TECHNOLOGY LICENSE AGREEMENT
THIS TECHNOLOGY LICENSE AGREEMENT (the "Agreement"), made as of the 2nd
day of November, 2007, by and between CopyTele, Inc., a Delaware corporation
having an address at 000 Xxxx Xxxxxxx Xxxx, Xxxxxxxx, Xxx Xxxx 00000
("CopyTele"), and Videocon Industries Limited, a company existing under the laws
of India, having its principal place of business at 0xx Xxxxx Xxxx Xxxxx, X.X.
Xxxx, Xxxx, Xxxxxx - 400 001 (INDIA) ("Videocon").
W I T N E S S E T H:
WHEREAS CopyTele has developed and is the owner of technology (the
"CopyTele Technology"), variously protected by patents, patent applications,
know-how and trade secrets, relating to thin flat Low Voltage Phosphor displays
WHEREAS, Videocon is in the business of developing, manufacturing, and
selling CRT, LCD and Plasma displays; and
WHEREAS, Videocon and CopyTele propose jointly to further develop the
CopyTele Technology to make it suitable to be utilized in commercial
applications such as television displays; and
WHEREAS, the Parties desire to set forth their agreement for
manufacturing and selling Modules containing Displays; and
WHEREAS, Videocon desires to receive a transfer of the CopyTele
Technology and a license under the CopyTele Technology for the manufacture and
distribution of such Modules; and
WHEREAS, CopyTele is willing to transfer such CopyTele Technology and
grant Videocon such a license, subject to the terms and conditions of this
NOW, THEREFORE, in consideration of their mutual covenants herein
contained, and for other good and valuable consideration, and intending to be
legally bound hereby, the parties hereto agree as follows:
Article I. DEFINITIONS
Section 1.01 "Copyright Rights" shall mean all rights in works of authorship,
including diagrams, schematics, flow charts, manuals, and documentation,
relating to the CopyTele Technology (all of the foregoing works being referred
to herein as the "Works"), including registrations of copyright in the Works.
Section 1.02 "CopyTele Technology" shall have the meaning set forth in the
preamble, and shall include nanotube devices for use in displays, as well as
thin film electron emitters and shall also include the technical information,
know-how, manufacturing techniques, engineering data, specification of materials
and other information in the possession of CopyTele relating to or in respect of
manufacture and use of the Products and all or part of which may be necessary to
enable Videocon to manufacture the Products to a standard and quality similar to
the standard and quality of Modules.
Section 1.03 "Dhoot Family" shall mean Mr. V.N. Dhoot, Xx. X.X. Xxxxx, Xx.
X.X. Xxxxx and any of their spouses and children.
Section 1.04 "Effective Date" shall mean a date mutually agreed by CopyTele and
Videocon as soon as practicable after Videocon has received the written
approvals of the concerned statutory authorities of government of India to the
terms of this Agreement, as may be applicable, and has delivered to CopyTele a
copy of the same.
Section 1.05 "Ex-Factory Price" shall have the meaning set forth in Exhibit E.
Section 1.06 "Modules" shall have the meaning set forth in Exhibit A.
Section 1.07 "Products" shall mean Modules that are (a) within the scope of any
claim of the Patent Rights or (b) made with the use of or embody any of the
Trade Secrets or the Works.
Section 1.08 "Patent Rights" shall mean those United States and foreign patents
and patent applications and design applications and registrations identified in
Exhibit B, and patents and patent applications in the same and other countries
having the same substantive disclosure and claiming the benefit of such
applications, including continuations, divisionals, re-examinations, re-issues
and extensions thereof.
Section 1.09 "Trade Secrets" shall mean all confidential and proprietary
technical information of CopyTele relating to the CopyTele Technology and
disclosed by CopyTele to Videocon in connection with this Agreement.
Section 1.10 "Videocon Group Company" shall mean a company in which Videocon,
the Dhoot Family, or both hold either directly or indirectly at least 50% of the
share capital or have management control.
Article II. LICENSE
Section 2.01 CopyTele hereby grants to Videocon, subject to the provisions of
Section 2.04 below, a non-transferable, worldwide, royalty-bearing right and
license under the Patent Rights, the Trade Secrets, the Copyright Rights and
other CopyTele Technology to manufacture, use, sell, and offer for sale Products
or other Products that CopyTele and Videocon may mutually agree upon in writing.
CopyTele shall continue to have the right to produce and market, and to utilize
the entities listed in Exhibit C to produce and market, Products utilizing the
Section 2.02 Joint agreement of CopyTele and Videocon in writing shall be
necessary in case of grant of licenses to third parties under the CopyTele
Technology, upon reasonable terms and conditions as agreed by CopyTele and
Section 2.03 The license granted herein does not include the right to have
Products made by another.
Section 2.04 Videocon shall be entitled to grant sublicense of the Patent
Rights, Trade Secrets, Copyright Rights and other CopyTele Technology only to
other Videocon Group Company/ies (any such Videocon Group Company to which
Videocon has granted such a sublicense, a "Sublicensee"), and any such
sublicense shall be subject to the terms and conditions of this Section 2.04. In
the event that Videocon sublicenses the Patent Rights, the Trade Secrets, the
Copyright Rights or other CopyTele Technology to any Sublicensee, such
Sublicensee shall be bound by the terms of this Agreement, including, without
limitation, that it shall be liable to pay to CopyTele royalty for the Products
sold by it on the same terms and at the same rate as provided in Article VI. In
the event of any such sublicense, Videocon shall procure in writing from such
Sublicensee a sublicense agreement confirming the payment of royalty and
adherence of the terms and conditions of this Agreement as applicable to it, and
shall provide to CopyTele a copy of such sublicense agreement. Videocon shall
give to CopyTele prompt written notice of such sublicense, setting forth the
name and address of such Sublicensee, jurisdiction of incorporation or
formation, and precise amount and nature of Videocon's and the Dhoot Family's
ownership interest therein. In the event any Sublicensee to whom such
sub-license is granted ceases to qualify as Videocon Group Company, the
sublicense granted to such Sublicensee shall forthwith stand terminated.
Videocon shall be responsible for the performance by any permitted Sublicensee,
and any breach by any permitted Sublicensee shall be deemed a breach by
Section 2.05 The license granted herein includes the right only to sell and
offer for sale completed Products, and not components or sub-assemblies thereof,
to any third party or Videocon Group Company. However, Videocon or any
Sublicensee shall be entitled to sell the components or sub-assemblies to any
other Videocon Group Company.
Section 2.06 The rights licensed under the Copyright Rights include the rights
to copy and modify the Works for the internal use of Videocon in connection with
the manufacture, use, sale and offer for sale of Products, but not the right to
publish, distribute, transmit or publicly display the Works, or any combination
thereof, in whole or in part.
Article III. DISCLOSURE AND TARGET JOINT DEVELOPMENT PROGRAM
Section 3.01 CopyTele shall use its commercially reasonable efforts to disclose
to Videocon the CopyTele Technology to the extent required for suitably
qualified and experienced (in the reasonable judgment of CopyTele) personnel of
Videocon to understand the CopyTele Technology. Such efforts shall consist of
furnishing to Videocon such copies of existing documentation of the CopyTele
Technology as CopyTele deems reasonable, and providing reasonable training of
suitably qualified and experienced (in the reasonable judgment of CopyTele)
Videocon personnel at CopyTele's facility in Melville, New York, or at
Videocon's facilities at mutually agreeable times.
Section 3.02 CopyTele and Videocon shall jointly cooperate, prior to production,
to jointly implement the CopyTele Technology to produce prototypes of the
Modules in accordance with the target task & schedule as indicated in Exhibit D.
Any patent required to be registered in respect of such implementation of the
CopyTele Technology shall be jointly applied for by CopyTele and Videocon.
Article IV. PRODUCTION
Section 4.01 To prepare for the production and manufacture of the Products,
Videocon, at Videocon's sole expense, with the assistance of CopyTele, shall
undertake the following:
(a) Videocon shall provide all design and process engineering required to
produce the Products based on the CopyTele Technology.
(b) CopyTele and Videocon shall hold joint design reviews as required from
time to time.
(c) CopyTele and Videocon shall jointly agree, in writing, concerning
Product acceptance and testing criteria for engineering samples.
(d) Videocon and CopyTele shall each record all progress and achievements
in preparation for production and deliver progress reports to the other
within one week after the end of each calendar month until the
commencement of commercial production of the Products.
(e) Videocon shall purchase, at its sole expense, all tooling and fixtures
for the production of Products.
Section 4.02 Throughout the term of this Agreement, Videocon shall deliver
(and/or cause to be delivered by a Sublicensee) to CopyTele such information as
CopyTele shall reasonably request regarding Videocon's (or such Sublicensee's)
testing of the Products.
Section 4.03 After commencement of commercial production of the Products,
Videocon and any permitted Sublicensee shall provide CopyTele with production
samples from time to time as may be reasonably requested by CopyTele. Videocon
and CopyTele shall hold joint reviews of such production as may be reasonably
necessary to ensure quality of the Product from time to time.
Section 4.04 Videocon may purchase raw materials for use in production of
Products from any source, including CopyTele, as elected by Videocon.
Article V. IMPROVEMENTS
Section 5.01 All developments and improvements subsequent to the Effective Date
in the Products, design changes, modifications, revisions, additions and the
like to CopyTele Technology ("Improvements") developed, conceived or reduced to
practice jointly or severally by employees of Videocon (or contractors or agents
of Videocon), or employees of CopyTele (or contractors or agents of CopyTele),
shall be jointly owned, in equal undivided shares, by Videocon and CopyTele. The
parties shall decide jointly on seeking patent protection in any Improvements
and in strategy in filing and prosecuting patent applications, and shall share
equally in the expense of patent application preparation and prosecution, and
Section 5.02 Each party shall execute, and shall cause its employees,
contractors and agents to execute, such assignments of patent applications,
confirmatory licenses, and other documents that the other or its counsel may
reasonably request to assure that the rights licensed and granted under this
Article V fully vest in the other party.
Section 5.03 Videocon represents, warrants and covenants that there now are and
will be throughout the term of this Agreement valid and enforceable written
agreements, between Videocon and its employees, contractors and agents, pursuant
to which Videocon will have sole ownership of any Improvement and sole ownership
of any contribution of such employee, contractor or agent to any Improvement,
and further obligating such employees, contractors and agents to provide
cooperation, execute documents, and otherwise perform those acts as may be
required for Videocon to fulfill its obligations under Sections 5.01 and 5.02
hereof. Videocon further warrants that the grant of Improvements to CopyTele
shall be free of any claims for compensation by any Videocon employee,
contractor or agent.
Article VI. PAYMENTS; INSEPCTION; REFERRAL
Section 6.01 FEE AMOUNTS. In consideration of the disclosure of CopyTele
Technology under this Agreement, Videocon agrees to pay CopyTele the technology
transfer fees ("Technology Transfer Fees") in the amounts and on the dates set
forth in Exhibit E. In consideration of the license granted herein, Videocon
agrees to pay CopyTele a royalty (the "Percentage Royalty") equal to the
Percentage Royalty Rate, as set forth in Exhibit E, of the Ex-Factory Price of
all Products sold by Videocon or any permitted Sublicensee to any party. In the
event of any sublicense, Videocon shall ensure that such Sublicensee pays to
CopyTele the Percentage Royalty as set forth in Exhibit E.
Section 6.02 TIME OF PAYMENT. Videocon shall pay to CopyTele the Technology
Transfer Fees at the times set forth in Exhibit E. Videocon shall pay, and cause
each Sublicensee, as applicable, to pay, to CopyTele the Percentage Royalties
with respect to sales in each calendar quarter on or before the 90th day
following the end of such calendar quarter.
Section 6.03 MANNER OF PAYMENT. Payments shall be made, in U.S. dollars, by
electronic transfer to an account, designated by CopyTele in writing, no later
than the due date.
Section 6.04 LATE PAYMENTS; INTEREST. If Videocon or any Sublicensee fails to
make any payment of Percentage Royalties, Technology Transfer Fees or other
amount due under this Agreement to CopyTele within ten business days of its due
date, Videocon or such Sublicensee shall, in addition to and without limitation
of CopyTele's other remedies hereunder, pay to CopyTele interest thereon from
the date ten business days after its due date until paid at the annual rate
equal to LIBOR then in effect plus 5% per annum; provided that in no event shall
the rate of interest required hereunder exceed the maximum rate permitted under
Section 6.05 AUDIT. Videocon shall deliver to CopyTele a statement of the
royalty calculations as certified by its statutory auditors (and those of any
Sublicensee that is liable to pay a royalty in accordance with this Article VI),
stating the amount of the license fees payable to CopyTele under this Agreement.
Such statement of royalty calculations shall be delivered by Videocon to
CopyTele on or before 20th July for each period of January to June and on or
before 20th January for each period of July to December. In the event CopyTele
requires any further details in respect of any amounts stated in the
calculations statements, Videocon shall within 7 (seven) working days of such
request furnish such required details and/or invoice, as the case may be
including extracts from its books of records duly certified by the statutory
auditors. In the event Videocon and CopyTele are unable to resolve any
differences as regards payment of royalty, the matter will be referred to CEO of
CopyTele and Videocon. In the event the matter remains unresolved after such
reference to CEOs of CopyTele and Videocon, the differences shall be referred to
arbitration under the provisions of Section 15.08. Such submission of accounts
statement and furnishing of additional details, invoices and extracts, as the
case may be shall be at CopyTele's expense, provided, however, that if
underpayment by Videocon is determined to be more than 10% of the total payments
owed for the relevant period, Videocon shall repay and/or reimburse to CopyTele
the cost incurred for preparation of the accounts statement and furnishing of
the required details, invoices and extracts.
Section 6.06 COMPUTATION OF ROYALTIES. Royalties shall be payable based on the
invoicing of all Products, whether to third parties or to any Videocon Group
Company, whether by Videocon or by any other Videocon Group Company, and whether
or not for captive consumption by Videocon, at the Percentage Royalty rate as
set forth in Exhibit E.
Section 6.07 REFERRALS. If CopyTele receives any orders for Products, it may, in
its sole discretion, refer any such orders to Videocon. Videocon shall use its
best efforts to sell, or cause a Videocon Group Company to sell, in accordance
with this Agreement, such Products as may be necessary to fulfill any orders
referred to Videocon by CopyTele and any orders that CopyTele places provided,
however, the price to be paid to Videocon (or the Sublicensee as the case may
be), shall not be less than the price at which Videocon (or the Sublicensee, as
the case may be) is selling the same product otherwise to other customers.
Article VII. EFFORTS TO MARKET
Videocon shall use its best efforts to exploit the rights granted to it hereby
and to sell the Products therein consistent with the limitations of this
Agreement. Videocon shall be entitled to advertise the manufacture and/or sale
of the Products by them through any media as Videocon may deem appropriate.
Article VIII. TAXES
Any sales, use, rental, receipt, personal property, value-added, consumption,
goods and services, customs, excise or other tax or duty which may be levied or
assessed in connection with the licenses granted under this Agreement, the
disclosure and/or transfer of CopyTele Technology, and/or the payment of fees
under this Agreement, shall be the sole responsibility of Videocon or its
Sublicensee as the case may be. Videocon shall indemnify CopyTele from and
against any charge or assessment for any such tax or duty. Notwithstanding the
foregoing, if the Government of India or of the country of any Sublicensees
imposes a tax on royalties payable hereunder to CopyTele, then Videocon or such
Sublicensee shall pay such tax on behalf of CopyTele, shall deduct and adjust
such tax paid from the royalty payable to CopyTele and shall submit a Tax
Deduction Certificate to CopyTele. In the event CopyTele requires any assistance
in seeking credit or deduction of such payments made in connection with
CopyTele's taxes in the United States, Videocon or the Sublicensee as the case
may be, shall render all its co-operation and assistance therefore.
Article IX. CONFIDENTIAL INFORMATION.
Section 9.01 DEFINITION. The Trade Secrets and all information communicated by
either of CopyTele or Videocon (a "disclosing party") to the other (a "receiving
party"), in oral, written or electronic form, which is confidential to the
disclosing party and provides value to the disclosing party at least in part by
virtue of its confidential status, shall be deemed Confidential Information
pursuant to this Agreement. In addition, and without limitation, the terms and
conditions of this Agreement shall be deemed Confidential Information.
Section 9.02 CONFIDENTIAL NATURE. Each party, as a receiving party, acknowledges
that the Confidential Information of the disclosing party is valuable and
confidential proprietary information of the disclosing party, and that the value
of the Confidential Information derives at least in part from its confidential
Section 9.03 MAINTENANCE OF CONFIDENTIALITY. Each party, as a receiving party,
agrees to engage in efforts to maintain Confidential Information of the
disclosing party in strict confidence at least as stringent as the efforts that
the receiving party engages in to protect its own confidential information, and
in any event no less than commercially reasonable efforts. Without limiting the
foregoing, the receiving party shall restrict access to the Confidential
Information of the disclosing party, by electronic security measures in the case
of electronic files, and by physical security measures in the case of hard
copies, to those employees who have a need to know such Confidential Information
and shall advise those employees of the restrictions of this Agreement prior to
any such disclosure. The receiving party shall immediately advise the disclosing
party of any threatened, actual or apprehended disclosure of any Confidential
Section 9.04 EXCEPTIONS. As used in this Agreement, Confidential Information
shall not include:
(a) Information which is now available to the public or hereafter becomes
available to the public without any violation of this Agreement;
(b) Information disclosed in good faith to the receiving party by a third
party legally entitled to disclose the same; and
(c) Information is required to be disclosed to any government agency or any
regulatory authority or a court of competent jurisdiction provided that
the parties agree to use their best efforts to minimize the disclosure
of such information and shall consult with and assist the other party.
provided, however, that specific information shall not be deemed to be within
any of the foregoing exceptions merely because it is in the scope of more
general information within any such exceptions and a combination of features
shall not be deemed to be within any such exceptions merely because individual
features are within such exception.
Section 9.05 DISCLOSURES. Under no circumstances shall the receiving party,
without the prior written approval of the disclosing party, acknowledge to any
third party what is or is not a part of Confidential Information of the
disclosing party. In the event disclosure is required of the receiving party
under provisions of any law or court order, the receiving party will notify the
disclosing party of the obligation to make such disclosure upon receipt of such
notification or order to disclose under any law or court order. The disclosing
party may make necessary application to the concerned government department
and/or court objecting to such disclosure of Confidential Information. However,
in the event the receiving party is required to make disclosures irrespective of
the outcome of any such application, it shall do so and notify the disclosing
party accordingly. In the event of required disclosure, the receiving party will
assert confidentiality to all Confidential Information of the disclosing party
not directly required to be disclosed.
Section 9.06 PUBLIC DISCLOSURES. Notwithstanding the foregoing, each receiving
party shall be allowed to disclose Confidential Information of the disclosing
party to make any necessary announcement or reporting required by the U.S.
Securities and Exchange Commission, any stock exchange, the NASDAQ Stock Market,
the Securities and Exchange Board of India. However, the party making the
disclosure shall use reasonable efforts to notify the other party in advance of
the contents of the announcement or the reporting.
Article X. MARKING.
Videocon and its permitted Sublicensees shall include proprietary markings on
all Products, in a form reasonably specified by CopyTele in writing from time to
time, and including a patent notice in the form "Xxx. X,XXX,XXX" and/or "Xxx.
Article XI. TERM; TERMINATION
Section 11.01 TERM. The license and other rights herein granted shall commence
upon the Effective Date and shall continue unless terminated by either party as
provided in clause 11.02 hereafter; provided, however, that the parties'
obligations under Article IX shall commence immediately.
Section 11.02 TERMINATION. This Agreement and the licenses and other rights
granted hereunder may be terminated by either party by written notice upon: (a)
a material breach by the other party of its obligations hereunder, which
material breach remains unremedied 90 (ninety) days after written notice thereof
to the breaching party by the aggrieved party; (b) a filing by or against either
party for protection, receivership, reorganization or dissolution under the
Federal Bankruptcy Code or similar laws of any state or foreign country relating
bankruptcy or the protection of debtors; (c) a cessation by either party of the
conduct of its business in the ordinary course; (d) at any time prior to the
Effective Date if the necessary statutory and/or regulatory approvals of the
concerned authorities to the terms of this Agreement are not obtained within a
reasonable period of time (and in such case, this Agreement shall be of no
further force or effect, other than Articles IX and XII hereof, which shall
continue); or (e) or as otherwise mutually decided by the parties.
Article XII. RIGHTS AND DUTIES ON TERMINATION.
Upon the termination for any reason of the license and other rights
herein granted, Videocon agrees immediately to, and to cause all permitted
Sublicensees to: (a) cease and desist from any and all activities requiring use
of the rights granted hereunder, including without limitation the manufacture,
use, sale or offer for sale of Products, provided, however, that Videocon may
sell in the ordinary course of business Products completely manufactured as of
the effective date of termination, subject to all applicable terms and
conditions of this Agreement; (b) destroy or return to CopyTele all papers,
documents, notebooks, charts, computer programs, computer files, records and all
other stored information in any form incorporating any portion of the
Confidential Information; (c) direct any and all employees of Videocon and/or
employees of Sublicensee who have or have had access to any portion of the
Confidential Information not to make any further use or disclosure of any
portion of the Confidential Information for any purpose; and (d) submit a
certificate confirming having complied with (a), (b) and (c) above.
Article XIII. PATENT PROSECUTION AND MAINTENANCE; INFRINGEMENTS.
Section 13.01 GENERAL. The prosecution and maintenance of patents and
applications within the Patent Rights shall be conducted by CopyTele at
CopyTele's sole expense, in the sole and absolution discretion of CopyTele, by
counsel selected by CopyTele.
Section 13.02 ACTIONS. In the event that either party, or any permitted
Sublicensee, becomes aware of an actual, apprehended or suspected infringement
of any of the rights licensed hereunder, the parties shall promptly consult with
respect thereto. In event of an infringement, both parties must consent to any
grant of a license to the infringer. If either party refuses, in its sole and
absolute discretion, to grant a license to the infringer, then both parties must
join in an infringement suit; the parties shall jointly select counsel, shall
jointly approve any settlement, and shall share equally in expenses and any
recovery. If either party refuses, in its sole and absolute discretion, to join
in an infringement suit, then the other party may file suit for infringement and
if necessary make the other party a party defendant at the cost of the party
filing suit. The party pursuing the suit shall select counsel, approve any
settlement, and shall bear all of the costs of enforcement and retain any
recovery in its entirety. The party not joining the suit shall, at the
reasonable request and expense of the party pursuing the suit, provide such
information, documents and assistance as may be deemed necessary or appropriate
by the party pursuing the suit or its counsel in connection with enforcement
against such infringement.
Section 13.03 NOTICES. Videocon shall notify CopyTele immediately in writing of
any infringement or possible infringements made known to Videocon or any
permitted Sublicensee of any right of CopyTele. Videocon shall provide at the
reasonable request and expense of CopyTele and at CopyTele's expense, such
information, document and assistance as may be deemed necessary or appropriate
by CopyTele or its counsel in connection with enforcement against such
Article XIV. REPRESENTATIONS AND WARRANTIES.
Section 14.01 NO CONFLICTS. CopyTele represents and warrants that it has the
right to enter into this Agreement, to grant the rights granted herein, and to
perform its obligations hereunder, and that to do so will not violate or
conflict with any agreement to which CopyTele is a party or by which CopyTele is
bound, and that the Copyright Rights and Patent Rights do not violate the rights
of any third party.
Section 14.02 AUTHORITY. Videocon represents and warrants that it has the right,
power and authority to enter into this Agreement and to perform its obligations
hereunder, and to do so will not violate or conflict with any agreement to which
Videocon is a party or by which Videocon is bound.
Section 14.03 NO OTHER WARRANTIES. COPYTELE HEREBY DISCLAIMS ANY AND ALL OTHER
WARRANTIES, EXPRESS OR IMPLIED, RELATING TO THE COPYTELE TECHNOLOGY AND THE
RIGHTS GRANTED UNDER THIS AGREEMENT, INCLUDING WITHOUT LIMITATION WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, WARRANTIES OF VALIDITY,
ENFORCEABILITY AND/OR NON-INFRINGEMENT.
Section 14.04 NO INDIRECT, SPECIAL, OR CONSEQUENTIAL DAMAGES. IN NO EVENT SHALL
COPYTELE BE LIABLE TO VIDEOCON OR ANY THIRD PARTY FOR ANY INDIRECT, SPECIAL OR
CONSEQUENTIAL DAMAGES, INCLUDING WITHOUT LIMITATION WORK DELAYS OR LOST PROFITS,
RESULTING FROM THE USE OF THE COPYTELE TECHNOLOGY AND/OR PRODUCTS.
Section 14.05 INDEMNITY BY VIDEOCON. Videocon shall indemnify and hold harmless
CopyTele and its directors, officers, agents and employees from and against all
claims, suits, and damages whatsoever, including but not limited to incidental
costs, attorney's fees and punitive damages, arising from or in connection with
the breach or alleged breach by Videocon of any covenant, representation or
warranty under this Agreement or the use of the CopyTele Technology by Videocon
or any permitted Sublicensee, including the manufacture, distribution,
marketing, sale and use of Products, and including without limitation all claims
for false or misleading advertising, personal injury or property damage relating
to Products; provided, however, that CopyTele shall (a) promptly notify Videocon
in writing of such claims, and (b) provide to Videocon all reasonably available
information, assistance and authority to defend, however, reserving unto
CopyTele the right to: participate in any defense to the extent that, in its
judgment, CopyTele may be prejudiced thereby, and approve any settlement offer
made by or to Videocon which may affect CopyTele's rights or interests.
Section 14.06 INDEMNITY BY COPYTELE. CopyTele shall indemnify and hold harmless
Videocon and its directors, officers, agents and employees from and against all
claims, suits, and damages whatsoever, including but not limited to incidental
costs, attorney's fees and punitive damages, arising from or in connection with
the breach or alleged breach by CopyTele of any covenant, representation or
warranty under this Agreement or the use of CopyTele Technology by Videocon;
provided, however, that Videocon shall (a) promptly notify CopyTele in writing
of such claims, and (b) provide to CopyTele all reasonably available
information, assistance and authority to defend, however, reserving unto
Videocon the right to: participate in any defense to the extent that, in its
judgment, Videocon may be prejudiced thereby, and approve any settlement offer
made by or to CopyTele which may affect Videocon's rights or interests.
Section 14.07 NOTICE OF ACTIONS. Videocon agrees to notify CopyTele immediately
of any actions, claims or demands brought or made against Videocon whose outcome
may affect the rights of CopyTele in any of the rights licensed or otherwise
granted under this Agreement.
Article XV. MISCELLANEOUS.
Section 15.01 ENTIRE AGREEMENT; AMENDMENTS. This Agreement is the entire
agreement of the parties with respect to the subject matter hereof, and
supersedes all prior or contemporaneous agreements, arrangements, and
understandings, whether oral or written, regarding the subject matter hereof.
This Agreement may be amended only by a written instrument signed on behalf of
the parties by their duly authorized representatives.
Section 15.02 BINDING AGREEMENT; ASSIGNMENT. This Agreement shall be binding
upon and inure to the benefit of the parties and their respective successors,
legal representatives and assigns. This Agreement and the license herein granted
shall be assignable and transferable by CopyTele, upon written notice to
Videocon. Videocon shall have no right to assign this Agreement or the license
granted herein except with the written consent of CopyTele. For purposes of this
Section 15.02, a change in control of Videocon or a merger in which Videocon
does not survive shall be deemed an assignment.
Section 15.03 RELATIONSHIP OF PARTIES. In making and performing this Agreement,
CopyTele and Videocon act and shall act at all times as independent contractors
and nothing contained in this Agreement shall be construed or implied to create
an agency or partnership relationship between the parties. At no time shall
either party make commitments or incur any charges or expenses for or in the
name of the other.
Section 15.04 SURVIVAL. It is expressly understood and agreed that Article V
(but only as to Improvements conceived, developed and reduced to practice prior
to termination or cancellation), Article VI, Article VIII, Article IX, Article
XII, Article XIV, and Article XV hereof shall survive the termination of this
Agreement and of the license herein granted and shall remain in full force and
Section 15.05 GOVERNING LAW. This Agreement shall be governed by and construed
in accordance with the laws of the State of New York, without giving effect to
conflict of laws.
Section 15.06 NOTICES. Any notice or other communication required or permitted
to be given hereunder shall be in writing and shall be given by Federal Express,
Express Mail, or similar overnight delivery or courier service or delivered (in
person or by telecopy or similar telecommunications equipment) against receipt
to the party to whom it is to be given at the address of such party set forth
for such party below (or to such other address as the party shall have furnished
in writing in accordance with the provisions of this Section 15.06), with a copy
to each of the other parties hereto. Any notice shall be deemed given at the
time of receipt thereof.
If to CopyTele:
000 Xxxx Xxxxxxx Xxxx
Xxxxxxxx, Xxx Xxxx 00000
Xxxxxx Xxxxxx of America
Attention: Xxxxx X. Xxxxxx, Chairman & CEO
If to Videocon:
Videocon Industries Limited
0xx Xxxxx, Xxxx Xxxxx, X.X.Xxxx
Xxxx, Xxxxxx 400 001, INDIA
Attention: Xxxxxxxxx X. Xxxxx, Director / Xxxxxx Xxxxxxxx,
Xx. Vice President
Section 15.07 SEVERABILITY. If any provision of this Agreement is invalid,
illegal, or unenforceable, the balance of this Agreement shall remain in effect,
and if any provision is inapplicable to any person or circumstance, it shall
nevertheless remain applicable to all other persons and circumstances.
Section 15.08 DISPUTES. Any dispute, difference or controversy arising out of or
relating to this Agreement, any document or instrument delivered pursuant to, in
connection with, or simultaneously with this Agreement, or any breach of this
Agreement or any such document or instrument, with the exception of an actual or
apprehended unlawful disclosure or misappropriation of Confidential Information,
shall be subject to settlement proceedings under the then-applicable
International Chamber of Commerce ("ICC") ADR Rules (or successor rules). If the
dispute has not been settled pursuant to the said Rules within 45 days following
the filing of a Request for ADR or within such other period as the parties may
agree in writing, such dispute shall be finally settled by arbitration under the
then-applicable Rules of Arbitration of the ICC (or successor rules), by a
proceeding conducted in London, England, United Kingdom, in the English
language, by a single arbitrator appointed in accordance with the said Rules of
Arbitration. The arbitrator may grant injunctions or other relief in such
dispute or controversy. The decision of the arbitrator shall be final,
conclusive, and binding on the parties to the arbitration. Judgment may be
entered on the arbitrator's decision in any court having jurisdiction, and the
parties irrevocably consent to the jurisdiction of the courts of the State of
New York and of any federal court located in such State for this purpose. In any
such arbitration, the parties waive personal service of any process or other
papers and agree that service thereof may be made in accordance with Section
15.06. Each party shall pay one-half of the costs and expenses of such
arbitration, and each shall separately pay its own attorneys' fees and expenses.
Notwithstanding the foregoing, either party may apply to any court of the State
of New York or any federal court located in such State for injunctive relief to
maintain the status quo until the arbitration award is rendered or the
controversy is otherwise resolved, and each party hereby consents to the
exclusive jurisdiction and venue of such courts for such purpose.
Section 15.09 INJUNCTIONS. Each party agrees that any actual, apprehended or
threatened disclosure of any portion of the Confidential Information of the
other to any third party will actually, materially and irreparably damage the
disclosing party, in an amount and a manner that is not capable of remedy by the
payment of damages alone, and each party shall have the right to obtain
injunctions, both permanent and preliminary or temporary restraining orders,
either on notice or ex parte, without the need to post bond, against continuing
any such violation or commencing any threatened violation.
Section 15.10 WAIVER. Any waiver by any party of a breach of any provision of
this Agreement shall not operate as or be construed to be a waiver of any other
breach of such provision or of any breach of any other provision of this
Agreement. The failure of a party to insist upon strict adherence to any term of
this Agreement on one or more occasions shall not be considered a waiver or
deprive that party of the right thereafter to insist upon strict adherence to
that term or any other term of this Agreement. Any waiver must be in writing.
Section 15.11 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
Section 15.12 HEADINGS. The headings in this Agreement are solely for
convenience of reference and shall be given no effect in the construction or
interpretation of this Agreement.
IN WITNESS WHEREOF, the parties hereto have duly executed this
Agreement as of the date first above set forth.
COPYTELE, INC. VIDEOCON INDUSTRIES LTD.
By: /s/ Xxxxx X. Xxxxxx By: /s/ Xxxxxxxxx X. Xxxxx
Xxxxx X. Xxxxxx Xxxxxxxxx X. Xxxxx
Chairman & CEO Chairman & Managing Director