Exhibit 10.8
License Agreement
between
Spectra Science Corporation
and
Albany International Corp.
CONFIDENTIAL
LICENSE AGREEMENT
Table of Contents
INTRODUCTION...................................................................1
ARTICLE I - Definitions........................................................1
ARTICLE II - License...........................................................5
2.1 Grant to ALBANY from SPECTRA..............................................5
2.2 Due Diligence.............................................................6
ARTICLE III - Supply...........................................................6
ARTICLE IV - Research and Development..........................................7
4.1 Support by ALBANY.........................................................7
4.2 Exchange of Information...................................................7
4.3 New Inventions............................................................7
ARTICLE V - Payments...........................................................8
5.1 Payments from ALBANY to SPECTRA...........................................8
5.2 Reduction in Payments.....................................................9
5.3 ALBANY Royalty Reports....................................................9
ARTICLE VI - Confidentiality..................................................10
6.1 Undertaking..............................................................10
6.2 Exceptions...............................................................10
6.3 Publicity................................................................11
6.4 Survival.................................................................11
ARTICLE VII - Patent Preparation..............................................11
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LICENSE AGREEMENT
Table of Contents (Continued)
ARTICLE VIII - Infringement...................................................12
8.1 Infringement.............................................................12
8.2 Third Party Patent Rights................................................13
ARTICLE IX - Dispute Resolution...............................................14
9.1 Governing Law; Jurisdiction..............................................14
9.2 Arbitration..............................................................14
ARTICLE X - Term and Termination..............................................16
10.1 Term.....................................................................16
10.2 Termination For Cause....................................................16
10.3 Effect of Termination....................................................16
ARTICLE XI - Indemnification..................................................16
11.1 Indemnification by SPECTRA...............................................16
11.2 Indemnification by ALBANY................................................17
11.3 Indemnification Procedures...............................................17
ARTICLE XII - Miscellaneous Provisions........................................18
12.1 No Warranty.............................................................18
12.2 Waiver..................................................................19
12.3 Force Majeure...........................................................19
12.4 Severability............................................................19
12.5 Government Acts.........................................................19
12.6 Assignment..............................................................19
12.7 Counterparts............................................................20
12.8 No Agency...............................................................20
12.9 Notice..................................................................20
12.10 Headings................................................................21
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Confidential
LICENSE AGREEMENT
Table of Contents (Continued)
12.11 Authority...............................................................21
12.12 Governing Law...........................................................21
12.13 Entire Agreement........................................................21
SCHEDULE 1.6 - SPECTRA Patents
EXHIBIT A - Supply Agreement
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Confidential
License Agreement
This Agreement is made and entered into as of November 7, 1997 between
Spectra Science Corporation (hereinafter "SPECTRA"), a Delaware corporation
having its principal place of business at 000 Xxxxx Xxxx Xxxxxx, Xxxxx 000,
Xxxxxxxxxx, XX 00000, and Albany International Corp. (hereinafter "ALBANY"), a
Delaware Corporation having its principal address at X.X. Xxx 0000, Xxxxxx, Xxx
Xxxx 00000.
Introduction
WHEREAS, SPECTRA has designed and developed certain dispersed laser
technology for use in garment and textile identification;
WHEREAS, ALBANY has experience and expertise in developing and
manufacturing dispersed laser products; and
WHEREAS, ALBANY wishes to obtain, and SPECTRA is willing, and has the
unrestricted right, to grant to ALBANY in accordance with the terms and
conditions set forth herein, the right to manufacture and sell textile products
incorporating dispersed laser technology.
NOW THEREFORE, in consideration of the foregoing premises, the parties
agree as follows:
Article I
Definitions
1.1. "Added Value" shall mean the difference between the Net Sales price of
an ALBANY Product incorporating Licensed Textile Product and the Net Sales price
of the most recent arm's-length sale of the same ALBANY Product not
incorporating such Licensed Textile Product to a similarly situated customer.
The parties agree that customers are similarly situated if they purchase the
same or similar Albany Products in similar proportions and volumes, for the same
or similar applications, and on the same or similar payment, inventory,
warehousing,
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shipment and service level terms. The parties agree that sales of Albany
Products under contracts for new mill or machine start-ups shall not be used as
basis for comparison. "Added Value" shall in each case be adjusted to take into
account differences in product size, treatments and other special charges. In
cases in which no arm's-length sale of the same ALBANY Product not incorporating
such Licensed Textile Product has been made during the prior six months, the
"Added Value" shall be such amount as the parties shall mutually determine.
1.2. "Affiliate" shall mean at any time, any person or legal entity then
directly or indirectly controlled by, controlling or under common control with
the party with respect to which this term is associated, and shall include,
without limitation, any person or legal entity which owns, either of record or
beneficially, more than fifty (50%) percent of the voting stock of any party
hereto, or more than fifty (50%) percent of the voting stock of which is owned
by any party hereto. The term "control" as referenced in the preceding sentence
shall include the power to direct decisions of another person or legal entity,
including the power to direct the management and policies of another person or
legal entity, whether by reason of ownership or contract. For purposes of this
Agreement, Xxxxx Albany & Co. and Xxxxx Albany & Co. (Proprietary) Ltd. shall
each be deemed an "Affiliate" of ALBANY.
1.3. "Agreed Margin" shall mean, with respect to any Licensed Textile
Product, [***]
1.4. "ALBANY Product" shall mean a product manufactured by ALBANY or any of
its Affiliates used in paper or pulp mill applications (including, without
limitation, forming, press
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
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and dryer fabrics, roll cover fabrics, press, transfer and calendar belts and
filtration media), industrial fabrics (including filtration media) and
industrial belts.
1.5. "ALBANY Technical Information" shall mean all know-how and proprietary
information of ALBANY, its Affiliates and its sublicensees relating to the
incorporation of Licensed Technology into Albany Products, including any such
know-how or proprietary information lawfully obtained from a third party without
restriction on disclosure to SPECTRA; provided that ALBANY Technical Information
shall not mean or include any information that relates to ALBANY Products
generally, whether or not combined with Licensed Technology.
1.6. "Billable Value" shall mean, with respect to services provided during
any period, the sum of (a) the number of hours spent by each ALBANY engineer,
scientist, technician or other employee working on SPECTRA research and
development projects during such period, multiplied by the applicable hourly
rate for such engineer, scientist, technician or employee, as such rates may be
in effect from time to time, and (b) ALBANY's out-of-pocket and other direct
expenses and disbursements incurred during such period as a result of such work.
1.7. "SPECTRA Patents" shall mean any existing or later-filed United States
and foreign patents and patent applications owned by SPECTRA or any of its
Affiliates, or under which any such person has rights under license, containing
claims describing Licensed Technology, applications of dispersed laser
technology or a Licensed Textile Product, including any and all divisions,
continuations, continuations-in-part, extensions, substitutions, renewals,
confirmations, supplementary protection certificates, registrations,
revalidations, reissues or additions of or to any of the aforesaid patents and
patent applications, including, without limitation, the patents, applications,
etc. set forth on Schedule 1.6 hereto. SPECTRA will keep ALBANY informed of
additions and amendments to the SPECTRA Patents.
1.8. "SPECTRA Technical Information" shall mean all know-how and
proprietary information of SPECTRA and its Affiliates relating to the
development or use of a Licensed Textile Product, including but not limited to
processes, techniques, methods, products, materials, and compositions, and
including any know-how or proprietary information lawfully obtained from a third
party without restriction on disclosure to ALBANY.
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1.9. "Due Diligence" shall mean all commercially reasonable efforts.
1.10. "Effective Date" shall mean the effective date of this Agreement as
set forth on the first page hereof.
1.11. "First Commercial Sale" shall mean the first sale of a Licensed PMC
Product by ALBANY, or an Affiliate or sublicensee of ALBANY, to a third party,
or the first sale of a SPECTRA Product by SPECTRA, or an Affiliate or sublicense
of SPECTRA, to a third party.
1.12. "Licensed Patent" shall mean the claims of any SPECTRA Patent
covering [***].
1.13. "Licensed Textile Product" shall mean monofilaments, threads or
textiles which incorporate Licensed Technology. Licensed Textile Product shall
not include any product which is not within ALBANY's existing technical and
manufacturing capacity.
1.14. "Licensed PMC Product" shall mean an ALBANY Product which
incorporates Licensed Textile Product.
1.15. "Licensed Technology" shall mean the dispersed laser technology
described in the SPECTRA Patents.
1.16. "Net Sales" shall mean the gross sales (i.e., gross invoice prices)
of Licensed PMC or SPECTRA Products, as the case may be, billed by ALBANY or
SPECTRA, or any of its Affiliates, as the case may be, to non-Affiliate
customers, less (a) actual credited allowances to such non-Affiliate customers
for damaged, outdated and returned Licensed PMC or SPECTRA Products, as the case
may be, (b) the amounts of actual and customary trade and cash discounts and
rebates given that were not already credited to such non-Affiliate customers at
the time of invoice, (c) all sales taxes, excise taxes, use taxes or
import/export duties actually paid by the seller, and (d) transportation and
insurance charges, actually paid by the seller provided that:
1.16.1. in the case of any sale or other disposal of a Licensed PMC
Product or a SPECTRA Product by a party hereto to an Affiliate, for resale,
the Net Sales shall be
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
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calculated as above on the value charged or invoiced on the first arm's
length sale to a party who is not an Affiliate;
1.16.2. in the case of any sale which is not invoiced, Net Sales shall
be calculated at the time when the Licensed PMC Product or SPECTRA Product
is paid for by substituting the actual purchase price received for such
product for the "gross invoice prices" referred to above;
1.16.3. in the case of any other sale or other disposal for value,
such as barter or counter-trade, of any Licensed PMC Product or SPECTRA
Product, or part thereof, otherwise than in an arm's length transaction
exclusively for money, Net Sales shall be calculated as above by
substituting the fair market value of the Licensed PMC Product or SPECTRA
Product (if higher) in the relevant location of sale or disposal for the
"gross invoice price".
1.17. "SPECTRA Product" shall mean a product manufactured by SPECTRA or one
of its Affiliates which incorporates Licensed Textile Product.
1.18. "Supply Agreement" shall mean that certain Supply Agreement of even
date herewith by and between SPECTRA and ALBANY, attached as Exhibit A hereto.
1.19. "Valid Claim" means a claim of an issued and unexpired Licensed
Patent.
Article II
License
2.1. Grant to ALBANY from SPECTRA. SPECTRA hereby grants to ALBANY
(including its Affiliates) the sole and exclusive right and license worldwide
under the Licensed Patents, to manufacture and sell all of SPECTRA's
requirements for Licensed Textile Product, and to make, use and sell Licensed
PMC Products. The above-referenced license shall not extend to the manufacture
of and sale of Licensed Textile Product, alone, to anyone other than SPECTRA or
its Affiliates. ALBANY shall have the right to grant sublicenses under the
Licensed Patents on terms consistent with this Agreement, provided that ALBANY
shall
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forthwith notify SPECTRA of the grant of any such sublicense, together with the
name and address of any such sublicensee, shall provide SPECTRA with a summary
of the principal terms, with financial terms redacted, of any such sublicense,
shall promptly take all reasonable steps in the event of the breach of any such
sublicense by the sublicensee to enforce the same, and in the event of a breach
of any such sublicense shall, if so requested by SPECTRA, terminate that
sublicense in accordance with the procedures prescribed therein. ALBANY shall
not permit any third party (including ALBANY subcontractors or sublicensees) to
use SPECTRA Technical Information without provisions safeguarding
confidentiality equivalent to those provided in this Agreement. Promptly
following the execution of this Agreement, and continuously during the term
hereof, SPECTRA shall furnish to ALBANY SPECTRA Technical Information and
information concerning SPECTRA Patents reasonably necessary in order for ALBANY
to perform its obligations hereunder, as such information becomes available.
2.2. Due Diligence. ALBANY shall use Due Diligence to develop Licensed
Textile Products and to develop and introduce Licensed PMC Products to its
customers worldwide and to maintain their commercial availability after
introduction to the extent that ALBANY shall reasonably determine. ALBANY shall
not be obligated to take or continue any action or expend any sum unless it has
made a determination in good faith that such action or expense is commercially
reasonable in light of prevailing business and economic factors and consistent
with its other business activities.
Article III
Supply
ALBANY will supply and SPECTRA will, and will cause each of its Affiliates
to, purchase exclusively from ALBANY all of SPECTRA's requirements for Licensed
Textile Product, upon the terms and conditions set forth in the Supply
Agreement.
SPECTRA will supply and ALBANY will purchase exclusively from SPECTRA all
of ALBANY's requirements for laser readers and reading devices for use with
Licensed PMC Products, upon the terms and conditions set forth in the Supply
Agreement.
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Article IV
Research and Development
4.1. Support by ALBANY. At no cost to SPECTRA, ALBANY shall support
SPECTRA's reasonable research and development needs relating to the development
of polymer formulations, fibers and textiles utilizing the Licensed Technology;
provided that ALBANY shall not be obligated to provide any services that exceed
its current technical and manufacturing capacity. In particular, ALBANY shall
use its best efforts, consistent with its current level of commitment, to
develop Licensed Textile Product, in monofilament or other forms, suitable for
use in garment and textile identification, and to continue to work with SPECTRA
to solve the specific problems of increasing the wavelength palette, increasing
the mechanical and chemical wear of fibers, and camouflaging the filters for
linen applications. This support by ALBANY shall include problem-solving as well
as small-scale sample preparations aimed at product development. The foregoing
notwithstanding, ALBANY's obligations under this Section 4.1 shall be limited so
that the Billable Value of services provided hereunder during any calendar year
shall not exceed the following amounts: [***]
4.2. Exchange of Information. SPECTRA and ALBANY will meet informally on a
regular basis to discuss research and development of Licensed Technology and
Licensed Textile Product, and, subject to Article VI hereof, will freely share
technical information, including SPECTRA Technical Information and ALBANY
Technical Information, which is not subject to restrictions imposed by a third
party on disclosure to or use by the other party.
4.3. New Inventions. The ownership of any new inventions arising directly
from the research and development activities provided for in this Article will
be as agreed upon by the
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
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parties on a case-by-case basis prior to the start of any specific project. In
the absence of any such agreement, any invention that relates primarily to
ALBANY Products shall be the property of ALBANY, and any invention that relates
primarily to Licensed Technology shall be the property of SPECTRA.
Article V
Payments
5.1. Payments From ALBANY to SPECTRA. ALBANY shall pay to SPECTRA a royalty
equal to (a) (i) [***]; or (ii) if such ALBANY Product is only offered with such
Licensed Textile Product as a Licensed PMC Product, [***]; and (b) [***].
Payments relating to Licensed PMC Products sold in any quarter will be made
within 45 days of the end of such quarter. In the event that either ALBANY
notifies SPECTRA that ALBANY believes that [***], the parties will meet to
discuss the possibility of either reducing or increasing such royalty, as the
case may be.
5.2. Reduction in Payments. If (i) at the end of the second full calendar
year following First Commercial Sale of a Licensed PMC Product, the Licensed
Textile Product incorporated into such Licensed PMC Product is not the subject
of a Valid Claim; and (ii) ALBANY can demonstrate that a competitive product has
been commercially launched by a third party, and that the sale of the
competitive product would have been prohibited were there a Valid
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
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Claim covering the Licensed Technology, then the applicable percentages in
Section 5.1 shall be reduced accordingly, by an amount determined in good faith
by the parties.
5.3. ALBANY Royalty Reports.
5.3.1. During the term of this Agreement after its First Commercial
Sale of a Licensed PMC Product, ALBANY shall furnish to SPECTRA within 45
days after the end of each fiscal quarter a written report or reports
covering each of ALBANY's fiscal quarters (currently ending on the last day
of March, June, September, and December, each such fiscal quarter being
sometimes referred to herein as a "royalty period") showing (a) the Net
Sales of all such products during the royalty period by ALBANY and each
Affiliate; (b) the royalties, payable in United States Dollars ("Dollars"),
which shall have accrued hereunder in respect of such sales; and (c) if
applicable, the exchange rates used in converting the royalties into
Dollars from the currencies in which sales were made. With respect to sales
of products invoiced in Dollars, the Net Sales and royalty payable shall be
expressed in Dollars. With respect to sales of products invoiced in a
currency other than Dollars, the Net Sales and royalty payable shall be
expressed in the domestic currency of the party making the sale together
with the Dollar equivalent of the royalty payable, calculated using the
simple average of the exchange rates published in The Wall Street Journal
under the heading "Currency Trading" on the last day of each month during
the royalty period in which The Wall Street Journal Currency Trading table
(or its then equivalent) is published. ALBANY shall keep accurate records
in sufficient detail to enable the royalties hereunder to be determined and
to be verified by SPECTRA.
Article VI
Confidentiality
6.1. Undertaking. During the term of this Agreement, each party shall keep
confidential, and other than as provided herein shall not use or disclose,
directly or indirectly, any trade secrets, confidential or proprietary
information, or any other knowledge, information, documents or materials, owned,
developed or possessed by the other party, whether in tangible or intangible
form, the confidentiality of which such other party takes reasonable measures to
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protect, including but not limited to SPECTRA Technical Information and ALBANY
Technical Information. Each party shall take any and all lawful measures to
prevent the unauthorized use and disclosure of such information, and to prevent
unauthorized persons or entities from obtaining or using such information. Each
party further agrees to refrain from directly or indirectly taking any action
which would constitute or facilitate the unauthorized use or disclosure of such
information. Each party may disclose such information to its Affiliates,
officers, employees and agents, to authorized licensees and sublicensees, and to
subcontractors in connection with the development or manufacture of Licensed
Textile Products, to the extent necessary to enable such parties to perform
their obligations hereunder or under the applicable license, sublicense or
subcontract, as the case may be; provided, that such Affiliates, officers,
employees, agents, licensees, sublicensees and subcontractors have entered into
appropriate confidentiality agreements for secrecy and non-use of such
information which by their terms shall be enforceable by injunctive relief at
the instance of the disclosing party. Each party shall be liable for any
unauthorized use and disclosure of such information by its Affiliates, officers,
employees and agents and any such sublicensees and subcontractors.
6.2. Exceptions. Notwithstanding the foregoing, the provisions of Section
6.1 hereof shall not apply to knowledge, information, documents or materials
which the receiving party can establish conclusively: (i) have entered the
public domain without such party's breach of any obligation owed to the
disclosing party; (ii) have become known to the receiving party prior to the
disclosing party's disclosure of such information to such receiving party; (iii)
are permitted to be disclosed by the prior written consent of the disclosing
party; (iv) have become known to the receiving party from a source other than
the disclosing party other than by breach of an obligation of confidentiality
owed to the disclosing party; (v) are disclosed by the disclosing party to a
third party without restrictions on its disclosure; (vi) are independently
developed by the receiving party without breach of this Agreement; or (vii) are
required to be disclosed by the receiving party to comply with applicable laws
or regulations, to defend or prosecute litigation or to comply with governmental
regulations, provided that the receiving party provides prior written notice of
such disclosure to the disclosing party and takes reasonable and lawful actions
to avoid or minimize the degree of such disclosure.
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6.3. Publicity. The timing and content of any press releases or other
public communications relating to this Agreement and the transactions
contemplated herein will, except as otherwise required by law, be determined
jointly by SPECTRA and ALBANY. No press release or other public communications
or sales material shall refer to ALBANY without ALBANY's written consent.
Neither party hereto nor its representatives or employees shall make any public
disclosure, whether to the press, stockholders or otherwise, revealing the
material non-public terms of this Agreement or of any amendment hereto without
the prior written approval of the other, provided however, that nothing shall
prevent either party hereto from making such disclosures or statements which in
the opinion of counsel are legally required or may be required in the opinion of
such party's certified public accountant to conform to generally accepted
accounting principles. In the event any such disclosure or statement is
required, the disclosing party will endeavor to give prior written notice to the
other party, wherever practicable, of the proposed disclosure or statement and
the reason therefor.
6.4. Survival. The provisions of this Article VI shall survive the
termination of this Agreement. The obligations of confidentiality,
non-disclosure and non-use set forth in this Article VI shall survive the
termination of this Agreement and shall continue in effect until the relevant
information falls within any of the exceptions provided for in Section 6.2
above.
Article VII
Patent Preparation
SPECTRA shall be responsible for the preparation, filing, prosecution and
maintenance of any and all patent applications and patents included in the
SPECTRA Patents. Each party shall provide to the other prompt notice as to all
matters which may come to its attention and which may affect the preparation,
filing, prosecution or maintenance of any such patent applications or patents.
ALBANY acknowledges the importance of maintaining the confidentiality of any
inventions or other information relating to potential patent claims prior to the
filing of patent applications with respect thereto and will cooperate fully with
SPECTRA with respect to such matters. If SPECTRA fails to take with Due
Diligence any action reasonably necessary to prepare, file, prosecute or
maintain patents and patent applications included in the SPECTRA Patents, ALBANY
may take such action at its own expense on behalf
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of SPECTRA after first providing SPECTRA with thirty (30) days written notice of
its intention to do so.
Article VIII
Infringement
8.1. Infringement. Each party shall notify the other promptly of any
possible infringements, unauthorized possession, knowledge or use of the
intellectual property embodied in any of the Licensed Patents by others, of
which such party becomes aware, and shall promptly furnish the other party with
full details of such infringements, unauthorized possession, knowledge or use.
SPECTRA shall have the first right, but not the obligation, at its expense, to
bring any legal action on account of any such infringements, unauthorized
possessions, knowledge or use, and ALBANY shall cooperate with SPECTRA, as
SPECTRA may reasonably request, in connection with any such action. In the event
that SPECTRA decides to bring suit, SPECTRA shall give prompt written notice to
ALBANY of that fact, and ALBANY shall take all reasonable steps to assist
SPECTRA in such suit. SPECTRA shall be entitled to all amounts recovered in such
suit, except that ALBANY shall have the right to elect, by written notice
delivered to SPECTRA within sixty (60) days following receipt by ALBANY of the
written notice from SPECTRA referenced in the preceding sentence, to pay up to
fifty (50%) percent of the litigation costs (in addition to the fees and
expenses of any separate legal counsel retained by ALBANY) and receive a
percentage of any recovery equal to the percentage of total litigation costs
(not including the fees and expenses of any separate legal counsel retained by
ALBANY) paid by ALBANY, subject to the following adjustments:
8.1.1. Each party shall first be entitled to receive reimbursement of
its share of the litigation costs incurred by it as aforesaid;
8.1.2. ALBANY shall be entitled to the full amount of any damages
awarded for lost profits or revenues from decreased sales of Licensed PMC
Products as a result of such infringement; and
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8.1.3. ALBANY shall pay SPECTRA, out of any such damages awarded for
lost profits or revenues from decreased sale of ALBANY Products, an amount
equal to the payments SPECTRA would have otherwise received hereunder and
under the Supply Agreement, if such sales of Licensed PMC Products had
occurred otherwise.
ALBANY must make such election within sixty (60) days of its receipt of
SPECTRA's notice that SPECTRA has decided to bring suit. ALBANY shall also have
the right to be represented by separate counsel, at its own expense, in any such
suit. SPECTRA shall have control over any such suit, and decisions as to
settlement, methods, and terms and conditions for resolving the suit shall be
made by SPECTRA after consultation with ALBANY.
If, within sixty (60) days after receipt by SPECTRA of a written request
from ALBANY that SPECTRA bring an action, SPECTRA does not do so, ALBANY shall
have the right, but not the obligation, at its expense and in its own name or in
the name of SPECTRA, if required by law, to do so on its own behalf and on
behalf of SPECTRA, and SPECTRA shall cooperate with ALBANY, as ALBANY may
reasonably request, in connection with such action. No such legal action may be
settled by one party without the other's prior written consent, which consent
shall not be unreasonably withheld. In such event, ALBANY shall be entitled to
all amounts recovered in such suit.
8.2. Third Party Patent Rights. Except for the representations of SPECTRA
in Section 12.1 hereof, neither party gives any warranty regarding the
infringement of third party rights by practice of the license granted hereunder.
Nevertheless, each party will promptly notify the other in the event (i) any
relevant third party patents come to its notice, (ii) any warning letter or
other notice of infringement is received by a party, or (iii) any action, suit
or proceeding is brought against a party alleging infringement of a patent right
of any third person by reason of the manufacture, use or sale of Licensed PMC
Products. The parties shall consult with each other to consider appropriate
steps to respond to such claims including, without limitation, litigation, the
undertaking of a license with the third person patent holder or termination of
any license granted hereunder. If any warning letter or other notice of
infringement is received by a party to this Agreement, or an action, suit or
proceeding is brought against a party to this Agreement alleging infringement of
a patent right of any third person or entity by reason of the manufacture, use
or
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sale of Licensed PMC Products, the recipient party shall promptly notify the
other party. The parties shall consult with each other to consider appropriate
steps to respond to such claims including, without limitation, litigation, the
undertaking of a license with the third person patent holder or termination of
any license granted hereunder. If ALBANY loses any action, suit or proceeding
referred to in this Section 8.2, whether by judgment, award, decree or
settlement (provided that no such action, suit or proceeding shall be settled
without the consent of SPECTRA), and is required to pay a royalty or other
damage award to such third person, ALBANY shall be entitled to a credit against
any aggregate amounts otherwise due to SPECTRA under this Agreement or the
Supply Agreement in an amount equal to one hundred (100%) percent of the amounts
paid to such third person, provided that the aggregate amounts otherwise due to
SPECTRA under this Agreement and the Supply Agreement in respect of any calendar
quarter shall not be reduced by more than one hundred (100%) percent (including
any reduction on account of any credit taken pursuant to the preceding
sentence).
Article IX
Dispute Resolution
9.1. Governing Law; Jurisdiction. This Agreement shall be governed and
construed in accordance with the internal laws of the Commonwealth of
Massachusetts. Both parties hereto agree to submit to personal jurisdiction in
the Commonwealth of Massachusetts and to accept and agree to venue in that
State.
9.2. Arbitration. In the event of any controversy or claim arising out of
or relating to any provision of this Agreement or the breach thereof, the
parties shall try to settle their differences amicably between themselves. Any
such controversy or claim which the parties are unable to resolve shall
initially be submitted for review and resolution by the Chief Executive Officer
of SPECTRA and a senior executive officer of ALBANY. Failing settlement of any
other controversy, any such controversy or claim shall, upon the written request
of one party delivered to the other party, be submitted to and be settled by
arbitration in Boston, Massachusetts in accordance with the rules of the
American Arbitration Association (the "AAA") then in effect (except as
hereinafter stated), and judgment upon the award rendered by the arbitrators
shall be final and may be entered in any court having jurisdiction thereof.
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Notwithstanding anything to the contrary which may be contained in the rules of
the AAA, the parties further agree as follows:
9.2.1. Each party will appoint one person approved by the AAA and
otherwise independent and unaffiliated with either party to hear and
determine the dispute within fifteen (15) days after receipt of notice of
arbitration from the noticing party. The two persons so chosen will select
a third impartial arbitrator, and their majority decision will be final and
conclusive upon the parties hereto. If either party fails to designate its
arbitrator within fifteen (15) days after delivery of the notice provided
for herein, then the arbitrator designated by the one party will act as
sole arbitrator, and will be deemed to be the single, mutually approved
arbitrator to resolve the controversy. In the event the parties are unable
to agree upon a rate of compensation for the arbitrators, they will be
compensated for their services at a rate to be determined by the AAA.
9.2.2. The parties shall enjoy, but are not limited to, the same
rights to discovery as they would enjoy under the Federal Rules of Civil
Procedure for the district in which the City of Boston is located.
9.2.3. Each party will bear its own costs, including attorneys' fees,
in the arbitration, and will split equally the cost of the arbitrators.
9.2.4. The arbitrators will, upon the request of either party, issue a
written opinion of their findings of fact and conclusions of law and shall
deliver a copy of such opinion to both parties.
9.2.5. Upon receipt of such written opinion, either party will have
the right, within fifteen (15) days thereof, to file with the arbitrators a
motion to reconsider, and the arbitrators thereupon will reconsider the
issues raised by said motion and either confirm or alter their decision,
which will then be final and conclusive upon both parties hereto. The costs
of such a motion for reconsideration and written opinion of the
arbitrators, including attorneys' fees, will be paid by the non-prevailing
party. Any motion to reconsider shall be sent to the other party at the
time it is filed with the arbitrators.
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$END
The arbitration carried out hereunder shall apply to the exclusion of
regular legal means, provided that, in urgent situations in which time is of the
essence, the rights of the parties to obtain proper remedies in courts of law or
equity shall remain unimpaired.
Article X
Term and Termination
10.1. Term. The term of this Agreement shall extend until the last to
expire of the Licensed Patents.
10.2. Termination For Cause. In addition to rights of termination which may
be granted to either party under other provisions of this Agreement, either
party may terminate this Agreement upon thirty (30) days' prior written notice
to the other party upon the material breach by such other party of any of its
obligations under this Agreement, provided that such termination shall become
effective only if the breaching party shall fail to remedy or cure the breach
within such thirty (30) day period.
10.3. Effect of Termination. Termination of this Agreement for any reason,
or expiration of this Agreement, will not affect: (i) obligations which have
accrued as of the effective date of termination or expiration, and (ii) rights
and obligations which, from the context thereof, are intended to survive
termination or expiration of this Agreement.
Article XI
Indemnification
11.1. Indemnification by SPECTRA. Subject to ALBANY's compliance with its
obligations set forth in this Agreement, SPECTRA shall indemnify and hold
ALBANY, its Affiliates and sublicensees and its and their directors, officers,
employees and agents harmless from and against any liability, damage or expense
(including reasonable attorneys' fees and costs and other expenses of
litigation), resulting from (i) the material breach by SPECTRA of any of its
representations, warranties or covenants contained in this Agreement, or (ii)
the successful enforcement (i.e., a judgment issued by a court of competent
jurisdiction against SPECTRA
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$END
unappealable or unappealed by SPECTRA within the time allowed therefor) by
ALBANY of its indemnification rights set forth in clause (i) of this Section
11.1.
11.2. Indemnification by ALBANY. Subject to SPECTRA's compliance with its
obligations set forth in this Agreement, ALBANY shall indemnify and hold
SPECTRA, its Affiliates and its and their directors, trustees, officers,
employees and agents harmless from and against any liability, damage or expense
(including reasonable attorneys' fees and costs and other expenses of
litigation), resulting from (i) the material breach by ALBANY of any of its
representations, warranties or covenants contained in this Agreement; or (ii)
the successful enforcement (i.e., a judgment issued by a court of competent
jurisdiction against ALBANY, unappealable or unappealed by ALBANY within the
time allowed therefor) by SPECTRA of its indemnification rights set forth in
clauses (i) or (ii) of this Section 11.2.
11.3. Indemnification Procedures. A party (the "indemnitee") which intends
to claim indemnification under this Article XI shall promptly notify the other
party (the "indemnitor") in writing of the action, claim or liability with
respect to which the claim of indemnification relates. The indemnitee shall
permit, and shall cause its employees and agents to permit, the indemnitor, at
its discretion, to settle any such action, claim or liability, the defense and
settlement of which shall be under the complete control of the indemnitor;
provided, however, that such settlement shall not adversely affect the
indemnitee's rights hereunder or impose any obligations on the indemnitee in
addition to those set forth herein in order for it to exercise those rights. No
such action, claim or liability shall be settled without the prior written
consent of the indemnitor, and the indemnitor shall not be responsible for any
legal fees or other costs incurred other than as provided herein. The
indemnitee, its employees and agents shall cooperate fully with the indemnitor
and its legal representatives in the investigation and defense of any action,
claim or liability covered by this indemnification. The indemnitee shall have
the right, but not the obligation, to be represented by counsel of its own
selection and expense.
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$END
Article XII
Miscellaneous Provisions
12.1. No Warranty. SPECTRA represents and warrants (a) that it has the
corporate power and authority to enter into this Agreement and to grant the
license provided for herein; (b) that, to the best of its knowledge, the
exercise by ALBANY of the rights granted hereunder will not result in the
infringement of valid patents of any third party; (c) that, except for the
License Agreement dated as of March 2, 1994 by and between Xxxxx University,
Xxxxx University Research Foundation and Spectra Science Corporation ("the Xxxxx
Agreement"), it is not a party to or paying royalties under any other agreement
relating to the Licensed Technology; (d) the transactions contemplated hereby do
not conflict with, and will not cause a default under, the Xxxxx Agreement or
any other agreement to which it is a party; and (e) it is not currently in
default and, to the best of its knowledge, no other party is currently in
default under, the Xxxxx Agreement. Each of ALBANY and SPECTRA represents and
warrants that (a) it is a corporation duly organized, validly existing and in
good standing under the laws of the state of Delaware, with full power and
authority to enter into this Agreement and the Supply Agreement and perform the
transactions contemplated hereby and thereby, and (b) once this Agreement and
the Supply Agreement have been executed and delivered by each of the parties
thereto, it will be the legal, valid and binding obligation of such party,
enforceable in accordance with its terms. Except as provided in this Section
12.1 above, neither party makes any warranty of any kind whatsoever, either
express or implied, to the other party, or to any customer of such other party,
as to the ability of such other party to utilize the patents or technical
information of the other party. Each party (the "Indemnifying Party") shall
indemnify and shall hold the other harmless against and from any and all claims
of third parties for damages due to personal injury arising out of the actions
of the Indemnifying Party, its Affiliates, agents, employees, sublicensees or
subcontractors, including but not limited to claims arising in connection with
the development, manufacturing, assembly, or sale of Licensed Textile Product,
Licensed PMC Product or products incorporating Licensed Textile Product or
Licensed PMC Product by the Indemnifying Party or its Affiliates, sublicensees
or subcontractors.
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$END
12.2. Waiver. No provision of the Agreement may be waived except in writing
by both parties hereto. No failure or delay by either party hereto in exercising
any right or remedy hereunder or under applicable law will operate as a waiver
thereof, or a waiver of a particular right or waiver of any right or remedy on
any subsequent occasion.
12.3. Force Majeure. Neither party shall be held liable or responsible to
the other party nor be deemed to have defaulted under or breached this Agreement
for failure or delay in fulfilling or performing any term of this Agreement,
other than an obligation to make a payment, when such failure or delay is caused
by or results from fire, floods, embargoes, government regulations, prohibitions
or interventions, war, acts of war (whether war be declared or not),
insurrections, riots, civil commotion's, strikes, lockouts, acts of God, or any
other cause beyond the reasonable control of the affected party.
12.4. Severability. It is the intention of the parties to comply with all
applicable laws domestic or foreign in connection with the performance of their
respective obligations hereunder. In the event that any provision of this
Agreement, or any part hereof, is found invalid or unenforceable, the remainder
of this Agreement will be binding on the parties hereto, and will be construed
as if the invalid or unenforceable provision or part thereof had been deleted,
and the Agreement shall be deemed modified to the extent necessary to render the
surviving provisions enforceable to the fullest extent permitted by law.
12.5. Government Acts. In the event that any act, regulation, directive, or
law of a government or any subdivision or agency thereof should make impossible
or prohibit, restrain, modify or limit any material act or obligation of ALBANY
or SPECTRA under this Agreement and if any party to this Agreement is adversely
affected thereby, the parties shall attempt in good faith to negotiate a lawful
and enforceable modification to this Agreement which substantially eliminates
the adverse effect; provided that failing any agreement, in that regard, the
party, if any, who is adversely affected, shall have the right, at its option,
to terminate this Agreement.
12.6. Assignment. This Agreement may not be assigned or otherwise
transferred by either party without the written consent of the other party
which, in the case of assignment to an Affiliate, shall not be unreasonably
withheld; provided, however, that either party may, without
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$END
such consent, assign this Agreement in connection with the transfer or sale of
all or substantially all of its business or in the event of its merger,
acquisition or consolidation with another company. Any purported assignment in
violation of the preceding sentence shall be void. Any permitted assignee shall
assume all obligations of its assignor under this Agreement. No assignment shall
relieve either party of responsibility for the performance of any accrued
obligation which such party then has hereunder.
12.7. Counterparts. This Agreement may be executed in duplicate both of
which shall be deemed to be originals, and both of which shall constitute one
and the same Agreement.
12.8. No Agency. Notwithstanding any of the provisions of this Agreement,
neither party shall at any time enter into, incur, or hold itself out to third
parties as having authority to enter into or incur, on behalf of the other
party, any commitment, expense, or liability whatsoever, and all contracts,
expenses and liabilities undertaken or incurred by one party in connection with
or relating to the development, manufacture or sale of Licensed Textile Product
or products incorporating Licensed Textile Product shall be undertaken, incurred
or paid exclusively by that party except as specifically referenced herein, and
not as an agent or representative of the other party.
12.9. Notice. All communications between the parties with respect to any of
the provisions of this Agreement will be sent to the addresses set out below, or
to other addresses as notified by the parties for the purpose of this clause, by
prepaid, certified air mail which shall be deemed received by the other party on
the fifth business day following deposit in the mails, or by facsimile
transmission or other electronic means of communication (which shall be deemed
received when transmitted), with confirmation by letter given by the close of
business on the next following business day:
if to ALBANY, at:
Albany International Corp.
XX Xxx 0000
Xxxxxx, Xxx Xxxx 00000
Attention: Xx Xxxx
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$END
with a copy to:
Xxxxxxx X. Xxxxx, Xx.
if to SPECTRA, at:
Spectra Science Corporation
000 Xxxxx Xxxx Xxxxxx
Xxxxx 000
Xxxxxxxxxx, XX 00000
Attention: Xxxxx Xxxxxxx
12.10. Headings. The paragraph headings are for convenience only and will
not be deemed to affect in any way the language of the provisions to which they
refer.
12.11. Authority. The undersigned represent that they are authorized to
sign this Agreement on behalf of the parties hereto. The parties each represent
that no provision of this Agreement will violate any other agreement that a
party may have with any other person or company. Each party has relied on that
representation in entering into this Agreement.
12.12. Governing Law. This Agreement shall be governed by the laws of the
Commonwealth of Massachusetts, without regard to the doctrine of conflicts of
laws.
12.13. Entire Agreement. This Agreement, including the Schedules appended
hereto, contains the entire understanding of the parties relating to the matters
referred to herein, and may only be amended by a written document, duly executed
on behalf of the respective parties.
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$END
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed by their duly authorized representatives as of the day and year first
above written.
SPECTRA SCIENCE CORPORATION
By: /s/ Xxxxx X. Xxxxxxx
---------------------------------------
Name: Xxxxx X. Xxxxxxx
Title: President & CEO
Date of Signature: Xxxxxxxx 0, 0000
XXXXXX INTERNATIONAL CORP.
By: /s/ Xxxxx X. Xxxxxxxx
---------------------------------------
Name: Xxxxx X. Xxxxxxxx
Title: Executive Vice President & Chief
Operating Officer-PMC
Date Of Signature: November 6, 1997
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$END
SCHEDULE 1.6
SPECTRA Patents
Patent Title Inventor Patent
------------ -------- ------
[***]
[***]
[***]
[***]
[***]
[*] = Information redacted pursuant to a confidential treatment request.
An unredacted version of this exhibit has been filed separately with
the Commission.
License Agreement - Schedule 1.6
Confidential