1
Certain confidential portions of this Exhibit were omitted by means of blackout
of the text (the "Xxxx"). This Exhibit has been filed separately with the
Secretary of the Commission without the Xxxx pursuant to the Company's
Application Requesting Confidential Treatment under Rule 406 under the
Securities Act.
EXHIBIT 10.15
AMENDMENT NO. I
to the
Agreement
Effective March 1, 1986
Between
STANFORD UNIVERSITY
and
AMOCO
Effective as of September 27,1996, THE BOARD OF TRUSTEES OF THE
XXXXXX XXXXXXXX JUNIOR UNIVERSITY, a body having corporate powers under the laws
of the State of California ("STANFORD"), and LASER POWER CORPORATION, a
California corporation having a principal place of business at 00000 Xxxx Xxxxx
Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 ("LPC"), agree as follows:
1. BACKGROUND
1.1 -- STANFORD and AMOCO CORPORATION, an Indiana corporation
having a principal place of business at 000 Xxxx Xxxxxxxx Xxxxx, Xxxxxxx,
Xxxxxxxx ("AMOCO") entered into an agreement with the effective date of March 1,
1986, ("Agreement") for the Laser Diode End Pumped Laser and Harmonic Generator
("Inventions"), as described in Stanford Docket S84-070, and any Licensed
Patents (including Continuation-In-Part ["CIP"] patents) that may issue to such
Inventions.
1.2 -- Under Article 12 of the Agreement, the Agreement was
assigned to ATX Telecom Systems, located in Naperville, Illinois, whose parent
is Scientific-Atlantic, Inc., located in Norcross, Georgia ("ATX/SAI") as the
successor to substantially the whole of AMOCO's assets in the field relating to
lasers.
1.3 -- ATX/SAI do not plan to develop Licensed Products under
the Agreement and have agreed, pending the approval of STANFORD, to assign the
Agreement to LPC. LPC does plan to develop and market Licensed Products under
the Agreement.
1.4 -- STANFORD and LPC agree that certain modifications to
the Agreement will be made effective as of the date of assignment of the
Agreement from ATX/SAI to LPC, as given below.
2. AMENDMENTS
2.1 -- STANFORD and LPC agree to substitute a new Paragraph
2.2 as given below for the existing Paragraph 2.2 of the Agreement:
Page 1 of 3
2
"2.2 -- "Licensed Patent(s)" means United States patent
4,739,507 (issued April 19, 1988), and all of the related CIP patents of
4,739,507, namely serial numbers 4,701,928 (issued October 20, 1987), 4,731,787
(issued March 15, 1988), 4,764,933 (issued August 16, 1988), and 4,809,291
(issued February 28, 1989), and any reissues of such patents."
2.2 -- STANFORD and LPC agree to add to Paragraph 5.1 the following new
text:
"Should this Agreement be assigned under terms of Article 12
where Stanford's approval is required, and if STANFORD agrees to grant such
approval, the assignee of the Agreement agrees to pay to STANFORD a one-time
noncreditable and nonrefundable assignment grant royalty of [ *** ] payable
within 30 days following the effective date of the assignment. "
2.3 -- STANFORD and LPC agree to substitute a new Paragraph 5.2 as
given below for the existing Paragraph 5.2 of the Agreement:
"5.2 -- Effective upon the date of assignment of this
Agreement to Laser Power Corporation, Laser Power Corporation agrees that
Paragraph 5.2 of this Agreement will be changed, that the former provisions of
Paragraph 5.2 will be void, and the new provision of Paragraph 5.2 will be the
agreement of Laser Power Corporation to pay to STANFORD an earned royalty of
[ *** ] on the Net Sales of all Licensed Product(s) made during the remaining
term of this Agreement whenever sold or otherwise disposed of. "
2.4 -- STANFORD and LPC agree to change Article 14 to update the
address for notices: (1) STANFORD changed to Office of Technology Licensing, 000
Xxxxx Xxxx, Xxxxx 000, Xxxx Xxxx, XX 00000-0000; (2) to LPC Laser Power
Corporation, 00000 Xxxx Xxxxx Xxxxx, Xxx Xxxxx, XX 00000.
2.5 -- STANFORD and LPC agree to add a new Paragraph 3.3 to read as
follows:
"3.3 -- Upon assignment of this Agreement to LPC,
STANFORD hereby releases LPC and its Affiliates from any and all claims for
damages, royalties, or profits from any infringement such as by the use, sale,
development or manufacture of Licensed Product(s) prior to the date of
assignment.
2.6 -- STANFORD and LPC agree to delete Paragraph 2.3 from the
Agreement.
2.7 -- STANFORD and LPC agree to substitute the word "product" for the
words "Laser Apparatus" in line 1 of Paragraph 2.4.
Page 2 of 3
* CONFIDENTIAL TREATMENT REQUESTED
3
2.8 -- All other terms and conditions of the Agreement remain in full
force and effective.
IN WITNESS WHEREOF, the parties hereto have executed this Amendment No.1 in
duplicate originals by their duly authorized officer or representative.
THE BOARD OF TRUSTEES OF THE
XXXXXX XXXXXXXX JUNIOR UNIVERSITY
Signature:
----------------------------------
Printed Name: Xxxxxxxxx Xx
-------------------------------
Title: Director, Technology Licensing
------------------------------------
Date: September 27, 1996
------------------------------------
LASER POWER CORPORATION
Signature:
----------------------------------
Printed Name: Xxxxx X. Xxxxxxx
-------------------------------
Title: Chief Executive Officer
--------------------------------------
Date: September 27, 1996
--------------------------------------
Page 3 of 3
4
STATE OF CALIFORNIA
UNIFORM COMMERCIAL CODE - FINANCING STATEMENT - FORM UCC-1
This STATEMENT is presented to a filing officer for filing pursuant to the
Uniform Commercial Code.
Debtor (Last Name First)/address Secured Party/address For Filing officer
Laser Power Corporation ATx Telecom Systems, Inc.
00000 Xxxx Xxxxx Xxxxx 0000 Xxxxxxxxx Xxxx
Xxx Xxxxx, Xxxxxxxxxx 00000 Xxxxxxxxxx, Xxxxxxxx 00000
Add'l Debtor(s) (Last Name First)/address(es)
Assignee of Secured Party/address
This Financing Statement covers the following types or items of property:
Debtor hereby grants and assigns to Secured Party a continuing security
interest in all of Laser Power Corporation's present rights and additional
rights as may be agreed between the parties, as assigned under the
Agreement dated March 1, 1986 between The Board of Trustees of the Xxxxxx
Xxxxxxxx Junior University and Amoco Corporation, revenue from assignment
therefrom, and proceeds of the foregoing assignment.
X Products of collateral are also covered.
----
This Financing Statement is a fixture filing to be recorded in the official
----
records of the County of ______.
Debtor is a "transmitting Utility " in accordance with UCC Section
----
9105(l)(N).
This Financing Statement is signed by the Secured Party instead of the Debtor to
perfect a security interest in collateral
already subject to a security interest in another jurisdiction when it was
----
brought into this state, or when the debtors location was changed to this
state, or
already subject to a FINANCING statement filed in another county, or
----
which is proceeds of the original collateral described above in which a
security interest was perfected, or
which is proceeds of the original collateral described above in which a
----
security interest was perfected, or
as to which the filing has lapsed, or
----
acquired after a change of name, identify or corporate structure of the
----
debtor.
DEBTOR: SECURED PARTY:
Laser Power- Corporation ATx Telecom Systems, Inc.
By: By:
-------------------------------- -------------------------------
Its: Its:
-------------------------------- -------------------------------
Return copy to: Xxxxxxx X. Xxxxxx, Esq.
Paul, Hastings, Xxxxxxxx & Xxxxxx LLP
Twenty-Third Floor
000 Xxxxx Xxxxxx Xxxxxx
Xxx Xxxxxxx, Xxxxxxxxxx 00000
5
ASSIGNMENT AGREEMENT
This AGREEMENT was made this 30th day of September, 1996 between ATx Telecom
Systems, Inc. ("ATx"), a Delaware Corporation with offices at 0000 Xxxxxxxxx
Xx., Xxxxxxxxxx, XXX 00000, and Laser Power Corporation ("LPC") with offices at
00000 Xxxx Xxxxx Xxxxx, Xxx Xxxxx, XX 00000.
RECITALS:
ATx holds a worldwide non-exclusive license (the "Amoco License") to make,
have made, use and sell products that incorporate inventions owned or
disclosed in U.S. patent application Serial No. 674,948, including any
patent which may issue from any divisions, continuations, or
continuations-in-part based on said application Serial No. 674,948.
A copy of the Amoco License, dated March 1, 1986, is attached hereto as
Exhibit A. The licensor is THE BOARD OF TRUSTEES OF THE XXXXXX XXXXXXXX
JUNIOR UNIVERSITY ("STANFORD") and the original licensee is AMOCO
CORPORATION ("AMOCO"). AMOCO transferred the Amoco License to ATx, who at
the time of transfer was a wholly owned subsidiary of AMOCO. Scientific
Atlanta, Inc. ("S-A") has since acquired ATx and all its assets and at the
present time ATx is a wholly owned subsidiary of S-A.
LPC desires to receive an assignment of all rights and obligations under
the Amoco License according to the terms of said license, and ATx are
willing to assign the rights and obligations under the Amoco License to
LPC.
STANFORD has agreed to assignment of the Amoco License by written consent,
a copy of which is attached hereto as Exhibit "B", in accordance with
Section 12 of the Amoco License.
LPC desires to commercialize said technology in order that products
resulting therefrom might be available for public use and benefit at the
earliest possible time.
AGREEMENT:
Therefore, in consideration of the mutual promises and obligations set forth
herein, the parties agree as follows:
1. DEFINITIONS
1.1 "Affiliate" shall be defined as in Paragraph 2.5 of the Amoco
License, which definition is incorporated by reference herein.
- 1 -
6
1.2 "Agreement" shall mean the agreement set forth herein.
1.3 "AMOCO" refers to AMOCO CORPORATION.
1.4 "Amoco License" is defined as the agreement between STANFORD and
AMOCO, dated March 1, 1986, a copy of which is attached hereto as
Exhibit A.
1.5 "Laser Apparatus" shall be defined as in Paragraph 2.3 of the Amoco
License, which definition is incorporated by reference herein.
1.6 "Licensed Patent(s)" shall be defined as in Paragraph 2.2 of the
Amoco License, which definition is incorporated by reference herein.
1.7 "Licensed Product(s)" shall be defined as in Paragraph 2.4 of the
Amoco License, which definition is incorporated by reference herein.
1.8 "Net Sales Price" shall be defined as in Paragraph 2.6(a) and (b)
of the Amoco License, which definition is incorporated by reference
herein, substituting LPC as assignee for AMOCO.
1.9 "STANFORD" refers to The Board of Trustees of the Xxxxxx Xxxxxxxx
Junior University.
2. ASSIGNMENT OF LICENSE
2.1 Subject to the terms and conditions set forth in this Agreement, Atx
assigns, transfers, and conveys to LPC, and LPC accepts from Atx, all rights and
obligations of AMOCO (now assigned to ATx) under the Amoco License, upon receipt
of the written consent of STANFORD.
3. COMPENSATION TERMS AND CONDITIONS
3.1. In full consideration of the assignment of the Amoco License to
LPC hereunder, LPC agrees to pay, and ATx agrees to accept the
following:
(a)Assignment Fee. LPC will pay the sum of [ *** ]
to ATx, payable upon execution and delivery of this Assignment
of the Amoco License from ATx to LPC.
(b)Royalties. No royalties shall be due until the cumulative Net
Sales Price of all Licensed Product(s) made during the term of
this Agreement whenever sold or otherwise disposed of by LPC is
in excess of [ *** ] and thereafter royalties shall be due only
on such excess. LPC shall pay ATx a royalty at a rate of [ *** ]
of the Net Sales Price of all
- 2 -
* CONFIDENTIAL TREATMENT REQUESTED
7
Licensed Product(s) made during the term of this Agreement
whenever sold or otherwise disposed of by LPC, payable as set
forth in Section 4. All such royalty payments shall be made
payable to ATx Telecom Systems, Inc. in U.S. dollars at the
following address:
Vice President of Finance
ATx Telecom Systems, Inc.
0000 Xxxxxxxxx Xx.
Xxxxxxxxxx, Xxx 00000
The above address may be changed in the manner specified for
notices in this Agreement.
(c) Minimum royalty. Beginning the first of January in the fifth
full year after the effective date of this agreement (i.e. for
the year beginning January 1, 2001), LPC shall pay to ATx a
[ *** ] pursuant to Paragraph 4.1 of at least [ *** ] per year,
at the address specified in Paragraph 3.1(b). In the event that
LPC does not pay at least the [ *** ] payment for any such year
by the due date set forth in Paragraph 4.1, then ATx may
terminate this Agreement in accordance with Paragraph 5.2 after
fifteen days from receipt of written notice by LPC, if LPC has
failed to pay the required minimum royalty within such
fifteen-day period.
(d)Royalties for Transactions in Non-U.S. Currencies. The royalty
on sales in currencies other than U.S. Dollars shall be
calculated using the appropriate foreign exchange rate for such
currency quoted by the Bank of America (San Francisco) foreign
exchange desk, on the close of business on the last banking day
of the calendar quarter immediately preceding the subject sale.
Any and all taxes levied on royalties accruing under this
Agreement in a country in which there is a provision by law or
regulation for withholding such taxes will be deducted from such
royalty and paid by LPC to the proper taxing authority.
3.2 Effect of invalidity. In the event that one or more of the claims
of a Licensed Patent are held invalid by a final judgment of a court of
competent jurisdiction from which no appeal can be or is taken, then no
royalties based on such invalid claim(s) shall be due subsequent to
said final judgment.
4. ROYALTY REPORTS, PAYMENTS, AND ACCOUNTING
4.1 Annual Royalty Payment and Report. Within sixty (60) days after the
end of each calendar year, LPC shall make an appropriate written report
and pay the earned royalty payments (if any) to ATx .
- 3 -
* CONFIDENTIAL TREATMENT REQUESTED
8
Time is of the essence in this Assignment Agreement. This report shall
state the aggregate Net Sales Price of Licensed Product(s) during such
completed report year, and resulting royalty payment due ATx.
Concurrent with the making of each such report, LPC shall include the
royalty payment due ATx for the report year covered by such report.
4.2 Accounting. LPC agrees to keep and maintain records and books of
account for a period of three (3) years in sufficient detail to enable
the royalties payable hereunder to be determined, and further agrees to
permit such records to be examined on behalf of ATx by an auditor or
accountant, to whom LPC shall have no reasonable objection, from time
to time during normal business hours, but not more than once a year, to
verify reports provided for above. The auditor or accountant shall
report to ATx in such manner that names of customers and any other
information deemed confidential by LPC will not be disclosed to ATx.
Such examination is to be made by ATx, at the expense of ATx, except in
the event that the results of the audit prove an under reporting of
royalties due ATx of 7.5% (seven and one-half percent) or more, then
the audit costs shall be paid by LPC. All under-reported royalties
shall be paid to ATx within 30 days, and shall bear interest at the
statutory interest rate of California, accruing from the date when the
under-reported royalties should have been due.
5. EFFECTIVE DATE, DURATION, TERMINATION
5.1 Effective Date. This Agreement shall be effective upon the date set
forth in the first paragraph of this Agreement.
5.2 Termination. This Agreement may not be terminated except as
expressly provided in paragraph 3:1(c). Upon such termination of the
Agreement, LPC agrees that all its rights under the Amoco License shall
be deemed to be assigned to ATx, subject to approval of STANFORD if
required pursuant to the Amoco License.
5.3 Survival. Surviving any termination pursuant to paragraph 5.2 are
LPC's obligation to pay royalties accrued or accruable as of the
termination date, and any cause of action or claim of either party
accrued because of any breach by the other party.
5.4 Term continuance until expiration. Unless previously terminated in
strict accordance with paragraph 5.2, this Agreement shall continue in
full force until the expiration of the last to expire of any Licensed
Patents. However, no royalties shall be due for any Licensed Product(s)
made, used, and sold subsequent to the expiration date of the Licensed
Patent(s) associated therewith, and as set forth in paragraph 3.2, no
royalties based on an adjudicated invalid claim(s)
- 4 -
9
shall be due subsequent to a final judgment of a court of competent
jurisdiction from which no appeal can be or is taken.
6. VALIDITY AND INFRINGEMENT
6.1 ATx hereby releases LPC from any and all claims of ATx under the
Licensed Patent(s) for damages, royalties, or profits, for any
infringement such as by the use, sale, or manufacture of Licensed
Product(s) prior to the date of this Agreement. ATx also releases the
direct and indirect vendees of LPC from any and all claims of ATx,
under the Licensed Patent(s) for such damages, royalties, or profits
for infringement such as by the use or resale of any such items prior
to the date of this Agreement.
7. WAIVER
7.1 None of the terms, covenants and conditions of this Agreement may
be waived except by the written consent of the party waiving
compliance.
7.2 The waiver of a breach of this Agreement by either party hereto
shall in no event constitute a waiver as to any future breach, whether
similar or dissimilar in nature.
8. SECURITY INTEREST
8.1 LPC agrees to execute a security agreement concurrent herewith that
grants ATx a security interest in the Amoco License assigned to LPC
pursuant to this Agreement.
9. NOTICES AND DESIGNATED CONTACTS
Any notice required or permitted to be made under this Agreement shall be in
writing and shall be deemed to have been duly given to the other party on the
earlier of (i) actual receipt by such party, irrespective of whether sent by
post, telex, facsimile transmission, overnight (or expedited) courier service or
any other method, or (ii) the sixth (6th) day after mailing by registered or
certified mail from the country in which the notice originated, return receipt
requested and postage prepaid, provided such notice is directed or addressed to
the appropriate address or facsimile number set forth below:
-5-
10
For Atx: For LPC:
-------- --------
Xxxxxx X. Xxxxxxx Xxxxx X. XxXxxxxxx
Assistant General Patent Counsel General Counsel
One Technology Parkway, South 00000 Xxxx Xxxxx Xxxxx
Xxxxxxxx, XX 00000-0000 Xxx Xxxxx, XX 00000
Phone: (000) 000-0000 Phone: (000) 000-0000
FAX: (000) 000-0000 FAX: (000) 000-0000
Either party may change the address, the facsimile number of the person
designated above by notice to the other party, which notice complies
with this section.
10. APPLICABLE LAW
10.1 This Agreement shall be construed in accordance with the laws of
New York, without regard to principles of conflicts of law.
11. ENTIRE AGREEMENT
11.1 This Agreement contains the entire understanding of the parties
and supersedes all other agreements or understandings with respect to
the subject matter hereof. Any amendment to this Agreement must be in
writing, signed by authorized representatives of each party, and must
expressly refer to this Agreement.
12. OTHER
12.1 Fax signatures. Each party intends the facsimile of its signature
printed by a receiving FAX machine to be an original signature.
12.2 Headings. The foregoing paragraph headings are included solely for
convenience and shall not be deemed part of this Agreement and shall
not be used for the interpretation hereof.
12.3 Force Majeure. No party shall be liable for failure to perform or
delay in performing any obligation (other than the payment of money)
under this Agreement if such failure or delay is due to fire, flood,
earthquake, strike, labor trouble or other industrial disturbance, war
(declared or undeclared), embargo, blockage, shortage of labor,
material or equipment, legal prohibition, governmental action, riot,
insurrection, damage, destruction or any other cause beyond the control
of such defaulting party preventing or delaying the performance. The
obligations and rights of the excused party shall be extended on a day
to day basis for the time period of the excusable delay plus thirty
(30) days; however, in no event shall this extended period exceed one
hundred twenty (120) days.
-6-
11
12.4 Assignment. Neither party may transfer its rights or delegate the
duties provided under the terms of this Agreement without the prior
consent of the other party. However, consent shall not be required in
the event of a sale or transfer to an Affiliate or to a successor to
substantially the whole of LPC's assets in the field relating to the
manufacture and sale of Laser Apparatus.
12.5 Neither party to be construed as drafter. As both parties have
participated in the negotiation and drafting of this Agreement, neither
party shall be deemed to be the drafter of this Agreement for purposes
of construing any ambiguities against one party.
12.6 Severability. In the event that any provision of this Agreement,
or any part hereof, is found invalid or unenforceable, the remainder of
this Agreement will be binding on the parties hereto, and will be
construed as if the invalid or unenforceable provision or part thereof
had been deleted from this Agreement.
13. WARRANTIES
13.1 ATx Warranties. ATx represents, warrants, and covenants to and
with LPC as follows:
(a) ATx is unaware of any issued and unexpired patent that
would prevent practice of the claims of the Licensed Patents;
(b) ATx is a corporation duly incorporated, validly existing
and in good standing under the laws of the State of Delaware and has
all requisite power and authority to execute and deliver this Agreement
and to perform all its duties and obligations set forth herein. This
Agreement is a valid and binding obligation of ATx, enforceable against
it in accordance with its terms; and
(c) Neither the execution and delivery of this Agreement, nor
the performance by ATx of any of the provisions hereof shall constitute
a breach of or a default under ATx's charter documents or any
agreement, instrument or other document to which ATx is a party or by
which any of its assets or properties may be bound or affected, or any
judgment, order, regulation, stature, ordinance or rule having any
applicability to ATx or any of its assets or properties.
(d) ATx has sole, unencumbered possession of and/or title to
the Amoco License and is the owner of the Amoco License free from any
adverse liens, security interests, or encumbrances.
13.2 LPC Warranties. LPC represents, warrants, and covenants to and
with LPC as follows:
-7-
12
(a) LPC is a corporation duly incorporated, validly existing
and in good standing under the laws of the State of Delaware and has
all requisite power and authority to execute and deliver this Agreement
and to perform all its duties and obligations set forth herein. This
Agreement is a valid and binding obligation of LPC, enforceable against
it in accordance with its terms; and
(b) Neither the execution and delivery of this Agreement, nor the performance by
LPC of any of the provisions hereof shall constitute a breach of or a default
under LPC's charter documents or any agreement, instrument or other document to
which LPC is a party or by which any of its assets or properties may be bound or
affected, or any judgment, order, regulation, stature, ordinance or rule having
any applicability to LPC or any of its assets or properties.
14. NEGATION OF WARRANTIES
14.1 Nothing in this Agreement shall be construed as:
(a) a warranty or representation by ATx as to the validity or
scope of any Licensed Patent(s);
(b) a warranty or representation that anything made, used,
sold or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents, copyrights,
and trademarks of third parties;
(c) an obligation to bring or prosecute actions or suits
against third parties for infringement; and
(d) conferring rights to use in advertising, publicity, or
otherwise any trademark or the name "ATx Telecom Systems".
IN WITNESS WHEREOF, the parties hereto have executed this Agreement by their
duly authorized officers or representatives.
ATX TELECOM SYSTEMS, INC LASER POWER CORPORATION
By: /s/ Xxxxxx Xxxxxxx By: /s/ Xxxxx X. Xxxxxxx
----------------------------- ----------------------------
Name: Xxxxxx Xxxxxxx Name: Xxxxx X. Xxxxxxx
----------------------------- ----------------------------
Title: Vice President-Finance Title: Chairman and CEO
----------------------------- ----------------------------
Date: 10/7/96 Date: 10/4/96
----------------------------- ----------------------------
-8-
13
Exhibit A
AGREEMENT
Effective as of March 1, 1986, THE BOARD OF TRUSTEES OF HE XXXXXX XXXXXXXX
JUNIOR UNIVERSITY, a body having corporate powers under the laws of the State of
California ("STANFORD"), and AMOCO CORPORATION, an Indiana corporation, having a
principal place of business at 000 Xxxxx Xxxxxxxx Xxxxx, Xxxxxxx, Xxxxxxxx 00000
("AMOCO"), agree as follows:
1. BACKGROUND
1.1-- STANFORD represents that it has certain rights by assignment to
the Laser Diode End Pumped Laser and Harmonic Generator (Invention[s]), as
described in Stanford Docket S84-070, and any patents which may issue to such
Invention(s).
1.2-- STANFORD has filed United States Patent Application Serial No.
674,948 which is directed to Invention(s). A copy of said patent application is
attached hereto as Exhibit I and is incorporated herein by reference.
1.3-- STANFORD wishes to have the Invention(s) perfected and marketed at
the earliest possible time in order that products resulting therefrom might be
available for public use and benefit.
14
1.4-- Amoco wishes to acquire a license under Licensed Patent(s) which
is defined herein below.
1.5-- The Invention(s) was made in the course of research supported by
the National Aeronautics a Space Administration (NASA) and the Navy and is
subject to patent regulations of said agencies.
2. DEFINITIONS
2.1--"Invention(s)" shall have the meaning set forth above.
2.2--"Licensed Patent(s)" means all patents of all countries based in
whole or in part upon United States Patent Application Serial No. 674,948 or any
invention owned or controlled by STANFORD which is disclosed in said application
Serial No. 674,948 and shall includes without limitation, any patent which may
issue from any divisions, continuations or continuations-in-part based on said
application Serial No. 674,948.
2.3-- "Laser Apparatus" means an optically pumped laser which includes
an optical pump and output coupler together with any intermediate active or
passive optical
- 2 -
15
elements, said elements including a gain medium and any focusing
and nonlinear optical components, but excluding any other devices and equipment
either upstream of the optical pump or downstream of the output coupler.
2.4-- "Licensed Product(s)" means any Laser Apparatus or part thereof,
the manufacture use or sale of which is covered by any valid claim of an issued,
unexpired Licensed Patent(s). A claim of an issued unexpired patent shall be
presumed to be valid unless and until it has been held to be invalid by a final
judgment of a court of competent jurisdiction from which no appeal can be or is
taken.
2.5--"Affiliate" shall mean any company of which AMOCO at the time in
question owns or controls directly or indirectly, fifty percent (50%) or more of
the stock having the right to vote for directors thereof.
2.6-- "Net Sales Price" shall have the following meaning:
(a) In respect of Licensed Product(s) sold as such to
any party other than an Affiliate, Net Sales Price shall mean
the [ *** ]
- 3 -
* CONFIDENTIAL TREATMENT REQUESTED
16
[ *** ]
(b) In respect of Licensed Product(s) sold either to
an Affiliate or as a component of another product, Net Sales
Price shall mean the [ *** ]
- 4-
* CONFIDENTIAL TREATMENT REQUESTED
17
[ *** ]
3. GRANT
3.1--Subject to the terms and conditions set forth in this Agreement,
STANFORD hereby grants and AMOCO hereby accepts a worldwide nonexclusive license
under Licensed Patent(s) to make, have made use and sell Licensed Product(s).
3.2 -- It is understood that STANFORD has granted a nonexclusive
license under Licensed Patent(s) to Spectra-Physics Inc. It is further
understood that, except for AMOCO's license hereunder and any other nonexclusive
rights which STANFORD may have granted, may grant or is obligated
-5-
* CONFIDENTIAL TREATMENT REQUESTED
18
to grant under Licensed Patent(a), Spectra-Physics Inc. has an option to convert
its license to an exclusive license. In the event that Spectra-Physics Inc. does
not exercise its option, AMOCO shall have the option to convert its license
hereunder to an exclusive license, except for any nonexclusive licenses STANFORD
has granted or is obligated to grant under Licensed Patent(s) as of the date
AMOCO exercises its option. AMOCO may exercise this option by delivering written
notice of its election to STANFORD anytime after one year from the effective
date of this Agreement. The exclusive license shall be on fair and reasonable
terms to be negotiated in good faith. STANFORD shall have sixty (60) days from
receipt of such notification, or until the exclusive license is executed by
AMOCO, whichever is later, to conclude any pending negotiations with third
parties. STANFORD shall provide AMOCO with a list of companies with which
negotiations are pending as of the date of notification.
4. GOVERNMENT RIGHTS
This Agreement is subject to all of the items and conditions of Public
Law 96-517 as amended.
-6-
19
5. ROYALTIES
5.1-- In consideration of the license granted herein AMOCO shall pay to
STANFORD a noncreditable, nonrefundable license issue royalty of [ *** ] upon
signing of this Agreement.
5.2-- In addition, earned royalties shall be payable to STANFORD an the
Net Sales Price of all Licensed Product(s) made during the term of this
Agreement whenever sold or otherwise disposed of by AMOCO as follows:
(a) [ *** ] of Net Sales Price until cumulative royalties
paid to STANFORD total [ *** ]; then
(b) [ *** ] of Net Sales Price for the next [ *** ]; in
earned royalties until cumulative royalties paid to STANFORD total [ *** ];
then
(c) [ *** ] of Net Sales Price thereafter.
5.3 -- All royalties payable to AMOCO hereunder shall be paid to
STANFORD at its address specified in Article 14
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* CONFIDENTIAL TREATMENT REQUESTED
20
hereof in lawful money of the United States of America.
6. REPORTS PAYMENTS AND ACCOUNTING
6.1-- STANFORD shall notify AMOCO of the issue of any Licensed
Patent(s) within thirty (30) days of such issue.
6.2-- Within sixty (60) days after the end of each calendar half-year
during the existence of any unexpired Licensed Patent(s), AMOCO shall render to
STANFORD a written statement showing all Licensed Product(s) sold by AMOCO
during the preceding calendar half-year and shall accompany each such statement
by payment of royalty due STANFORD. If for any such period no royalty shall be
due, AMOCO shall submit a written statement to that effect.
6.3-- In the event that the selling price of Licensed Product(s) on
which royalty is based hereunder is in a currency other than lawful money of the
United States, the rate of exchange used in calculating such royalty for each
calendar half-year shall be the arithmetic average of the selling prices for the
currency in question as quoted by leading New York, New York banks at the end of
business on the last business day of each calendar month in such calendar
half-year during which any sale of Licensed Product(s) occurred.
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21
6.4-- AMOCO agrees to keep records and books of account for a period of
three (3) years in sufficient detail to enable the royalties payable hereunder
to be determined, and further agrees to permit such records to be examined for
STANFORD by an auditor or accountant, to whom Amoco shall have no reasonable
objection from time to time during normal business hours to the extent
necessary, but not more than once a year, to verify reports provided for in
Paragraph 6.2 of this Article 6. Such examination is to be made by STANFORD, at
the expense of STANFORD, and such auditor or accountant shall report to STANFORD
in such manner that names of customers and any other information deemed
confidential by AMOCO will not be disclosed to STANFORD.
7. NEGATION OF WARRANTIES
Nothing in this Agreement shall be construed
as:
(a) A warranty or representation by STANFORD as to the
validity or scope of any Licensed Patent(a);
(b) A warranty or representation that anything made, used,
sold or otherwise disposed of under any license granted in this Agreement is or
will be free from infringement of patents, copyrights and trademarks of third
parties;
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22
(c) An obligation to bring or prosecute actions or suits
against third parties for infringement;
(d) Conferring rights to use in advertising, publicity or
otherwise any trademark or the name of "Stanford; or
(e) Granting by implication, estoppel or otherwise any
licenses under patents of STANFORD other than Licensed Patent(a), regardless of
whether such patents are dominant or subordinate to any Licensed Patent(s).
8. INDEMNITY
AMOCO agrees to indemnify, hold harmless and defend STANFORD,
its trustees, directors, officers, employees and agents against any and all
claims arising out of the exercise by AMOCO of any rights under this Agreement,
without limiting the generality of the foregoing against any damages, losses or
liabilities whatsoever in respect to death or injury to person or damage to
property from or out of the possession, use or operation of Licensed Product(s)
by AMOCO or its customers in any manner whatsoever.
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23
9. MARKING
With respect to any Licensed Product(s) which is either manufactured or
sold within the United States, AMOCO agrees that it will xxxx such Licensed
Product(s) with proper patent notice as specified under the patent laws of the
United States.
10. INFRINGEMENT BY OTHERS: PROTECTION OF PATENTS
AMOCO-shall promptly inform STANFORD of any suspected
infringement of any Licensed Patent(s) by a third party.
11. TERMINATION
11.1-- Unless previously terminated in accordance with the provisions of
Paragraphs 11.2 or 11.3 of this Article 11, this Agreement shall continue in
full force until the expiration of the last to expire of any Licensed Patent(s)
or, in the event that no Licensed Patent(s) issue, the expiration of the last to
expire of all STANFORD patent applications based in whole or in part upon United
States Patent Application Serial No. 674,948 or any of the inventions contained
therein.
-11-
24
11.2-- AMOCO may terminate this Agreement by giving STANFORD notice in
writing at least ninety (90) days in advance of the effective date of
termination selected by AMOCO. After such termination, AMOCO shall have no
further rights under Licensed Patent(s). Termination pursuant to this Paragraph
11.2 shall not relieve AMOCO of its royalty obligations in respect of Licensed
Product(s) produced but not sold prior to the effective date of termination or
otherwise relieve AMOCO of any other obligation or liability arising from any
acts or omissions under this Agreement committed prior to the effective date of
such termination.
11.3-- Should AMOCO be in default as to any obligation hereunder and
fail to remedy such default within thirty (30) days after receipt of written
notice thereof from STANFORD specifying the nature of such default, STANFORD may
terminate this Agreement by delivering written notice to AMOCO of termination.
Such termination shall relieve each of the parties hereto of all further rights,
duties and obligations, except the obligation of AMOCO to render a final
accounting in accordance with Paragraph 6.2 hereof, and pay all royalty due in
accordance with the provisions of this Agreement.
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25
12. ASSIGNMENT
Amoco shall not, without the prior written consent of STANFORD, assign
or extend this Agreement or any rights hereunder to another person or company,
except to an Affiliate or to a successor to substantially the whole of AMOCO's
assets in the field relating to lasers.
13. APPLICABLE LAW
This Agreement shall be construed, interpreted and applied in
accordance with the laws of the State of California.
14. NOTICES
All notices, demands or other writings in this Agreement provided to be given or
made or sent, or which may be given or made or sent, by either party hereto to
the other, shall be deemed to have been fully given or made or sent when done in
writing and deposited in the United States mail first class, postage prepaid and
addressed as follows:
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26
TO STANFORD: STANFORD UNIVERSITY
000 XXXXXXXXX XXXXXX XXXXX 000
XXXX XXXX, XX 00000
ATTENTION: DIRECTOR,
TECHNOLOGY LICENSING
TO AMOCO AMOCO CORPORATION
000 XXXX XXXXXXXX XXXXX
POST OFFICE BOX 87703
CHICAGO, ILLINOIS 60680-703
ATTENTION: GENERAL MANAGER
PATENTS AND LICENSING DEPARTMENT
MAIL CODE 1905A
THE ADDRESS TO WHICH ANY NOTICE, DEMAND OR OTHER WRITING MAY BE GIVEN OR MADE OR
SENT TO AN PARTY MAY BE CHANGED UPON WRITTEN NOTICE GIVEN BY SUCH PARTY AS ABOVE
PROVIDED.
-14-
27
15. WAIVER
The waiver of a breach of this Agreement by either party hereto shall
in no event constitute a waiver as to any future breach, whether similar or
dissimilar in nature. None of the terms, covenants and conditions of this
Agreement can be waived except by the written consent of the party waiving
compliance.
16. SCOPE OF AGREEMENT
This Agreement constitutes the entire Agreement between the parties
pertaining to the subject matter hereof and may be amended or modified only by
an Instrument of equal formality signed by the duly authorized representatives
of the respective parties.
17. WARRANTIES
17.1-- Subject to the provisions hereof, STANFORD represents and
warrants that it has corporate power to extend the rights granted or to be
granted to AMOCO under this Agreement.
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28
17.2 -- Except as expressly set forth in this Agreement, STANFORD
MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE LICENSED PRODUCT(S)
WILL NOT INFRINGE ANY PATENT, COPYRIGHT TRADEMARK OR OTHER RIGHTS.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
duplicate originals by their duly authorized officers or representatives.
THE BOARD OF TRUSTEES OF THE
XXXXXX XXXXXXXX UNIVERSITY
By: /s/ Xxxxxxxxx Xx
---------------------------
Title: Acting Director
Technology Licensing
---------------------------
Date: 5/30/86
---------------------------
AMOCO CORPORATION
By: /s/ Illegible
---------------------------
Title: Director, Physical Technology
---------------------------
Date: 6/20/86
---------------------------
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29
EXHIBIT I
30
Stanford Patent License Agreement
File No.: RESCH2900F1C4
As you know, Amoco Corporation holds a non-exclusive license under certain
patents assigned to Stanford University. According to the license agreement,
dated March 1, 1986, the licensed patents include all patents of all countries
based upon U.S. Patent Application Serial Number 674,948 (filed November 26,
1984), and includes divisionals, continuations, and continuations-in-part (CIPs)
of this application.
As you may not know, the '948 application was abandoned, and four CPI
applications were filed based an the application. These four CPI applications
have issued as the following four patents (copies attached):
1. U.S. Patent No. 4,731,787 (Fan et al.), "Monolithic Phasematched Laser
Harmonic Generator", issued March 15, 1988;
2. U.S. Patent No. 4,739,507 (Xxxx et al.), "Diode End Pumped Laser and
Harmonic Generator Using Same", issued April 19, 1988;
3. U.S. Patent No. 4,764,933 (Kozlovsky et al.), "Diode Pumped Low Doped
ND3+ Glass Laser", issued August 16, 1988; and
4. U.S. Patent No. 4,809,291 (Xxxx et al.), "'Diode Pumped Laser and
Doubling to Obtain Blue Light", issued February 28, 1989.
31
STANFORD UNIVERSITY
OFFICE OF TECHNOLOGY LICENSING - 000 XXXXX XXXX, XXXXX 000
XXXX XXXX, XX 00000-0000
(000) 000-0000 FAX (41S) 000-0000
September 27, 1996
Xx. Xxxxx Xxxxxxx
Chairman and Chief Executive Officer
Laser Power Corporation
00000 Xxxx Xxxxx Xxxxx
Xxx Xxxxx, XX 00000
Re: Agreement Between STANFORD and AMOCO with Effective Date of March
1, 1986 ("Agreement"); Assignment thereof
Dear Xxxxx:
Under the terms of the Agreement, specifically Article 12 the
assignment of the Agreement to another party requires the prior written consent
of STANFORD except to a successor to substantially the whole of AMOCO's assets
in the field relating to lasers. It is our understanding that AMOCO's assets in
the field relating to lasers was acquired by ATX Telecom Systems, a company
located in Naperville, Illinois, whose parent is Scientific-Atlanta, Inc., a
company located in Norcross, Georgia (ATX/SAI).
It is our further understanding that ATX/SAI do not intend to
develop and market Licensed Product(s) under the Agreement, and are willing to
assign the Agreement to Laser Power Corporation. Laser Power Corporation plans
to develop and market Licensed Product(s).
As documented in Paragraph 1.3 of the Agreement, STANFORD
wishes to have the Invention(s) developed and marketed at the earliest possible
time in order that products resulting therefrom will be available for public use
and benefit. Therefore, this letter serves as STANFORD'S written consent for the
assignment of the Agreement from ATX/SAI to Laser Power Corporation as
negotiated between ATX/SAI and Laser Power Corporation.
Sincerely,
Xxxxxxxxx Xx
Director
cc: Xxxx Xxxxx (ATX/SAI)
EXHIBIT "B"
32
SECURITY AGREEMENT
THIS AGREEMENT is made this 30th day of 1996, between ATX Telecom Systems, Inc.,
a Delaware corporation, having a principal place of business at 0000 Xxxxxxxxx
Xxxx, Xxxxxxxxxx, Xxxxxxxx 00000 (hereafter "ATX"), and Laser Power Corporation,
an Delaware corporation, having a principal place of business at 00000 Xxxx
Xxxxx Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000 (hereafter "LPC"), in which the parties
agree as follows:
1 SECURITY INTEREST
In consideration of the grant of assignment of license ("License") to LPC by ATX
as set forth in the Assignment Agreement of even date herewith ("Assignment
Agreement") and for value received therein, LPC hereby grants to ATX a security
interest in the property described below ("Collateral") pursuant to Section 9101
(1996), California Uniform Commercial Code ("UCC"), to secure payment of minimum
royalties by LPC pursuant to the Assignment Agreement. The parties further
acknowledge the assignment of said License set forth in said Assignment
Agreement.
2. COLLATERAL
2.1 The Collateral consists of the following:
(a) All of LPC's present rights and additional rights as may be
agreed between the parties, as assigned under the Agreement
dated March 1, 1986 between THE BOARD OF TRUSTEES OF THE
XXXXXX XXXXXXXX JUNIOR UNIVERSITY ("STANFORD") and AMOCO
CORPORATION, revenue from assignment therefrom, and proceeds
of the foregoing assignment.
The foregoing is referred to herein as "Collateral."
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33
2.2 LPC hereby acknowledges that the License is a unique valuable
asset and further acknowledges that the License is a bona fide
business opportunity, and that LPC has been assigned the
License based upon ATX's determination that LPC has the unique
attributes necessary to maintain the value of the Licensed
Patents. LPC further acknowledges that the value of such
License is at least [ *** ]
3. FINANCING STATEMENTS
LPC represents, warrants and covenants that LPC has granted no other security
interest in the Collateral and that it has not filed or recorded any other
financing statement covering any of the Collateral or any proceeds thereof in
any public office. At the request of ATX, LPC shall execute and return within
thirty (30) days after submission, one or more financing statements pursuant to
the UCC in a form satisfactory to ATX, for filing and recordation in any and all
jurisdictions which are deemed necessary or desirable by ATX.
4. LOCATION OF DEBTOR AND COLLATERAL
4.1 The principal place of business of LPC is 00000 Xxxx Xxxxx
Xxxxx, Xxx Xxxxx, Xxxxxxxxxx 00000. If more than one principal
place of business for LPC exists, the executive offices of LPC
are located 00000 Xxxx Xxxxx Xxxxx, Xxx Xxxxx, Xxxxxxxxxx
00000 ("place of business"). LPC shall immediately notify ATX
in writing of any change in or discontinuance of the place or
places of business or executive offices of LPC as noted
herein.
4.2 LPC shall immediately notify ATX in writing of any change in
the location of books and records kept in accordance with the
terms of Paragraph 4.2 of the Assignment Agreement.
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* CONFIDENTIAL TREATMENT REQUESTED
34
5. POSSESSION AND USE OF COLLATERAL
Until default, LPC shall have the right to possess and use the Collateral
pursuant to terms of the Assignment Agreement or as otherwise agreed to between
LPC and STANFORD.
6. SALE OF COLLATERAL
Subject to the terms and conditions of the Assignment Agreement, LPC shall have
the power to utilize, sell, assign, encumber, transfer or otherwise dispose of
all Collateral only with the prior written consent of ATX.
7. ACCOUNTS
LPC shall provide accountings of its sales in accordance with Paragraphs 4.1 and
4.2 of the Assignment Agreement.
8. RIGHTS OF LPC in COLLATERAL
In reliance on the representations and warranties of ATX and Scientific-Atlanta
under the Assignment Agreement, LPC warrants and covenants that LPC has, and
will have at all times pertinent to this Agreement and the Assignment Agreement,
sole, unencumbered possession of and/or title to the Collateral and is the owner
of the Collateral free from any adverse liens, security interests, or
encumbrances, except for the security interest granted herein.
9. PROTECTION OF COLLATERAL
9.1 LPC shall notify ATX within a reasonable time if the validity
of any claim(s) contained within a Licensed Patent(s), as
defined in the Assignment Agreement, has been challenged in a
judicial proceeding and/or adjudicated invalid.
10. TAXES OR ENCUMBRANCES: REIMBURSEMENT
LPC shall pay promptly when due all taxes, assessments, liens or encumbrances
levied on or against the Collateral or for its use or operation whether
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35
by government action or pursuant under this Security Agreement or the Assignment
Agreement.
11. EXPIRATION DATE: OBLIGATIONS
The security interest in the Collateral shall be in force until the expiration
of the last to expire of the Licensed Patents as defined in the Assignment
Agreement, and upon said expiration date ATX shall provide a release of said
security interest and this Agreement.
12. DEFAULT
12.1 LPC shall be in default under this Security Agreement on the
happening of any of the following events or conditions.
(a) Delivery of Notice by ATX to LPC of any failure by
LPC to pay the minimum royalty due pursuant to
Paragraph 3.1 (c) of the Assignment Agreement by the
due date set forth in Paragraph 4.1 of the Assignment
Agreement, if the failure has not been cured within
fifteen (1 5) days after written notice from ATX.
(b) IF LPC (i) voluntarily files, or has filed against
it, any petition for bankruptcy, arrangement,
reorganization, liquidation or other protection under
any state or federal bankruptcy law or statute, and
such petition has not been discharged or dismissed by
the court within sixty (60) days after the filing
thereof; or (ii) makes an assignment for the benefit
of creditors, or agrees to the appointment of a
receiver, liquidator, or trustee with respect to all
or substantially all of its assets and/or properties;
or (iii) dissolves and/or winds-up its business or
otherwise ceases business operations.
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36
13. REMEDIES
13.1 On any default under Section 12.1 and at any time thereafter,
ATX may declare all obligations secured hereby immediately due
and payable and shall have the remedies of a secured party
under the UCC, and agrees to execute and/or foreclose on the
collateral only in accordance with the provisions of the UCC.
13.2 All expenses of retaking, holding, preparing for sale or
license, selling or licensing, or the like of the Collateral
incurred by ATX in accordance with the provisions of this
Agreement shall include reasonable attorney's fees and legal
expenses incurred by ATX, all of which shall become part of
the obligation after default and may be recovered by
disposition of the Collateral.
13.3 LPC shall have rights to retain the Collateral until execution
in accordance with the UCC as herein provided.
13.4 LPC acknowledges and agrees that in the event that ATX
properly executes on the Collateral in accordance with the
UCC, and the Collateral is not purchased by LPC, then the
Assignment Agreement shall be automatically terminated without
any further action or notice required to be taken or made and
all rights, obligations and other interests in the Amoco
License shall revert to ATX.
13.5 LPC acknowledges that upon LPC default pursuant to Section
12.1, and proper execution on the collateral by ATX in
accordance with the UCC, title in the collateral shall pass to
ATX and that ATX may, upon such default, prepare additional
documents, including but not limited to, assignment forms and
title paper as are necessary to perfect or prove ATX's title
to or ownership of the Collateral. LPC further grants ATX an
irrevocable Power of Attorney to execute the appropriate
documents herein in the event of LPC's failure or refusal to
execute and deliver such documents in accordance with this
Section.
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37
14. WAIVER
No waiver by ATX of any default shall operate as a waiver of any other default
or of a similar default on a future occasion.
15. CHOICE OF LAW
LPC and ATX hereby agree and designate the UCC and all other applicable
substantial laws of the State of California as the law to be applied in the
construction of this Agreement.
16. BINDING EFFECT
All rights of ATX hereunder shall inure to the benefit of its successors and
assigns and all obligations of LPC shall be binding on the legal
representatives, executors, administrators and successors of LPC.
17. EFFECTIVE DATE
This Agreement shall become effective on the date set forth in the first
paragraph of this Agreement.
18. MISCELLANEOUS
18.1 LPC shall, at the request of ATX, execute such documents which
ATX deems desired or required by the UCC and the laws of the
State of California to record or perfect the Security Interest
granted hereunder in accordance with the purposes of this
Agreement.
18.2 All rights and remedies provided herein and in the Assignment
Agreement are cumulative and are not exclusive of any rights
or remedies otherwise provided by law or in equity. Any simple
or partial exercise of any right or remedy shall not preclude
the further exercise thereof or the exercise of any other
right or remedy.
18.3 In the event that any provision or portion of any provision
contained in this Security Agreement shall for any reason be
held to be invalid, illegal
- 6 -
38
or unenforceable in any respect,
such invalidity, illegality or unenforceability shall not
affect any other term or provision and this Security Agreement
shall be interpreted and construed as if such term or
provision, to the extent the same shall have been held to be
invalid, illegal or unenforceable, had never been contained
herein.
18.4 This Agreement and the Assignment Agreement represents the
entire undertaking between the parties hereto with respect to
the subject matter hereof and supersedes all previous
representations, understandings, or agreements, oral or
written, between the parties with respect hereto (except the
companion Assignment Agreement). It may not be modified except
by a written instrument signed by the parties hereto.
EXECUTED AT ON THE DATE FIRST ABOVE WRITTEN.
DATE: 10/7/96 ATX Telecom Systems, INC.
NAME: /s/ Xxxxxx X. Xxxxxxx
----------------------------
TITLE: Vice President-Finance
----------------------------
DATE: 10/3/96 LASER POWER CORPORATION
NAME: /s/ Xxxxx X. Xxxxxxx
----------------------------
TITLE: Chairman and CEO
----------------------------
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