Exhibit 10.14
LICENSE AGREEMENT
This Agreement is made and effective as of the Effective Date of the Technology
Transfer Agreement (as defined in this License Agreement) by and between
WhoVision Systems, Inc. ("WhoVision"), a United States corporation with offices
at 000 Xxxxx Xxxxxx Xxxxx, Xxxx Xxxxxx, XX 00000, XXX, and Koninklijke Philips
Electronics N.V. ("Philips"), a Dutch corporation with offices at Eindhoven, The
Netherlands.
WHEREAS, the parties have agreed to conclude a license agreement pursuant to
which Philips grants licenses to WhoVision under certain patents of Philips to
develop, manufacture, have manufactured and sell certain fingerprint sensors.
NOW, THEREFORE, it is hereby agreed as follows:
Article 1
Definitions
For the purpose of this Agreement the following definitions shall apply:
1.1 "Licensed Patents" shall mean
[a. xxxxxxxxxxxxxxxxxxxxxxxxxxx
b. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
c. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
d. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
e. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
f. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
g. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
h. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
i. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
j. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
k. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
l. xxxxxxxxxxxxxxxxxxxxxxxxxxx
m. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
n. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx]
[Confidential Treatment requested for redacted portion of document]
and corresponding patent applications worldwide, including all continuation,
divisional and continuation-in-part applications resulting therefrom, and
patents issuing or issued on any of such applications. The current status of
each of the above listed patents is set forth on Exhibit A attached hereto.
1.2 "Licensed Products" shall mean capacitive and optical fingerprint
sensing devices based on Philips' proprietary amorphous silicon
technology.
1.3 "Associated Company" shall mean any entity which is at least fifty
percent (50%) owned or controlled, directly or indirectly, by Philips
or by WhoVision, but only for as long as such ownership or control
exists.
1.4 "Technology Transfer Agreement" shall mean the Technology Transfer
Agreement of _________________ 1998, between WhoVision and Philips Flat
Panel Display Co.
(Philips FPD) B.V.
Article 2
Grant of licenses
Subject to the terms and conditions of this Agreement, Philips hereby grants to
WhoVision and its Associated Companies a fully paid-up, royalty free, worldwide,
non-exclusive, irrevocable (subject to Article 4), non-transferable and
indivisible license under the Licensed Patents to develop, manufacture, have
manufactured and to use, sell, import, lease or otherwise dispose of capacitive
and optical fingerprint sensing devices based on Philips' proprietary amorphous
silicon or [xxxxxxxxxxx] technology.
Article 3
Warranties
3.1 Philips agrees, in addition to the licenses granted hereunder, that it
will not assert during the term of this Agreement any patent rights
owned or controlled by Philips or its Associated Companies which cover
inventions relating to Licensed Products against the manufacture and
sale by WhoVision and/or its Associated Companies of fingerprint
sensors anywhere in the world.
[Confidential Treatment requested for redacted portion of document]
3.2 Philips represents that it owns and controls the Licensed Patents.
Philips represents that to the best of its knowledge the technology
covered by the Licensed Patents does not infringe upon third parties'
patent rights.
Article 4
Term and termination
4.1 This Agreement shall become operative with effect as from the date
first above written and shall continue in effect until the date of
expiration of the last to expire of the Licensed Patents.
4.2 Notwithstanding the above, in the event that WhoVision shall:
a. file a petition in bankruptcy or make a general assignment for
the benefit of creditors or otherwise acknowledge insolvency or
be adjudicated bankrupt,
b. go or be placed in a process of complete liquidation other than
for an amalgamation or reconstruction, or
c. suffer the appointment of a receiver for any substantial portion
of its business who shall not be discharged within sixty (60)
days after this appointment,
then, and in any such event, Philips at its option may terminate its
obligations to WhoVision under this Agreement upon ten (10) days
written notice to WhoVision. Philips may also terminate this License
Agreement in accordance with Article 3.14 of the Technology Transfer
Agreement.
Article 5
General
5.1 Neither party shall assign this Agreement without the prior written
consent of the other party. Any assignment without such consent shall
be null and void. In case of a WhoVision change of control, this
Agreement will remain effective for the WhoVision business only,
subject to the prior written approval of Philips, which will not be
unreasonably withheld.
5.2 Any notice under this Agreement shall be given by sending the notice by
prepaid registered mail addressed to the party to whom notice is to be
given at the party's registered office at that time and any notice so
sent shall be deemed to have been given
on the date upon which, in ordinary course of the post, it would have
reached its destination, but not later than ten (10) days after mailing
in the fashion described.
5.3 Nothing contained in this Agreement shall be construed as conferring by
implication, estoppel or otherwise upon any party hereto any license or
other right or privilege under any patent, except the licenses, rights
and privileges expressly granted hereunder to such party.
5.4 Philips undertakes not to start an active licensing program under the
Licensed Patents in the WhoVision field of use as defined in the
Technology Transfer agreement, on the condition that and as long as
WhoVision's sales performance is in accordance with the Business Plan,
which is attached to the Technology Transfer Agreement as Annex B.
Article 6
Arbitration and applicable law
This Agreement, its validity, its interpretation and performance shall be
governed by the Laws of the State of New York as if this Agreement were wholly
executed and wholly to be performed in New York.
All disputes arising out of or in connection with the interpretation or
execution of this Agreement during its term or thereafter shall be finally
settled according to the Rules of Conciliation and Arbitration of the
International Chamber of Commerce by one or more arbitrators in accordance with
the Rules. The Court of Arbitration shall convene at New York, USA or such other
place as the parties may mutually agree. The proceedings shall be conducted in
the English language.
Article 7
Entire agreement
This Agreement sets forth the entire agreement and understanding between the
parties hereto as to the subject matter hereof and merges and, supersedes all
prior discussions between them and neither of the parties shall be bound by any
conditions, definitions, warranties, waivers or releases in respect of this
Agreement, other than expressly provided for herein or as duly set forth on or
subsequent to the date hereof in a written document signed by a duly authorized
representative of the party to be bound thereby.
IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be
executed in duplicate by its duly authorized officers or representatives.
KONINKLIJKE PHILIPS WHOVISION SYSTEMS, INC.
ELECTRONICS N.V.
By: Xxxx Xxxxxxxx By: Xxxx Xxxxxxxxx
/s/ Xxxx Xxxxxxxx /s/ Xxxx Xxxxxxxxx
-------------- ---------------
Title: Chief Executive Officer, Title: CEO
Business Group Flat Display Systems,
Philips Components Division
List
Current status of patents and patent applications:
[a. xxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxx
b. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
c. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
d. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
e. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
f. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
g. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
h. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
i. xxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
j. xxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
[Confidential Treatment requested for redacted portion of document]
k. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
l. xxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
m. xxxxxxxxxxxxxxxxxxxxxxxxxxxx
n. xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx]
[Confidential Treatment requested for bracketed portion of document]
2
