TECHNOLOGY LICENSE AGREEMENT
This Technology License Agreement (Agreement) dated as of ____________, 1998,
(the "Effective Date") is made by and between OZO Diversified Automation,
Inc., a Colorado corporation, ("OZO"), and JOT Automation, Inc., a Texas
corporation, ("JOT").
I) RECITALS
A) WHEREAS, the Parties have entered into an Asset Purchase
Agreement executed between the Parties on November ___, 1998 (the
"Asset Purchase Agreement") for by which JOT purchased
substantially all of the assets of OZO, including the Licensed
Technology (as defined herein) and the disclosure of Trade
Secrets and Know-How related to the Technology (as such terms are
defined herein); and
B) WHEREAS, OZO received the rights hereunder as partial
consideration for the transfer of the Licensed Technology (as
defined herein) to JOT; and
C) WHEREAS, the Parties anticipate that OZO will exercise complete
exclusivity within the Field (as defined herein); and.
D) WHEREAS, the Parties recognize that both companies will continue
to operate as independent technology development companies.
II) DEFINITIONS
A) AFFILIATE: "Affiliate" of a party shall mean any person,
organization, or entity that in any way, directly or indirectly,
controls, is controlled by, or is under common control with such
party. For the purposes of this definition, "control" shall mean
ownership of at least fifty percent (50%) equity interest in or
by such person, organization, or entity.
B) BUSINESS: "Business" shall have the meaning ascribed to it in the
Asset Purchase Agreement.
C) CONFIDENTIAL INFORMATION: "Confidential Information" shall mean
(i) any patent applications, Trade Secrets, or Know-How held by
either party and regardless of whether marked or designated
"confidential" or "proprietary," and (ii) any information
disclosed to the receiving party orally or in writing or in model
form, in whatever format, relative to operations, existing and
proposed contracts, sales training and techniques, financial
data, trade secrets, marketing and business plans, research
and/or development, data, formulae, processes, designs,
specifications, product knowledge, procedures, methods and
techniques whether disclosed by way of documents, oral
communications, or visits to factories or other premises, and all
information regarding the existing and proposed commercial
operations of the disclosing party or relative to any other
confidential proprietary information which is clearly marked at
the time of disclosure as being "Confidential." Information
transmitted orally and identified at that time as being
Confidential shall be
considered as "Confidential Information" if it is reduced to
writing and transmitted to the receiving party within 15 days
of its disclosure.
D) FIELD: "Field" shall mean Technology affecting or relating to
testing, evaluation, treatment, or manipulation of biologic
systems or processes. Other application of the Licensed
Technology may be added in the future to the Field on terms
mutually agreeable to the parties. Nothing in this definition of
Field shall modify or limit the effect of the non-competition
provisions in Section VII. In the event that a dispute arises
with respect to whether a given activity of OZO is within the
Field, the parties will resort to the escalating dispute
resolution procedures set forth in Section X of this Agreement.
E) IMPROVEMENTS: "Improvements" shall mean any enhancement or
modification of the Licensed Technology by either OZO or JOT.
F) TECHNOLOGY RIGHTS: "Technology Rights" shall mean intellectual
property rights including Patents, Copyrights, Trade Secrets and
Know-How, but not trademarks and trade names.
G) TERRITORY: "Territory" shall mean world-wide.
H) LICENSED PRODUCT: "Licensed Product" shall mean the products
manufactured using any of the Licensed Technology.
I) LICENSED TECHNOLOGY: "Licensed Technology" shall mean Technology
related to manipulation of end effectors upon paths established
by the operator within extremely small tolerances and
demonstrates that movement visually on a monitor together with
related algorithms and related hardware as set forth in Schedule
1.1 of the Asset Purchase Agreement.
J) PARTY: "Party" shall mean either JOT or OZO as the context
requires.
K) TECHNOLOGY: "Technology" shall mean any and all compositions,
machines, articles of manufacture, processes, apparatus,
(collectively the "Inventions"); Patents, Copyrights, Trade
Secrets, and Know-How; data, writings and works of authorship
(including without limitation software, protocols, program codes,
audiovisual effects created by program code, and documentation
related thereto, drawings); mask works; other tangible items
(including without limitation materials, samples, components,
tools, and operating devices, e.g., board assemblies, and
engineering models); and Technical Information.
L) KNOW-HOW: "Know How" means all factual knowledge and information
related to the Business and the Technology which is not capable
of precise, separate description but which, in accumulated form,
after being acquired as a result of trial and error, gives to the
one acquiring it the ability to produce and market something
which one would otherwise not have known how to produce and
market with the same accuracy or precision necessary for
commercial success, provided, however, that such knowledge and
information is not in the public domain or readily available to
any third party other than a limited number of persons who have
agreed to keep that information secret.
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M) TECHNICAL INFORMATION: "Technical Information" means any material
in human or machine-readable form which embodies or describes the
Licensed Technology covered by this Agreement as set forth in
Schedule 1.1 of the Asset Purchase Agreement.
N) COPYRIGHTS: "Copyright(s)" means all forms of proprietary rights
granted by a government with respect to an original work of
authorship fixed in any tangible medium of expression from which
it can be perceived, reproduced or otherwise communicated
relating to the relating to the Technology covered by, and
existing at the time of, this Agreement as specifically set forth
in Schedule 1.1 of the Asset Purchase Agreement.
O) TRADE SECRETS: "Trade Secrets" means any Technical Information
and Business Information that generally facilitates the sale of
products, increases revenues, is not generally known by others
than the parties except by those subject to restrictions on
disclosure, and provides an advantage over the competition.
P) BUSINESS INFORMATION: "Business Information" means any material
in human or machine readable form used, compiled or produced by
or for the business of manufacturing and using the Licensed
Technology for the Licensed Products as set forth in Schedule 1.1
of the Asset Purchase Agreement.
Q) PATENTS: "Patent(s)" means all forms of proprietary rights
granted by a government with respect to a design or an Invention,
including patents and certificates of addition, utility models,
and enforceable patent applications, i.e. those under which
injunctive relief is available, as well as any continuation,
division, extension, renewal, revival, or reissue thereof or
substitution therefor relating to the Technology covered by, and
existing at the time of, this Agreement as specifically set forth
in Schedule 1.1 of the Asset Purchase Agreement.
III) GRANT
A) GRANT OF LICENSE: Subject to the terms and conditions of this
Agreement, JOT hereby grants a OZO a fully paid, royalty free,
perpetual (or for the longest period of time permitted by law),
transferable, license under JOT's Technology Rights within the
Territory to (i) use, modify or create derivative works of the
Licensed Technology and Licensed Products, or sublicense such
rights (as set forth below) and (ii) make, have made, and sell
the Licensed Products within the Field.
B) IMPROVEMENTS: All Improvements, whether conceived by JOT or OZO
shall belong to the Party which developed such Improvement. The
Party creating, inventing, or authoring such Improvement shall
have the right to file patent applications, or any continuations,
renewals or extensions thereof in its own name, or copyright
registrations; PROVIDED, however, that any OZO Patent
applications, or any continuations, renewals or extensions
thereof shall be subject to the following requirements:
(1) prior to issuance of any OZO Patent(s) based upon such
Improvements, JOT shall be permitted to review the patent
application to ensure that there is no disclosure of Trade
Secrets or Know-How that would operate in
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derogation of JOT's Technology Rights or its ownership of
the Licensed Technology;
(2) both OZO and JOT will cooperate in good faith to
minimize any Trade Secrets and Know-How disclosure in the
specifications of the applicable OZO Patent(s) based upon
such Improvements; and
(3) OZO shall not disclose any of JOT's Trade Secrets and
Know-How in the specifications of the applicable OZO
Patent(s) based upon such Improvements without JOT's written
consent, such consent not to be unreasonably withheld.
C) EXCLUSIVITY: The grant of rights under this section shall
be exclusive within the Field, with the right to grant
sublicenses within the Field as set forth herein.
D) SUBLICENSES: OZO shall require all sub-licensees to sign an
agreement which includes confidentiality and non-competition
provisions commensurate with the provisions of this
Agreement.
E) RESTRICTIONS: OZO shall not use the Licensed Technology
in any products, Improvements or Inventions that compete
with present or future products, Improvements or Inventions
of JOT in the field of production automation for the
electronics industry.
IV) OBLIGATIONS OF LICENSOR
A) NONASSERTION. JOT agrees that it shall not assert against OZO or
its customers and licensees, any claims for infringement or
misappropriation based on the manufacture, use, or sale of any
Licensed Products; PROVIDED, HOWEVER, that such Licensed Products
are manufactured, used or sold solely within the Field.
V) PROTECTION OF INTELLECTUAL PROPERTY RIGHTS
A) GENERAL. Both Parties shall take reasonable measures to prevent
unauthorized copying and protect the Licensed Technology, and use
best efforts to protect the Trade Secrets and Know-How therein,
but neither Party shall be obligated hereunder to take any
measures in excess of those it takes to protect its own valuable
Technology.
B) THIRD-PARTY INFRINGERS. Upon the discovery of any infringement
or misappropriation of the Licensed Technology under the
Technology Rights within the Field hereunder, the Parties hereto
shall consult together with a view to reaching an agreement as to
the ways and means of eliminating such infringement or addressing
such misappropriation. If the Parties agree jointly to commence
litigation against potential third party infringers, they will
agree by their respective shares the expense burden thereof,
which shares will be identical to their respective division of
any recoveries thereof. In the event that JOT declines to
participate in the enforcement and/or protection of the Licensed
Technology under the Technology
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Rights, OZO may, at its sole discretion and expense and to the
extent permitted by law, initiate proceedings or take such
steps as it deems appropriate, to enforce its rights with
respect thereto. JOT shall cooperate with OZO in such defense
at OZO's sole expense.
VI) CONFIDENTIALITY
A) NON-DISCLOSURE. During the thirty (30) days immediately
following the effective date of this Agreement (the "Disclosure
Period"), and subject to the terms herein, certain information
that is considered by the discloser to be proprietary or
confidential may be disclosed or exchanged between the Parties.
The Parties further recognize that the Trade Secrets and
Know-How are vital to the continued commercial viability of the
Licensed Technology, the disclosure of which would be
detrimental to the Parties' interests. In addition, this
Agreement and the Parties' interest in the subject matter of this
Agreement are Confidential Information and shall be treated on
the same basis as set forth herein. Unless expressly authorized
in writing by the Parties, both Parties agree to retain the
Confidential Information in confidence in perpetuity and not to
disclose the Confidential Information to any third party (except
as expressly authorized under this Agreement and subject to such
confidentiality and non-competition obligations) and not to use
the Confidential Information for any purpose other than to
exercise their rights in accordance with this Agreement.
B) DISSEMINATION OF INFORMATION. The Parties recognize that the
Licensed Technology disseminated to OZO is that Licensed
Technology in existence as of the execution of this Agreement,
and that there is no intent by either Party to continue
disclosure of Confidential Information developed independently by
either party subsequent to the Disclosure Period. Each Party
shall hold in confidence the other's Confidential Information in
perpetuity and shall not, without prior written consent of the
other Party, disclose such information to any person except its
own employees, or its Affiliate's employees, its contractors or
sublicensees having a need to know and having executed written
agreements binding them to this duty of non-disclosure. Each
Party shall not use the other's Confidential Information for any
purpose except to exercise its rights in accordance with this
Agreement.
C) EXCLUSIONS. The parties acknowledge that Confidential
Information shall not include any information which:
1) is or becomes publicly known through no act or omission to
act on the recipient's part, provided a combination of two
or more portions of the Confidential Information shall not
be deemed to be publicly known by reason only of each
separate portion being so known; or
2) is rightfully received by the recipient from a third party
without breach of any duty of non-disclosure; or
3) is explicitly approved for release by written authorization
of the disclosing party;
4) is required by law to be disclosed; or
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5) disclosures to potential investors or lenders required to
obtain financing, provided, however, that (i) JOT is
provided prompt notice of such disclosure, and (ii) any such
investors or lenders shall be bound by confidentiality
agreements commensurate with this Agreement prior to any
such disclosure.
D) CONFIDENTIAL TREATMENT. Any Confidential Information obtained by
the receiving party pursuant to the provisions of this Agreement
shall be treated as confidential, except that in the event of any
dispute, litigation or arbitration proceedings between the
parties, such Confidential Information may be disclosed to the
tribunal. Prior to any Confidential Information being disclosed
pursuant to the preceding sentence, or Section VI.C.5. above, the
receiving party shall give the disclosing party reasonable notice
of pending disclosure and both parties shall cooperate to
undertake all reasonable measures to obtain a protective order
prohibiting or limiting disclosure of such Confidential
Information.
E) The provisions of this section shall survive the termination,
expiration or cancellation of this Agreement.
VII) NON-COMPETITION
A) JOT NON-COMPETITION: Independent of any other obligation under
this Agreement, for a period of five (5) years following
execution of this Agreement, JOT shall not, directly or
indirectly, whether itself for its own account or for or with any
other person, firm, corporation, partnership, joint venture,
association, or other entity whatsoever; engage in activities or
take a position as a shareholder, director, officer, employee, or
agent of any person, firm, corporation, partnership, joint
venture, association, or other entity in the Field that competes
directly with OZO or which is involved in the creation,
manufacture, publication, or marketing of products and services
which are substantially similar to the Licensed Products in the
Field.
B) OZO NON-COMPETITION: Independent of any other obligation under
this Agreement, for a period of five (5) years following
execution of this Agreement, OZO shall not, directly or
indirectly, whether itself for its own account or for or with any
other person, firm, corporation, partnership, joint venture,
association, or other entity whatsoever; engage in activities or
take a position as a shareholder, director, officer, employee, or
agent of any person, firm, corporation, partnership, joint
venture, association, or other entity that competes directly with
JOT or which is involved in the creation, manufacture,
publication, or marketing of products and services which are
substantially similar to the Licensed Technology or Licensed
Products in JOT's "Business" as such term is defined in the Asset
Purchase Agreement, including, but not limited to production
automation in the electronics industry or electronic assembly.
C) REASONABLENESS OF RESTRICTIONS: The Parties agree that the
limitations as to time, geographical area, and scope of activity
to be restrained by this Section VII are reasonable and
acceptable to the Parties, and do not impose any greater
restraint than is reasonably necessary to protect the goodwill
and other business interests of the Parties. To the extent a
court of competent jurisdiction determines that the non-
competition agreement set forth in this Section VII does not
comply with applicable
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law of the governing jurisdiction, this paragraph may be
reformed by the court and enforced to the maximum extent
permitted by law.
VIII) REPRESENTATIONS AND WARRANTIES
A) JOT REPRESENTATION: JOT warrants and represents to OZO that (i)
JOT has the right, power and legal capacity to enter into this
Agreement and has the right to license the Licensed Technology as
set forth in Section III; and (ii) to the best of JOT's
knowledge, commensurate with OZO's representations within the
Asset Purchase Agreement, the Licensed Technology does not
infringe upon the rights of any third party.
B) DISCLAIMER: Nothing else contained in this Agreement shall be
construed as a warranty or representation by JOT that the use of
Licensed Technology furnished or licensed hereunder will be free
from infringement of the intellectual property rights of others,
or that OZO's utilization of the Trade Secret or Know-How
received from JOT will not infringe patents owned by anyone. JOT
does not otherwise warrant the accuracy of any Trade Secret or
Know-How. THE FOREGOING ARE IN LIEU OF AND EXCLUDE ALL OTHER
EXPRESSED AND/OR IMPLIED WARRANTIES, INCLUDING WARRANTIES OF
NON-INFRINGEMENT, MERCHANTABILITY OR FITNESS FOR ANY
PARTICULAR PURPOSE, WITH RESPECT TO THE LICENSED TECHNOLOGY OR
ANY INFORMATION OR SERVICES FURNISHED IN CONNECTION WITH THE
LICENSED TECHNOLOGY. Further, nothing in this Agreement shall
be construed as a warranty or representation as to the
validity or scope of any patent, or a requirement that either
party shall file any patent application, secure any patent or
maintain any patent in force.
IX) INDEMNIFICATION
A) JOT INDEMNIFICATION. JOT shall indemnify and hold OZO and its
officers and directors and Affiliates (the "OZO Indeminified
Parties") harmless from and against any liability, losses,
damages and expenses (including but not limited to reasonable
attorney's fees) from third party action arising out of,
resulting from, or related to any inaccuracy in any of the
representations, or any breach of the warranties made by JOT in
this Agreement or any failure by JOT to perform and observe any
term, provision, covenant, agreement or condition under this
Agreement which it is obligated to perform or observe. The OZO
Indemnified Parties must (i) promptly notify JOT of any such
claim in writing, (ii) allow JOT to control the defense and
settlement of the claim, and (iii) provide JOT with all
reasonable information, assistance and authority concerning such
claim. JOT shall have the right to be represented by counsel of
its own choosing at its expense.
B) OZO INDEMNIFICATION. OZO shall indemnify and hold JOT and its
officers and directors and Affiliates (the "JOT Indeminified
Parties") harmless from and against any liability, losses,
damages and expenses (including, but not limited to reasonable
attorney's fees) from any third party action arising out of,
resulting from, or related to (a) any inaccuracy in any of the
representations, or any breach of the warranties
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made by OZO in this Agreement, or (b) any claim that the Licensed
Products infringe upon or misappropriate any patent, copyright,
or other similar proprietary right of any third party, which
infringement or misappropriation is not caused by the Licensed
Technology, or (c) any failure by OZO to perform and observe any
term, provision, covenant, agreement or condition under this
Agreement which it is obligated to perform or observe. The JOT
Indemnified Parties must (i) promptly notify OZO of any such
claim in writing, (ii) allow OZO to control the defense and
settlement of the claim, and (iii) provide OZO with all
reasonable information, assistance and authority concerning
such claim.
C) IN NO EVENT SHALL EITHER PARTY BE LIABLE TO THE OTHER FOR
INDIRECT, SPECIAL, PUNITIVE OR CONSEQUENTIAL DAMAGES WHATSOEVER,
WHETHER GROUNDED IN TORT (INCLUDING NEGLIGENCE), STRICT LIABILITY
OR CONTRACT EXCEPT WITH RESPECT TO A BREACH OF THE
CONFIDENTIALITY PROVISIONS HEREUNDER.
X) REMEDIES
A) INJUNCTIVE RELIEF. In the event of a breach by either Party, of
the confidentiality, licensing, or non-competition provisions
contained in this Agreement, the non-breaching Party shall be
entitled to an injunction from engaging in or continuing with any
conduct which may constitute a breach or threatened breach of
those provisions. An injunction may also be sought against the
breaching Party from rendering services to any person, firm,
corporation, association or other entity which may in some manner
receive benefit from the breaching Party's breach or threatened
breach of those provisions. The Parties agree that there is no
adequate remedy at law for the irreparable harm that would result
from a breach thereof and therefore the parties consent to
injunctive relief to enforce this Agreement. Nothing in this
Section X shall be construed as prohibiting the parties from
pursuing other remedies which may be available for breach or
threatened breach, including the recovery of damages.
B) ATTORNEYS' FEES. In the event of any action or proceeding
brought by either party against the other under this Agreement,
the prevailing party shall be entitled to recover all expenses
incurred therefor, including, but not limited to, reasonable
attorneys' fees.
C) DISPUTE RESOLUTION.
1) STEP NEGOTIATIONS. The parties shall attempt in good faith
to resolve any dispute arising out of or relating to this
Agreement promptly by negotiations, as follows. Any party
may give the other party written notice of any dispute not
resolved in the normal course of business. Executives of
both parties who have previously been involved in the
dispute shall meet at a mutually acceptable time and place
within 10 days after delivery of such notice, and thereafter
as often as they reasonably deem necessary, to exchange
relevant information and to attempt to resolve the dispute.
If the matter has not been resolved by these persons within
30 days of the disputing party's notice, or if the parties
fail to meet within ten (10) days, the dispute shall be
referred to
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senior executives of both parties who have authority to
settle the dispute and who shall likewise meet to attempt
to resolve the dispute. If the matter has not been
resolved within thirty (30) days from the referral of the
dispute to senior executives, or if no meeting of senior
executives has taken place within 15 days after such
referral, either party may initiate mediation as provided
hereinafter. If a negotiator intends to be accompanied
at a meeting by an attorney, the other negotiator shall
be given at least three working days' notice of such
intention and may also be accompanied by an attorney.
All negotiations pursuant to this clause are confidential
and shall be treated as compromise and settlement
negotiations for purposes of the Federal Rules of
Evidence and state rules of evidence.
2) MEDIATION. If the dispute has not been resolved by
negotiation as provided above, the parties shall endeavor to
settle the dispute by mediation under the then current
presently effective Center for Public Resources ("CPR")
Model Procedure for Mediation of Business Disputes. The
neutral third party will be selected from the CPR Panels of
Neutrals. If the parties encounter difficulty in agreeing
on a neutral, they will seek the assistance of CPR in the
selection process.
3) ARBITRATION. Should all good faith attempts to resolve the
dispute amicably as set forth above be exhausted, and if
agreed to by the Parties, any dispute arising in connection
with this Agreement may be finally settled under the Rules
of Conciliation and Arbitration of the International Chamber
of Commerce (the "Rules") by three arbitrators appointed in
accordance with the Rules on an expedited basis. Such
arbitration shall take place in Dallas, Texas, United States
of America. The arbitrators shall be bound by the laws
governing this Agreement, and this Agreement, and shall be
bound by the obligation to retain Confidential Information
in confidence in perpetuity and not to disclose Confidential
Information.
4) NO ELECTION OF REMEDIES. Anything in this Agreement to the
contrary notwithstanding including the arbitration clause
set forth in this Section, the Court shall have the
injunctive power set forth herein, and resort to injunctive
relief or arbitration shall not be deemed as an election not
to proceed with the other remedy.
XI) MISCELLANEOUS
A) SUCCESSORS AND ASSIGNMENT. Except as provided herein, this
Agreement or any rights hereunder shall not be assigned or
transferred, in whole or in part, by either Party without the
prior written consent of the other Party, and any such permitted
assignment or transfer shall be binding on each Party's
successors and permitted assignees. Any attempted assignment in
contravention of the above shall be null and void.
B) LIMITATION OF RIGHTS Except as expressly provided in this
Agreement, nothing contained herein shall be construed as
conferring any license or other rights by implication, estoppel
or otherwise.
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C) SEVERABILITY. If any provision of this Agreement be adjudicated
invalid or against public policy for any reason by a court of
competent jurisdiction, it is specifically intended that each and
every provision not so invalidated shall remain in full force and
effect.
D) CHOICE OF LAW. This Agreement is made and entered into in the
State of Texas, U.S.A. and shall in all ways be governed and
construed by the law of such State, without regard to conflicts
of law.
E) WAIVER. No waiver of any provision of this Agreement shall be
construed to be a waiver of any subsequent breach of the same or
any other provision of this Agreement.
F) INDEXING. All indexing set forth in this Agreement are intended
for convenience only and shall not control or affect the meaning,
construction or effect of this Agreement or of any of the
provisions thereof.
G) NON-PARTNERSHIP. Each Party shall bear its respective expenses,
risks, and liabilities arising out of its efforts related to this
Agreement. The Parties to this Agreement are independent
contractors. This Agreement shall not constitute, create, give
effect to, or imply a joint venture, pooling arrangement,
partnership, formal business organization or any type of
permanent arrangement of any kind. Neither Party shall (i) have
the authority to bind the other except to the extent authorized
herein, (ii) be liable to the other for any damages, whether
direct, indirect, special, incidental or consequential, whether
arising out of contract, tort (negligence) or strict liability,
or (iii) share losses with the other.
H) ABSENCE OF THIRD-PARTY BENEFICIARY RIGHTS. Except as otherwise
provided in this Agreement, no provision of this Agreement is
intended nor shall be interpreted to provide or create any third
party beneficiary rights or any other rights of any kind in any
sublicensee, and all provisions hereof shall be personal solely
between the parties hereto.
I) INTEGRATION. Except for the Asset Purchase Agreement, this
Agreement constitutes the entire Agreement between the parties.
No amendments to this Agreement shall be made other than by a
written amendment signed by both Parties. This Technology
License Agreement shall supplement the Asset Purchase Agreement
and to the extent that there are contradictions, this Technology
License Agreement shall prevail.
Licensor Licensee
JOT Automation, Inc OZO Diversified Automation, Inc.
By: By:
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Its: Its:
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