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EXHIBIT 10.1
EXHIBIT "A"
CLARK UNIVERSITY LICENSE AGREEMENT
This Agreement is made and entered into as of September 17, 1998 ("the
date hereof"), by and between Clark University, a corporation duly organized and
existing under the laws of the Commonwealth of Massachusetts and having a
principal office at 950 Main Street, Worcester, Massachusetts ("Clark") and
REDOX Technology Corporations, a Delaware corporation having its principal
office at 340 N. Sam Houston Pkwy, East, Suite 250, Houston, TX 77060
(hereinafter "REDOX").
The parties agree as follows:
ARTICLE I - DEFINITIONS.
1.1. "Patents" shall mean the United States and foreign patents and
patent applications set forth in Exhibit B attached hereto and any United
States and foreign patents issuing from any such patent applications, and any
continuations, continuations-in-part, divisions, reissues, extensions, and
renewals of any of the foregoing.
1.2. "Technology" shall mean the trade secret, know-how, data, and
other information (whether or not patentable or qualifying as a trade secret)
relating to the "Field of Use" and that was discovered or developed at Clark and
that has been revealed to REDOX or that may hereafter be revealed to REDOX
pursuant to the requirements of this Agreement. The Technology shall not include
the Patents but shall include any information included in patent applications if
and when it is subsequently deleted therefrom before the patent is issued.
1.3. "Confidential Technology" shall mean all Technology, and all
information in or concerning patent applications included in the Patents,
provided, however, that REDOX need not keep confidential any information that:
(a) at the date of its disclosure by Clark to REDOX was known
to REDOX as documented in REDOX's files and is revealed to Clark within thirty
(30) days after Clark's disclosure to REDOX; or
(b) at the date of disclosure by Clark to REDOX was, or
thereafter becomes, through no fault of REDOX, publicly known by means of a
single publication or so widely known and used that it can be said to be
generally available to the public.
1.4. "Field of Use" shall mean Aluminum or Aluminum Alloy Sulfur energy
storage devices employing REDOX proprietary thin-film electrode fabrication
methods for use on board apparatus to be deployed into space or beneath the sea,
and for the separate use
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as a back-up power source for medical life support systems, and as a portable,
non-integrated, stand alone, back-up power source for electronic devices.
1.5. "License Period" shall mean collectively the respective periods
commencing on the date hereof and ending (unless sooner terminated): as to the
Patents, until expiration of the last to expire of the Patents (treating pending
applications as issued patents for so long as they are pending).
1.6. "Licensed Products" shall mean all products that are within or
made by a process within the Field of Use and that embody or are made in
accordance with or using or are based upon or derived from any aspect of the
Patents.
1.7 "Gross Sales" shall mean the gross sales of Licensed Products
billed to customers by REDOX, its Subsidiaries, and its sublicensees, less the
following:
(a) allowances and adjustments actually credited to customers
for spoiled, damaged, outdated, and returned Licensed Products;
(b) trade, quantity, cash, and prompt payment discounts
actually allowed and taken; and
(c) third-party charges of the following kinds collected by
the seller from the buyer and separately identified on the invoice:
transportation charges, sales taxes, and excise taxes and duties.
Gross Sales shall also include and be deemed to have been made with respect to
any Licensed Products used by REDOX, any Subsidiary, or any sublicensee, for its
own purposes, or transferred to any third-party for less than the transferee is
then charging in normal arms-length sales transactions; and Gross Sales in all
such cases shall be deemed to have been made at the prices therefor at which
such Licensed Products are then being sold to the customers of such user or
transferor (or of REDOX, if a Subsidiary is a user but not a seller) in
arms-length sales transactions.
1.8. "Subsidiary" shall mean any corporation, partnership, or other
business organization that directly or indirectly controls, is controlled by, or
is under common control with REDOX. For the purpose of this Agreement, "control"
shall mean the holding directly or indirectly of fifty percent (50%) or more of
the voting stock or other ownership interest of the corporation or other
business organization invoiced.
ARTICLE II - GRANT: SUBLICENSES.
2.1. Grant. Subject to the terms and conditions hereinafter set forth,
Clark hereby grants to REDOX, to the extent that it lawfully may, a
royalty-bearing, exclusive license to practice the Patents and use the
Technology in the Territory, only for the purpose of making,
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using, and selling Licensed Products (the "License"). The License shall exist as
such an exclusive, royalty-bearing license during and will terminate as such at
the end of the License Period, unless sooner terminated as hereinafter provided.
If the License as to the Technology does not terminate before the end of the
License Period for the Technology, then the License to use the Technology shall
continue in effect thereafter without limitation of time as a non-exclusive,
fully-paid-up license but without fights of sublicensing, and subject to
termination only as provided in Article IX.
2.2. Reserved Rights. During the License Period, Clark shall have no
right to use the Patents or Technology to make, use, or sell Licensed Products
for commercial purposes in the Field of Use, but Clark reserves to itself (a)
the right at all times to make and use Licensed Products for research purposes
within Clark, and (b) all other rights not granted to REDOX, including the
rights to use and permit the use of Patents and Technology for any purpose not
in conflict with the provisions of the License.
2.3. Licensee Rights. Clark shall have no right to use ReDox
proprietary thin film electrode fabrication methods without the prior written
permission of ReDox.
2.4. Sublicenses. REDOX shall also have the right to grant to its
Subsidiaries or other sublicensees, exclusive or non-exclusive sublicenses under
the License during the License Period; provided, however, and REDOX agrees that:
(a) the terms and conditions of each sublicense shall be
consistent with the terms and conditions of this Agreement and shall contain,
among other things (by way of example but not limitation), provisions
substantially similar to and consistent with: the "Gross Sales" definition;
Article III (providing, among other things, that royalties shall be paid to
REDOX in amounts at least equal to those of Article III hereof, so that REDOX
may in turn pay those royalties to Clark); Article V; Section 7.1 (so that no
representations or warranties inconsistent with that Article shall be extended
to or by any sublicensee); Article IX, but the sublicense must terminate not
later than one day before the end of the License Period, or earlier if the
License terminates earlier for any reason; Article XI; and Article XII.
(b) each sublicense shall provide that the obligations to
Clark of Sections 3.5, 3.6, 3.7, 7.1, 8.1, 8.5, and 9.2, and Articles V, XI, and
XII of this Agreement shall be binding on the sublicensee and be enforceable
both by Clark and the REDOX.
(c) Clark shall have the right to approve any sublicense that
grants exclusive rights of any kind to anyone other than a Subsidiary, such
approval not to be unreasonably withheld or delayed;
(d) REDOX shall furnish to Clark a true and complete copy of
each sublicense agreement and each amendment thereto, promptly after the
sublicense or amendment has been agreed upon;
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(e) no Subsidiary or other sublicensee shall have the right to
further license, sublicense, or assign its rights without the approval of Clark;
and
(f) no sublicense shall relieve REDOX of any of its
obligations hereunder, and REDOX shall be responsible for the acts or omissions
of its Subsidiaries and sublicensees and for compliance by them with their
obligations, and REDOX shall take all steps necessary to enforce that compliance
to the extent required to allow REDOX to fully comply with all of its
obligations under this agreement.
ARTICLE III - PAYMENTS; RECORDS.
3.1. License Fee. REDOX agrees to pay to Clark on the date hereof the
non-refundable sum of $30,000, which shall not be creditable against any
minimum payments or royalties due hereunder.
3.2. Minimum Payments. REDOX agrees to pay to Clark on the anniversary
of this Agreement, a non-refundable payments in the amount of $35,000, each such
payment to be creditable against the royalties that are due under Section 3.3,
below, with respect to the period beginning on the due date of that payment and
ending with the day before the due date of the next following payment.
3.3. Running Royalties. REDOX agrees to pay to Clark royalties of five
percent (5%) of the Gross Sales of Licensed Products, the making, using, or
selling of which infringes (were it not for the License) at least one claim in a
pending application or unexpired and non-lapsed patent included in the Patents
(treating pending applications as issued patents for these purposes);
3.4. Other Payments. In addition to Running Royalties REDOX agrees to
pay CLARK twenty percent (20%) of any payments, including, but not limited to,
sublicense issue fees, received from sublicensees in consideration for licensing
of the Patent Rights. Sponsored research is excluded from such payments.
3.5. Statements; Payments. REDOX shall, within sixty (60) days after
the last days of March, June, September, and December in each year or portion
thereof during the License Period, and within sixty (60) days after the end of
the License Period, provide Clark with a statement accounting for the Gross
Sales of Licensed Products by REDOX, its Subsidiaries, and its sublicensees
(and with copies of the corresponding statements to REDOX from its Subsidiaries
and sublicensees), for the immediately preceding three (3) month period or
portion thereof, accompanied by payment for the full amount of royalties due
under this Article III for that period or portion thereof. Each such statement
shall be certified by the Chief Financial Officer of REDOX as being true,
correct, and complete.
3.6. Currencies. All payments to be paid to Clark shall be computed and
made in United States Dollars, and REDOX shall use best efforts to convert
royalty payments payable on Gross Sales in any country to United States Dollars;
provided, however, that if conversion
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to and transfer of such Dollars cannot be made by REDOX, its Subsidiaries, or
its sublicensees in any country for any reason, REDOX may pay such sums in the
currency of the country in which such Gross Sales are made, deposited in Clark
name in a bank designated by Clark in any such country. The rate of exchange of
local currencies to U.S. Dollars shall be at the rate of exchange prevailing at
the Bank of Boston (or such other bank in Boston, Massachusetts or New York, New
York as Clark may designate from time to time), for currencies of the amounts
involved, as such rate is stated for the first business day after the end of the
period with respect to which the royalties are due.
3.7. Records; Audits. REDOX shall keep (and cause to be kept) and
maintain complete and accurate records of Gross Sales of the Licensed Products
by REDOX, its Subsidiaries, and its sublicensees, in accordance with generally
accepted accounting procedures. Such records shall be accessible to independent
certified public accountants selected by Clark and reasonably acceptable to
REDOX, by audits conducted not more than once a year during the License Period
and for one year after the termination thereof, at any reasonable times during
business hours, for the purpose of verifying Gross Sales and any royalties due
thereon. Such accountants shall disclose to Clark only information relating to
the accuracy of the records kept and the payments made, and shall be under a
duty to keep confidential any other information obtained from such records.
REDOX, its Subsidiaries, and its sublicensees shall not be required to retain
such records for more than three (3) years after the close of any calendar
quarter-year. No period shall be subject to audit under this Section more than
once as to any entity being audited.
3.8. Substantial Underpayment. If any such audit reveals that the
aggregate of royalties paid during any four consecutive calendar quarters was
more than five percent (5%) less than the amount that should have been paid,
then the reasonable expenses of the audit shall be borne by REDOX, which shall
pay those expenses within thirty (30) days after demand therefore by Clark
accompanied by the accountants' statement therefor.
ARTICLE IV - PATENT PROSECUTION.
4.4. Patents Prosecution. Clark shall apply for, seek prompt issuance
of, and maintain while the License is in effect, the Patents in the United
States and in the foreign countries (if any) listed on Exhibit B attached
hereto. REDOX may request Clark to file and prosecute patent applications
corresponding to the Patents in any one or more other countries, and Clark may
of its own accord elect to file and prosecute any such other patent
applications. If REDOX makes any request for such an additional foreign patent
applications, and if Clark decides not file such an application or prosecute
same or maintain a patent so obtained, Clark shall thereafter promptly notify
REDOX and REDOX shall then be entitled, at its own expense, to take over the
application, prosecution, or maintenance, as the case may be, of such patent
application or such patent for the benefit of Clark. In such case, Clark shall
cooperate fully with REDOX and provide all such information and data and execute
any documents reasonable required in order to allow REDOX to do so. REDOX shall
cooperate with Clark in any prosecution, filing, and maintenance, that Clark is
required to or elects to undertake hereunder.
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4.5. Patents Expenses. REDOX shall pay all reasonable costs associated
with the preparation, filing, prosecution, and maintenance of all patent
applications filed and patents obtained, which are incurred by or on behalf of
Clark, to the extent Clark is required by Section 4.4 to do so, or for which
REDOX has requested Clark to make application. Clark shall periodically send
REDOX invoices for any such patent expense incurred by Clark (whether incurred
before or after the date hereof), and REDOX shall pay such invoices within
thirty (30) days of receipt thereof.
ARTICLE V - CONFIDENTIALITY.
5.1. Limitations on Use. Disclosure. REDOX agrees to treat
confidential, and to use and disclose only for the purposes of making Licensed
Products, all Confidential Technology disclosed to it by Clark. REDOX agrees
that it will exercise every reasonable precaution to prevent the disclosure of
Confidential Technology by any of its directors, officers, employees, or agents
to other parties, other than to Subsidiaries and to REDOX sublicensees. Any
Confidential Technology disclosed to Subsidiaries or sublicensees shall be
disclosed on the basis of and subject to the confidentiality provisions of this
Agreement. REDOX agrees to limit the disclosure of the Confidential Technology
to those in REDOX, its Subsidiaries, and its sublicensees who have been
identified in writing to Clark, who have a need to know for the purpose of
making Licensed Products, and who have been instructed by REDOX on the terms of
this Agreement and have agreed to comply with those terms both on behalf of
their employers and as individuals. REDOX agrees to be responsible for all such
compliance and failures thereof.
5.2. Cessation. Any information which is Confidential Technology at the
date of disclosure thereof to REDOX shall cease to be Confidential Technology,
and REDOX, its Subsidiaries, and its sublicenses shall be released from the
provisions of Section 5.1 as to such information on the date when, through no
act or omission on the part of REDOX, its Subsidiaries, or its sublicensees,
such information becomes (a) publicly known by way of a single publication in
which such Confidential Technology is disclosed in reasonable detail, or (b) so
widely known and used in combination that it can be said to be generally
available to the public. Notwithstanding the foregoing, however, REDOX agrees
that before REDOX, its Subsidiaries or its sublicensees may claim that any
Technology, or any patent applications included in the Patents, is not or was
not Confidential Technology, or claim the right to make any use of disclosure in
reliance on the immediately preceding sentence, REDOX will give to Clark at
least sixty (60) days' prior written notice specifying in reasonable complete
detail the information in question, the planned use or disclosure, the claimed
exception permitting such use or disclosure, and the factual basis supporting
REDOX's claim that the exception would permit the planned use or disclosure.
The royalties due to Clark hereunder with respect to Gross Sales shall not in
any way be reduced or otherwise adversely affected by reason of any Confidential
Technology ceasing to be or failing to have the characteristics of Confidential
Technology as defined herein.
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5.3. Time Limit. The provisions of this Article V shall continue to
apply to any information which is Confidential Technology for so long as it
shall remain such notwithstanding any termination of this Agreement or the
License or expiration of the License Period, provided, however, that the
obligations of confidentiality under this Article shall in any event expire and
cease to exist fifteen (15) years from the date hereof.
ARTICLE VI - DILIGENCE
6.1 REDOX agrees to use its best efforts to effect introduction of
Licensed Products for applications in the Field of Use as soon as practical,
consistent with sound and reasonable business practices and judgments. Clark
shall have the right, at any time after six (6) months from the date hereof, to
terminate the License and Clark' obligations under this Agreement if REDOX,
within ninety (90) days after written notice from Clark of such intended
termination, fails to provide written evidence that REDOX is actively attempting
to commercialize Licensed Products.
6.2 In addition, REDOX shall adhere to the following milestones:
[ILLEGIBLE]
[to be agreed to prior to executing the license based on the
business plan submitted by REDOX]
6.4 REDOX's failure to perform in accordance with Articles 6.1 and
6.2 above shall be grounds for Clark to terminate this Agreement pursuant to
Article 9.1 hereof.
ARTICLE VII - REPRESENTATIONS, WARRANTIES, AND LIMITATIONS.
7.1. Clark Disclaimer. CLARK MAKES NO REPRESENTATIONS, EXTENDS NO
WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED (INCLUDING, WITHOUT
LIMITATION, ANY WARRANTIES OF MERCHANTABILITY OR FITNESS FOR PURPOSE), AND
ASSUMES NO RESPONSIBILITIES WHATSOEVER, WITH RESPECT TO THE PATENTS OR
TECHNOLOGY OR THE USE THEREOF, OR THE MANUFACTURE, POSSESSION, USE, MARKETING,
SALE, OR OTHER DISPOSITION BY CLARK, REDOX, OR ANYONE ELSE, OF LICENSED
PRODUCT(S) OR ANY OTHER PRODUCTS OF SERVICES (INCLUDING, WITHOUT LIMITATION,
PRODUCTS MADE BY CLARK, AND CLARK SERVICES, THAT ARE OR WERE FURNISHED TO REDOX
AT ANY TIME BEFORE, ON, OR AFTER THE DATE HEREOF), EXCEPT ONLY AS EXPRESSLY
STATED BELOW IN THIS ARTICLE VII. Without limitation of the foregoing
generality, nothing contained herein or in any disclosure of the Patents or
Technology made by or on behalf of Clark shall be construed as extending any
representation or warranty with respect to the Patents or Technology or Licensed
Products or the results to be obtained by the use of the Patents or Technology
or any Licensed Products, or that anything made, used, or sold by use of the
Patents or Technology or any part thereof, alone or in combination, will be free
from infringement of patents of third parties. CLARK SHALL NOT BE LIABLE TO
REDOX, ITS SUBSIDIARIES, ITS
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SUBLICENSEES, OR ANY OTHER PARTY, REGARDLESS OF THE FORM OR THEORY OF ACTION
(WHETHER CONTRACT, TORT, INCLUDING NEGLIGENCE, STRICT LIABILITY, OR OTHERWISE),
FOR ANY SPECIAL, INCIDENTAL, CONSEQUENTIAL, PUNITIVE, OR OTHER EXTRAORDINARY
DAMAGES ARISING OUT OF OR RELATED TO THIS AGREEMENT, PATENTS, THE TECHNOLOGY,
THE LICENSED PRODUCTS, OR ANY PRODUCTS OR SERVICES FURNISHED OR NOT FURNISHED BY
CLARK, EVEN IF CLARK HAS BEEN ADVISED OF THE POSSIBILITY THEREOF.
REDOX agrees that all warranties, if any, in connection with the sale
or other disposition of any Licensed Products (or any products made by Clark and
furnished at any time to REDOX) by REDOX, its Subsidiaries, or its sublicensees
will be made by them and will not directly or impliedly obligate Clark.
7.2 Clark Representations. Notwithstanding the first sentence of
Section 7.1, Clark:
(a) Warrants to REDOX good title to any tangible personal
property furnished hereunder by Clark to REDOX, including any quantities of
materials similar to the products to be made by REDOX as Licensed Products (but
Clark makes no infringement or other representations or warranties with respect
thereto).
(b) Represents that Clark is a corporation organized and
existing under the laws of the Commonwealth of Massachusetts and has the power
and authority to enter into this Agreement.
(c) Represents that Clark has taken all necessary action to
authorize its execution and delivery of this Agreement by the representatives of
Clark who carried out such execution and delivery, and to authorize the
performance by Clark of its obligations hereunder.
(d) Represents that execution and delivery of this Agreement
and its performance by Clark will not result in any breach or violation of, or
constitute a default under, any agreement, instrument, judgment, or order to
which Clark is a party or by which it is bound.
7.3 REDOX Representations. REDOX represents and warrants to Clark
that:
(a) REDOX is a corporation organized and existing under the
laws of Delaware and has the power and authority to enter into this Agreement.
(b) REDOX has taken all necessary action to authorize its
execution and delivery of this Agreement by the representatives of REDOX who
carried out such execution and delivery, and to authorize the performance by
REDOX of its obligations hereunder.
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(c) Execution and delivery of this Agreement and its Agreement
and its performance by REDOX will not result in any breach or violation of, or
constitute a default under, any agreement, instrument, judgment, or order to
which REDOX is a party or by which it is bound.
ARTICLE VII - INDEMNITY; INSURANCE; INFRINGERS.
8.1. Indemnity. REDOX agrees to exonerate, indemnify, and hold harmless
Clark, its trustees, officers, employees, and agents, from all costs, expenses
(including attorneys' fees), interest, losses, obligations, liabilities, and
damages paid or liability for which is incurred by any of said parties
("Losses"), and which arise out of or are in connection with or are for the
purpose of avoiding any and all claims, demands, actions, causes of action,
suits, appeals, and proceedings ("Claims"), all whether groundless or not, or
the settlement thereof, based on any actual or alleged injuries, damages, or
liability of any kind whatsoever (including, without limitation, personal
injury, death, property damage, breach of warranty, or breach of contract)
arising, directly or indirectly, out of any one or more of: any breach of REDOX
of its representations, warranties, or agreements hereunder; or out of any
manufacture, marketing, possession, use, sale, or other disposition of Licensed
Products or products furnished by Clark to REDOX in connection herewith or in
connection with the Research Agreement (whether same occurs during or after the
License or during or after the License Period) by REDOX, its Subsidiaries, its
sublicensees, or anyone claiming by, through, or under any of them; or any
acquisition, possession, disclosure, or use of the Patents or Technology or any
thereof, by REDOX, its Subsidiaries, its sublicensees, or anyone claiming by,
through, or under any of them; or the presence of REDOX's or its Subsidiaries'
or its Sublicensees' officers, agents employees, invitees, or property or any
thereof on Clark' premises. The obligations of REDOX under this Section 8.1
shall apply in full force whether or not the Claims and any Losses resulted or
are alleged to have resulted in whole or in part from the negligent acts or
omissions of Clark or any other party indemnified under this Section or from
acts or omissions of Clark or such other party for which they or any of them
would otherwise be liable on any other theory, including, without limitation,
any theory of warranty (whether express or implied) or strict liability.
8.2. Defense; Settlement. REDOX shall defend and control negotiation of
settlement of any Claim, with counsel of REDOX's choosing approved in advance by
Clark, which approval shall not be unreasonably withheld. Clark agrees to
cooperate fully in the defense of any Claim and may participate in the defense
with counsel of Clark' choosing, such separate counsel to be at Clark' expense
unless a conflict of interest exists between REDOX and Clark with respect to the
defense, in which case Clark' separate counsel shall be at REDOX's expense. Any
settlement by which Clark would incur any obligation or liability, whether for
the payment of money, the taking of any action, the refraining from any action,
or otherwise, shall require the advance written consent of Clark, which may be
withheld in the sole discretion of Clark without relieving REDOX of any of its
indemnification or other obligations hereunder.
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8.3. Insurance. Not later than thirty (30) days before the time when
REDOX, any Subsidiary, or any REDOX sublicensee shall make, use, or sell any
Licensed Products or any products furnished to REDOX by Clark at any time
(before, on or after the date hereof) in connection herewith or in connection
with the Research Agreement, and at all times thereafter until the expiration of
all applicable statutes of limitation pertaining to any such manufacture,
marketing, possession, use, sale or other disposition of any Licensed Products
or the aforesaid products furnished by Clark (whether same occurs or exists
during or after the existence of the License or during or after the License
Period), REDOX will at REDOX's expense, obtain and maintain in full force and
effect, comprehensive general liability insurance, including product liability
insurance, protecting Clark against all claims, suits, obligations, liabilities,
and damages, based upon or arising out of actual or alleged bodily injury,
personal injury, death, or any other damage to or loss of persons or property,
caused by any such manufacture, marketing, possession, use, sale, or other
disposition. Such insurance policy or policies shall be issued by companies
rated by A. M. Best as A VIII or better (or other companies acceptable to
Clark), shall name Clark as an additional named insured, shall have limits of at
least one million dollars ($1,000,000) per occurrence with an aggregate of three
million dollars ($3,000,000), shall be non-cancelable except upon thirty (30)
days prior written notice to Clark, and shall provide that as to any loss
covered thereby and also by any policies obtained by Clark itself, REDOX's
policies shall provide primary coverage for Clark and Clark' policies shall be
considered excess coverage for Clark.
8.4. Certificates; Policies. REDOX will forthwith after the obtaining
of such insurance required by Section 8.3, obtain and deliver to Clark
certificates of and copies of, and at all times thereafter deliver without
further demand replacement certificates and copies of, all such insurance
policies that are in force and effect. As often as is reasonably requested by
Clark, REDOX will furnish to Clark a complete list, statement, and description
of all insurance called for in this Article, together with certificates and
copies of policies for each insurance company issuing any thereof, that such
insurance in is full force and effect, that all premiums have been paid, and
that such insurance will not be canceled except upon thirty (30) days prior
written notice to Clark.
8.5. Infringers. Each party shall inform the other promptly in writing
of any alleged infringement of the Patents in the Field of Use by a third party,
including all details then available. Clark shall have the right, but shall not
be obligated, to prosecute at its own expense any such infringements, and REDOX
agrees that Clark may join REDOX as a plaintiff at the expense of Clark. In any
infringement action commenced or defended solely by Clark, all expenses and all
recovery for infringement shall be those of Clark.
If Clark has not taken legal action or been successful in obtaining
cessation of the infringement, within one-hundred eighty (180) days of written
notification from REDOX of such infringement, or if Clark elects not to continue
prosecuting any legal action against an infringer, REDOX shall have the right
(while the License is an exclusive one), but shall not be obligated, to
prosecute at its own expense any such infringement. REDOX may join Clark as a
plaintiff in any such infringement suit at REDOX's expense. No settlement,
consent judgment or other voluntary final disposition of the suit may be entered
into without Clark'
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consent, which shall not be unreasonably withheld or delayed. In any such action
by REDOX, Clark shall be entitled to receive an amount equal to the applicable
royalties on any recovery of profits and damages that is in excess of REDOX's
costs and expenses. REDOX shall indemnify Clark against any order for costs or
other payments that may be made against Clark in such proceedings.
If any declaratory judgment action alleging invalidity or
non-infringement of any of the Patents shall be brought against REDOX, Clark
shall have the right at its election made within sixty (60) days after
commencement of that action, to intervene and take over the sole defense of the
action at its expense.
In any infringement suit that either party brings to enforce the
Patents, the other party shall at the request and expense of the party bringing
the suit, cooperate in all reasonable respects, including, to the extent
possible, obtaining the testimony of its employees and making available physical
evidence in the possession of that party.
REDOX, during the exclusive period of the License, shall have the
exclusive right in accordance with the provisions of Section 2.2, to sublicense
any alleged infringer in the Territory for the Field of Use, for future use of
the Patents.
ARTICLE IX - LICENSE TERMINATION.
9.1. Events. The License granted hereunder may be terminated by Clark
pursuant to Article VI or one of the following subsections:
(a) Material Default. If REDOX shall fail after thirty (30)
days written notice from Clark to pay to Clark any royalties or other payments
and payable hereunder, or shall fail in any material way to perform any other
agreement required to be performed by REDOX under this Agreement, or if any
Subsidiary or sublicensee shall be in material breach of any conditions or
obligations affecting Clark and compliance with which REDOX is responsible for
hereunder, or if any representation or warranty of REDOX contained in this
Agreement shall prove to have been inaccurate or misleading in any material way
when made (referred to collectively and individually as a "material default"),
then, without limitation of and in addition to any and all other rights and
remedies available to Clark with respect to such material default, Clark may
terminate the License (whether in its exclusive or non-exclusive period) and
Clark' obligations hereunder by written notice to REDOX at any time after the
expiration of such thirty (30) day notice period if REDOX has not cured the
material default and the effects thereof before Clark gives such notice of
termination to REDOX.
(b) Cessation of Business. If REDOX shall have commenced to
carry on the business of selling any Licensed Products (either directly or
through any Subsidiary or sublicensee) and shall at any time thereafter cease
for a consecutive period of ninety (90) days to carry on such business actively
(either directly or through any Subsidiary or sublicensee), Clark may at any
time thereafter while that state of affairs continues, terminate the License by
written notice to REDOX.
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9.2. Effects. Upon termination of the License for any reason, nothing
herein shall be construed to release REDOX from any obligations hereunder except
those of Article VI, but all rights of REDOX and its Subsidiaries and its
sublicensees to make, use, or sell Licensed Products, or to practice the Patents
and use the Technology, shall cease immediately, except that REDOX, its
Subsidiaries, and its sublicensees may after the effective date of such
termination sell all Licensed Products that they may have on hand at the date of
termination, and may complete manufacture of Licensed Products then in the
process of manufacture, and sell them, provided that they pay all royalties due
thereon with respect to Gross Sales, as provided in this Agreement.
ARTICLE X - NOTICE.
Any notice or communication required to be given hereunder in writing
shall be given by registered or certified mail, return receipt requested, or
delivered by courier, return receipt requested, charges and postage prepaid,
addressed to the parties, respectively, at the following addresses:
In the case of Clark to:
James Collins
Vice President, Administration and Finance
Clark University
950 Main Street
Worcester, MA 01610
with a copy to:
Jeffrey C. DiTullio
Technology Licensing Associate
Massachusetts Biotechnology Research Institute
20 Hampden Street
Roxbury, MA 02119
or in the case of REDOX to:
Richard Szymanski
President and Chairman
REDOX Technology Corporation
340 North Sam Houston Parkway East
Suite 250
Houston, TX 77060
or at such other respective substitute addresses as the addressee may designate
in writing to the other party.
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ARTICLE XI - NON-USE OF NAMES.
REDOX, its subsidiaries and its sublicensees agree that it will not use
the name "Clark University," or any variant thereof, or identify Clark or any
portion of Clark, or any inventor of any of the Patents or Technology, as a
party to this Agreement, or as a participant in inventing the inventions of the
Patents or creating the Technology, including, without limitation, in any
advertising or promotional sales literature, without the prior express written
consent of Clark, which consent may be withheld or withdrawn by Clark in its
complete and uncontrolled discretion for any reason whatsoever and at any time
or times. However, notwithstanding the foregoing, Clark will make no objection
to any proper reference by REDOX to published technical publications by such
inventors or creators; and, subject to the confidentiality requirements hereof,
Clark will make no objection to REDOX's making such disclosures as in the
reasonable opinion of legal counsel are required as a matter of law and such
general disclosures of this Agreement as may be desired by REDOX for purposes of
grant solicitations from governmental authorities. REDOX shall impose and
enforce the requirements of this Article on its Subsidiaries and sublicensees.
ARTICLE XII - COMPLIANCE WITH LAWS.
12.1. Exports Controls. The Export Control Regulations of the U.S.
Department of Commerce prohibit, except under special validated license, the
exportation from the United States of technical data relating to certain
commodities (listed in the Regulations), unless the exporter has received
certain written assurance from the foreign importer. In order to facilitate the
exchange of technical information under this Agreement, REDOX therefore hereby
agrees and gives its assurance to Clark that REDOX will not, unless any
required prior authorization is obtained from the U.S. Office of Export
Control, re-export directly or indirectly any technical data received from Clark
under this Agreement and will not export directly the Licensed Products or such
technical data to any country listed on either the Commodity Control List or
Militarily-Critical Technologies List. Clark makes no representation as to
whether any such license is required or, if one is required, as to whether it
will be issued by the U.S. Department of Commerce.
12.2. Other Laws. In addition to the foregoing export control
requirements, REDOX agrees that it, its Subsidiaries, and its sublicensees will
comply with all applicable mandatory or permissive patent marking laws, rules,
and regulations and comply with all other laws, rules, and regulations of all
governmental authorities applicable to any of their activities contemplated by
this Agreement, and will comply with all necessary and desirable practices in
connection and compliance with safety recommendations of trade associations or
governmental authorities.
ARTICLE XIII - MISCELLANEOUS PROVISIONS
13.1. Assignment. REDOX shall not assign the License or this Agreement
without the prior written consent of Clark, which consent shall not be
unreasonably withheld; provided, however, that REDOX, without such consent, may
assign all of its rights hereunder
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to the acquiring party in connection with the transfer of all or substantially
all of its business and assets to an acquiring party or in the event of its
merger or consolidation with that acquiring party, if and only if the assignee
shall assume all obligations of REDOX under this Agreement. However, no
assignment or other transfer by REDOX shall relieve REDOX of any obligations
hereunder and REDOX shall continue to be primarily and jointly and severally
liable (along with such assignee or other transferee) for the performance of all
obligations of REDOX and such assignee or other transferee hereunder.
13.2. Independent Contractors. The parties hereto shall be independent
contractors with respect to each other, and nothing contained herein shall be
construed as constituting either of them as the agent, principal, employee,
servant, joint venturer, or partner of the other for any purpose whatsoever.
13.1. Governing Law. This Agreement shall be governed by and construed
in accordance with Massachusetts law.
13.4. Sole Agreement. This Agreement and any Exhibits annexed hereto
(each of which is hereby made part hereof by this reference), and any other
documents which may be expressly incorporated by reference herein, constitute
the entire and only agreement between the parties concerning the subject matter
hereof; and all prior negotiations, representations, warranties, agreements, and
understandings related thereto are superseded hereby.
13.5. Severability. If any provision of this Agreement shall to any
extent be found to be invalid or unenforceable, the remainder of this Agreement
shall not be affected thereby, and any such invalid or unenforceable provision
shall be reformed so as to be valid and enforceable to the fullest extent
permitted by law.
13.6. Headings. Headings of Articles, Sections, and subsections
included herein are for convenience of reference only and shall not be used to
construe this Agreement.
13.7. Financial Confidentiality. Both parties agree to keep the
financial terms of this Agreement confidential.
ARTICLE XIV - ARBITRATION.
14.1. Arbitration. Subject to Section 14.2 below, all disputes,
controversies, or differences which may arise between the parties out of or in
relation to or in connection with this Agreement, or for the breach thereof,
which cannot be resolved by mutual agreement, shall be finally settled by
arbitration to be held in accordance with the Commercial Arbitration Rules (the
"Rules") of the American Arbitration Association (the "Association") as the
Rules then exist, in Boston, Massachusetts, with the following deviations from
the Rules. The arbitrators shall consist of one Clark nominee, one REDOX
nominee, and a third person jointly selected by those two nominees. The party
requesting arbitration shall designate its nominee in the request, which shall
be addressed to the Association with a simultaneous copy to the other party. If
the other party shall fail within thirty (30) days of the request for
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arbitration to nominate the second arbitrator or if the two arbitrators are
unable to agree upon the third arbitrator within thirty (30) days after
selection of the second arbitrator, then in either case the arbitration panel
will be completed according to the Rules. Both legal and equitable remedies
shall be available to the arbitrators. The award of a majority of the
arbitration panel shall be final and binding on the parties hereto and shall be
enforceable in any court having jurisdiction. Clark and REDOX each irrevocably
consent and submit to the jurisdiction of the courts of the Commonwealth of
Massachusetts and the United States District Court for the District of
Massachusetts.
14.2. Judicial Relief. Claims, disputes, or controversies concerning
the validity, infringement, construction, or effect of any patent including,
without limitation, any patent licensed hereunder, shall be resolved in any
court having jurisdiction thereof, and the parties submit to the jurisdiction of
the United States District Court for the District of Massachusetts. In the event
that, in any arbitration proceeding, any issue shall arise concerning the
validity, infringement, construction, or effect of any patent licensed
hereunder, the arbitrators shall assume the validity of all claims as set forth
in such patent. In any case, the arbitrators shall not delay the arbitration
proceeding for the purpose of obtaining or permitting either party to obtain
judicial resolution of such an issue, unless an order staying such arbitration
proceeding shall be entered by a court of competent jurisdiction. Neither party
shall raise any issue concerning the validity, infringement, construction, or
effect of any patent licensed hereunder in any proceeding to enforce any
arbitration award hereunder in any proceeding otherwise arising out of any such
arbitration award. Nothing in Section 14.1 shall be construed to waive any
rights or timely performance of any obligations existing under this Agreement.
Moreover, each party acknowledges that appropriate cases (as determined by the
courts of competent jurisdiction) of a violation by either party of any of the
provisions of this Agreement may entitle the other party to equitable judicial
relief, and this relief shall be available in addition to, and shall not be
unavailable by reason of, the arbitration provisions of Section 14.1, above.
Such equitable judicial relief may be by temporary restraining orders,
preliminary and permanent injunctions, and such other equitable relief as any
court of competent jurisdiction may deem just and proper.
IN WITNESS WHEREOF, the parties hereto have duly executed and delivered
this License Agreement to be effective as of the date hereof.
CLARK UNIVERSITY REDOX TECHNOLOGY CORPORATION
By: /s/ JAMES COLLINS By: /s/ RICHARD SZYMANSKI
---------------------------- -------------------------------
James Collins Richard Szymanski
Vice President President & Chairman
Administration & Finance
Date: 9/17/98 Date: 9/17/98
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EXHIBIT B
TO
LICENSE AGREEMENT
BETWEEN
CLARK UNIVERSITY AND [REDOX]
Existing Patents (Including Existing Applications)
I. Issued Patents:
Date of
Country Serial No. Issue
------- ---------- -------
United States 5,413,881 5/9/95
United States 5,571,600 11/5/96
II. Applications:
PCT Applications and National Filings on Japan and major countries of
Europe
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