LICENSING AND ROYALTY AGREEMENT
This Agreement is made and entered into this 13th day of November, 1996
by and between XEROGRAPHIC LASER IMAGES CORPORATION., a Delaware corporation,
("XLI") with its principal place of business at 000 Xxxxxxxxx Xxxxxx, 0
Xxxxxxxxx Xxxx, Xxxxx Xxxxxxxxx, Xxxxxxxxxxxxx 00000 and Xionics Document
Technologies, Inc., a Delaware corporation, ("XIONICS") with its principal place
of business at 00 Xxxxxxxxx Xxxx, Xxxxxxxxxx, Xxxxxxxxxxxxx 00000.
1.0 Definitions
1.1 "XLI Technology" means any and all current proprietary printing
technology, including but not limited to intellectual property rights
covering the technology specified in Exhibit A1(Features).
1.2 "Xionics Products " means XIONICS ASICs or chip set product offerings
which incorporate XLI Technology that are part of a controller or
raster image processor for scan, print, fax, copy or related imaging
applications.
1.3 "OEM" means Original Equipment Manufacturer.
1.4 "VHDL" ( Virtual Hardware Description Language) means the design
description language that will be used to transfer XLI Technology
from XLI to XIONICS.
2.0 License and Royalty Fee
2.1 XIONICS will pay xxxxxxxx dollars to XLI in consideration for a
xxxxxxxxx (which ever occurs first) non-exclusive license and
pre-paid royalty for XLI Technology to be incorporated into Xionics
Products. At the end of the xxxxxxxxxx, Xionics has the option to
extend the Agreement for an xxxxxxxxxxxxxx (which ever occurs first)
with the payment of an xxxxxxxxxxxxxx fee. The XLI Technology will be
provided by XLI to XIONICS using the VHDL format, or such other
format as may be required, schematics and other information necessary
for XIONICS to design, manufacturer and market ASICs for its Xionics
Products. The technology licensed in this Agreement is for existing
XLI Technology as defined by the features in Exhibit A1 and the VHDL
delivered to XIONICS in the first quarter of 1997. It does not
include rights for any new features, upgrades, improvements, etc.,
that XLI may develop at a later date other than the maintenance and
support provided in Section 3.3.
2.2 XIONICS hereby receives a non-exclusive license and right to use the
XLI Technology in its products as provided in Section 4. Such license
is granted in consideration of the payment in paragraph 2.1 above by
XIONICS to XLI as provided in the payment terms in Section 7 of this
Agreement.
2.3 XLI and XIONICS are engaged in merger and/or acquisition
negotiations. If XLI breaches the merger and/or acquisition agreement
for no reasonable cause, this non-exclusive license and pre-paid
royalty agreement will become a fully paid perpetual Agreement, with
no quantity or term limits, ixxxxxxxxxxxxxxxxxxxxxxxxxxxx made to XLI
by XIONICS upon execution of this Agreement. By was of example, and
not of limitation, XLI accepting a better offer from a third party is
not considered reasonable cause. If the merger and/or acquisition is
not completed due to XIONICS option, xxxxxxxxxxxxxxxxxxxxxxxxxxxxx
damages for "lost business opportunity" provided that XLI has
refrained from marketing its company or products during the
negotiation period, and payment is due upon termination of the merger
and/or acquisition negotiations. This payment will not be due if the
reason for not proceeding with the merger and/or acquisition is based
on reasonable cause found during the process of due diligence. If the
merger and/or acquisition is not completed for any reason, this
license and royalty Agreement survives.
3.0 Obligations of XLI
3.1 XLI shall provide the XLI Technology to XIONICS for the Xionics
Products in accordance with the schedule included on attached Exhibit
A2. Said XLI Technology shall incorporate the functional design
modules set forth in Exhibit A1.
3.2 License fee includes xxxxxxxxxxxxxxx consulting time xxxxxxxxxxx
Agreement for transfer/integration of the VHDL and training a XIONICS
employee(s) in engine calibration xxxxxxxxxxxxxxxxxxx. Any direct
expenses incurred for equipment and materials, or travel expenses
will be paid for by XIONICS. Additional XLI consulting and
engineering development time requested by XIONICS will be quoted at
xxxxxxx plus materials and other direct expenses.
3.3 XLI shall, during the first year of this Agreement, provide to
XIONICS necessary bug-fix maintenance and support for the XLI
Technology licensed hereunder. Maintenance and support shall include,
but shall not be limited to, phone, fax and e-mail support, all error
and bug corrections, technical information and documentation
reasonably necessary for XIONICS to integrate the XLI Technology into
the Xionics Products. This maintenance and support obligation does
not entitle XIONICS to any new technology outside the XLI Technology
defined in this Agreement.
4.0 Grant of License Rights
4.1 XLI grants to XIONICS a non-exclusive, worldwide license under XLI
intellectual property rights including patent, copyright and trade
secret rights, and right to use, copy, modify, reconfigure ,
reproduce, and translate the XLI Technology for the purpose of
embedding, integrating and incorporating the XLI Technology into
Xionics Products for the ultimate distribution and sale to XIONICS
OEM customers for use in such OEM's electronic goods. XIONICS OEM
customers shall not be required to pay XLI any future license fees
for the license granted herein.
4.2 XIONICS shall not sub-license or otherwise transfer, convey or assign
any of the rights to use the XLI Technology granted hereunder except
as a fully integrated function of Xionics Products as permitted
herein, provided however, that XIONICS shall have the right to have a
third party manufacture ASICs that incorporates XLI Technology.
XIONICS shall not use the XLI Technology to develop for sale
stand-alone ASICs essentially containing only XLI Technology and
competing with XLI stand-alone ASIC sales.
4.3 This Agreement does not grant to XLI by implication, estoppel, or
otherwise, a license to any patents, knowhow, or any other
intellectual property now or hereafter owned or developed by XIONICS.
5.0 Discoveries and Inventions
5.1 All discoveries, developments, improvements, and inventions made or
conceived and first reduced to practice in the performance of the
design and development of the XLI Technology pursuant to this
Agreement, by any of XLI's employees, consultants, associates, and
agents, shall be the sole and exclusive property of XLI and XLI shall
retain any and all rights to file any patent application thereon and
XIONICS shall have a nonexclusive, license under any resulting
patents without additional compensation.
6.0 Other Products
6.1 xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx Xionics controller
proprietary chip set solution. xxxxxxxxxxxxxxxxxxxxxxxxxx. Superchip
is XLI's ASIC being developed as a stand-alone chip for OEMs and
containing essentially the same XLI Technology specified in Exhibit
A1.
7.0 Payment Terms
7.1 xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx XLI will commence development
efforts upon receipt of xxxxxxxx xxxxxxxxxxxxxx. The balance of the
fee will be paid xxxxxxxxxxxxxxxx or at another mutually agreed upon
date if merger and/or acquisition negotiations are continuing.
Payment terms for the agreement extension will be:
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
7.2 During the term of this Agreement, XLI or XLI's agent upon thirty
(30) days written notice, shall have the right to inspect and audit
any and all records relating to licenses and sales of the Xionics
Products for the sole purpose of verifying XIONICS compliance with
the terms and conditions of this Agreement, provided that XLI shall
make no more than one (1) such audit per calendar year. Any such
audit shall be conducted at XIONICS place of business during regular
business hours or other mutually agreed upon time and location. XLI
shall bear its cost of such audit. XLI or XLI's agent shall sign a
nondisclosure agreement obligating the auditor not to disclose
information it learns which does not pertain to the XLI Technology.
If XIONICS is found in violation of this Agreement, payment for any
units in excess of the Agreement terms will become immediately due at
the rate of $1 per unit plus a 1% per month interest penalty from the
date of the violation.
7.3 The payments to XLI hereunder shall be effected in U.S. dollars and
shall be transmitted by telegraphic transfer remittance to the
following bank account or to such other bank account as XLI may
notify XIONICS in writing:
BAYBANK, 0 X.X. Xxxxxxxxx Xxxx,
XXXXXXXXXX, XX.
ABA Routing No. 0000-0000-0
Account No. 259-39719
8.0 Confidentiality
8.1 XLI and XIONICS agree that any information, technical data or know
how, which is furnished to the other in written or tangible form by
either party under or in connection with this Agreement and marked as
"Proprietary Information" or "Confidential", will be maintained by
the receiving party in confidence during the term of this Agreement
and for a period of five (5) years thereafter and will not be used by
the receiving party except to fulfill the purposes of this Agreement.
Oral disclosure will be covered by this Agreement only if such
disclosures are reduced to writing within 10 business days of
disclosure and marked as provided above. Neither party shall be under
any obligation to maintain in confidence any portion of the
Proprietary Information received which is: (i) already in the
possession of the receiving party or its subsidiaries from other
sources; (ii) independently developed by the receiving party or its
subsidiaries; (iii) publicly disclosed by the disclosing party; (iv)
received by the receiving party or its subsidiaries from a third
party with the right to disclose; or (v) approved for release by
written agreement with the disclosing party, or (vi) required to be
disclosed by law.
9.0 Patent Indemnity
9.1 XLI shall at all times indemnify and hold harmless XIONICS, its
successors and permitted assigns from and against any and all claims,
liabilities, losses, costs, damages and expenses arising out of or
resulting from any claim, action or proceeding, including but not
limited to the damages, losses, costs and expenses payable to third
parties (including settlement costs and judgments) claiming patent
infringement and all of XIONICS reasonable attorney fees and
disbursements, court costs, and expenses incurred by XIONICS.
9.2 Notwithstanding the provisions of 9.1 above, XLI shall not be liable
to XIONICS in the event that the alleged infringement by the XLI
Technology is due to modifications made to the XLI Technology by
XIONICS and not approved by XLI.
9.3 Further, XLI shall not have any liability to XIONICS under this
Section 9 if the infringement or other violation of a third party's
right is not based solely upon the XLI Technology.
10.0 XLI Warranties
10.1 XLI warrants that: (1) it has the legally enforceable right to grant
XIONICS the license set forth in Section 4 of this Agreement; (2) to
XLI's knowledge the XLI Technology does not incorporate or infringe
upon any intellectual property not owned or licensed by XLI; (3) XLI
has not been notified by a third party that the technology might
infringe any intellectual property rights or other proprietary rights
of a third party; (4) the XLI Technology shall conform in all
material respects to the specifications contained in Exhibit A of
this Agreement.
11.0 Limitation of Remedies
11.1 In no event will XLI be liable for: (1) lost profits or any other
incidental or consequential damages, regardless of the form of the
action whether in contract, tort (including negligence), strict
product liability or otherwise, even if XLI has been advised of the
possibility of such damages; or (2) damages caused by XIONICS'
failure to perform its responsibilities.
11.2 In no event will XLI be liable to XIONICS for damages exceeding the
amount paid to XLI by XIONICS under the terms of this Agreement
except for damages arising under Section 9 above.
12.0 Termination
12.1 This Agreement may be terminated by either party in the event the
other party breaches a term of this Agreement and fails to cure such
breach to the reasonable satisfaction of the complaining party within
thirty (30) days after written notice thereof from the non-breaching
party, or if such breach cannot reasonably be cured within said
thirty (30) days, the breaching party fails to commence to cure such
breach within thirty (30) days after written notice and fails to
complete such cure within ninety (60) days of the date of such
notice.
12.2 In the event the XLI Technology fails to perform according to the
specifications set forth in this Agreement or the performance
standards set forth herein cannot be achieved, XIONICS may terminate
this Agreement, upon thirty (30) days written notice to XLI without
further liability and XLI shall refund to XIONICS all license fees
paid to XLI hereunder.
12.3 In the event of the direct or indirect taking over or assumption of
control of either party, by any third party, or in the event of
bankruptcy or insolvency of either party, the other shall have the
right to immediately terminate this Agreement by written notice to
such party. Notwithstanding the foregoing, the license granted to
XIONICS by this Agreement shall survive the bankruptcy or insolvency
of XLI and XIONICS shall continue to have the right to use the XLI
Technology as permitted in this Agreement. Nothing in this Agreement
shall be construed as limiting or waiving XIONICS right under Xxxxxxx
000 (x) xx xxx Xxxxxx Xxxxxx Bankruptcy Code.
12.4 If termination is due to XIONICS breach of its obligations under this
Agreement, the license and rights granted to XIONICS shall be
terminated and XIONICS shall have no further right to continue to use
the XLI Technology. If this Agreement is terminated due to XLI's
breach of its obligations hereunder, the license granted to XIONICS
shall survive termination and XIONICS shall continue to have the
right to use the XLI Technology as permitted by this Agreement and
subject to the royalty payments. Notwithstanding the foregoing,
termination of this Agreement for any reason shall not affect the
right of XIONICS OEM's and such existing OEM's end users to continue
to use and have access to the XIONICS ASIC(s) or chip set products
containing the XLI Technology, provided such OEM's were granted
access to the XLI Technology as permitted by this Agreement.
13.0 Notices
13.1 Written notices hereunder are deemed to be given when received if
telexed or faxed and within five days if mailed by air courier,
postage prepaid, return receipt, to the addresses of the parties as
set forth herein, or such other addresses as shall be furnished in
writing, by either party.
14.0 Non-assignability
14.1 This Agreement is not assignable by either party without the prior
written consent of the other party. Any attempt to assign this
Agreement without the prior written consent of the other party shall
be void.
14.2 This Agreement shall be binding on and inure to the benefit of the
parties' successors and permitted assigns. Specifically, XLI shall
have no rights to assign this Agreement to any party which does not
expressly agree to maintain this Agreement in effect and honor its
terms as set forth herein or subsequently amended by XLI and XIONICS.
15.0 No Joint Venture
15.1 This Agreement creates no agency, partnership, employment, joint
relationship or joint venture between the parties or mutual
responsibility on behalf of one party for the debts or liabilities of
the other. The parties agree that each is acting as an independent
contractor and that any employees of XIONICS are in no way employees
of XLI. Neither party shall have the power or authority to bind or
obligate the other except as expressly set forth in this Agreement.
16.0 Other Agreements
16.1 This Agreement contains the entire understanding of the parties with
respect to the subject matter hereof and supersedes all prior
agreements relating thereto, written or oral, between the parties.
Amendments to this Agreement must be in writing and signed by the
duly authorized officers of the parties.
17.0 Force Majeure
17.1 Neither party shall be liable for delay in performance or failure to
perform in whole or in part the terms of this Agreement due to
strike, labor dispute, act of war, riot or civil commotion, act of
public enemy, fire, flood or act of God or other cause beyond the
control of such party.
18.0 Arbitration
18.1 All disputes that may arise in connection with this Agreement that
cannot be settled by the parties themselves shall be submitted to a
panel of three arbitrators in Boston, Massachusetts proceeding under
the rules and regulations of the American Arbitration Association.
Arbitrators shall be required to provide a written decision with full
explanation of their findings. All costs of arbitration shall be
divided equally between the parties, and the parties agree to abide
by the decision of such arbitration.
19.0 Governing Law
19.1 The construction, validity and the performance of this Agreement
shall be governed by the laws of the Commonwealth of Massachusetts.
IN WITNESS WHEREOF the duly authorized representatives of the parties have
executed this Agreement as of the Effective Date.
Xionics Document Technology, Inc.
By: /s/ Xxxxxx Xxxxxx
-----------------
Title: CEO
Xerographic Laser Images Corp.
By: /s/ Xxxxxxx X. X'Xxxxxx
-----------------------
Title: President, CEO
EXHIBIT A: Licensed Features & Schedule
A1: Licensed Features
Current Superchip VHDL Core Modules for printer, copier, fax, and
multi-function applications in color and monochrome laser print engines with the
following feature sets:
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxx
1 bit Photo Enhancement
Toner Saver Mode
Digital Modulator for sub-pixel modulation
Maximum Video Rate: 50 MHz
Minimum Video Rate: 3 MHz for all modes
A2: Schedule
Definition of design data interface for the XLI/XIONICS part: XLI
Design data to XIONICS, including data, address, command, control and bus
interface specifications February 1997
