NONEXCLUSIVE FIELD OF USE LICENSE AGREEMENT
Relating to OLED Technology
for
miniature, high resolution displays
This Agreement is effective as of this 29th day of March, 1999 ("Effective
Date") by and between the Eastman Kodak Company, a New Jersey corporation with
its principal office at 343 State Street, Rochester, New York 14650 ("Kodak")
and FED Corporation, a Delaware corporation with its principal office at 1580
Route 52, Hopewell Junction, New York 12533 ("FED").
1.0 BACKGROUND
1.1 Kodak has developed and continues to develop patents and know-how
related to organic light-emitting diode ("OLED ") technology for
use in a number of different display applications.
1.2 FED has by evaluation (the "Evaluation") demonstrated to Kodak
FED's successful development of certain non-direct view, head
mounted or weapon mounted displays pursuant to the Evaluation
Agreement between the parties dated March 31, 1997 (the
"Evaluation Agreement"), and FED has acquired certain rights from
Kodak in Kodak's OLED technology for use in such non-direct view,
head mounted or weapon mounted displays pursuant to the parties'
Nonexclusive Field of Use License Agreement relating to OLED
Technology for Non-Direct View, Head Mount Displays dated April 1,
1998 (the "Non-Direct View, Head Mount License").
1.3 FED is now interested in acquiring certain additional rights from
Kodak in Kodak's OLED technology for use in miniature, high
resolution displays.
1.4 As partial consideration in return for acquiring such rights in
Kodak's OLED technology for use in miniature, high resolution
displays, FED is willing to provide Kodak for use in any field
certain rights under any patents or know-how that FED develops
relating to OLED technology.
1.5 Subject to the terms and conditions of this Agreement, each party
is willing to grant the other party the foregoing rights as more
specifically described herein.
THEREFORE the parties agree as follows:
2.0 DEFINITIONS
2.1 "Affiliate(s)" shall mean any company, partnership, joint venture,
or other entity which directly or indirectly controls, is
controlled by or is under common control with a party. Control
shall mean the possession of fifty percent (50%) or more of the
voting share capital or the power to direct or cause the direction
of the management and policies of the controlled entity, whether
through the ownership of shares, by contract or otherwise, but
only for so long as such control shall exist.
2.2 "Confidential Information" shall mean any information related to
OLED Technology disclosed in writing or other tangible form by
either party or its Affiliates to the other party, and marked by
the disclosing party with the legend "Confidential" or other
similar legend sufficient to identify such information as
proprietary business or technical information of the disclosing
party.
2.3 "FED Licensed Products" shall mean any tools, products, method,
procedure, process, or other subject matter in and only in the
Field of Use whose manufacture, use, practice, or sale would
constitute, but for the license granted to FED and its Affiliates
pursuant to this Agreement, an infringement of any claim in "the
Kodak Patent Rights" or an infringement of Kodak's Know-how. "FED
Licensed Products" shall include spare parts solely for use in
miniature, high resolution displays and shall not include spare
parts or components for use in displays outside the Field of Use.
For the purposes of this Agreement, FED Licensed Products shall be
classified as:
2.3.1 "Monochrome - Phase 1 FED Licensed Products" referring to
FED Licensed Products which (i) incorporate a single color
organic electroluminescent emitter to emit light at-one
color wavelength, or (ii) incorporate two or more different
single color organic electroluminescent emitters, each of
which emits light at a different color wavelength.
2.3.2 "Color - Phase 2 and Phase 3 FED Licensed Products"
referring to FED Licensed Products which (i) incorporate a
white light organic electroluminescent emitter and a color
filter array, or (ii) incorporate a Blue/Near UV light
organic electroluminescent emitter and a color changing
medium.
2.3.3 "Color - Phase 4 FED Licensed Products" referring to FED
Licensed Products which incorporate in a single pixel a
patterned multicolor organic electroluminescent emitter.
2.4 "FED Patent Rights" shall mean any and all patents in any country
issued to FED or its Affiliates and patents issuing from patent
applications filed by FED or its Affiliates through March 31,
2000, which relate to OLED Technology, under which and to the
extent to which FED or its Affiliates has the right to grant
licenses of the scope granted herein without payment of royalties
or other consideration to third parties, except for payments to
third parties for inventions made by such third parties while
employed by FED or its Affiliates.
2.5 "Field of Use" shall mean all activities and purposes related to
the design, development, manufacture, use, sale, marketing and/or
distribution of miniature, high resolution displays. "Miniature,
high resolution displays" are displays which:
2.5.1 have a diagonal size of less than two inches;
2.5.2 have a pixel count of more than 200K and a pitch of less
than 24 microns;
2.5.3 are not directly viewable by the unaided eye without an
associated optical system, which means that the individual
picture elements or full spatial images are not discernible
by the average adult without optical assistance; and
2.5.4 are monochrome and/or color, emissive active matrix
displays, preferably, but not limited to, active matrix
displays on single crystalline silicon substrates (but not
passive matrix displays).
2.6 "Know-how" shall mean any and all rights, including without
limitation, trade secret and other intellectual property rights
(other than trademark rights) under which and to the extent a
party or its Affiliates has the right to grant licenses of the
scope granted herein without payment of royalties or other
consideration to third parties, in any technical information,
know-how, process, procedure, composition, device, method,
formula, protocol, technique, software, design, drawing or data
which:
2.6.1 relate to OLED Technology;
2.6.2 are reduced to practice prior to March 31, 2000; and
2.6.3 are not disclosed in Patent Rights owned by such
party or its Affiliates, but which are useful in the
commercial practice of inventions covered by such
Patent Rights.
Notwithstanding the foregoing, Know-how shall include only that
OLED Technology which the party who originates such Know-how
reasonably considers necessary for the practice of inventions
within the scope of the license of its Patent Rights granted under
this Agreement to the other party and (i) for which the other
party bears the expense of the originating party's disclosure
pursuant to Section 7 of this Agreement, or (ii) was provided to
FED by Kodak under the Evaluation Agreement.
2.7 "Kodak Licensed Products" shall mean any tools, products, method,
procedure, process, or other subject matter whose manufacture,
use, practice, or sale would constitute, but for the license
granted to Kodak pursuant to this Agreement, an infringement of
any claim in the "FED Patent Rights" or an infringement of FED's
Know-how. "Kodak Licensed Products" shall include spare parts and
components for use in displays inside or outside the Field of Use.
2.8 "Kodak Patent Rights" shall mean any and all rights in and to: the
patents and patent applications described on Exhibit A attached
hereto and incorporated herein by reference; all patents and
patent applications filed in foreign countries corresponding to
any of the foregoing patents and patent applications; all foreign
counterparts thereof; any divisions, substitutions,
re-examinations, and continuations thereof; any patents issuing on
any of the foregoing; and all reissues, renewals and extensions
thereof. Continuations-in-part of any of the foregoing
applications and patents issuing on such continuations-in-part,
related foreign patents and applications and patents of addition,
and all reissues, renewals and extensions of such patents and
patent applications, shall also be within the Kodak Patent Rights,
to the extent the same claim subject matter disclosed in a patent
or patent application described on Exhibit A. "Kodak Patent
Rights" shall also include any and all patents issued to Kodak or
its Affiliates and patents issuing from patent applications filed
by Kodak or its Affiliates through March 31, 2000, which relate to
OLED Technology, under which and to the extent to which Kodak or
its Affiliates has the right to grant licenses of the scope
granted herein without payment of royalties or other consideration
to third parties, except for payments to third parties for
inventions made by such third parties while employed by Kodak or
its Affiliates.
2.9 "Licensed Products" shall mean the FED Licensed Products and/or
the Kodak Licensed Products as determined by the context.
2.10 "Net Sales" shall mean the gross amounts received from sales or
other transfers of Licensed Products for monetary or non-monetary
value to a third party (excluding sales or transfers of Licensed
Products from a party to its Affiliates), less (a) actual amounts
allowed, paid out or credited due to returns, and replacements,
and (b) separately stated and billed, sales, use and/or other
excise taxes or duties actually paid. For sales or other transfers
of Licensed Products involving, in whole or in part, non-monetary
value, the Net Sales for purposes of such transfer shall be
considered to be the average amount received for the sale of the
same or substantially the same Licensed Product during the then
current calendar quarter or if no such amount can reasonably be
established, the party making such transfer shall notify the other
party of such transfer and the parties shall decide upon a
mutually acceptable amount for such transfer.
2.11 "OLED Technology" shall mean:
(a) a technology (sometimes also referred to as organic
electroluminescence technology or organic EL technology)
for displaying image or information patterns using organic
electroluminescent multilayer thin film structures of (i)
molecular organic and polymeric materials (as used for
emitter layers, hole injection and transport layers, and
electron injection and transport layers), and (ii) an
electrode carried on a substrate, including without
limitation, silicon, silicon on quartz, or other solid
state materials, such multilayer thin film structures
exhibiting the electrical rectification characteristics of
a diode and emitting light under electrical bias as a
function of the amount of current passing through the
structure;
(b) cells, panels, or modules fabricated from such organic
electroluminescent multilayer thin film structures,
including methods of making such cells, panels or modules;
(c) driving circuit devices for, and methods of, driving such
cells, panels or modules;
(d) apparatus equipped with or incorporating therein such
cells, panels, or modules; and/or.
(e) color filter arrays, color changing media or patterned
multicolor organic electroluminescent emitters for use in
color organic electroluminescent multilayer thin film
structures, including methods of making such arrays, media,
or emitters.
2.12 "Patent Rights" shall mean the FED Patent Rights and/or Kodak
Patent Rights as determined by the context.
2.13 "Person-day(s)" shall mean any calendar day or part thereof during
which a single employee of a party conducts at least four (4)
hours of work for the other party pursuant to this Agreement.
3.0 LICENSE GRANTS
3.1 Grant by Kodak. Subject to the terms of this Agreement and FED's
successful completion of the corresponding phase(s) of the
Evaluation specified in the Evaluation Agreement, Kodak hereby
grants to FED and its Affiliates a royalty-bearing, nonexclusive,
worldwide license (without any right to sublicense third parties)
under the Kodak Patent Rights and Kodak's Know-how to develop or
have developed, make or have made, use, sell and import Monochrome
- Phase 1 FED Licensed Products, Color - Phase 2 and Phase 3 FED
Licensed Products, and Color - Phase 4 FED Licensed Products.
3.2 Grant by FED. Subject to the terms of this Agreement, FED hereby
grants to Kodak and its Affiliates a fully paid-up (except with
respect to sublicenses of FED Patent Rights [Redacted]*
nonexclusive, worldwide license, including the right to sublicense
third parties, under the FED Patent Rights and FED's Know-how to
develop or have developed, make or have made, use, sell and import
Kodak Licensed Products [Redacted]* .
- ------------------------
* The redacted portions of this document have been omitted pursuant to a
request for confidential treatment and such redacted portions have been
filed separately with the Securities and Exchange Commission.
3.3 Sublicenses. Kodak shall have the right to issue nontransferable
sublicenses to third parties, to develop or have developed, make
or have made, use, sell and import Kodak Licensed Products,
provided that Kodak has rights under this Agreement at the time of
each such sublicense. Kodak's right to grant sublicenses hereunder
is expressly conditioned upon Kodak's compliance with the
following:
(a) Each such sublicense will comply with the provisions of
this Agreement relating to such sublicenses. Each such
sublicense of FED Patent Rights [Redacted]* will be in
writing and, upon request, Kodak will identify each such
sublicense to FED.
(b) Kodak will (i) collect payment of all royalties due FED
pursuant to Section 4.3(b) hereof from the sale of Kodak
Licensed Products by sublicensees [Redacted]* and pay FED
such royalties at the times set forth in Section 4.5; and
(ii) summarize and deliver all reports due FED from such
royalty-bearing sublicensees according to the schedule set
forth in Section 5 hereof. Kodak will have the right to
delete portions of such reports it considers Confidential
Information to the extent that it does not restrict FED's
ability to assess the accuracy of the reports according to
Generally Accepted Accounting Principles.
(c) Kodak will use reasonable efforts to ensure that all
sublicensees of FED Patent Rights [Redacted]* abide by the
terms of their sublicense agreements and, upon request by
FED, shall keep FED apprised of its activities to enforce
such terms with particular sublicensees. Kodak will take
such other actions, give such information, and render such
aid, as is reasonable and may be necessary to allow FED to
bring and prosecute such suits.
4.0 ROYALTIES AND PAYMENTS
4.1 Initial License Fees and Payments.
(a) This Agreement shall be effective for Monochrome - Phase 1
FED Licensed Products without payment of any initial
license fee by FED to Kodak.
(b) FED shall pay Kodak an initial license fee of [Redacted]*
for Color - Phase 2 and Phase 3 FED Licensed Products under
this Agreement and the parties' Non-Direct View, Head Mount
License. Such initial license fee shall be payable and such
license for Color - Phase 2 and Phase 3 FED Licensed
Products under this Agreement and the parties' Non-Direct
View, Head Mount License shall become effective as follows:
(i) [Redacted]* shall be payable on the date FED meets the
Color - Phase 2 and Phase 3 Prototype Performance
Requirements under the parties' Evaluation Agreement, and
upon Kodak's receipt of such payment FED's license for
Color - Phase 2 and Phase 3 FED Licensed Products under the
parties' Non-Direct View, Head Mount License shall be
effective; and (ii) [Redacted]* shall be payable to Kodak
on November 30, 1999, and upon Kodak's receipt of such
payment FED's license for Color - Phase 2 and Phase 3 FED
Licensed Products under this Agreement shall be effective.
- ------------------------
* The redacted portions of this document have been omitted pursuant to a
request for confidential treatment and such redacted portions have been
filed separately with the Securities and Exchange Commission.
(c) On the date the licenses under this Agreement and the
parties' Non-Direct View, Head Mount License to FED become
effective for Color - Phase 4 FED Licensed Products in
accordance with the provisions of the parties' Evaluation
Agreement, FED shall pay Kodak [Redacted]*, which shall
represent an initial license fee due under both the
Non-Direct View, Head Mount License and this Agreement.
(d) In further consideration for the licenses granted FED
hereunder, FED shall pay Kodak [Redacted]* on March 31,
2001, provided however that such payment under this
subparagraph (d) shall not be required in the event that
prior to March 31, 2001, the Series G Preferred Stock
purchased by Kodak on March 30, 1999 has been converted
into common shares.
The foregoing initial license fees and payments shall be
nonrefundable and non-creditable against royalties payable
to Kodak under Section 4.2 of this Agreement.
4.2 Royalties to Kodak. In partial consideration for the rights
granted FED hereunder, FED shall pay Kodak the following royalties
on Net Sales of FED Licensed Products:
(a) on the first [Redacted]* in each year - [Redacted]* for
Monochrome - Phase 1 FED Licensed Products, [Redacted]* for
Color - Phase 2 and Phase 3 FED Licensed Products, and
[Redacted]* for Color - Phase 4 FED Licensed Products;
(b) on amounts between [Redacted]* and [Redacted]* in such year
- [Redacted]* for Monochrome - Phase 1 FED Licensed
Products, [Redacted]* for Color - Phase 2 and Phase 3 FED
Licensed Products, and [Redacted]* for Color - Phase 4 FED
Licensed Products;
(c) on amounts above [Redacted]* in such year - [Redacted]* for
Monochrome - Phase 1 FED Licensed Products, [Redacted]* for
Color - Phase 2 and Phase 3 FED Licensed Products, and
[Redacted]* for Color - Phase 4 FED Licensed Products; and
(d) in addition, on January 1 of each year during the term of
this Agreement, FED shall pay Kodak an annual minimum
royalty fully creditable against the above-referenced
royalties, if any, accruing against Net Sales of FED
Licensed Products in such year. For the first year, the
amount of such annual minimum royalty shall be [Redacted]*
, in the second and third years such amount shall be
[Redacted]* per year, in years 4 and 5 such amount shall be
[Redacted]* per year, and in year 6 and thereafter such
amount shall be [Redacted]* per year. Annual minimum
royalty payments paid under this Agreement shall represent
the total annual minimum royalties due under both the
Non-Direct View, Head Mount License and this Agreement.
- ------------------------
* The redacted portions of this document have been omitted pursuant to a
request for confidential treatment and such redacted portions have been
filed separately with the Securities and Exchange Commission.
With respect to FED Licensed Products which are covered solely by
Kodak's Know-how (and not by any Kodak Patent Rights), FED shall
pay Kodak royalties on Net Sales of FED Licensed Products as set
forth in this section for the term of this Agreement as specified
in Section 8.1, except that royalties shall be [Redacted]* of the
Net Sales of such products.
A "year" shall mean each calendar twelve (12) month period or
portion thereof ending on December 31 during the term of this
Agreement.
4.3 Royalties to FED.
(a) Kodak shall have no obligation to pay FED any royalties
from Kodak's exercise of its licenses or sublicenses
hereunder, except as set forth in subsection (b) below.
(b) In the event Kodak grants any sublicenses pursuant to
Section 3.3, Kodak shall pay FED a royalty solely on Net
Sales of each Kodak Licensed Product [Redacted]* in an
amount equal to [Redacted]* multiplied by the number of
licensed patents in FED Patent Rights which cover such
Kodak Licensed Product, [Redacted]*, provided however that
in no case shall such royalty paid by Kodak to FED exceed
the amount of the royalty received by Kodak under the
license to such third party of Kodak Patent Rights which
cover such sublicensed product.
4.4 Royalties Accrue Upon Receipt of Payment. Under this Agreement,
Licensed Products will normally be considered to be sold when
payment is actually received from a third party other than an
Affiliate to whom such Licensed Product has been delivered or
transferred, unless such payment is unreasonably delayed or
deferred for a period greater than ninety (90) days from the date
such payment is first billed out or such product is actually
delivered, whichever occurs first, in which case royalties shall
accrue upon the lapse of such ninety (90) day period. Upon
termination of this Agreement, however, all shipments made on or
prior to the day of such expiration or termination which have not
been billed out prior thereto will be considered as sold (and
therefore subject to royalty).
4.5 Payments. Royalties accruing to each party will be paid on a
quarterly basis within sixty (60) days after the last days of
March, June, September and December of each calendar year. Each
party will make all royalty payments on behalf of itself and its
Affiliates.
4.6 Foreign Currencies. All monies due hereunder will be payable in
United States dollars. When Licensed Products are sold for monies
other than United States dollars, the earned royalties will first
be determined in the foreign currency of the country in which
Licensed Products were sold and then converted into equivalent
United States dollars. The exchange rate will be the average of
the buying and selling rate established by the Bank of America in
New York, New York on the last business day of the reporting
period.
- ------------------------
* The redacted portions of this document have been omitted pursuant to a
request for confidential treatment and such redacted portions have been
filed separately with the Securities and Exchange Commission.
4.7 Currency Restrictions. If at any time legal restrictions prevent
the prompt remittance by either party of part or all royalties due
to the other party with respect to any country outside the United
States where Licensed Products are sold, such party will have the
right to make such payments by depositing the amount thereof in
local currency to the other party's account in a bank or other
depository in such country.
5.0 ROYALTY REPORTS
5.1 Reports of First Sale. Each party will report to the other party
in its immediately subsequent royalty report the date of the first
commercial sale of each FED or Kodak Licensed Product, as
applicable, on which royalties are payable under this Agreement in
the United States and the first date of commercial sale of such
Licensed Product on which royalties are payable outside the United
States.
5.2 Dates; Contents. After the first commercial sale of the first
Licensed Product anywhere in the world by a party or its
sublicensees on which royalties are payable, such party will make
quarterly written royalty reports to the other party within sixty
(60) days after the last days of March, June, September, and
December of each calendar year. Each royalty report will cover the
sales by product by such party, and if Kodak, sales by its
sublicensees, on which royalties are payable for the most recently
completed calendar quarter. Each royalty report will also state
the amount of sales by territory on which royalties are payable
and the royalties due, as well as the calculations used to arrive
at such royalties.
5.3 Submission of Payments and Reports by FED. All license payments
and royalty reports under this Agreement by FED should be made to
Kodak Corporate Royalty Accounting who will handle receipt and
deposit of all royalties and/or license fees. Unless otherwise
notified in writing, FED license payments and royalty reports
should be submitted to the following address:
Eastman Kodak Company
Royalty Accounting
343 State Street
Rochester, NY 14650-0907
Attention: Mr. Paul Melos
5.4 Submission of Payments and Reports by Kodak. Unless otherwise
notified in writing, all license payments and royalty reports
under this Agreement by Kodak should be submitted to the following
address:
FED CORPORATION
1580 Route 52
Hopewell Junction, New York 12533
6.0 BOOKS AND RECORDS
6.1 Records. FED and Kodak's sublicensees will each keep records
accurately showing all Licensed Products on which royalties are
payable under this Agreement. Such records will be preserved for
at least three (3) years from the date of the royalty payment to
which they pertain. Kodak will obligate its sublicensees to open
their records for inspection during regular business hours by an
independent certified public accounting firm selected by FED and
reasonably acceptable to Kodak and Kodak's sublicensees, and FED's
records will be open to inspection during regular business hours
by an independent certified public accounting firm selected by
Kodak and reasonably acceptable to FED. Each party shall make
inspections hereunder no more than once per year.
6.2 Expenses. The fees and expenses incurred by the party having an
independent certified public accounting firm perform an
examination of the royalty reports as set forth in Section 6.1
above will be borne by such party. However, if an error in the
royalty accounting of more than ten percent (10%) of the total
royalties due for any calendar quarter is discovered, then such
fees and expenses will be paid by the other party.
6.3 Late Payments. Each party shall be liable for interest at a rate
of the Prime Rate plus three percent (3%) compounded monthly on
any overdue royalty or other payment due under this Agreement,
commencing on the date such royalty or other payment becomes due.
The "Prime Rate" shall be the Prime Rate as reported by The Wall
Street Journal for the date on which such late royalty or payment
is made.
7.0 DISCLOSURE OF KNOW-HOW
7.1 Transfer of Kodak's Know-how. Kodak agrees to provide FED upon
request during the term of this Agreement through March 31, 2000,
technical assistance and consultation at FED facilities and
technical assistance and consultation at Kodak facilities in order
to transfer Kodak's Know-how to FED for use in developing and
making FED Licensed Products solely in the Field of Use. FED shall
have the right to obtain such Person-days of technical assistance
and consultation from Kodak pursuant to the terms and conditions
set forth in the parties' Non-Direct View, Head Mount License.
7.2 Transfer of FED's Know-how. FED agrees to provide Kodak upon
request during the term of this Agreement through March 31, 2000,
technical assistance and consultation at Kodak facilities and
technical assistance and consultation at FED facilities in order
to transfer FED's Know-how to Kodak for use in developing and
making Kodak Licensed Products pursuant to the terms and
conditions set forth in the parties' Non-Direct View, Head Mount
License.
7.3 Compliance with Know-how Transfer. Kodak's compliance with
aforementioned Section 7.1 and Section 12.0 and FED's compliance
with the aforementioned Section 4.0, Section 7.2 and Section 12.0
shall constitute the sole and exclusive requirements on each party
under this Agreement with respect to the license and disclosure of
Kodak's Know-how to FED and FED's Know-how to Kodak, respectively.
8.0 TERM AND TERMINATION
8.1 Term. Unless otherwise terminated by operation of law or in
accordance with the terms of this Agreement, the term of this
Agreement will commence on the Effective Date and continue for a
period ending on a country-by-country basis upon the expiration of
the last-to-expire issued patent, or the abandonment of the last
pending patent application, in such countries licensed under this
Agreement. For purposes of convenience in computing royalties on
FED Licensed Products, considering the number and different filing
dates of the applicable patents within, and the number of
different classes of FED Licensed Products under, Kodak Patent
Rights, the royalty rates for each different class of FED Licensed
Products shall not increase or decrease during the term of this
Agreement as the number of such applicable patents increase (as
new patents issue) or decrease (as older patents expire).
8.2 Termination For Breach. If either party should fail to perform any
material term or covenant of this Agreement, then the other party
may, within thirty (30) days of such failure or omission, give
written notice of such default. If the defaulting party should
fail to remedy such default within sixty (60) days of the
effective date of such notice, the non-defaulting party will have
the right to terminate the licenses it has granted under this
Agreement on written notice. Sublicenses granted in the case of
Kodak based on such terminated license shall be handled as
provided in Section 8.6 below.
8.3 Termination for Bankruptcy. If, at any time during the life of
this Agreement, either party shall become a voluntary debtor party
to any bankruptcy, insolvency or reorganization proceeding, or
shall be declared bankrupt or reorganized by a court of competent
jurisdiction, or enter into any composition with its creditors, or
shall begin any proceeding for the liquidation or closing of its
business or for the termination of its corporation charter, the
other party shall have the right forthwith to terminate the patent
license granted by it herein, by sending written notice of such
termination to said debtor party. Such termination of the licenses
granted by said other party shall not affect the licenses granted
to said other party by said debtor party.
8.4 Obligations Upon Termination. Expiration or termination of this
Agreement will not relieve either party of any obligation or
liability accrued hereunder prior to such termination, or rescind
any payments due or paid to the other party hereunder, except
payments made by mistake, prior to the time such termination
becomes effective. The following provisions shall survive the
expiration or termination of this Agreement for any reason:
Sections 4.5-4.7, Section 6, Sections 8.4-8.6, Section 9, Sections
11-19.
8.5 Sale of Stock On Hand. Upon termination of this Agreement for any
reason, FED will provide Kodak within forty-five (45) days
following the effective date of termination with a written
inventory of all FED Licensed Products, as applicable, in process
of manufacture or in stock, and will dispose of such FED Licensed
Products within one hundred and twenty (120) days of the effective
date of termination, provided, however, that the sales of all such
FED Licensed Products will be subject to the terms of this
Agreement.
8.6 Survival of Sublicenses. Upon termination of the licenses granted
by FED under this Agreement due to Kodak's failure to remedy a
default of any material term or covenant of this Agreement as
provided in Section 8.2 above or any other reason, sublicenses
granted by Kodak under this Agreement with respect to FED Patent
Rights and FED's Know-how shall continue to remain in effect and
Kodak shall continue to be obligated to make any required
royalties due on such sublicenses with respect to FED Patent
Rights in the Field of Use to FED.
9.0 USE OF NAMES AND TRADEMARKS
Neither party has any right to use any name, trade name, trademark, or
other designation of the other party (including any contraction,
abbreviation, or simulation) in advertising, publicity, or other
promotional activities without the other party's prior written consent,
which may be granted or withheld in its sole discretion.
10.0 DISCLAIMER
10.1 Disclaimer. THESE LICENSES AND THE ASSOCIATED PATENT RIGHTS AND
TECHNOLOGY ARE PROVIDED WITHOUT WARRANTY OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR
IMPLIED. NEITHER PARTY MAKES ANY REPRESENTATION OR WARRANTY THAT
LICENSED PRODUCTS OR PRACTICE OF PATENTED METHODS WILL NOT
INFRINGE ANY PATENT OR OTHER PROPRIETARY RIGHT. IN NO EVENT WILL
EITHER PARTY BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THESE LICENSES OR
THE USE OF THE PATENT RIGHTS OR LICENSED PRODUCTS, EVEN IF IT HAS
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
10.2 Nothing in this Agreement will be construed as:
(a) A warranty or representation by either party as to the
validity or scope of any of such party's rights in its
Patent Rights;
(b) A warranty or representation that anything made, used, sold
or otherwise disposed of under any license granted in this
Agreement is or will be free from infringement of patents
of third parties;
(c) Any obligation to bring or prosecute actions or suits
against third parties for patent infringement;
(d) Conferring by implication, estoppel or otherwise any
license or rights under any patents to either party other
than the Patent Rights licensed herein, regardless of
whether such patents are dominant or subordinate to the
Patent Rights.
11.0 PATENT INFRINGEMENT
11.1 Notice of Infringement. In the event that either party learns of
the substantial infringement of any Patent Rights licensed under
this Agreement from the other party, such party will call the
other party's attention thereto in writing and will provide the
other party with such evidence of such infringement as it may
rightfully be entitled to provide.
11.2 Recoveries. Any legal action for infringement will be brought at
the sole discretion and be at the expense of the party who owns
the Patent Rights infringed on and all recoveries thereby will
belong to such party; provided, however, that if a legal action is
brought jointly by the parties and fully participated in by both,
such action will be at the joint expense of the parties and all
the recoveries will be shared jointly by them in proportion to the
share of expense paid by each party.
12.0 CONFIDENTIAL INFORMATION AND INVENTIONS
12.1 General. The parties and their Affiliates, from time to time, in
connection with their performance under this Agreement will
disclose Confidential Information to each other. FED agrees not to
use Kodak's Confidential Information outside the Field of Use and
each party will use its best efforts to prevent the disclosure to
third parties (other than its Affiliates or Kodak's sublicensees)
of any of the other party's Confidential Information during the
term of this Agreement and for a period of five (5) years
thereafter, provided that the receiving party's obligations
hereunder will not apply to information that the receiving party
can show:
(a) is disclosed orally; provided, however, that the receiving
party's obligations under this Section 12 shall apply to
information disclosed orally if such information is
summarized and confirmed in writing as "CONFIDENTIAL" by
the disclosing party within thirty (30) days after
disclosure thereof; or
(b) is already in the receiving party's possession at the time
of disclosure thereof as shown in the records or files of
the receiving party at the time of disclosure; or
(c) is or later becomes part of the public domain through no
fault of the receiving party; or
(d) is received from a third party having no obligations of
confidentiality to the disclosing party, provided that the
receiving party complies with any restrictions imposed by
the third party; or
(e) is independently developed by the receiving party; or
(f) is required by law or regulation to be disclosed, provided
that the receiving party promptly notifies the disclosing
party so that such party may take appropriate legal action
to restrict such disclosure and/or obtain a protective
order to safeguard such information; or
(g) is made available by the disclosing party to a third party
without similar restrictions.
12.2 Subject to the rights and obligations of the parties set forth in
Section 12.3 through 12.6 below, each of FED and Kodak agree that
during the term of this Agreement and for a period of 5 years
thereafter, they shall protect Confidential Information of the
other party as follows:
(a) limit access to any such Confidential Information received
by them to their employees, directors, consultants,
advisors, Affiliates, and authorized sublicensees (in the
case of Kodak) who have a need-to-know in connection with
the parties' use of the licenses granted under this
Agreement,
(b) advise their employees, directors, consultants, advisors,
Affiliates, and authorized sublicensees (in the case of
Kodak) having access to the Confidential Information of the
proprietary and confidential nature thereof and of the
obligations set forth in this Agreement,
(c) take appropriate action with their employees, directors,
consultants, advisors, Affiliates, and authorized
sublicensees (in the case of Kodak) having access to the
Confidential Information to fulfill their obligations under
this Agreement, including requiring such persons to execute
a non-disclosure agreement, having provisions substantially
similar to the corresponding provisions of this Agreement,
(d) safeguard all Confidential Information to prevent any
unauthorized access thereto, and
(e) not disclose any Confidential Information received by them
to third parties, except as expressly set forth in this
Agreement.
12.3 Inventions made in the conduct of the activities of the parties
under this Agreement and any patent filings based on such
inventions shall be owned as follows:
12.3.1 If invented or created solely by staff of one party or its
Affiliates, ownership shall vest in that party,
12.3.2 If invented or created jointly by staff of both parties or
their Affiliates, ownership shall vest jointly in both
parties.
12.4 Patent procurement activity in regard to solely owned inventions
shall be pursued at the discretion and expense of the owner set
forth in Section 12.3. The parties shall mutually decide on a
case-by-case basis the party who shall undertake patent filing
activity with respect to each jointly owned invention. The
expenses for such patent procurement activities shall be the
responsibility of the party herein designated to pursue such
activity.
12.5 FED will notify Kodak of any of its inventions made under this
Agreement prior to the filing of any patent application based on
the such inventions, provide Kodak with a copy of any such
application and any issued patent granted thereon, and on request
update Kodak as to the status of any such patent application. Each
party further agrees to sign documents to vest or maintain title
to patents and patent applications in the owner designated in
Section 12.3 and to provide reasonable assistance to the other
with respect to preparation and prosecution of such patents and
patent applications.
12.6 The foregoing will not affect or limit the right of either party
or its Affiliates to fully exercise the licenses granted under
this Agreement, and Kodak and its Affiliates will be fully
entitled to use and disclose [Redacted]* to Kodak's sublicensees
hereunder provided that each such sublicensee enters into a
nondisclosure agreement with Kodak to maintain the confidentiality
of FED's Confidential Information on terms substantially similar
to the corresponding provisions of this Agreement.
12.7 Any information disclosed hereunder is provided "As Is" and
without any warranty, except the disclosing party warrants that it
has the right to make such disclosures.
13.0 WAIVER
13.1 No provision of this Agreement is deemed waived and no breach
excused unless such waiver or excused breach is made in writing
and signed by the party granting such waiver or excusing such
breach.
13.2 Failure on the part of either party to exercise or enforce any
right under this Agreement will not be a waiver of any other
right, or operate to bar the enforcement or exercise of the right
at any time thereafter.
13.3 No waiver by either party of any breach or default of any of the
terms or conditions in this Agreement is a waiver of any similar
or subsequent breach or default.
14.0 ASSIGNABILITY
This Agreement is binding upon and will inure to the benefit of each
party's permitted successors and assigns. This Agreement and the licenses
granted herein, however, are not assignable or otherwise transferable by
FED, including without limitation, any such transfers associated with its
sale, merger, change of control, consolidation, or any other material
change in its corporate organization, without Kodak's prior written
consent, which consent will not be unreasonably withheld.
- ------------------------
* The redacted portions of this document have been omitted pursuant to a
request for confidential treatment and such redacted portions have been
filed separately with the Securities and Exchange Commission.
15.0 NOTICES
All notices and other communications required or permitted under this
Agreement must be in writing. They may be delivered personally or sent by
telex, courier, facsimile, or registered mail, postage prepaid. They
shall be delivered or sent to the receiving party's representative
specified in this Agreement and they shall be effective on the date of
receipt at the specified address. All notices, other than license
payments and royalty reports, unless otherwise designated by written
notice given to the other party, shall be delivered to the following
addresses:
In the case of Kodak: Eastman Kodak Company
Corporate Commercial Affairs
343 State Street
Rochester, New York 14650-0211
Attention: R.P. Hilst
Telephone: (716)724-3391
Facsimile: (716)724-9563
In the case of FED: FED Corporation
1580 Route 52
Hopewell Junction, New York 12533
Attention: Webster E. Howard
Telephone: 914-892-1970
Facsimile: 914-892-1935
16.0 GOVERNING LAWS
This Agreement shall be governed and construed in accordance with the
laws of the State of New York, without reference to its conflict of laws
provisions.
17.0 EXPORT CONTROL LAWS
A party receiving Confidential Information under this Agreement shall
adhere to the U.S. Export Administration Laws and Regulations and shall
not export or re-export any technical data or products received from the
disclosing party or the direct products of such technical data to any
proscribed country listed in the U.S. Export Administration Regulations
unless properly authorized by the U.S. Government.
18.0 MISCELLANEOUS
18.1 Amendments. Any amendment or modification of this Agreement must
be in writing, reference this Agreement, identify sections or
exhibits to be amended or modified and be signed on behalf of each
party.
18.2 Complete Agreement. This Agreement, together with the Exhibit
attached hereto and incorporated herein by reference, embodies the
entire understanding of the parties and supersedes all previous
communications, representations, or understandings, either oral or
written, between the parties on the subject matter of this
Agreement, except for the related obligations of the parties under
the Non-Direct View, Head Mount License and the surviving
obligations of the parties set forth in Sections 6.0 and 7.0 of
the Evaluation Agreement.
18.3 Severability. If any provision of this Agreement is held to be
invalid, illegal or enforceable in any respect, that invalidity,
illegality, or unenforceability will not affect any other
provisions of the Agreement. This Agreement will be construed as
if such invalid, illegal or unenforceable provision were never in
this Agreement.
18.4 Agents. Neither party is an agent of the other and has no power to
contract for or obligate the other party for any purpose.
18.5 Publicity. Neither party shall release any information,
advertising or publicity relating to this Agreement, without the
prior written approval of the other. Either party, however, may
disclose the existence (but not the contents) of this Agreement,
if identified as confidential to government agencies,
stockholders, potential investors, suppliers, or customers. Kodak
may disclose this Agreement under a written confidentiality
agreement to licensees and sublicensees of Kodak Patent Rights and
Kodak Know-how [Redacted]*.
18.6 Warranty and Representations. Kodak and FED each represent and
warrant that:
18.6.1 it is a corporation duly organized, validly existing and in
good standing under the laws of the jurisdiction in which
it was incorporated;
18.6.2 it is under no prior obligation or duty to a third party,
nor shall it undertake any such obligation or duty during
the term of this Agreement which conflicts with the
performance of its obligations and duties hereunder;
18.6.3 it has the full right and power to convey the licenses and
rights granted herein and disclose the results and other
information related to this Agreement; and
18.6.4 it has and shall maintain the authorization of its
Affiliates to grant the licenses and other rights and
undertake the obligations set forth in this Agreement to
the extent such licenses, rights, and obligations must be
granted by or require the acts or the consent of its
Affiliates.
AGREED TO:
EASTMAN KODAK COMPANY FED CORPORATION
By /s/ J. C. Stoffel By /s/ Gary W. Jones
------------------------------------ ----------------------------------
(Signature) (Signature)
Name J. C. Stoffel Name Gary W. Jones
-------------------------------- ------------------------------
Title Director R&D and Vice President Title President and CEO
------------------------------- -----------------------------
- ------------------------
* The redacted portions of this document have been omitted pursuant to a
request for confidential treatment and such redacted portions have been
filed separately with the Securities and Exchange Commission.
EXHIBIT A
Patent Rights
The Kodak Patent Rights referenced in Section 2.4 of this Agreement shall
include the following patent applications and/or patents:
Kodak Patent Rights for Phase 1 - Monochrome - Single Color Emitters
U.S. Patent 4,356,429 U.S. Patent 5,059,861 U.S. Patent 5,405,709
U.S. Patent 4,539,507 U.S. Patent 5,059,862 U.S. Patent 5,484,922
U.S. Patent 4,720,432 U.S. Patent 5,061,569 U.S. Patent 5,552,678
U.S. Patent 4,769,292 U.S. Patent 5,073,446 U.S. Patent 5,554,450
U.S. Patent 4,885,211 U.S. Patent 5,141,671 U.S. Patent 5,593,788
U.S. Patent 4,950,950 U.S. Patent 5,150,006
U.S. Patent 5,047,687 U.S. Patent 5,151,629
Kodak Patent Rights for Phase 2 - Color - White Emitter with Color Filter Array
U.S. Patent 4,356,429 U.S. Patent 5,059,861 U.S. Patent 5,405,709
U.S. Patent 4,539,507 U.S. Patent 5,059,862 U.S. Patent 5,484,922
U.S. Patent 4,720,432 U.S. Patent 5,061,569 U.S. Patent 5,552,678
U.S. Patent 4,769,292 U.S. Patent 5,073,446 U.S. Patent 5,554,450
U.S. Patent 4,885,211 U.S. Patent 5,141,671 U.S. Patent 5,593,788
U.S. Patent 4,950,950 U.S. Patent 5,150,006
U.S. Patent 5,047,687 U.S. Patent 5,151,629
Kodak Patent Rights for Phase 3 - Color - Blue/Near UV Emitter with Color
Changing Medium
U.S. Patent 4,356,429 U.S. Patent 5,059,861 U.S. Patent 5,294,870
U.S. Patent 4,539,507 U.S. Patent 5,059,862 U.S. Patent 5,484,922
U.S. Patent 4,720,432 U.S. Patent 5,061,569 U.S. Patent 5,552,678
U.S. Patent 4,769,292 U.S. Patent 5,073,446 U.S. Patent 5,554,450
U.S. Patent 4,885,211 U.S. Patent 5,141,671 U.S. Patent 5,593,788
U.S. Patent 4,950,950 U.S. Patent 5,150,006
U.S. Patent 5,047,687 U.S. Patent 5,151,629
Kodak Patent Rights for Phase 4 - Color - Patterned Multicolor Emitters
U.S. Patent 4,356,429 U.S. Patent 5,059,861 U.S. Patent 5,294,869
U.S. Patent 4,539,507 U.S. Patent 5,059,862 U.S. Patent 5,294,870
U.S. Patent 4,720,432 U.S. Patent 5,061,569 U.S. Patent 5,484,922
U.S. Patent 4,769,292 U.S. Patent 5,073,446 U.S. Patent 5,552,678
U.S. Patent 4,885,211 U.S. Patent 5,141,671 U.S. Patent 5,554,450
U.S. Patent 4,950,950 U.S. Patent 5,150,006 U.S. Patent 5,593,788
U.S. Patent 5,047,687 U.S. Patent 5,151,629