EXHIBIT 10.6
HRL LABORATORIES, LLC - EYE DYNAMICS INC.
TECHNOLOGY DEVELOPMENT AGREEMENT
This Technology Development Agreement ("AGREEMENT") is entered into
this 18th day of November, 2002 (the "EFFECTIVE DATE"), by and between HRL
Laboratories, LLC ("HRL"), having a principal place of business at 0000 Xxxxxx
Xxxxxx Xxxx, Xxxxxx, Xxxxxxxxxx 00000, and Eye Dynamics Inc. ("EDI"), located at
0000 Xxxx 000xx Xxxxxx, Xxxxx 000, Xxxxxxxx, XX 00000. HRL and EDI may be
referred to individually as a "PARTY" or collectively as the "PARTIES." All
capitalized terms not otherwise defined herein have the meanings set forth in
Section 1 herein.
WHEREAS, HRL is a Delaware limited liability company jointly owned by
The Boeing Company, a Delaware corporation ("BOEING"), Amber Engineering ("AMBER
ENGINEERING"), by and through its parent company, Raytheon Company, a Delaware
corporation ("RAYTHEON"), of which Amber Engineering is a wholly-owned
subsidiary, and General Motors Corporation ("GM") (Boeing, Amber Engineering,
Raytheon and GM are sometimes collectively referred to herein as "HRL'S OWNERS")
and conducts applied research and development for these owners and for
government and commercial customers; and
WHEREAS, HRL desires to maximize value from its technological
expertise, subject to its primary objective to serve the business interests of
its owners; and
WHEREAS, EDI is a Nevada corporation and produces and markets patented
proprietary products and other services for the institutional, medical and
government markets including SafetyScope(TM), a digital system which identifies
and tracks movements of the human iris ("SAFETYSCOPE"); and
WHEREAS, the Parties wish to collaborate to further develop Project
Intellectual Property as specifically detailed in Section 2 herein and EXHIBIT 2
attached hereto, subject to the terms and conditions set forth in Section 5
herein; and
WHEREAS, the Parties recognize that no rights to any Intellectual
Property owned by any Party prior to the Effective Date are being granted to the
other Party under this Agreement; and
WHEREAS, the Parties do not intend for any of the Project Intellectual
Property to include any Intellectual Property owned by HRL or owned by HRL's
Affiliates; and
WHEREAS, the Parties have entered into an Agreement to Exchange
Proprietary Information (# 012039) dated April 4, 2001 (the "PROPRIETARY
INFORMATION AGREEMENT"), and attached as EXHIBIT 1 hereto.
NOW, THEREFORE, in consideration of the foregoing premises and the
mutual promises, covenants and conditions contained in this Agreement, the
Parties hereby agree as follows:
1. DEFINITIONS. Capitalized terms used in this Agreement shall have the
meanings set forth below or as otherwise specified herein:
"365" shall have the meaning set forth in Section 4(g) herein.
"365(N)" shall have the meaning set forth in Section 4(g) herein.
"AFFILIATE", with respect to any person or entity, means a business
entity, including successors and assigns, having an ownership interest in such
person or entity, or any corporation, partnership or other entity, including
successors and assigns, that directly, or indirectly, through one or more
intermediaries, controls or is controlled by or is under common control with
such person or entity. Notwithstanding the foregoing, for purposes of this
Agreement, HRL Affiliates include HRL's Owners and their respective Affiliates.
"ALGORITHM" shall have the meaning set forth in Section 2(a) herein.
"AGREEMENT" shall have the meaning set forth in the preamble hereto.
"AMBER ENGINEERING" shall have the meaning set forth in the recitals
hereto.
"XXXXXXX XXXXX PROJECT" shall have the meaning set forth in Section
2(d)(iii) herein.
"BOEING" shall have the meaning set forth in the recitals hereto.
"CODE" shall have the meaning set forth in Section 4(g) herein.
"CONFIDENTIAL INFORMATION" means that information as defined in
paragraph 4 of the Letter of Intent and includes such information deemed as
"PROPRIETARY" in paragraph 1 of the Proprietary Information Agreement.
"EAR" shall have the meaning set forth in Section 9(j) herein.
"EDI" shall have the meaning set forth in the preamble hereto.
"EDI CAPITAL STOCK" shall have the meaning set forth in Exhibit 5,
Section (b) herein.
"EFFECTIVE DATE" shall have the meaning set forth in the preamble
hereto.
"ENVIRONMENTAL LAWS" means any and all federal, state and local Laws
which are intended to protect the environment and/or human health and safety,
including Laws governing or relating to Hazardous Materials. "ENVIRONMENTAL
LAWS" include the Comprehensive Environmental Response, Compensation and
Liability Act of 1980, as amended by Superfund Amendments and Reauthorization
Act of 1986, 42 U.S.C. ss. 9601 ET SEQ., the Toxic Substances Control Act, 15
U.S.C. ss. 2601 ET SEQ., the Hazardous Materials Transportation Act, 49 U.S.C.
ss. 1802 ET SEQ., the Resource Conservation and Recovery Act, 42 U.S.C. ss. 9601
ET SEQ., the Clean Water Act, 33 U.S.C. ss. 1251 ET SEQ., the Safety Drinking
Water Act, 42 U.S.C. ss. 300f ET SEQ., and the Clean Air Act, 42 U.S.C. ss. 7401
ET SEQ.
"ERISA" shall have the meaning set forth in Exhibit 5, Section (r)
herein.
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"GM" shall have the meaning set forth in the recitals hereto.
"HRL" shall have the meaning set forth in the preamble hereto.
"HRL DIRECTOR" shall have the meaning set forth in Section 3(e) herein.
"HRL OWNERS" shall have the meaning set forth in the recitals hereto.
"INTELLECTUAL PROPERTY" means (i) patents, patent applications and
invention disclosures; (ii) trademarks, trade names, corporate names,
copyrights, service marks, Internet domain names, copyrightable works, logos and
slogans (and all translations, adaptations, derivations and combinations of the
foregoing) and any applications for registration of the foregoing, together with
all goodwill associated with each of the foregoing; (iii) trade secrets,
confidential information, formulas, processes, ideas, know-how and inventions;
(iv) computer software, including, but not limited to, source code, executable
code, data, databases and documentation (except for licenses of commercially
available software); and (v) all other intellectual property.
"ITAR" shall have the meaning set forth in Section 9(j) herein.
"LATEST BALANCE SHEET" shall have the meaning set forth in Exhibit 5,
Section (e)(ii) herein.
"LETTER OF INTENT" shall have the meaning set forth in the preamble of
this Agreement.
"LIEN" means any mortgage, pledge, security interest, encumbrance, lien
or charge of any kind (including, without limitation, any conditional sale or
other title retention agreement or lease in the nature thereof), any sale of
receivables with recourse against EDI, its Subsidiary, or any Affiliate, any
filing or agreement to file a financing statement as debtor under the Uniform
Commercial Code or any similar statute other than to reflect ownership by a
third party of property leased to EDI or its Subsidiary under a lease which is
not in the nature of a conditional sale or title retention agreement, or any
subordination arrangement in favor of another Person (other than any
subordination arising in the ordinary course of business).
"PARTY" and "PARTIES" shall have the meaning set forth in the Preamble
hereto.
"PERSON" or "PERSONS" means an individual, a partnership, a
corporation, a limited liability company, an association, a joint stock company,
a trust, a joint venture, an unincorporated organization and a governmental
entity or any department, agency or political subdivision thereof.
"PROJECT" shall have the meaning set forth in Section 2(a) herein.
"PROJECT INTELLECTUAL PROPERTY" means any Intellectual Property
relating to the Project and provided by EDI or HRL pursuant to this Agreement or
the Proprietary Information Agreement, and any Intellectual Property developed
by the Parties, together or separately, pursuant to this Agreement.
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"PROJECT PARTICIPANT" means any employee, consultant, intern, advisor,
independent contractor or contract labor assignee of HRL or EDI who at any time
on or after the date of this Agreement, directly or indirectly, works on or is
associated with the development of the Project and/or Project Intellectual
Property. The term Project Participant shall not include law firms, accounting
firms, banking-related institutions, or other entities or individuals not
involved in the research of, the development of or the delivery of technology
and/or scientific services.
"PROJECT PRODUCT" means any product developed for commercialization
from the Project Intellectual Property.
"PROJECT SERVICE" means any service developed for commercialization
from the Project Intellectual Property.
"PROPRIETARY INFORMATION AGREEMENT" shall have the meaning set forth in
the recitals hereto.
"RAYTHEON" shall have the meaning set forth in the recitals hereto.
"REGISTRATION RIGHTS AGREEMENT" means the Registration Rights Agreement
entered into by the Parties as of the Effective Date and attached hereto as
EXHIBIT 4.
"RESTRICTED SECURITIES" means the EDI Capital Stock issued hereunder
and any securities issued with respect to such securities by way of a stock
dividend or stock split or in connection with a combination of shares,
recapitalization, merger, consolidation or other reorganization. As to any
particular Restricted Securities, such securities shall cease to be Restricted
Securities when they have (a) been effectively registered under the Securities
Act and disposed of in accordance with the registration statement covering them,
(b) been distributed to the public through a broker, dealer or market maker
pursuant to Rule 144 (or any similar provision then in force) under the
Securities Act or become eligible for sale pursuant to Rule 144 (or any similar
provision then in force) under the Securities Act or (c) been otherwise
transferred and new certificates for them not bearing the Securities Act legend
set forth in Section 7(a) herein have been delivered by EDI in accordance with
Section 7 herein. Whenever any particular securities cease to be Restricted
Securities, HRL shall be entitled to receive from EDI, without expense, new
securities of like tenor not bearing a Securities Act legend of the character
set forth in Section 7(a) herein.
"SECURITIES ACT" means the Securities Act of 1933, as amended, or any
similar federal law then in force.
"SECURITIES AND EXCHANGE COMMISSION" includes any governmental body or
agency succeeding to the functions thereof.
"SUBSIDIARY" or "SUBSIDIARIES" means, with respect to any Person, any
corporation, limited liability company, partnership, association or other
business entity of which (i) if a corporation, a majority of the total voting
power of shares of stock entitled (without regard to the occurrence of any
contingency) to vote in the election of directors, managers or trustees thereof
is at the time owned or controlled, directly or indirectly, by the Person or one
or more of the other Subsidiaries of that Person or a combination thereof, or
(ii) if a limited liability company, partnership, association or other business
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entity, a majority of the partnership or other similar ownership interest
thereof is at the time owned or controlled, directly or indirectly, by any
Person or one or more Subsidiaries of that Person or a combination thereof. For
purposes hereof, a Person or Persons shall be deemed to have a majority
ownership interest in a limited liability company, partnership, association or
other business entity if such Person or Persons shall be allocated a majority of
limited liability company, partnership, association or other business entity
gains or losses or shall be or control any managing director or general partner
of such limited liability company, partnership, association or other business
entity.
"TAX" or "TAXES" means federal, state, county, local, foreign or other
income, gross receipts, ad valorem, franchise, profits, sales or use, transfer,
registration, excise, utility, environmental, communications, real or personal
property, capital stock, license, payroll, wage or other withholding,
employment, social security, severance, stamp, occupation, alternative or add-on
minimum, estimated and other taxes of any kind whatsoever (including, without
limitation, deficiencies, penalties, additions to tax, and interest attributable
thereto) whether disputed or not.
"TAX RETURN" means any return, information report or filing with
respect to Taxes, including any schedules attached thereto and including any
amendment thereof.
2. COLLABORATION AGREEMENT
(a) THE PROJECT. HRL is developing a robust iris tracking algorithm
(the "ALGORITHM") and agrees to provide the Algorithm to EDI for EDI to
incorporate into EDI's already existing SafetyScope and other EDI developed
products (the "PROJECT"). The Parties agree that delivery of said Algorithm by
HRL completes its obligation under this Agreement and that HRL shall not be
required to support the incorporation of the Algorithm into EDI developed
products. EDI may, under a separate agreement, contract the technical services
of HRL to support the incorporation of the Algorithm into EDI developed
products; however, HRL, at its sole discretion, may accept or decline such
contract for technical services.
(b) GOOD FAITH. The Parties agree to act in good faith to develop the
Project to commercial viability, and shall work cooperatively to create the
Project for the mutual benefit of both Parties as described herein.
(c) EXPENSES. Each Party shall bear its own expenses incurred in
developing the Project and Project Intellectual Property, unless otherwise
agreed.
(d) EXCLUSIVITY.
(i) During the term of this Agreement HRL and EDI agree to
work exclusively with each other in the development of the Project.
(ii) EDI has not and shall not, from the date of the Letter of
Intent through the termination of this Agreement pursuant to Section
9(i), without the prior written consent of HRL, enter into any
agreement, arrangement or understanding to (i) develop, license, sell,
transfer, or assign the Project, any part, portion or component of the
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Project or the Intellectual Property relating to the Project, or enter
into any other material agreement or understanding relating to the
Project, or (ii) enter into any agreement with a competitor of HRL or
HRL's Owners.
(iii) EDI, through its engineer Xxxxxxx Xxxxx, is currently
working to develop a new and updated eyetracking algorithm which is
completely separate and unique from the Algorithm (the "XXXXXXX XXXXX
PROJECT"). Notwithstanding the terms of this Section, HRL hereby agrees
that the Xxxxxxx Xxxxx Project does not violate the terms of this
Section 2(d) or this Agreement.
(iv) HRL shall not, from the date of the Letter of Intent
through the termination date of this Agreement pursuant to Section
9(i), without the prior written consent of EDI, enter into any
agreement, arrangement or understanding to develop technology
substantially similar to the Project.
(v) Notwithstanding the foregoing, HRL is not restricted from
conducting work in fields identical to the Project with HRL's Owners
and their respective Affiliates, with U.S. Government customers, with
any assigns of the foregoing, or with other customers, if so instructed
by HRL's board of directors.
(e) NO SOLICITATION; UNFAIR TRADE PRACTICES. The Parties anticipate
that their respective Project Participants will work closely together to execute
the Project.
(i) In recognition that:
(A) Project Participants will be privy to trade
secret and other confidential information of the respective
Party that has engaged them;
(B) confidential and trade secret information might
be either exchanged between such Project Participants under
confidentiality agreements or withheld from such exchange;
(C) if Project Participants engaged by one Party were
solicited to work for the other Party, trade secrets and other
confidential information of the Party whose Project
Participant is solicited will inevitably be disclosed to the
soliciting Party; and
(D) HRL's or EDI's solicitation of such Project
Participants may amount to an unfair trade practice.
(ii) HRL and EDI agree not to solicit or hire a Project
Participant who is or was at any time after the date of this Agreement
an employee, consultant, independent contractor or contract labor
assignee of the other Party for the term of this Agreement and for
three (3) years after the termination date of this Agreement pursuant
to Section 9(i). Both HRL and EDI further agree to (i) obtain, as soon
as possible, from all Project Participants existing before and on the
date of this Agreement, a restrictive covenant intended to deter the
threat of trade secret misappropriation and other unfair trade
practices; and (ii) require each new Project Participant to sign,
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before starting work as a Project Participant, a restrictive covenant
intended to deter the threat of trade secret misappropriation and other
unfair trade practices. Such restrictive covenants shall be effective
for the period of this Agreement and for three (3) years thereafter and
shall require such Project Participant who is an employee, consultant,
independent contractor, or contract labor assignee of one Party not to
solicit work from the other Party. Each Party shall exchange these
restrictive covenant agreements with the other Party before assigning
an employee as a Project Participant.
(iii) HRL and EDI agree and admit that should any of them
solicit or hire a Project Participant who is or was at any time after
the date of this Agreement an employee, consultant, independent
contractor or contract labor assignee of the other Party, during the
period specified in Section 2(e)(ii) herein, it will have done so for
the purpose of obtaining confidential or trade secret information of
the other and such solicitation or hiring will be deemed to be an
admission of liability that the solicitation or hiring party has
engaged in an unfair trade practice.
(iv) Notwithstanding the foregoing, the Party whose Project
Participant is solicited or hired by the other Party during the period
specified in the foregoing Section 2(d)(ii) herein may waive its rights
under this Section 2(e) by prior written consent, which will not be
unreasonably withheld.
(f) CONFIDENTIALITY.
(i) The Parties acknowledge and agree that (i) all
Confidential Information disclosed under this Agreement shall be
governed by the terms of the Proprietary Information Agreement,
incorporated by reference and attached hereto as EXHIBIT 1 and (ii) the
purposes for which Confidential Information may be used as provided in
the Proprietary Information Agreement shall include the performance of
this Agreement.
(ii) HRL may disclose Confidential Information to HRL's
Owners, as well as those individuals who are employees, consultants or
agents of HRL whom HRL determines need the Confidential Information to
further HRL's rights and obligations under this or related Agreements.
(iii) The Parties agree to treat the material terms of this
Agreement and any related agreement as Confidential Information. The
Parties further agree that each shall not release any such information
to any third party or media without the express written consent of the
other Party.
(iv) Both Parties recognize that information relating to the
Project Intellectual Property may need to be withheld temporarily in
order to allow a Party to file for patent protection or for other
proprietary or competitive reasons. Nevertheless, both Parties agree
not to unreasonably oppose or delay their consent for such information
release, and to make commercially reasonable efforts to expedite the
release of information for professional publications, presentations or
other publicity purposes, if so desired by a Party.
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(g) PERFORMANCE PARAMETERS. The Project shall have performance
parameters as defined and mutually agreed upon by the Parties as detailed in
EXHIBIT 2 attached hereto.
3. STOCK ISSUANCE.
(a) As consideration for HRL's research and development, and subject to
the terms and conditions of this Agreement, EDI agrees to issue and HRL agrees
to purchase, at no additional cost to HRL:
(i) 300,000 shares of EDI Capital Stock upon the execution of
the Letter of Intent by the Parties;
(ii) 300,000 additional shares of EDI Capital Stock upon
demonstration of the iris tracking algorithm on a high end workstation
using test videos provided by EDI that meets the performance criteria
given in Exhibit 2; and
(iii) 200,000 additional shares of EDI Capital Stock upon
delivery of the algorithm source code developed by HRL as part of the
Project, and associated invention disclosure to EDI.
(b) The Parties agree that as of the Effective Date the conditions
detailed in Section 3(a)(i) or 3(a)(ii) above have been met and accordingly, EDI
hereby irrevocably and unconditionally grants such 600,000 shares of EDI Capital
Stock to HRL.
(c) DELIVERY. As of the Effective Date, EDI shall deliver to HRL a
certificate representing the EDI Capital Stock being issued hereunder, and all
other documentation necessary to effectuate the issuance of such EDI Capital
Stock on EDI's books and records.
(d) HRL INCENTIVES. HRL intends to transfer, distribute, assign, grant
or otherwise dispose of up to 25% of the EDI Capital Stock received pursuant to
this Agreement to HRL's Owners, employees, independent contractors and/or
consultants, whether directly or indirectly through a trust, fund or otherwise.
EDI consents to such transfer, distribution, assignment, grant or other
disposal. HRL understands and acknowledges that Rule 144 of the Securities Act
shall govern the EDI Stock.
(e) HRL DIRECTORS. HRL shall be permitted, at its sole option, to
appoint one non-voting director to EDI's board of directors, which HRL may
select and replace in HRL's sole discretion (the "HRL DIRECTOR"). The HRL
Director shall be entitled to attend, and participate in any discussions which
shall take place during, any and all regular and special meetings of EDI's board
of directors or any committee or subcommittee thereof. The HRL Director shall
not be entitled to vote on any matters presented for approval to the EDI board
of directors or to any committee or subcommittee thereof nor shall the HRL
Director be counted for purposes of establishing a quorum. Otherwise, the HRL
Director shall have all other rights afforded to EDI directors including the
right to receive notices of meetings, and access to the books and records of
EDI. In addition, the HRL Director shall receive copies of all material
delivered to or made available to any EDI Director.
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4. INTELLECTUAL PROPERTY.
(a) HRL INTELLECTUAL PROPERTY. The Parties agree that HRL, in its own
business, engages in research and in the creation of Intellectual Property
outside this Agreement, and that, absent an express agreement to the contrary,
HRL retains all right, title and interest in and to its Intellectual Property
throughout the universe. All such rights of HRL are irrevocable and shall vest
and remain perpetually vested in HRL whether this Agreement expires or is
terminated.
(b) EDI INTELLECTUAL PROPERTY. Except as set forth in this Section 4,
EDI shall own, throughout the universe, all right, title and interest in and to
all Project Intellectual Property.
(c) DISCLOSURE OF PROJECT INTELLECTUAL PROPERTY. Each Party shall cause
its Project Participants working on the Project under this Agreement or the
Proprietary Information Agreement to promptly disclose to such Party all Project
Intellectual Property conceived during the time of such participation. Each
Party shall disclose to the other Party in writing all Project Intellectual
Property within sixty (60) days of such Project Intellectual Property being
reduced to writing by such Party or its Project Participants.
(d) INTELLECTUAL PROPERTY PROTECTION. EDI agrees that it shall be
responsible for the protection and defense of all Project Intellectual Property.
EDI will consult with HRL regularly regarding the status of Project Intellectual
Property throughout the universe, and will seek and maintain patent and
copyright registrations and trade secret protection in all countries where the
nature of the operations of the Parties and their respective Affiliates requires
such registrations and protection. EDI shall be responsible for obtaining and
maintaining such registrations, patents and other Intellectual Property
protections at its sole expense and in its own name. If HRL pays any expenses
associated with obtaining or maintaining any Intellectual Property protections,
EDI shall promptly reimburse HRL in full for said expenses. HRL may from time to
time during the term of this Agreement request that EDI seek patent and
copyright registrations and trade secret protection for any Project Intellectual
Property in any country in which such registrations and protection are available
and EDI has not initiated any such registration or protection. If EDI is unable
to or fails to seek or maintain patent or copyright protection in any country,
or intends to disclose or discloses any confidential trade secrets embodied in
Project Intellectual Property, HRL shall have the right to seek and maintain
patent and/or copyright registrations and/or trade secret protection in such
country in HRL's own name; provided that HRL shall notify EDI within a
reasonable time prior to taking any such actions in such country or incurring
any expenses with respect thereto. If HRL seeks such protections with respect to
such Project Intellectual Property, in such country, then HRL shall own such
Project Intellectual Property solely in such country, subject to EDI's license
rights therein as set forth in Section 4(f) below.
(e) HRL LICENSE. HRL, HRL's Owners and HRL's Affiliates shall have a
fully paid-up, irrevocable, non-exclusive and perpetual license throughout the
universe to use, make, have made, import and practice all Project Intellectual
Property existing or developed pursuant to this Agreement and owned by EDI.
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(f) EDI LICENSE. When HRL owns any Project Intellectual Property in any
country pursuant to Section 4(d) herein, EDI shall have a fully paid up,
royalty-free, irrevocable, non-exclusive, perpetual, fully transferable and
sublicensable license to use, make, have made, import and practice in such
country such Project Intellectual Property.
(g) SECTION 365(n) BANKRUPTCY PROTECTION. The parties acknowledge and
agree that the Project Intellectual Property "intellectual property" as defined
in Section 101(35A) of the United States Bankruptcy Code, as the same may be
amended from time to time (the "Code"), which has been licensed hereunder is a
contemporaneous exchange for value. The parties further acknowledge and agree
that if EDI: (i) becomes insolvent or generally fails to pay, or admits in
writing its inability to pay, its debts as they become due; (ii) applies for or
consents to the appointment of a trustee, receiver or other custodian for it, or
makes a general assignment for the benefit of its creditors; (iii) commences, or
has commenced against it, any bankruptcy, reorganization, debt arrangement, or
other case or proceeding under any bankruptcy or insolvency law, or any
dissolution or liquidation proceedings; or (iv) elects to reject, or a trustee
on behalf of it elects to reject, this Agreement or any agreement supplementary
hereto, pursuant to Section 365 of the Code ("365"), or if this Agreement or any
agreement supplementary hereto is deemed to be rejected pursuant to 365 for any
reason, this Agreement, and any agreement supplementary hereto, shall be
governed by Section 365(n) of the Code ("365(n)") and HRL, HRL's Owners and
HRL's Affiliates will retain and may elect to fully exercise its rights under
this Agreement in accordance with 365(n). Upon written request from HRL, any HRL
Owner or any HRL Affiliate to EDI or the bankruptcy trustee of EDI's, such HRL
Owner's or such HRL Affiliate's election to proceed under 365(n), EDI or such
bankruptcy trustee shall comply in all respects with 365(n), including, without
limitation, providing HRL, such HRL Owner or such HRL Affiliate with the Project
Intellectual Property and not interfering with the rights of HRL, such HRL Owner
or such HRL Affiliate as provided in this Agreement to obtain access to the
Project Intellectual Property from EDI, the bankruptcy trustee or any third
party agent.
(h) INDEMNIFICATION. Notwithstanding the foregoing, HRL shall not be
liable, and EDI shall fully indemnify, defend and hold HRL harmless for: (a) any
and all defects or deficiencies in any Project Intellectual Property, any of
EDI's Intellectual Property or any results, inventions, data, processes,
technology or product, tangible or intangible, developed, created or owned by
HRL and/or provided to, or discussed with EDI; and for (b) any indirect,
incidental, consequential, special or punitive damages of any nature (including,
without limitation, loss of profits, use, data, or other economic advantage and
reasonable attorney's fees and expenses) in connection with or arising out of
this Agreement, including without limitation, the breach of this Agreement or
any termination of this Agreement, whether such liability is asserted on the
basis of contract, tort (including negligence or strict liability) or otherwise.
(i) INFRINGEMENT. If any Party learns of facts that may constitute an
infringement of any of the Project Intellectual Property, it shall promptly
notify the other Party of such possible infringement. EDI shall have a duty to
conduct an investigation with respect to any such alleged infringement. EDI
shall, at its own expense, initiate appropriate action to cause any infringement
to cease, including, if necessary, initiating a lawsuit to enjoin such
infringement. HRL shall cooperate and provide assistance in the lawsuit, at
EDI's expense, as may reasonably be required. If EDI does not initiate timely
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and appropriate action to cause the infringement to cease, HRL may take such
action, EDI shall permit itself to be named as a party (if necessary) and shall
cooperate and provide assistance in the lawsuit as may reasonably be required
and EDI shall fully reimburse HRL for any and all expenses HRL incurs in
connection therewith. The Parties shall make a good faith effort to coordinate
any litigation efforts, including coordination of litigation efforts and
litigation strategies, keeping the other Party informed of material events in
the course of any arbitration or litigation and, to the extent reasonably
practicable, seeking and attempting to incorporate the reasonable advice or
desires of the other Party when making decisions regarding such material events
in any arbitration or litigation.
(j) PRODUCT COST TO HRL. To the extent that EDI produces, manufactures
or otherwise supplies any Project Product or any Project Service, EDI agrees to
produce, manufacture or otherwise supply such Project Products and Project
Services to HRL, HRL's Owners, and Affiliates, solely for internal use and not
for distribution for use by any persons other than HRL, HRL's Owners, Affiliates
or an actual employee of HRL or Affiliates, for a purchase price equal to EDI's
direct cost of producing such Project Products or Project Service. EDI shall not
be required to produce, manufacture or otherwise supply such Project Products
and Project Services to HRL insofar as HRL intends to resell the Project
Products and Project Services to a third party. To the extent EDI enters into an
arrangement with a third party for the production, manufacture, supply or other
distribution of any Project Product and Project Service, EDI agrees to obtain an
agreement with such third party whereby HRL and its Affiliates can purchase such
Project Product and Project Service, solely for internal use and not for
distribution for use by any persons other than HRL, HRL's Owners, Affiliates or
an actual employee of HRL or its Affiliates, at the same purchase price as EDI
can purchase such Project Products or Project Services.
5. REPRESENTATIONS AND WARRANTIES OF EDI. As a material inducement to
HRL to enter into this Agreement and to accept EDI Capital Stock as
consideration for performance hereunder, EDI hereby represents and warrants,
except as set forth on a Disclosure Schedule attached hereto, which exception
shall be deemed to be representations and warranties as if made hereunder, each
of the representations and warranties set forth on Exhibit 5 attached hereto.
6. HRL REPRESENTATIONS AND WARRANTIES. HRL hereby represents and
warrants each of the representations and warranties set forth on Exhibit 6
attached hereto.
7. RESTRICTED SECURITIES.
(a) Each certificate or instrument representing Restricted Securities
shall be imprinted with a legend in substantially the following Form:
"The shares represented by this certificate have not been
registered under the Securities Act of 1933, as amended, or
applicable state laws. These securities have been acquired for
investment and not with a view to distribution or resale, and
may not be sold, mortgaged, pledged, hypothecated or otherwise
transferred without an effective registration statement for
such securities under the Securities Act of 1933, and any
applicable state securities laws, unless the corporation has
received an opinion of counsel, which opinion is satisfactory
to the corporation, to the effect that such registrations are
not required."
11
(b) OPINION DELIVERY. In connection with the transfer of any Restricted
Securities, the holder thereof shall deliver written notice to EDI describing in
reasonable detail the transfer or proposed transfer, together with an opinion of
legal counsel which is knowledgeable in securities law matters to the effect
that such transfer of Restricted Securities may be effected without registration
of such Restricted Securities under the Securities Act. In addition, if the
holder of the Restricted Securities delivers to EDI an opinion of legal counsel
that no subsequent transfer of such Restricted Securities shall require
registration under the Securities Act, and EDI's legal counsel has reviewed such
opinion and reasonably concurs with the assessments made therein, EDI shall
promptly upon such contemplated transfer deliver new certificates for such
Restricted Securities which do not bear the Securities Act legend set forth in
Section 7(a). If EDI is not required to deliver new certificates for such
Restricted Securities not bearing such legend, HRL shall not transfer the same
until the prospective transferee has confirmed to EDI in writing its agreement
to be bound by the conditions contained in this Section 7.
(c) RULE 144A. Upon the request of HRL, EDI shall promptly supply to
HRL or its prospective transferees all information regarding EDI required to be
delivered in connection with a transfer pursuant to Rule 144A of the Securities
and Exchange Commission.
(d) LEGEND REMOVAL. If any Restricted Securities become eligible for
sale pursuant to Rule 144(k), EDI shall, upon the request of the holder of such
Restricted Securities, remove the legend set forth in Section 7(a) from the
certificates for such Restricted Securities.
(e) REMEDIES. HRL shall have all rights and remedies set forth in this
Agreement, the Certificate of Incorporation and all rights and remedies which
such holders have been granted at any time under any other agreement or contract
and all of the rights which such holders have under any law. Any person having
any rights under any provision of this Agreement shall be entitled to enforce
such rights specifically (through posting a bond or other security), to recover
damages by reason of any breach of any provision of this Agreement and to
exercise all other rights granted by law.
(f) ADJUSTMENT. In the event of a reorganization, recapitalization,
stock dividend or stock split, or combination or other change in the shares of
EDI Capital Stock, EDI shall, in order to prevent the dilution of rights under
HRL's holdings of EDI Capital Stock, make such adjustments in the number and
type of shares authorized and the number of shares held by HRL or to be granted
to HRL pursuant to this Agreement so that HRL's holdings of EDI Capital Stock
shall not be diluted or adversely affected.
8. CONDITIONS.
(a) CONDITIONS OF HRL OBLIGATIONS. The obligations of HRL to EDI under
this Agreement are subject to the fulfillment, on or before the Effective Date,
of each of the following conditions, unless otherwise waived:
12
(i) REPRESENTATIONS AND WARRANTIES. The representations and
warranties of EDI contained in Section 5 shall be true and correct in
all material respects on and as of the Effective Date with the same
effect as though such representations and warranties had been made on
and as of the Effective Date.
(ii) PERFORMANCE. EDI shall have performed and complied with
all covenants, agreements, obligations and conditions contained in this
Agreement that are required to be performed or complied with by it on
or before the Effective Date.
(iii) COMPLIANCE CERTIFICATE. The Chief Executive Officer of
EDI shall deliver as of the Effective Date to HRL a certificate
certifying that the conditions specified in Section (i) and (ii) have
been fulfilled.
(iv) QUALIFICATIONS. All authorizations, approvals or permits,
if any, of any governmental authority or regulatory body of the United
States or of any state that are required in connection with the lawful
issuance and sale of the EDI Capital Stock pursuant to this Agreement
shall be obtained and effective as of the Effective Date.
(v) OPINION OF EDI COUNSEL. HRL shall have received from
Anker, Reed, Xxxxx & Xxxxxxxxx, counsel for EDI, an opinion, dated as
of the Effective Date, in substantially the form of EXHIBIT 3.
(vi) BOARD OF DIRECTORS. As of the Effective Date, EDI's board
of directors shall include the HRL Director.
(vii) CONFIDENTIAL INFORMATION AND INVENTION ASSIGNMENT
AGREEMENT. The Project Participants shall each have entered into a form
of Confidential Information and Invention Assignment Agreement, to
defer trade secret misappropriation as agreed in Section 3.3(b)
hereunder, which has been approved by HRL.
(b) CONDITIONS OF EDI OBLIGATIONS. The obligations of EDI to HRL under
this Agreement are subject to the fulfillment, on or before the Effective Date,
of each of the following conditions, unless otherwise waived:
(i) REPRESENTATIONS AND WARRANTIES. The representations and
warranties of HRL contained in Section 6 shall be true and correct in
all material respects on and as of the Effective Date with the same
effect as though such representations and warranties had been made on
and as of the Effective Date.
(ii) PERFORMANCE. HRL shall have performed and complied with
all covenants, agreements, obligations and conditions contained in this
Agreement that are required to be performed or complied with by it on
or before the Effective Date.
(iii) COMPLIANCE CERTIFICATE. The Chief Executive Officer of
HRL shall deliver as of the Effective Date to EDI a certificate
certifying that the conditions specified in Section (i) and (ii) have
been fulfilled.
(iv) QUALIFICATIONS. All authorizations, approvals or permits,
if any, of any governmental authority or regulatory body of the United
States or of any state that are required in connection with the lawful
issuance and sale of the EDI Capital Stock pursuant to this Agreement
shall be obtained and effective as of the Effective Date.
13
(v) CONFIDENTIAL INFORMATION AND INVENTION ASSIGNMENT
AGREEMENT. The Project Participants shall each have entered into a form
of Confidential Information and Invention Assignment Agreement, to
defer trade secret misappropriation as agreed in Section 2(e) herein,
which has been approved by EDI.
9. MISCELLANEOUS.
(a) NOTICES. The Parties agree to designate a single point of contact
for both administrative and technical coordination to facilitate the
collaboration, with each Party free to substitute its respective point of
contact at its discretion, provided notice of such change is given to the other
Party. The persons initially so designated are:
ADMINISTRATIVE TECHNICAL
-------------- ---------
HRL: HRL Laboratories, LLC HRL Laboratories, LLC
Attn: X.X. Xxxxx III Attn: Xx. Xxxx X. Xxxxxxx, XX00
XX00 0000 Xxxxxx Canyon Road
0000 Xxxxxx Xxxxxx Xxxx Xxxxxx, XX 00000
Xxxxxx, XX 00000
Tel. (000) 000-0000
Tel. (000) 000-0000 Fax. (000) 000-0000
Fax. (000) 000-0000
WITH A HRL Laboratories, LLC HRL Laboratories, LLC
COPY TO: Attn: X.X. Xxxxxxxxx Attn: X.X. Xxxxxxxxx
XX00 XX00
0000 Xxxxxx Canyon Road 0000 Xxxxxx Xxxxxx Xxxx
Xxxxxx, XX 00000 Xxxxxx, XX 00000
Tel. (000) 000-0000 Tel. (000) 000-0000
Fax. (000) 000-0000 Fax. (000) 000-0000
EDI: Eye Dynamics Inc. Eye Dynamics Inc.
Attn: Xxxxxx Xxxxxxx Attn: Xxxxxx Xxxxxxx
0000 Xxxx 000xx Xxxxxx 0000 Xxxx 000xx Xxxxxx
Xxxxx 000 Xxxxx 000
Xxxxxxxx, XX 00000 Xxxxxxxx, XX 00000
Tel. Tel.
Fax. Fax.
14
WITH A Anker, Reed, Xxxxx & Xxxxxxxxx Anker, Reed, Xxxxx & Xxxxxxxxx
COPY TO: Attn: Xxxxxx X. Xxxxx Attn: Xxxxxx X. Xxxxx
00000 Xxxxxx Xxxxxx 00000 Xxxxxx Xxxxxx
Xxxxxxxx Xxxxx, XX 00000 Xxxxxxxx Xxxxx, XX 00000
Tel. (000) 000-0000 Tel. (000) 000-0000
Fax. (000) 000-0000 Fax. (000) 000-0000
(b) SEVERABILITY. Whenever possible, each provision of this Agreement
shall be interpreted in such manner as to be valid and effective under
applicable law, but if any provision of this Agreement or the application of any
such provision to any person or circumstance shall be held invalid, illegal or
unenforceable in any respect by a court of competent jurisdiction, such
invalidity, illegality or unenforceability shall not affect any other provision
hereof.
(c) SURVIVAL OF REPRESENTATIONS AND WARRANTIES. All representations and
warranties contained herein or made in writing by EDI or HRL in connection with
this Agreement shall survive the execution and delivery of this Agreement and
the consummation of the transactions contemplated hereby regardless of any
diligence conducted by HRL or on its behalf.
(d) INDEMNITIES. EDI agrees to indemnify and hold harmless HRL from and
against all losses, damages, liabilities and expenses (including without
limitation reasonable attorneys fees and expenses) resulting from any breach of
any representation, warranty or agreement of EDI or any misrepresentation by EDI
in this Agreement.
(e) GOVERNING LAW; JURISDICTION. This Agreement shall be governed by
and construed in accordance with the internal laws of the State of California
applicable to agreements made and to be performed entirely within the State of
California, without regard to the conflict of laws principles of such state. The
venue for any judicial, administrative or arbitration proceeding related to this
agreement shall be in Los Angeles County.
(f) EXHIBITS. All Exhibits annexed hereto or referred herein are hereby
incorporated in and made a part of this Agreement as if set forth in full
herein.
(g) ENTIRE AGREEMENT PRECEDENT. This Agreement, the Exhibits attached
hereto, and the Registration Rights Agreement contain the entire agreement and
understanding between the parties hereto with respect to the subject matter
hereof and supersede all prior agreements and understandings (excluding the
Proprietary Information Agreement attached hereto as Exhibit 1), whether written
or oral, relating to such subject matter. In the event that a conflict appears
between this Agreement, the Registration Rights Agreement or the Proprietary
Information Agreement, this Agreement shall take precedence.
(h) HEIRS, SUCCESSORS AND ASSIGNS; ASSIGNMENT. Each and all of the
covenants, terms, provisions and agreements herein contained shall be binding
upon and inure for the benefit of the Parties hereto and to the extent permitted
by this Agreement, their respective heirs, legal representatives, successors and
assigns. This Agreement and any rights and obligations hereunder shall not be
assignable or transferable by either Party without the prior written consent of
the other Party and any purported assignment without such consent shall be void
and without effect.
15
(i) TERMINATION; EFFECT OF TERMINATION.
(i) This Agreement may be terminated as follows:
(A) by any Party at any time, upon sixty
(60) days' written notice to the other Party of any
material breach of this Agreement by the other Party
which remains uncured after the sixty (60) day period
of notice; or
(B) by any Party immediately upon written
notice to the other Party if the other Party
voluntarily commences bankruptcy, insolvency, or
reorganization proceedings, is adjudicated a
bankrupt, is declared insolvent, or enters into a
composition agreement with its creditors, or if a
receiver is appointed for it or a substantial portion
of its properties.
(ii) The term and termination of any other related
agreement (including the Proprietary Information Agreement)
shall not be affected by the termination of this Agreement.
(iii) EFFECT OF TERMINATION.
(A) Termination of this Agreement shall not
relieve or release either Party from its obligation
to make any payments owing hereunder as of the
effective date of termination, or from any other
liability that either Party may have to the other
arising out of this Agreement or any breach of this
Agreement.
(B) Any provisions of this Agreement, which
are intended by their specific terms or by necessary
implication to survive the expiration or termination
of this Agreement shall so survive. Without limiting
any of the foregoing and notwithstanding anything
contained herein to the contrary, Sections 2(e),
2(f), 3(a), 3(b), 4, 5 (and Exhibit 5), 6 (and
Exhibit 6), 7 and 9 shall survive the termination of
this Agreement.
(j) EXPORT. Information disclosed or developed hereunder may be subject
to the laws and regulations of the United States pertaining to export control
and therefore both Parties agree to comply with all the requirements of these
laws and regulations of the United States, including International Traffic in
Arms Regulations ("ITAR") and the Export Administration Regulations ("EAR").
(k) WAIVERS AND AMENDMENTS. This Agreement may be amended, modified,
superseded, cancelled, renewed, or extended, and the terms and conditions hereof
may be waived, only by written instrument signed by an authorized officer of HRL
and an authorized officer of EDI; no delay on the part of any party exercising
any right, power or privilege hereunder shall operate as a waiver thereof, nor
shall any waiver on the part of any Party of any right, power, or privilege
hereunder, nor any single or partial exercise of any right, power or privilege
hereunder, preclude any other or further exercise thereof or the exercise of any
other right, power or privilege hereunder.
16
(l) CONSTRUCTION. Whenever the singular number is used in this
Agreement and when required by the contract, the same shall include the plural,
and the masculine gender shall include the feminine and neutral genders and vice
versa. This Agreement is prepared and executed in the English language only and
any translation of this Agreement into any other language shall have no effect.
(m) HEADINGS. The headings in this Agreement are inserted for
convenience only and are in no way intended to describe, interpret, define, or
limit the scope, extent or intent of this Agreement or any provision hereof.
(n) NO THIRD PARTY BENEFICIARIES. It is understood and agreed among the
parties that this Agreement and the covenants made herein are made expressly and
solely for the benefit of the Parties hereto, and that no other person except
for HRL's owners shall be entitled or be deemed to be entitled to any benefits
or rights hereunder, nor be authorized or entitled to enforce any rights, claims
or remedies hereunder or by reason hereof.
(o) COUNTERPARTS. This Agreement may be executed in one or more
counterparts (including by means of photocopied or facsimile signature pages),
all of which shall be considered one and the same agreement, and shall become
effective when one or more such counterparts have been signed by each of the
parties and delivered to the other party.
* * * * *
[remainder of page intentionally left blank]
17
IN WITNESS WHEREOF, HRL and EDI have caused this Technology Development
Agreement to be duly executed as of the date set forth in the Preamble hereto by
their authorized representatives as indicated below.
HRL LABORATORIES, LLC EYE DYNAMICS INC.
By: /S/ XXXXXX X. XXXXXXX By: /S/ XXXXXX XXXXXXX
------------------------------ --------------------------------
Xxxxxx X. Xxxxxxx Xxxxxx Xxxxxxx
President Chairman
S-1
EXHIBIT 1
PROPRIETARY INFORMATION AGREEMENT
[ATTACH]
1-1
EXHIBIT 2
PROJECT PERFORMANCE PARAMETERS
As part of the Project, HRL shall develop an iris tracking algorithm
winch shall perform as follows:
1. Under optimal conditions when there is no makeup present and the
eyelid droop is less than 10%, the algorithm will compute the pupil centroid
position at 99% accuracy, where the X (horizontal) position is accurate with =/-
1 pixel, and the Y (vertical) position is accurate within +/- 1 line. The
accuracy of the diameter calculation is 95%-99% of the actual size.
2. Under conditions when significant eye makeup is present the
algorithm will achieve 80%-99% accuracy in computing the pupil centroid. The
accuracy of the diameter calculation is 95%-99% of the actual size.
3. Under conditions where eyelid droop occurs, the following minimum
accuracies are required:
(a) 10% obscured = 99% (centroid position), 95%-99% (diameter)
(b) 25% obscured = 99% (centroid position), 90%-95% (diameter)
(c) 50% obscured = 99%-85% (centroid position), 90%-80% (diameter)
(d) 50% obscured = 85%-60% (centroid position), 50%-80% (diameter)
2-1
EXHIBIT 3
FORM OF OPINION OF EDI COUNSEL
[ATTACHED]
3-1
EXHIBIT 4
REGISTRATION RIGHTS AGREEMENT
[ATTACHED]
4-1
EXHIBIT 5
REPRESENTATIONS AND WARRANTIES OF EDI
(a) ORGANIZATION, CORPORATE POWER AND LICENSES. EDI is a corporation
duly organized, validly existing and in good standing under the laws of Nevada
and is qualified to do business in every jurisdiction in which its ownership of
property or conduct of business requires it to qualify. EDI possesses all
requisite corporate power and authority and all material licenses, permits and
authorizations necessary to own and operate its properties, to carry on its
businesses as now conducted and presently proposed to be conducted and to carry
out the transactions contemplated by this Agreement. The copies of EDI's and its
Subsidiary's charter documents and bylaws which have been filed with the
Securities and Exchange Commission as of the date of this Agreement reflect all
amendments made thereto at any time prior to the date of this Agreement and are
correct and complete.
(b) CAPITAL STOCK AND RELATED MATTERS.
(i) As of the Effective Date and immediately thereafter, the
authorized capital stock of EDI consists solely of 50,000,000 shares of common
stock, par value $0.01 (the "EDI CAPITAL STOCK"), of which 15,150,313 shares,
which includes 800,000 shares to be issued pursuant to this Agreement, shall be
issued and outstanding. As of the Effective Date, neither EDI nor its Subsidiary
has outstanding any stock or securities convertible or exchangeable for any
shares of its capital stock or containing any profit participation features, nor
shall it have outstanding any rights or options to subscribe for or to purchase
its capital stock or any stock or securities convertible into or exchangeable
for its capital stock or any stock appreciation rights or phantom stock plans.
As of the Effective Date, neither EDI nor its Subsidiary is subject to any
obligation (contingent or otherwise) to repurchase or otherwise acquire or
retire any shares of its capital stock or any warrants, options or other rights
to acquire its capital stock. As of the Effective Date, all of the outstanding
shares of EDI Capital Stock are validly issued, fully paid and nonassessable.
(ii) There are no statutory or, to the best of EDI's
knowledge, contractual stockholders preemptive rights or rights of refusal with
respect to the issuance of EDI's Capital Stock hereunder. EDI has not violated
any applicable federal or state securities laws in connection with the offer,
sale or issuance of any of its capital stock, and the offer, sale and issuance
of the EDI's Capital Stock hereunder do not require registration under the
Securities Act or any applicable state securities laws. To the best of EDI's
knowledge, there are no agreements between EDI's stockholders with respect to
the voting or transfer of EDI's capital stock or with respect to any other
aspect of EDI's affairs.
(c) SUBSIDIARIES; INVESTMENTS. EDI does not own or hold any rights to
acquire any shares of stock or any other security or interest in any other
Person, and EDI has never had any Subsidiary, except for Oculokinetics, Inc.
which does not have and has not had operations, assets or liabilities except for
a tax loss carry forward.
5-1
(d) AUTHORIZATION; NO BREACH. The execution, delivery and performance
of this Agreement, the Proprietary Information Agreement, the Registration
Rights Agreement and all other agreements contemplated hereby to which EDI is a
party have been duly authorized by EDI. Each of this Agreement, the Registration
Rights Agreement, the Proprietary Information Agreement and all other agreements
contemplated hereby to which EDI is a party constitutes a valid and binding
obligation of EDI, enforceable in accordance with its terms. The execution and
delivery by EDI of this Agreement, the Registration Rights Agreement, the
Proprietary Information Agreement and all other agreements contemplated hereby
to which EDI is a party, the offering, sale and issuance of EDI's Capital Stock
hereunder, and the fulfillment of and compliance with the respective terms
hereof and thereof by EDI, do not and shall not (i) conflict with or result in a
breach of the terms, conditions or provisions of, (ii) constitute a default
under, (iii) result in the creation of any lien, security interest, charge or
encumbrance upon EDI's or any Subsidiary's capital stock or assets pursuant to,
(iv) give any third party the right to modify, terminate or accelerate any
obligation under, (v) result in a violation of, or (vi) require any
authorization, consent, approval, exemption or other action by or notice or
declaration to, or filing with, any court or administrative or governmental body
or agency pursuant to the charter or bylaws of EDI or its Subsidiary, or any
law, statute, rule or regulation to which EDI or its Subsidiary is subject, or
any agreement, instrument, order, judgment or decree to which EDI or its
Subsidiary is subject.
(e) FINANCIAL STATEMENTS. The following financial statements have been
filed with the Securities and Exchange Commission and are available on the
government information database "XXXXX."
(i) the 10-KSB, which includes audited consolidated
balance sheets of EDI and its Subsidiaries as of December 31, 1998, December 31,
1999, December 31, 2000, and December 31, 2001, and the related statements of
income and cash flows (or the equivalent) for the respective twelve-month
periods then ended; and
(ii) the 10-ASB, which includes the unaudited
consolidated balance sheet of EDI and its Subsidiary as of March 31, 2002 (the
"LATEST BALANCE SHEET"), and the related statements of income and cash flows (or
the equivalent) for the three-month period then ended.
Each of the foregoing financial statements (including in all cases the notes
thereto, if any) is accurate and complete in all material respects, is
consistent with the books and records of EDI (which, in turn, are accurate and
complete in all material respects) and has been prepared in accordance with
generally accepted accounting principles, consistently applied.
(f) ABSENCE OF UNDISCLOSED LIABILITIES. EDI and its Subsidiary do not
have any material obligation or liability (whether accrued, absolute,
contingent, unliquidated or otherwise, whether or not known to EDI or its
Subsidiary, whether due or to become due and regardless of when asserted)
arising out of transactions entered into at or prior to the Effective Date, or
any action or inaction at or prior to the Effective Date, or any state of facts
existing at or prior to the Effective Date other than: (i) liabilities set forth
on the Latest Balance Sheet (including any notes thereto), (ii) liabilities and
obligations which have arisen after the date of the Latest Balance Sheet in the
ordinary course of business (none of which is a liability resulting from breach
of contract, breach of warranty, tort, infringement, claim or lawsuit) and (iii)
other liabilities and obligations expressly disclosed in this Agreement.
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(g) NO MATERIAL ADVERSE CHANGE. Since the date of the Latest Balance
Sheet, there has been no material adverse change in the financial condition,
operating results, assets, operations, business prospects, employee relations or
customer or supplier relations of EDI and its Subsidiary taken as a whole.
(h) Neither EDI nor its Subsidiary has at any time made any payments
for political contributions or made any bribes, kickback payments or other
illegal payments.
(i) ASSETS. EDI and its Subsidiary have good and marketable title to,
or a valid leasehold interest in, the material properties and assets used by
them, located on their premises or shown on the Latest Balance Sheet or acquired
thereafter, free and clear of all Liens, except for properties and assets
disposed of in the ordinary course of business since the date of the Latest
Balance Sheet and except for Liens disclosed on the Latest Balance Sheet
(including any notes thereto) and Liens for current property taxes not yet due
and payable. EDI's and its Subsidiary's buildings, equipment and other tangible
assets are in good operating condition in all material respects and are fit for
use in the ordinary course of business. EDI and its Subsidiary own, or have a
valid leasehold interest in, all assets necessary for the conduct of their
respective businesses as presently conducted and as presently proposed to be
conducted.
(j) TAX MATTERS.
(i) EDI and its Subsidiary have filed all Tax Returns which
they are required to file under applicable laws and regulations; all such Tax
Returns are complete and correct in all material respects and have been prepared
in compliance with all applicable laws and regulations in all material respects;
EDI and its Subsidiary in all material respects have paid all Taxes due and
owing by them (whether or not such Taxes are required to be shown on a Tax
Return) and have withheld and paid over to the appropriate taxing authority all
Taxes which they are required to withhold from amounts paid or owing to any
employee, stockholder, creditor or other third party; neither EDI nor its
Subsidiary has waived any statute of limitations with respect to any Taxes or
agreed to any extension of time with respect to any Tax assessment or
deficiency; the accrual for Taxes on the Latest Balance Sheet would be adequate
to pay all Tax liabilities of EDI and its Subsidiary if their current tax year
were treated as ending on the date of the Latest Balance Sheet (excluding any
amount recorded which is attributable solely to timing differences between book
and Tax income); since the date of the Latest Balance Sheet, EDI and its
Subsidiary have not incurred any liability for Taxes other than in the ordinary
course of business; the assessment of any additional Taxes for periods for which
Tax Returns have been filed by EDI and its Subsidiary shall not exceed the
recorded liability therefor on the Latest Balance Sheet (excluding any amount
recorded which is attributable solely to timing differences between book and Tax
income); the federal income Tax Returns of EDI and its Subsidiary have been
audited and closed for all tax years through 2001; no foreign, federal, state or
local tax audits or administrative or judicial proceedings are pending or being
conducted with respect to EDI and its Subsidiary, no information related to Tax
matters has been requested by any foreign, federal, state or local taxing
authority and no written notice indicating an intent to open an audit or other
review has been received by EDI from any foreign, federal, state or local taxing
authority; and there are no material unresolved questions or claims concerning
EDI's or its Subsidiary's Tax liability.
5-3
(ii) Neither EDI nor its Subsidiary has made an election under
ss.341(f) of the InternaL Revenue Code of 1986, as amended. Neither EDI nor its
Subsidiary is a party to any tax sharing agreement. EDI and its Subsidiary have
disclosed on their federal income Tax Returns any position taken for which
substantial authority (within the meaning of IRC ss.6662(d)(2)(B)(i)) did not
exist at the time the return was filed. EDI haS not made any payments, is not
obligated to make payments or is a party to an agreement that could obligate it
to make any payments that would not be deductible under IRC ss.280G.
(k) CONTRACTS AND COMMITMENTS.
(i) All of the contracts, agreements and instruments to which
EDI is subject are valid, binding and enforceable in accordance with their
respective terms. EDI and its Subsidiary have performed all obligations required
to be performed by them and are not in default under or in breach of nor in
receipt of any claim of default or breach under any contract, agreement or
instrument to which EDI or its Subsidiary is subject; no event has occurred
which with the passage of time or the giving of notice or both would result in a
default, breach or event of noncompliance by EDI or its Subsidiary under any
contract, agreement or instrument to which EDI or its Subsidiary is subject;
neither EDI nor its Subsidiary has any present expectation or intention of not
fully performing all such obligations; neither EDI nor its Subsidiary has
knowledge of any breach or anticipated breach by the other parties to any
contract, agreement, instrument or commitment to which it is a party; and
neither EDI nor its Subsidiary is a party, except for the Settlement Agreement
with TESA Corporation, which has been previously disclosed to HRL and is also
disclosed in the notes to all financial statements filed with the Securities and
Exchange Commission.
(ii) EDI has filed with the Securities and Exchange Commission
a true and correct copy of each of the material written instruments, plans,
contracts and agreements to which EDI or its Subsidiary are subject, together
with all amendments, waivers or other changes thereto in compliance with the
requirements of the Securities Act.
(l) INTELLECTUAL PROPERTY RIGHTS.
(i) "SCHEDULE 6" attached hereto contains a complete and
accurate list of all (i) patented or registered Intellectual Property rights
owned or used by EDI or its Subsidiary, (ii) pending patent applications and
applications for registrations of other Intellectual Property Rights filed by
EDI or its Subsidiary, (iii) unregistered trade names and corporate names owned
or used by EDI or its Subsidiary and (iv) unregistered trademarks, service
marks, copyrights, mask works and computer software owned or used by EDI or its
Subsidiary. EDI has filed with the Securities and Exchange Commission all
material agreements governing licenses and other rights granted by EDI or its
Subsidiary to any third party with respect to any Intellectual Property Rights
and all licenses and other rights granted by any third party to EDI or its
Subsidiary with respect to any Intellectual Property Rights. EDI or its
Subsidiary owns all right, title and interest to, or has the right to use
pursuant to a valid license, all Intellectual Property Rights necessary for the
5-4
operation of the businesses of EDI and its Subsidiary as presently conducted and
as presently proposed to be conducted, free and clear of all Liens. The loss or
expiration of any Intellectual Property Right or related group of Intellectual
Property Rights owned or used by EDI or its Subsidiary has not had and would not
reasonably be expected to have a material adverse effect on the conduct of EDI's
and its Subsidiary' respective businesses, and no such loss or expiration is
threatened, pending or reasonably foreseeable. EDI and its Subsidiary have taken
all necessary and desirable actions to maintain and protect the Intellectual
Property Rights which they own. To the best of EDI's knowledge, the owners of
any Intellectual Property Rights licensed to EDI or its Subsidiary have taken
all necessary and desirable actions to maintain and protect the Intellectual
Property Rights which are subject to such licenses.
(ii) Except as set forth on the Intellectual Property
Schedule, (i) EDI and its Subsidiary own all right, title and interest in and to
all of the Intellectual Property Rights listed on such schedule , free and clear
of all Liens, (ii) there have been no claims made against EDI or its Subsidiary
asserting the invalidity, misuse or unenforceability of any of such Intellectual
Property Rights, and there are no grounds for the same, (ii) neither EDI nor its
Subsidiary has received any notices of, and is not aware of any facts which
indicate a likelihood of, any infringement or misappropriation by, or conflict
with, any third party with respect to such Intellectual Property Rights
(including, without limitation, any demand or request that EDI or its Subsidiary
license any rights from a third party), (iv) the conduct of EDI's and its
Subsidiary's business has not infringed, misappropriated or conflicted with and
does not infringe, misappropriate or conflict with any Intellectual Property
Rights of other Persons, nor would any future conduct as presently contemplated
infringe, misappropriate or conflict with any Intellectual Property Rights of
other Persons and (v) to the best of EDI's knowledge, the Intellectual Property
Rights owned by or licensed to EDI or its Subsidiary have not been infringed,
misappropriated or conflicted by other Persons. The transactions contemplated by
this Agreement shall have no material adverse effect on EDI's or its
Subsidiary's right, title and interest in and to the Intellectual Property
Rights listed on the Intellectual Property Schedule.
(m) LITIGATION, ETC. There are no actions, suits, proceedings, orders,
investigations or claims pending or, to the best of EDI's knowledge, threatened
against or affecting EDI or its Subsidiary (or to the best of EDI's knowledge,
pending or threatened against or affecting any of the officers, directors or
employees of EDI and its Subsidiary with respect to their businesses or proposed
business activities), or pending or threatened by EDI or its Subsidiary against
any third party, at law or in equity, or before or by any governmental
department, commission, board, bureau, agency or instrumentality (including,
without limitation, any actions, suit, proceedings or investigations with
respect to the transactions contemplated by this Agreement); nor have there been
any such actions, suits, proceedings, orders, investigations or claims pending
against or affecting EDI or its Subsidiary during the past 5 years; neither EDI
nor its Subsidiary is subject to any arbitration proceedings under collective
bargaining agreements or otherwise or, to the best of EDI's knowledge, any
governmental investigations or inquiries (including, without limitation,
inquiries as to the qualification to hold or receive any license or permit);
and, to the best of EDI's knowledge, there is no basis for any of the foregoing.
Neither EDI nor its Subsidiary is subject to any judgment, order or decree of
any court or other governmental agency, and neither EDI nor its Subsidiary has
received any opinion or memorandum or legal advice from legal counsel to the
effect that it is exposed, from a legal standpoint, to any liability or
disadvantage which may be material to its business.
(n) BROKERAGE. There are no claims for brokerage commissions, finders'
fees or similar compensation in connection with the transactions contemplated by
this Agreement based on any arrangement or agreement binding upon EDI or its
Subsidiary. EDI shall pay, and hold HRL harmless against, any liability, loss or
expense (including, without limitation, reasonable attorneys' fees and
out-of-pocket expenses) arising in connection with any such claim.
5-5
(o) GOVERNMENTAL CONSENT, ETC. No permit, consent, approval or
authorization of, or declaration to or filing with, any governmental authority
is required in connection with the execution, delivery and performance by EDI of
this Agreement or the other agreements contemplated hereby, or the consummation
by EDI of any other transactions contemplated hereby or thereby, except as
expressly contemplated herein or in the exhibits hereto.
(p) INSURANCE. EDI maintains insurance policies with respect to its
properties, assets and businesses, and each such policy is in full force and
effect as of the Effective Date. EDI is not in default with respect to its
obligations under any insurance policy maintained by it, and EDI has not been
denied insurance coverage. The insurance coverage of EDI is customary for
corporations of similar size engaged in similar lines of business. EDI does not
have any self-insurance or co-insurance programs. In that EDI's only subsidiary
is not operating, it does not maintain separate liability insurance, but is
named on EDI's liability insurance policies.
(q) EMPLOYEES. EDI is not aware that any executive or key employee of
EDI or its Subsidiary or any group of employees of EDI or its Subsidiary has any
plans to terminate employment with EDI or its Subsidiary. EDI and its Subsidiary
have complied in all material respects with all laws relating to the employment
of labor (including, without limitation, provisions thereof relating to wages,
hours, equal opportunity, collective bargaining and the payment of social
security and other taxes). Neither EDI, its Subsidiary nor, to the best of EDI's
knowledge after due inquiry, any of their employees is subject to any
noncompete, nondisclosure, confidentiality, employment, consulting or similar
agreements relating to, affecting or in conflict with the present or proposed
business activities of EDI and its Subsidiary, except for agreements between EDI
and its present and former employees.
(r) ERISA. Neither EDI nor its Subsidiary has or has ever had an
employee benefit plan, as that term is used in Section 3(3) of the Employee
Retirement Income Security Act of 1974, as amended ("ERISA").
(s) ENVIRONMENTAL AND SAFETY MATTERS. EDI has complied and is in
compliance with, and any real property and all improvements thereof owned or
leased by EDI is in compliance with, all Environmental Laws. No notice,
citations, summons or order has been received by EDI, no notice has been given
by EDI and no complaint has been filed, no penalty has been assessed and no
investigation or review is pending or to the knowledge of EDI threatened by any
governmental entity, with respect to (i) any alleged violation by EDI of any
Environmental Law; or (ii) any alleged failure by EDI to have any environmental
permit, certificate, license, approval, registration or authorization required
in connection with its business or properties.
(t) AFFILIATED TRANSACTIONS. No officer, director, employee,
stockholder or Affiliate of EDI or its Subsidiary or any individual related by
blood, marriage or adoption to any such individual or any entity in which any
such Person or individual owns any beneficial interest, is a party to any
agreement, contract, commitment or transaction with EDI or its Subsidiary or has
any material interest in any material property used by EDI or its Subsidiary.
5-6
(u) DISCLOSURE. Neither this Agreement, the Proprietary Information
Agreement, the Disclosure Schedules, the Registration Rights Agreement nor any
of the exhibits, schedules, attachments, written statements, documents,
certificates or other items prepared or supplied to HRL by or on behalf of EDI
with respect to the transactions contemplated hereby contain any untrue
statement of a material fact or omit a material fact necessary to make each
statement contained herein or therein not misleading. There is no fact which EDI
has not disclosed to HRL in writing and of which any of its officers, directors
or executive employees is aware and which has had or would reasonably be
expected to have a material adverse effect upon the existing or expected
financial condition, operating results, assets, customer or supplier relations,
employee relations or business prospects of EDI and its Subsidiary taken as a
whole.
(v) EFFECTIVE DATE. The representations and warranties of EDI contained
in this Section 5 and elsewhere in this Agreement and all information contained
in any exhibit, schedule or attachment hereto or in any certificate or other
writing delivered by, or on behalf of, EDI to HRL shall be true and correct in
all material respects on the date of the Effective Date as though then made,
except as affected by the transactions expressly contemplated by this Agreement.
5-7
EXHIBIT 6
REPRESENTATIONS AND WARRANTIES OF HRL
(a) ORGANIZATION OF THE BUYER. HRL is a limited liability company duly
organized, validly existing and in good standing under the laws of Delaware.
(b) AUTHORIZATION; NO BREACH. The execution, delivery and performance
of this Agreement, the Proprietary Information Agreement, the Registration
Rights Agreement and all other agreements contemplated hereby to which HRL is a
party have been duly authorized by HRL. Each of this Agreement, the Proprietary
Information Agreement and all other agreements contemplated hereby to which HRL
is a party constitutes a valid and binding obligation of HRL, enforceable in
accordance with its terms. Neither the execution and the delivery of this
Agreement, nor the consummation of the transactions contemplated hereby, will
(i) violate any constitution, statute, regulation, rule, injunction, judgment,
order, decree, ruling, charge, or other restriction of any government,
governmental agency, or court to which HRL is subject or (ii) conflict with,
result in a breach of, constitute a default under, result in the acceleration
of, create in any Party the right to accelerate, terminate, modify, or cancel,
or require any notice under any agreement, contract, lease, license, instrument,
or other arrangement to which HRL is a party or by which it is bound or to which
any of its assets are subject.
(c) BROKERS' FEES. There are no claims for brokerage commissions,
finders' fees or similar compensation in connection with the transactions
contemplated by this Agreement based on any arrangement or agreement binding
upon HRL. HRL shall pay, and hold EDI harmless against, any liability, loss or
expense (including, without limitation, reasonable attorneys' fees and
out-of-pocket expenses) arising in connection with any such claim.
(d) ACCREDITED INVESTOR. HRL is an "accredited investor" as such term
is defined in Rule 501(a) promulgated under the Securities Act.
(e) INVESTMENT. HRL is not acquiring the EDI Capital Stock with a view
to or for sale in connection with any distribution thereof within the meaning of
the Securities Act.
(f) HRL INVESTMENT REPRESENTATIONS. HRL hereby represents that it is
acquiring the EDI Capital Stock purchased hereunder or acquired pursuant hereto
for its own account with the present intention of holding such securities for
purposes of investment, and that it has no intention of selling such securities
in a public distribution in violation of the federal securities laws or any
applicable state securities laws; provided that nothing contained herein shall
prevent HRL and subsequent holders of EDI Capital Stock from transferring such
securities in compliance with the provisions of Section 7 hereof.
(g) RESTRICTED SECURITIES. HRL understands that the EDI Capital Stock
may not be sold, transferred, or otherwise disposed of without registration
under the Securities Act or an exemption therefrom, and that in the absence of
an effective registration statement covering the EDI Capital Stock or an
available exemption from registration under the Securities Act, the EDI Capital
Stock must be held indefinitely.
6-1
(h) THE ALGORITHM. HRL warrants that to the best of its actual
knowledge, the Algorithm does not infringe on any United States patent by
anything, material, design, composition, or processing. HRL warrants it has not,
prior to the Effective Date, entered into any agreement or otherwise granted any
now existing, or agreed to grant any future, license, right or privilege
relating to the Algorithm that conflicts in any way with this Agreement. HRL
further warrants that the Algorithm is the product of its own research and
invention and was created as a work for hire for EDI by HRL's staff and
personnel. No third party has any claim, title or right to the Algorithm or any
protected component parts.
6-2
