EXHIBIT 10.21
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CONFIDENTIAL TREATMENT HAS BEEN REQUESTED FOR PORTIONS OF THIS EXHIBIT. THE COPY
FILED HEREWITH OMITS THE INFORMATION SUBJECT TO THE CONFIDENTIALITY REQUEST.
OMISSIONS ARE DESIGNATED AS *. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED
SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION.
DEVELOPMENT AGREEMENT
BETWEEN
ENIKIA LLC
AND
LEVITON MANUFACTURING CO. INC.
This Agreement, by and between ENIKIA LLC, a Delaware limited liability company
("Enikia"), with a place of business at ▇▇▇ ▇▇ ▇▇▇▇▇▇▇ ▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, ▇▇
▇▇▇▇▇, and LEVITON MANUFACTURING CO., INC. ("Leviton"), a Delaware corporation
with a place of business at ▇▇-▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇, ▇▇
▇▇▇▇▇-▇▇▇▇, shall have an effective date of (Effective Date).
WHEREAS, Enikia has experience in the design and manufacture of power line
carrier chip sets and power line carrier applications in commercial sites; and
WHEREAS, Leviton has experience in the design, manufacture, marketing and
selling of devices and systems, which interface to the power line, for the
purpose of data, voice, video transmission and automation; and
WHEREAS, the Parties believe that there are business development opportunities
for power line carrier devices and systems, for retrofitting of Residential,
MDU/MTU and Light Commercial sites, with products incorporating technology and
products from both Enikia and Leviton; and
WHEREAS, the Parties desire to work together to develop such products.
THEREFORE, the Parties hereby enter into this Agreement.
1. DEFINITIONS
1.1 "Party/Parties" shall mean Enikia and/or Leviton.
1.2 *
1.3 "NDA" shall mean the Non-Disclosure Agreement dated 8 November 2002
between Enikia and Leviton.
1.4 "Enikia Product(s)" shall mean semiconductor chips, chip sets(s) and
designs, including related firmware and software, for incorporation in
electrical and/or, electronic devices and/or PLC Products developed by
Enikia apart from those developed under this Agreement.
1.5 *
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1.6 "Project" shall mean the effort to be undertaken by the Parties hereto
pursuant to this Agreement for the development and incorporation of
Enikia Special Products into Joint PLC Products as described in
SCHEDULE A.
2 DEVELOPMENT PLANS, RESPONSIBILITIES. PROJECT MANAGEMENT
2.1 *
2.2 *
2.3 *
2.4 It is the intention of the Parties to expand the number of Projects
being pursued in the future as opportunities are identified by either
Party.
2.5 Enikia and Leviton shall cooperate with one another on Projects to
determine the responsibilities and cost allocations of each Party.
2.6 *
3 PATENTS AND INVENTIONS
3.1 Each of the Parties hereby represents to the other that it has, or
will have, prior to commencement of the Project, valid and sufficient
arrangements and agreements with its respective employees and/or
nonemployee consultants, such that the ownership of any and all
inventions pertaining to any Joint PLC Products made by an employee
and/or consultant vests in the Party hereto employing said employee
and/or consultant, subject to the provisions of the applicable law
governing ownership of such inventions.
3.2 Each of the Parties agrees to reasonably enforce its respective
intellectual property rights against infringement of same by third
parties with regard to inventions, copyrightable material, or
proprietary information for products covered under the scope of this
Agreement.
3.3 All inventions, copyrightable material, and proprietary information
made or developed jointly by employees of Enikia and Leviton in
performance under this Agreement, including, without limitation the
Joint PLC Products, shall be jointly owned by Enikia and Leviton; each
Party has the right to exploit and grant licenses in respect to such
inventions, copyrightable material or proprietary information and any
patents and copyrights arising there from, with the written consent of
the other Party. In the event of a joint invention, the Parties shall
mutually agree which Party shall have the responsibility for preparing
and filing any patent application(s) on the invention in the United
States and foreign countries; and the Parties agree that each will
bear one-half of the actual out-of-pocket expenses associated with
obtaining and maintaining such patents. In the event one Party (a
"non-electing Party") elects not to file application for or maintain
patent protection for any joint invention in any particular country or
not to share equally in the expenses thereof with the other Party,
then the other Party (the "electing Party") shall have the right to
apply for and maintain such patent protection in such country at its
own expense (the non-electing Party undertaking to execute all such
documents as may be necessary) and shall have full control over the
prosecution and maintenance thereof, whereupon the non-electing
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Party shall assign its patent rights to the electing Party. An
irrevocable royalty-free, non-exclusive, personal license to said
PATENT rights shall then be granted by the electing Party to the
non-electing Party. Should neither Party elect to file application for
letters patent or take other necessary legal steps to protect such
invention, the invention shall remain jointly owned.
4 INDEPENDENT DEVELOPMENT
Nothing in the Agreement shall prevent either Party from continuing its
independent development, manufacture and sale of its own technologies,
including technology and products that are the subject matter of this
Agreement nor require the same to become subject thereto, provided, that
nothing herein shall be construed as a grant by either Party to the other
Party of any rights in or licenses to the such Party's own technology in
connection with such independent research and development efforts.
5 DILIGENCE
The Parties agree to use their own customary commercially reasonable
efforts throughout the life of this Agreement to achieve any milestones or
commitments mutually agreed upon between the Parties.
6 CONFIDENTIAL INFORMATION
The terms and conditions of the NDA shall govern the exchange of
proprietary information under this Agreement and are incorporated herein by
reference.
7 TERM AND TERMINATION
This Agreement shall commence on the Effective Date and shall continue for
a period of twelve (12) months thereafter ("the initial term"); provided,
however, that either party may terminate this Agreement prior to the
expiration of the initial term upon (60) days written notice to the other
if the party exercising such earlier right has a reasonable business basis
for such termination. After the expiration of the initial term, either
party may terminate this Agreement for any reason, with or without cause,
upon (60) days written notice to the other. Irrespective of when
termination occurs, all rights accruing prior to termination, namely
intellectual property rights, shall survive termination.
8 GENERAL
8.1 The laws of the State of New York shall, without regard to its
conflicts of laws, govern the construction and interpretation of this
Agreement and all disputes between the Parties.
8.2 Except with respect to a the transfer or sale of the entire business
of a Party hereto with respect to which this Agreement pertains,
neither Party may assign, pledge, hypothecate or in any manner
transfer, convey, alienate or encumber any right or interest in this
Agreement, without the written permission of the other Party, which
permission shall not be unreasonably withheld, and any such
non-permitted, purported assignment, pledge, hypothecation, transfer,
conveyance, alienation, or encumbrance shall be void.
8.3 Any notice, request or statement hereunder shall be deemed to be
sufficiently given or rendered upon the date mailed when sent by
registered mail, postage prepaid, and if given or rendered to Enikia
addressed to:
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Enikia LLC
▇▇▇ ▇▇ ▇▇▇▇▇▇▇ ▇▇
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
ATTN: ▇▇▇▇ ▇▇▇▇▇▇▇▇
or, if given or rendered to Leviton, addressed to:
Leviton Manufacturing Co. Inc.
*
8.4 Neither Party shall disclose to any third party the terms of this
Agreement without the prior consent of the other, which consent will
not be unreasonably withheld. Any press release or other similar
announcement relating to this Agreement requires approval by both
Parties.
8.5 This Agreement, along with its Schedules, is the entire Agreement
between the Parties with respect to the subject matter hereof and
supersedes all prior Agreements, understandings or representations
between the Parties with respect to the subject matter hereof except
for the Nondisclosure Agreement as referenced herein. No alteration,
modification, interpretation or amendment of this Agreement shall be
binding on the Parties unless in writing, designated as an amendment
hereto and signed by an officer or other individual authorized in
writing by each of the Parties to sign such documents.
8.6 Neither Party in connection with the performance of this Agreement
shall either directly or indirectly make, give or promise any payment
or other thing of value to any person for any purpose, or commit any
other act which is unlawful under the laws of the United States,
including, but not limited to the Foreign Corrupt Practices Act, the
Export Administration Act, the ▇▇▇▇▇▇▇ Antitrust Act, the Internal
Revenue Code, and, to the extent not inconsistent with the laws of the
United States, the laws of any other applicable jurisdiction.
8.7 Each Party is independently responsible for the timely and proper
performance of that part of the scope of work as is from time to time
assigned to it by mutual agreement. Neither Party is, directly or
indirectly, authorized expressly or by inference to hold itself out as
the agent, servant or employee of the other or having any other status
by which to bind the other contractually or otherwise to any third
party.
8.8 Neither Party makes any representation or commitment under this
Agreement to develop any future or proposed products other than the
PLC Product. Nothing in this Agreement shall be construed as limiting
or restricting, in any way, the right of either Party to conduct its
existing and future business independently of the other Party.
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IN WITNESS WHEREOF, both Parties have caused this Agreement to be duly executed
effective as of the Effective Date stated above.
LEVITON MANUFACTURING CO., ENIKIA, LLC
By: /s/ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇ ▇▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇ Name: ▇▇▇▇ ▇▇▇▇▇▇▇▇
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Title: VP of Strategic Business Title: President
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Date: 7/21/04 Date: 7/18/03
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Schedule A
None.
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