EXHIBIT 10.29
TECHNOLOGY SHARING AGREEMENT
This is a Technology Sharing Agreement (hereinafter, the AGREEMENT)
dated as of March 26,1998 by and among Campbell Soup Company, a New Jersey
corporation (CSC) and Vlasic Foods International Inc., a New Jersey corporation
(together with is successors and permitted assigns, SPINCO).
BACKGROUND
A. Spinco is currently a wholly owned subsidiary of CSC. Pursuant to a
Separation and Distribution Agreement, dated as of March 26, 1999 (the
DISTRIBUTION AGREEMENT), CSC shall distribute the stock of Spinco to CSC's
shareowners (the DISTRIBUTION), following which Distribution each of CSC and
Spinco shall continue in existence as independent, publicly-traded companies.
B. This Agreement is entered into in conjunction with the Distribution
Agreement in order to facilitate (i) the transfer to Spinco of certain patent
rights and technical information currently owned by CSC, (ii) the license to
Spinco of certain patent rights and technical information currently owned by
CSC, (iii) the license to CSC of certain patent rights currently owned by
Spinco, and (iv) the license back to CSC of certain patents currently owned by
CSC but which will be transferred to Spinco under this Agreement.
C. CSC wishes to grant the assignments and licenses to Spinco set forth in
this Agreement and Spinco wishes to accept such assignments and licenses on the
terms and conditions set forth herein. Spinco wishes to grant the licenses to
CSC set forth in this Agreement and CSC wishes to accept such licenses on the
terms and conditions set forth herein.
TERMS
NOW, THEREFORE, in consideration of the respective agreements and
covenants contain herein, and other good and valuable consideration, the receipt
and sufficiency of which is hereby acknowledged, and intending to be legally
bound hereby, the parties agree as follows:
SECTION 1. DEFINITIONS.
(a) As used herein, the following terms have the following meanings:
ACTION means any claim, suit, arbitration, inquiry, proceeding or
investigation by or before any court, governmental or other regulatory or
administrative agency or commission or any other tribunal.
ASSIGNED CSC INTELLECTUAL PROPERTY RIGHTS means collectively the
ASSIGNED CSC PATENTS and the ASSIGNED CSC TECHNICAL INFORMATION.
ASSIGNED CSC PATENTS means any and all Patents currently owned by
the CSC which, as of the date of this Agreement, are or have in the past been
used exclusively or primarily in the Spinco Business, including, without
limitation, the Patents listed on Schedule A.
ASSIGNED CSC TECHNICAL INFORMATION means any and all Technical
Information currently owned by the CSC which, as of the date of this Agreement,
is or has in the past been used or is intended for use exclusively or primarily
in the Spinco Business, including, without limitation, the Technical Information
specified on Schedule B.
CSC INTELLECTUAL PROPERTY RIGHTS means collectively the ASSIGNED CSC
INTELLECTUAL PROPERTY RIGHTS and the SHARED CSC INTELLECTUAL PROPERTY RIGHTS.
PATENTS means any and all issued patents, patent applications,
industrial design rights and the inventions covered by such patents, patent
applications and industrial design rights (including all corresponding patents,
patent application and industrial design rights throughout the world, and all
continuations, continuations-in-part, divisionals, extensions, reissues,
reexaminations and renewals thereof) that are (i) owned by CSC, or (ii) owned by
Spinco, and which, as of the date of this Agreement, are or have in the past
been used in the Spinco Business as such business or businesses are or were
previously conducted by CSC and its Subsidiaries.
SHARED CSC INTELLECTUAL PROPERTY RIGHTS means collectively the
SHARED CSC PATENTS and the SHARED CSC TECHNICAL INFORMATION.
SHARED CSC PATENTS means any and all patents currently owned by CSC
(other than the Assigned CSC Patents) which, as of the date of this Agreement,
are used in both the Spinco Business and the CSC Business, including, without
limitation, the Patents listed on Schedule C.
SHARED CSC TECHNICAL INFORMATION means any and all Technical
Information owned by CSC (other than the Assigned CSC Technical Information)
which, as of the date of this Agreement, is used or is intended for use in both
the Spinco Business and the CSC Business, including, without limitation, the
Technical Information listed on Schedule D.
SHARED SPINCO PATENTS means any and all Patents currently owned by
Spinco and the Assigned CSC Patents, which, as of the date of this Agreement,
are used in both the Spinco Business and the CSC Business, including, without
limitation, the Patents listed on Schedule E.
TECHNICAL INFORMATION means any and all information and data
(including, without limitation, any trade secrets, product formulas, processing
and equipment design and information, specifications, know how, show how,
manufacturing, research, unpatented inventions, industrial property rights, and
other technical information and data) that is (i) owned by CSC, or (ii) owned by
Spinco, and which, as of the date of this Agreement, is or has in the past been
used or reduced to practice for use or is intended for use in the Spinco
Business.
(b) All other capitalized terms used but not otherwise defined herein
shall have the meanings ascribed thereto in the Distribution Agreement.
2
SECTION 2. ASSIGNMENTS FROM CSC TO SPINCO.
(a) Effective as of the Distribution Date, CSC hereby assigns and
transfers to Spinco, its successors and assigns, all of CSC's right, title, and
interest, in the United States of America and all foreign countries, in and to
(i) the Assigned CSC Intellectual Property, (ii) all income, royalties, fees,
damages, and payments now or hereafter due or payable by third parties in
respect thereto, and (iii) any and all causes of action (either in law or in
equity), and the right to enforce any rights and file any causes of action,
including the right to recover damages, for any past, present, or future
infringement or misappropriation thereof.
(b) Spinco shall be responsible, at its sole cost and expense, for filing
any documents, paying any fees or other payments, or taking any other action
necessary or advisable to record, evidence, perfect, maintain and effectuate the
rights assigned to Spinco hereunder, including, without limitation, filing a
recordation of the assignments of the Assigned CSC Patents with the U.S. Patent
and Trademark Office and applicable foreign governmental offices. At Spinco's
reasonable request and Spinco's expense, CSC shall from time to time after the
date hereof, execute and deliver such other instruments and documents, in form
or substance reasonably satisfactory to Spinco and otherwise take reasonable
steps to cooperate with Spinco, to record, evidence, perfect, maintain and
effectuate the rights assigned to Spinco hereunder.
(c) The assignments under this Section 2 are contributions to the capital
of Spinco.
SECTION 3. LICENSE TO SPINCO. CSC hereby grants to Spinco, effective as of the
Distribution Date and subject to the terms, covenants, conditions, and
limitations set forth in this Agreement, the Distribution Agreement, and any
other Ancillary Agreements, an exclusive (except as to CSC and its Affiliates)
license throughout the world to use in the Spinco Business (a) the Shared CSC
Patents for the remainder of the terms of such Patents (including any extensions
and renewals thereof and (b) the Shared CSC Technical Information in perpetuity,
for a combined single royalty payment of Twenty-Seven Thousand Dollars
(US$27,000), payable within thirty (30) days after the date hereof. The parties
acknowledge and agree that use of the Shared CSC Intellectual Property by either
party or its Affiliates shall be deemed to include any direct or indirect use in
the furtherance of the business of such party and its Affiliates.
SECTION 4. LICENSES TO CSC. Spinco hereby grants to CSC, effective as of the
Distribution Date and subject to the terms, covenants, conditions, and
limitations set forth in this Agreement, the Distribution Agreement, and any
other Ancillary Agreements, an exclusive (except as to Spinco and its
Affiliates) license to use the Shared Spinco Patents for the remainder of the
terms of such Patents (including any extensions and renewals thereof) throughout
the world in the CSC Business for a combined single royalty payment of
Twenty-Three Thousand Dollars (US$23,000), payable within thirty (30) days after
the date hereof. The parties acknowledge and agree that use of the Shared Spinco
Patents by either party or its Affiliates shall be deemed to include any direct
or indirect use in the furtherance of the business of such party and its
Affiliates.
3
SECTION 5. INTELLECTUAL PROPERTY RIGHTS.
(a) Spinco acknowledges that, as between CSC and Spinco, CSC owns all
title to the Shared CSC Intellectual Property Rights, in each case subject to
the license granted to Spinco hereunder. Spinco acknowledges that it has
received a license to use the Shared CSC Intellectual Property Rights and that
this Agreement does not constitute any form of assignment or transfer of
ownership therein to Spinco.
(b) CSC acknowledges that, as between Spinco and CSC, Spinco owns all
title to the Shared Spinco Patents, in each case subject to the license granted
to CSC hereunder. CSC acknowledges that it has received a license to use the
Shared Spinco Patents and that this Agreement does not constitute any form of
assignment or transfer of ownership therein to CSC.
(c) CSC shall be responsible in the first instance, at its sole cost and
expense, for filing any documents, paying any fees or other payments, or taking
any other action which it deems necessary or advisable, in its reasonable
business judgment, to protect, maintain and enforce the parties' rights in and
to the Shared CSC Intellectual Property Rights, including, without limitation,
filing and prosecuting such patent and copyright applications as it deems
advisable and Spinco agrees to provide CSC, at CSC's expense, with such
assistance and cooperation in connection therewith as CSC may reasonably
request. In the event that CSC chooses to file and prosecute any patent and
copyright applications in connection with the Shared CSC Intellectual Property
Rights, it shall do so in its own name. In the event that CSC chooses not to or
fails to take such action as Spinco deems necessary or prudent to protect,
maintain and enforce the parties' rights in and to the Shared CSC Intellectual
Property Rights, Spinco shall have the right, at its sole cost and expense, to
file any documents, pay any fees or other payments, or take any other action
which it deems necessary or advisable, in its reasonable business judgment, to
protect, maintain and enforce the parties' rights therein and thereto,
including, without limitation, filing and prosecuting such patent and copyright
applications as it deems advisable and CSC agrees to provide Spinco, at Spinco's
expense, with such assistance and cooperation in connection therewith as Spinco
may reasonably request. In the event that Spinco chooses to file and prosecute
any patent and copyright applications in connection with the Shared CSC
Intellectual Property Rights, it shall do so in CSC's name.
(d) Spinco shall be responsible in the first instance, at its sole cost
and expense, for filing any documents, paying any fees or other payments, or
taking any other action which it deems necessary or advisable, in its reasonable
business judgment, to protect, maintain and enforce the parties' rights in and
to the Shared Spinco Patents including, without limitation, filing and
prosecuting such patent applications as it deems advisable and CSC agrees to
provide Spinco, at Spinco's expense, with such assistance and cooperation in
connection therewith as Spinco may reasonably request. In the event that Spinco
chooses to file and prosecute any patent applications in connection with the
Shared Spinco Patents, it shall do so in it own name. In the event that Spinco
chooses not to or fails to take such action as CSC deems necessary or prudent to
protect, maintain and enforce the parties' rights in and to the Shared Spinco
Patents, CSC shall have the right, at its sole cost and expense, to file any
documents, pay any fees or other payments, or take any other action which it
deems necessary or advisable, in its reasonable business judgment, to protect,
maintain and enforce the parties' right therein and thereto, including, without
limitation, filing and prosecuting such patent and copyright applications as it
4
deems advisable and Spinco agrees to provide CSC, at CSC's expense, with such
assistance and cooperation in connection therewith as CSC may reasonably
request. In the event that CSC chooses to file and prosecute any patent and
copyright applications in connection with the Shared Spinco Patents, it shall do
so in Spinco's name.
(e) Spinco shall comply with the laws and relations of all relevant
countries with respect to Shared CSC Intellectual Property Rights, including,
without limitation, all laws and regulations with regard to the import/export of
such technology and the marking of goods or other materials that incorporate or
utilize any of the Shared CSC Patents. CSC shall comply with the laws and
regulations of all relevant countries with respect to Shared Spinco Patents,
including, without limitation, all laws and regulations with regard to the
import/export of such technology and the marking of goods or other materials
that incorporate or utilize any of the Shared Spinco Patents.
(f) No party shall have any obligation to assign, license, share or
provide to the other party any patents, patent applications, industrial design
right, inventions, trade secrets, or any other proprietary information or know
how created, developed or acquired by such party after the Distribution Date
except to the extent contemplated by the Distribution Agreement and the other
Ancillary Agreements.
SECTION 6. INFRINGEMENT.
(a) CSC and Spinco shall promptly notify each other of any actual or
threatened infringement with respect to the Shared CSC Intellectual Property
Rights and shall consult with each other about any material action to be taken.
CSC shall use its best reasonable efforts and exercise diligence to successfully
prosecute such infringements. All costs, disbursements and expenses of any
actions which CSC prosecutes for the benefit of Spinco shall be borne by Spinco,
and all other costs, disbursements and expenses shall be borne by CSC. If CSC
elects not to initiate legal action against infringement relating to the Shared
CSC Intellectual Property Rights, Spinco shall have the right at its own expense
to take legal action to obtain appropriate relief, and CSC shall be joined as a
party in any such action and shall reasonably cooperate with and assist Spinco
in its prosecution of such action. The costs of such joinder and any assistance
by CSC shall be reimbursed by Spinco.
(b) CSC and Spinco shall promptly notify each other of any actual or
threatened infringement with respect to the Shared Spinco Patents and shall
consult with each other about any material action to be taken. Spinco shall use
its best reasonable efforts and exercise diligence to successfully prosecute
such infringements. All costs, disbursements and expenses of any actions which
Spinco prosecutes for the benefit of CSC shall be borne by CSC, and all other
costs, disbursements and expenses shall be borne by Spinco. If Spinco elects not
to initiate legal action against infringement relating to the Shared Spinco
Patents, CSC shall have the right at its own expense to take legal action to
obtain appropriate relief, and Spinco shall be joined as a party in any such
action and shall reasonably cooperate with and assist CSC in its prosecution of
such action. The costs of such joinder and any assistance by Spinco shall be
reimbursed by CSC.
(c) If CSC and Spinco agree to jointly take action against an infringement
relating to the Shared CSC Intellectual Property Rights or the Shared Spinco
Patents, the cost of the action
5
and any damages accruing shall be shared equally. If one party takes action
against an infringer, it shall be entitled to retain all damages, costs or other
compensation it may recover.
(d) The parties agree to fully cooperate with each other in relation to
any legal, administrative or other proceedings relating to the Shared CSC
Intellectual Property Rights or the Shared Spinco Patents.
SECTION 7. INDEMNIFICATION.
(a) Spinco shall indemnify, defend and hold harmless each member of the
CSC Group, and each of their respective directors, officers, employees and
agents (the CSC INDEMNITEES) from and against any and all damage, loss,
liability and expense (including, without limitation, reasonable expenses of
investigation and reasonable attorneys' fees and expenses in connection with any
and all Actions or threatened Actions, but expressly excluding any special or
consequential damages) (collectively, INDEMNIFIABLE LOSSES) incurred or suffered
by any of the CSC Indemnitees as a result of or arising out of use by Spinco and
its Affiliates of the Assigned CSC Intellectual Property Rights and the Shared
CSC Intellectual Property Rights.
(b) CSC shall indemnify, defend and hold harmless each member of the
Spinco Group, and each of their respective directors, officers, employees and
agents (the SPINCO INDEMNITEES) from and against any and all Indemnifiable
Losses incurred or suffered by any of the Spinco Indemnitees as a result of or
arising out of use by CSC and its Affiliates of the Shared Spinco Patents.
SECTION 8. CONFIDENTIALITY.
(a) CSC agrees during the term of this Agreement and thereafter (i) to
treat as confidential all Assigned CSC Technical Information and all non-public
patent applications within the Assigned CSC Patents and the Shared Spinco
Patents, (ii) to use the same level of care to prevent the disclosure thereof as
it uses to protect its own similar confidential or proprietary information but
in no event, not less than a reasonable degree of care, and (iii) not to
disclose or to permit to be disclosed any portion thereof to any third party
other than an Affiliate, without the consent of Spinco.
(b) The Spinco Group agrees during the term of this Agreement and
thereafter (i) to treat as confidential all Shared CSC Technical Information and
all non-public patent applications within the Shared CSC Patents, (ii) to use
the same level of care to prevent the disclosure thereof as it uses to protect
its own similar confidential or proprietary information but in no event, not
less than a reasonable degree of care, and (iii) not to disclose or to permit to
be disclosed any portion thereof to any third party other than an Affiliate,
without the consent of CSC.
(c) The obligations of confidentiality and nondisclosure specified in
subsections (a) and (b) above, shall not apply to any information or data that:
(i) was known to the public or generally available to the public
prior to the date it was received from the disclosing party;
6
(ii) became known to the public or generally available to the
public subsequent to the date it was received from the
disclosing party without any fault of the receiving party;
(iii) is, subsequent to the date of this Agreement, disclosed to the
receiving party by a third party who is under no obligation of
confidentiality regarding the same; or
(iv) is, subsequent to the date of this Agreement, independently
discovered or developed by the receiving party without
reference to or use of any of the disclosed information or
data.
(d) Each party acknowledges and agrees that the confidential information
referred to in this Section 8 is valuable and that breach of this Section 8 may
result in immediate irreparable injury to the other party. Each party agrees
that in the event of a breach or threatened breach by it or its Affiliates of
the terms of this Section 8, the other party shall be entitled to seek from any
court of competent jurisdiction, preliminary and permanent injunctive relief
which remedy shall be cumulative and in addition to any other rights and
remedies to which the party may be entitled.
SECTION 9. DISCLAIMER OF WARRANTIES; NO INDEMNIFICATION; LIMITATION OF
LIABILITY.
(a) ALL ASSIGNMENTS FROM CSC TO SPINCO HEREUNDER ARE ON A QUITCLAIM BASIS
AND ALL LICENSES FROM CSC TO SPINCO ARE ON AN "AS IS" BASIS. ALL WARRANTIES,
EXPRESS OR IMPLIED, ARE HEREBY DISCLAIMED BY CSC. WITHOUT LIMITING THE
GENERALITY OF THE FOREGOING, CSC MAKES NO REPRESENTATION OR WARRANTY, WHETHER
EXPRESS OR IMPLIED, TO SPINCO, ITS AFFILIATES OR ANY THIRD PARTY WITH RESPECT TO
THE CSC INTELLECTUAL PROPERTY RIGHTS, INCLUDING WITHOUT LIMITATION, THE
VALIDITY, ENFORCEABILITY OR OWNERSHIP OF ANY RIGHTS THEREIN, THE RESULTS TO BE
EXPECTED FROM THE USE OF SUCH CSC INTELLECTUAL PROPERTY RIGHTS, OR THAT THE USE
OF SUCH CSC INTELLECTUAL PROPERTY RIGHTS WILL NOT INFRINGE OR OTHERWISE VIOLATE
THE RIGHTS OF ANY THIRD PARTY UNDER THE LAWS OF ANY COUNTRY. CSC SHALL HAVE NO
OBLIGATION TO INDEMNIFY SPINCO OR ITS AFFILIATES IN THE EVENT THAT THE USE OF
SUCH CSC INTELLECTUAL PROPERTY INFRINGES OR OTHERWISE VIOLATES OR IS CLAIMED TO
INFRINGE OR OTHERWISE VIOLATE THE RIGHTS OF ANY THIRD PARTY UNDER THE LAWS OF
ANY COUNTRY.
(b) ALL LICENSES FROM SPINCO TO CSC ARE ON AN "AS IS" BASIS. ALL
WARRANTIES, EXPRESS OR IMPLIED, ARE HEREBY DISCLAIMED BY SPINCO. WITHOUT
LIMITING THE GENERALITY OF THE FOREGOING, SPINCO MAKES NO REPRESENTATION OR
WARRANTY, WHETHER EXPRESS OR IMPLIED, TO CSC, ITS AFFILIATES OR ANY THIRD PARTY
WITH RESPECT TO THE SPINCO SHARED PATENTS, INCLUDING WITHOUT LIMITATION, THE
VALIDITY, ENFORCEABILITY OR OWNERSHIP OF ANY RIGHTS THEREIN, THE RESULTS TO BE
EXPECTED FROM THE USE OF SUCH SPINCO SHARED PATENTS, OR THAT THE USE OF SUCH
SPINCO
7
SHARED PATENTS WILL NOT INFRINGE OR OTHERWISE VIOLATE THE RIGHTS OF ANY THIRD
PARTY UNDER THE LAWS OF ANY COUNTRY. SPINCO SHALL HAVE NO OBLIGATION TO
INDEMNIFY CSC OR ITS AFFILIATES IN THE EVENT THAT THE USE OF SUCH SPINCO SHARED
PATENTS INFRINGES OR OTHERWISE VIOLATES OR IS CLAIMED TO INFRINGE OR OTHERWISE
VIOLATE THE RIGHTS OF ANY THIRD PARTY UNDER THE LAWS OF ANY COUNTRY.
(c) IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES OF ANY KIND, EVEN IF SUCH PARTY WAS ADVISED OR AWARE OF
THE POSSIBILITY OF SUCH DAMAGES, EXCEPT TO THE EXTENT MANDATED BY APPLICABLE
LAW.
SECTION 10. TERMINATION.
(a) Notwithstanding anything herein to the contrary, this Agreement may be
terminated by either CSC or Spinco on written notice at any time prior to the
Distribution Date.
(b) CSC shall have the right to terminate this Agreement at any time if:
(i) Spinco shall be unable to pay its liabilities when due, or
shall make any assignment for the benefit of creditors, or
under any applicable law admits in writing its inability to
meets it obligations when due or commit any other act of
bankruptcy, institute voluntary proceedings in bankruptcy or
insolvency or permit institution of such proceedings against
it; or
(ii) Spinco shall fail to perform or shall be in breach of any
other material term or condition of this Agreement; provided,
however, that if such breach can be cured, termination shall
take effect sixty (60) days after written notice of such
breach is sent by CSC if such breach has not been cured during
such sixty (60)-day period.
(c) Spinco shall have the right to terminate this Agreement at any time
if:
(i) CSC shall be unable to pay its liabilities when due, or shall
make any assignment for the benefit of creditors, or under any
applicable law admits in writing its inability to meet its
obligations when due or commit any other act of bankruptcy,
institute voluntary proceedings in bankruptcy or insolvency or
permit institution of such proceedings against it.
(ii) CSC shall fail to perform or shall be in breach of any other
material term or condition of this Agreement; provided,
however, that if such breach can be cured, termination shall
take effect sixty (60) days after written notice of such
breach is sent by Spinco if such breach has not been cured
during such sixty (60)-day period.
(d) In the event the events set out in Section 10(b)(i) or 10(b)(ii)
occur, CSC shall have the continued rights to use the Shared Spinco Patents in
accordance with the terms and conditions set forth herein. In the event the
events set out in Section 10(c)(i) or 10(c)(ii) occur,
8
Spinco shall have the continued rights to use the Shared CSC Intellectual
Property Rights in accordance with the terms and conditions set forth herein.
SECTION 11. DISPUTES.
(a) Resolution of any and all disputes arising from or in connection with
this Agreement, whether based on contract, tort, statute or otherwise,
including, but not limited to, disputes in connection with claims by third pates
(collectively, DISPUTES), shall be subject to the provisions of this Section 11;
provided, however, that nothing contained herein shall preclude either party
from seeking or obtaining (i) injunctive relief or (ii) equitable or other
judicial relief to enforce the provisions hereof or to preserve the status quo
pending resolution of Disputes hereunder.
(b) Either party may give the other party written notice of any Dispute
not resolved in the normal course of business. The parties shall attempt in good
faith to resolve any Dispute promptly by negotiations between executives of the
parties who have authority to settle the controversy and who are at a higher
level of management than the persons with direct responsibility for
administration of this Agreement. Within 30 days after delivery of the notice,
the foregoing executives of both parties shall meet at a mutually acceptable
time and place, and thereafter as often as they reasonably deem necessary for a
period not to exceed 15 days, to attempt to resolve the Dispute. All reasonable
requests for information made by one party to the other will be honored. If the
parties do not resolve the Dispute within such 45-day period (the INITIAL
NEGOTIATION PERIOD), the parties shall attempt in good faith to resolve the
Dispute by negotiation between (a) in the case of CSC, the Chief Financial
Officer or the Vice President - Treasurer and (b) in the case of Spinco, the
Chief Financial Officer (collectively, the DESIGNATED OFFICERS). Such officers
shall meet at a mutually acceptable time and place (but in any event no later
than 15 days following the expiration of the Initial Negotiation Period) and
thereafter as often as they reasonably deem necessary for a period not to exceed
15 days, to attempt to resolve the Dispute.
(c) If the Dispute has not been resolved by negotiation within 75 days of
the first party's notice, or if the parties failed to meet within 30 days of the
first party's notice, or if the Designated Officers failed to meet within 60
days of the first party's notice, either party may commence any litigation or
other procedure allowed by law.
SECTION 12. ASSIGNMENT/SUBLICENSES.
(a) Neither of the parties may assign or delegate any of its rights or
duties under this Agreement without the prior written consent of the other
party, which consent will not be unreasonably withheld. This Agreement shall be
binding upon, and shall inure to the benefit of, the parties and their
respective successors and permitted assigns.
(b) Notwithstanding anything herein to the contrary, Spinco shall have the
right to sublicense the Shared CSC Intellectual Property Rights to its
Affiliates subject to the terms and conditions set forth herein, provided that
such Affiliates shall have no right to further sublicense such Shared CSC
Intellectual Property Rights without the express written permission of CSC.
9
(c) Notwithstanding anything herein to the contrary, CSC shall have the
right to sublicense the Shared Spinco Patents to its Affiliates subject to the
terms and conditions set forth herein, provided that such Affiliates shall have
no right to further sublicense such Shared Spinco Patents without the express
written permission of Spinco.
SECTION 13. GENERAL.
(a) Notices. All notices, requests, claims and other communications
hereunder shall be in writing and shall be given or made (and shall be deemed to
have been duly given or made upon receipt) by delivery by hand, by reputable
overnight courier service, by facsimile transmission, or by registered or
certified mail (postage prepaid, return receipt requested) to the respective
parties at the addresses (or at such other address for a party as shall be
specified in a notice given in accordance with this Section 13(a)) listed below:
if to CSC, to: Campbell Soup Company
Campbell Place
Camden, New Jersey 08101
Attn.: Trademark Counsel
Fax No. (609) 342-3936
if to Spinco, to: Vlasic Foods International Inc.
P.O. Box 5071
Cherry Hill, New Jersey 08034-5071
Attn.: General Counsel
Fax No. (609) 342-3936
or to such other address as any party may, from time to time, designate in a
written notice given in a like manner. Notice given by hand shall be deemed
delivered when received by the recipient. Notice given by mail as set out above
shall be deemed delivered five calendar days after the date the same is mailed.
Notice given by reputable overnight courier shall be deemed delivered on the
next following business day after the same is sent. Notice given by facsimile
transmission shall be deemed delivered on the day of transmission provided
telephone confirmation of receipt is obtained promptly after completion of
transmission.
(b) No Joint Venture. Nothing herein contained shall be construed to place
the parties in the relationship of partners or joint venturers or principal and
agent or employer and employee and no party shall have the power to obligate or
bind any other party in any manner whatsoever.
(c) Entire Agreement. This Agreement constitutes the entire agreement and
understanding between the parties with respect to the subject matter and
terminates and supersedes any such prior agreement or understanding, oral or
written, between the parties with respect thereto. None of the provisions of
this Agreement can be waived or modified expect in writing signed by all the
parties.
(d) Severability. In the event any provision of this Agreement shall for
any reason be void or unenforceable by reason of any provision of applicable
law, it shall be deleted and the
10
remaining provisions shall continue in full force and effect and be amended to
the extent, if at all, necessary to give effect to the intentions of the parties
as of the date of this Agreement.
(e) Survival. The provisions of Sections 5, 6, 7, 8, 9, 10(d), and 11
shall survive the termination of this Agreement.
(f) No Waiver. No waiver by any party of a breach or a default hereunder
shall be deemed a waiver by such party of a subsequent breach of default of a
similar nature.
(g) Captions. The captions used in connection with the sections of this
Agreement are inserted only for the purpose of reference and shall not affect
the interpretation of this Agreement.
(h) Other Actions. The parties agree to cooperate and to take any
additional action or sign any documents as may be necessary to effectuate the
purpose of this Agreement, including, without limitation, CSC executing and
delivering to Spinco assignments of any Assigned CSC Patents which may be
inadvertently omitted from the Assignment of Patents in Exhibit 1.
11
IN WITNESS WHEREOF, the parties have respectively caused this Agreement to
be executed by a fully authorized officer as of the day and year first above
written.
CAMPBELL SOUP COMPANY VLASIC FOODS INTERNATIONAL INC.
By: /S/ BASIL ANDERSON By: /S/ ROBERT F. BERNSTOCK
----------------------------------- ----------------------------
Name: Basil Anderson Name: Robert F. Bernstock
Title: Executive Vice President/CFO Title: President/CEO
12
SCHEDULE A - ASSIGNED CSC PATENTS
Campbell Law CSC
Case No. Title Investor(s) Country App. No. Date Pat. No. Date Expire Firm Dapk.
240A Process for Chafeller USA 208900 11/14/1980 4342768 8/31/1982 8/31/1999 S&L R&D
Frying Chicken
Parie
280 Brownable Fulds RC/Kwis CAN 415722 11/17/1982 1192436 8/27/1995 8/27/2002 B&W R&D
Dough For SH
Microwave
Cooking
280 Brownable Fulds RC/Kwis USA 323086 11/19/1981 44478781 5/15/1984 11/19/2001 B&W R&D
Dough For SH
Microwave
Cooking
285 Meat Egee/Rickanarud ARO 290371 8/20/1982 238249 3/31/1989 3/31/2004 S&L R&D
Processing
Procedure
285 Meat Egee et al. CAN 428328 5/17/83 1180591 1/8/1985 1/8/2002 S&L R&D
Processing
Procedure
285 Meat Egee et al. GER P3234097,4 9/14/1982 3234097 10/13/1994 9/14/2002 S&L R&D
Processing
Procedure
285 Meat Egee et al. GRB 6225742 9/18/1982 2108821 4/1/1985 9/9/2002 S&L R&D
Processing
Procedure
285 Meat Egee et al. URG 21756 9/14/1982 12557 6/14/1980 9/26/2000 S&L R&D
Processing
Procedure
285 Meat Egee et al. USA 302468 9/16/1981 4388332 6/14/1983 9/18/2001 S&L R&D
Processing
Procedure
322 Mushroom Bretzloff CW CAN 433223 7/28/1983 1199884 1/28/1989 1/28/2003 B&W R&D
Supplement
Containing
Protein and a
Time Delay
322A Mushroom WULC CAN 498762 12/30/1986 1260860 2/26/1989 9/26/2006 B&W R&D
Supplement Bratzloff CW
Law Firms: S&L - Sytmn_____ & Lynch CSC Dept. ENG-Engineering
B&W - Banner & Wilcott PACK-Packaging
B&B - Baker & Botts R&D-Research & Development
SCHEDULE A - ASSIGNED CSC PATENTS
Campbell Law CSC
Case No. Title Investor(s) Country App. No. Date Pat. No. Date Expire Firm Dapk.
322 Mushroom WULC USA 402314 7/27/1982 4534781 8/13/1986 8/13/2002 B&W R&D
Supplement Bratzloff CW
Containing a
Protein and a
Time Delay
322A Mushroom Bratzloff CW USA 711006 3/12/1985 4617047 10/14/1986 10/14/2003 B&W R&D
Supplement
353A Substrate for WULC USA 295319 3/18/1989 4874419 10/17/1989 10/17/2006 B&W R&D
Growing
Shiitake
Mushrooms
453 Production of Low Contie, Joseph A. USA 305713 2/31/1989 s5092904 3/31/1992 3/31/2009 B&W R&D
Cholesterol Johnson, Bobby
Butter Oil by R.
Vapor Sparing
455 Production of Low Johnson, Bobby USA 345576 5/2/1989 4997666 3/8/1991 5/2/2009 B&W R&D
Cholesterol R.
Milk Fat by Contie, Joseph A.
Solvent
Extraction
461 Composite F. Simon USA 783236 9/20/1991 5300747 4/5/1991 4/6/2011 B&W R&D
Material for
Microwave
Heating
Container and
Container
Formed
Therefrom
462 A Pie Having a Swis SH et al. USA 085373 6/14/1987 4917907 4/17/1980 45/16/2007 B&W R&D
Microwave Piercing, BH
Brownable O'Meara JP
Crust and Widieus WA
Method of
Baking Same
480 Novel Dahlberg, Kr USA 298727 1/19/1989 4996390 2/26/1991 1/18/2009 B&W R&D
Interspecific
Mushroom
Strains
501 Method for Conge JA USA 444199 12/1/1999 5091203 2/25/1982 12/1/2009 B&W R&D
Removing
Cholesterol
from Eggs
Law Firms: S&L - Sytmn_____ & Lynch CSC Dept. ENG-Engineering
B&W - Banner & Wilcott PACK-Packaging
B&B - Baker & Botts R&D-Research & Development
SCHEDULE A - ASSIGNED CSC PATENTS
Campbell Law CSC
Case No. Title Investor(s) Country App. No. Date Pat. No. Date Expire Firm Dapk.
504 Method for Welsh RJ et al. USA 93740407 8/31/1992 5302406 4/12/1994 8/31/2012 B&W R&D
Removing
Cholesterol and
Reduced-
Cholesterol Egg
Product
620 Container Baranowski, J CAN 20594403 1/15/1992 2057440 7/3/1996 1/10/2012 B&W ENG
Filling and
Sealing System
620 Container Baranowski, J USA 641136 1/10/1991 5196394 3/23/1993 3/10/2011 B&W ENG
Filling and
Sealing System
m/k/a Flange
Contaminant
Remover
620A Container Baranowski, J USA 718381 6/20/1991 6193298 3/23/1993 1/15/2011 B&W ENG
Filling and
Sealing System
630 Mushroom Dahlberg, KRS USA 139873108 10/22/1993 5196294 4/2/1996 4/2/2013 B&W ENG
Casting Spawn Lapoli, Dena L
646 Methods for Adames, et al. AUST 67790191 6/2/1994 Pending
Preserving (under
Foods at exam)
Ambient
Temperature
without
Preservatives
(Picklet-
lexPak)
646 Methods for Adames, et al. CAN 2,161,335 6/2/1994 2,161,335 11/4/1997 5/2/2014 B&B R&D
Preserving
Foods at
Ambient
Temperature
without
Preservatives
(Picklet-
FlexPak)
546 Methods for Adames, et al. EPC 94916962.8 6/2/1994 Pending B&B R&D
Preserving
Foods at
Ambient
Temperature
without
Preservatives
(Picklet-
FlexPak)
Law Firms: S&L - Sytmn_____ & Lynch CSC Dept. ENG-Engineering
B&W - Banner & Wilcott PACK-Packaging
B&B - Baker & Botts R&D-Research & Development
SCHEDULE A - ASSIGNED CSC PATENTS
Campbell Law CSC
Case No. Title Investor(s) Country App. No. Date Pat. No. Date Expire Firm Dapk.
546 Methods for Preserving Adames, et al. JAPAN 524688194 6/2/1994 Pending B&B R&D
Foods at Ambient
Temperature without
Preservatives (Picklet-
FlexPak)
546 Methods for Preserving Adames, et al. MEXI 943270 6/3/1984 Pending B&B R&D
Foods at Ambient
Temperature without
Preservatives (Picklet-
FlexPak)
549 Free Fatty Acid Removal Conte JA et al. USA 4553882108 6/31/1988 5060980 10/1/1990 5/31/2016 B&W R&D
from Used Frying Fat Stauffer KR
589 Mushroom Supplement McDaniele, Jack USA Pending B&W R&D
Nitrogen Material
Law Firms: S&L - Sytmn______& Lynch CSC Dept. ENG-Engineering
B&W - Banner & Wilcott PACK-Packaging
B&B - Baker & Botts R&D-Research & Development
SCHEDULE B
ASSIGNED CSC TECHNICAL INFORMATION
Plant Variety Protection Application and relevant files pertaining to a jalapeno
pepper plant variety known as "V10443."
Production Heating Direction Development Methodology Manual information
regarding frozen foods; label preparation directions for frozen foods; heating
directions and methodology for preparing frozen food products for consumer
testing; and recipe research substantiation for produce names and claims in
relation to frozen foods; protocepts (a/k/a new product concepts developed into
recipes) for frozen foods; and information on available vendors for outsourcing
heating direction preparation.
Vlasic pickle and Open Pit barbecue sauce recipes contained in the Campbell
Lotus Notes Recipe Database.
1
SCHEDULE C - SHARED CSC PATENTS
292 Nutritionally Enriched and Von Leraner WA/ ARG 299686 3/7/1985 239461 9/29/1989 9/29/2001 B&W R&D
Stabilized Meat Products and Unger BM
Method of Producing Such
Products
327 Hot Solution Injection Calatfeller KA/ USA 721462 4/19/1986 4663170 6/6/1987 4/8/2006 B&W R&D
Story JD/Webb JE
389 Variable-Width Sauce Cramer/Brawin CAN 493099 10/16/1986 1250352 2/26/1989 2/28/2008 S&L ENG
Dispenser
447 Package and Method for Daniels JA JAPAN 3648888 2/18/1988 1764550 8/31/1993 12/4/2007 B&W R&D
Microwave Heating of a
Food Product a/k/a
Microwave pkg of frozen
battered and breaded fish
products
447 Package and Method for Daniels JA USA 016531 2/19/1987 4746249 6/17/1988 2/18/2007 B&W R&D
Microwave Heating of a
Food Product
447 Package and Method for Daniels JA ARG 310101 2/17/1988 243360 8/31/1999 8/31/2008 B&W R&D
Microwave Heating of a
Food Product
447 Package and Method for Daniels JA EPC 88301342.7 2/18/1988 0279669 2/24/1993 2/18/2008 B&W R&D
Microwave Heating of a
Food Product
566 No. Heat Jalapenos and Aravaloe et al. USA 08756,643 2/7/1997 Pending B&B R&D
Products Comprising
Jalapenos (Note: Case 664 is
for the PVP certificate which
is subject to Schedule B
"Assigned Technical
Information")
575 Salt Flavor Enhancing Bonorden and USA 081866,964 5/31/1997 Pending B&B R&D
Compositions, Food Giordano
Products Including Such
Compositions, and Methods
for Preparing Such Products
Law Firms: S&L - Sytmn______& Lynch CSC Dept. ENG-Engineering
B&W - Banner & Wilcott PACK-Packaging
B&B - Baker & Botts R&D-Research & Development
SCHEDULE D
SHARED CSC TECHNICAL INFORMATION
ANTIOXIDANT OF PET SYSTEMS AS IT APPLIES TO ACIDIFIED FOOD PRODUCTS
The use of antioxidants in combination with plastic packaging for acidified food
products to extend the flavor profile and shelf life of those products.
MICROWAVE HEATING DIRECTION DEVELOPMENT
Information as set forth in the Memorandum of Rod Margolis to John Collier dated
February 19, 1998.
1
SCHEDULE E - SHARED SPINCO PATENTS
280 Brownable Dough for Fulds RC/Kwis SH CAN 415723 11/27/1982 1102438 8/27/1995 5/27/2004 B&W R&D
Microwave Cooking
280 Brownable Dough for Fulds RC/Kwis SH USA 323088 11/19/1981 4448791 5/15/1984 11/19/2001 B&W R&D
Microwave Cooking
285 Meat Processing Procedure Egees et al. ARG 290371 8/20/1982 288219 3/31/1989 3/21/2004 S&L R&D
285 Meat Processing Procedure Egees et al. CAN 428326 5/17/1983 1180891 1/81/1980 1/8/2002 S&L R&D
285 Meat Processing Procedure Egees et al. GER P3234397.4 9/14/1982 3234097 10/13/1994 9/14/2002 S&L R&D
285 Meat Processing Procedure Egees et al. ARG 8225742 8/9/1982 2108821 4/11/88 9/9/2002 S&L R&D
285 Meat Processing Procedure Egees et al. URG 21768 8/14/1982 12337 8/4/1985 4/26/2000 S&L R&D
285 Meat Processing Procedure Egees et al. USA 302456 9/16/1981 4380332 6/14/1983 9/15/2001 S&L R&D
462 A Pie Having a Microwave Swis SH et al./ USA 085373 8/14/1987 4917907 4/17/1990 8/14/2007 B&W R&D
Brownable Crust and Piercing, BH
Method of Baking Same O'Meara JP
Widieus WA
520 Container Filling and Baranowski, J CAN 20594403 1/15/1992 2059140 7/9/1998 4/15/2012 B&W ENG
Sealing System
520 Container Filling and Baranowski, J USA 641133 1/18/1981 5130294 3/23/1993 1/15/2011 B&W ENG
Sealing System a/k/a Flange
Contaminent Remover
520A Container Filling and Baranowski, J USA 718384 6/20/1991 6195288 3/23/1993 1/15/2011 B&W ENG
Sealing System
Law Firms: S&L - Sytmn______& Lynch CSC Dept. ENG-Engineering
B&W - Banner & Wilcott PACK-Packaging
B&B - Baker & Botts R&D-Research & Development