[EXHIBIT 10.51 - Certain portions of this document have been
omitted in the publicly filed version of this document pursuant
to the Registrant's request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Omitted confidential information is indicated in brackets
in this Exhibit.]
SPD-SMART WINDOW LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
XXXXXXXXXX GROUP LIMITED
This License Agreement ("Agreement") effective as of
September 10, 2009 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation (hereinafter called
"LICENSOR") and XXXXXXXXXX GROUP LIMITED, a
corporation organized under the laws of the United Kingdom
(hereinafter called "LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research
and development in the application of physicochemical concepts
to Light Valves and Licensed Products (both as hereinafter
defined) and of methods and apparatus relating to products
incorporating such concepts; and is possessed of and can convey
information and know-how for such products and rights to
manufacture, use and sell such products; and
WHEREAS, LICENSEE and its Affiliates are interested
in manufacturing and selling Licensed Products; and
WHEREAS, LICENSEE and its Affiliates desire to
acquire from LICENSOR, and LICENSOR desires to grant to
LICENSEE and its Affiliates, certain rights and licenses with
respect to such technology of LICENSOR;
NOW, THEREFORE, in consideration of the premises
and the mutual covenants herein and for other good and
valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the
respective meanings set forth in this Article 1.
"Affiliates" means (a) any entity which is wholly owned by
Licensee, or any entity which wholly owns Licensee, and (b)
any entity which is 50% or greater, owned or controlled by
Licensee, including specifically named entities as listed,
namely, Changchun Pilkington Safety Glass co. Ltd, Wuhan
Xxxxxx Xxxxxxxxxx Safety Glass Co. Ltd and Pilkington
Argentina SA, which list may be revised from time to time as
mutually agreed by Licensor and Licensee in writing, and any
entity which owns or controls more than 50% of Licensee.
The "Effective Date" of this Agreement shall be the date which
is the last date of formal execution of this Agreement by duly
authorized representatives of the parties to this Agreement as
indicated on the signature page of this Agreement.
"Licensed Product" means only a Light Valve Transportation
Vehicle Window Product incorporating a Light Valve. The term
"Licensed Product" shall not include Light Valves used or
intended for use in any product other than as specifically
defined herein, such as but not limited to, other window
products not specifically defined herein, such as, but not limited
to, Light Valve Architectural Window Products, window
products for other vehicles not specifically included in the
definition of Light Valve Transportation Vehicle Window
Product, and non-window products such as but not limited to
displays, eyewear, sunvisors, toys, mirrors or filters for
scientific instruments, lamps or contrast enhancement of
displays. The term "display" means any device for displaying
letters, numbers, images or other indicia or patterns. Nothing
contained herein shall permit LICENSEE to sell, lease, or
otherwise dispose of a Light Valve which is not incorporated or
intended to be incorporated as described above into a Light
Valve Transportation Vehicle Window Product.
"Licensed Territory " means all countries of the world.
"LICENSEE" where used throughout this Agreement shall be
deemed to mean any or all of Xxxxxxxxxx Group Limited and the
Affiliates together.
"Light Valve" means a variable light transmission device which
has been developed by or for LICENSOR and in respect of
which the patents and patent applications listed on Schedule A
and the Technical Information of LICENSOR apply comprising:
a cell including cell walls, containing or adapted to contain an
activatable material, described hereinafter, such that a change in
the optical characteristics of the activatable material affects the
characteristics of light absorbed by, transmitted through and/or
reflected from the cell; means incorporated in or on the cell, or
separate therefrom for applying an electric or magnetic field to
the activatable material within the cell; and coatings (including,
but not limited to, electrodes), spacers, seals, electrical and/or
electronic components, and other elements incorporated in or on
or combined with the cell. The activatable material, which the
cell contains or is adapted to contain, includes in it solid
suspended particles, which when subjected to a suitable electric
or magnetic field, orient to produce a change in the optical
characteristics of the device, and may be in the form of a liquid
suspension, gel, film or other material.
"Light Valve Architectural Window Product" means a Light
Valve used or intended for use solely as a window integrally
incorporated in, or attached as a fixture to the external structure
or internal structure of any building, whether permanent or
temporary, and whether above or below ground.
"Light Valve Transportation Vehicle Window Product" means a
Light Valve used or intended for use as a window (including
sunroofs, vehicle roofs, roof panels, windshields, and side and
rear window panes which are an integral part of the internal or
external structure of such vehicle) whether the window is
supplied as original equipment or a replacement window pane,
integrally incorporated in a transportation vehicle of a type not
primarily designed or primarily intended for military use. The
term "Light Valve Transportation Vehicle Window Product"
shall not include a Light Valve used or intended for use as a
sunvisor, but may include Light Valves which are used or
intended for use in a non-military transportation vehicle as, or as
part of, or are laminated to, or the surface area of which is
primarily attached to, a window, sunroof or windshield. The
term "transportation vehicle" shall mean passenger cars,
recreational vehicles, trucks, buses, mobile cranes, trains, boats,
agricultural, construction and mining equipment,but shall not
include other types of vehicles such as aircraft, space craft and
space-stations.
The "Net Selling Price" of a Licensed Product on which
royalties are payable shall be the larger of the following: (A) the
genuine selling price of LICENSEE and its sublicensees
hereunder (including amounts charged for any wiring,
installation, and related services provided by LICENSEE and its
sublicensees hereunder) f.o.b. factory at which nonaffiliated
customers are billed in the usual course of business for a
Licensed Product, as packed for shipment to the customer; and
(B) $100 per window. The aforementioned $100 figure specified
in clause (B) above shall be adjusted upward as of each January
1st hereafter beginning on January 1, 2010 by any increase in
the Producer Price Index for Finished Goods (the "Index") for
the 12 month period ending in December of the prior year,
prepared by the Bureau of Labor Statistics of the United States
Department of Labor (or if the Index is not then being
published, the most nearly comparable successor index). In
calculating a genuine selling price of a product for the above
calculation, such price may be reduced only by the applicable
proportions of the following if, and to the extent that, amounts
in respect thereof are reflected in such selling price: (i) normal
trade discounts actually allowed; (ii) sales, use or excise and
added value taxes and custom duties paid; (iii) if the genuine
selling price is other than f.o.b. factory, amounts paid for f.o.b.
transportation of the product to the customer's premises or place
of installation or delivery; (iv) insurance costs and the costs of
packing material, boxes, cartons and crates required for
shipping; provided, however, that for purposes of this
calculation, the genuine selling price of a product may not be
less than 90% of the gross selling price of said product after all
deductions therefrom, if any. If a product is leased, sold, used
or otherwise disposed of on terms not involving a bona fide
arm's length sale to an unaffiliated third party, then the Net
Selling Price for such transactions shall be deemed to be the Net
Selling Price as defined above for identical products sold to a
nonaffiliated customer nearest to the date of such lease, sale,
use, or other disposition.
References to "Sections" and to "Schedules" shall be to the
sections and schedules of this Agreement except where
expressly stated otherwise.
"Technical Information" means all useful information relating to
apparatus, methods, processes, practices, formulas, techniques,
procedures, patterns, ingredients, designs and the like including
(by way of example) drawings, written recitations of data,
specifications, parts, lists, assembly procedures, operating and
maintenance manuals, test and other technical reports,
know-how of LICENSOR, and the like owned or controlled by
LICENSOR, to the extent they exist, that relate to Light Valves,
Licensed Products and/or to the suspensions or other
components used or usable for Licensed Products or Light
Valves including, but not limited to, particles, particle
precursors, coatings, polymers, liquid suspensions and
suspending liquids, or any combination thereof, and that consist
of concepts invented or developed by LICENSOR. Know-how
of LICENSOR's suppliers and of LICENSOR's other licensees
and their sublicensees under licenses from LICENSOR shall not
be considered Technical Information owned or controlled by
LICENSOR.
2 GRANT OF LICENSE.
2.1 License. During the term of this Agreement,
LICENSOR hereby grants LICENSEE a non-exclusive right and
license to use (a) all of the Technical Information, if any,
(subject to Section 8.1 hereof), furnished by LICENSOR
pursuant to this Agreement, and (b) any invention claimed in (i)
any of the unexpired patents now or hereafter listed on Schedule
A attached hereto or (ii) unexpired patents which issue from
pending patent applications now or hereafter listed in Schedule
A, and any continuations, continuations-in-part, divisions,
reissues, reexaminations, or extensions thereof to make, have
made, and to lease, sell, or otherwise dispose of Licensed
Products in the Licensed Territory. Notwithstanding anything
contained herein to the contrary, no rights or licenses shall be
granted hereunder with respect to any new particle now or
hereafter under development by LICENSOR.
2.2 No Other Rights. LICENSEE agrees that, except
for the specific licenses granted to it under Section 2.1 hereof
for use in Licensed Products, LICENSEE has not acquired any
rights or licenses under this Agreement to use Light Valves or
any components thereof made by or for LICENSEE or its
sublicensees pursuant to this Agreement.
2.3 Sublicenses. LICENSEE shall have the right to
grant non-exclusive sublicenses to any of its wholly-owned and
controlled subsidiaries, whose obligations to LICENSOR
hereunder LICENSEE hereby guarantees, and which
acknowledges to LICENSOR in writing that it wishes to become
a sublicensee hereunder prior to doing so and agrees to be bound
by the terms and conditions of this Agreement. All sublicenses
shall (i) be non-exclusive, (ii) shall terminate with the
termination of the rights and licenses granted to LICENSEE
under Section 2.1 hereof, and be otherwise limited in
accordance with the limitations and restrictions which are
imposed on the rights and licenses granted to LICENSEE
hereunder, (iii) contain confidentiality provisions no less
protective than those contained in Section 12.1 hereof, and (iv)
shall contain such other terms, conditions, and licenses as are
necessary to enable LICENSEE to fulfill its obligations
hereunder. LICENSEE shall send LICENSOR a copy of every
sublicense agreement or other agreement entered into by
LICENSEE in connection with a sublicense hereunder within
thirty (30) days of the execution thereof and shall also notify
LICENSOR prior to or promptly after any change in ownership
in a sublicensee. LICENSOR may terminate any such
sublicense if there is any change in the ownership or control of a
sublicensee.
3 ROYALTY PAYMENTS, REPORTS AND RECORD-KEEPING.
3.1 Royalties and Reports on Net Sales. During the term
of this Agreement, LICENSEE agrees to pay LICENSOR an
earned royalty which shall be ten percent (10%) of the Net
Selling Price of Licensed Products which embody, or the
manufacture of which utilizes, any of the rights granted under
Section 2.1 hereof, and which are manufactured by or for
LICENSEE and sold, leased, used or otherwise disposed of by
or for LICENSEE or a permitted sublicensee. Payments under
this Section 3.1 shall be made on a quarterly basis and made
within 30 days after the end of the calendar quarter in which
such Licensed Products were sold, leased, used or otherwise
disposed of by or for LICENSEE or a permitted sublicensee
hereunder. Each royalty payment shall be in U.S. dollars and
shall be accompanied by a statement by LICENSEE showing in
reasonable detail the amount of Licensed Products sold, used,
leased or otherwise disposed of by or for LICENSEE and its
sublicensees during the preceding quarter, any deductions taken
or credits applied, and the currency exchange rate used to report
sales made in currencies other than U.S. dollars. LICENSEE
shall use the exchange rates for buying U.S. dollars in effect on
the last day of each quarter, as specified in The New York
Times. The first such statement shall cover the period from the
Effective Date of this Agreement to the end of the first calendar
quarter in which a Licensed Product is sold, used, leased or
otherwise disposed of by or for LICENSEE or its sublicensees.
In addition, LICENSEE shall provide LICENSOR with
quarterly reports of its activities involving the development of
Licensed Products. LICENSEE shall also furnish to
LICENSOR at the same time it becomes available to any third
party, a copy of each brochure, price list, advertisement or other
marketing and promotional materials prepared, published or
distributed by LICENSEE or its sublicensees relating to
Licensed Products. LICENSOR shall have the right, but not the
obligation, to approve any use by LICENSEE of LICENSOR's
name, logo, or other information about Licensed Products, and
to require the correction of any inaccurate information. Upon
written notice to LICENSEE, LICENSOR may change the
above-referenced quarterly periods to become calendar monthly
periods at any time after the royalties payable under this Section
3.1 exceed the Minimum Royalties specified in Section 3.2
hereof, in which case LICENSEE shall have the option to either
provide sales reports and payments monthly as aforesaid, or to
make monthly estimated sales reports and payments of royalties
thereon, with a final reconciliation being done for the third
month in each calendar quarter.
3.2 Minimum Royalties - Regardless of whether
LICENSEE is selling any Licensed Products, during the term of
this Agreement LICENSEE agrees to pay LICENSOR an initial
fee of [Confidential Information Omitted and filed separately
with the Securities and Exchange Commission] upon signing of
this License Agreement and the non-refundable minimum
royalties (in U.S. Dollars) specified below for each of the stated
periods:
Period Minimum Royalty
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
3.3 Time and Method of Payment. The initial fee and
payment for the first minimum annual royalty payment under
Section 3.2 shall be paid to LICENSOR within 10 days of the
Effective Date of this Agreement, and each subsequent payment
under Section 3.2 to LICENSOR shall be made on or before
January 31 of each license year commencing January 1, 2010.
All other payments shall be due on the date specified in this
Agreement, or if no date is specified, within 30 days of invoice.
All payments that remain unpaid past their due date shall bear
interest at an annual rate equal to the lesser of 25% or the
maximum interest rate permitted by law. All payments made to
LICENSOR shall be paid by wire transfer of immediately
available funds to the account of Research Frontiers
Incorporated at Chase Manhattan Bank, 0000 Xxxxxxx Xxxx,
Xxxxxxxx, Xxx Xxxx 00000, Account No.: 000-000-000, ABA
Wire Code No.: 021 000 021, or to such other account or place,
as LICENSOR may specify in a notice to LICENSEE.
3.4 Sales, Use and Returns. Licensed Products shall be
considered as sold, leased or used and royalties shall accrue on
the earlier of when such Licensed Products are billed out, or
when delivered, shipped or mailed to the customer. If as a result
of a price reduction or a return of Licensed Products previously
sold, a credit or refund to a customer is given on part or all of
the sale price of such Licensed Products, a credit shall be
allowed against royalties accruing thereafter under this
Agreement equal to the royalty paid on that part of the sales
price so credited or refunded.
3.5 Recordkeeping. LICENSEE shall keep and shall
cause each sublicensee to keep for six (6) years after the date of
submission of each statement supported thereby, true and
accurate records, files and books of accounts that relate to
Licensed Products, all data reasonably required for the full
computation and verification of the Net Selling Price of
Licensed Products, deductions therefrom and royalties to be
paid, as well as the other information to be given in the
statements herein provided for, and shall permit LICENSOR or
its duly authorized representatives, upon reasonable notice,
adequately to inspect the same at any time during usual business
hours. LICENSOR and LICENSEE agree that an independent
certified public accounting firm (selected by LICENSOR from
the largest ten certified public accounting firms in the United
States of America, or the United Kingdom) may audit such
records, files and books of accounts to determine the accuracy
of the statements given by LICENSEE pursuant to Section 3.1
hereof. Such an audit shall be made upon reasonable advance
notice to LICENSEE and during usual business hours no more
frequently than annually. The cost of the audit shall be borne by
LICENSOR, unless the audit shall disclose a breach by
LICENSEE of any term of this Agreement, or an underpayment
error in excess of two percent of the total monies paid to
LICENSOR by LICENSEE during the audited period, in which
case LICENSEE shall bear the full cost of such audit.
LICENSEE agrees to pay LICENSOR all additional monies that
are disclosed by the audit to be due and owing to LICENSOR
within thirty days of the receipt of the report.
3.6 Customer Referrals. Although LICENSOR is under
no obligation to do so, LICENSOR may from time to time refer
customers to LICENSEE. In the event that such customer
purchases, leases or rents products or services from LICENSEE
other than a Licensed Product upon which a royalty is paid by
LICENSEE to LICENSOR, LICENSEE shall include the details
of such transaction in its next monthly report under Section 3.5
hereof, and shall pay LICENSOR a sales commission equal to
ten percent (10%) of the amount received from such customer
for which a royalty under Section 3.1 hereof is not paid. No
such payment shall be due from LICENSEE to LICENSOR if
the referred customer was already a customer of LICENSEE
prior to the date of referral by LICENSOR and LICENSEE
informs LICENSOR of such fact at the time that the referral by
LICENSOR is made.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without
limitation, any manufacture, sale, lease, use or other disposition
of Licensed Products by LICENSEE that is not in strict
accordance with the provisions of this Agreement shall be
deemed a material breach of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products to whom Licensed Products are
sold, leased, or otherwise disposed of by LICENSEE or its
sublicensees, to not look to LICENSOR or its affiliates for any
claims, warranties, or liability relating to such Licensed
Products. LICENSEE agrees to take all steps to reasonably
assure itself that Licensed Products sold, leased or otherwise
disposed of by or for LICENSEE is being used for permitted
purposes only, insofar as it may be reasonably possible to do so.
4.3 Laws and Regulations. LICENSEE agrees that it
shall be solely responsible for complying with all laws and
regulations affecting the manufacture, use and sale or other
disposition of Licensed Products by LICENSEE and its
sublicensees, and for obtaining all approvals necessary from
governmental agencies and other entities. LICENSEE agrees to
maintain a file of all such approvals and to send LICENSOR a
copy of all such approvals (including English translations
thereof in the case of approvals required by any foreign country)
within 10 business days of any written request for such copies
by LICENSOR. LICENSEE represents and warrants to
LICENSOR that no approval from any governmental agency or
ministry, or from any third party, is required for LICENSEE to
effectuate the terms of this Agreement or the transactions
contemplated hereby.
4.4 Purchase of Components from Others. By virtue of
the disclosure of Technical Information and information, if any,
provided from time to time by LICENSOR to LICENSEE and
to its other licensees, and each of their sublicensees and
affiliates, any component of a Light Valve, including, without
limitation, materials, suspensions, films, polymers, coatings,
particle precursors, and particles (each, a "Component"), which
LICENSEE or its sublicensees makes, has made for it, or
purchases from any third party for use in Licensed Products
shall be deemed to have been manufactured at least in part using
the Technical Information provided by LICENSOR if
LICENSEE or any supplier of a Component to LICENSEE has
had access to Technical Information of any kind of LICENSOR
or its licensees and their sublicensees, consultants,
subcontractors, agents or representatives. LICENSEE and its
sublicensees each hereby agrees that (i) all Components shall be
used only in strict accordance with the provisions of this
Agreement, and that such Components may not be used for any
other purpose or resold by LICENSEE or its sublicensees except
as specifically permitted by the license granted in Section 2.1
hereof, and (ii) LICENSEE and its sublicensees will only look
to the manufacturer or supplier of such Component or other item
used by LICENSEE or its sublicensees and not to LICENSOR
or its affiliates for any claims, warranties, or liability relating to
such Component or other item. LICENSEE acknowledges that
LICENSOR has not made any representations or warranties
regarding the availability of any Component, or the price
thereof, and that in all respects LICENSEE shall deal directly
with the suppliers of such Components and will obtain from
them information regarding availability, pricing, and/or other
terms relating to such Components.
4.5 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance of any Licensed Product or
of any material, Component, or information provided hereunder,
and LICENSEE expressly acknowledges and agrees that any
such material, Component or information provided by
LICENSOR hereunder is provided "AS IS" and that
LICENSOR makes no warranty with respect thereto and
DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED
(other than those specifically contained in Article 13) ,
INCLUDING BUT NOT LIMITED TO THE IMPLIED
WARRANTIES OF MERCHANTABILITY AND FITNESS
FOR A PARTICULAR PURPOSE, WITH RESPECT
THERETO, ITS USE OR ANY INABILITY TO USE IT, OR
THE RESULTS OF ITS USE. In no event shall LICENSOR be
liable for any damages, whether in contract or tort (including
negligence), including but not limited to direct, consequential,
special, exemplary, incidental and indirect damages, arising out
of or in connection with this Agreement or the use, the results of
use, or the inability to use any Licensed Product, material,
Component or information provided hereunder.
4.6 Analysis. LICENSEE represents and agrees that it
will only incorporate Components received from authorized
suppliers into Licensed Products and for no other purpose
except as may be specifically permitted under Section 3.1, and
that LICENSEE will not directly or indirectly attempt to
reverse-engineer any material provided to it hereunder by
LICENSEE or any supplier of any Component.
4.7 Personnel. LICENSEE agrees to assign personnel
from its technical staff who shall be responsible for the
development of Licensed Products during the term of this
Agreement.
4.8 Promotional Activities. LICENSEE agrees that it
shall maintain, either at its own facilities or that of any
laminating subcontractor selected by LICENSEE, adequate
inventories of SPD light control film purchased from any
authorized supplier of Light Valve film to meet on a timely
basis the anticipated requirements of LICENSEE for
incorporation into Licensed Products during the term of this
Agreement. In addition, to the extent commercially reasonable
and consistent with LICENSEE's current practices,LICENSEE
shall promptly develop and maintain a web site relating to its
business which prominently features LICENSOR's SPD
technology and LICENSEE's relationship to LICENSOR, and
shall participate at all major industry trade shows and/or
conferences and/or engage in other marketing and promotional
activities reasonably necessary to promote LICENSOR's SPD
technology and LICENSEE's business relating thereto.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that
either party may adopt and use for Licensed Products or other
products incorporating Light Valves are and shall remain the
exclusive property of the adopting party, and the other party
shall not obtain any rights and license to such marks under this
Agreement, but may inform others that the adopting party has
licensed or produced Licensed Products or products
incorporating Light Valves under such xxxx or marks, and may
use the adopting party's logo in connection therewith, in
accordance with Section 5.2. LICENSOR may require
LICENSEE or its permitted sublicensees to indicate on
packaging that such product is licensed from Research Frontiers
Incorporated or to otherwise include language and/or
designations approved by LICENSOR indicating an affiliation
with Research Frontiers Incorporated or to use trademarks
specified by LICENSOR on LICENSEE's Licensed Products.
5.2 Use of logo. In the event that either party wishes to
use a logo of the other party, such party will inform the other
party in writing of the intended use of such logo, and:
5.2.1 not use such logo without the prior written consent
of the other party (such consent not to be unreasonably withheld
or delayed); and
5.2.2 where consent to such use is forthcoming or use is
pursuant to Section 5.2.3, agrees to follow the other party's
guidelines (as from time to time may be applicable) with regard
to use of such logo. The other party agrees to provide a copy of
any such applicable guidelines to the other upon the granting of
such consent; and
5.2.3 Notwitstanding anything contained in this
Agreement to the contrary, LICENSEE hereby consents to
LICENSOR's use of LICENSEE's logo on the section of its
internet web site listing licensees of LICENSOR (and any copy
of such list) provided that such use is consistent with the way
that the logos of other licensees of LICENSOR's are used on
such list, and may also use LICENSEE's logo in connection
with any press release issued jointly by LICENSOR and
LICENSEE in connection with this Agreement and approved by
both parties.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times
ample product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement and,
if requested by LICENSOR, LICENSEE shall name
LICENSOR as an additional insured. Upon request, LICENSEE
shall provide LICENSOR of evidence of such insurance.
LICENSEE may fulfill its obligation under this Section 6.1 as
part of a general company-wide program of self-insurance.
6.2 Indemnification. LICENSEE, and its affiliates,
successors and assigns and sublicensees (each, an
"Indemnifying Party"), each hereby indemnify and agree to hold
harmless LICENSOR and its shareholders, officers, directors,
agents and employees (each, an "Indemnified Party"), against
any liability, damage, loss, fine, penalty, claim, cost or expense
(including reasonable costs of investigation and settlement and
attorneys', accountants' and other experts' fees and expenses)
arising out of any action or inaction by any Indemnifying Party
relating to this Agreement including an Indemnifying Party's
manufacture, sale, use, lease or other disposition of Licensed
Products, and related materials, or other use of the information
and rights granted hereunder. Any knowledge of LICENSEE's
or its sublicensee's activities by LICENSOR or its
representatives shall in no way impose any liability on
LICENSOR or reduce the responsibilities of LICENSEE
hereunder or relieve it from any of its obligations and warranties
under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the
right to file patent applications in the United States and in
foreign countries covering any invention made by such party.
7.2 Improvements and Modifications. (a) Any future
improvements or modifications invented or developed by or on
behalf of LICENSEE, LICENSEE's sublicensees and
LICENSOR after the Effective Date of this Agreement, if any,
which relate in any way to or are useful in the design, operation,
manufacture and assembly of Licensed Products, and/or to the
suspensions or other components used or usable in Licensed
Products shall not be included in this Agreement. Upon written
request by the non-inventing party, LICENSOR and LICENSEE
shall negotiate with each other regarding the grant of
nonexclusive rights and licenses to use such improvements and
modifications, but neither party shall be obligated to grant such
rights and licenses to one another. Notwithstanding anything
contained herein to the contrary, LICENSOR shall have the
right to use, license and sublicense any improvement,
modification or invention which is jointly developed by
LICENSEE or its officers, directors, employees, affiliates,
contractors, or consultants, on the one hand, and LICENSOR or
its officers, directors, employees, affiliates, contractors or
consultants, on the other hand.
(b) During the term of this Agreement each of the
parties hereto agrees to inform the other in writing (without any
obligation to reveal details which would be confidential
information), at least as frequently as once a year in January of
each calendar year, if any significant improvements or
modifications have been made relating to Licensed Products,
and as to the general nature of any such improvements and
modifications.
(c) Notwithstanding the foregoing, LICENSOR may, but
shall not be required to, voluntarily and without additional cost
to LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE
rights in such certain future improvements and modifications,
and any information so disclosed will be considered Technical
Information which LICENSEE shall be obligated to keep
confidential pursuant to Section 12.1 of this Agreement. In
connection therewith, LICENSOR, may voluntarily add patents
and/or patent applications to Schedule A hereof. No disclosure
of any information by LICENSOR shall in any way establish a
course of dealing or otherwise require LICENSOR to make any
future disclosure of information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that
any patent application now or hereafter listed on or incorporated
into Schedule A shall be filed or maintained in any foreign
country included in the Licensed Territory. If so designated and
if legally possible to do so, LICENSOR agrees to promptly file,
prosecute and maintain such applications and resulting patents,
and LICENSEE shall pay to LICENSOR the complete cost,
including reasonable attorney's fees, to file, prosecute and
maintain during the term of this Agreement any such patent
application and resulting patents specifically so designated by
LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. Materials. Upon request by LICENSEE, during the
term of this Agreement and when mutually convenient to
LICENSOR and LICENSEE, LICENSOR shall supply
LICENSEE with small quantities of materials related to
Licensed Products for experimental use only by LICENSEE,
and shall charge LICENSEE $1,500 per man/day plus the
reasonable cost of any other materials used in making such
materials, plus the reasonable cost of shipping such materials to
LICENSEE. Upon request by LICENSEE, during the term of
this Agreement and when mutually convenient to LICENSOR
and LICENSEE, LICENSOR may make its personnel available
to consult with LICENSEE and its contractors, with
compensation to LICENSOR for such consultation to be
mutually agreed to by LICENSOR and LICENSEE. Each
invoice submitted by LICENSOR for such service shall include
detailed explanations of the charges, and, if requested by
LICENSEE, copies of receipts. The parties acknowledge that
LICENSOR has no obligation to transfer to LICENSEE any
Technical Information other than as may be embodied in such
sample materials, and that, other than sample materials, if any,
that may be supplied by LICENSOR as aforesaid, LICENSEE
will be acquiring materials from authorized suppliers other than
LICENSOR.
8.2 Inquiries. LICENSEE and LICENSOR may also at
any time during the term of this Agreement make reasonable
inquiry by telephone, facsimile or mail to one another in regard
to any information or data furnished pursuant to this Agreement.
8.3 Visits. During all visits by either party to the
facilities of the other party, visitors shall comply with all
reasonable rules of the host company, and each party to this
Agreement will indemnify and hold the other party harmless
from any liability, claim or loss whatsoever (i) for any injury to,
or, death of, any of its employees or agents while such persons
are present at the facility of the other party; and (ii) for any
damages to its own property or to the property of any such
employee or agent which may occur during the presence of any
such person at the facility of the other party, regardless of how
such damage occurs.
8.4 Sole Purpose. Any documentation or information
supplied pursuant to this Agreement by either party to the other
shall be used solely for the purposes set forth in this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall
provide appropriate notices of patents, or other similar notice of
the patent rights of the other party on all products utilizing the
patented inventions of the other party. Either party may add its
own patent notice to any copy or embodiment which contains its
patented inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and
exclusive owner of the patents and patent applications listed on
Schedule A, and that, except for the rights granted hereunder,
LICENSEE shall not have any rights or attempt to assert any
ownership rights in and to those patents and patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement shall extend
from the Effective Date of this Agreement to the date of
termination of this Agreement. Unless sooner terminated or
extended, as herein provided for below, this Agreement shall
terminate upon the expiration of the later of (A) the last to
expire of the patents now or hereafter listed in Schedule A
hereof, and (B) the expiration of the period in which LICENSEE
is obligated to maintain confidential Technical Information of
LICENSOR pursuant to Section 12.1 hereof.
10.2 Termination by LICENSEE. LICENSEE may
terminate this Agreement effective as of December 31, 2015 or
as of any anniversary thereof by giving LICENSOR prior notice
thereof unless sooner terminated as hereinafter provided. Such
notice shall be made in writing and shall be given between 60
and 90 days prior to the effective date for which such
termination is to be effective. If LICENSEE decides to
terminate this Agreement for any reason, LICENSEE shall
provide LICENSOR, along with the aforementioned notice of
termination, with a written report describing the reasons for
such termination.
10.3 Termination by LICENSOR. LICENSOR may
terminate this Agreement at any time effective as of December
31, 2015 or as of any anniversary thereof upon at least 30 days'
notice to LICENSEE for any reason, provided, however, that
LICENSOR shall give LICENSEE at least one years' notice of
any early termination under this Section 10.3 if LICENSEE is
producing and selling Licensed Products hereunder , and
provided further that if LICENSOR gives LICENSEE a notice
of termination pursuant to the first sentence of this Section 10.3
and the effective termination date of such notice would be prior
to the expiration of a binding contractual obligation of
LICENSEE to supply Licensed Products to a customer which
contract is in effect at the time LICENSOR's termination notice
is given, then the LICENSEE may, by providing LICENSOR
within 10 business days with a copy of the relevant portion of
such contract, extend the effective date of LICENSOR's
termination to the date on which the later of any aforesaid
contractual obligations of LICENSEE to any such customer
expires, but in no event shall the foregoing extension imply any
extension of time beyond the time period specified in Section
10.1 above. Notwithstanding the foregoing, LICENSOR may
terminate this Agreement at any time upon at least 30 days'
notice to LICENSEE if LICENSEE shall have failed to make
any payment when due or at any time breach any material term
of this Agreement and such payment is not made or such breach
is not cured within any applicable cure period specified in
Article 11 of this Agreement, or LICENSEE repeatedly provides
inaccurate reports hereunder, or if there has been a cessation by
LICENSEE of general operations or of work related to Licensed
Products, and "cessation" shall not include any temporary
cessation of operations or work by LICENSEE as may occur
from time to time.
10.4 Effect of Termination. If this Agreement expires
or is terminated for any reason whatsoever, in addition to any
other remedies which one party may have against the other: (1)
all of LICENSEE's rights and licenses under this Agreement
shall cease, and LICENSEE shall immediately return to
LICENSOR all Technical Information furnished to LICENSEE
under this Agreement or destroy the same (except for any which
is incorporated into samples which have been supplied to a
customer of LICENSEE as permitted hereunder), together with
all reproductions, copies and summaries thereof (insofar as it is
possible to do so); provided, however, that LICENSEE may
retain solely for archival purposes one copy of all such
documents in its legal department files, (2) at LICENSOR's
option, LICENSEE shall, within 30 days of the date of such
termination or expiration, either (A) sell and deliver to
LICENSOR at LICENSEE's direct cost of manufacture any
Licensed Products which shall then be in the possession of
LICENSEE, and, if requested by LICENSOR, LICENSEE shall
finish and deliver to LICENSOR any Licensed Products in the
process of manufacture as soon as possible and, in any case, not
later than 60 days after receiving LICENSOR's request, and/or
(B) with respect to any unsold inventory and work in the
process of manufacture, to complete such work in process and
sell any remaining inventory during the period not to exceed six
months from the date of termination or expiration of this
Agreement provided that at the completion of such six-month
period, LICENSEE shall promptly destroy and dispose of any
Licensed Products (and Licensed Products in the process of
manufacture) not sold under this Section 10.4 and (3) if this
Agreement is terminated for any reason or expires, upon such
termination or expiration, LICENSEE hereby grants to
LICENSOR a nonexclusive, royalty-free, irrevocable,
worldwide license with the right to grant sublicenses to others to
utilize all technical information, improvements and/or
modifications (whether or not the subject of patents or pending
patent applications) developed or invented by or on behalf of
LICENSEE and/or its sublicensees, subcontractors, or agents
hereunder through the date of such termination or expiration of
this Agreement relating to Light Valves, or Licensed Products
(excluding any technology that does not relate directly to the
creation of variable light transmission in an SPD window,
including but not limited to: infrared reflective coatings,
antennas, heating grids, interlayer, glass fabrication technology,
glass compositions, glazing systems technology, including
encapsulation, structural enhancements, sealants, and adhesives)
and upon such termination or expiration, LICENSEE shall
provide LICENSOR in reasonable detail complete information
regarding such technical information, improvements and/or
modifications. The foregoing license shall be self-effectuating,
but LICENSEE agrees upon written notice by LICENSOR at
any time hereafter to deliver to LICENSOR within 30 days of
such notice any document or other instrument reasonably
requested by LICENSOR to convey such license rights to
LICENSOR such as, by way of example, confirmations or
instruments of conveyance or assignment. LICENSEE may
exclude from such license any improvements to lamination or
components, and processing know-how developed by or on
behalf of LICENSEE but only to the extent that LICENSEE or
any third party has not filed for patent protection on such items
and maintains them as trade secrets. No termination of this
Agreement by expiration or otherwise shall release LICENSEE
or LICENSOR from any of its continuing obligations hereunder,
if any, or limit, in any way any other remedy one party may
have against the other party. Notwithstanding the foregoing,
LICENSEE's obligations to LICENSOR under Sections 3.1
(only until the end of the month in which the last of all sales
under this Agreement occurs), 3.5, 3.6, 4.2, 4.3, 4.4, 4.5, 4.6,
6.1, 6.2, 7.2, 8.3, 8.4, 10.4, 12.1, and Articles 13 and 14 shall
survive any termination or expiration of this Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events
shall constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment due in
a timely manner or a party's material breach or material failure
to punctually perform any of its duties and obligations under
this Agreement, which material breach or failure, if curable,
remains uncured for thirty (30) days after written notice of such
breach or failure is received by the breaching party; or (b) a
material misrepresentation is made by a party in any
representation or warranty contained in this Agreement and the
misrepresented facts or circumstances, if curable, remain
uncured thirty (30) days after written notice of such
misrepresentation is received by the breaching party; and, in
either case, if such breach or misrepresentation is not curable,
termination shall occur thirty (30) days after such
misrepresentation or breach at the option of the non-breaching
party; or
11.1.2 The failure by a party upon request to provide
the other party with adequate assurances of its performance of
all obligations under this Agreement upon: (a) such first party's
filing of a voluntary petition in bankruptcy; (b) the filing of any
involuntary petition to have such first party declared bankrupt
which has not been dismissed within ninety (90) days of its
filing; (c) the appointment of a receiver or trustee for such first
party which has not been rescinded within ninety (90) days of
the date of such appointment; or (d) such first party otherwise
becoming insolvent or otherwise making an assignment for the
benefit of creditors.
11.2 Default by a Party. If there occurs an Event of
Default with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or
specific performance; and/or
(c) terminate this Agreement and the licenses granted
to LICENSEE hereunder whereupon the non-defaulting party
shall have no further obligations under this Agreement except
those which expressly survive termination, and except with
respect to royalty payments due and owing to LICENSOR as of
the termination date or any subsequent period specified in
Section 10.4.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees
for itself, its sublicensees, and their employees and agents that
for twenty (20) years from the later of the Effective Date of this
Agreement or the latest date of its receipt of information
disclosed to LICENSEE by LICENSOR pursuant to this
Agreement, such information shall be held in confidence;
provided, however, there shall be no obligation to treat as
confidential information which is or becomes available to the
public other than through a breach of this obligation, or which
was already possessed by LICENSEE in writing (or otherwise
provable to be in the possession of LICENSEE) prior to the
March 25, 2004 (and was not received from LICENSOR) or
which is shown by LICENSEE to have been received by it from
a third party who had the legal right to so disclose it without
restrictions and without breach of any agreement with
LICENSOR or its licensees. LICENSOR shall affix an
appropriate legend on all written documentation given to
LICENSEE which contains confidential information, but the
failure to so affix such legend shall not affect the confidential
nature of such information. LICENSEE acknowledges that the
list of patent applications contained on Schedule A is
confidential information of LICENSOR. If confidential
information is otherwise conveyed orally by LICENSOR,
LICENSOR shall specify to LICENSEE at the time such
information is being conveyed (or in a subsequent letter
referring to the conversation) that the information conveyed is
confidential. It is understood and agreed that, unless otherwise
provided in a separate agreement between LICENSEE and
LICENSOR, LICENSEE has no obligation hereunder to provide
LICENSOR with any confidential or proprietary information,
and that LICENSOR shall have no obligation hereunder to
LICENSEE to maintain in confidence or refrain from
commercial or other use of any information which LICENSOR
is or becomes aware of under this Agreement (subject to the
terms of Section 13.1.3 and unless LICENSEE has informed
LICENSOR on a non-confidential basis of the nature of such
information beforehand and LICENSOR has agreed in writing
to receive such information from LICENSEE which LICENSEE
wishes to be considered confidential, in which case it shall be
kept confidential for no more than a period of three years from
the date of disclosure unless another period of confidentiality is
otherwise agreed to by LICENSOR and LICENSEE at the time
of disclosure). The terms and provisions of this Agreement or
any other agreement between the parties shall not be considered
confidential except that LICENSEE may not disclose the
minimum annual royalty payments specified in Article 3 hereof
without LICENSOR's prior written consent, and the parties
hereto acknowledge that, pursuant to the Securities Exchange
Act of 1934, as amended, and the regulations promulgated
thereunder, LICENSOR may file copies of this Agreement with
the Securities and Exchange Commission and with NASDAQ
and with any other stock exchange on which LICENSOR's
securities may be listed. LICENSEE agrees that for the period
of time during which LICENSEE is obligated to keep
information confidential hereunder, LICENSEE will not
knowingly make, use, sell, lease or otherwise dispose of
products using or directly or indirectly derived from Licensed
Products, Light Valves, or Components (other than where all
obligations of confidentiality in respect of such confidential
information or sample materials as are so provided to
LICENSEE from LICENSOR or its licensees and their
sublicensees and so made, used, sold, leased or otherwise
disposed of by LICENSEE or its sublicensees have validly
terminated other than through a breach by LICENSEE or any
third party of any obligation of confidentiality), or which
otherwise comprise suspended particles, which when subjected
to a suitable electric or magnetic field, orient to produce a
change in the optical characteristics of the suspension ("SPD
Technology") unless an agreement between LICENSOR and
LICENSEE permitting it to do so is in full force and effect and
the royalties, if any, provided in such agreement are being paid
to LICENSOR on such products. The foregoing restriction shall
not apply to products (i) which do not directly or indirectly
incorporate SPD Technology, such as, but not limited to, liquid
crystal devices, or electrochromic devices, or (ii) which
incorporate technology involving suspended particles, which
when subjected to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of the suspension
but which is independently developed and which is not in any
way directly or indirectly derived from any Technical
Information of LICENSOR or its licensees, sublicensees, or any
of their affiliates. LICENSEE agrees to make all reasonable and
careful enquiries to determine whether any SPD Technology is
derived in any way from Technical Information or patents of the
LICENSOR. LICENSEE shall have the burden of proving by
clear and convincing evidence that the availability of any
exception of confidentiality exists or that the foregoing
restrictions do not apply to a particular product. Nothing
contained in this section, however, shall be construed as
granting LICENSEE any rights or licenses with respect to any
Technical Information (which is not in the public domain other
than through a breach by LICENSEE or any third party of any
obligation of confidentiality) or patents of LICENSOR or its
other licensees or their sublicensees.
(b) LICENSEE will have the right to provide materials
to, and to disclose information to, a subcontractor of LICENSEE
or to a customer of LICENSEE or subcontractor of such
customer (each of the foregoing being referred to as a
"Recipient") relating to this Agreement; provided, however, that
LICENSEE shall only disclose such information as is strictly
necessary to enable said Recipient to perform its manufacturing
task, and shall ensure that prior to disclosing any information to
said Recipient, said Recipient has signed a secrecy agreement
with LICENSEE at least as protective of LICENSOR's
Technical Information as the provisions of this Agreement,
including, without limitation, said Recipient's specific
agreement to be bound by the provisions of Section 12.1 hereof
to the same extent as LICENSEE. For such purposes,
LICENSEE may develop a standard form of secrecy agreement
for LICENSOR's approval, after which LICENSEE may use
such secrecy agreement with all Recipients without
LICENSOR's prior approval of the secrecy agreement being
necessary. LICENSEE shall have all Recipients sign said
secrecy agreement prior to the disclosure of Technical
Information to said Recipient, and LICENSEE shall send
LICENSOR a copy of every such secrecy agreement within
thirty (30) days after the execution thereof.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party represents
and warrants to the other that:
13.1.1 Valid Agreement. The execution and delivery
of this Agreement by the officer or representative so doing, and
the consummation of the transactions contemplated hereby,
have been duly authorized by all necessary corporate action by
LICENSOR and LICENSEE and this Agreement is a valid and
binding obligation enforceable against the parties in accordance
with its terms, except to the extent limited by bankruptcy,
insolvency, moratorium and other laws of general application
relating to general equitable principles;
13.1.2 No Conflicts. Nothing herein conflicts with its
rights and obligations pursuant to any agreement by a party and
any other entity; and
13.1.3 Publicity. The parties shall have the right to use
non-confidential information, including but not limited to
information concerning this Agreement, a description of the
other party, and its logos (to the extent permitted by Section 5.1
or otherwise pursuant to the consent of the other party, which
consent may not be unreasonably withheld or delayed) for
marketing, sales, technical assistance, investor relations,
disclosure and public relations purposes, and that information
permitted to be disclosed by a party under this Section 13.1.3
may appear on such party's (or its subsidiaries' or sublicensees')
Internet web site, along with links to the Internet web sites, and
specific pages therefrom, of the other party and its subsidiaries
and sublicensees.
13.2 LICENSOR Representations. LICENSOR
represents and warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR
represents and warrants that it has the right to convey the rights
and licenses granted by this Agreement, and otherwise to
perform its obligations under this Agreement. LICENSOR has
caused its employees who are employed to do research,
development, or other inventive work to disclose to it any
invention or information within the scope of this Agreement and
to assign to it rights in such inventions and information in order
that LICENSEE shall receive, by virtue of this Agreement, the
licenses granted to it under Section 2.1 hereof.
13.2.2 Infringement. As of the date hereof, LICENSOR
is not aware of any claim for patent infringement or the
misappropriation of trade secrets, being asserted against it by
any third party; or of any infringement of the patents listed on
Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make
no guaranty or warranty to one another under this Agreement (a)
that LICENSEE will be able to develop, manufacture, sell or
otherwise commercialize Licensed Products, or (b) as to the
validity of any patent.
13.4 Disclosure In the event that after the date of this
Agreement either party becomes aware of any fact or matter
which renders any of the warranties and representations set out
at this Section 13 untrue, it shall promptly notify the other party
of the same, without prejudice to any rights and remedies of
such other party for any breach of any such warranty or
representation, provided that this Section 13.4 shall not impose
any additional obligations on a party other than the obligation of
disclosure set forth herein.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be
interpreted, construed, governed and enforced in accordance
with and governed by the laws of the State of New York, and
LICENSOR and LICENSEE hereby submit to the exclusive
jurisdiction of the state or federal courts located in the County
of Nassau and State of New York for such purposes.
14.2 Confidentiality In Court Proceeding. In order to
protect and preserve the confidential information of a party
which the parties recognize may be exchanged pursuant to the
provisions of this Agreement, the disclosing party may request,
and the receiving party shall not oppose, the court in any action
relating to this Agreement to enter a protective order to protect
information which is confidential information under Section
12.1 and to seal the record in the action or to hold the
proceedings, or portion of the proceedings, in camera; provided,
that the requested terms do not prejudice the receiving party's
interests. Nothing, however, shall preclude either party from
thereafter moving to unseal its own records or to have matter
and information designated as confidential under any relevant
protective order designated otherwise in accordance with the
circumstances as they shall appear at that time.
14.3 Severability. If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the
parties shall negotiate in good faith to agree upon a substitute
provision that is legal and enforceable and is as nearly as
possible consistent with the intentions underlying the original
provision. If the remainder of this Agreement is not materially
affected by such declaration or finding and is capable of
substantial performance, then the remainder shall be enforced to
the extent permitted by law.
14.4 Waiver. Unless agreed to by the parties in writing
to the contrary, the failure of either party to insist in any one or
more instances upon the strict performance of any one or more
of the provisions of this Agreement, or to exercise any right
contained in this Agreement or provided by law, shall not
constitute or be construed as a waiver or relinquishment of the
performance of such provision or right or the right subsequently
to demand such strict performance or exercise of such right, and
the rights and obligations of the parties shall continue
unchanged and remain in full force and effect.
14.5 Captions. The captions and headings in this
Agreement are inserted for convenience and reference only and
in no way define or limit the scope or content of this Agreement
and shall not affect the interpretation of its provisions.
14.6 Assignment. This Agreement shall be binding on
and shall inure to the benefit of the parties and their successors
and assigns. However, LICENSEE agrees that it shall not
assign this Agreement or its rights hereunder without the prior
written consent of LICENSOR except to a successor to
substantially all of its business relating to Light Valves and
whose obligations hereunder are guaranteed to LICENSOR by
LICENSEE. LICENSOR may assign all of its rights and
obligations hereunder to any successor to any of its business
interests or to any company controlling or controlled by
LICENSOR. All assignees shall expressly assume in writing the
performance of all the terms and conditions of this Agreement
to be performed by the assigning party, and an originally signed
instrument of such assumption and assignment shall be
delivered to the non-assigning party within 30 days of the
execution of such instrument.
14.7 Schedules. All Schedules attached to this
Agreement shall be deemed to be a part of this Agreement as if
set forth fully in this Agreement.
14.8 Entire Agreement. This Agreement constitutes the
entire understanding and agreement between LICENSOR and
LICENSEE with respect to the subject matter hereof, supersedes
all prior agreements, proposals, understandings, letters of intent,
negotiations and discussions with respect to the subject matter
hereof and can be modified, amended, supplemented or changed
only by an agreement in writing which makes specific reference
to this Agreement and which is executed in writing by the
parties; provided, however, that either party may unilaterally
waive in writing any provision imposing an obligation on the
other.
14.9 Notices. Any notice required or permitted to be
given or made in this Agreement shall be in writing and shall be
deemed given on the earliest of (i) actual receipt, irrespective of
method of delivery, (ii) on the delivery day following dispatch if
sent by express mail (or similar next day courier service), or (iii)
on the sixth day after mailing by registered or certified air mail,
return receipt requested, postage prepaid and addressed as
follows:
LICENSOR: Xxxxxx X. Xxxxxx, President and CEO
Research Frontiers Incorporated
000 Xxxxxxxxx Xxxx Xxxxx
Xxxxxxxx, Xxx Xxxx 00000-0000 XXX
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
LICENSEE: Xxxxxxx X. Xxxx,
Vice President Technology-Automotive
Xxxxxxxxxx North America
000 Xxxxxxx Xxxxxx
Xxxxxx, Xxxx 00000, XXX
Facsimile: (000) 000-0000
Telephone: (000) 000-0000
or to such substitute addresses and persons as a party may
designate to the other from time to time by written notice in
accordance with this provision.
14.10 Bankruptcy Code. In the event that either party
should file a petition under the federal bankruptcy laws, or that
an involuntary petition shall be filed against such party, the
parties intend that the non-filing party shall be protected in the
continued enjoyment of its rights hereunder to the maximum
feasible extent including, without limitation, if it so elects, the
protection conferred upon licensees under section 365(n) of
Title 17 of the U.S. Code. Each party agrees that it will give the
other party immediate notice of the filing of any voluntary or
involuntary petition under the federal bankruptcy laws.
14.11 Construction. This Agreement and the exhibits
hereto have been drafted jointly by the parties and in the event
of any ambiguities in the language hereof, there shall no be
inference drawn in favor or against either party.
14.12 Counterparts. This Agreement may be executed
in any number of counterparts, each of which shall be deemed
an original, but all of which shall constitute one and the same
instrument.
14.13 Status of the Parties. The status of the parties
under this Agreement shall be solely that of independent
contractors. No party shall have the right to enter into any
agreements on behalf of the other party nor shall it represent to
any person that it has such right or authority.
The parties, through their duly authorized
representatives, and intending to be legally bound, have
executed this Agreement, as of the date and year first above
written, whereupon it became effective in accordance with its
terms.
RESEARCH FRONTIERS INCORPORATED
By: /s/ Xxxxxx X. Xxxxxx
Xxxxxx X. Xxxxxx, President
Date: September 10, 2009
XXXXXXXXXX GROUP LIMITED (for itself
and on behalf of its Affiliates)
By: /s/ Xxxxxxx X. Xxxx
Xxxxxxx X. Xxxx,
Vice President Technology-Automotive
Date: September 10, 2009
Schedule A
(As of September 10, 2009)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
5,093,041 Xxxxxx X. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 Xxxx Xxxxxxxxx
"Electro-Optical Light Modulator"
5/05/92 7/5/09
5,279,773 Xxxxxx X. Xxxx
"Light Valve Incorporating A
Suspension Stabilized With A Block Polymer"
1/18/94 3/23/12
5,325,220 Xxxxxx X. Xxxx
"Light Valve With Low Emissivity
Coating As Electrode"
6/28/94 3/9/13
5,463,491 Xxxxxx X. Check III
"Light Valve Employing a Film
Comprising An Encapsulated Liquid Suspension And
Method of Making Such Film"
10/31/95 11/6/12
5,463,492 Xxxxxx X. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve"
10/31/95 11/6/12
5,461,506 Xxxxxx X. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing The Same"
10/24/95 5/11/13
5,467,217 Xxxxxx X. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing The Same"
11/14/95 5/11/13
5,516,463 Xxxxxx X. Check III et al
"Method of Making Light
Polarizing Particles"
05/14/96 07/08/14
5,650,872 Xxxxxx X. Xxxx et al
"Light Valve Containing
Ultrafine Particles"
07/22/97 12/08/14
5,728,251 Xxxxxx X. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve"
03/17/98 09/27/15
5,764,402 Xxxx-Xxxxxxxx Xxxxxx; Xxxxxx
Xxxxx
"Optical Cell Control System"
06/09/98 04/24/15
5,838,482 Xxxxxx Xxxxxxxxx; Xxxxxx Xxxxxxx
"Optical Cell" 11/17/98 05/16/15
5,691,849 Xxxx Xxxxxxx; Xxxx-Xxxxxxxx
Xxxxxx; Xxxxx Xxxx
"Rear-View Assembly for a Vehicle
and an Adaptor Therefor"
11/25/97 11/25/14
6,114,405 Xxxxxxx Xxxxxx et al
"Ultraviolet Radiation-Curable
Light-Modulating Film for a Light
Valve, and Method of Making Same"
09/05/00 10/09/17
6,156,239 Xxxxxx X. Xxxx et al
"Light Polarizing Material, Liquid
Suspensions and Films Thereof, and
Light Valve Incorporating Same"
12/05/00 02/26/19
6,271,956B1 Xxxxxx X. Xxxx et al
"Method and Materials for Enhancing
the Adhesion of SPD Films and Light Valves
Comprising Same"
08/07/01 03/02/20
6,301,040 Xxxxxxxxxx Xxxxxxxxxx et al
"SPD Films Having Improved Properties
and Light Valves Comprising Same"
10/09/01 05/24/20
6,334,967 B1 Xxxxxx X. Xxxx et al
"Light Polarizing Particles of
Improved Particle Size Distribution"
01/01/02 12/21/20
(See also listing for PCT/US99/15508)
6,416,827 Xxxxxxxxxx Xxxxxxxxxx et al
"SPD Films and Light Valves Comprising
Same" 07/09/02 [10/27/20]
6,429,961B1 Xxxxxx X. Xxxxxx et al
"Methods for Retrofitting Windows
With Switchable and Non-Switchable Window
Enhancements and Retrofitted Windows Produced
Thereby" 08/06/02 10/03/20
6,517,746 Xxxxxx X. Xxxx et al.
"Polyhalide Particles and Light Valves Comprising
Same" 02/11/03 01/05/21
6,522,446 Xxxxxx X. Xxxx
"Anisometrically Shaped Metal Particles,Liquid
Suspensions and Films Thereof And Light Valves
Comprising Same"
02/18/03 04/25/21
6,529,312B1 Xxxxxx X. Xxxx
"Anisometrically Shaped Carbon and/or
Graphite Particles, Liquid Suspensions and Films
Thereof And Light Valves Comprising
Same" 03/04/03 06/07/19
[See also U.S. Patent No. 6,987,602 filed
December 27, 2002, a continuation-in-part
of this patent]
6,606,185B2 Xxxxxx X. Xxxx
"SPD Films and Light Valves Comprising Liquid
Suspensions of Heat-Reflective
Particles of Mixed Metal Oxides and Methods of
Making Such Particles"
08/12/03 12/08/14
6,804,040 Xxxxxx X. Xxxxxxx, et al
"Method and Device for Controlling Voltage
Provided to a Suspended Particle Device"
10/12/04 02/13/23
6,897,997 Xxxxxx X. Xxxxxxx
"Method and Device for Controlling Voltage
Provided to a Suspended Particle
Device" 05/24/05 02/13/23
(continuation-in-part of 6,804,040)
Xxxxxxxxxx Xxxxxxxxxx et al
6,900,923 "Siloxane Matrix Polymers and SPD
Light Valve Films Incorporating Same"
05/31/05 06/18/23
Xxxxxx X. Xxxx, et al
6,936,193 "SPD Light Valve Film Incorporating
New Suspending Media,and Light Valve
Incorporating Same"
08/30/05 04/14/23
6,987,602 B2 Xxxxxx X. Xxxx, et al
"Anisometrically Shaped Carbon and/or
Graphite Particles, Liquid Suspensions and Films
Thereof And Light Valves Comprising Same"
01/17/06 06/07/19
(continuation-in-part of patent 6,529,312B1)
7,361,252 Xxxxxx X. Slovak, et al
"Methods for Laminating Films for SPD Light
Valves and SPD Light Valves Incorporating Such
Laminated Films" (claims priority from
60/562,329)
04/22/08 10/26/25
7,417,785 Xxxxxx X. Xxxxxxx
"Methods and Circuits for Distributing Power
to SPD Loads" 08/26/08 01/18/25
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