LICENSE AGREEMENT
This License Agreement ("Agreement"), dated as of March 5, 1998
(the "Effective Date"), is made among
1. Lanxide Technology Company L.P. of ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇.▇. ▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, ▇.▇.▇. a Delaware limited partnership
("LTC"),
2. Commodore Polymer Technologies, Inc. of ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇,
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, a Delaware corporation ("Licensee") and
3. Lanxide Corporation of ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇, ▇.▇. ▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇
▇▇▇▇▇-▇▇▇▇, U.S.A., a Delaware corporation ("Lanxide").
WHEREAS, LTC and Lanxide Performance Materials, Inc. ("LPM") are wholly
owned and controlled by Lanxide; and
WHEREAS, LTC holds rights in certain valuable Technology and Lanxide
owns certain valuable trademarks and has licensed certain of those rights to
Lanxide K.K. in Japan; and
WHEREAS, Licensee wishes to enter into the transactions contemplated
herein; and
WHEREAS, Licensee wishes to license certain of such rights for the
purposes defined herein; and
NOW, THEREFORE, in consideration of the premises and mutual covenants
contained herein, the parties hereto hereby agree as follows:
I. DEFINITIONS
Terms used with initial capital letters in this Agreement shall have
the meaning set forth below
1.1 "Affiliate(s)" of a corporation or other entity means a person or
entity that, directly or indirectly through one or more intermediaries
controls, is controlled by, or is
1.2 "CMC and/or MMC Materials" shall mean composite materials that comprise
a reinforcing material contained within a ceramic and/or metal matrix.
1.3 "Government Entity" shall mean any sovereign, state or political
subdivision thereof, whether foreign or domestic.
1.4 "Government Regulations" shall mean and include any and all terms,
conditions and provisions of: (a) any law, regulation, order, statute,
decree, rule, writ, injunction, determination or award of any court or
Governmental Entity; and (b) any contract for research, development
and/or manufacturing between LTC and any department or agency of the
United States government but only to the extent such contracts reflect
provisions required by clause (a) above to be included therein.
1.5 "Licensed Technology" shall mean Technology which is now or hereafter
owned by LTC, and all other Technology licensed to LTC without
restriction upon the grant of sublicenses including improvements and
modifications thereto, that is relevant to the manufacture of Polymer
Materials and Products but excluding Technology, the transfer or
license of which, or an interest in which, would be expressly
prohibited, either generally or specifically, by Government Regulations
or contracts with third parties which are further described in Schedule
1.5 hereto.
1.6 "Person" shall mean any individual, corporation, partnership, joint
venture, association, joint stock company, trust, unincorporated
organization or government or any agency or political subdivision
thereof.
1.7 "Polymer Materials" shall mean CERASET(TM) polyureasilazane polymers
for use in the manufacture of Products.
1.8 "Products" shall mean any and all products that contain Polymer
Materials except for the following: (a) products that contain CMC
and/or MMC Materials, (b) Polymer Materials supplied by LTC or Lanxide
to the Licensees set forth in Schedule 2.1 in accordance with currently
existing contractual rights, obligations, or commitments of LTC or
Lanxide, and (c) products produced by the Licensees set forth in
Section 2.1 in accordance with the terms of their currently existing
licenses from LTC or Lanxide.
1.9 "Technology" shall mean technical information, know-how, data,
techniques, patents, patent applications and trade secrets.
1.10 "Territory" shall mean the world excluding only the country of Japan.
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II. GRANT OF TECHNOLOGY LICENSES: TRADEMARK ASSIGNMENT
2.1 License to Licensed Technology. Except as otherwise hereinafter
provided, subject to Government Regulations and the provisions of this
Agreement, LTC hereby grants to Licensee a sole and exclusive license
to use the Licensed Technology to make, use, sell and offer for sale
Polymer Materials and Products in the Territory.
2.2 Rights Outside the Territory. The license granted under this Section 2
shall not include any rights to use the Licensed Technology for the
manufacture of Polymer Materials or Products outside the Territory and
such license shall not include any right to export Polymer Materials or
Products from the Territory.
2.3 Sublicensing Rights. The Licenses granted under this Section 2 shall
include the right to grant sublicenses, provided that any such
sublicenses shall not exceed the scope of this license.
2.4 Reservation of Rights. No rights are granted under the Licensed
Technology except as expressly set forth in this Section 2 and all
rights not expressly granted are reserved.
2.5 Provision of Technnology. Subject to applicable Government
Regulations, including obtaining any necessary licenses prior to
disclosure, LTC or Lanxide shall preserve and make available in the
English language and U.S. units of measurement to Licensee at
Licensee's request, any technical information, formulae, data,
analyses, know-how, and information with respect to the Licensed
Technology, Polymer Materials and Products and all related confidential
know-how for the Licensee's use for the purposes set out in this
Agreement. Additional technical support shall be made available by LTC
or Lanxide to Licensee on a basis of cost and availability no less
favorable to Licensee than that afforded to any other licensee of the
Licensed Technology.
2.6 Protection of Technology. Licensee shall not use and shall not permit
its authorized sublicensees to use the Licensed Technology for any
purpose other than to manufacture, use and sell Polymer Materials
and/or Products as provided in this Agreement. Licensee shall take no
action in respect of Licensed Technology which is inconsistent with the
terms of the licenses granted under this Agreement.
2.7 Acknowledgment of Rights; Patent Marking. Licensee acknowledges that
Licensee's right to use the Licensed Technology arises only out of the
licenses granted under this Agreement. All containers of Polymer
Materials and/or Products manufactured under issued patents of LTC
shall bear a patent notice as may be necessary or desirable under the
laws of the applicable Government Entities.
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III. TRADEMARK LICENSE, INDEMNITY AND INSURANCE.
3.1 Trademark License. Subject to Government Regulations and the provisions
of this Agreement, Lanxide hereby grants to Licensee an exclusive right
to use the trademark CERASET(TM) (the "Trademark") in connection with
the marketing and sale in the Territory of Polymer Materials and
Products made using the Licensed Technology. Licensee shall have the
right but not the obligation to use the Trademark in connection with
the marketing and sale of Polymer Materials and Products, providing the
requirements of Section 3.5 hereof shall be met. This provision does
not restrict Licensee from using any other trademark(s) in connection
with Polymer Materials or Products.
3.2 Registration. Registration of the Trademark shall only be made in the
name of LTC or its designee. Licensee shall provide such assistance as
LTC or its designee may require in relation to such registration in the
Territory at LTC's expense, including the execution of all documents
necessary or desirable for obtaining and maintaining such registration.
In addition, Licensee shall cooperate with LTC in seeking the
registration of this License Agreement or of an executed registered
user agreement as may be necessary or desirable under the laws of the
Territory to record the trademark license granted under this Agreement
with LTC to bear any associated expense.
3.3 Acknowledgment of Rights. As between the parties, Licensee acknowledges
that the Trademark and the goodwill associated with the trademark are
the property of Lanxide and that, except to the extent of the license
rights granted hereunder, Licensee shall not acquire any rights in such
Trademark or in any registration of the Trademark. Licensee
acknowledges that Licensee's right to use the Trademark arises only out
of the licenses granted under this Agreement. Licensee shall neither
challenge nor dispute the rights of Lanxide with respect to use or
ownership of the Trademark. However, Lanxide makes no warranty that the
Trademark will be successfully registered in any countries in the
Territory.
3.4 Use of Trademark; Quality Control. Licensee shall only use the
Trademark in connection with Products manufactured using the Licensed
Technology or as otherwise agreed to in writing by LTC or Lanxide from
time to time. The standards of manufacture of such Products shall be at
least equal to the standards of quality required by LTC and Lanxide in
relation to their other manufacturing or licensing activities. Licensee
shall follow all reasonable instruction in relation to the quality of
manufacture of Products communicated to it by any representative of
LTC or Lanxide. In no event shall Licensee manufacture any Products
which are not in accordance with applicable Government Regulations
relating to safety and product quality.
3.5 Indemnity and Insurance. Licensee shall indemnify and hold harmless
LTC, Lanxide, their Affiliates and their respective directors, officers
and employees from and against any losses, claims and damages including
reasonable attorney's fees arising out of manufacture, use or sale of
Polymer Materials and/or Products by Licensee. During the term of this
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Agreement and until the last applicable statute of limitations expires,
but only from and after the time Licensee or its permitted assigns or
sublicensees first begin to make, use, sell, or offer for sale Products
based on the Licensed Technology, Licensee will procure and maintain,
at its own cost and expense, product liability insurance written on an
occurrence basis from an insurance company rated A or above by A. M.
Bests' providing protection against liability for any alleged damage or
injury arising out of any alleged defect in material or workmanship in
such Polymer Materials and/or Products in the primary amount of 1
million U.S. dollars with respect to any one accident or occurrence,
and 1 million U.S. dollars in the aggregate. From and after the time
Licensee or its permitted assigns or sublicensees first begin to make,
use, sell, or offer for sale Products based on the Licensed Technology,
Licensee shall also procure and maintain, at its own expense, excess
liability insurance in the amount of 10 million U.S. dollars in the
aggregate. The insurance policy shall name LTC as an additional insured
and shall be endorsed to provide for written notification to LTC by
insurer not less than 30 days prior to cancellation. Licensee shall
provide LTC with a certificate of insurance evidencing such coverage
within 45 business days after such initial activity and annually
thereafter.
3.6 Inspection and Approval Rights. The Trademark shall only be used in
accordance with the license granted by this License Agreement. Licensee
shall provide to Lanxide upon request samples of Products manufactured
by Licensee and its sublicensees as well as advertising and other
publicity materials bearing the Trademark proposed to be use by its
authorized sublicensees, together with an English language translation
if necessary. Licensee shall allow and cause any of its sublicensees to
permit Lanxide or its representatives at all reasonable times to
inspect any facility where Products which will be sold under the
Trademark are manufactured.
3.7 Reservation of Rights. No rights are granted under the Trademark except
as expressly set forth in this Section 3. Without limitation, Licensee
acknowledges the rights of Lanxide and its Affiliates to use the
Trademark themselves in connection with the manufacture, or use of
products or polymer materials which have not otherwise been licensed to
Licensee by this License Agreement. Lanxide expressly reserves the
right to assign its entire right, title, and interest in and to the
Trademark to LTC, in which event LTC shall assume Lanxide's rights and
obligations under this Agreement.
IV. FEE AND ROYALTY
4.1 Fee Payment and Amount. Licensee shall pay to LTC alicense fee in
accordance with the following (the "Fee"):
1. The sum of five hundred thousand dollars ($500,000) in wired funds
on the Effective Date, wired to the account of Lanxide identified
in instructions delivered to Licensee contemporaneously with the
execution and delivery hereof,
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2. cancellation of the notes from LPM to Commodore Environmental
Services, Inc., and Commodore Applied Technologies, Inc., each an
Affiliate of Licensee, in the amounts of $3 million and $1.5
million respectively in addition to cancellation of any accrued
interest thereon.
4.2 Royalty Payment and Amount. Licensee shall pay to LTC a royalty equal
to 4% of the Net Sales Price of all Products sold by Licensee and any
of its sublicensees, which are manufactured using the Licensed
Technology until the aggregate royalty payments shall equal $4,000,000.
Thereafter perpetually Licensee shall pay to LTC a royalty equal to 2%
of the Net Sales Price of all Products sold by Licensee and its
sublicensees, which are manufactured using the Licensed Technology.
Licensee shall pay the royalty to LTC so long as Licensee or any
subcontract manufacturer or other sublicensee of Licensee shall use the
Licensed Technology. This license shall remain in force and effect
unless Licensee shall cease or suspend payment of royalties due to
non-use of the Licensed Technology. For purposes of this Agreement, the
term "non-use" shall mean (i) the failure of the Licensee to make any
sales of Polymer Materials or Products licensed hereunder for any
consecutive three (3) year period beginning from and after the date
hereof and (ii) after any such three (3) year period, the Licensee
continues to fail for a period of six (6) consecutive months after
receipt of written notice from LTC to make any such sales hereunder. In
the event of such non-use, the license granted hereby shall terminate.
4.3 Net Sales Price. The "Net Sales Price" referred to in Section 4.1 shall
mean the invoiced price for a Product less insurance, transport, bona
fide rebates and allowances to the extent identified on the invoice,
and less returns. The "Net Sales Price" applicable to transfers to
entities affiliated with Licensee will be the price at which such
Products would be sold at the time in question on an arms-length basis
to a third party.
4.4 Third Party Royalties. In any case where use of Licensed Technology
requires or required LTC to pay a royalty to a third party (whether
lump-sum or payable by reference to sales), then in the event that
Licensee determines to use such Technology, Licensee may offset the
amount of such third party royalty against the royalty specified in
Section 4.1.
4.5 Tax Withholdng. Licensee may withhold taxes from royalties payable
hereunder only to the extent that such withholding is required under
any applicable law and to the extent that Licensee provides copies of
all documents required by LTC hereunder to claim credit for such
tax payment.
4.6 Payment and Accounting. Royalties due under this Agreement shall be
paid in U.S. dollars to the bank account specified by LTC within 45
days after each of December 31, March 31, June 30, and September 30, in
relation to the period of three (3) calendar months (or less in the
case of the first such period ) ending on such date. At the same time
as payment of royalties is made, Licensee shall provide to LTC a
statement setting out the sales of products manufactured using the
Licensed Technology made during the period to which such royalties
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relate, the type and description of product in question, the applicable
Net Sales Price, the amount of royalties payable and the amount of any
tax withheld. Overdue payments shall bear interest at the annual rate
of two percent (2%) above the prime rate of Citibank, in New York.
4.7 Books and Records. Licensee shall keep proper books and records
showing the description and price of products sold, and such records
shall be open at all reasonable times to inspection by Lanxide or its
representatives, who shall be entitled to take copies of such books
and records.
4.8 Currency Conversion. For the purpose of converting into U.S. dollars
the currency in which royalties may arise, the rate of exchange to be
applied shall be the rate of exchange for the purchase of U.S. dollars
with the currency quoted by Citibank, in New York as at the close of
business on the last business day of the quarterly period to which a
payment shall relate.
V. TERM AND TERNUNATION
5.1 Effective Date. This Agreement shall come into effect upon the
Effective Date set forth in the first page hereof. This Agreement shall
thereafter be perpetual and non-cancelable, subject to earlier
termination as provided herein.
5.2 Events of Termination. This Agreement may be terminated upon the
happening of any of the following events:
(i) Upon written notice from LTC or Lanxide, in the event that
Licensee is in material breach of any of its obligations under
this Agreement, and fails to remedy that breach within 30 days
after receipt of written notice from LTC or Lanxide, requiring
it to remedy that breach;
(ii) Upon 180 days prior written notice by LTC, in the event that any
Government Entity or court requires substantial modifications to
the provisions of this Agreement;
(iii) Upon written notice by Licensee to LTC;
(iv) As provided elsewhere in this Agreement.
5.3 Effects of Termination. On termination of this Agreement for any
reason, the following provisions shall have effect:
(i) All licenses and rights granted to Licensee by Licensor shall
forthwith cease and Licensee shall cooperate in canceling any
registration of such licenses.
(ii) Licensee shall, except as otherwise agreed with LTC or Lanxide,
as applicable, forthwith cease all use of the Licensed
Technology and the Trademarks.
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(iii) Termination of this Agreement shall not affect the continued
enforceability of Section 3.7 and Section 8 and the continued
existence of the license from Licensee to Licensor under Section
7.1 hereunder of improvements and inventions made up to the date
of termination.
(iv) Licensee shall promptly deliver all Proprietary Information in
all forms to LTC or to its authorized representatives.
VI. GOVERNMENT REGULATIONS, ETC.
6.1 Compliance with Government Regulations. Licensee agrees to obtain and
maintain any necessary governmental consents or licenses. LTC
represents and warrants that, except for governmental licenses required
in connection with manufacturing the chemicals used to produce Polymer
Materials, to the best of LTC's knowledge, no other consents or
licenses are required. Licensee shall comply with all Government
Regulations governing export of goods and information from the
Territory and between the various countries of the Territory, including
without limitation the Export Administration Regulations of the United
States (15 C.F.R. 730 et seq.) as such may be amended from time to
time, and the terms of any licenses or consents obtained.
VII. PATENTS AND IMPROVEMENTS
7.1 LTC's Rights in Inventions. Licensee shall promptly disclose to LTC any
inventions or improvements which relate solely to the Licensed
Technology that are made by Licensee's employees or by the employees of
any sublicensee without the participation of any of the employees of
LTC or its Affiliates and Licensee shall obtain the right to grant, and
grant, to LTC a full world-wide, royalty-free, perpetual, irrevocable,
non-exclusive license to make, use, sell and offer for sale such
improvements or inventions related to Products that contain CMC and/or
MMC Materials with full right by LTC to grant sublicenses of such
improvements or inventions which themselves include the right to
sublicense.
The provisions of this Section 7.1 shall not affect the ownership of
inventions or improvements made by employees of LTC or its Affiliates
(with or without the participation of the employees of the Licensee or
any sublicensee) which inventions and improvements shall be the
property of LTC or its Affiliates, but subject to the licenses granted
under this Agreement.
7.2 Licensee's Rights in Inventions. LTC shall promptly disclose to
Licensee any inventions or improvements which relate solely to the
Licensed Technology and Products that are made by LTC's employees or by
the employees of any sublicensee without the participation of any of
the employees of Licensee or its Affiliates and LTC shall obtain the
right to grant, and grant, to Licensee to make, use, sell and offer for
sale such improvements or inventions in any manner not prevented by the
terms of any other existing license by which LTC is bound, with full
right by Licensee to grant sublicenses of such improvements or
inventions which themselves include the right to sublicense.
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7.3 Prosecution and Registration. Licensee shall not seek any patent or
other intellectual property registration in relation to the Licensed
Technology in its own name, other than improvements and inventions
relating to the Licensed Technology made by Licensee's employees with
or without the participation of employees of authorized sublicensees or
contract manufacturers. Licensee will cooperate with LTC as reasonably
requested by LTC in relation to obtaining and prosecuting patents in
the name of LTC. LTC and Lanxide covenant and agree to fully and timely
pay all patent maintenance fees for all patents on which the Licensed
Technology is based. However, Licensee shall have the right but not the
obligation to maintain, at Licensees expense, patents and patents
pending of LTC that directly relate to Licensed Technology but only in
the event that LTC and Lanxide are unable to do so.
7.4 Actions and Claims Against Third Parties. If, during the term of this
Agreement, Licensee learns of any infringement, unfair competition or
misappropriation ("Infringement") by a third party of any Licensed
Technology licensed to Licensee, Licensee shall promptly and fully
notify LTC in writing.
7.5 Infringement Claims by Third Parties. If, during the term of this
Agreement, any claim or action is threatened or commenced by a third
party alleging Infringement of third party rights by practice of
Licensed Technology by Licensee, Licensee shall promptly and fully
notify LTC in writing.
7.6 Procedure, LTC shall have the right, but not the obligation, to take
all reasonable steps to prosecute or defend any such claim or action
relating to the matter set forth in Sections 7.3 or 7.4, and may
institute, defend, or settle claims, actions or proceedings at its
expense. Licensee, at LTC's request shall render all reasonable
assistance and cooperation at LTC's expense. If LTC refuses or fails to
take or defend such actions within six (6) months after receipt of the
notice described above (or such shorter period as shall be reasonable
in the circumstances), then Licensee shall have the right (but not the
obligation), after first notifying LTC in writing, to institute, defend
or settle such actions or claims or proceedings, which shall be at
Licensee's expense. In such case LTC, at Licensee's request, shall
render all reasonable assistance and cooperation at Licensee's expense,
and LTC shall have the right to participate in such proceedings through
LTC's own counsel. In no event shall LTC bear any expense of any
claims, actions, or proceedings not instituted or defended by LTC
unless their written consent is obtained prior to the institution or
defense of such claims, actions, or proceedings.
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VII. CONFIDENTIALITY, RESTRICTED DISCLOSURE AND LIMIITED USE
COMMITMENTS
8.1 Confidentialfty Undertaking. The parties hereto shall (i) treat as
confidential all Proprietary Information (as hereinafter defined) which
is obtained by a receiving party directly or indirectly from a
disclosing party in connection with this Agreement, and (ii) not
disclose the same to any third party nor use the same, except as
provided herein. The provisions of this Section shall apply, without
limitation, to all information learned by the parties in the course of
implementing this Agreement concerning the business, assets, customers,
processes or methods of Lanxide, LTC, or Licensee, or their Affiliates.
The provisions of Section 8 shall remain in effect during the term of
this Agreement and for a period of five (5) years after termination or
expiration of the Agreement.
8.2 Proprietary information. As used herein, "Proprietary Information"
means any information of Lanxide, LTC, Licensee, or their Affiliates
that might reasonably be considered proprietary, sensitive or private,
including but not limited to the following:
(i) Technical information, know-how, data, techniques,
discoveries, inventions, ideas, unpublished patent applications,
proprietary information, formulae, analyses, laboratory reports,
other reports, financial information, studies, findings, or
other information relating to Lanxide, LTC, Licensee, or their
Affiliates, or the Licensed Technology or methods or techniques
used by Lanxide, LTC, Licensee, or their Affiliates, whether or
not contained in samples, documents, sketches, photographs,
drawings, lists, and the like;
(ii) Data and other information employed in connection with the
marketing of the products of Lanxide, LTC, Licensee, or their
Affiliates including cost information, business policies and
procedures, revenues and markets, distributors and customers,
and similar items of information whether or not contained in
documents or other tangible materials; and
(iii) Any other information obtained by the parties to this
Agreement during the term hereof, that is not generally known
to, and not readily ascertainable by proper means by, third
parties.
8.3 Precautions. The parties hereto shall take all appropriate steps to
prevent unauthorized disclosure of any Proprietary Information by their
employees, which steps include the execution or acceptance by all
such persons of written agreements containing obligations of
confidentiality, restricted disclosure and limited use relative thereto
consistent with this Section 8 prior to disclosure of Proprietary
Information to them. The parties shall not permit access to Proprietary
Information by their employees, except on a need-to-know basis. The
parties shall further take all appropriate steps to protect the
Proprietary Information against espionage, misuse, loss or theft.
8.4 Exclusions. The provisions of Section 8 shall not apply to any
Proprietary Information after (i) it has become generally available to
the public through no fault of the receiving party or its employees,
(ii) the receiving party can prove by clear and convincing documentary
evidence that it was in its possession before disclosure hereunder and
did not come directly or indirectly from the disclosing party or (iii)
it becomes known to the receiving party through lawful disclosure from
a third party that is not subject to a confidentiality agreement with
any disclosing party or Affiliate.
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8.5 Permitted Disclosure. Proprietary Information may not be disclosed by
the receiving party without the prior written consent of the disclosing
party, except that:
(i) Any party hereto, as appropriate, may disclose such Proprietary
Information to their employees on a need-to-know basis for the
purposes of this Agreement in accordance with Section 8.3.
(ii) Any party hereto may disclose Licensee's Proprietary
Information to its Affiliates or its other licensees or
sublicensees of the Licensed Technology, provided that prior to
disclosure of the Proprietary Information, such Persons execute
written agreements containing obligations of confidentiality
consistent with this Section 8.
(iii) In the event that a third party wishes to evaluate the
Licensed Technology in connection with a business transaction,
Lanxide may disclose as much of Licensee's Proprietary
Information to that third party as is necessary to conduct such
evaluation, provided that prior to disclosure such third party
executes a written agreement prohibiting use of the Proprietary
Information for any reason other than evaluation of this
technology and containing obligations of confidentiality
consistent with this Section 8.
8.6 Government Regulations. The provisions of this Section 8 shall not be
deemed to obligate either party to do or refrain from doing any act,
the doing or not doing of which would cause or reasonably be expected
to cause either party to fail to fulfill or comply with any obligation
or requirement imposed by any Governmental Regulation, provided that,
any disclosures of Proprietary Information made to fulfill or comply
with any such Regulation shall be made (i) only after notice to the
other party, and (ii) under conditions invoking all confidentiality
protections as are available by law or regulation.
IX. MISCELLANEOUS
9.1 Warranties. Except as otherwise expressly set forth in Section 9.2
hereof, LTC and Lanxide make no warranty or representation with respect
to the Trademarks the Licensed Technology or other assistance furnished
under this Agreement, or with respect to the Trademarks, nor are LTC or
Lanxide in any way responsible for the accuracy, utility or
completeness of any Licensed Technology or other assistance furnished
under this Agreement. LTC AND LANXIDE HEREBY EXPRESSLY DISCLAIM ANY AND
ALL WARRANTIES AND REPRESENTATIONS, EXPRESS OR IMPLIED, ARISING BY LAW
OR CUSTOM, WITH RESPECT TO THE TRADEMARKS OR THE LICENSED TECHNOLOGY,
INCLUDING, WITHOUT LIMITATION, WARRANTIES OF NON-INFRINGEMENT,
MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE. LTC AND LANXIDE
DO NOT IN ANY WAY PROMISE THAT THE LICENSED TECHNOLOGY WILL PRODUCE ANY
PARTICULAR RESULTS, PRODUCTS OR PROFITABILITY.
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9.2 Representations and Warranties. LTC and Lanxide represent and warrant,
jointly, and severally, to Licensee as follows:
(a) LTC owns free and clear of all liens and encumbrances, all right,
title and interest in and to all patents, patent applications,
trademarks (if any), and trademark applications that relate to the
Licensed Technology described on Schedule 9.2 hereto, Schedule 9.2
sets forth accurate information with respect to the filing dates of
all such items, and the existing registrations for any issued
patents and trademarks included therein are in good standing.
(b) all maintenance fees for the patents described on Schedule 9.2
hereto have been paid up through and including the date of this
Agreement;
(c) the trademarks described on Schedule 9.2 which are registered with
the U.S. Patent & Trademark Office, or for which applications for
registration with the U.S. Patent & Trademark Office have been
filed, were first used in interstate commerce on the dates
specified in the respective applications filed with the U.S. Patent
& Trademark Office, and have been continuously used in the
interstate commerce since that date.
(d) neither LTC nor Lanxide has knowledge nor has either of them
received any notice of (i) the invalidity or conflict of any patent
or trademark described on Schedule 9.2 hereto or (ii) asserted
rights of others in or to any patent or trademark described on
Schedule 9.2 hereto;
(e) To the knowledge of LTC and Lanxide, within the past five (5)
years, no claim is pending, is threatened or has been made with
respect to the Licensed Technology, Polymer Materials or Products;
(f) no claim has been made within the past five (5) years or is now
pending nor, to the knowledge of LTC and Lanxide, is or has been
threatened, within the past five (5) years, for interference,
opposition, re-examination or cancellation of the patents described
on Schedule 9.2 hereto;
(g) the execution and delivery of this Agreement will not conflict
with, alter or impair the rights in or to, or the validity of any
other agreement to which either of them are a party;
(h) to the knowledge of LTC and Lanxide, the Licensed Technology hereby
licensed does not infringe on or misapply any other technology
licensed by Lanxide;
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(i) the use of the Licensed Technology as permitted under this License
Agreement does not infringe on, misapply or interfere with
agreements that LTC or Lanxide has with any other person, and,
(j) to the knowledge of LTC and Lanxide, no other party has been
infringing on or misapplying the Licensed Technology described on
Schedule 9.2 hereto.
9.3 Force Majeure. Neither party shall be liable for failure to perform its
obligations hereunder for so long as that failure may be the result of
any event beyond its reasonable control (a "force majeure" event),
provided that such party uses all reasonable efforts to comply with the
terms of this Agreement to the extent that it is able to do so.
9.4 Waivers. The failure at any time of either party to require performance
by the other party of any obligation required by this Agreement shall
in no way affect the first party's right to require such performance at
any time thereafter, nor shall the waiver by either party of a breach
of any provision of this Agreement by the other party constitute a
waiver of any other breach of the same or any other provision or
constitute a waiver of the obligation itself.
9.5 Amendment. This Agreement may be amended only by an instrument in
writing duly executed by the parties hereto.
9.6 Assignabilily. This Agreement shall be binding upon and inure to the
benefit of the permitted successors and assigns of each party hereto.
Neither this Agreement nor any right or obligation hereunder may be
assigned or delegated in whole or in part by any party without the
prior written consent of the other parties which consent shall not be
unreasonably withheld, except that either party shall have the right to
transfer its rights and obligations to an Affiliate.
9.7 Notices. In any case where any notice or other communication is
required or permitted to be given hereunder (including, without
limitation, any change in the information set forth in this Section
9.6) such notice or communication (i) shall be in writing and in the
English language, (ii) shall be sent to the parties set out below, and
(iii) shall be (A) personally delivered, (B) sent by postage prepaid
registered airmail, (C) transmitted by telecopy receipt of which is
confirmed, (D) sent by courier service requiring signature on receipt,
as follows:
If to LTC, to:
Lanxide Technology Company, L.P.
c/o Lanxide Corporation, General Partner
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
▇.▇.▇.
Attention: President
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If to Lanxide. to:
Lanxide Corporation
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇
P.O. Box 6077
Newark, Delaware 19714-6077
U.S.A.
Attention: President
If to Licensee, to:
Commodore Polymer Technologies, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: President
All such notices or other communications shall be deemed to have
been given or received (i) upon receipt if personally delivered, or
if by courier, (ii) on the tenth business day following posting if
by postage prepaid registered airmail, or (iii) when sent with
confirmed answer back if sent by telecopy.
9.8 Choice of Law. This Agreement shall be construed and enforced in
accordance with and governed by the laws of the State of Delaware,
United States of America.
9.9 Forum Jurisdiction, Venue and Service. The Licensee hereby irrevocably
and unconditionally:
(i) agrees that any action, suit or proceeding by any person arising
from or relating to this Agreement or any statement, course of
conduct, act, omission, or event occurring in connection herewith
(collectively, "Related Litigation") may be brought in any state
or federal court of competent jurisdiction sitting in the State
of Delaware, submits to the jurisdiction of such courts, and to
the fullest extent permitted by law agrees that it will not bring
any Related Litigation in any other forum;
(ii) waives any objection which it may have at any time to the
laying of venue of any Related Litigation brought in any such
court, waives any claim that any such Related Litigation has
been brought in an inconvenient forum, and waives any right to
object, with respect to any Related Litigation brought in any
such court, that such court does not have jurisdiction over the
Licensee; and
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(iii) consents and agrees to service of any summons, complaint or
other legal process in any Related Litigation by registered or
certified U.S. mail, postage prepaid, to the Licensee at the
address for notices described in Section 9.6 hereof, and
consents and agrees that such service shall constitute in every
respect valid and effective service (but nothing herein shall
affect the validity or effectiveness of process served in any
other manner permitted by law).
9.10 Interpretation. The headings of the sections and Sections in this
Agreement are provided for convenience of reference only and shall not
be deemed to constitute a part hereof. The Agreement is executed in the
English language.
9.11 Entire Agreement. This Agreement constitutes the entire agreement of
the parties hereto with respect to the subject matter of this Agreement
and supersedes all prior agreements and understandings, oral and
written, if any, among the parties hereto with respect to the subject
matter of this Agreement.
9.12 Severability. Should any provision of this Agreement be deemed in
contradiction with the laws of any jurisdiction in which it is to be
performed or unenforceable for any reason, such provision shall be
deemed null and void, but, except as provided in Section 5.2, this
Agreement shall remain in force in all other respects.
9.13 Counterparts. This Agreement may be executed in several counterparts,
each of which shall be deemed an original, but all of which together
shall constitute one and the same instrument.
[remainder of page intentionally left blank]
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IN WITNESS WHEREOF, the parties have caused this Agreement to be
duly executed and delivered as of the day and year first above written.
LANXIDE TECHNOLOGY COMPANY, L.P. LANXIDE CORPORATION
BY: LANXIDE CORPORATION BY: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
General Partner ------------------------------
BY: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇ NAME: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇
-------------------- -------------------------------
NAME: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇ TITLE: ______________________________
--------------------
TITLE: __________________
COMMODORE POLYMER TECHNOLOGIES, INC.
BY: /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
----------------------
NAME: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
----------------------
TITLE: __________________
Signature Page to License Agreement
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SCHEDULE-1.5
Technology which is, or may in the future be
(i) provided to Lanxide or its Affiliates under Non Disclosure
Agreements and is identified as the proprietary information of
the disclosing party.
(ii) designated as classified by a government agency.
(iii) controlled by the export regulations of the United States.
(iv) Provided under license to Lanxide or its Affiliates with limits
on its use or transfer.
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SCHEDULE 2.3
LIST OF EXISTING LICENSES
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