Exhibit 10.13
TECHNOLOGY SERVICES AGREEMENT
This Technology Services Agreement ("Agreement") is made as of 30 Sept.,
1998 (the "Effective Date") by and between Philips Flat Panel Display (Philips
FPD) Co. BV, which has its registered place of business at Professor Holstlaan
4, 5656 AA, The Netherlands (Philips Flat Panel Display (Philips FPD) Co. BV
hereinafter referred to as "Philips") and Who? Vision Systems, Inc., having its
place of business at 100 North Pointe Drive, Lake Forest, CA 92680
("WhoVision").
WHEREAS, the parties are entering into a Technology Transfer Agreement of
even date herewith (the "Technology Transfer Agreement") for the purpose of,
among other things, Philips licensing and disclosing to WhoVision certain
technology in the field of fingerprint sensors based on Philips proprietary
amorphous silicon diode technology (the "Philips Technology") in order to
support WhoVision to develop fingerprint sensor systems based on the Philips
Technology.
WHEREAS, as set forth in the Technology Agreement, Philips is prepared to
grant WhoVision technological support by certain of Philips' design engineers
active in the field of the development of fingerprint sensors.
Now Therefore, in consideration of the mutual covenants herein contained
the parties agree as follows:
1. Definitions. Capitalized terms used and not defined herein shall have
the meanings given them in the Technology Transfer Agreement.
2. Services.
2.1 Philips shall provide to WhoVision the services of certain of its
design engineers active in the field of the development of fingerprint
sensors based on the Philips Technology (the "Philips Engineers") in
order to (i) consult WhoVision regarding the Philips Confidential
Information disclosed by Philips under the Technology Agreement in order
to transfer to WhoVision engineers to know-how embodied in and relating
to the Philips Technology, (ii) actively lead the management of the
development (including consultancy support in production engineering) of
the Photo Sensor System, and (iii) assist WhoVision personnel in the
development of the Capacitive Sensor System. The services shall include
participation in the development of the Cadence ASIC Watson I. Philips
shall allocate a sufficient number of Philips Engineers as agreed
between the Parties
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with sufficient expertise. The scope of the activities of those Philips
Engineers is as described in Exhibit A attached to this Agreement (which
Exhibit may be amended from time to time by mutual consent of the
parties). The parties understand that these are estimates only, and the
parties will discuss from time to time within the Steering Committee
established by the Technology Transfer Agreement the status of each task
and any revisions to such estimates. It is understood that
[xxxxxxxxxxxxx] will be his full time involved as the principal project
manager of the technology transfer, with involvement of qualified
engineers from both Philips FPD and Philips Research.
2.2 Philips will use reasonable efforts to ensure that the cooperation
with WhoVision to achieve the Milestones (as defined in Exhibit D to the
Technology Transfer Agreement) on schedule will be the top priority for
the Philips Engineers assigned to this project.
2.3 In addition to the services set forth in Section 2.1, Philips agrees
to commit an aggregate of [xxx] full time equivalent man-years of time
of Philip Engineers during the first year of the term of this Agreement
toward continuing to advance Philips' technology in the field of
fingerprint sensors, not limited to amorphous silicon diode technology.
Such efforts shall be at Philips' own expense. Licensed Philips
Information (as defined in Section 1.7 of the Technology Transfer
Agreement) developed by Philips after the Effective Date of that
Agreement while and in the course of performing the services to be
provided under this Article 2.3 shall be licensed to WhoVision as set
forth in Section 3.4 of the Technology Transfer Agreement.
2.4 The Philips Engineers will remain as employees of Philips, who shall
be solely responsible for all liabilities as an employer of such
engineers, including without limitation wages, insurance, employment
taxes, employment records and reporting, employee benefits, and
unemployment benefits. Philips will retain control over the activities
of the Philips Engineers.
2.5 The Philips Engineers will perform the services primarily at Philips
facilities, but will travel to WhoVision's facilities or Cadence's
facilities from time to time as reasonably requested by WhoVision where
such travel will facilitate the expeditious completion of the
Milestones. WhoVision shall reimburse Philips for all ordinary and
necessary travel, lodging and related expenses incurred by Philips
Engineers when they travel to WhoVision's or Cadence's facilities, upon
submission of invoices itemizing such expenses in a form reasonably
satisfactory to WhoVision. WhoVision may send its personnel to Philips'
facilities or Cadence's facilities, at WhoVision's expense and with
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reasonable notice, to work with the Philips Engineers. The Philips
Engineers shall comply with all reasonable, consistently applied
WhoVision work rules while at the WhoVision facility, and WhoVision
personnel shall comply with all reasonable, consistently applied Philips
work rules while at the Philips facility.
3. Term. This Agreement shall commence on the Effective Date and shall
continue until March 31, 2000, or so much earlier as the [xxxxxxx] man years of
the Philips Engineers have been used by WhoVision or otherwise if mutually
agreed.
4. Compensation. For the services performed pursuant to Section 2.1,
WhoVision shall pay Philips in accordance with Exhibit B attached to this
Agreement. Compensation shall be paid on the basis of the time actually spent by
the Philips Engineers and materials actually used.
5. Ownership of Inventions and Intellectual Property. Philips acknowledges
and agrees that WhoVision shall become the owner of all Inventions and
proprietary information and all Intellectual Property rights therein, developed,
conceived, or made by the Philips Engineers in the WhoVision Field of Use,
whether alone or in conjunction with WhoVision or Cadence personnel, in the
performance of the services under Section 2.1 of this Agreement. Philips
acknowledges that all copyrightable works shall be considered works made for
hire under the U.S. Copyright Act. Philips hereby assigns and transfers to
WhoVision, and shall cause each Philips Engineer to assign and transfer to
WhoVision, all of their right, title and interest in and to all such works and
Inventions, and agrees that it and they shall, at the request of WhoVision,
cooperate with WhoVision in any patent or copyright applications which needs to
be accounted for in the [xxxxxx] man years of Engineers as committed to by
Philips, while WhoVision remains solely responsible for the adverse consequences
on meeting the Milestone Schedule.
6. Nondisclosure of Confidential Information Concerning Business. In the
performance of the services hereunder, each Party may acquire from the other
Party Confidential Information. Each Party will comply with the non-use and
non-disclosure provisions of Article 8 of the Technology Transfer Agreement with
respect to such Confidential Information.
7. Termination
7.1 Each Party may terminate this Agreement on thirty (30) days prior
written notice in case of a material breach by the other Party of his
obligations under this Agreement.
7.2 Philips may also terminate this Agreement only in the event of a
termination of the licenses granted in Article 3 of the Technology
Agreement.
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8. Indemnities.
8.1 WhoVision shall indemnify Philips and its employees against all
claims for damage to persons or property asserted with respect to the
Philips Engineers' work at WhoVision's facilities unless and except to
the extent such damage is due to the gross negligence or wilful
misconduct of Philips or the Philips Engineers.
8.2 Philips shall indemnify WhoVision and its employees against all
claims for damage to persons or property asserted with respect to
WhoVision's personnel's work at Philips facilities unless and except to
the extent such damage is due to the gross negligence or wilful
misconduct of WhoVision or the WhoVision personnel.
9. Force Majeure. If either party to this Agreement is prevented from or
delayed in the performance of any of its obligations under this Agreement by
reason of acts of God, war, strikes, riots, storms, fires, or any other cause
whatsoever beyond the reasonable control of the party, the party so prevented or
delayed will be excused from the performance of any such obligation to the
extent and during the period of such prevention or delay.
10. Notices. Any notice, submission, or communication required or permitted
under the terms of this Agreement, or required by law, whether or not so
required elsewhere in this Agreement, must be in writing and trust be (a)
delivered in person, (b) sent by first class registered mail, return receipt
requested, or air mail, as appropriate, or (c) sent by overnight air courier; in
each case properly posted and fully prepaid to the appropriate address set forth
below:
If to Philips:
If to WhoVision: WhoVision Systems, Inc.
100 North Pointe Drive
Lake Forrest, CA 92630
Attn: Alex Dickinson, CEO
Either party may change its address for notice by notice to the other party
given in accordance with this Section 10. Notices will be deemed to have been
given upon the earlier of (i) actual delivery in person, (ii) the date of a
receipt of such notice signed by an authorized representative of the party being
notified, (iii) the date of a written confirmation of receipt by the party being
notified, or (iv) thirty (30) days after deposit in the mail as set forth above.
11. Payment. All payments made under this Agreement by either party must be
in U.S. Dollars.
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12. Language. This Agreement is in the English language only, which
language will be controlling in all respects, and any version hereof in any
other language is not binding on the parties hereto. The parties shall make or
give all communications and notices pursuant to this Agreement in the English
language.
13. Governing Law. This Agreement will be governed by, and construed and
interpreted in accordance with, the laws of the State of California, without
regard to its conflicts of laws principles.
14. Counterparts. This Agreement may be executed in counterparts, each of
which shall be deemed an original, but both of which together shall constitute
one and the same instrument.
The parties have signed below to indicate their acceptance of the terms and
conditions of this Agreement:
Philips Flat Panel Display Who?Vision System, Inc.
(Philips FPD) Co. B.V.
By: /s/ C.L. M. Van Der Klauw By: /s/ Alex Dickinson
---------------------------- ------------------------
Name: C.L. M. Van Der Klauw Name: Alex Dickinson
-------------------------- ----------------------
Title: General Manager Title: CEO
-------------------------- ----------------------
By: /s/ Matthew T. Medeiros
----------------------------
Name: Matthew T. Medeiros
--------------------------
Title: CEO Flat Displays
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EXHIBIT A
Scope of Activities
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EXHIBIT B
COMPENSATION
The total expected charges are [xxxxxxxx], as follows:
Time Charges:
[x] manyears @ [xxxxxxxx] US per full-time equivalent, covering photo sensor and
capacitive sensor development services
Materials Charges:
lotstarts [xxxxxxxxxxx]
test equipment [xxxxxxxxxxx]
electronics/tooling [xxxxxxxxxx]
Payment Terms:
Invoices to be presented monthly for actual services performed and materials
used; payable within 30 days after invoice
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