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EXHIBIT 10.181
PRODUCT DEVELOPMENT, PURCHASE AND LICENSE AGREEMENT
Between
E. I. DU PONT DE NEMOURS AND COMPANY (SELLER/LICENSOR)
And
WILSHIRE TECHNOLOGIES, INC.
(BUYER/LICENSEE)
This Agreement by and between E. I. DU PONT DE NEMOURS AND
COMPANY of Wilmington, Delaware (hereinafter "DuPont") and WILSHIRE
TECHNOLOGIES, INC. of Carlsbad, California (hereinafter "Wilshire") is effective
as of September 18,2000.
WHEREAS, Wilshire and DuPont entered into Confidential
Information Agreements effective August 31, 1999 and February 14,
2000,pertaining to polyurethane polymer solutions and the manufacture and
testing of gloves for the clean room market, and
WHEREAS, Wilshire and DuPont signed a non-binding letter of
intent dated June 20, 2000 for the purpose of continuing and facilitating
discussions toward a definitive supply and license agreement for such
application, and
WHEREAS, Wilshire and DuPont have signed a Stock Option Agreement
of the same date as this Agreement.
WHEREAS, Wilshire and DuPont have signed a Trademark License
Agreement for use of DuPont's trademark "LYCRA" of the same date as this
Agreement.
NOW, THEREFORE, in consideration of the premises and the mutual
convenants and agreements set forth herein, the parties hereto, intending to be
legally bound hereby, agree as follows:
I. DEFINITIONS
A. "Affiliate" shall mean:
1. any corporation or other legal entity owning or directly or
indirectly controlling at least forty percent (40%) of the
securities normally entitled to vote for election of directors
of a party and
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2. any corporation or other legal entity owned or directly or
indirectly controlled by a party, or by a corporation or other
legal entity defined by subparagraph (1) above through ownership
of at least forty percent (40%) of the securities normally
entitled to vote for election of directors.
B. "Confidential DuPont Information" shall mean technical information
relating to Precursor Polymers, Polymers, Product, Process and Process
Improvements disclosed by DuPont to Wilshire after the effective date of the
parties' Confidential Information Agreement, dated February 14, 2000, and
designated or confirmed promptly in writing to be confidential, except such
information
1. that is or becomes known publicly through no fault of
Wilshire;
2. that is learned by Wilshire from a third party entitled to
disclose it; or
3. that was already known to Wilshire at the time of disclosure
by DuPont as shown by Wilshire's prior written records.
Information shall not be deemed to be within the foregoing exceptions merely
because it is embraced within broader or general disclosures known to the public
or Wilshire, and any combination of features shall not be deemed to be within
the foregoing exceptions merely because individual features are known to the
public or to Wilshire unless the whole combination of features and its principle
of operation are known.
C. "Contract Interest Rate" shall mean an interest rate which is the
lesser of: an annual rate of three (3) percentage points above the prime rate
quoted by Morgan Guaranty Trust Company of New York on the day payment was due
or the maximum rate permitted by law.
D. "Customer" shall mean any person or entity that purchases Product
from Wilshire or its distributors.
E. "DuPont Patents" shall mean patents and patent applications (and
patents issued pursuant to such applications) listed in Schedule A hereto, and
any divisions, reissues, continuations, continuations-in-part, renewals and
extensions thereof, and all corresponding foreign patents and patent
applications (and patents issued pursuant to such applications) and any
combinations, divisions, reissues, continuations-in-part, renewals and
extensions thereof.
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F. "Effective Date" shall mean the date indicated above as the effective
date of this Agreement.
G. "First Sale of Product in the Territory" shall have the meaning as
designated in Article II.A.1.c.
H. "Polymers" shall mean the product of a Precursor Polymer or its
ingredients and a mono-functional surface active material, meeting the
specifications set forth in Schedule B which is attached and made a part of this
Agreement.
I. "Precursor Polymers" shall mean polyesterurethaneurea polymers based
on methylene-bis(4-phenylisocyanate) and polyester diols prepared from ethylene
glycol, 1,4-butanediol and adipic acid.
J. "Process" shall mean the process utilized to prepare Polymers either
from Precursor Polymers and a mono-functional surface-active material or from
the ingredients utilized to prepare Precursor Polymers and a mono-functional
surface-active material.
K. "Process Improvements" shall mean any improvements in the preparation
of Product from Polymers invented by DuPont and are included in Confidential
DuPont Information.
L. "Product" shall mean a hydrophobic thin-walled glove obtainable from
Polymers.
M. "Sales Threshold" shall mean Wilshire's sales of Product in any
calendar quarter in excess or six (6) million pair or twelve (12) million pair,
as the case may be.
N. "Selling Price" is defined as follows:
1. With respect to any quantity of Product subject to fee under
this Agreement that is sold by Wilshire to any third party,
Selling Price shall be the gross sales price for that quantity,
less any discounts, commissions, allowances to Customers and
taxes other than income taxes, that are included in its gross
sales price. No deduction from the gross sales price shall be
made for any item of cost incurred by DuPont or its distributors
in its or their own operations incident to the manufacture, sale
or shipment of the Product sold. Selling Price shall not include
any quantity of Product first sold and then returned to
Wilshire.
2. With respect to any quantity of Product subject to fee
hereunder that is used by Wilshire for its
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own purposes in a commercial operation of any of its businesses
utilizing Product as part of the routine operation of any such
business or is sold to a distributor of Wilshire, the Selling
Price of that quantity of Product shall be the Selling Price of
like quantity of like product prevailing on the open market in
the place of said use or sale at the time of such use or sale.
O. "Territory" shall mean North America, Asia (ex Japan) and Japan.
P. "Wilshire" shall mean Wilshire and its affiliates.
Q. "Wilshire Markets" shall mean the clean room, non-medical glove
market.
R. "Wilshire Mexico" shall mean Wilshire International de Mexico S.A. de
C.V.
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II. LICENSE
A. Grants
1. As of the Effective Date of this Agreement, DuPont hereby
grants to Wilshire:
a) an exclusive license, for two (2) years beginning on
the first day of the next calendar quarter following the
First Sale of Product in the Territory, under DuPont
Patents to use Precursor Polymers to manufacture
Polymers and Product, subject to Wilshire's obligation
to purchase Polymers from DuPont pursuant to Article IV;
and
b) an exclusive license, for two (2) years beginning on
the first day of the next calendar quarter following the
First Sale of Product in the Territory, to Confidential
DuPont Information to make, use and sell Product in the
Wilshire Market in the Territory.
c) For purposes of this section, "First Sale of Product
in the Territory" means the first sale anywhere in the
Territory for a commercial use, but not for an
evaluation. This first sale triggers the beginning, 90
days thereafter, of the exclusive period in all other
regions of the Territory. Wilshire shall promptly begin
marketing efforts in all regions after the first sale.
Should a reasonably representative group of Customers in
regions other than the region in which the first sale
took place not accept the Product as a commercially
viable product, as mutually agreed by DuPont and
Wilshire after joint sales calls, the exclusivity period
in the region affected shall toll pending development of
a marketable Product for that region.
2. The exclusive right granted above:
a) as to North America and Asia (ex Japan) shall be
automatically extended on written notice by Wilshire to
DuPont provided Wilshire meets Exclusive Minimum Revenue
thresholds as specified in Article IV. Should Wilshire
not meet the Exclusive Minimum Sales as to North America
or Asia (ex Japan) Wilshire's exclusive right granted
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above shall become nonexclusive rights as to North
America or Asia (ex Japan) as the case may be.
b) as to Japan is not extendable and shall become
nonexclusive rights after the two-year period.
3. The nonexclusive rights shall terminate at DuPont's sole
option on DuPont's written notice to Wilshire if the
Nonexclusive Minimum Revenue thresholds as specified in Article
IV. are not met. Such termination shall not affect Wilshire's
right to sell its inventory of Product or to fulfill existing
orders for Product for a period not to exceed three (3) months
from the date of said notice.
4. Wilshire shall have a right of first refusal for an exclusive
right to sell in an exclusive region any improved polyurethane
product developed by DuPont for use in the manufacture of
Product for so long as Wilshire maintains exclusivity in the
region.
5. During the life of this Agreement and so long as Wilshire is
not in default with respect to any payment due to DuPont
hereunder (following a determination of such default in
accordance with applicable dispute resolution procedures), with
respect to Wilshire Market and Technology,
a) DuPont will not (and will assure that its Affiliates do
not) assert any patent and Information licensed hereunder
to prevent Wilshire from manufacturing, using or selling
Product or its Customers from using or selling Product or
from otherwise exercising and realizing the benefits of
rights granted under this Agreement; and
b) DuPont will not (and will assure that its Affiliates do
not) assert any other patent now or hereafter owned or
controlled (in the sense of having the right to grant
licenses or sublicenses) by DuPont or its Affiliates
corresponding in subject matter to any patent licensed
hereunder to prevent Wilshire from manufacturing, using or
selling Product or its Customers from using or selling any
Product or from otherwise exercising and realizing the
benefits of rights granted under this Agreement.
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6. During the term of this Agreement, and so long as the license
granted hereunder remains exclusive, DuPont shall take all
actions necessary to file, prosecute and maintain patent
applications and patents within DuPont Patents at its own cost;
provided, however, that DuPont shall be able to discontinue such
activities, for selected patent applications and patents within
said Patents so long as before doing so, DuPont notifies
Wilshire in writing in a timely manner and, if so requested by
Wilshire, assigns such to Wilshire for continued prosecution and
maintenance of such patents and patent applications, and
thereafter cooperates fully with Wilshire to assist and
facilitate Wilshire's continued prosecution and maintenance of
same. In such event, DuPont, its permitted assignees and its or
their customers shall retain the right to operate under such
patents and patent applications.
7. DuPont represents and warrants that it owns or controls all
of DuPont Patents listed in Schedule A and that it has the right
to license them to Wilshire as provided in this Agreement.
B. Payments and Reports
1. Wilshire shall pay to DuPont royalties, which shall not be
returnable in any event, at the rates described below for all
quantities of royalty-bearing Product used or sold by Wilshire
that is made, used, imported or sold under any unexpired patent
within the DuPont Patents and Confidential DuPont Information
licensed hereunder:
a) Seven percent (7%) of Selling Price on sales of
Product beginning with the first sale and continuing
through the end of February, 2002. Royalty for all sales
beginning with the first sale through November 2001
shall be paid in one lump sum on or before December 20,
2001 with the royalties for December 2001 to be included
with the payment for the first quarter of 2002.
b) Fifteen percent (15%) of Selling Price on sales of
Product, beginning on March 1, 2002.
c) The royalty rates indicated in Subparagraphs a) and
b) shall apply to the first one dollar ($1.00) of the
Selling Price of each pair of gloves (Product) for
direct sales and to the first $0.75 of the Selling
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Price of each pair of gloves (Product) when the sale is
to a distributor. These Prices, i.e., $1.00 and $0.75,
shall be referred to as the Royalty Thresholds.
d) For any sales of Product at a Selling Price greater
than the Royalty Threshold, Wilshire shall pay to DuPont
an additional royalty equal to forty percent (40%) of
the amount over the Royalty Threshold.
2. Wilshire shall report in writing to DuPont within thirty (30)
days after the end of each calendar quarter the quantities of
Product subject to royalty hereunder that were used or sold by
Wilshire during said quarter and the calculation of the fees
thereon. Said report shall indicate the site of manufacture and
country-by-country breakdowns of sales of Product. Except as
provided for in Article II.B.1, with said report Wilshire shall
pay to DuPont the total amount of said royalties. If no product
subject to royalty hereunder has been used or sold during any
such period, Wilshire shall so report in writing to DuPont
within forty-five (45) days after the end of such period. If any
Product sold in a quarter is returned to Wilshire as defective,
Wilshire need not report that quantity as sold. If the return of
Product is in a subsequent calendar quarter, Wilshire can
subtract that quantity from Product sold in the subsequent
quarter. Reports, notices and other communications to DuPont
hereunder shall be sent to:
Global Segment Manager - Gloves
E. I. du Pont de Nemours and Company
Barley Mill Plaza, Building 25
Wilmington, Delaware 19880-0025, U.S.A.
Each payment to DuPont hereunder shall be sent to DuPont under
separate cover along with a copy of the relevant report. If
payment is by check, to:
E. I. du Pont de Nemours and Company
Attention: Barbara Berg,
Cash Operations (D-8003-3)
1007 Market Street
Wilmington, Delaware 19898, U.S.A.
with a copy of the report to:
E. I. du Pont de Nemours and Company
Attention: Royalty Accounting (D-13064)
1007 Market Street
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Wilmington, Delaware 19898, U.S.A.
If payment is by wire transfer, to:
Chase Manhattan Bank
4 Chase Metrotech Center
Brooklyn, New York 11245
ABA Routing #: 021000021
Account #: 910-1-012723
Account Name: E. I. du Pont de Nemours and Company
Description: Royalty
with a copy of the report to:
E. I. du Pont de Nemours and Company
Attention: Royalty Accounting (D-13064)
1007 Market Street
Wilmington, Delaware 19898, U.S.A.
unless a different address is designated in writing by DuPont to
Wilshire.
Notices to Wilshire shall be sent to the address set forth in
Article IV.R. below unless a different address is designated in
writing by Wilshire to DuPont.
3. Wilshire shall pay all taxes and charges imposed by any
government or taxing authority (other than the United States or
a subdivision thereof) with respect to payments by Wilshire to
DuPont for transfer of information or patent rights hereunder.
Notwithstanding the foregoing, to the extent Wilshire is
required by any applicable income tax law to withhold a portion
of the payment owing to DuPont hereunder, DuPont shall accept
the resulting net payment as due performance under this
Agreement. Wilshire shall, however, take all necessary steps to
secure the benefit of any reduction of withholding tax rate
available under treaty and shall promptly provide DuPont with
receipt for any tax withheld.
4. Royalties shall be paid in U.S.A. dollars. For converting
into U.S.A. dollars any royalty that accrued in another
currency, there shall be used the closing buying rate of the
Morgan Guaranty Trust Company of New York applicable to royalty
or fee transactions under exchange regulations for the
particular currency on the last business day for the accounting
period for which payment is due.
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5. If any sum of money owed to DuPont hereunder is not paid
within sixty (60) days after becoming due, and is not contested
in good faith by Wilshire, the unpaid amount shall bear
interest, compounded annually from its due date, at the Contract
Interest Rate, until paid.
C. Miscellaneous Provisions
1. No license or right is granted by implication or otherwise
with respect to any patent application, patent or trademark
except as specifically set forth herein.
2. DuPont shall not be required to grant any right with respect
to any patent application or patent or furnish information as to
which DuPont will incur financial or other liability to a third
party as a result of the granting of such right or furnishing of
such information. In the event such a right is essential for the
continued operation under this Agreement, if Wilshire so elects
the parties will share the cost of acquiring such right equally
between them. Further, no information shall be required to be
furnished over governmental prohibition or objection.
3. DuPont warrants that the use or sale of the Polymer delivered
hereunder will not infringe the claims or any validly issued
United States patent covering the Polymer itself, but does not
warrant against infringement due to:
a) the use of Polymer in combination with other products
or materials or in the operation of any process, or
b) the compliance by DuPont with any specifications
provided to DuPont by Wilshire. DuPont shall advise
Wilshire, to the extent that DuPont is aware, if any
specifications provided to DuPont by Wilshire infringe
the claims of any validly issued United States patent,
it being understood that DuPont has no obligation to
make any such investigation or inquiry.
Notwithstanding the foregoing, the parties are aware of United
States Patent 5,589,563 (the `563 patent). It is, therefore, the
parties' intent that the above warranty specifically excludes
the `563 patent and the parties each shall bear their respective
costs and expenses related to or
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arising from any claims concerning the `563 patent.
D. Abatement of Infringement
1. If at any time any third party may infringe any unexpired
patent licensed hereunder, and either party to this Agreement
becomes aware thereof, then such party shall promptly notify the
other party of the suspected infringement and the parties shall
confer to determine their course of action to abate
infringement.
2. Whenever any suit for infringement is brought against any
infringer by either DuPont or the parties jointly, each party
shall bear its costs and expenses of such suit. All recoveries
from such suits shall be shared by the parties proportionately
to their costs and expenses. DuPont shall have the right to
enforce its rights against infringer(s) of any patent
application or patent licensed hereunder.
3. Wilshire shall have the right, in any suit brought by DuPont
pursuant to Article II.D.2., to be represented at its own
expense by counsel of its own selection to the extent of having
access to full information and opportunity to confer with and
make recommendations to DuPont and its legal counsel, but such
expense shall not be considered as costs or expenses of the
litigation.
4. Should DuPont bring suit, Wilshire shall execute such legal
papers necessary for the prosecution of such suit as may be
reasonably requested by DuPont and Wilshire shall cooperate in
the prosecution of such suit to a reasonable extent as requested
by DuPont at DuPont's expense.
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III. PRODUCT DEVELOPMENT
A. Wilshire and DuPont shall complete product and market development
efforts under the following terms:
1. DuPont will complete development of initial Polymers to be
utilized by Wilshire in the manufacture of Product.
2. Wilshire will evaluate the initial Polymers for suitability
in its manufacturing process and acceptability of Products by
its Customers and shall provide reports to DuPont with the
results of those evaluations.
3. DuPont shall deliver to Wilshire at no charge, a reasonable
amount of initial Polymers in order for Wilshire Mexico to
complete functional testing at Toshiba as well as for other
agreed initial beta sites.
4. If the initial Polymers are not acceptable to Wilshire,
DuPont shall, subject to the time limitation contained in
Article III.A.6., work to develop a more suitable Polymer.
5. Wilshire will provide written notice to DuPont if the initial
Polymer is acceptable.
6. If the notice described in Article III.A.5. is not given
within ninety (90) days of the Effective Date of this Agreement,
this Agreement will terminate with no liability to either party
due to an acceptable Polymer not having been developed or
accepted. The Agreement may be extended by the mutual agreement
of the parties.
7. Wilshire shall hire, within sixty (60) days of the date of
the notice identified in Article III.A.5., two marketing
employees whose sole focus will be end use marketing of Product
with an emphasis on establishing a higher price for the Product.
These employees will be solely directed by Wilshire. DuPont will
pay to Wilshire the lesser of: i. $25,000.00 per employee per
year, or; ii. 50% of the salary plus benefits of each of the two
employees, for each of the first two years of their employment.
B. DuPont shall have access to Wilshire's manufacturing process and
Product samples for the purposes of suggesting
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cost reductions and value-in-use marketing materials and strategies, if any.
Such suggestions shall be solely at DuPont's discretion. Wilshire's decision to
implement any such suggestions will be at Wilshire's sole discretion. Wilshire
will be solely responsible for any such suggestions implemented.
C. DuPont shall provide the following services in its shared interest of
increasing sales of Products:
1. Laboratory analytical: Wilshire shall be responsible for
tests and data analysis, but DuPont at its sole option may
provide analytical assistance at no charge to Wilshire.
2. R&D support: Wilshire will permit DuPont to accompany
Wilshire salespersons on Customer calls to assist DuPont in its
efforts to develop additional Polymers.
3. Engineering support: At DuPont's sole discretion, it may
respond to Wilshire's request for assistance in a wide range of
engineering projects. The Parties will negotiate an arrangement
by which cost savings and other benefits of process enhancements
will be equitably shared.
4. Marketing consultation: At DuPont's sole discretion, it will
make available to Wilshire marketing resources to assist
Wilshire's maximization of sales.
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IV. SALE AND PURCHASE OF POLYMERS
Subject to satisfaction of the conditions specified in Articles III.A.5 and 6,
Wilshire shall cause its Affiliate Wilshire Mexico or such other Affiliate as
may manufacture Product outside of the United States to purchase from DuPont and
DuPont shall sell to Wilshire Mexico or such other Affiliate upon the following
terms and conditions:
A. The material sold and bought is Polymer as defined in Article I.
B. The duration of this Article IV is from the date of acceptance of the
Polymer specified in Article II.A.5 to December 31, 2005, continuing in effect
from year to year thereafter, unless and until terminated by either party on
December 31, 2005 or any subsequent 31st day of December on six (6) months prior
written notice to the other party. Should either party terminate this Article IV
Wilshire shall have a continued license at the royalty rates specified in
Article II.B.1.
C. Wilshire shall purchase its requirements of polyurethane for Product
from DuPont.
D. DuPont warrants only to Wilshire that the Polymer delivered hereunder
meets the specifications for Polymer. EXCEPT AS EXPRESSLY PROVIDED IN THIS
ARTICLE IV.D. AND ARTICLE II.C.3. HEREOF, DUPONT MAKES NO EXPRESS OR IMPLIED
WARRANTY (INCLUDING, WITHOUT LIMITATION, THE WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE OR FROM ANY COURSE OF DEALING OR TRADE USAGE)
Regarding the Polymer. Wilshire, having the expertise and knowledge in the
intended use of the Polymer and any articles made therefrom, assumes all risk
and liability for results obtained by the use of the Polymer, whether used alone
or in combination with other materials. Wilshire further acknowledges that
Polymer has not been tested for, and DuPont specifically disclaims any and all
warranties regarding properties related to, personal protection from chemicals
or microorganisms to users of products made from Polymer. Wilshire warrants that
it shall make no claims that Products provide personal protection to users of
Products.
E. Beginning with the month following the First Sale of Product in the
Territory, Wilshire shall provide DuPont on or before the fifth day of every
month a forecast for the following twelve months, the first month of which shall
be a firm order and the remainder of which will be for planning purposes only.
Wilshire shall specify a shipping schedule for the first month's order.
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F. In order to extend the exclusivity as provided in Article II.A.,
Wilshire must meet the following Exclusive Minimum Revenue thresholds:
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Exclusive Minimum Revenue, Millions US$
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PERIOD North America Asia (ex Japan) Total
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Second 2.6 1.0 6.9
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Third 6.5 2.855 16.3
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Fourth 9.7 6.5 26.5
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Where:
1. Exclusive Minimum Revenue is the revenue to DuPont indicated
in the above table from sale of Polymer to Wilshire and payment
of royalties to and by Wilshire necessary for Wilshire to
maintain exclusivity in the region.
2. Period means a twelve month period beginning as to each region
in the Territory on the date provided for the beginning of
exclusivity as set forth in Article II.A.1(c) or an anniversary
of such date.
3. If Wilshire pays the total indicated revenue to DuPont in a
period, Wilshire shall maintain its exclusive rights in North
America and Asia (ex Japan) for the next Period.
4. If Wilshire does not pay the total indicated revenue to DuPont
for a Period, but does pay the indicated revenue for a particular
region Wilshire shall maintain its exclusive rights in that
region for the next Period.
G. In order to maintain the right to sell Product as provided in Article
II.A., Wilshire must meet the following Nonexclusive Minimum Revenue thresholds:
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Nonexclusive Minimum Revenue, Millions US$
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PERIOD North America Japan Asia (ex Japan) Total
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Second 1.3 1.65 0.5 3.45
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Third 3.25 3.5 1.4275 8.15
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Fourth 4.85 5.15 3.25 13.25
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Where:
1. Nonexclusive Minimum Revenue is the revenue to DuPont
indicated in the table immediately above from sale of Polymer and
payment of royalties to and by Wilshire necessary for Wilshire to
retain the right to sell Product nonexclusively in the region.
2. If Wilshire pays the total indicated revenue to DuPont in a
period, Wilshire shall maintain its nonexclusive rights in North
America, Japan and Asia (ex Japan) for the next Period.
3. If Wilshire does not pay the total indicated revenue to DuPont
for a Period, but does pay the indicated revenue for a particular
region Wilshire shall maintain its nonexclusive rights in that
region for the next Period.
H. The thresholds agreed to in IV.E and F. with regard to Japan and Asia
(ex Japan) are based on assumptions concerning the disk drive market in those
regions as contained in the email from Kevin Mulvihill to Mario Masciantonio
dated 9/13/2000 which is attached as Schedule C. The parties agree that either
may renegotiate the thresholds in these regions should the assumptions contained
in the referenced email prove to be invalid.
I. Deliveries shall be F.O.B. Waynesboro, Virginia. Title to and risk of
loss in all Polymers sold hereunder shall pass to Wilshire upon loading for
shipment at DuPont's plant.
J. Polymer shall be shipped in drums.
K. The Price shall be $5.00/lb of Polymer (solids basis) until such time
that Wilshire exceeds a Sales Threshold of six (6) million pairs of Product.
Sales of Polymer made after such calendar quarter shall be priced at $5.50/lb of
Polymer (solids basis) until such time that Wilshire exceeds a Sales Threshold
of twelve (12) million pairs of Product. Sales of Polymer made after such
calendar quarter shall be priced at $6.00/lb of Polymer (solids
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basis). Wilshire shall promptly notify DuPont when either Sales Threshold is
satisfied and shall pay corrected invoices to reflect the applicable Price
adjustment for Polymer sold after the Sales Threshold was satisfied but sold
prior to such notice.
L. Payment shall be net cash thirty (30) days from date of DuPont's
invoice payable in U.S. dollars. DuPont may impose a late payment service charge
at the Contract Interest Rate on invoices not paid when due.
M. Failure to give notice of a claim in respect of the Polymer so
delivered or not delivered, as the case may be within one hundred and twenty
(120) days from date of delivery, or the date fixed for delivery (in case of
non-delivery), shall constitute a waiver by Wilshire of all such claims. No
Polymer shall be returned to DuPont without DuPont's prior written permission,
and then only in the manner prescribed by DuPont. Claims include without
limitation, claims of any kind, whether or not
1. for loss, damage, expense or injury
2. with respect to the Polymer delivered or for non-delivery of
the Polymer, or
3. based upon DuPont's
a) breach of warranty, contract, statute, or regulation or
b) negligence, strict liability or
c) any other tort.
N. WILSHIRE'S EXCLUSIVE AND SOLE REMEDY FOR ANY CLAIM IN RESPECT OF THE
POLYMER SO DELIVERED OR NOT DELIVERED AS THE CASE MAY BE SHALL BE A REFUND OF
THE AMOUNT OF THE PURCHASE PRICE PAID, OR IN THE CASE OF NONDELIVERY NOT EXCUSED
BY ARTICLES IV.N. AND O., THE PRICE THAT WOULD HAVE BEEN PAID FOR POLYMER NOT
DELIVERED TO FILL A FIRM ORDER SUBMITTED IN ACCORDANCE WITH ARTICLE IV.E. FOR
THE POLYMER IN RESPECT OF WHICH DAMAGES ARE CLAIMED, AND IN NO EVENT SHALL
DUPONT'S LIABILITY FOR ANY CLAIM BE GREATER THAN THAT AMOUNT.
O. NEITHER PARTY SHALL BE LIABLE FOR SPECIAL, INDIRECT, INCIDENTAL,
PUNITIVE OR CONSEQUENTIAL DAMAGES (INCLUDING, WITHOUT LIMITATION, DAMAGES FOR
LOSS OF BUSINESS PROFITS, BUSINESS INTERRUPTION OR ANY OTHER LOSS), UNDER
ARTICLE IV Sale and Purchase of Polymer, WHETHER OR NOT CAUSED BY OR RESULTING
FROM THE NEGLIGENCE OF SUCH PARTY EVEN IF SUCH PARTY HAS BEEN ADVISED OF THE
POSSIBILITY OF SUCH DAMAGES.
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P. No liability shall result from delay in performance or
non-performance, directly or indirectly caused by circumstances beyond the
control of the party affected, including, but not limited to Act of God, fire,
explosion, flood, war, act of or authorized by any government, accident, labor
trouble or shortage, equipment failure, inability to obtain fuel, power,
material, equipment or transportation or commercial impracticability ("Force
Majeure"). Quantities so affected may be eliminated from this Agreement without
liability, but this Agreement shall remain otherwise unaffected
Q. If for any reason, including without limitation, Force Majeure,
DuPont is unable to supply the total demand for Polymers, DuPont may distribute
its available supply among any or all purchasers as well as other businesses of
DuPont, its business units, affiliates and subsidiaries, on such basis as DuPont
may deem fair and practical without liability for any failure or performance
that may result therefrom. DuPont shall have no obligation to purchase Polymer
to enable it to supply Wilshire under this Agreement. Should DuPont fail to
deliver quantities of Polymer due to operation of Force Majeure or allocation,
Wilshire's Sales Thresholds, Exclusive Minimum Sales and Nonexclusive Minimum
Sales shall be equitably adjusted to reflect the shortfall.
R. In the event that Wilshire's account is past due or Wilshire
repudiates this Agreement as defined in article 2-610, 611 of the Uniform
Commercial Code or files a petition for bankruptcy or reorganization, DuPont,
without advance notice and at DuPont's sole option, may decline to make further
deliveries, except upon payment of all arrearages and receipt of cash in advance
or delivery of security satisfactory to DuPont.
S. All notices (except as otherwise indicated in Article II.B.2 relative
to licenses) required hereunder shall be sent by certified mail return receipt
requested, or by telex confirmed by such certified mail, to the party to be
notified at its following address or at such other address as shall have been
specified in written notice from the party to be notified. If to DuPont,
addressed to
DuPont
Barley Mill Plaza 25
P.O. Box 80025
WILMINGTON, DE l9880-0025
ATTN: Global Segment Manager - Gloves
or to Wilshire addressed to
Wilshire Technologies, Inc.
5861 Edison Place
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19
Carlsbad, CA 92008
ATTN: CFO
All notices hereunder shall be effective upon date of receipt.
V. MISCELLANEOUS TERMS
A. This Agreement, the Confidential Information Agreements, the Stock
Option Agreement effective on the same date as this Agreement and the Trademark
Agreement effective on the same date as this Agreement embody the entire
agreement and understanding between DuPont and Wilshire relative to the subject
matter hereof and there are no understandings, agreements, conditions or
representations, oral or written, expressed or implied, with reference to the
subject matter hereof that are not merged or superseded hereby. No amendment,
modification or release from any provision hereof shall be of any force or
effect unless it is in writing, signed by the party claimed to be bound thereby,
and specifically refers to this Agreement.
B. No waiver by either party of any breach of the covenants herein
contained to be performed by the other party shall be construed as a waiver of
any succeeding breach of the same or any other covenants or conditions hereof.
C. This Agreement is acknowledged to have been made and shall be
construed in accordance with the laws of Delaware; provided that all questions
concerning the construction or effect of patent applications and patents shall
be decided in accordance with the laws of the country of filing of an
application or issuance of a patent.
D. In the event of a dispute between the parties arising out of or
relating to this contract, or the breach thereof,
1. Either party may request that the parties' senior executive
officers directly below the CEO level as to Wilshire and
directly below the Vice President LYCRA as to DuPont meet and
attempt to resolve the dispute.
2. In the event that this procedure fails to resolve the dispute
within forty-five (45) days, either party may request that the
next higher level of management meet and attempt to resolve the
dispute.
3. If after a further thirty (30) day period the matter is not
resolved either party may within the
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next succeeding thirty (30) day period initiate a non-binding
procedure where each party presents its case at a hearing before
a panel consisting of the two businesspersons who last met and a
neutral advisor, who is to be selected from the Center for
Public Resources' Judicial Panel. Following the hearing, the
businesspersons of each party are to meet in an attempt to
resolve the matter.
4. If they are not successful, the neutral advisor may be called
upon to render his opinion as to how the matter would be
resolved had there been a trial in a court of law.
5. If after receiving that opinion, the parties are still unable
to agree, after a 30-day standstill period, either party may
upon notice to the other submit all disputes, claims, questions,
or differences to be finally settled by arbitration administered
by the American Arbitration Association in accordance with the
provisions of its Commercial Arbitration Rules, except that if
the dispute, claim question or difference relates to the
construction or effect of patent applications and patents the
arbitration shall be administered in accordance with the Patent
Arbitration Rules, and judgment on the award rendered by the
arbitrator(s) may be entered in any court having jurisdiction
thereof. Each party shall bear its own costs and expenses and an
equal share of the arbitrator(s)' and administrative fees of
arbitration. However, if a party is awarded judgment in an
amount less than had been recommended by the neutral in Article
V.D.4, that party shall bear the dispute resolution costs of the
other as well as the arbitrator(s) and administrative fees of
arbitration. The place of the arbitration shall be Chicago,
Illinois. The arbitrator(s) will have no authority to award
punitive or other damages not measured by the prevailing party's
actual damages, except as may be required by statute.
E. This Agreement shall be binding upon and inure to the benefit of the
Parties named herein and their respective successors and permitted assigns.
Wilshire may not assign this Agreement nor any rights, interests, or obligations
hereunder to another glove manufacturer or to a competitor of DuPont in the
polymer market. Otherwise, an assignment will be subject to DuPont's written
approval, which shall not be unreasonably withheld.
F. If there is an Unpermitted Change of Control of Wilshire, this
Agreement shall immediately terminate at
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DuPont's sole option. An Unpermitted Change of Control of Wilshire occurs if
1. any person or group or any Affiliate of same which
manufactures gloves becomes the owner of 30% or more of Wilshire
voting stock without the approval of DuPont which approval will
not be unreasonably withheld, or
2. any person or group or any Affiliate of same who is a
competitor of DuPont in the polymer market becomes the owner of
30% or more of Wilshire voting stock, or Wilshire sells or
leases all or substantially all of its assets to such person or
group or an Affiliate of same.
G. Wilshire shall keep adequate records in sufficient detail to document
1. the royalties due from Wilshire, and
2. the sales in each country and region of the Territory,
and permit said records to be inspected at any time during regular business
hours by an independent auditor appointed by DuPont for this purpose, who shall
report concurrently to DuPont and Wilshire the results of its audit.
H. Should any patent licensed to Wilshire hereunder be declared invalid
or not infringed or limited in scope by a final decision of a court or other
tribunal of competent jurisdiction from which there is or can be no appeal
taken, then the construction placed upon said patent by said court or other
tribunal shall be followed by the parties hereto from and after the date of
entry of the decree of said court or tribunal.
I. At Wilshire's request, DuPont may, at its option, furnish such
technical information as DuPont has available with respect to the use of the
Polymer. Unless otherwise agreed in writing, all such technical assistance and
information will be provided gratis, and Wilshire assumes sole responsibility
for results obtained in reliance thereon.
J. DuPont will provide labeling and literature concerning the Polymer
and its properties. Wilshire will forward such information to Wilshire's
employees and any others, including Wilshire's customers, who may handle,
process or sell the Polymer and advise such parties to familiarize themselves
with such information.
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K. All exhibits and schedules referred to in this Agreement are attached
hereto and are incorporated herein by reference as if fully set forth herein.
L. Any term or provision of this Agreement that is invalid or
unenforceable in any situation in any jurisdiction shall not affect the validity
or enforceability of the remaining terms and provisions hereof or the validity
or enforceability of the offending term or provision in any other situation or
in any other jurisdiction. If the final judgement of an arbitrator or court of
competent jurisdiction declares that any term or provision hereof is invalid or
unenforceable, then the arbitrator or court making the determination of
invalidity or unenforceability shall have the power to reduce the scope,
duration, or area of the term or provision, to delete specific words or phrases,
or to replace any invalid or unenforceable term or provision with a term or
provision that is valid and enforceable and that comes closet to expressing the
intention of the invalid or unenforceable term or provision, and this Agreement
shall be enforceable as so modified after the expiration of the time within
which the judgement may be appealed.
M. This Agreement and the rights and licenses granted herein shall
terminate, unless earlier terminated as otherwise provided herein, upon the
expiration of the last to expire patent within DuPont Patents or ten (10) years
from the Effective Date, whichever is later. The term of Article IV is not
affected by this Article V.M.
IN WITNESS WHEREOF, authorized representatives of the parties have executed this
Agreement on the date first above written.
WILSHIRE TECHNOLOGIES, INC.
By: /s/ Kevin Mulvihill
-------------------------------
Title: President and CEO
-------------------------------
E. I. DU PONT DE NEMOURS AND COMPANY
By: /s/ William Ghitis
-------------------------------
Title: Vice President, Global NBD
-------------------------------
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SCHEDULE A
DUPONT PATENTS
----------------------------------------------------
Patent/Application Publication Date
----------------------------------------------------
DE 4336525 A1 19940428
----------------------------------------------------
IT 932220 A0 19931019
----------------------------------------------------
IT 1272741 A 19970626
----------------------------------------------------
JP 7304838 A2 19951121
----------------------------------------------------
US 5728340 A 19980317
----------------------------------------------------
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SCHEDULE B
SPECIFICATIONS
PERCENT SOLIDS, % 18.5 +/- 0.5
--------------------------------------------------------------
40 C FALLING BALL VISCOSITY, POISE 175 +/- 25
-------------------------------------------------------------
INTRINSIC VISCOSITY 1.1 +/- 0.1
-------------------------------------------------------------
% TIO(2) 3.5 +/- 0.3
-------------------------------------------------------------
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SCHEDULE C
Mario,
I pulled out the book you were using from McIvaine and spoke to Fred. There are
several things that we must keep in mind. 1) Japan is listed under East Asia so
you have to take out those numbers. 2) Breaking into the mainland Chinese market
is very difficult at best. 3) If you look at how McIlvaine came up with $'s it
is a function of # of workers, changes per day, # of days put in etc.. what they
don't take into account is the relaundering factor in Japan and Asia. As a
matter of fact, I didn't think about this and it makes sense. We have seen a
desire to relaunder 5 times. 4) The class 1-10 use in Semiconductor is at most
accounts for only 50% to 70% at max of the potential for gloves in that market
at an average of maybe .40 per pair. The Disk Drive market is 30% at .30 per
pair. FPD market is 30% at .40. These are the top three markets. As you can see
with the amount of reuse, I'm nervous about the high number in Japan as it
impacts my total. We will live with this.
Under the Semiconductor section in the McIlvaine report In East Asia, if you
take out Japan and China this leaves you with $111M in gloves sales. If you take
an average price of .40 per pair and 70% as the high end for potential to sell
in the class 1-10 markets you have a potential of 194M pairs( $111M /.40 x 70%).
We have said 7-8% goal with this glove at this kind of price so that is 15M
pairs. This does not take into account relaundering. We are at 13M already in
year three without any relaundering factor.
Under the DiskDrive business the total is $107M. Take an average of .30 per pair
and this is the high end for the class 1-10 cleanroom and this accounts
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for 30% of the total volume. This is a potential of 107M pairs. This does not
take into account relaundering 3-5 times. At 8% that is 8.5M pairs without the
relaundering factor which is like I said about 5 times. We have to be careful
here so that it is not outlandish and I'm nervous that it is now. Lets add
2M pairs, 3M pairs and 4M pairs for a total in Asia of 4M, 10M and 17M and not
separate out the two. Added to the Master total= 22M pairs, 48M pairs and 69M
pairs. Broken into total $'s for Asia is $1M, $2.855M and $6.500M. Master total
for dollars is $6.9M, $16.3M, $26.5M
Mario, that's it!!!!! Let's finish the deal and move on.
Kevin
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