[EXHIBIT 10.38- Certain portions of this document have been
omitted in the publicly filed version of this document pursuant
to the Registrant's request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Omitted confidential information is indicated in brackets in this
Exhibit.]
SPD FILM LAMINATION LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
PILKINGTON PLC
This License Agreement ("Agreement") effective as of March
25, 2004 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
PILKINGTON PLC, a corporation organized under the laws of
the United Kingdom (hereinafter called "LICENSEE"). The
"Effective Date" of this Agreement shall be the date which is the
last date of formal execution of this Agreement by duly
authorized representatives of the parties to this Agreement as
indicated on the signature page of this Agreement.
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to
Light Valves and Light Valve Film (all as hereinafter defined)
and of methods and apparatus relating to products incorporating
such concepts (which products, can include, without limitation
thereto, windows for buildings and vehicles, sunvisors,
sunroofs, flat panel displays, eyewear and rear-view mirrors);
and is possessed of and can convey information and know-how
for such products and rights to manufacture, use and sell such
products; and
WHEREAS, LICENSEE and its Affiliates are interested in
laminating Light Valve Film to glass or plastic ("Laminated
Light Valve Film") and providing such Laminated Light Valve
Film to other licensees of LICENSOR; and
WHEREAS, LICENSEE and its Affiliates desire to acquire from
LICENSOR, and LICENSOR desires to grant to LICENSEE
and its Affiliates, certain rights and licenses with respect to such
technology of LICENSOR;
NOW, THEREFORE, in consideration of the promises and the
mutual covenants herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows.
1 DEFINITIONS
1.1 The following terms when used herein shall have
the respective meanings set forth in this Article 1.
"Affiliates" means Pilkington Automotive Limited, Pilkington
Technology Management Limited and Pilkington United
Kingdom Limited.
"Authorized User" means LICENSOR and/or any other person
or entity listed by LICENSOR on Schedule B hereof who has
been granted permission by LICENSOR to receive Laminated
Light Valve Film from LICENSEE under this Agreement.
LICENSEE agrees that LICENSOR in its sole judgment may
amend Schedule B hereof at any time during the term of this
Agreement for any reason by sending LICENSEE a written
notice of such amendment and specifying the reason for such
change. The persons or entities now or hereafter listed on
Schedule B may not include all of LICENSOR's current
licensees and may include prospective licensees of LICENSOR,
and for legal or practical reasons, LICENSOR may restrict
whether or not Laminated Light Valve Film laminated by
LICENSEE may be sold, leased or transferred to such person or
entity, and/or the application that such Laminated Light Valve
Film may be used for by the recipient. LICENSEE agrees that it
and its permitted sublicensees hereunder shall cease all sales,
leases, or other dispositions of Laminated Light Valve Film to
any person or entity whose name is deleted from Schedule B by
LICENSOR, unless and until LICENSOR consents in writing to
the resumption of such sales, leases or other dispositions (a)
immediately upon receipt of any written notice from
LICENSOR that any person or entity is no longer included on
Schedule B, or (b) if either LICENSEE or its permitted
sublicensees becomes aware that any such person or entity listed
on Schedule B or otherwise receiving Laminated Light Valve
Film is making any improper use of such Laminated Light Valve
Film, in which case LICENSEE shall promptly notify
LICENSOR of such improper use.
"Licensed Territory " means all countries of the world.
"Light Valve" means a variable light transmission device which
has been developed by LICENSOR and in respect of which the
patents and patent applications listed on Schedule A and the
Technical Information of LICENSOR apply comprising: a cell
including cell walls, containing or adapted to contain an
activatable material, described hereinafter, such that a change in
the optical characteristics of the activatable material affects the
characteristics of light absorbed by, transmitted through and/or
reflected from the cell; means incorporated in the cell, or
separate therefrom for applying an electric or magnetic field to
the activatable material within the cell; and coatings, (including,
but not limited to, electrodes), spacers, seals, electrical and/or
electronic components, and other elements incorporated in the
cell. The activatable material, which the cell contains or is
adapted to contain, includes in it solid suspended particles,
which when subjected to a suitable electric or magnetic field,
orient to produce a change in the optical characteristics of the
device, and may be either in the form of a liquid suspension, gel,
film or other material.
"Light Valve Film" means a film or sheet or more than one
thereof comprising a suspension of particles used or intended for
use solely in or as a Light Valve, which has been developed by
LICENSOR and in respect of which the patents and patent
applications listed on Schedule A and the Technical Information
of LICENSOR apply and such Light Valve Film shall comprise
either (a) a suspension of particles dispersed throughout a
continuous liquid phase enclosed within one or more rigid or
flexible solid films or sheets, or (b) a discontinuous phase of a
liquid comprising dispersed particles, said discontinuous phase
being dispersed throughout a continuous phase of a rigid or
flexible solid film or sheet, and such Light Valve Film may also
comprise one or more other layers such as, without limitation, a
film, coating or sheet or combination thereof, which may
provide the Light Valve Film with (1) scratch resistance, (2)
protection from ultraviolet radiation, (3) reflection of infrared
energy, and/or (4) electrical conductivity for transmitting an
applied electric or magnetic field to the activatable material, in
each case which has been developed by or for LICENSOR and
in respect of which the patents and patent applications listed on
Schedule A and the Technical Information of LICENSOR apply.
"Laminated Light Valve Film" shall mean Light Valve Film
which has been laminated by or for LICENSEE or its
sublicensees or subcontractors to a rigid material such as glass
or plastic.
"Technical Information" means all useful information relating to
apparatus, methods, processes, practices, formulas, techniques,
procedures, patterns, ingredients, designs and the like including
(by way of example) drawings, written recitations of data,
specifications, parts, lists, assembly procedures, operating and
maintenance manuals, test and other technical reports, know-
how of LICENSOR, and the like owned or controlled by
LICENSOR, to the extent they exist, that relate to Light Valves
or Light Valve Film and that consist of concepts invented or
developed by LICENSOR and which are deemed significant by
LICENSOR. Know-how of LICENSOR's suppliers and of
LICENSOR's other licensees and their sublicensees under
licenses from LICENSOR shall not be considered Technical
Information owned or controlled by LICENSOR.
1.2 "LICENSEE" where used throughout this Agreement shall
be deemed to mean any or all of Pilkington plc and the Affiliates
together.
1.3 References to Sections and to Schedules shall be to the
sections and schedules of this Agreement except where
expressly stated otherwise.
2 GRANT OF LICENSE
2.1 License During the term of this Agreement,
LICENSOR hereby grants LICENSEE a non-exclusive right and
license to use (a) all of the Technical Information, if any,
(subject to Section 8.1 hereof), furnished by LICENSOR
pursuant to this Agreement, and (b) any invention claimed in (i)
any of the unexpired patents now or hereafter listed on Schedule
A attached hereto or (ii) unexpired patents which issue from
pending patent applications now or hereafter listed in Schedule
A, and any continuations, continuations-in-part, divisions,
reissues, reexaminations, or extensions thereof to (a) laminate
Light Valve Film obtained by LICENSEE from suppliers of
such Light Valve Film authorized to supply such Light Valve
Film to LICENSEE, and to provide such Laminated Light Valve
Film solely to an Authorized User in the Authorized User's
permitted territory and for the applications specified and
purpose permitted on Schedule B hereof and (b) carry out the
testing, evaluation, development and other activities more
particularly described in Section 4.1. The license granted
pursuant to this Section 2.1 shall be royalty-free to LICENSEE
and its permitted sublicensees hereunder. By virtue of the
disclosure of Technical Information and training, if any,
provided by LICENSOR under this Agreement, all Laminated
Light Valve Film sold, leased or otherwise disposed of by or for
LICENSEE hereunder shall be deemed to have been
manufactured at least in part using the Technical Information
provided by LICENSOR. The foregoing license is only a
license with respect to the lamination and disposition of
Laminated Light Valve Film and nothing contained in this
Agreement shall permit LICENSEE to make, sell, use or
otherwise dispose of other Light Valve products, including
Light Valves and Light Valve Film and components thereof.
2.2 No Other Rights LICENSEE agrees that, except for
the specific licenses granted to it under Section 2.1 hereof,
LICENSEE has not acquired any rights or licenses under this
Agreement to use Light Valves or Light Valve Film or any
components thereof made by or for LICENSEE pursuant to this
Agreement.
2.3 Sublicenses LICENSEE shall have the right to grant
non-exclusive sublicenses to any wholly-owned and controlled
subsidiary of LICENSEE, whose obligations to LICENSOR
hereunder LICENSEE hereby guarantees, and which
acknowledges to LICENSOR in writing that it wishes to become
a sublicensee hereunder prior to doing so and agrees to be
bound by the terms and conditions of this Agreement. All
sublicenses shall (i) be non-exclusive, (ii) shall terminate with
the termination of the rights and licenses granted to LICENSEE
under Section 2.1 hereof, and be otherwise limited in
accordance with the limitations and restrictions which are
imposed on the rights and licenses granted to LICENSEE
hereunder, (iii) contain confidentiality provisions no less
protective than those contained in Section 12.1 hereof, and (iv)
shall contain such other terms, conditions, and licenses as are
necessary to enable LICENSEE to fulfill its obligations
hereunder. LICENSEE shall send LICENSOR a copy of every
sublicense agreement or other agreement entered into by
LICENSEE in connection with a sublicense hereunder within
thirty (30) days of the execution thereof. LICENSOR may
terminate any such sublicense if there is any change in the
ownership or control of a sublicensee.
3 REPORTS AND RECORD-KEEPING
3.1 Reports Within 15 days after the end of each quarter
ended 31 March, 30 June, 30 September and 31 December in
each year during the term of this Agreement, LICENSEE shall
send to LICENSOR a report setting forth in reasonable detail
the quantity of Light Valve Film purchased or otherwise
obtained by LICENSEE and the quantity of Laminated Light
Valve Film sold, leased, disposed of, or delivered by or for
LICENSEE and its sublicensees during such quarter to
Authorized Users and samples provided to third parties with
LICENSOR's consent, with the amounts sold or otherwise
provided to each Authorized User, including sample recipients,
and their identity clearly broken down. The first report
submitted under this Agreement shall cover the period from the
Effective Date of the Agreement to the end of the first quarter in
which Light Valve Film is obtained or Laminated Light Valve
Film is sold, or otherwise disposed of by LICENSEE hereunder.
LICENSEE shall also furnish to LICENSOR at the same time it
becomes available to any third party, a copy of each brochure,
standard price list, advertisement or other marketing and
promotional materials prepared, published or distributed by
LICENSEE or its sublicensees relating to Laminated Light
Valve Film.
3.2 Recordkeeping. LICENSEE shall keep and shall cause
each sublicensee to keep for six (6) years after the date of
submission of each report supported thereby, true and accurate
records, files, data and books of accounts that relate to the
acquisition, processing, lamination, sale or other disposition of
Laminated Light Valve Film, reasonably required for the full
computation and verification of the information to be given in
the statements herein provided for. LICENSOR and LICENSEE
agree that an independent certified public accounting firm
(selected by LICENSOR from the largest ten certified public
accounting firms in the United States of America or the United
Kingdom) may audit such records, files and books of accounts
to determine the accuracy of the statements given by LICENSEE
pursuant to Section 3.1 hereof. Such an audit shall be made
upon reasonable advance notice to LICENSEE and during usual
business hours. The cost of the audit shall be borne by
LICENSOR, unless the audit shall disclose a material breach by
LICENSEE of any term of this Agreement, or an inaccuracy
greater than 2% in any report provided to LICENSOR by
LICENSEE, during the audited period, in which case
LICENSEE shall bear the full cost of such audit. The results of
the audit shall be kept confidential pursuant to the provisions of
Section 12.1 except to the extent required by a party hereto to
enforce its rights hereunder, or which is otherwise required to be
disclosed by law or under generally accepted accounting
principles.
4 OBLIGATIONS OF LICENSOR AND LICENSEE
4.1 Development of Laminated Light Valve Film As
licensed in Section 2.1, LICENSEE may:
(1) laminate Light Valve Film for the purposes of carrying out
the activities hereinafter set out at this section;
(2) test and evaluate Light Valve Film and Laminated Light
Valve Film for the purposes of assessing its use and
commerciality as an end product to be sold to customers;
(3) carry out such steps as may be required to understand and
develop methods of processing of Light Valve Film and
Laminated Light Valve Film;
(4) work with authorized suppliers of Light Valve Film and/or
with LICENSOR to evaluate and optimize Light Valve
Film's and Laminated Light Valve Film's manufacturing
parameters and to assess and improve the performance of
Light Valve Film and Laminated Light Valve Film (except
that nothing in this subsection shall oblige LICENSEE to
do so).
4.2 LICENSOR Purchases Upon request of LICENSOR
and with reasonable prior notice, LICENSEE shall sell and
deliver to LICENSOR, Laminated Light Valve Film or
components thereof at LICENSEE's prevailing market prices
and in quantities mutually agreed upon by LICENSOR and
LICENSEE, except that nothing in this Section shall oblige
LICENSEE to do so where price or quantities cannot be agreed.
LICENSEE acknowledges that LICENSOR and its present
and/or future licensees (or entities who have been granted the
option of entering into license agreements with LICENSOR)
may independently manufacture (or have third parties
manufacture or laminate for them) and sell Light Valve Film
under the terms of agreements between them and LICENSOR,
or may independently manufacture, laminate and sell Light
Valve Film which LICENSOR produces, or has produced on its
behalf. Nothing contained in this Agreement shall impose any
obligation on LICENSOR or any other parties to purchase any
Laminated Light Valve Film from LICENSEE or impose any
obligation on LICENSEE to sell any Laminated Light Valve
Film to any third party. Notwithstanding anything contained
herein to the contrary, during the term of this Agreement
LICENSOR may provide Laminated Light Valve Film obtained
by LICENSOR pursuant to this Section 4.2 to third parties so
long as LICENSOR does not receive from the recipient for the
provision of such Laminated Light Valve Film any monetary
payment in excess of LICENSOR's purchase price plus
shipping, administrative, overhead and related costs to such
recipient.
4.3 Compliance LICENSEE agrees that, without
limitation, any manufacture, sale, lease, use or other disposition
of Laminated Light Valve Film by LICENSEE that is not in
strict accordance with (1) the provisions of this Agreement, (2)
restrictions on the type of product, or the territory in which such
product may be, made, used, sold or otherwise disposed of by or
for an Authorized User where LICENSEE is made aware of
such territory into which such product will be sold, used or
otherwise disposed of prior to delivery of the same to such
Authorized User, or other provisions or restrictions, which are
contained in any other agreement in force between LICENSOR
and an Authorized User which is known to LICENSEE which
relates to Light Valves, Light Valve Film, or components
thereof, or (3) with the provisions of any other agreement then
in force to which LICENSEE is a party and which relates to
Light Valves, Light Valve Film, or components thereof shall be
deemed a material breach of this Agreement. For the avoidance
of doubt, no act or omission of LICENSOR or any Authorized
User with respect to Laminated Light Valve Film produced by
LICENSEE shall be deemed a material breach of this Agreement
by LICENSEE.
4.4 End Users LICENSEE agrees to require all direct
recipients of Laminated Light Valve Film to whom Laminated
Light Valve Film is sold, leased, provided to, or otherwise
disposed of by LICENSEE or its sublicensees, to not look to
LICENSOR or its affiliates for any claims, warranties, or
liability relating to such Laminated Light Valve Film.
LICENSEE agrees to take all steps to reasonably assure itself
that Laminated Light Valve Film sold, leased or otherwise
disposed of by or for LICENSEE is being used for permitted
application and territory only, insofar as it may be reasonably
possible to do so. If a party which is not then listed on Schedule
B hereto wishes to obtain samples of Laminated Light Valve
Film or to purchase Laminated Light Valve Film from
LICENSEE, LICENSEE shall notify LICENSOR and shall refer
such party to LICENSOR. If such party enters into a suitable
agreement with LICENSOR, LICENSOR shall inform
LICENSEE whether such party may then obtain samples of
Laminated Light Valve Film from LICENSEE.
4.5 Laws and Regulations LICENSEE agrees that it shall
be solely responsible for complying with all laws and
regulations affecting, and obtaining all approvals necessary from
governmental agencies and other entities required in respect of,
the processing, use and sale or other disposition of Laminated
Light Valve Film by LICENSEE and its sublicensees.
LICENSEE agrees to maintain a file of all such approvals and to
send LICENSOR a copy of all such approvals (including
English translations thereof in the case of approvals required by
any foreign country) within 10 business days of any written
request for such copies by LICENSOR. LICENSEE represents
and warrants to LICENSOR that no approval from any
governmental agency or ministry, or from any third party, is
required for LICENSEE to effectuate the terms of this
Agreement or the transactions contemplated hereby.
4.6 Purchase of Components from Others By virtue of the
disclosure of Technical Information, other information, and
training, if any, provided from time to time by LICENSOR to
LICENSEE and to its other licensees, and each of their
sublicensees and affiliates, any component of a Light Valve,
including, without limitation, materials, suspensions, films,
polymers, coatings, particle precursors, and particles (each, a
"Component"), which LICENSEE or its sublicensees makes, has
made for it, or purchases from any third party for use in
Laminated Light Valve Film shall be deemed to have been
manufactured at least in part using the Technical Information
provided by LICENSOR if LICENSEE or any supplier of a
Component to LICENSEE has had access to Technical
Information of any kind of LICENSOR or its licensees and their
sublicensees, consultants, subcontractors, agents or
representatives. LICENSEE and its sublicensees each hereby
agrees that (i) all Light Valve Film and Components shall be
used only in strict accordance with the provisions of this
Agreement, and that such Light Valve Film and Components
may not be used for any other purpose or resold by LICENSEE
or its sublicensees except as specifically permitted by the license
granted in Section 2.1 hereof, and (ii) LICENSEE and its
sublicensees will only look to the manufacturer or supplier of
such Light Valve Film or Component or other item used by
LICENSEE or its sublicensees and not to LICENSOR or its
affiliates for any claims, warranties, or liability relating to such
Light Valve Film or Component or other item. LICENSEE
acknowledges that LICENSOR has not made any
representations or warranties regarding the availability of any
Light Valve Film or Component, or the price thereof, and that in
all respects LICENSEE shall deal directly with the suppliers of
such Light Valve Film or Components and will obtain from
them information regarding availability, pricing, and/or other
terms relating to such Light Valve Film or Components.
4.7 No Warranties by LICENSOR LICENSOR does not
represent or warrant the performance of any Light Valve Film,
material, Component, or information provided hereunder, and
LICENSEE expressly acknowledges and agrees that any such
Light Valve Film, material, Component or information provided
by LICENSOR hereunder is provided "AS IS" and that
LICENSOR makes no warranty with respect thereto and
DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED
(other than those specifically contained in Article 13),
INCLUDING BUT NOT LIMITED TO THE IMPLIED
WARRANTIES OF MERCHANTABILITY AND FITNESS
FOR A PARTICULAR PURPOSE, WITH RESPECT
THERETO, ITS USE OR ANY INABILITY TO USE IT, OR
THE RESULTS OF ITS USE. Except for any breach of the
terms of this Agreement, in no event shall any party to this
Agreement be liable for any damages, whether in contract or tort
(including negligence), including but not limited to direct,
consequential, special, exemplary, incidental and indirect
damages, arising out of or in connection with this Agreement or
the use, the results of use, or the inability to use any Light Valve
Film, material, Component or information provided hereunder.
4.8 Analysis LICENSEE represents and agrees that it will
only incorporate Light Valve Film and Components received
from authorized suppliers during the term of this Agreement into
Laminated Light Valve Film and for no other purpose except as
may be specifically permitted under Sections 2.1 and 4.1, and
that LICENSEE will not directly or indirectly attempt to
reverse-engineer any material provided to it hereunder by
LICENSOR or any supplier of any Component or of Light
Valve Film.
4.9 Inventory. LICENSEE agrees that it shall purchase
Light Valve Film from SPD Inc. or any other authorized
supplier of Light Valve Film to meet the requirements of
licensees of LICENSOR for Laminated Light Valve Film during
the term of this Agreement.
4.10 No other obligations As at the date of this
Agreement, LICENSEE and LICENSOR have no other
obligations to each other except as expressly provided in this
Agreement. In the event that LICENSEE and LICENSOR enter
into any agreement or agreements after the date hereof, if
LICENSEE and/or LICENSOR acts in accordance with its
obligations under any other such agreement, it will not be
deemed to be in breach of this Agreement by reason thereof.
5 TRADEMARKS
5.1 Trademarks All trademarks or service marks that
either party may adopt and use for Light Valve Film, or other
products incorporating Light Valves are and shall remain the
exclusive property of the adopting party, and the other party
shall not obtain any rights and license to such marks under this
Agreement, but may inform others that the adopting party has
licensed or produced or processed Light Valve Film, or products
incorporating Light Valves under such mark or marks, and may
use the adopting party's logo in connection therewith, in
accordance with Section 5.2. LICENSOR may require
LICENSEE or its permitted sublicensees to indicate on
packaging that such product is licensed from Research Frontiers
Incorporated or to otherwise include language and/or
designations approved by LICENSOR indicating an affiliation
with Research Frontiers Incorporated.
5.2 Use of logo In the event that either party wishes to use
a logo of the other party, such party will inform the other party
in writing of the intended use of such logo, and:
5.2.1 not use such logo without the prior written consent
of the other party (such consent not to be unreasonably withheld
or delayed); and
5.2.2 where consent to such use is forthcoming or use is
pursuant to Section 5.2.3, agrees to follow the other party's
guidelines (as from time to time may be applicable) with regard
to use of such logo. The other party agrees to provide a copy of
any such applicable guidelines to the other upon the granting of
such consent; and
5.2.3 Notwitstanding anything contained in this
Agreement to the contrary, LICENSEE hereby consents to
LICENSOR's use of LICENSEE's logo on the section of its
internet web site listing licensees of LICENSOR (and any copy
of such list) provided that such use is consistent with the way
that the logos of other licensees of LICENSOR's are used on
such list, and may also use LICENSEE's logo in connection
with any press release issued jointly by LICENSOR and
LICENSEE in connection with this Agreement and approved by
both parties.
6 INSURANCE AND INDEMNIFICATION
6.1 Insurance. LICENSEE shall maintain at all times
ample product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement.
6.2 Indemnification LICENSEE, and its affiliates,
successors and assigns and sublicensees (each, an "Indemnifying
Party"), each hereby indemnify and agree to hold harmless
LICENSOR and its shareholders, officers, directors, agents and
employees (each, an "Indemnified Party"), against any liability,
damage, loss, fine, penalty, claim, cost or expense (including
reasonable costs of investigation and settlement and attorneys',
accountants' and other experts' fees and expenses) arising out of
any action or inaction by any Indemnifying Party relating to this
Agreement including an Indemnifying Party's processing, sale,
use, lease or other disposition of Laminated Light Valve Film,
and related materials (other than sales by LICENSEE to
LICENSOR pursuant to Section 4.2 hereof), or other use of the
information and rights granted hereunder. Any knowledge of
LICENSEE's or its sublicensee's activities by LICENSOR or its
representatives shall in no way impose any liability on
LICENSOR or reduce the responsibilities of LICENSEE
hereunder or relieve it from any of its obligations and warranties
under this Agreement.
7 FUTURE PATENTS
7.1 Future Patents Each party, at its cost, shall have the
right to file patent applications in the United States and in
foreign countries covering any invention made by such party.
7.2 Improvements and Modifications
(a) If during the term of this Agreement, LICENSOR
makes any improvements or modifications which are invented or
developed by or on behalf of LICENSOR after the Effective
Date of this Agreement and on or before March 31, 2004, and
which relate in any way to or are useful in the lamination of
Light Valve Film, such improvements and modifications shall
from time to time be disclosed to LICENSEE and be
automatically included, on a non-exclusive basis, in the rights
and licenses granted pursuant to Section 2.1 hereof, and any
patents and/or patent applications relating thereto shall
automatically be added to Schedule A hereof.
(b) Any future improvements or modifications invented or
developed by or on behalf of LICENSEE, LICENSEE's
sublicensees and LICENSOR (other than as specifically
described in Sections 7.2(a)) after the Effective Date of this
Agreement, if any, which relate in any way to or are useful in
the lamination, design, operation, manufacture and assembly of
Light Valves, Light Valve Film and/or to the suspensions or
other components used or usable in Light Valves and/or Light
Valve Film shall not be included in this Agreement. Upon
written request by the non-inventing party, LICENSOR and
LICENSEE shall negotiate with each other regarding the grant
of nonexclusive rights and licenses to use such improvements
and modifications, but neither party shall be obligated to grant
such rights and licenses to one another.
(c) During the term of this Agreement each of the parties
hereto agrees to inform the other in writing (without any
obligation to reveal details which would be confidential
information), at least as frequently as once a year in January of
each calendar year, if any significant improvements or
modifications (other than as specifically described in Section
7.2(a)) have been made relating to the subject matter of this
Agreement, and as to the general nature of any such
improvements and modifications.
(d) Notwithstanding the foregoing, LICENSOR may, but
shall not be required to, voluntarily and without additional cost
to LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE
rights in such certain future improvements and modifications,
and any information so disclosed will be considered Technical
Information which LICENSEE shall be obligated to keep
confidential pursuant to Section 12.1 of this Agreement. In
connection therewith, LICENSOR, may voluntarily add patents
and/or patent applications to Schedule A hereof. No disclosure
of any information by LICENSOR shall in any way establish a
course of dealing or otherwise require LICENSOR to make any
future disclosure of information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that
any patent application now or hereafter listed on or incorporated
into Schedule A shall be filed or maintained in any foreign
country. If so designated and if legally possible to do so,
LICENSOR agrees to promptly file, prosecute and maintain
such applications and resulting patents, and LICENSEE shall
pay to LICENSOR the complete cost, including reasonable
attorney's fees, to file, prosecute and maintain any such patent
application and resulting patents specifically so designated by
LICENSEE.
8 TECHNOLOGY TRANSFER
8.1 Materials Upon request by LICENSEE, during the
term of this Agreement and when mutually convenient to
LICENSOR and LICENSEE, LICENSOR shall supply
LICENSEE with small quantities of materials related to Light
Valve Film for experimental use only by LICENSEE, and shall
charge LICENSEE $750 per man/day plus the reasonable cost of
any other materials used in making such materials, plus the
reasonable cost of shipping such materials to LICENSEE. Each
invoice submitted by LICENSOR for such service shall include
detailed explanations of the charges, and, if requested by
LICENSEE, copies of receipts. The parties acknowledge that
LICENSOR has no obligation to transfer to LICENSEE any
Technical Information other than as may be embodied in such
sample materials, and that, other than sample materials, if any,
that may be supplied by LICENSOR as aforesaid, LICENSEE
will be acquiring materials from authorized suppliers other than
LICENSOR.
8.2 Inquiries LICENSEE and LICENSOR may also at any
time during the term of this Agreement make reasonable inquiry
by telephone, facsimile or mail to one another in regard to any
information or data furnished pursuant to this Agreement.
8.3 Visits During all visits by either party to the facilities
of the other party, visitors shall comply with all reasonable rules
of the host company, and each party to this Agreement will
indemnify and hold the other party harmless from any liability,
claim or loss whatsoever (i) for any injury to, or, death of, any of
its employees or agents while such persons are present at the
facility of the other party; and (ii) for any damages to its own
property or to the property of any such employee or agent which
may occur during the presence of any such person at the facility
of the other party, regardless of how such damage occurs.
8.4 Sole Purpose Any documentation or information
supplied pursuant to this Agreement by either party to the other
shall be used solely for the purposes set forth in this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION
RESPONSIBILITIES
9.1 Proprietary Rights: Notices Each party shall provide
appropriate notices of patents, or other similar notice of the
patent rights of the other party on all products utilizing the
patented inventions of the other. Either party may add its own
patent notice to any copy or embodiment which contains its
patented inventions.
9.2 LICENSOR Exclusive Owner LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and
exclusive owner of the patents and patent applications listed on
Schedule A, and that, except for the rights granted hereunder,
LICENSEE shall not have any rights or attempt to assert any
ownership rights in and to those patents and patent applications.
10 TERM AND TERMINATION
10.1 Term The term of this Agreement shall extend from
the Effective Date of this Agreement to the date of termination
of this Agreement. Unless sooner terminated or extended, as
herein provided for below, this Agreement shall terminate upon
the expiration of the later of (A) the last to expire of the patents
now or hereafter listed in Schedule A hereof, and (B) the
expiration of the period in which LICENSEE is obligated to
maintain confidential Technical Information of LICENSOR
pursuant to Section 12.1 hereof.
10.2 Termination by LICENSEE LICENSEE may
terminate this Agreement effective as of December 31, 2006 or
as of any anniversary thereof by giving LICENSOR prior notice
thereof unless sooner terminated as hereinafter provided. Such
notice shall be made in writing and shall be given between 60
and 90 days prior to the effective date for which such
termination is to be effective. If LICENSEE decides to terminate
this Agreement for any reason, LICENSEE shall provide
LICENSOR, along with the aforementioned notice of
termination, with a written report describing the reasons for such
termination. After the expiration or termination of this
Agreement, LICENSEE shall have no right to sell, and no
obligation to manufacture and deliver, Laminated Light Valve
Film to any Authorized User or to any other party (except as
may be permitted under any other Agreement between
LICENSEE and LICENSOR).
10.3 Termination by LICENSOR LICENSOR may
terminate this Agreement at any time effective as of December
31, 2006 or as of any anniversary thereof upon at least 30 days'
notice to LICENSEE for any reason, provided, however, that
LICENSOR shall give LICENSEE at least one year's notice of
any early termination under this Section 10.3 if LICENSEE is
producing and selling Laminated Light Valve Film hereunder,
and provided further that if LICENSOR gives LICENSEE a
notice of termination pursuant to the first sentence of this
Section 10.3 and the effective termination date of such notice
would be prior to the expiration of a binding contractual
obligation of LICENSEE to supply Laminated Light Valve Film
to an Authorized User which contract is in effect at the time
LICENSOR's termination notice is given, then the LICENSEE
may, by providing LICENSOR within 10 business days with a
copy of the relevant portion of such contract, extend the
effective date of LICENSOR's termination to the date on which
the later of any aforesaid contractual obligations of LICENSEE
to any such Authorized User expires, but in no event shall the
foregoing extension imply any extension of time beyond the
time period specified in Section 10.1 above. Notwithstanding
the foregoing, LICENSOR may terminate this Agreement at any
time upon at least 30 days' notice to LICENSEE if LICENSEE
shall have failed to make any payment when due or at any time
breached any material term of this Agreement and such payment
is not made or such breach is not cured within any applicable
cure period specified in Article 11 of this Agreement, or
LICENSEE repeatedly provides inaccurate reports hereunder, or
if there has been a cessation by LICENSEE of general
operations or of work related to Laminated Light Valve Film,
and "cessation" shall not include any temporary cessation of
operations or work by LICENSEE as may occur from time to
time.
10.4 Effect of Termination If this Agreement expires or is
terminated for any reason whatsoever (other than this
Agreement being replaced by a subsequent license agreement
between the parties hereto that specifically refers to its being a
replacement for this Agreement), in addition to any other
remedies which one party may have against the other: (1) all of
LICENSEE's rights and licenses under this Agreement shall
cease, and LICENSEE shall immediately return to LICENSOR
all Technical Information furnished to LICENSEE under this
Agreement or destroy the same (except for any which is
incorporated into samples which have been supplied to an
Authorized User as permitted hereunder), together with all
reproductions, copies and summaries thereof (insofar as it is
possible to do so); provided, however, that LICENSEE may
retain solely for archival purposes one copy of all such
documents in its legal department files, (2) at LICENSOR's
option, LICENSEE shall, within 30 days of the date of such
termination, either (A) sell and deliver to LICENSOR under the
terms specified in Section 4.2 any Laminated Light Valve Film
which shall then be in the possession of LICENSEE , and, if
requested by LICENSOR, LICENSEE shall finish, sell and
deliver under the terms specified in Section 4.2 to LICENSOR
any Light Valve Film in inventory or in the process of being
laminated as soon as possible and, in any case, not later than 60
days after receiving LICENSOR's request, and/or (B) with
respect to any unsold inventory and work in the process of
manufacture, to complete such work in process and sell any
remaining inventory during the period not to exceed six months
from the date of termination or expiration of this Agreement
provided that at the completion of such six-month period,
LICENSEE shall promptly destroy and dispose of any
Laminated Light Valve Film (and Light Valve Film in the
process of being laminated) not sold under this Section 10.4
except that LICENSEE shall not be in breach of this obligation
where no Authorized Users agree to buy any Laminated Light
Valve Film under this Sub-Section and (3) if this Agreement is
terminated for any reason on or before December 31, 2006,
LICENSEE hereby grants to LICENSOR a nonexclusive,
royalty-free, irrevocable, worldwide license with the right to
grant sublicenses to others to utilize all technical information,
improvements and/or modifications (whether or not the subject
of patents or pending patent applications) developed or invented
by or on behalf of LICENSEE and/or its sublicensees,
subcontractors, or agents hereunder through the date of such
termination of this Agreement relating to Light Valves, Light
Valve Film or the components or lamination thereof which
relate to or arise out of Technical Information disclosed by
LICENSEE to LICENSOR or are otherwise developed by
LICENSEE, and upon such termination, LICENSEE shall
provide LICENSOR in reasonable detail complete information
regarding such technical information, improvements and/or
modifications. The foregoing license shall be self-effectuating,
but LICENSEE agrees upon written notice by LICENSOR at
any time hereafter to deliver to LICENSOR within 30 days of
such notice any document or other instrument reasonably
requested by LICENSOR to convey such license rights to
LICENSOR such as, by way of example, confirmations or
instruments of conveyance or assignment. LICENSEE may
exclude from such license any improvements to lamination or
components, and processing know-how developed by or on
behalf of LICENSEE but only to the extent that LICENSEE or
any third party has not filed for patent protection on such items
and maintains them as trade secrets. No termination of this
Agreement by expiration or otherwise shall release LICENSEE
or LICENSOR from any of its continuing obligations hereunder,
if any, or limit, in any way any other remedy one party may have
against the other party. Notwithstanding the foregoing,
LICENSEE's obligations to LICENSOR under Sections 3.1
(only until the end of the quarter in which the last of all sales
under this Agreement occurs), 3.2, 4.2 (insofar as is relevant to
this Section 10.3), 4.3, 4.4, 4.5, 4.6, 4.7, 4.8, 6.1, 6.2, 8.3, 10.2,
10.4, 12.1, and Articles 13 and 14 shall survive any termination
or expiration of this Agreement (to the extent that such survival
does not conflict with the terms of any subsequent agreement
between LICENSEE and LICENSOR, and in the event of any
conflict, the terms of the subsequent agreement shall prevail).
11 EVENTS OF DEFAULT AND REMEDIES
11.1 Events of Default Each of the following events shall
constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment due in
a timely manner or a party's material breach or material failure
to punctually perform any of its duties and obligations under
this Agreement, which material breach or failure, if curable,
remains uncured for thirty (30) days after written notice of such
breach or failure is received by the breaching party; or (b) a
material misrepresentation is made by a party in any
representation or warranty contained in this Agreement and the
misrepresented facts or circumstances, if curable, remain
uncured thirty (30) days after written notice of such
misrepresentation is received by the breaching party; and, in
either case, if such breach or misrepresentation is not curable,
termination shall occur thirty (30) days after such
misrepresentation or breach at the option of the non-breaching
party; or
11.1.2 The failure by a party upon request to provide the
other party with adequate assurances of its performance of all
obligations under this Agreement upon: (a) such first party's
filing of a voluntary petition in bankruptcy; (b) the filing of any
involuntary petition to have such first party declared bankrupt
which has not been dismissed within ninety (90) days of its
filing; (c) the appointment of a receiver or trustee for such first
party which has not been rescinded within ninety (90) days of
the date of such appointment; or (d) such first party otherwise
becoming insolvent or otherwise making an assignment for the
benefit of creditors.
11.2 Default by a Party If there occurs an Event of Default
with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or
specific performance; and/or
(c) terminate this Agreement and the licenses granted to
LICENSEE hereunder whereupon the non-defaulting
party shall have no further obligations under this
Agreement except those which expressly survive
termination.
12 CONFIDENTIALITY
12.1 Confidential Information (a) LICENSEE agrees for
itself, its sublicensees, and their employees and agents that for
twenty (20) years from the later of the Effective Date of this
Agreement or the latest date of its receipt of information
disclosed to LICENSEE by LICENSOR pursuant to this
Agreement, such information shall be held in confidence;
LICENSOR shall affix an appropriate legend on all written
documentation given to LICENSEE which contains confidential
information. LICENSEE acknowledges that the list of patent
applications contained on Schedule A shall be deemed to be
confidential information. Other than for the oral information
conveyed during any training conducted pursuant to this
Agreement, if any, all of which shall be deemed to be
confidential information, if confidential information is otherwise
conveyed orally by LICENSOR after training has been
completed, LICENSOR shall specify to LICENSEE at the time
such information is being conveyed (or in a subsequent letter
referring to the conversation) that the information conveyed is
confidential. It is understood and agreed that, unless otherwise
provided in a separate agreement between LICENSEE and
LICENSOR, LICENSEE has no obligation hereunder to provide
LICENSOR with any confidential or proprietary information,
and that LICENSOR shall have no obligation hereunder to
LICENSEE to maintain in confidence or refrain from
commercial or other use of any information which LICENSOR
is or becomes aware of under this Agreement (subject to the
terms of Section 13.1.3 and unless LICENSEE has informed
LICENSOR on a non-confidential basis of the nature of such
information beforehand and LICENSOR has agreed in writing
to receive such information from LICENSEE which LICENSEE
wishes to be considered confidential, in which case it shall be
kept confidential for no more than a period of three years from
the date of disclosure unless another period of confidentiality is
otherwise agreed to by LICENSOR and LICENSEE at the time
of disclosure). The terms and provisions of this Agreement or
any other agreement between the parties shall not be considered
confidential, and the parties hereto acknowledge that, pursuant
to the Securities Exchange Act of 1934, as amended, and the
regulations promulgated thereunder, LICENSOR may file
copies of this Agreement with the Securities and Exchange
Commission and with NASDAQ and with any other stock
exchange on which LICENSOR's securities may be listed.
LICENSEE agrees that for the period of time during which
LICENSEE is obligated to keep Technical Information
confidential hereunder, LICENSEE will not knowingly make,
use, sell, lease or otherwise dispose of products using or directly
or indirectly derived from confidential information or sample
materials supplied to LICENSEE by LICENSOR or its
licensees, sublicensees, or any of their affiliates relating to Light
Valve Film, Light Valves or components thereof (other than
where all obligations of confidentiality in respect of such
confidential information or sample materials as are so provided
to LICENSEE from LICENSOR or its licensees and their
sublicensees and so made, used, sold, leased or otherwise
disposed of by LICENSEE or its sublicensees have validly
terminated other than through a breach by LICENSEE or any
third party of any obligation of confidentiality), or which
otherwise comprise suspended particles, which when subjected
to a suitable electric or magnetic field, orient to produce a
change in the optical characteristics of the suspension ("SPD
Technology") unless an agreement between LICENSOR and
LICENSEE permitting it to do so is in full force and effect and
the royalties, if any, provided in such agreement are being paid
to LICENSOR on such products. The foregoing restriction shall
not apply to products (i) which do not directly or indirectly
incorporate SPD Technology, such as, but not limited to, liquid
crystal devices, or electrochromic devices, or (ii) which
incorporate technology involving suspended particles, which
when subjected to a suitable electric or magnetic field, orient to
produce a change in the optical characteristics of the suspension
but which is independently developed and which is not in any
way directly or indirectly derived from any Technical
Information of LICENSOR or its licensees, sublicensees, or any
of their affiliates. LICENSEE agrees to make all reasonable and
careful enquiries to determine whether any SPD Technology is
derived in any way from Technical Information or patents of the
LICENSOR. LICENSEE shall have the burden of proving by
clear and convincing evidence that the availability of any
exception of confidentiality exists or that the foregoing
restrictions do not apply to a particular product. Nothing
contained in this section, however, shall be construed as
granting LICENSEE any rights or licenses with respect to any
Technical Information (which is not in the public domain other
than through a breach by LICENSEE or any third party of any
obligation of confidentiality) or patents of LICENSOR or its
other licensees or their sublicensees.
(b) LICENSEE will have the right to provide materials to,
and to disclose information to a subcontractor relating to this
Agreement; provided, however, that LICENSEE shall only
disclose such information as is strictly necessary to enable said
subcontractor to perform its manufacturing task, and shall
ensure that, prior to disclosing any information to said
subcontractor, said subcontractor has signed a secrecy
agreement with LICENSEE at least as protective of
LICENSOR's Technical Information as the provisions of this
Agreement, including, without limitation, said subcontractor's
specific agreement to be bound by the provisions of Section
12.1 hereof to the same extent as LICENSEE. For such
purposes, LICENSEE may develop a standard form of secrecy
agreement for LICENSOR's approval, after which LICENSEE
may use such secrecy agreement with all subcontractors without
LICENSOR's prior approval of the secrecy agreement being
necessary. LICENSEE shall have all subcontractors sign said
secrecy agreement prior to the disclosure of Technical
Information to said subcontractor, and LICENSEE shall send
LICENSOR a copy of every such secrecy agreement within
thirty (30) days after the execution thereof.
(c)Notwithstanding anything contained in this Agreement
to the contrary, there shall be no obligation to treat as
confidential information which is or becomes available to the
public other than through a breach of a party to this
Agreement's obligation, or which was already possessed by a
party prior to the date of disclosure and, in the case of
confidential information of LICENSOR, was already possessed
by LICENSEE in writing (or otherwise provable to be in the
possession of LICENSEE) prior to the Effective Date of this
Agreement (and was not received from LICENSOR), or which
is shown by a party to this Agreement to have been received by
it from a third party who had the legal right to so disclose it
without restrictions and without breach of any agreement with
LICENSOR, its licensees or their sublicensees, or any third
party, or which is required to be disclosed under generally
accepted accounting principles or any applicable law,
regulation, governmental request or court order (subject to
Section 14.2), or upon which (in connection with written
information) a party to this Agreement has not affixed an
appropriate legend stating that such information is confidential
or (in the case of oral information) which is not stated at the
time of its impartation that it is confidential.
13 WARRANTIES AND REPRESENTATIONS
13.1 Reciprocal Representations Each party represents
and warrants to the other that:
13.1.1 Valid Agreement The execution and delivery of
this Agreement by the officer or representative so doing, and the
consummation of the transactions contemplated hereby, have
been duly authorized by all necessary corporate action by
LICENSOR and LICENSEE and this Agreement is a valid and
binding obligation enforceable against the parties in accordance
with its terms, except to the extent limited by bankruptcy,
insolvency, moratorium and other laws of general application
relating to general equitable principles;
13.1.2 No Conflicts Nothing herein conflicts with its
rights and obligations pursuant to any agreement by a party and
any other entity; and
13.1.3 Publicity The parties shall have the right to use
non-confidential information, including but not limited to
information concerning this Agreement, for marketing, sales,
technical assistance, investor relations, disclosure and public
relations purposes, . Information permitted to be disclosed by a
party under this Section 13.1.3 may appear on such party's (or
its subsidiaries' or sublicensees') Internet web site or other
pubic material, along with logos (to the extent permitted by
Section 5.1 or otherwise pursuant to the consent of the other
party, which consent may not be unreasonably withheld or
delayed), links to the Internet web sites, and specific pages
therefrom, of the other party and its subsidiaries and
sublicensees.
13.2 LICENSOR Representations LICENSOR represents
and warrants, for the benefit of LICENSEE, that:
13.2.1 Title As of the date hereof, LICENSOR represents
and warrants that it has the right to convey the rights and
licenses granted by this Agreement, and otherwise to perform its
obligations under this Agreement. LICENSOR has caused its
employees who are employed to do research, development, or
other inventive work to disclose to it any invention or
information within the scope of this Agreement and to assign to
it rights in such inventions and information in order that
LICENSEE shall receive, by virtue of this Agreement, the
licenses granted to it under Section 2.1 hereof.
13.2.2 Infringement As of the date hereof, LICENSOR is
not aware of any claim for patent infringement or the
misappropriation of trade secrets, being asserted against it by
any third party; or of any infringement of the patents listed on
Schedule A hereto by any entity.
13.2.3 Patents in Force To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement (a)
that LICENSEE will be able to develop, manufacture, sell or
otherwise commercialize Laminated Light Valve Film, or (b) as
to the validity of any patent.
13.4 Representation LICENSOR hereby represents and
warrants that, as of the Effective Date hereof, to the best of its
knowledge there have been no claims, actions or proceedings
brought or threatened against it or its licensees alleging that any
Light Valve Film, and Light Valves manufactured using
Technical Information or other technical information disclosed
by LICENSOR constitutes infringement of any patent of any
third party.
13.5 Disclosure In the event that after the date of this
Agreement either party becomes aware of any fact or matter
which renders any of the warranties and representations set out
at this Section 13 untrue, it shall promptly notify the other party
of the same, without prejudice to any rights and remedies of
such other party for any breach of any such warranty or
representation, provided that this Section 13.5 shall not impose
any additional obligations on a party other than the obligation of
disclosure set forth herein.
14 MISCELLANEOUS
14.1 Applicable Law This Agreement shall be interpreted,
construed, governed and enforced in accordance with and
governed by the laws of the State of New York, and LICENSOR
and LICENSEE hereby submit to the exclusive jurisdiction of
the state or federal courts located in the County of Nassau and
State of New York for such purposes. Should any dispute arise
between LICENSOR and LICENSEE in connection with this
Agreement, LICENSOR and LICENSEE shall first endeavor to
settle such dispute in an amicable manner through mutual
consultation.
14.2 Confidentiality In Court Proceeding In order to
protect and preserve the confidential information of a party
which the parties recognize may be exchanged pursuant to the
provisions of this Agreement, the disclosing party may request,
and the receiving party shall not oppose, the court in any action
relating to this Agreement to enter a protective order to protect
information which is confidential information under Section
12.1 and to seal the record in the action or to hold the
proceedings, or portion of the proceedings, in camera; provided,
that the requested terms do not prejudice the receiving party's
interests. Nothing, however, shall preclude either party from
thereafter moving to unseal its own records or to have matter
and information designated as confidential under any relevant
protective order designated otherwise in accordance with the
circumstances as they shall appear at that time.
14.3 Severability If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the
parties shall negotiate in good faith to agree upon a substitute
provision that is legal and enforceable and is as nearly as
possible consistent with the intentions underlying the original
provision. If the remainder of this Agreement is not materially
affected by such declaration or finding and is capable of
substantial performance, then the remainder shall be enforced to
the extent permitted by law.
14.4 Waiver Unless agreed to by the parties in writing to
the contrary, the failure of either party to insist in any one or
more instances upon the strict performance of any one or more
of the provisions of this Agreement, or to exercise any right
contained in this Agreement or provided by law, shall not
constitute or be construed as a waiver or relinquishment of the
performance of such provision or right or the right subsequently
to demand such strict performance or exercise of such right, and
the rights and obligations of the parties shall continue
unchanged and remain in full force and effect.
14.5 Captions The captions and headings in this
Agreement are inserted for convenience and reference only and
in no way define or limit the scope or content of this Agreement
and shall not affect the interpretation of its provisions.
14.6 Assignment This Agreement shall be binding on and
shall inure to the benefit of the parties and their successors and
assigns. However, LICENSEE agrees that it shall not assign
this Agreement or its rights hereunder without the prior written
consent of LICENSOR except to a successor to substantially all
of its business relating to Light Valves and whose obligations
hereunder are guaranteed to LICENSOR by LICENSEE.
LICENSOR may assign all of its rights and obligations
hereunder to any successor to any of its business interests or to
any company controlling or controlled by LICENSOR. All
assignees shall expressly assume in writing the performance of
all the terms and conditions of this Agreement to be performed
by the assigning party, and an originally signed instrument of
such assumption and assignment shall be delivered to the non-
assigning party within 30 days of the execution of such
instrument.
14.7 Schedules All Schedules attached to this Agreement
shall be deemed to be a part of this Agreement as if set forth
fully in this Agreement.
14.8 Entire Agreement This Agreement constitutes the
entire understanding and agreement between LICENSOR and
LICENSEE with respect to the subject matter hereof, supersedes
all prior agreements, proposals, understandings, letters of intent,
negotiations and discussions with respect to the subject matter
hereof and can be modified, amended, supplemented or changed
only by an agreement in writing which makes specific reference
to this Agreement and which is executed in writing by the
parties; provided, however, that either party may unilaterally
waive in writing any provision imposing an obligation on the
other.
14.9 Notices Any notice required or permitted to be given
or made in this Agreement shall be in writing and shall be
deemed given on the earliest of (i) actual receipt, irrespective of
method of delivery, (ii) on the delivery day following dispatch if
sent by express mail (or similar next day courier service), or (iii)
on the sixth day after mailing by registered or certified air mail,
return receipt requested, postage prepaid and addressed as
follows:
LICENSOR: Robert L. Saxe, Chairman and CEO
Research Frontiers Incorporated
240 Crossways Park Drive
Woodbury, New York 11797-2033 USA
Facsimile: (516) 364-3798
Telephone: (516) 364-1902
LICENSEE: Dr. Anthony R. Shaw,
Vice President Technology, Automotive
Pilkington North America
811 Madison Avenue
Toledo, Ohio 43695, USA
Facsimile: (419) 247-4224
Telephone: (419) 247-4488
or to such substitute addresses and persons as a party may
designate to the other from time to time by written notice in
accordance with this provision.
14.10 Bankruptcy Code In the event that either party
should file a petition under the federal bankruptcy laws, or that
an involuntary petition shall be filed against such party, the
parties intend that the non-filing party shall be protected in the
continued enjoyment of its rights hereunder to the maximum
feasible extent including, without limitation, if it so elects, the
protection conferred upon licensees under section 365(n) of
Title 17 of the U.S. Code. Each party agrees that it will give the
other party immediate notice of the filing of any voluntary or
involuntary petition under the federal bankruptcy laws.
14.11 Construction This Agreement and the exhibits
hereto have been drafted jointly by the parties and in the event
of any ambiguities in the language hereof, there shall no be
inference drawn in favor or against either party.
14.12 Counterparts This Agreement may be executed in
any number of counterparts, each of which shall be deemed an
original, but all of which shall constitute one and the same
instrument.
14.13 Status of the Parties The status of the parties under
this Agreement shall be solely that of independent contractors.
No party shall have the right to enter into any agreements on
behalf of the other party nor shall it represent to any person that
it has such right or authority.
The parties, through their duly authorized representatives,
and intending to be legally bound, have executed this
Agreement, as of the date and year first above written,
whereupon it became effective in accordance with its terms.
RESEARCH FRONTIERS INCORPORATED
By:/s/ Joseph M. Harary
Joseph M. Harary, President
Date: March 25, 2004
PILKINGTON PLC (for itself and on behalf of its Affiliates)
By: /s/ Ian Paturson Lough
Ian Paturson Lough, Director
Date: March 24, 2004
Schedule A
(As of March 25, 2004)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
(*-indicates a patent with respect to non-US filings)
Date Expiration
Patents in the United States Issued Date
4,772,103 Robert L. Saxe
"Light Valve Containing an Improved
Suspension, and Liquids Therefor" 9/20/88 8/8/06
5,002,701 Robert L. Saxe
"Light Polarizing Materials and
Suspensions Thereof" 3/26/91 3/26/08
4,877,313 Robert L. Saxe et al
"Light Polarizing Materials and
Suspensions Thereof" 10/31/89 2/10/09
5,093,041 Joseph A. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 Paul Rosenberg
"Electro-Optical Light Modulator" 5/05/92 7/5/09
5,130,057 Robert L. Saxe
"Light Polarizing Materials and
Suspensions Thereof" 7/14/92
10/31/06
5,279,773 Robert L. Saxe
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
5,325,220 Robert L. Saxe
"Light Valve With Low Emissivity
Coating As Electrode" 6/28/94 3/9/13
5,463,491 Joseph A. Check III
"Light Valve Employing a Film Comprising
An Encapsulated Liquid Suspension And
Method of Making Such Film" 10/31/9511/6/12
5,463,492 Joseph A. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve" 10/31/95 11/6/12
5,461,506 Joseph A. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing The Same" 10/24/955/11/13
5,467,217 Joseph A. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing The Same" 11/14/955/11/13
5,516,463 Joseph A. Check III et al
"Method of Making Light
Polarizing Particles" 05/14/96 07/08/14
5,650,872 Robert L. Saxe et al
"Light Valve Containing
Ultrafine Particles" 07/22/97 12/08/14
5,728,251 Joseph A. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve" 03/17/98 09/27/15
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
5,764,402 Jean-Francois Thomas; Pierre Vezin
"Optical Cell Control System" 06/09/98xx/xx/xx
5,838,482 Daniel Decroupet; Pierre Laroche
"Optical Cell" 11/17/98 xx/xx/xx
5,691,849 Rene Ledroit; Jean-Francois Thomas; Andre Hecq
"Rear-View Assembly for a Vehicle
and an Adaptor Therefor" 11/25/97xx/xx/xx
6,114,405 Huifang Zhuang et al
"Ultraviolet Radiation-Curable
Light-Modulating Film for a Light
Valve, and Method of Making Same" 09/05/00
10/09/17
6,156,239 Robert L. Saxe et al
"Light Polarizing Material, Liquid
Suspensions and Films Thereof, and Light
Valve Incorporating Same" 12/05/00 02/26/19
6,271,956B1 Robert L. Saxe et al
"Method and Materials for Enhancing the
Adhesion of SPD Films and Light Valves
Comprising Same" 08/07/01
03/02/20
6,301,040 Srinivasan Chakrapani et al
"SPD Films Having Improved Properties and
Light Valves Comprising Same" 10/09/0105/24/20
6,334,967 B1 Robert L. Saxe et al
"Light Polarizing Particles of Improved
Particle Size Distribution" 01/01/02 12/21/20
(See also listing for PCT/US99/15508)
6,416,827 Srinivasan Chakrapani et al
"SPD Films and Light Valves Comprising Same"07/09/02
[10/27/20]
6,429,961B1 Joseph M. Harary et al
"Methods for Retrofitting Windows With Switchable
and Non-Switchable Window Enhancements and
Retrofitted Windows Produced Thereby" 08/06/02 10/03/20
Date Expiration
Patents in the United States Issued Date
6,517,746 Robert L. Saxe et al.
"Polyhalide Particles and Light Valves
Comprising Same" 02/11/03 01/05/21
6,522,446 Robert L. Saxe
"Anisometrically Shaped Metal Particles,
Liquid Suspensions and Films Thereof And
Light Valves Comprising Same" 02/18/03 04/25/21
6,529,312B1 Robert L. Saxe
"Anisometrically Shaped Carbon and/or Graphite
Particles, Liquid Suspensions and Films Thereof
And Light Valves Comprising Same" 03/04/0306/07/19
[See also U.S. Patent Application No. 10/330,645 filed
December 27, 2002, a continuation-in-part of this patent]
6,606,185B2 Robert L. Saxe
"SPD Films and Light Valves Comprising Liquid
Suspensions of Heat-Reflective Particles of
Mixed Metal Oxides and Methods of Making
Such Particles" 08/12/03 12/08/14
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities
and Exchange Commission]
PENDING INTERNATIONAL APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities
and Exchange Commission]
FOREIGN PATENTS AND PATENT APPLICATIONS
Patent Number or Country Serial Number Issued Filed Expiration
[Confidential Information Omitted and filed separately with the Securities
and Exchange Commission]
Schedule B (As of March 25, 2004)
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR
LAMINATED LIGHT VALVE FILM
Name of Customer Licensed Application Permitted Territory
Research Frontiers Incorporated All applications
Worldwide
American Glass Products Architectural and automotive
windows
Worldwide
(except
Korea)
AGC Automotive Americas Sunroof glass for other licensees
Worldwide
(f/k/a AP Technoglass Co.)
Asahi Glass Company Sunroof glass for other licensees
Worldwide
Avery Dennison Corp. SPD displays
Worldwide
BOS GmbH Variable light transmission sunshades and
sunvisors
Worldwide
BRG Group, Ltd. Architectural and automotive windows
Worldwide
(except
Korea)
Cricursa Cristales Curvados S.A. Architectural and automotive
windows
Worldwide
(except
Korea)
Custom Glass Corporation Windows and sunroofs for mass
transit trains/busses Worldwide
(except
Korea)
Glaverbel, S.A. Automotive vehicle rear-view mirrors,
Worldwide
transportation vehicle sunvisors, and
(except Korea
architectural and
automotive
windows
for
windows)
Global Mirror GmbH Rear-view mirrors and sunvisors
Worldwide
Hankuk Glass Industries Inc./SPD Inc. Broad range of SPD light
control
products
Worldwide
including windows, flat panel displays,
automotive vehicle rear-view mirrors
and
sunvisors (installed as original equipment
on Korean-made cars), and sunroofs;
SPD film
for licensees and prospective licensees
Innovative Glass Corporation Architectural windows
U.S., Canada,
and Mexico
InspecTech Aero Service, Inc. Aircraft and marine windows and
cabin
dividers
Worldwide
(except
Korea)
Isoclima S.p.A. Architectural and automotive windows
Worldwide
(except
Korea)
Kerros Ltd. (IntelliTint) Automotive windows and sunroofs
Worldwide
(except
Korea)
Leminur, Ltd. Architectural windows,
Russian Federation,
Armenia,
Azerbaijan,
Belarus,
Estonia,
Georgia,
Kazakhstan,
Kyrgyz
Republic,
Latvia,
Lithuania,
Moldova,
Tajikistan,
Turkmenistan,
Ukraine, and
Uzbekistan.
N.V. Bekaert S.A. Architectural and automotive windows
Worldwide
(except Korea)
SPD Technologies, Inc. Architectural windows
Worldwide
(f/k/a Razor's Edge Technologies, Inc.)
(except
Korea)
Saint-Gobain Glass France, SA Architectural windows, automotive
and other Worldwide
transportation vehicle windows (other
than aircraft (except Korea)
and spacecraft), kitchen and laundry
home appliance
windows, and automotive sunvisors
and rear-view
mirrors for cars, SUVs, light trucks
and other
transportation vehicles (other than as
original equipment
mirrors on heavy trucks, busses,
construction vehicles,
firetrucks and other vehicles in Class
5-8 or weighing
over 16,000 pounds)
SPD Systems, Inc. Architectural, marine and appliance windows
Worldwide
(except Korea)
ThermoView Industries, Inc. Architectural windows
Worldwide
(except Korea)
Traco Inc. Architectural windows
Worldwide
(except Korea)
Vision (Environmental Innovation) Ltd. Architectural windows
United Kingdom
[INFORMATION REGARDING OTHER AUTHORIZED USERS
WILL BE PROVIDED BY LICENSOR TO LICENSEE FROM TIME
TO TIME IN THE FUTURE]