TECHNOLOGY LICENSE AGREEMENT
AGREEMENT (the "Agreement") made this first day of January, 1999,
by and between Xxxxxx, Inc., a Delaware corporation having a
place of business at Xxx Xxxxxxxx Xxxxxx, Xxxxxxxxxx, XX 00000
("Licensor"), and Xxxxxx Traffic Systems, Inc., a Delaware
corporation having a place of business at Xxx Xxxxxxxx Xxxxxx,
Xxxxxxxxxx, XX 00000 ("Licensee" and together with Licensor, the
"Parties" and each singularly a "Party").
W I T N E S S E T H:
WHEREAS Licensor is, or may become, the owner of certain
technology (the "Subject Technology") consisting of certain know-
how and trade secrets (the "Subject Know-How"), certain software
and other copyrighted or copyrighteable material (the "Subject
Software") and certain patents and patent rights (the "Subject
Patents"), all of which are more fully described in the schedule
to this Agreement (the "Schedule"); and
WHEREAS Licensee wishes to acquire an exclusive limited
license to use the Subject Technology but only in connection with
the development and manufacture by Licensee of the products (the
"Subject Products") described in the Schedule and to sublicense
the Subject Technology as part of its sale and/or license to
others of the Subject Products;
NOW, THEREFORE, in consideration of the mutual promises,
covenants and agreements herein contained and other good and
valuable consideration, the receipt, adequacy and sufficiency of
which is hereby acknowledged, the Parties hereby agree as
follows:
X. Xxxxx of License.
A. Subject to the provisions of this Agreement, Licensor
hereby grants to Licensee, and Licensee accepts, a personal,
nontransferable (except as set forth in paragraph VIII B) license
(the "License"), but only (i) to use internally to Licensee the
Subject Technology in connection with the development and
manufacture by Licensee of the Subject Products and (ii) to
sublicense the use of Subject Software and the Subject Patents to
others but only if each such sublicense is for, and a part of,
such third party's use or distribution of Subject Products and is
in full compliance with all of the terms and conditions of this
Agreement. Licensee shall not otherwise have any right to use,
modify, create derivative works from, sublicense, rent, lease,
assign or transfer any part of the Subject Technology and,
without limiting the foregoing, shall have no right to use the
Subject Technology to develop, manufacture and/or sell any
product other than a Subject Product. All rights not expressly
granted to Licensee in this paragraph I are reserved by the
Licensor.
B. Provided that the Licensee is in full compliance with all
of its duties and obligations under this Agreement and subject to
the minimum royalty provided in the next sentence, the License
shall be exclusive within the field-of-use of the development,
manufacture and sublicense of the Subject Products. If the total
royalty payment (including any voluntary payments made by
Licensee pursuant to the next sentence) for any Year of this
Agreement (as hereinafter defined), is less than applicable
Minimum Royalty (as hereinafter defined), the License shall
thereupon become and thereafter be non-exclusive. In any Year of
the Agreement in which the actual royalty paid is less than the
applicable Minimum Royalty, Licensee may on or before the last
day of such Year of this Agreement, but is not required to, pay
to Licensor an additional amount for the purpose of meeting the
applicable Minimum Royalty requirement.
C. Any sublicense of the License granted by Licensee must:
(i) comply with all the applicable terms and conditions
of this Agreement;
(ii) not involve, entail or require a disclosure of the
Subject Know-How and/or an assignment or transfer of any
right, title or interest in or to the Subject Technology,
provided, however, that Group B Subject Know-How (as defined
in Exhibit 1 to the Schedule) may be disclosed if and only
if such disclosure is (a) reasonable and for purposes within
the License, (b) not to a competitor of Licensor, (c)
subject to a confidentiality agreement no less protective
than the terms of paragraph VI of this Agreement and (d)
otherwise complies with all of the terms and conditions of
this Agreement;
(iii) be granted only within the scope and term of the
grant of the License and, unless permitted by paragraph VIII
B, be only for the use or distribution by the sublicensee of
Subject Products;
(iv) contain terms and conditions necessary to
effectuate the rights of the Licensor contained in
paragraphs V and VIII of this Agreement;
(v) be in a form, a copy of which has been previously
supplied to Licensor by the License;
(vi) must allow for a direct right of action by the
Licensor against the sublicensee for any breaches of the
sublicense effecting the Licensor or the Subject Technology;
(vii) comply with all applicable laws, rules and
regulations; and
(viii) be at the Licensee's sole risk and expense.
Licensee shall indemnify and hold harmless Licensor against and
in respect of any and all claims, suits, actions, proceedings
(formal and informal), losses investigations, judgments, defi
ciencies, damages, settlements, liabilities, and legal and other
expenses (including reasonable legal fees and expenses of
attorneys chosen by Licensor) as and when incurred arising out of
or based upon any sublicense or attempted or alleged sublicense
of the Subject Technology granted or allegedly granted by
Licensee.
D. Notwithstanding anything in this Agreement that could be
interpreted to the contrary, nothing herein is intended to or
shall restrict the royalty which Licensee may impose on a
sublicense or the price it may charge for a Subject Product.
E. The term "Minimum Royalty" shall mean (i) no dollars
($0.00) for the first two Years of this Agreement, (ii) one
hundred twenty-five thousand dollars ($125,000) for the third
Year of this Agreement (calendar year 2001), (iii) two hundred
fifty thousand dollars ($250,000) for the fourth Year of this
Agreement (calendar year 2002), (iv) five hundred thousand
($500,000) for the fifth Year of this Agreement (calendar year
2003), (v) seventh hundred fifty thousand dollars ($750,000) for
sixth Year of this Agreement (calendar year 2004) and (vi) one
million dollars ($1,000,000) for each year after the seventh Year
of this Agreement, adjusted as set forth in the remainder of this
paragraph in proportion to increases in the Consumer Price Index
from year to year during the term of this Agreement. For any Year
of this Agreement after the seventh Year in which the Consumer
Price Index (as measured on the first day of such Year) has
increased over that for the preceding Year of this Agreement (as
measured on the first day of such Year), the increase in the
Minimum Royalty shall be calculated by multiplying the Minimum
Royalty in effect for such preceding Year by the most recently
published Consumer Price Index as at such anniversary date and
dividing the resulting product by the Consumer Price Index as at
the preceding anniversary date of execution of this Agreement.
The Consumer Price Index shall be that Index as published by the
United States Government, or, if such Index is no longer
published by the United States Government, the index then
published which is most closely analogous to such Index. The term
"Year of this Agreement" shall mean the year starting on the date
hereof or any subsequent year starting on any anniversary date of
the date hereof.
II. New Technology, Patents, Know-how and Copyrights; Ownership,
Prosecution and Grant of Licenses.
A. If during the term of this Agreement either Party
develops any technology other than New Subject Technology (as
hereinafter defined), such technology shall be owned by the Party
developing it and such Party shall have no obligation to the
other Party arising therefrom. "New Subject Technology" is any
technology in the form of an invention, discovery, improvement or
otherwise made by the Licensee and arises out of the Group A
Subject Know-How (as defined in Exhibit 1 to the Schedule), Group
A Subject Software (as defined in Exhibit 2 to the Schedule)
and/or Group A Subject Patents (as defined in Exhibit 3 to the
Schedule).
B. The Licensee agrees to use its best efforts to keep the
Licensor regularly and fully informed (which shall include
sufficient information for the Licensor to be able to enjoy all
of the rights granted by this paragraph II), in writing with
respect to any New Subject Technology developed or discovered by
it.
C. All New Subject Technology shall belong exclusively to
the Licensor and to the maximum extent permitted by law be deemed
works for hire. Without limiting the foregoing, the Licensee
will, upon request by the Licensor but without cost or expense to
the Licensee, execute, or cause its employees to execute, all
instruments and documents necessary to secure for the Licensor
any form of protection or property right with respect to such New
Subject Technology, and the Licensee agrees to assign and
transfer to the Licensor upon request, the entire right, title
and interest therein and thereto.
D. All New Subject Technology shall during the term of this
Agreement be deemed licensed to Licensee under the License
subject to the terms and conditions of this Agreement.
E. The provisions of this paragraph II shall survive the
termination or expiration of this Agreement.
III. Royalties, Payment and Related Matters.
A. Licensee shall pay to Licensor during the term of this
Agreement the royalties as set forth in the Schedule. Royalties
or other payments hereunder shall be due and payable (i) thirty
(30) days after the end of the calendar quarter in which the
Subject Product in question was licensed, sold or otherwise
transferred or distributed by the Licensee or (ii) the royalty or
payment is otherwise due.
B. Licensee shall be liable and responsible for the
reporting of payment of all taxes and duties (except income taxes
accrued against Licensor) arising from this Agreement.
C. Licensee will keep such records as will enable the
royalties payable hereunder to be accurately determined by
Licensor. Such records will be retained by Licensee and made
available to Licensor or independent auditors selected by
Licensor for examination at the request and at the expense of
Licensor during reasonable business hours (but not more than once
in any Year of this Agreement) at that the offices of Licensee
set forth in the preamble to this Agreement for a period of at
least five (5) years after the date of the transactions to which
the records relate. Within thirty (30) days after the end of each
calendar quarter during the term of this Agreement, Licensee
shall deliver to Licensor a certificate of a duly authorized
officer of Licensee setting forth sufficient information to
calculate the royalty due for that quarter, including without
limitation, the gross revenues (as defined in the Schedule) for
Subject Products licensed during such calendar quarter. Licensee
shall pay the costs of any audit which determines that any such
certificate is understated by more than five per cent (5%).
IV. Infringement and Unauthorized Use.
A. Licensee shall notify Licensor as soon as possible(with
full particulars) of any infringement action threatened or
commenced by any third party relating to the use of the Subject
Technology by Licensee. Provided that (i) Licensee is and always
has been in full compliance with all of the terms and conditions
of this Agreement, (ii) Licensee has notified Licensor in writing
of any claim or action in which it is alleged that its use of the
Subject Technology infringes any United States patent, copyright
or trademark promptly after the date on which Licensee received
notice and/or knowledge thereof (but in any event sufficiently
before the first answer or other response therein is due to
provide Licensor with a reasonable amount of time to prepare and
file such answer or response) and (iii) Licensee shall fully
cooperate with Licensor in such settlement or defense, Licensor
shall immediately take control of the settlement of such claim
and the defense of any litigation resulting solely therefrom and
shall indemnify and hold Licensee harmless from the costs of such
settlement or defense and any judgement in such litigation. So
long as Licensee's right under and granted by this Agreement to
make and sublicense Subject Products is not thereby materially
diminished, Licensee shall permit Licensor at any time and from
time to time to (i) replace any part or parts of the Subject
Technology, or (ii) procure a license for Licensee to use same.
If, as a final result of any such litigation of which Licensor is
hereinbefore obligated to take control, the use by Licensee of
the Subject Technology is prevented by an injunction, Licensor
shall, at its sole option either (i) replace such parts of the
Subject Technology as have been enjoined, or (ii) procure a
license for Licensee to use same, or (iii) reimburse to Licensee
such part of the royalties Licensee previously paid pursuant to
this Agreement to Licensor therefor as may be fair and equitable
under the circumstances. Notwithstanding the foregoing, Licensor
assumes no obligation or liability for, and Licensee shall
indemnify and hold harmless Licensor against and in respect of
any and all claims, suits, actions, proceedings (formal and
informal), losses investigations, judgments, deficiencies,
damages, settlements, liabilities, and legal and other expenses
(including reasonable legal fees and expenses of attorneys chosen
by Licensor) as and when incurred arising out of or based upon,
(i) any actions or claims of infringement not relating
solely and exclusively to only the Subject Technology
standing alone, or
(ii) any actions or claims of trademark infringement
involving any marking or branding other than the Trademarks
(as that term is defined in a certain Trademark License
Agreement between the parties of even date herewith, the
"Trademark License Agreement"), or
(iii) any actions or claims arising out of or relating to
any modification of the Subject Technology, unless made by
Licensor, or
(iv) any actions or claims, in whole or in part, arising out
of or relating in any way to the Subject Products (excluding
those relating solely and exclusively to only the Subject
Technology standing alone) and/or any New Subject
Technology, or
(v) for any actions or claims involving the infringement of
any process patent other than those whose claims read on the
manufacture or use of the Subject Products.
This paragraph IV A. states the entire liability and obligation
of Licensor and the exclusive remedy of Licensee with respect to
any actions or claims of alleged infringement relating to or
arising out of the subject matter of this Agreement.
B. Licensee agrees to inform Licensor promptly of any
possible infringers or unauthorized users of the Subject
Technology of which Licensee obtains knowledge. Subject to the
provisions of paragraph IV C., Licensor, in its sole discretion,
shall determine what steps, if any, are to be taken with respect
to any infringement or unauthorized use of the Subject Technology
and any damages recovered shall be payable solely to Licensor.
Licensee agrees to fully cooperate with Licensor in all stages of
any such action. In no event shall Licensor be obligated
hereunder to commence legal proceedings. Licensee shall not
undertake any legal action or other steps of any kind to prevent
or restrain any such infringement or unauthorized use, or to
collect damages resulting therefrom, without the advance written
permission of Licensor.
C. If Licensee notifies Licensor of a possible infringer or
unauthorized user of the Group B Subject Technology, but then
only if such infringement or unauthorized use is for the making
using or selling of Subject Products using the Group B Subject
Technology (and does not include any Group A Subject Technology)
at a time when the License is exclusive, and Licensor fails to
take reasonable steps in response thereto, Licensee may, upon
fifteen (15) days advance written notice to Licensor, take such
action as is reasonable and lawful to prevent or restrain such
infringement or unauthorized use and to collect damages resulting
therefrom. In such an event, (i) Licensee shall be responsible
for the costs and expenses of such action and shall indemnify and
hold harmless Licensor against and in respect of any and all
claims, suits, actions, proceedings (formal and informal), losses
investigations, judgments, deficiencies, damages, settlements,
liabilities, and legal and other expenses (including reasonable
legal fees and expenses of attorneys chosen by Licensor) as and
when incurred arising out of or based upon any such action and
(ii) any damages recovered by Licensee shall be divided between
Licensee and Licensor as may be fair and equitable.
D. All of the provisions of this paragraph IV shall survive
any termination or expiration of this Agreement or License.
V. Warranties and Covenants.
A. Each Party does hereby warrant that it has full and sole
power, right and authority to enter into this Agreement, that
this Agreement has been duly and validly authorized and executed
by it and that this Agreement is the valid and binding obligation
of such Party.
B. Licensor warrants that, to the best of its knowledge, the
Subject Technology existing on the date hereof does not infringe
any United States patent, copyright or trademark of any third
party.
C. THE SUBJECT TECHNOLOGY IS LICENSED AS-IS. LICENSOR DOES
NOT WARRANT THAT THE SUBJECT TECHNOLOGY IS CAPABLE OF INDUSTRIAL
REALIZATION OR COMMERCIAL EXPLOITATION, THE RISKS OF WHICH ARE
BEING ASSUMED SOLELY BY LICENSEE, AND LICENSOR SHALL HAVE NO
RESPONSIBILITY FOR THE CONSEQUENCES OF ANY SUCH FAILURE OF
INDUSTRIAL REALIZATION OR COMMERCIAL EXPLOITATION. IT IS
UNDERSTOOD THAT LICENSOR IS NOT MAKING AND EXPRESSLY DISCLAIMS
ANY REPRESENTATIONS OR WARRANTIES THAT THE MANUFACTURE, USE, OR
SALE OF THE SUBJECT PRODUCTS WILL NOT INFRINGE THE PATENTS,
COPYRIGHTS, TRADEMARKS OR OTHER PROPRIETARY PROPERTY RIGHTS OF
ANY THIRD PARTY. LICENSOR MAKES NO WARRANTY OR GUARANTEE OF ANY
KIND WHATSOEVER, EITHER EXPRESS OR IMPLIED, INCLUDING WITHOUT
LIMITATION ANY WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE. IN NO EVENT WILL LICENSOR BE LIABLE FOR ANY
INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES ARISING OUT OF OR
RELATING IN ANY WAY TO THIS AGREEMENT, THE SUBJECT TECHNOLOGY OR
THE USE OF THE SAME (INCLUDING, WITHOUT LIMITATION, DAMAGES FOR
LOST INFORMATION, LOST SAVINGS, LOST PROFITS OR BUSINESS
INTERRUPTION), EVEN IF LICENSOR HAS BEEN INFORMED, IS AWARE, OR
SHOULD BE OR HAVE BEEN AWARE, OF THE POSSIBILITY OF SUCH DAMAGES.
IN NO EVENT WILL LICENSOR BE LIABLE IN DAMAGES OR OTHERWISE IN
EXCESS OF THE ROYALTIES RECEIVED BY LICENSOR FROM LICENSEE
HEREUNDER.
D. Licensee further understands, agrees and/or warrants
that:
(i) it does not intend to and will not make any use or
license of or involving the Subject Technology or any
Subject Product containing the Subject Technology in
violation of any applicable law, rule or regulation of the
United States, or any State of the United States or any
foreign country of applicable jurisdiction, including but
not limited to any United States law relating to exporting
or transfer of technology or of any regulation relating
thereto promulgated by an agency of the United States
Government;
(ii) it will not accept any purchase order or contract,
including without limitation any United States or foreign
government contract for sale or development of Subject
Products, that by its terms or by the operation of law will
abridge Licensor's rights in and/or to the Subject
Technology and all such orders or contracts will include
appropriate "restricted rights" and/or "limited rights"
legends in such form and substance as Licensor shall have
previously approved in writing;
(iii) it will obtain at its own cost any required export
licenses and it will not, without the advance written
permission of Licensor, use, transmit or transfer any
Subject Products, directly or indirectly, to any location
outside of the country shown in its address on the first
page of this Agreement, which permission will not be
unreasonably withheld in the event that Licensee
demonstrates to Licensor that it has obtained all required
export licenses;
(iv) it has all legal right to conduct its activities as
contemplated by this Agreement, including but not limited to
all necessary rights to develop, make and license the
Subject Products;
(v) Licensee assumes all responsibility and liability for
the selection of the Subject Technology to achieve the
results intended and for the installation of, use of and
results obtained by Licensee or any of its customers from
the Subject Technology or any Subject Product. In particular
but without limitation, Licensee shall indemnify and hold
harmless Licensor against and in respect of any and all
claims, suits, actions, proceedings (formal and informal),
investigations, judgments, deficiencies, damages, losses
settlements, liabilities, and legal and other expenses
(including reasonable legal fees and expenses of attorneys
chosen by Licensor) as and when incurred arising out of or
based upon any act or omission or alleged act or alleged
omission by Licensee in connection with the acceptance of,
or the performance or non-performance by Licensee of, any of
its warranties or duties under this Agreement.
E. All of the provisions of this paragraph V shall survive
any termination or expiration of this Agreement or License.
VI. Confidentiality.
A. Licensee agrees, acknowledges and covenants that the
Subject Know-How (whether oral, written or in machine-readable
form) disclosed to Licensee by Licensor pursuant to the
provisions of this Agreement contains valuable trade secrets and
other confidential and proprietary information, that unauthorized
use or disclosure of such Subject Know-how would irreparably
injure Licensor, which injury can not be remedied solely by the
payment of money damages (and Licensor shall thus be entitled to
an injunction to restrain such use or disclosure), and that
Licensee shall hold in strict confidence and not disclose,
reproduce or use the Subject Know-how with the exception of
information which: (i) is already in the public domain at the
time of disclosure; or (ii) after disclosure becomes a part of
the public domain by publication through action other than by
Licensee in violation of this Agreement or any other
confidentiality agreement between Licensee and Licensor (a
"Confidentiality Agreement"); or (iii) is received by Licensee
after the time of disclosure from a third-party who did not
require such information to be held in confidence and who did not
acquire, directly or indirectly through one or more
intermediaries, such information from Licensor under any
obligation of confidence; or (iv) is specifically agreed to by
Licensor in writing in advance of such publication, reproduction
or use. Licensee further agrees to disclose Subject Know-how only
to those of its employees who have a need to know same as
contemplated by the purposes of this Agreement and who are bound
to Licensee by confidentiality and proprietary property
agreements no less favorable to Licensee than this paragraph VI
is to Licensor.
B. Licensee agrees to inform Licensor promptly of any
possible unauthorized uses or disclosures of the Subject Know-how
of which Licensee obtains knowledge. Licensor, in its sole
discretion, shall determine what steps, if any, are to be taken
with respect to any such uses or disclosures and any damages
recovered shall be payable solely to Licensor. Licensee agrees to
fully cooperate with Licensor, at no cost to Licensor, in all
stages of any such action. In no event shall Licensor be
obligated hereunder to commence legal proceedings. Licensee
shall not undertake any legal action or other steps of any kind
to prevent or restrain any such use or disclosure, or to collect
damages resulting therefrom, without the advance written
permission of Licensor. Licensee shall indemnify and hold
harmless Licensor against and in respect of any and all claims,
suits, actions, proceedings (formal and informal), losses
investigations, judgments, deficiencies, damages, settlements,
liabilities, and legal and other expenses (including reasonable
legal fees and expenses of attorneys chosen by Licensor) as and
when incurred arising out of or based upon any such use or
disclosure if made by any employee of Licensee to whom Licensee
has made the Subject Know-how available.
C. The provisions of this Agreement shall not limit any
rights which Licensor may have under any Confidentiality
Agreement, whether in force before or after this Agreement. All
of the provisions of this paragraph VI shall survive any
termination or expiration of this Agreement or License.
VII. Expiration or Termination.
A. This Agreement and the License shall expire on the later
of (i) the last date of expiration of any patent or copyright
licensed under the License or (ii) the date all Subject Know-How
becomes part of the public domain. This Agreement and the License
shall immediately terminate if Licensee liquidates, dissolves,
shall be adjudicated insolvent, files a petition in bankruptcy or
for reorganization, has filed against it a petition in bankruptcy
or for reorganization and such petition is not dismissed within
one hundred and twenty (120) days of the date of filing, takes
advantage of any insolvency act or proceeding, including an
assignment for the benefit of creditors, or commits any other act
of bankruptcy.
B. Either Party may terminate this Agreement and the
License by written notice to the other Party, if such other Party
shall default in the payment or performance of any of its
obligations hereunder and such default continues for at least
thirty (30) days after notice thereof. Licensor may terminate
this Agreement and the License upon written notice to License
delivered within one hundred twenty (120) days after the end of
any Year of This Agreement, if the amount of royalties paid by
Licensee to Licensor hereunder for such Year of This Agreement is
less than ten per cent (10%) of the applicable Minimum Royalty
for such Year of This Agreement.
C. Provided it is then not in breach of this Agreement,
Licensee may terminate this Agreement and the License on any
anniversary date of the date hereof by delivering to Licensor
ninety (90) days advance written notice of such termination.
D. Notwithstanding any termination or expiration of this
Agreement, the License shall continue in effect with respect to
any Subject Products manufactured and sold by Licensee prior to
termination; and Licensee shall remain liable to Licensor for
royalties accruing with respect to deliveries of, or sales or
contracts entered into with respect to, such Subject Products.
E. Termination or expiration of this Agreement and the
License shall not release Licensee from any of its obligations or
liabilities accrued or incurred hereunder, or rescind or give
rise to any right to rescind any payment made or other
consideration given to either hereunder. Upon termination or
expiration of this Agreement and the License, Licensee shall
cease all marketing and other activities under the License and
shall (at Licensor's election) immediately deliver to Licensor or
irretrievably destroy, or cause to be so delivered or destroyed,
any and all copies of the Subject Technology in whatever form,
any Subject Products containing any Subject Technology and any
written, machine readable or other materials relating to any of
the foregoing or containing any Subject Technology in Licensee's
possession, custody or control (other than those Subject Products
on which the royalty has been previously paid).
VIII. Miscellaneous.
A. Subject to Licensor's advance written permission (which
permission shall not be unreasonably withheld) Licensee may, and
at Licensor's request, Licensee shall, cause all Subject
Products, related software, documentation, packaging,
advertisements of any kind and other material of any kind which
relate to, or include the Subject Technology or products
containing the Subject Technology, as the case may be, to be
marked and labeled with and/or include appropriate reference to
the Licensor's patent rights, copyrights, trademarks, service
marks and/or trade names in the form and style furnished by
Licensor to Licensee. Licensee shall permit Licensor to make, at
any time and from time to time, reasonable inspections of
Licensee's facilities and Subject Products, but Licensor shall
not be liable to Licensee or others for its failure to do so or
for any defects which it discovers or would or could have
discovered by so doing. Licensee shall not otherwise use or make
reference to such patent rights, mask rights, copyrights,
trademarks, service marks or trade names of Licensor without the
advance written permission of Licensor. Licensor may, at any time
and from time to time, in its sole discretion, alter or revoke
its instructions to Licensee pursuant to this paragraph.
B. Neither this Agreement, the License or other interest
hereunder shall be assignable by Licensee, nor may Licensee
sublicense the right to make Subject Products with the Group A
Subject Technology, without the prior written consent of the
Licensor, which consent may be withheld in Licensor's sole
discretion if such proposed assignment or sublicense is to a then
competitor of Licensor (exclusive of third-parties whose only
competitive product(s) is the same as, or substantially the same
as, a Subject Product) but shall not otherwise be unreasonable
withheld, conditioned or delayed. For the purpose of the
foregoing sentence a change in economic or voting control of
Licensee (other than one which is agreed to by Licensee at a time
when Licensor had economic and voting control of Licensee) shall
be deemed to be an assignment of this Agreement and the Licensee.
Subject to the foregoing, this Agreement shall inure to the
benefit of and be binding upon the Parties' successors.
C. The headings and captions used in this Agreement are for
convenience only and are not to be used in the interpretation of
this Agreement.
D. The failure of either Party to require performance of any
provision of this Agreement shall not affect the right to
subsequently require the performance of such or any other
provision of this Agreement. The waiver of either Party of a
breach of any provision shall not be taken or held to be a waiver
of any subsequent breach of that provision or any subsequent
breach of any other provision of this Agreement.
E. The Parties are independent contractors and engage in the
operation of their own respective businesses. Neither Party is
the agent or employee of the other Party for any purpose
whatsoever. Nothing in this Agreement shall be construed to
establish a relationship of co-partners or joint venturers
between the two Parties. Neither Party has the authority to enter
into any contracts or assume any obligations for the other Party
or to make any warranties or representations on behalf of the
other Party.
F. If any provision of this Agreement is, or is determined
to be, invalid, illegal or unenforceable, all remaining
provisions of this Agreement shall nevertheless remain in full
force and effect, and no provision of this Agreement shall be
deemed to be dependent upon any provision so determined to be
invalid, illegal or unenforceable unless otherwise expressly
provided for herein. Should any provision of this Agreement be
found or held to be invalid, illegal or unenforceable, in whole
or in part, such provision shall be deemed amended to render it
enforceable in accordance with the spirit and intent of this
Agreement.
G. This Agreement has been entered into, delivered and is to
be governed by, construed, interpreted and enforced in accordance
with the laws of the State of New York (without giving reference
to choice-of-law provisions) from time to time in effect.
H. If a dispute arises out of or relates to this Agreement,
the License, a breach thereof or Licensee's use of the Subject
Technology, and if said dispute cannot be settled through direct
discussions, such dispute shall be settled by arbitration before
three neutral arbitrators (selected from a panel of persons
having experience with and knowledge of the electronics business,
at least one of which three arbitrators shall be an attorney) in
New York City and administered by the American Arbitration
Association in accordance with its Commercial Arbitration Rules.
Any provisional or equitable remedy which would be available from
a court of law shall be available from the arbitrators to the
Parties. In any such proceeding limited civil discovery shall be
permitted for the production of documents, which shall be
governed by the Federal Rules of Civil Procedure (without
reference to any local rules of a particular court). All issues
regarding discovery requests shall be decided by the arbitrators.
Judgment upon the award of the arbitrators may be enforced in any
court having jurisdiction thereof. In that regard the Parties
hereby consent to (a) the jurisdiction of the courts of the State
of New York or to any Federal Court located within the State of
New York for any action (i) to compel arbitration, (ii) to
enforce the award of the arbitrators or (iii) at any time prior
to the qualification and appointment of the arbitrators, for
temporary, interim or provisional equitable remedies and (b)
service of process in any such action by registered mail, return
receipt requested, or by any other means provided by law.
I. With the exception of the Trademark License Agreement,
this Agreement contains the entire and exclusive agreement of the
Parties with respect to its subject matter. This Agreement
supersedes any agreements and understandings, whether written or
oral, entered into by the Parties hereto prior to the effective
date of this Agreement and relating to the subject matter hereof.
J. No modification or amendment of this Agreement shall be
effective unless it is stated in writing, specifically refers to
this Agreement and is executed on behalf of each Party.
K. Except as otherwise specified, all notices, payments,
certificates and reports hereunder shall be deemed given and in
effect as of the date of mailing, when sent by express mail (or
other overnight delivery service), postage prepaid, addressed to
the Parties as set forth in the preamble to this Agreement
directed in each case to the President of the Party receiving the
notice or to such other addresses as the Parties may from time to
time give written notice of as herein provided.
L. Neither Party hereto shall be liable to the other for
failure or delay in meeting any obligations hereunder as the
result of strikes, lockouts, war, Acts of God, fire, flood,
embargo or acts of government, if beyond the control of such
Party.
M. Licensor hereby agrees to sell to Licensee at Licensee's
request such amount of semiconductor chips know as the Ni1000
(the "Chips") as Licensee may request and Licensor may then have
available for delivery. All such sales shall be "AS IS", at
Licensor's fully allocated direct costs for the Chips in question
(except as provided in the remainder of this paragraph) and
subject to such other terms and conditions as the Parties may
then agree. For and during the first five (5) Years of this
Agreement, Licensor shall notify Licensee in writing at least
fifteen (15) days prior to the date it proposes to sell any Chips
to any third party, which notice shall contain the price at which
such sale is to be made; provided, however, that Licensor may
after the date of this Agreement make sales of Chips to any third
party or parties without so notifying Licensee so long as such
sales are for less than one hundred one (101) Chips in the
aggregate. For any sale which Licensor has so notified Licensee,
Licensee shall have fifteen (15) days from the date of such
notice to notify Licensor in writing the it desires to purchase
such Chips at such price, in which case Licensor shall sell such
Chips to Licensee. If Licensee does not so elect to purchase such
Chips, Licensor may sell such Chips to such third party.
IN WITNESS WHEREOF, the Parties hereto have set their
hands by their duly authorized representatives as of the day and
year first above written.
XXXXXX, INC. XXXXXX TRAFFIC SYSTEMS, INC.
By: By:
Name: Name:
Title: Title:
SCHEDULE
TO
TECHNOLOGY LICENSE AGREEMENT
The following technology is hereby defined as the Subject
Technology:
The Subject Know-How:
Certain know-how and trade secrets owned by Licensor relating to
RCE and PRCE neural networks and/or object identification and
tracking in video and other data streams, which includes but is
limited to (i) the source code for the Subject Software and (ii)
the know-how and trade secrets listed in Exhibit 1 to this
Schedule.
The Subject Software:
Certain software owned by Licensor for RCE and PRCE neural
networks and/or object identification and tracking in video and
other data streams which is listed in Exhibit 2 to this
Schedule.
The Subject Patents:
Certain patents, patent applications owned by Licensor relating
to RCE and PRCE neural networks and/or object identification and
tracking in video and other data streams which are listed in
Exhibit 3 to this Schedule.
The Subject Technology shall include know-how, software and
patents developed by Licensor after the date hereof if and only
if (i) such know-how, software or patents are improvements,
modifications and/or extensions of the Subject Technology
(including any New Subject Technology) and (ii) Licensor is not
legally prohibited from licensing such know-how, software and/or
patents to Licensee.
The following products are hereby defined as the Subject
Products:
Any product whose function is materially and principally (i) the
analysis of video and other sensors to analyze, monitor and
respond to movement and patterns of persons or objects in
vehicular, rail, air or other modes of transportation or (ii) the
support of the foregoing.
The following is the schedule of royalties as provided in
paragraph III of the Agreement:
All royalties shall be calculated on the gross margin (gross
revenue less direct third-party costs of goods sold) Licensee in
any way receives from, in connection with, relating to or arising
out of, in whole or in part, Subject Products (or other products
or services marketed or sold with or in connection with Subject
Products) so long as such Subject Products contain, incorporate,
use or arise out of or in connection with the Subject Technology.
The Royalty Rate for calendar year 1999 is zero percent (0%).
The Royalty Rate for calendar year 2000 is five percent (5%).
The Royalty Rate for calendar year 2001 and thereafter is ten
percent (10%).
