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EXHIBIT 10.7
PATENT LICENSE AGREEMENT
THIS AGREEMENT is effective as of the 17th day of January, 1997, by and between
Motorola, Inc., a Delaware corporation having an office at 0000 Xxxx Xxxxxxxxx
Xxxx, Xxxxxxxxxx, XX 00000 U.S.A., (hereinafter called "MOTOROLA"), and
Omniview, Inc., a corporation having an office at 0000 Xxx Xxxxx Xxxxxxx,
Xxxxxxxxx, XX 00000-0000 (hereinafter called "OMNIVIEW").
WHEREAS, OMNIVIEW owns and has or may have or acquire intellectual property
rights including, but not limited to, U.S. Patent No. 5,185,667; and
WHEREAS, MOTOROLA owns and has or may have or acquire intellectual property
rights relating to improvements to U.S. Patent No. 5,185,667 under which
OMNIVIEW desires to acquire licenses as hereinafter provided; and
WHEREAS, the parties are willing to exchange certain licenses and give mutual
assertions as provided herein;
NOW, THEREFORE, in consideration of the mutual covenants and undertakings set
out herein and other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, the parties hereto agree as
follows:
Section 1 - DEFINITIONS
1.1 "SUBSIDIARY(IES)" means any legal entity, more than fifty percent (50%)
of whose outstanding shares or securities representing the right to vote for the
election of directors or other managing authority are, or more than fifty
percent (50%) of whose equity interest is, now or hereafter, owned or
controlled, directly or indirectly by that party (but only so long as such
ownership or control or equity interest exists).
1.2 "SUCCESSORS" means any legal entity that obtains 100% of the
outstanding capital stock or securities of a party.
1.3 "OMNIVIEW PATENTS" means U.S. Patent Nos. 5,185,667, 5,313,306,
5,359,363, 5,384,588, and U.S. Patent Application Nos. 08/373,434, 08/373,446,
08/386/912, 08/516,629, 08/494,599, 08/339,663, 08/662,410, 60/021,644,
08/742,684, 60/012,033 and attorney docket numbers 1096.57548, 01096-57674, and
1096.02449, including all continuations, continuations-in-part, reissues,
renewals, and extensions thereof, and any counterparts and international
applications claiming priority from any of the foregoing. OMNIVIEW represents
that the above listing is all known OMNIVIEW patent prosecution activities in
fields relating to PHOTOBUBBLES or ELECTRONIC P-T-R-M as of the EFFECTIVE DATE
of this Agreement.
1.4 "FUTURE OMNIVIEW PATENTS" means all patents, licensable patent
applications (including all world-wide: divisions, continuations,
continuations-in-part,
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reissues, renewals, and extensions thereof, any counterparts claiming priority
therefrom or the benefit of the filing date thereto, utility models, patents of
importation/confirmation, and certificates of invention) and like statutory
rights (other than design patents, registerable industrial designs and like
rights involving trade identify) owned, controlled, or sublicensable by OMNIVIEW
or its Subsidiary(ies) which relate to the fields of PHOTOBUBBLES or ELECTRONIC
P-T-R-M during the term hereof, other than OMNIVIEW PATENTS.
1.5 "MOTOROLA PATENTS" means U.S. Patent No. 5,489,940 and U.S. Patent
Application Nos. 08/512,876, 08/440,015, 08/741,008, 08/392,593, 08/392,705,
08/652,251, 08/431,185, and 08/640,637 including all divisions, continuations,
continuations-in-part, re-issues, renewals, and extensions thereof, and any
counterparts and international applications claiming priority from any of the
foregoing. MOTOROLA represents that the above list is all known patent
prosecution activities in fields of PHOTOBUBBLES or ELECTRONIC P-T-R-M by the
New Enterprise and MultiMedia organizations of MOTOROLA as of the EFFECTIVE DATE
of this Agreement.
1.6 "OMNIVIEW SOFTWARE" means a collection of instructions or data created,
used, or distributed by OMNIVIEW that, when execution by general purpose
processors, semiconductor devices, or other circuitry, are covered by the
MOTOROLA PATENTS.
1.7 "LENS DISTORTED" means distortion of an image caused as light passes
through a transmissive lens to a sensor or viewing media.
1.8 "PHOTOBUBBLES" means the creation, storage or linking for transmission,
reception, display or viewing of a hemispherical or spherical image in analog or
digital form in an appropriate medium of expression including but not limited to
print media, compact disc read only memories, holograms and television or
computer displays, such hemispherical or spherical image formed from one or more
images or portions thereof captured using a fisheye lens and: (i) a conventional
camera and film, or (ii) an equivalent digital or electronic camera, or (iii) a
video camera.
1.9 "ELECTRONIC P-T-R-M" means, individually, in combination or
collectively, apparatus, equipment, solid state devices, and/or software while
operating to perform: (i) electronic pan and tilt; or (ii) electronic pan, tilt
and magnification or (iii) electronic pan, tilt, magnification and rotation, of
LENS DISTORTED images.
1.10 "OMNIVIEW LICENSED FIELDS" means individually or in combination: (i)
the fields of PHOTOBUBBLES and ELECTRONIC P-T-R-M and (ii) a field covered by at
least one claim of OMNIVIEW PATENTS or FUTURE OMNIVIEW PATENTS issued in any of
the following countries: United States, Germany, United Kingdom, Japan, Canada,
or in the European Patent Organization.
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1.11 "LICENSED OMNIVIEW PRODUCTS" means any device, apparatus, product
and/or OMNIVIEW SOFTWARE that are made, used, or distributed by OMNIVIEW and are
covered by the MOTOROLA PATENTS.
1.12 "EFFECTIVE DATE" shall mean the date of the last necessary signature
hereto as entered on the first page hereof.
Section 2 - RELEASE
2.1 OMNIVIEW and its Subsidiary(ies) hereby release, acquit and forever
discharge MOTOROLA (and those Subsidiary(ies) affiliated with MOTOROLA on the
EFFECTIVE DATE of this Agreement) and their respective distributors, dealers,
customers and users from any and all claims or liability from MOTOROLA's use of
the services of Xx. Xxxxxxxxx and/or hiring Xx. Xxxxxxxxx, and agrees not to
bring any action or suit based upon improvements related to or advances in
OMNIVIEW technology made by MOTOROLA (and those Subsidiary(ies) affiliated with
MOTOROLA on the EFFECTIVE DATE of this Agreement) prior to the EFFECTIVE DATE.
Section 3 - GRANT
3.1 MOTOROLA and its Subsidiary(ies) hereby grant to OMNIVIEW for the lives
of the MOTOROLA PATENTS, a world-wide, royalty-free, non-exclusive,
non-transferable (except as provided in Section 6) license under the MOTOROLA
PATENTS, with the right to sub-license:
3.1.1 to make and to have made (or to write or have written) LICENSED
OMNIVIEW PRODUCTS in OMNIVIEW LICENSED FIELDS, and
3.1.2 with respect to LICENSED OMNIVIEW PRODUCTS so made (or so written), to
use, import, lease, sell, offer for sale, or otherwise dispose of such LICENSED
OMNIVIEW PRODUCTS in OMNIVIEW LICENSED FIELDS under any trade identity.
Section 4 - MOST FAVORED NATIONS - LIMITED ABILITY TO BLOCK
4.1 If, at any time during the term of this Agreement, OMNIVIEW enters into
another agreement granting:
4.1.1 an exclusive license to another party under the OMNIVIEW PATENTS and/or
FUTURE OMNIVIEW PATENTS, then MOTOROLA shall have a right to receive a
non-exclusive license upon expiration of the exclusive period under terms and
conditions at least as favorable as the most favored terms and conditions
granted to any other party; or
4.1.2 a non-exclusive license to another party under the OMNIVIEW PATENTS
and/or FUTURE OMNIVIEW PATENTS, then MOTOROLA shall have a right to receive a
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non-exclusive license under terms and conditions at least as favorable as the
most favored terms and conditions granted to any other party.
4.2 For any product or service that OMNIVIEW itself provides and does not
make available by license to a third party, MOTOROLA agrees that OMNIVIEW will
not have an obligation under this Agreement to grant to MOTOROLA an exclusive or
non-exclusive license for that same product or service, provided that OMNIVIEW
shall provide to MOTOROLA that same product or service on a most favored nations
basis and at a quality level that is at least equal to the quality level of
products or services provided by OMNIVIEW to others.
4.3 OMNIVIEW may enter into third parties exclusive service relationships
in which OMNIVIEW provides PHOTOBUBBLES in particular limited fields to such
third parties. OMNIVIEW agrees to notify MOTOROLA of all such third party
exclusive service relationships after the execution of such and identify the
exclusive field of service. After the term of exclusivity, OMNIVIEW agrees not
to enter into any further exclusive service relationships for that same
particular limited field without the prior written consent of MOTOROLA.
4.4 OMNIVIEW agrees that all exclusive service relationships entered into
by OMNIVIEW and its Subsidiary(ies) to third parties after the EFFECTIVE DATE of
this Agreement:
4.4.1 will be for a total term of exclusivity of two years or less from the
EFFECTIVE DATE thereof: and
4.4.2 will not have an option permitting renewal of exclusivity unless agreed
in writing by MOTOROLA on a case-by-case basis.
4.5 OMNIVIEW may grant to third parties one-time exclusive licenses for any
equipment and/or software product. OMNIVIEW agrees to notify MOTOROLA of all
third party exclusive licenses after the execution of such and identify the
exclusively licensed equipment and/or software product. Thereafter, OMNIVIEW
agrees not to grant any further exclusive licenses for that same equipment
and/or software product to any other party affiliated with a prior exclusively
licensed party without MOTOROLA's prior written consent.
4.6 OMNIVIEW agrees that all exclusive licenses granted by OMNIVIEW and its
Subsidiary(ies) to third parties for any equipment and/or software products
after the EFFECTIVE DATE of this Agreement:
4.6.1 will be for a total term of exclusivity of one year or less from the
EFFECTIVE DATE thereof; and
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4.6.2 will not have an option permitting renewal of exclusivity unless agreed
in writing by MOTOROLA on a case-by-case basis.
4.7 MOTOROLA acknowledges that OMNIVIEW has granted or committed to grant
prior to the EFFECTIVE DATE of this Agreement, certain exclusive licenses listed
in Exhibit 1 under the OMNIVIEW PATENTS, and that such licenses are governed by
Paragraphs 4.5 and 4.6, but are not governed by Paragraphs 4.3 and 4.4,
provided, however, that the exclusive license to Discovery Communications set
forth in Exhibit 1 shall not be governed by Paragraphs 4.5 and 4.6.
4.8 Consent required from MOTOROLA under this Section 4, shall not be
unreasonably withheld and such consent shall be deemed to have been given if
MOTOROLA does not refuse to give consent within thirty (30) days from receipt of
OMNIVIEW's written notice for request for such consent in accordance with
Section 9.14.
Section 5 - REPORTS AND NOTICE OF LICENSING ACTIVITY
5.1 OMNIVIEW shall provide MOTOROLA with a monthly report setting forth all
ongoing negotiations for exclusive and non-exclusive licenses, identifying the
party and including a description of the proposed terms of such licenses for the
products, software, or services under discussion.
5.2 OMNIVIEW shall provide notice to MOTOROLA of any wholesale or
commercial release of third party products licensed by OMNIVIEW of which
OMNIVIEW is or becomes aware.
Section 6 - TERM, TERMINATION AND ASSIGNABILITY
6.1 The term of this Agreement shall be from the EFFECTIVE DATE through the
entire unexpired term of the MOTOROLA PATENTS licensed herein unless otherwise
terminated as provided herein.
6.2 In the event of any material breach of this Agreement by either party
hereto, if such breach is not corrected within thirty (30) days after written
notice of intent to terminate for breach to the breaching party describing such
breach, this Agreement may be terminated forthwith by further written notice to
that effect from the party noticing the breach. In the event of termination of
this Agreement by one party pursuant to this Section 6.3, the licenses and
rights granted to or for the benefit of that one party hereto, depending upon
which party is doing the terminating, shall survive such termination and shall
extend for the full term of this Agreement, but the licenses and rights granted
to or for the benefit of the breaching party shall terminate as of the date
termination takes effect. Except for sublicenses under the MOTOROLA PATENTS
granted to OMNIVIEW and its Subsidiary(ies), termination of this Agreement shall
not affect any rights of sublicenses granted prior to the notice of intent to
terminate.
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6.3 SUCCESSORS shall be entitled to assume all rights, benefits,
responsibilities and obligations of this Agreement by sending written notice to
the other party, and this Agreement shall thereafter be interpreted by replacing
the SUCCESSORS name for the name of the acquired party.
6.4 SUBSIDIARY(IES) shall be entitled to receive all rights and benefits of
this Agreement by sending written notice to the other party, and this Agreement
shall thereafter be interpreted by including the name of such SUBSIDIARY(IES)
with the name of the party with which the SUBSIDIARY(IES) are affiliated. Each
party shall remain directly responsible for the performance by SUBSIDIARY(IES)
of the responsibilities and obligations of this Agreement.
6.5 OMNIVIEW may exercise its right to sublicense a third party by sending
written notice to MOTOROLA of the name, address, and other relevant contact
information for the third party sublicensee.
6.6 Except as provided in Paragraphs 6.3 through 6.5, neither this
Agreement nor any of its benefits, rights, privileges, or obligations hereunder
shall be directly or indirectly assigned, transferred, divided, shared or
sublicensed by either party to or with any individual, firm, corporation or
association whatsoever without the prior written consent of the other party and
with the authorization or approval of any governmental authority as then may be
required.
Section 7 - PUBLICITY
7.1 Nothing in this Agreement shall be construed as conferring upon either
party the right to include in advertising, packaging or other commercial
activity and reference to the other party, its trademarks, trade names, service
marks, or other trade identity in a manner likely to cause confusion.
7.2 Either party may disclose the existence of this Agreement, but shall
otherwise keep the terms of this Agreement confidential and shall not now or
hereafter divulge any part thereof to any third party except:
7.2.1 with the prior written consent of the other party; or
7.2.2 to any governmental body having jurisdiction to request and to read the
same; or
7.2.3 as otherwise may be required by law or legal processes; or
7.2.4 to legal counsel representing either party; or
7.2.5 to SUBSIDIARY(IES) and potential SUCCESSORS provided that, in case of
any divulgence pursuant to this Section 7.2.5, to the extent permissible by law,
such
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divulging party shall impose equivalent confidentiality obligations on the
recipient in writing prior to such divulgence; or
7.2.6 to potential investors provided that, in case of any divulgence
pursuant to this Section 7.2.6, to the extent permissible by law, such divulging
party shall impose equivalent confidentiality obligations on the recipient in
writing prior to such divulgence; or
7.2.7 to actual or potential third party licensees or sublicensees, provided
that, in case of any divulgence pursuant to this Section 7.2.7, to the extent
permissible by law, such divulging party shall impose equivalent confidentiality
obligations on the recipient in writing prior to such divulgence.
7.3 The parties agree that any press release concerning this Agreement
shall be mutually agreed and jointly made.
Section 8 - WARRANTIES
8.1 Each party warrants that it has the requisite authority to convey the
rights granted herein.
8.2 OMNIVIEW warrants that there are no exclusive licenses or rights to
obtain exclusive licenses other than those listed in Exhibit 1.
8.3 MOTOROLA represents that, as of the EFFECTIVE DATE of this Agreement,
it has no present intention to assign its employees Mr. Xxxxx Xxxxxx or Xx.
Xxxxxx Xxxxxxxxx to work for MOTOROLA in the LICENSED OMNIVIEW FIELDS.
Section 9 - MISCELLANEOUS PROVISIONS
9.1 Nothing contained in this Agreement shall be construed as :
9.1.1 restricting the right of either party or any of its SUBSIDIARY(IES) to
make, use, sell, lease or otherwise dispose of any particular product or
products not herein licensed;
9.1.2 CONFERRING ANY LICENSE OR OTHER RIGHT, BY IMPLICATION, ESTOPPEL OR
OTHERWISE, UNDER ANY PATENT, PATENT APPLICATION, PATENT RIGHT OR TECHNOLOGY,
EXCEPT AS HEREIN EXPRESSLY GRANTED UNDER THIS AGREEMENT;
9.1.3 conferring any license or right with respect to any trademark, trade or
brand name, a corporate name of either party or any of their respective
SUBSIDIARY(IES), or any other name or xxxx, or contraction, abbreviation or
simulation thereof;
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9.1.4 imposing on either party any obligation to institute any suit or action
for infringement of any patents licensed hereunder, or to defend any suit or
action brought by a third party which challenges or concerns the validity of any
patents licensed under this Agreement;
9.1.5 a warranty or representation by either party that any manufacture, use,
sale, lease or other disposition of any product or service offered by it will be
free from infringement of any patent other than the patents licensed to it
herein;
9.1.6 imposing on either party any obligation to file any patent application
or to secure any patent or maintain any patent in force;
9.1.7 an obligation on either party to furnish any manufacturing or technical
information under this Agreement except as the same is specifically provided for
herein.
9.2 No express or implied waiver by either of the parties to this Agreement
of any breach of any term, condition or obligation of this Agreement by the
other party shall be construed as a waiver of any subsequent breach of that
term, condition or obligation or of any other term, condition or obligation of
this Agreement of the same or of a different nature.
9.3 Anything contained in this Agreement to the contrary notwithstanding,
the obligations of the parties hereto shall be subject to all laws, both present
and future, of any Government having jurisdiction over either party hereto, and
to orders or regulations of any such Government, or any department, agency, or
court thereof, and acts of war, acts of public enemies, strikes, or other labor
disturbances, fires, floods, acts of God, or any causes of like or different
kind beyond the control of the parties, and the parties hereto shall be excused
from any failure to perform any obligation hereunder to the extent such failure
is caused by any such law, order, regulation, or contingency but only so long as
said law, order, regulation or contingency continues.
9.4 Either party may make improvements on the other party's technology or
make inventions in the other party's area of present, prospective, or
anticipated business, and may file patent applications on such improvement or
inventions as set forth in this Section 9 so long as any such patent
applications do not disclose any confidential information of the other party.
Unless otherwise already granted by this Agreement, neither party shall have an
obligation to license any patent, patent application, or like right related to
such improvement or invention to the other party and no such license or other
right shall be conferred by implication, estoppel or otherwise.
9.5 This Agreement is the result of negotiation between the parties and,
accordingly, shall not be construed for or against either party regardless of
which party drafted this Agreement or any portion thereof.
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9.6 Section 1, 2, 7, 8, and 9 shall survive termination of this Agreement
for any cause.
9.7 Nothing in this Agreement shall be construed as creating a partnership,
joint venture, or other formal business organization of any kind.
9.8 IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER PARTY BY REASON
OF THIS AGREEMENT OR ANY BREACH OR TERMINATION OF THIS AGREEMENT FOR ANY LOSS OF
PROSPECTIVE PROFITS OR INCIDENTAL OR SPECIAL OR CONSEQUENTIAL DAMAGES.
9.9 The captions used in this Agreement are for convenience only, and are
not to be used in interpreting the obligations of the parties under this
Agreement.
9.10 This Agreement and the performance of the parties hereunder shall be
construed in accordance with and governed by the laws of the State of Tennessee,
United States of America.
9.11 If any term, clause, or provision of this Agreement shall be judged to
be invalid, the validity of any other term, clause, or provision shall not be
affected; and such invalid term, clause, or provision shall be deemed deleted
from this Agreement.
9.12 MOTOROLA and OMNIVIEW will attempt to settle any claim or controversy
arising out of this Agreement through negotiation or a form of non-binding
mediation prior to commencement of court proceedings. Any dispute which cannot
be resolved between MOTOROLA and OMNIVIEW through negotiation or mediation
within two (2) months of the date of the initial demand for it by either
MOTOROLA and OMNIVIEW may then be submitted to any court having proper
jurisdiction over the matter and the parties.
9.13 This Agreement sets forth the entire Agreement and understanding
between the parties as to the subject matter hereof and merges all prior
discussions between them, and neither of the parties shall be bound by any
conditions, definitions, warranties, understanding or representations with
respect to such subject matter other that as expressly provided herein or as
duly set forth on or subsequent to the date hereof in writing and signed by a
proper and duly authorized official of the party to be bound thereby.
9.14 All notices required or permitted to be given hereunder shall be in
writing and shall be valid and sufficient if dispatched by registered mail,
postage prepaid, in any post office in the United States, addressed as follows:
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9.14.1 If to MOTOROLA:
Motorola Inc.
0000 Xxxx Xxxxxxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxx 00000
Attention: Vice President for
Patents, Trademarks & Licensing
RE: MultiMedia Group
9.14.2 If to OMNIVIEW:
Omniview, Inc.
0000 Xxx Xxxxx Xxxxxxx
Xxxxxxxxx, XX 00000-0000
Attention: Chief Executive Officer
9.14.3 The date of receipt of such a notice shall be the date for the
commencement of the running of the period provided for in such notice, or the
date at which such notice takes effect, as the case may be.
9.15 No amendment or modification of this Agreement shall be valid or
binding upon the parties unless signed by their respective, duly authorized
officers. In the case of MOTOROLA, a duly authorized officer is a Board elected
(Corporate) Vice President or superior officer having obtained any requisite
Technology Transfer Review Board or other Corporate approvals. In the case of
OMNIVIEW, a duly authorized officer is the President.
IN WITNESS WHEREOF, each party hereto has caused this Agreement to be executed
in duplicate by its duly authorized representative(s):
Motorola, Inc. Omniview, Inc.
By: /s/ Xxxx X. Xxxxxx By: /s/ H. Xxx Xxxxxx
------------------------------- -----------------------------
Title: Senior Vice President and Title: President
---------------------------- --------------------------
General Manager, MultiMedia
Group
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EXHIBIT 1
CURRENT EXCLUSIVE LICENSED FIELDS
EXCLUSIVE RENEWABLE
FIELD OF USE EXPIRES TERM
------------ --------- ---------
1. Discovery (as defined in January 17, 1997 draft license).
Communications "Topic
Linked PhotoBubbles" as
defined in January 17,
1997 draft license.
2. Resort Condominiums 11/97 11/98
International, Inc.
"Timeshare
PhotoBubbles"
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SIDE LETTER TO
MOTOROLA/OMNIVIEW
PATENT LICENSE AGREEMENT
As acknowledged by the signatures of the duly authorized representatives of the
parties hereinbelow, the terms and conditions of this side letter are agreed
upon in consideration of and in furtherance of the above-referenced agreement
between MOTOROLA and OMNIVIEW.
1. Terms appearing in all capital letters in the text of this Side Letter
shall have the meaning as set forth in above-referenced agreement.
2. That certain license agreement effective as of February 4, 1994,
between MOTOROLA and OMNIVIEW is agreed to be terminated without breach by
either party as of the EFFECTIVE DATE of the above-reference agreement.
3. MOTOROLA, after due investigation, believes that Dr. H. Xxx Xxxxxx to
be a prior inventor to claims 1, 2, 7-14, 19, and 20 of MOTOROLA's U.S. Patent
No. 5,489,940, and accordingly, on or before February 3, 1997, MOTOROLA will
file in the United States Patent & Trademark Office a written disclaimer of
claims 1, 2, 7-14, 19, and 20 of U.S. Patent No. 5,489,940.
4. MOTOROLA agrees to place in the file folders of the MOTOROLA PATENTS
pending as of the EFFECTIVE DATE, a legend requesting notification to OMNIVIEW
prior to the complete abandonment thereof (i.e., for which a continuing
application is not filed), and the opening of good faith discussions to transfer
to OMNIVIEW the abandoned application, however, MOTOROLA shall have no liability
whatsoever should the notification or discussions not take place for any reason.
5. This Side Letter will survive the termination or expiration of the
above-referenced agreement for any cause.
In Witness Whereof, each party hereto has caused this Side Letter to be executed
by its duly authorized representative:
OMNIVIEW
By: /s/ H. Xxx Xxxxxx
--------------------------------
Typed Name: H. Xxx Xxxxxx
Title: President
Date: Jan. 17, 1997
MOTOROLA
By: /s/ Xxxx X. Xxxxxx
--------------------------------
Typed Name: Xxxx X. Xxxxxx
Title: Senior Vice President and General Manager, Multi-Media Group
Date: Jan. 17, 1997
