENTIAL INFORMATION
------------------------------------------------------
9.1 JHU/APL, at its expense, shall file, prosecute and maintain
all patents and patent applications specified under JHU/APL PATENT
RIGHTS in the United States. COMPANY shall elect, and so inform
JHU/APL in writing, in which other countries COMPANY desires that
JHU/APL pursue patent protection. COMPANY will promptly reimburse
JHU/APL for its reasonable costs of preparing, filing, prosecuting and
maintaining such elected foreign JHU/APL PATENT RIGHTS. Title to all
such patents and patent applications shall reside in The Xxxxx Xxxxxxx
University with the exception of patents that have been jointly
invented by the COMPANY, in which case title shall reside jointly in
The Xxxxx Xxxxxxx University and the COMPANY. JHU/APL shall have full
and complete control over all patent matters in connection therewith
under the JHU/APL PATENT RIGHTS. In any country where the COMPANY
elects not to have a patent application filed or to pay expenses
associated with filing, prosecuting, or maintaining a patent
application or patent, JHU/APL may file, prosecute, and/or maintain a
patent application or patent at its own expense and for its own
exclusive benefit and the COMPANY thereafter shall not be licensed
under such patent or patent application. COMPANY may take a credit of
up to 50% of the royalties due in any one period from a specific
country for reimbursed patent costs deriving from that country until
the full amount of such costs are recovered.
9.2 JHU/APL shall work with the COMPANY to evaluate existing
COMPANY intellectual property, with the goal of improving the COMPANY
intellectual property.
9.3 COMPANY agrees that all packaging containing individual
LICENSED PRODUCTS) sold by COMPANY, AFFILIATED COMPANIES and
sublicensees of COMPANY will be marked with the number of the
applicable patents) licensed hereunder in accordance with each
country's patent laws.
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Exhibit 10-3
ARTICLE 10 - TERM AND TERMINATION
---------------------------------
10.1 TERM: This Agreement shall expire in each country on the
date of expiration of the last to expire patent included within
JHU/APL PATENT RIGHTS in that country or if no patents issue twenty
(20) years from the EFFECTIVE DATE.
10.2 TERMINATION:
a. Upon material breach or material default of any of
the terms and conditions of this Agreement, the
defaulting party shall be given written notice of
such default in writing and a period of sixty (60)
days after receipt of such notice to correct the
default or breach. If the default or breach is not
corrected within said sixty (60) day period, the
party not in default shall have the right to
terminate this Agreement.
b. COMPANY may terminate this Agreement and the license
granted herein, for any reason, upon giving JHU/APL
sixty (60) days written notice.
c. Termination shall not affect JHU/APL's right to recover
accrued and unpaid royalties or fees or reimbursement
for patent expenses incurred pursuant to paragraph 9.1
prior to termination or to recover the unpaid balance
of the License Execution Fee payments as provided in
section 8.2. Upon termination, all rights in and to the
licensed JHU/APL INTELLECTUAL PROPERTY shall revert
to JHU/APL at no cost to JHU/APL.
ARTICLE 11 - MISCELLANEOUS
--------------------------
11.1 MARKETING:
a. JHU/APL shall provide to the COMPANY marketing material
such as a demonstration CD.
b. A JHU/APL XXX web page shall contain a link to the
COMPANY's home web page.
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Exhibit 10-3
c. JHU/APL and the COMPANY shall, when appropriate, have
press releases and joint attendance at trade shows.
11.2 ACCESS: JHU/APL and the COMPANY shall have reciprocal
unescorted access to each other's facilities, for specified persons,
for purposes of performing task order contract work.
11.3 NOTICES AND CORRESPONDENCE:
a. All notices required or permitted to be given under
this Agreement shall be in writing and shall be deemed
to have been sufficiently given for all purposes
thereof when mailed by certified mail to the party to
be notified or sent by overnight courier service. All
notices shall be deemed to have been given when mailed
as evidenced by the postmark at the point of mailing
or by other package pickup receipt.
b. All notices and any correspondence, including written
progress reports and royalty and other payments,
respecting this Agreement shall be addressed
as follows:
To JHU/APL: Director of Technology Transfer
The Xxxxx Xxxxxxx University
Applied Physics Laboratory
00000 Xxxxx Xxxxxxx Xxxx
Xxxxxx, XX 00000-0000
To COMPANY: Xxxxxx X. Xxxxx, Xx.
Chairman, CEO
Link Plus Corporation
0000 Xxxxxxxx Xxxxxx Xxxxx
Xxxxxxxx Xxxx, XX 00000
c. Either party may change its address for the purpose of
this Agreement by notice in writing to the other party.
Checks are to be made payable to "The Xxxxx Xxxxxxx
University Applied Physics Laboratory".
11.4 NONASSIGNABILITY: This Agreement is binding upon and shall
inure to the benefit of JHU/APL, its successors and assignees and
shall not be assignable to another party without the written consent
of JHU/APL.
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Exhibit 10-3
11.5 PROVISIONS HELD INVALID, ILLEGAL OR UNENFORCEABLE: In the
event that any one or more of the provisions of this Agreement should
for any reason be held by any court or authority having jurisdiction
over this Agreement, or over any of the parties hereto to be invalid,
illegal or unenforceable, such provision or provisions shall be
reformed to approximate as nearly as possible the intent of the
parties, and if unreformable, shall be divisible and deleted in such
jurisdictions; elsewhere, this Agreement shall not be affected.
11.6 APPLICABLE LAW: The construction, performance, and execution
of this Agreement shall be governed by the laws of the State of
Maryland.
11.7 NON-USE OF UNIVERSITY's NAME: COMPANY shall not use the name
of THE XXXXX XXXXXXX UNIVERSITY or any of its constituent parts, such
as JHU/APL, or any contraction thereof in any advertising,
promotional, sales literature or fundraising documents without prior
written approval from JHU/APL. COMPANY shall allow at least ten (10)
business days notice of any proposed public disclosure for JHU/APL's
review and comment or to provide written approval. JHU/APL shall
consider preapproving standard language which, once approved, may be
used by COMPANY thereafter without the need for further approval from
JHU/APL.
11.8 WARRANTY: JHU/APL warrants that to the best of its
knowledge, information and belief, it owns the JHU/APL INTELLECTUAL
PROPERTY with the exception of certain retained rights of the United
States Government and has the right to grant the licenses granted
herein. JHU/APL does not warrant the validity of any JHU/APL
INTELLECTUAL PROPERTY or that practice under such JHU/APL INTELLECTUAL
PROPERTY shall be free of infringement of the rights of third parties.
EXCEPT AS EXPRESSLY SET FORTH IN THIS SECTION 11.8, COMPANY,
AFFILIATED COMPANIES AND SUBLICENSEES AGREE THAT THE JHU/APL
INTELLECTUAL PROPERTY IS PROVIDED "AS IS", AND THAT JHU/APL MAKES NO
REPRESENTATION OR WARRANTY WITH RESPECT TO THE PERFORMANCE OF LICENSED
PRODUCTS) AND LICENSED PROCESSES) INCLUDING THEIR SAFETY,
EFFECTIVENESS, OR COMMERCIAL VIABILITY. JHU/APL DISCLAIMS ALL
WARRANTIES WITH REGARD TO PRODUCTS) AND PROCESSES) LICENSED UNDER THIS
AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES, EXPRESS OR
IMPLIED, OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE.
FURTHERMORE, JHU/APL MAKES NO REPRESENTATION OR WARRANTY THAT THE USE
OF LICENSED PRODUCTS) AND LICENSED PROCESSES) WILL NOT INFRINGE ANY
PATENT OR OTHER PROPRIETARY RIGHT OF A THIRD PARTY. NOTWITHSTANDING
ANY OTHER PROVISION OF THIS AGREEMENT, JHU/APL ADDITIONALLY DISCLAIMS
ALL OBLIGATIONS AND LIABILITIES ON
14
Exhibit 10-3
THE PART OF JHU/APL AND INVENTORS, FOR DAMAGES, INCLUDING, BUT NOT
LIMITED TO, DIRECT, INDIRECT, SPECIAL, AND CONSEQUENTIAL DAMAGES,
ATTORNEYS' AND EXPERTS' FEES, AND COURT COSTS .(EVEN IF JHU/APL HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES OR COSTS),
ARISING OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE, SALE OR
PRACTICE OF THE PRODUCTS) AND PROCESSES) LICENSED UNDER THIS
AGREEMENT. COMPANY, AFFILIATED COMPANIES AND SUBLICENSEES ASSUME ALL
RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE CAUSED BY A PRODUCT
MANUFACTURED, USED, OR SOLD, OR A PROCESS PRACTICED, BY COMPANY, ITS
SUBLICENSEES AND AFFILIATED COMPANIES WHICH IS A LICENSED PRODUCTS) OR
A LICENSED PROCESSES) AS DEFINED IN THIS AGREEMENT.
11.9 INDEMNIFICATION: JHU/APL and the inventors/creators/
developers of LICENSED PRODUCTS) and LICENSED PROCESSES) will not,
under the provisions of this Agreement or otherwise, have control over
the manner in which COMPANY or its AFFILIATED COMPANIES or its
sublicensees or those operating for its account or third parties who
practice LICENSED PROCESSES) or purchase LICENSED PRODUCTS) from any
of the foregoing entities, practice the inventions, copyrighted
matter, proprietary technical information, know-how, show-how or trade
secrets of LICENSED PRODUCTS) and LICENSED PROCESS(ES). COMPANY shall
defend and hold JHU/APL, The Xxxxx Xxxxxxx University, their present
and former regents, trustees, officers, inventors/creators/developers
of JHU/APL PATENT RIGHTS and JHU/APL UNPATENTED INTELLECTUAL PROPERTY,
agents, faculty, employees and students harmless as against any
judgments, fees, expenses, or other costs arising from or incidental
to any product liability or other lawsuit, claim, demand or other
action brought as a consequence of the practice of said inventions,
copyrighted matter, proprietary technical information, know-how,
show-how or trade secrets by any of the foregoing entities, whether
or not JHU/APL or said inventors/creators/developers, either jointly
or severally, is named as a party defendant in any such lawsuit
provided, however, such judgments, fees, expenses, or other costs, do
not arise out of the gross negligence or willful misconduct of
JHU/APL, The Xxxxx Xxxxxxx University, their present and former
regents, trustees, officers, inventors/creators/developers of JHU/APL
PATENT RIGHTS and JHU/APL UNPATENTED INTELLECTUAL PROPERTY, agents,
faculty, employees and students and provided further that JHU/APL
notifies COMPANY promptly of any such lawsuit, claim, demand or other
action. Practice of the inventions, copyrighted matter, proprietary
technical information, know-how, show-how or trade secrets covered by
LICENSED PRODUCTS) or LICENSED PROCESS(ES), by an AFFILIATED COMPANY
or an agent or a sublicensee or a third party on behalf of or for the
account of COMPANY or by a third party who practices LICENSED
PROCESSES) or purchases LICENSED PRODUCTS) from COMPANY, shall be
considered COMPANY's practice of said
15
Exhibit 10-3
inventions, copyrighted matter, proprietary technical information,
know-how, show-how or trade secrets for purposes of this section 11.9.
The obligation of COMPANY to defend and indemnify as set out in this
section 11.9 shall survive the termination of this Agreement.
11.10 INSURANCE: Prior to first commercial sale of any LICENSED
PRODUCTS) or the practice of any LICENSE PROCESSES) in any particular
country, COMPANY shall establish and maintain, in each country in
which COMPANY, an AFFILIATED COMPANY or sublicensee shall test or sell
LICENSED PRODUCTS) or practice LICENSED PROCESS(ES), product liability
or other appropriate insurance coverage appropriate to the risks
involved in marketing LICENSED PRODUCTS) and practicing LICENSED
PROCESS(ES), and will annually present evidence to JHU/APL that such
coverage is being maintained. Upon JHU/APL's request, COMPANY will
furnish JHU/APL with a Certificate of Insurance of each product
liability or other insurance policy obtained and agrees to increase or
change the kind of insurance pertaining to the LICENSED PRODUCTS) and
LICENSED PROCESSES) at the request of JHU/APL. JHU/APL shall be listed
as an additional insured in COMPANY's said insurance policies. Once
such insurance coverage is established, COMPANY shall effect changes
to such insurance coverage only if reasonable and customary.
11.11 MANUFACTURE IN U.S.: COMPANY agrees that LICENSED PRODUCTS)
shall be manufactured substantially in the United States.
11.12 PUBLICATION: JHU/APL may publish manuscripts, abstracts or
the like describing the JHU/APL INTELLECTUAL PROPERTY and inventions
and copyrighted matter, but not trade secrets, contained therein
provided confidential information of COMPANY is not included or
without first obtaining approval from COMPANY to include such
confidential information. JHU/APL shall provide thirty (30) days
written notice to COMPANY of each proposed publication for COMPANY's
review and comments. Thereafter, JHU/APL shall be free to publish
manuscripts and abstracts or the like directed to the work done at
JHU/APL related to the licensed technology without prior approval.
11.13 INTEGRATION: This Agreement constitutes the entire
understanding between the parties with respect to the obligations of
the parties with respect to the subject matter hereof, and supersedes
and replaces all prior agreements, understandings, writings, and
discussions between the parties relating to said subject matter.
Neither of the parties shall be bound by any warranties,
understandings or representations with respect to such subject matter
other than as expressly
16
Exhibit 10-3
provided herein or in a writing signed with or subsequent to execution
hereof by an authorized official of the party to be bound thereby.
11.14 AMENDMENT/WAIVER: This Agreement maybe amended and any of
its terms or conditions may be waived only by a written instrument
executed by the authorized officials of the parties or, in the case of
a waiver, by the party waiving compliance. The failure of either party
at any time or times to require performance of any provision hereof
shall in no manner affect its right at a later time to enforce the
same. No waiver by either party of any condition or term in any one or
more instances shall be construed as a further or continuing waiver of
such condition or term or of any other condition or term.
11.15 PARTIES BOUND/BENEFITED: This Agreement shall be binding
upon and inure to the benefit of and be enforceable by the parties
hereto and their respective successors and permitted assigns.
11.16 MEDIATION: Except for the right of either party to apply to
a court of competent jurisdiction for a temporary restraining order, a
preliminary injunction, or other equitable relief to preserve the
status quo or prevent irreparable harm, any and all disputes arising
under or out of this Agreement which the parties themselves are unable
to resolve within 60 days after such dispute arises shall, at the
option of either party, be mediated in good faith.
The party seeking mediation of such dispute shall promptly advise
the other party of such dispute in a writing which describes in
reasonable detail the nature of such dispute and which shall state
that party's desire to initiate mediation thereof. By not later than
10 business days after the recipient has received such written notice
of dispute, each party shall have selected for itself a representative
who shall participate in such mediation, and shall additionally have
advised the other party in writing of the name of such representative.
By not later than 15 business days after the written notice of dispute
has been received, such representatives shall schedule a date for a
mediation hearing with a mutually agreeable mediator. The parties
shall enter into good faith mediation and shall share the costs
equally. If the representatives of the parties have not been able to
schedule a date for a mediation hearing with a mutually agreeable
mediator within fifteen days after receipt of a written notice of the
dispute, or if the representatives of the parties have not been able
to resolve the dispute within 15 business days after such mediation
hearing, the parties shall have the right to pursue any other remedies
legally available to resolve such dispute in a court of competent
jurisdiction. This provision shall not be construed to waive any
rights or timely performance of any obligations existing under this
Agreement.
17
Exhibit 10-3
The option to mediate provided for in this mediation clause shall
terminate upon the expiration or termination of this Agreement.
11.17 EXPORT CONTROL:
a. The export regulations of the United States Government
may prohibit, except under a special validated license,
the exportation from the United States of certain
commodities and/or related technical data. In order to
facilitate the exchange of technical information under
this Agreement, COMPANY therefore hereby gives its
assurance to JHU/APL that COMPANY will not knowingly,
unless prior authorization is obtained from the
appropriate United States Government agency or agencies,
export any apparatus or technical data received from
JHU/APL under this Agreement or LICENSED PRODUCTS) to
any restricted country specified in such regulations.
JHU/APL neither represents that a license is not
required nor that, if required, it will be issued
by the United States Government.
b. JHU/APL will be notified eight (8) weeks in advance of
any sales of LICENSED PRODUCTS) to foreign nations. No
JHU/APL drawings or procedures shall be forwarded to
any foreign owned company (either fully or partially
owned by companies outside of the United States) without
the written permission of JHU/APL.
11.18 Upon termination of this Agreement for any reason, sections
11.7, 11.8, 11.9 and 11.10 shall survive termination of this
Agreement.
11.19 FORCE MAJEURE: In the event that either Party is prevented
from performing or is unable to perform any of its obligations under
this Agreement (other than the payment of money) due to any act of
God; fire; casualty; flood; war; strike; lockout; failure of public
utilities; injunction or any act, exercise, assertion or requirement
of governmental authority, including any governmental law, order of
regulation permanently or temporarily prohibiting or reducing the
manufacture, use or sale of LICENSED PRODUCTS) or LICENSED
PROCESS(ES); epidemic; destruction of production facilities; riots;
insurrection; inability to procure or use materials, labor, equipment,
transportation or energy sufficient to meet development or
manufacturing needs; or any other cause beyond the reasonable control
of the Party invoking this section 11.19, if such Party shall have
used its best efforts to avoid such occurrence, such Party shall give
notice to the other Party in writing promptly, and thereupon the
affected Party's performance shall be excused and the
18
Exhibit 10-3
time for performance shall be extended for the period of delay or
inability to perform due to such occurrence.
[THIS SPACE INTENTIONALLY LEFT BLANK]
IN WITNESS WHEREOF the parties hereto have executed this
Agreement in duplicate by their duly authorized officers on the date
appearing below their signatures.
THE XXXXX XXXXXXX UNIVERSITY LINK PLUS CORPORATION
Applied Physics Laboratory
By:__/s/Xxxxx Swann_______________ By:__/s/Xxxxxx X. Xxxxx, Xx._____
Xxxxx Xxxxx Xxxxxx X. Xxxxx, Xx.
Director of Technology Transfer Chairman, CEO
Date: September 20, 2001 Date: September 21, 2001
The following is attached hereto:
APPENDIX A: Schedule of JHU/APL invention disclosures related to the
CORE TECHNOLOGY.
19
Exhibit 10-3
APPENDIX A
Schedule of JHU/APL Invention Disclosures Related to the CORE TECHNOLOGY
* JHU/APL File No. 1747-SPL, titled "MATLAB Speech Processing Model
that Simulates LINCOMPEX Speech Compression/Decompression Code,"
received by the JHU/APL Office of Patent Counsel on August 7, 2001.
20
Exhibit 10-3
