EXHIBIT 10.2
LICENSE AGREEMENT
THIS AGREEMENT (the "Agreement") is entered into as of 8/28/98, by and
between [Newco], a _______________ corporation ("Licensor") and ChatCom, Inc., a
California corporation ("Licensee") with reference to the following facts:
A. Licensor is the sole owner of the BrightStar technology, which
technology is more fully described in Exhibit A hereto (the "Technology").
B. Licensor desires to license the Technology to Licensee and Licensee
is willing to license the Technology from Licensor on the terms and conditions
hereinafter set forth.
Section 1 License
1.1 Grant of License. Licensor hereby grants to Licensee the exclusive,
worldwide right and license to develop, practice and use the Technology,
including, without limitation, the right to manufacture, have manufactured, use
and sell, products based on the Technology (the "Licensed Products"), in any and
all applications throughout the world. Licensed Products shall not include RAID
or other peripherals.
1.2 Exclusivity. Subject to the terms and conditions hereinafter set
forth, the license granted pursuant to this Agreement is an exclusive license,
and Licensor accordingly shall have no right (i) to practice or use or to
license others to practice or use any of the Technology for any purpose; or (ii)
to manufacture, have manufactured, use, or sell any Licensed Product.
Section 2 Royalties
2.1 Within 30 days after the end of each calendar quarter during the term
of this Agreement, Licensee shall pay to Licensor a running royalty in an amount
equal to 5% of the net sales of the Licensed Products for such calendar quarter,
as determined in accordance with the books and records of Licensee (which books
and records are to be maintained in accordance with GAAP). Net sales of the
Licensed Products shall be equal to sales of Licensed Products to customers as
recorded by Licensee for the applicable period, less (i) shipping and transport
fees, (ii) duties and taxes and (iii) actual credits for returns or defective
merchandise. The Licensee may bill customary charges for installation,
separately.
Section 3 Term
This Agreement shall remain in effect in accordance with its terms;
provided, however, that Licensor shall have the right to terminate this
Agreement only under any of the following circumstances:
(a) the filing of any voluntary bankruptcy proceeding by the
Licensee.
(b) a failure on the part of Licensee to make any payment due under
Section 2 hereof which is not cured within five business days following written
notice from Licensor of such default.
(c) a material default or breach on the part of the Licensee in the
performance or non-performance of its obligations under this Agreement which are
not cured by Licensee within thirty (30) days after its receipt of written
notice from Licensor specifying such default.
An involuntary bankruptcy filing against Licensee (whether or not
subsequently dismissed) will not terminate the term of this Agreement.
Section 4 Conversion to Non-exclusive License
The license granted to Licensee pursuant to this Agreement shall be
converted to a non-exclusive license with the same terms and conditions as
otherwise set forth in this Agreement upon any sale of all or substantially all
of Licensee's assets or the sale or license of the Technology by the Licensee
that does not generate for Licensee at least $8,000,000 in distributable
aggregate proceeds (in the form of cash or securities). Distributable aggregate
proceeds may include minimum cumulative guaranteed license fees or royalties
that are to be paid to Licensee (subject to the reasonable credit approval of
such third party by the Licensor and the present value of which shall be
calculated using an interest rate of twelve percent (12%) per annum, compounded
annually).
In the event that all or a part of the Licensee is sold through a merger
or stock transaction in which the stock issued to Licensee's shareholders is
registered under the Securities Act of 1933 and is issued by a company with a
net worth of at least $30,000,000 that is listed an the New York Stock Exchange,
American Stock Exchange or Nasdaq National Market System (a "Qualifying Stock
Transaction"), and in which the fair market value of such transaction is less
that $8,000,000, then the License granted herein shall become non-exclusive and
at Licensor's option, the Licensor shall have the right upon prior written
notice to the Licensee to, concurrently with the closing of such merger or stock
transaction, reinstate its equity, debt and warrant positions (with the $400,000
consideration paid by the Licensor at the Closing of its purchase of the
Technology being treated as a loan at 10% per annum interest from such Closing)
and, at Licensor's option, have all, or any portion of such notes, loan and
equity holdings become convertible into a demand note in the aggregate amount of
Licensor's investment in such equity, loan, debt and warrants being converted
(including accrued dividends and interest), with an interest rate of 12% per
annum (or such lower rate as required by law) and secured by the License.
In the event that all or a part of Licensee is sold through a merger or
stock transaction that is not a Qualified Stock Transaction and in which the
fair market value of the transaction is less than $8,000,000, then the License
granted herein shall become non-exclusive and at Licensor's option, the Licensor
shall have the right upon prior written notice to the Licensee to, concurrently
with the closing of such merger or stock transaction, reinstate its equity, debt
and warrant positions (with the $400,000 consideration paid by the Licensor at
the Closing of its purchase of the Technology becoming convertible into shares
of common stock at $.05 per share), and at Licensor's option, have all, or any
portion of such notes, consideration and equity holdings become convertible into
a demand note in the aggregate amount of Licensor's investment in such equity,
consideration, debt and warrants being converted (including accrued dividends
and interest), with an interest rate of 12% per annum (or such lower rate as may
be required by law), and secured by the License.
2.
Section 5 Purchase Option
Licensor shall sell all of its right, title and interest in the Technology
to Licensee, free and clear of all liens, claims and encumbrances for one dollar
($1.00) in connection with (a) any asset sale by Licensee or any sale or
licensing of the Technology by Licensee to a third party that generates for
Licensee at least $8,000,000 in distributable aggregate proceeds (in the form of
cash or readily marketable securities), which may include minimum cumulative
guaranteed license fees or royalties that are to be paid to Licensee (subject to
the reasonable credit approval of such third party by the Licensor and the
present value of which shall be calculated using an interest rate of twelve
percent (12%) per annum, compounded annually) or (b) a merger having at least
$8,000,000 in fair market merger value. The distributable aggregate proceeds
value shall be distributed to Licensor in accordance with Exhibit B which is
attached hereto, unless Licensor elects to reinstate its equity, debt and
warrants positions as described below in this Section 5.
The closing of the sale of the Technology to Licensee shall occur
immediately prior to the scheduled closing of the asset sale, merger or
licensing by Licensee to a third party, and such sale of the Technology to
Licensee by Licensor shall be rescinded in the event the closing with the third
party is not consummated within 30 days of the closing of the sale of the
Technology to Licensee by Licensor. Licensor shall execute and deliver to
Licensee all such additional agreements, instruments, documents and materials
and take such other actions as Licensee may reasonably request to effectuate the
foregoing. Upon purchase of the Technology by Licensee pursuant to this Section
5, all of the provisions of this Agreement shall terminate, subject to the
rescission provisions set forth above.
In the event that all or a part of Licensee is sold through a merger or
stock transaction that is a Qualifying Stock Transaction and in which the fair
market value of the transaction is at least $8,000,000, then at Licensor's
option, the Licensor shall have the right upon prior written notice to the
Licensee to, concurrently with the closing of such merger or stock transaction,
reinstate its equity, debt and warrant positions (with the $400,000
consideration paid by the Licensor at the Closing of its purchase of the
Technology being treated as loan at 10% per annum interest from such Closing),
and at Licensor's option, have all, or any such portion of such notes, loan and
equity holdings become convertible into a demand note in the aggregate amount of
Licensor's investment in such equity, debt and warrants being converted
(including accrued dividends and interest), with an interest rate of 12% per
annum (or such lower rate as may be required by law), and secured by a security
interest in the Technology.
In the event that all or a part of Licensee is sold through a merger or
stock transaction that is not a Qualified Stock Transaction and in which the
fair market value of the transaction is at least $8,000,000, then at Licensor's
option, the Licensor shall have the right upon prior written notice to the
Licensee to, concurrently with the closing of such merger or stock transaction,
reinstate its equity, debt and warrant positions (with the $400,000
consideration paid by the Licensor at the Closing of its purchase of the
Technology becoming convertible into shares of common stock at $.05 per share),
and further, at option of the Licensor, have all, or any portion of such notes,
consideration and equity holdings become convertible into a demand note in the
aggregate amount of Licensor's investment in such equity, debt and warrants
being convened (including accrued dividends and interest), with an interest rate
of 12% per annum (or such lower rate as may be required by law), and secured by
a security interest in the
3.
Technology.
Section 6 Additional Obligations of the Parties
6.1 Improvements. The parties shall disclose and communicate to each
other any improvements to the Technology acquired, discovered, invented,
originated, made or conceived after the date of this Agreement (and all such
improvements shall be included, on a royalty-free basis and without additional
consideration, within the scope of the license granted pursuant to this
Agreement). Each party to this Agreement shall take all measures and precautions
reasonably necessary to protect and ensure the secrecy, confidentiality and
value of the Technology and any improvements, excluding any portion of the
Technology or any improvements that shall have become generally known to the
public (other than as a result of the improper disclosure thereof by such
party).
6.2 Patent Applications, etc. Licensor shall file such United States or
foreign patent applications as Licensee may determine to be useful for the
purpose of protecting Licensee's interest in any patentable aspect of the
Technology and any improvements to the Technology, and licensor shall use
reasonable diligence in prosecuting all such patent applications with counsel
acceptable to Licensee. Any such patent application, and any patent that
ultimately issues therefrom, shall automatically become part of the license
granted under this Agreement (and, accordingly, shall automatically be included,
an a royalty-free basis and without additional consideration, within the scope
of the license granted pursuant to this Agreement). All expenses incurred by
Licensor or Licensee in connection with the applications referred to in this
Section 6.2 shall be borne and paid exclusively by Licensee.
6.3 Confidentiality. Licensor shall keep strictly and permanently
confidential all information obtained in connection with this Agreement and the
transactions contemplated by this Agreement. Without limiting the generality of
the foregoing, Licensor shall not use or disclose to any other person (i) any
financial of other information regarding sales of Licensed Products; (ii) any
information regarding sublicensees of Licensee; (iii) any other nonpublic
information regarding the business operations or financial or other affairs of
Licensee; or (iv) any of the terms and provisions of this Agreement, except as
required by law.
4.
6.4 Development of Technology. Licensee shall use its best reasonable
efforts to complete an initial working prototype of the Licensed Product for
Phase I no later than November 1, 1998.
6.5 Marketing of Licensed Products. During the term of this Agreement,
Licensee shall use its best reasonable efforts to market Licensed Products to
the extent it is commercially feasible to do so, taking into account the severe
limitations on Licensee's ability to market Licensed Products caused by
Licensee's impaired financial condition,
Section 7 Claim and Legal Proceedings
7.1 Certain Claims against Licensor. If any claim is asserted or any
legal proceeding is commenced against Licensor relating to activities occurring
during the term of this Agreement, and such claim or legal proceeding involves
any allegation that (i) the use of the Technology or the manufacture, use, or
sale of any Licensed Product (other than any improvements or modifications to
the Technology or Licensed Product made by Licensor that are not made under the
direction of the Licensee) infringes or has infringed any patent or other
proprietary right of any person; or (ii) any patent right relating to the
Technology (other than any improvements or modifications to the Technology or
Licensed Product made by Licensor that are not made under the direction of the
Licensee) is invalid or unenforceable, then Licensor shall immediately provide
Licensee with written notice of the assertion of such claim or the commencement
of such legal proceeding and shall immediately furnish to Licensee copies of all
correspondence, pleadings and other materials relating to such claim or legal
proceeding. At Licensee's expense, Licensee shall assume the defense of any such
claim or legal proceeding. Once Licensee assumes the defense of any such claim
or legal proceeding, then:
(a) Licensee shall have the exclusive right to control the defense
of such claim or legal proceeding with counsel of its own choosing;
(b) Licensor shall, at Licensee's own expense, provide Licensee with
such information and assistance as Licensee may request regarding such claim or
legal proceeding;
(c) Licensee shall not enter into any settlement with respect to
such claim or legal proceeding without the consent of Licensor (which shall not
be unreasonably withheld or delayed);
(d) the amount payable to the complaining party in connection with
any settlement of such claim or legal proceeding, and the amount of any damages
or costs awarded to the complaining party by any court, arbitrator, or other
trier of fact, shall be borne and paid exclusively by Licensee;
(e) all expenses incurred by Licensor or Licensee in connection with
such claim or legal proceeding (including costs of investigation and attorneys'
fees, whether incurred before or after the commencement of any such legal
proceeding) shall be borne and paid exclusively by Licensee; and
5.
Without limiting the generality of the foregoing, in the event such claim
or legal proceeding involves any allegation that the use of any of the
Technology or the manufacture, use, or sale of any Licensed Product infringes or
has infringed any patent or other proprietary right of any person, then
Licensee's obligation to make royalty payments under this Agreement shall not be
suspended as the result of such claim or legal proceeding.
7.2 Certain Claims against Licensee. If any claim is asserted or any
legal proceeding is commenced against Licensee, and such claim or legal
proceeding involves any allegation of the type referred to in the first sentence
of Section 7.1 of this Agreement, then:
(a) Licensor shall, at Licensee's expense, provide Licensee with
such information and assistance as Licensee may request for the purpose of
enabling Licensee to defend such claim or legal proceeding;
(b) Licensee shall have the exclusive right to control the defense
of such claim or legal proceeding with counsel of its own choosing, and shall
have the exclusive right to settle such claim or legal proceeding (without the
need to obtain any consent or approval of Licensor or any other person) on such
terms as Licensee, in its discretion, determines to be appropriate;
(c) the amount payable to the complaining party in connection with
any settlement of such claim or legal proceeding, and the amount of any damages
or costs awarded to the complaining party by any court, arbitrator or other
trier of fact, shall be borne and paid exclusively by Licensee;
(d) all expenses incurred by Licensee in connection with such claim
or legal proceeding (including costs of investigation and attorneys' fees,
whether incurred before or after the commencement of any such legal proceeding)
shall be borne and paid exclusively by Licensee.
Without limiting the generality of the foregoing, in the event such
claim or legal proceeding involves any allegation that the use of the Technology
or the manufacture, use, or sale of any Licensed Product infringes or has
infringed any patent or other proprietary right of any person, then Licensee's
obligation to make royalty payments under this Agreement shall not be suspended
as a result of such claim or legal proceeding.
6.
7.3 Infringement of Technology by Third Parties.
(a) If Licensor becomes aware of any actual or possible infringement
of any of the Technology by any person, then Licensor shall immediately provide
Licensee with written notice of such actual or possible infringement and shall
immediately furnish to Licensee any available evidence of such actual or
possible infringement. Regardless of which party first becomes aware of the
possible infringement of any of the Technology, Licensee shall have the
exclusive right, in its discretion, to assert "Infringement Claims" (as
hereinafter defined) and to commence and control the prosecution of
"Infringement Proceedings" (as hereinafter defined), and Licensor shall not
assert any Infringement Claim or commence any Infringement Proceeding without
Licensee's prior written consent. If Licensee elects to assert any Infringement
Claim, Licensor shall provide Licensee with such information and assistance as
Licensee may request for the purpose of enabling Licensee to pursue such
Infringement Claim. If Licensee elects to commence any Infringement Proceeding,
then:
(i) Licensor shall provide Licensee with such information and
assistance as Licensee may request for the purpose of enabling Licensee to
prosecute such Infringement Proceeding;
(ii) in the event Licensee considers it appropriate to join
Licensor in such Infringement Proceeding, Licensor shall execute such documents
and take such other actions as Licensee may reasonably request for that purpose;
(iii) in the event Licensee determines that it lacks standing to
commence such Infringement Proceeding, Licensor shall execute such documents and
take such actions as Licensee may reasonably request for the purpose of
commencing such Infringement Proceeding in Licensor's name; and
(iv) Licensee shall, in all events, have the exclusive right to
control the prosecution of such Infringement Proceeding with counsel of its own
choosing, regardless of whether such Infringement Proceeding is commenced in its
own name or in the name of Licensor.
(b) If an Infringement Claim or an Infringement Proceeding is
asserted or commenced, then Licensee shall bear and pay all "Prosecution
Expenses" (as hereinafter defined) incurred by Licensee and Licensor in
connection with such Infringement Claim or Infringement Proceeding, as such
expenses are incurred (it being recognized, however, that Licensor's right to
incur expenses on its own in connection with any Infringement Claim or
Infringement Proceeding is limited by virtue of the provisions of Section 7.3(a)
of this Agreement, which give licensee the exclusive right to assert
Infringement Claims and to commence and control the prosecution of Infringement
Proceedings).
7.
(c) If a "Net Recovery" (as hereinafter defined) is realized in
connection with any Infringement and Claim or Infringement Proceeding, and if
the amount of such Net Recovery exceeds the total of the parties' "Unreimbursed
Expense Amounts" (as hereinafter defined), then (1) such Net Recovery shall be
paid and applied first to reimburse the parties' Unreimbursed Expense Amounts in
full; and (2) the remaining portion of such Net Recovery shall be paid to and
shared equally by Licensee and Licensor. If the amount of such Net Recovery is
less than the total of the parties' Unreimbursed Expense Amounts, then such Net
Recovery shall be paid to and shared by Licensee and Licensor in proportion to
their respective Unreimbursed Expense Amounts.
(d) For purposes of this Section 7.3:
(i) "Infringement Claim" shall mean any claim involving any
allegation of infringement of any of the Technology Rights;
(ii) "Infringement Proceeding" shall mean any legal proceeding
(whether commenced on behalf of Licensor or on behalf of Licensee) involving any
allegation of infringement of any of the Technology Rights;
(iii) the "Prosecution Expenses" incurred in connection with an
Infringement Claim or Infringement Proceeding shall include all expenses
incurred by Licensee and all expenses incurred by Licensor in pursuing or
prosecuting such Infringement Claim or Infringement Proceeding (including costs
of investigation and legal fees incurred by Licensee, regardless of whether such
costs or fees are incurred before or after the commencement of any Legal
Proceeding);
(iv) the amount of the "Net Recovery" realized in connection
with any Infringement Claim or Infringement Proceeding shall be equal to the
gross dollar amount recovered (whether by judgment or settlement) in connection
with such Infringement Claim or Infringement Proceeding;
(v) Licensor's "Unreimbursed Expense Amount" as of any time
shall be equal to the excess (if any) of (1) all Prosecution Expenses previously
borne and paid by Licensor in connection with Infringement Claims and
Infringement Proceedings, over (2) all amounts previously paid to Licensor under
clause "(1)" of the first sentence of Section 7.3(c) of this Agreement and under
the second sentence of Section 7.3(c) of this Agreement; and
(vi) Licensee's "Unreimbursed Expense Amount" as of any time
shall be equal to the excess (if any) of (1) all Prosecution Expenses previously
borne and paid by Licensee in connection with Infringement Claims and
Infringement Proceedings, over (2) the total of all amounts previously paid to
Licensee under clause "(1)" of the first sentence of Section 7.3(c) of this
Agreement and under the second sentence of Section 7.3(c) of this Agreement.
8.
(e) In the event the Licensee elects not to pursue a claim against a
third party as described, the Licensor may pursue such claim against a third
party and after the Licensor has been reimbursed for all of its Unreimbursed
Expense Amounts as set forth above, the distribution of any Net Recovery shall
be in accordance with the terms in Section 7.3(c) above.
Section 8 Representations and Warranties
8.1 Representation and Warranties by Licensor
Licensor hereby represents and warrants as follows:
8.1.1 Ownership of Technology. Licensor is the owner and has sole
and exclusive possession of, and has good and valid title to, all of the
Technology. Licensor owns the Technology free and clear of any liens, security
interests, licenses, charges, encumbrances, equities, claims, or restrictions.
Licensor is not a party to and is not bound by any agreement or understanding
(whether written, oral, express, or implied) relating to any of the Technology,
and there is no agreement, understanding, judgment, order, or decree to which
any of the Technology is subject. The Technology includes all proprietary rights
and all other rights, property, assets, information and knowledge necessary to
enable Licensee to develop, manufacture, use, and sell Licensed Products.
8.1.2 Binding Nature of Agreement. This Agreement and each
obligation of Licensor hereunder constitutes a valid and binding obligation of
Licensor. This Agreement is enforceable against Licensor in accordance with its
terms, except as may be limited by bankruptcy, insolvency or other creditors
rights laws.
8.1.3 Noncontravention. Neither the execution and delivery of this
Agreement nor the performance of this Agreement will result (with or without
notice or lapse of time) in (i) a violation of any law, rule, regulation,
judgment, order, or decree to which Licensor or any of the Technology is
subject; (ii) a breach or violation of any agreement or understanding (whether
oral, written, express, or implied) to which Licensor is a party or by which
Licensor is bound; or (iii) the termination of, or the imposition of any lien,
security interest, license, charge, encumbrance, equity, claim, restriction, tax
or assessment on or with respect to, any of the Technology.
8.2 Representations and Warranties by Licensee
Licensee hereby represents and warrants as follows:
8.2.1 Binding Nature of Agreement. This Agreement and each
obligation of Licensee hereunder constitutes a valid and binding obligation of
Licensee. This Agreement is enforceable against Licensee in accordance with its
term, except as may be limited by bankruptcy, insolvency or other creditors
rights laws:
9.
8.2.2 Noncontravention. Neither the execution and delivery of this
Agreement nor the performance of this Agreement will result (with or without
notice or lapse of time) in (i) a violation of any law, rule, regulation,
judgment, order, or decree to which Licensee or any of the Technology is
subject; (ii) a breach or violation of any agreement or understanding (whether
oral, written, express, or implied) to which Licensee is a party or by which
Licensee is bound; or (iii) the termination of, or the imposition of any lien,
security interest, license, charge, encumbrance, equity, claim, restriction, tax
or assessment on or with respect to, any of the Technology.
Section 9 Indemnification by Licensee
Without in any way limiting any of the rights or remedies otherwise
available to any of the Indemnitees, Licensee shall indemnify and hold harmless
Licensor (including all of its officers, directors, affiliates, counsel and
other agents and representatives) against and from any losses, damages,
injuries, lost opportunities, liabilities, exposure, claims, demands,
settlements, judgments, awards, fines, penalties, taxes, fees, charges, or
expenses (including attorneys' fees) that are directly or indirectly suffered or
incurred at any time by such indemnitee, or to which such indemnitee may
otherwise become subject at any time, and that become payable or arise directly
or indirectly out of or by virtue of, or relate directly or indirectly to:
(a) any breach by Licensee or default by Licensee in the performance
of, or any failure on the part of Licensee to observe, perform or abide by, any
restriction, covenant, obligation, warranty or other provision contained in this
Agreement;
(b) the inaccuracy of any of the representations and warranties
contained in Section 8 of this Agreement;
(c) any legal proceeding relating to any of the foregoing; or
(d) any claim or legal proceeding of the type referred to in Section
7.1 or Section 7.2 of this Agreement.
Section 10 Indemnification by Licensor
Licensor shall indemnify and hold harmless Licensee (including all of its
officers, directors, affiliates, counsel and other agents and representatives)
against and from any losses, damages, injuries, lost opportunities, liabilities,
exposure, claims, demands, settlements, judgments, awards, fines, penalties,
taxes, fees, charges, or expenses (including attorneys' fees) that are directly
or indirectly suffered or incurred at any time by such indemnitee, or to which
such indemnitee may otherwise become subject at any time, and that become
payable or arise directly or indirectly out of or by virtue of, or relate
directly or indirectly to, any breach by Licensor or default by Licensor in the
performance of, or any failure on the part of Licensor to observe, perform, or
abide by, any covenant, obligation, or other provision contained in this
Agreement or the inaccuracy of any of the representations and warranties
contained in Section 8 of the Agreement or any legal proceeding relating to any
of the foregoing.
10.
Section 11 Miscellaneous Provisions
11.1 Notices. Any notice, demand, consent, request, or other
communication required or permitted to be delivered hereunder to either party
hereto (the "receiving party") shall be in writing and shall be deemed properly
delivered, given, and received on the earlier of (i) the date of actual delivery
of such notice, demand, consent, request, or other communication to the
receiving party at the address set forth beneath the name of the receiving party
below (or at such other address as the receiving party shall have specified in a
written notice delivered to the other party hereto); or (ii) the date three
business days after the date on which such notice, demand, consent, request, or
other communication is deposited in the United States mail as registered or
certified mail, postage prepaid, with return receipt requested, addressed to
the receiving party at the address set forth beneath the name of the receiving
party below (or at such other address as the receiving party shall have
specified in a written notice delivered to the other party hereto):
Licensor: President
[Newco]
c/o Vermont Research Products, Inc.
11 Riverside Street
Nashua, New Hampshire 03062
Licensee: President
ChatCom, Inc.
9600 Topanga Canyon Blvd.
Chatsworth, California 91311
11.2 Headings. The underlined headings contained in this Agreement are
for convenience of reference only, shall not be deemed to be a part of this
Agreement and shall not be referred to in connection with the construction or
interpretation of this Agreement.
11.3 Counterparts. This Agreement may be executed in several counterparts,
each of which shall constitute an original and all of which, when taken
together, shall constitute one agreement.
11.4 Governing Law. This Agreement shall be construed and interpreted in
accordance with, and shall be governed in all respects by, the laws of the state
of California (without giving effect to principles of conflicts of laws).
11.
11.5 Dispute Resolution. Subject to Section 11.6 of this Agreement, any
controversy, claim, or dispute (referred to collectively as a "claim" for
purposes of this Section 11.5) arising out of or relating to this Agreement, or
the breach of any provision of this Agreement, shall be settled by arbitration,
and in connection therewith the parties hereto agree that:
(a) Either Licensor or Licensee may initiate arbitration of a claim
by giving written notice to the other party (the "Arbitration Notice").
(b) Within ten days after the date on which the Arbitration Notice
is given, Licensor and Licensee shall agree upon a single arbitrator or, if they
fail to do so for any reason, at any time after the expiration of such ten-day
period, either party may request the American Arbitration Association to
designate an arbitrator. Any arbitration proceeding shall be held in Los
Angeles, California; provided, however, that if (i) the claim being arbitrated
relates exclusively to a breach by Licensee of its obligation to make royalty
payments to Licensor under Section 2 of this Agreement; and (ii) Licensor shall
have stated in the Arbitration Notice that the arbitration proceeding relating
to such claim is to be held in Boston, Massachusetts, provided, however, then
the arbitration proceeding relating to such claim shall be held in Boston,
Massachusetts.
(c) The arbitrator shall promptly consider the facts in dispute and
resolve the same in accordance with the American Arbitration Association (or any
successor organization if the American Arbitration Association no longer
exists). The decision of the arbitrator shall be final, conclusive, and binding
upon Licensor and Licensee.
(d) The fees and expenses of the arbitrator in any such proceeding
(including the fees and expenses of any person retained by the arbitrator) and
the fees and expenses of counsel for Licensor and of counsel for Licensee shall
be borne by the respective parties as follows:
(i) the party that did not initiate such proceeding shall bear
the portion of such fees and expenses represented by the fraction having a
numerator equal to the net dollar amount of any recovery actually awarded to the
initiating party by the arbitrator in such proceeding and having a denominator
equal to the maximum aggregate dollar amount originally sought to be recovered
by the initiating party in connection with the claim being arbitrated; and
(ii) the initiating party shall bear the remaining portion of
such fees and expenses.
In the event that multiple claims shall be involved in any such proceeding, the
fees and expenses of such proceeding shall be allocated as provided above based
on the outcome of the claim having the largest dollar amount originally sought
to be recovered.
12.
(e) The arbitrator shall have the power to grant injunctive relief
and other provisional remedies and to issue such orders as may be deemed
necessary in connection therewith.
(f) Judgment upon any decision by or award of the arbitrator in any
such proceeding may be entered by any court of competent jurisdiction, and
Licensor hereby irrevocably consents and submits to the jurisdiction of all
courts of the State of California and all federal courts sitting in the Central
District of California over any suit, action or other legal proceeding commenced
for the purpose of enforcing or entering judgment upon any such decision or
award.
11.6 Specific Performance. The parties acknowledge that the obligations
and other provisions contained in this Agreement are reasonable and necessary to
protect their legitimate business interests, and that any breach or violation of
any of such obligations or other provisions will result in irreparable injury to
the non-breaching party for which damages will not be an adequate remedy. The
parties therefore acknowledge and agree that, notwithstanding anything to the
contrary in Section 11.5 of this Agreement, if any party hereto breaches or
violates or threatens to breach or violate any of the obligations or other
provisions contained in this Agreement, then (in addition to any compensatory,
punitive, or other damages that the non-breaching party shall be entitled to
recover) the non-breaching party shall be entitled to obtain preliminary and
permanent injunctive relief and shall be entitled to obtain other equitable
relief and exercise other equitable remedies in connection with such breach or
violation or threatened breach or violation, at the non-breaching party's
election, either through an arbitration proceeding described in Section 11.5 of
this Agreement or by application to any court having jurisdiction, or both. If
either party is required to post a bond or provide any other security in
connection with any suit, action, or other legal proceeding in which the non-
breaching party seeks to obtain equitable or other relief in connection with any
such breach or violation or threatened breach or violation, then the breaching
party shall reimburse the non-breaching party for the cost of such bond or other
security in the event that the non-breaching patty obtains equitable or other
relief (other than ex parte relief or preliminary injunctive relief) in
connection with such suit, action, or other Legal Proceeding. The parties hereby
irrevocably consent and submit to the jurisdiction of all courts of the State of
California and all federal courts sitting in the Central District of California
over any suit, action or other legal proceeding commenced on behalf of either
party for the purpose of obtaining any equitable relief or exercising any
equitable remedy of any nature.
11.7 Assignment and Sublicense.
(a) Licensor may sell, transfer or assign the Technology or any part
of or interest therein provided that the assignee provides reasonable assurances
to the Licensee that such assignee will be bound by all of the terms and
conditions of this agreement and will not pledge or encumber any part of the
Technology or otherwise subject the Technology or any part thereof to any lien
or security interest. In the event the license granted herein shall become non-
exclusive pursuant to the provisions of Article IV, the Licensor would not be
required to provide any assurances to the Licensee whatsoever.
13.
(b) In accordance with Sections 4 and 5 above and with the prior
written consent of the Licensor which shall not be unreasonably withheld (such
consent shall be deemed given if Licensor fails to object within five (5) days
after Licensor receives written notice), the Licensee may, assign any or all of
its rights or delegate any or all of its obligations under this Agreement to any
person or entity that acquires or otherwise succeeds to (whether by acquisition
of assets, or otherwise) all or substantially all of Licensee's assets or
business. In the event Licensee assigns its rights and delegates its obligations
under this Agreement as permitted by this Section 11.7(b), Licensee shall
automatically (and without the necessity of any further action on the part of
Licensor) be fully and unconditionally released and discharged from all of its
obligations under this Agreement.
(c) With Licensor's prior written consent which shall not be
unreasonably withheld (such consent shall be deemed given if Licensor fails to
object within five (5) days after Licensor's receipt of written notice), the
Licensee may grant sublicenses to such persons, for such territories and on such
reasonable business terms as Licensee determines to be appropriate.
(d) Any attempted transfer, assignment or delegation which does not
fully comply with the provisions set forth in Sections 11.7 (a), (b) and (c)
above, shall be deemed null and void and of no force and effect.
11.8 Successors and Assigns. Subject to the provisions of Section 11.7 of
this Agreement, this Agreement shall inure to the benefit of Licensor and to the
benefit of Licensee and the other Indemnitees. Subject to the provisions of
Section 11.7 of this Agreement, this Agreement shall be binding upon (a)
Licensor and its successors and assigns; and (b) Licensee and its successors and
assigns.
11.9 Severability. In the event that any provision of this Agreement, or
the application of such provision to any Person or set of circumstances, shall
be determined to be invalid, unlawful, void, or unenforceable to any extent, the
remainder of this Agreement, and the application of such provision to Persons or
circumstances other than those as to which it is determined to be invalid,
unlawful, void, or unenforceable, shall not be affected and shall continue to be
valid and enforceable to the fullest extent permitted by law.
11.10 Entire Agreement. This Agreement sets forth the entire understanding
of the parties hereto with respect to the subject matter of this Agreement and
supersedes all prior agreements and understandings between the parties hereto
relating to the subject matter of this Agreement.
11.11 Waiver. No failure on the part of either party hereto to exercise any
power, right, privilege, or remedy hereunder, and no delay on the part of either
party hereto in exercising any such power, right, privilege, or remedy, shall
preclude any other or further exercise thereof or of any other power, right,
privilege, or remedy.
11.12 Construction. Each party hereto agrees that any rule of construction
to the effect that ambiguities are to be resolved against the drafting party
shall not be applied in the construction or interpretation of this Agreement. As
used in this Agreement, the words "include" and "including," and variations
thereof, shall not be deemed to be terms of limitation.
14.
11.13 Additional Documents and Actions. At Licensee's expense, Licensor
agrees to execute and deliver, or cause to be executed and delivered, such
agreements, instruments and documents (including, without limitation, a
memorandum of license suitable for recording in the U.S. Patent and Trademark
Office and satisfactory in form and substance to Licensee), and to take such
other actions, as Licensee reasonably determines to be necessary or appropriate
for the purpose of effectuating, evidencing, implementing, or facilitating the
consummation of any of the transactions contemplated by this Agreement or for
the purpose of enabling Licensee to enforce any of its rights under this
Agreement.
IN WITNESS WHEREOF, Licensor and Licensee have caused this Agreement to be
executed as of the date first above written.
VERMONT RESEARCH PRODUCTS, INC.
Licensor:
--------------------------
a corporation
----------------------
By:
--------------------------------
Licensee; CHATCOM, INC.
a California corporation
By: /s/ E. CAREY WALTERS, CEO
--------------------------------
E. CAREY WALTERS, CEO
15.
EXHIBIT A
---------
BrightStar
----------
BrightStar is a modular consolidated server system incorporating Seller's
RAINS (Redundant Array of Independent Network Servers) technology. Provides for
the collocating of multiple servers within a single, standard-sized 19 inch
chassis and allows for an environment of disparate server technologies.
Packaging consists of multiple servers sharing peripherals, power supplies and
other resources delivering enhanced management and easier upgrades or
replacements. The midplane is designed for "hot-swappable" modules, isolated
from system peripherals providing a flexible, open architecture computing
environment.
-------------END EXHIBIT A-------------
1.
EXHIBIT B
---------
DISTRIBUTION OF PROCEEDS
------------------------
Distribution of % of Incremental % of Incremental
Proceeds Proceeds Proceeds
- -------------------------- ---------------- ----------------
Up to $1,000,000 75%-Licensor 25%-Licensee
$1,000,000 to $5,999,999 48.5%-Licensor 51.5%-Licensee
$6,000,000 to $7,999,999 68%-Licensor 32%-Licensee
$8,000,000 to $9,999,999 60%-Licensor 40%-Licensee
$10,000,000 to $12,999,999 21%-Licensor 79%-Licensee
$13,000,000 to $16,000,000 7.5%-Licensor 92.5%-Licensee
Over $16,000,000 All to Licensee
Example:
A sale generating $9,000,000 of proceeds will be distributed as follows:
Licensor $5,135,000
Licensee $3,865,000
2.