Exhibit 10.12
AMENDED AND RESTATED LICENSE AGREEMENT
This AMENDED AND RESTATED LICENSE AGREEMENT (hereinafter "AGREEMENT") is
made and entered-into as of this 30th day of September, 2001, by and between
Technical Consumer Products, Inc. (hereinafter "TCP"), an Ohio corporation,
having principal office located at ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, U.S.A.,
represented by ▇▇▇▇▇ ▇▇▇, President and Practical Innovations, Inc. a Delaware
corporation having a principal place of business at ▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇, and ▇▇▇▇▇▇▇ ▇▇▇▇▇, an individual residing at ▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, (hereinafter "▇▇▇▇▇", collectively
with Practical Innovations, Inc. "PRACTICAL").
This AGREEMENT incorporates, amends and restates the terms of earlier
agreements covering related subject matter made and entered into: (i) on the
18th day of June, 1996 by and between TCP and PRACTICAL, as subsequently amended
on November 13, 1998 (hereinafter called the "1996 AGREEMENT"), (ii) on the 1st
day of March, 2000 by and between TCP and PRACTICAL (hereinafter called the
"2000 AGREEMENT"); and (iii) on the 23rd day of May, 2001 by and between TCP and
PRACTICAL (hereinafter called the "2001 AGREEMENT").
WHEREAS, PRACTICAL owns technologies related to Electronic Ballasts for Gas
Discharge Lamps, and PRACTICAL has knowledge and know-how of Engineering,
Development, Design, Manufacturing, and Market of Electronic Ballasts and Gas
Discharge Lamps;
WHEREAS, TCP is desirous of acquiring rights to use PRACTICAL's
technologies, knowledge and know-how;
WHEREAS, TCP and PRACTICAL entered into the "1996 AGREEMENT" under which
PRACTICAL granted a non-exclusive license to TCP under certain patents owned by
PRACTICAL and transferred certain knowledge and know-how to TCP;
WHEREAS, TCP and PRACTICAL entered into the "2000 AGREEMENT" under which
PRACTICAL granted a non-exclusive license to TCP under certain patents and
exclusive license under certain other patents owned by PRACTICAL and transferred
certain knowledge and know-how to TCP;
WHEREAS, TCP and PRACTICAL entered into the "2001 AGREEMENT" under which
the terms of the "2000 AGREEMENT" were modified and amended; and
WHEREAS, TCP is desirous of further amending the above referenced
agreements as set forth below.
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NOW, THEREFORE, based on the mutual consideration herein specified, the
parties hereto agree as follows:
1. DEFINITIONS
1.01 "EXCLUSIVE PATENT MATTER" shall mean and include all inventions as
specified in "EXHIBIT A", attached to the 2000 AGREEMENT.
1.02 "NON-EXCLUSIVE PATENT MATTER" shall mean: the inventions as specified
in "EXHIBIT ONE" hereto.
1.03 "KNOW-HOW" shall mean and include any information that includes
confidential information and trade secrets disclosed by PRACTICAL to TCP in one
of the following form: oral - confirmed in writing, written, graphic, and/or
sample form, or which is obtained by TCP from access to a facility of PRACTICAL,
and such information is related to: EXCLUSIVE PATENT MATTER, NON-EXCLUSIVE
PATENT MATTER, PRODUCTS, manufacture, use, sale of PRODUCTS, electronic
lighting, electronic ballast for gas discharge lamps, gas discharge lamps,
market of lighting, market research and studies, competitive analysis, and other
related information.
1.04 "PRODUCTS" shall mean and include: (i) any and all types of electronic
ballasting means and/or systems suitable for powering gas discharge lamps, as
well as any and all other types of products which include said ballasting means
and/or systems, based on or derived from the EXCLUSIVE PATENT MATTER,
NON-EXCLUSIVE PATENT MATTER, or KNOW-HOW, or (ii) any and all ballasting means
and/or systems suitable for powering gas discharge lamps, as well as any and all
other types of products which include said ballasting means developed,
engineered, designed and/or provided by PRACTICAL to TCP and not derived from
and/or related to the EXCLUSIVE PATENT MATTER or NON-EXCLUSIVE PATENT MATTER, or
(iii) any and all products based on or derived from KNOW-HOW, or (iv) any
product developed, engineered, designed and/or provided by PRACTICAL to TCP.
1.05 "SELLER" shall mean (i) TCP to the extent that TCP sells or acts as
the marketing agent for PRODUCTS, and/or (ii) TCP's marketing agent(s) or
authorized reseller(s), to the extent that TCP uses or permits other persons or
entities to sell PRODUCTS under any kind of licensing and/or restricted
marketing arrangement.
1.06 "NET SALES" shall mean SELLER's gross selling price of PRODUCTS, less
the following items: (i) trade discounts actually deducted, (ii) credits
actually deducted for PRODUCTS returned, and (iii) taxes, if any, collected and
remitted by the SELLER.
1.07 "TERRITORY" shall mean and include: all countries of the world.
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2.0 GRANT
2.01 PRACTICAL hereby grants to TCP a perpetual non-exclusive license to
the NON-EXCLUSIVE PATENT MATTER. The previous exclusive license for EXCLUSIVE
PATENT MATTER in the 2000 AGREEMENT is revoked.
2.02 TCP may transfer or assign any or all of its rights and obligations
under this AGREEMENT. TCP shall have no right to sub-license.
2.03 TCP may hire any contract manufacturer to manufacture PRODUCTS
designed by it, including Shanghai ▇▇▇▇ ▇▇▇ Electronic Enginering Co.,Ltd. and
Shanghai Jensing Electron Electrical Equipment Co.,Ltd. Any contract
manufacturer or supplier selected by TCP to manufacture PRODUCTS for TCP shall
not be considered a licensed party under this AGREEMENT or any prior agreements.
3.0 WARRANTY
3.01 PRACTICAL warrants that: to the best of its knowledge it owns all
right, title and interest in or to the NON-EXCLUSIVE PATENT MATTER, and it does
not know of any right, title or interest of any person or entity other than
PRACTICAL in or to NON-EXCLUSIVE PATENT MATTER.
No warranties other than as specifically stated herein are expressed or
implied relative to the NON-EXCLUSIVE PATENT MATTER and/or relative to any
rights that any party may assert in respect to the manufacture, use or sale of
PRODUCTS.
4.0 LICENSE FEES.
4.01 In consideration for the full release and discharge by PRACTICAL, as
outlined on paragraphs 5.19 and 5.20, TCP shall pay to PRACTICAL Two Hundred
Thousand Dollars ($200,000) payable in lump sum within 10 days from the date of
this AGREEMENT.
4.02 EARLY PAYOFF. In consideration of the perpetual NON-EXCLUSIVE license
granted hereunder by PRACTICAL, TCP will payoff all of it's obligations and all
royalties by making a non-refundable payment of $2,160,000 (Two Million One
Hundred Sixty Thousand Dollars) to PRACTICAL, payable as follows:
- For each and every calendar month on or before the 10th day of the month,
during first 54 (fifty four) consecutive calendar months of this AGREEMENT, TCP
shall pay to PRACTICAL monthly amount equal to $40,000 (Forty Thousand Dollars);
Following the timely payment of $2,160,000 (Two Million One Hundred Sixty
Thousand Dollars) by TCP to PRACTICAL, TCP's perpetual, non-exclusive license
shall be fully paid-up, and TCP will have no obligation to make any additional
payments to PRACTICAL.
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4.03 If any payment described in Paragraph 4.01 and 4.02 is not timely
paid, then the untimely payment shall accrue interest until paid at the annual
rate of fifteen percent (15%) compounded monthly, until the delinquent payment
is paid in full to PRACTICAL.
5.0 OTHER PROVISIONS
5.01 TCP hereby warrants that it will make timely monthly payments to
PRACTICAL according to Paragraphs 4.01 and 4.02. In the event, when TCP for any
reason will stop making monthly payments as outlined in 4.01 and 4.02 herein,
this AGREEMENT and 2001 AGREEMENT shall be void and the 2000 AGREEMENT shall be
reinstated, according to Paragraph 5.14 of this AGREEMENT.
5.02 Except as provided herein, during the entire term of this AGREEMENT,
as well as upon completion of the early payoff payments by TCP according to
paragraph 4.02, TCP shall have perpetual non-exclusive license rights to the
NON-EXCLUSIVE PATENT MATTER, as well as to all knowledge and KNOW-HOW
transferred to TCP by PRACTICAL under all earlier agreements.
5.03 TCP shall ▇▇▇▇ all PRODUCTS with the appropriate trademark and patent
markings, including patent pending and actual patent numbers where applicable.
5.04 Except as specified in Paragraph 3, nothing herein shall be construed
as a warranty or representation by PRACTICAL as to the scope or validity of the
EXCLUSIVE PATENT MATTER, NON-EXCLUSIVE PATENT MATTER, or any patent(s) issuing
thereon. TCP, as the manufacturer of PRODUCTS, will be solely responsible for
defending any claims against it for design defects or patent infringement claims
arising from the manufacture, sale or use of all models of PRODUCTS. PRACTICAL
will assist TCP, at the request of TCP, in defending any such claims. TCP will
pay all expenses of PRACTICAL associated with such assistance. TCP will also
defend and hold PRACTICAL and ▇▇▇▇▇ harmless against any such claim for damages
and TCP will not ▇▇▇ PRACTICAL or ▇▇▇▇▇ as a result of any such claim.
5.05 TCP will indemnify, defend and hold PRACTICAL and ▇▇▇▇▇ harmless from
any and all losses, judgments, settlements, claims, or damages, including
attorney fees, costs and expenses incurred as a result of any claim arising out
of or in connection with TCP's manufacture, use, promotion, marketing,
distribution, offer for sale, or sale of PRODUCTS, including, but not limited
to, claims arising out of the alleged negligence in TCP's manufacture, use,
promotion, marketing, distribution, offer for sale, or sale of the PRODUCTS or
claims based upon product liability, provided that TCP is promptly notified in
writing of such claims against PRACTICAL or ▇▇▇▇▇ and provided further that
PRACTICAL permits TCP to defend, compromise, or
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settle such claim and gives TCP all available information, reasonable
assistance, and authority to enable TCP to do so.
5.06 In the event that the NON-EXCLUSIVE PATENT MATTER has been infringed
upon by a third party, PRACTICAL has a right but not the obligation to prosecute
an infringement action, to initiate discussions regarding settlement, or to
otherwise enforce its patent rights. In any such action, all expenses associated
with such action will be borne by PRACTICAL, including all damages, profits,
royalties or awards of whatever nature that are recoverable for any and all
past, present and all choses in action and/or rights to ▇▇▇ for past, present or
future infringement occurring in whole or in part during the term of the 1996
AGREEMENT, or 2000 AGREEMENT, or 2001 AGREEMENT.
5.07 In the event that the NON-EXCLUSIVE PATENT MATTER is infringed upon by
a third party, TCP shall have no right to take any legal action or any
proceedings on its own against the infringing party without the express written
consent of PRACTICAL and upon such terms as are agreeable to PRACTICAL.
5.08 Neither TCP nor PRACTICAL shall challenge or contest the validity of
this AGREEMENT. TCP agrees and warrants that TCP or any SELLER will not
challenge or contest validity of any patent application or issued patents owned
by or assigned to PRACTICAL or ▇▇▇▇▇▇▇ ▇▇▇▇▇.
5.09 TCP shall use its best effort to maintain in confidence all
proprietary matters associated with the EXCLUSIVE PATENT MATTER, and/or
NON-EXCLUSIVE PATENT MATTER, and/or KNOW-HOW, and/or PRODUCTS, as well as any
other Proprietary or Confidential Information or Trade Secrets ("PROPRIETARY
MATTER") provided by PRACTICAL in connection with this AGREEMENT.
5.10 Bobels's Right to Compete. TCP, as the non-exclusive licensee of
PRACTICAL and/or ▇▇▇▇▇ under this AGREEMENT or any earlier agreements,
understands, acknowledges and warrants hereby that PRACTICAL and/or ▇▇▇▇▇ has
the full right, without any conflict with this AGREEMENT and/or any earlier
agreements, to:(i)enter into a license agreement with any other party who can be
a direct competitor of TCP, or (ii) be employed by any other party who can be a
direct competitor of TCP, or (iii) establish a new business entity that will be
a direct competitor of TCP. In the event that ▇▇▇▇▇ makes any of the choices
described above in clauses (i),(ii) or (iii), TCP hereby unconditionally
warrants and agrees, that it will not file any claim against or ▇▇▇ (a) ▇▇▇▇▇ or
(b) any other party with which ▇▇▇▇▇ may be associated with in the future,
(except in the event that such other party will be in violation of any other
separate contract or otherwise), arising from, or in connection with, any of the
above-described conduct or event.
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5.11 If any dispute arises under this AGREEMENT, the parties shall
negotiate in good faith to settle such dispute. If the parties cannot resolve
such dispute themselves, then they shall submit the dispute to mediation by any
mutually-acceptable mediator. If no mediator is mutually acceptable, than the
parties shall submit the matter to arbitration under the rules of the American
Arbitration Association ("AAA"). Under any arbitration, both parties shall
cooperate and agree to abide finally by any decision of the arbitration
proceedings. If AAA is selected, the arbitration shall take place under the
auspices of the nearest branch of the AAA most convenient to both parties. The
cost of the arbitration shall be born according to the decision of the
arbitrator, who may apportion costs equally, or in accordance with any finding
of fault or lack of good faith of either party. The arbitrator's award shall be
non-appealable and enforceable in any court of competent jurisdiction.
5.12 PRACTICAL hereby directs TCP to make all payments due PRACTICAL under
this AGREEMENT payable to "Practical Innovations" by a check or wire transfer to
a designated bank account at any U.S. Bank.
5.13 In the event that either party hereto shall be required, or shall deem
it necessary or advisable, to give notice to the other party, such notice shall
be served upon the other party by depositing said notice in the United States
mail, postage paid certified mail with return receipt requested, and addressed
to:
▇▇▇▇▇ ▇▇▇, President
Technical Consumer Products, Inc.
▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
or
▇▇▇▇▇▇▇ ▇▇▇▇▇, President
Practical Innovations, Inc.
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
as appropriate. Any notice so given shall be deemed received on the third
business day following its deposit in the U.S. Mail. Either party hereto may
change the address at which such party shall receive notices hereunder by giving
notice of such change of address to the other party hereto in accordance with
the provisions of this paragraph.
5.14 If TCP shall be in default in any terms of this AGREEMENT, PRACTICAL
has the right to terminate this AGREEMENT and reinstate the 2000 AGREEMENT
effective fifteen (15) days after the mailing date of a written notice from
PRACTICAL to TCP describing the default and termination decision. Unless the
default is remedied within fifteen
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(15) days after the mailing date of such written notice, this AGREEMENT shall
terminate as of the expiration of such fifteen day period, and the 2000
AGREEMENT shall take effect immediately. In the event, that the reinstated 2000
AGREEMENT becomes effective, the non-exclusive license of the NON-EXCLUSIVE
PATENT MATTER of this AGREEMENT shall remain non-exclusive, the exclusive
license of the EXCLUSIVE PATENT MATTER shall be deemed non-exclusive and there
shall be no exclusive license under the reinstated 2000 AGREEMENT. Further, the
assignment of any and all choses in action and/or rights to ▇▇▇ for past,
present and/or future infringement under this AGREEMENT shall remain effective
under any reinstatement of the 2000 AGREEMENT.
Except as otherwise set forth in this AGREEMENT, this Paragraph 5.14 shall
not apply after PRACTICAL receives all payments from TCP, as per Paragraphs
4.01, 4.02 and 4.03 of this AGREEMENT.
5.15 In the event that TCP stops making monthly payments according to
paragraph 4.02 and/or this AGREEMENT is terminated according to paragraph 5.14
before all payments according to paragraphs 4.01, 4.02 and 4.03 are paid to
PRACTICAL by TCP, PRACTICAL shall have a full legal rights to enter a JUDGMENT
in any court of competent jurisdiction and automatically recover any unpaid
balance of unpaid obligations according to paragraph 4.01, 4.02, and 4.03. This
JUDGMENT shall be immediately enforceable after filing, and shall be
undisputable, and unappealable by TCP.
This Paragraph 5.15 shall not apply after PRACTICAL receives all payments
from TCP, as per Paragraphs 4.01, 4.02 and 4.03 of this AGREEMENT.
5.16 If TCP shall go into receivership, bankruptcy, or insolvency, this
AGREEMENT and the perpetual non-exclusive license may be immediately terminated
by PRACTICAL by written notice, and PRACTICAL shall not be obligated to refund
any money to TCP or any other party in relation to such receivership,
bankruptcy, or insolvency of TCP.
5.17 TCP shall keep in confidence any and all proprietary information
received from PRACTICAL under or in connection with all earlier agreements. TCP
shall not disclose to any third party and shall keep in strict confidence any
and all details associated with PATENT MATTER, KNOW-HOW, PRODUCTS, this
AGREEMENT and all earlier agreements between TCP and PRACTICAL.
5.18 TCP hereby warrants that it will not file in the future any patent
applications using any and all, in part or in whole, proprietary and
confidential technical information or KNOW-HOW received from PRACTICAL under:
(1) NON-EXCLUSIVE PATENT MATTER, or (2) EXCLUSIVE PATENT MATTER, or
(4)"TECHNICAL ASSISTANCE AGREEMENT" dated June 18, 1996, or (5) the "1996
AGREEMENT" dated June 18, 1996, as amended on November 13, 1998, or (6) the
"2000 AGREEMENT" dated March 1, 2000, or (7) the "2001 AGREEMENT" dated May 23,
2001, or this AGREEMENT.
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5.19 Except as otherwise set forth in this AGREEMENT, for any conduct or
event which occurred prior to the date of this AGREEMENT and arising out of, or
otherwise in connection with (i) this AGREEMENT, (ii) the 1996 AGREEMENT, (iii)
2000 AGREEMENT, (iv) 2001 AGREEMENT, (v) the TECHNICAL ASSISTANCE AGREEMENT,
(vi) the agreement dated as of April 1, 1997 by and among PRACTICAL, TCP,
Shanghai ▇▇▇▇ ▇▇▇ Electronic Engineering Co.,Ltd. and Shanghai Jensing Electron
Electrical Equipment Co.,Ltd. (the "SHANGHAI AGREEMENT") or (vii) any amendment
relating to any of such earlier agreements, PRACTICAL and ▇▇▇▇▇ hereby fully,
finally and forever release, discharge, quit claim and covenant not to ▇▇▇, and
otherwise agree not to enforce any claim, cause of action, right, title or
interest of any kind and every description, which PRACTICAL or ▇▇▇▇▇ has or
might have against TCP and its officers, directors, employees, shareholders,
agents, representatives, attorneys, accountants, affiliates, successors and
assigns, including without limitation, Shanghai ▇▇▇▇ ▇▇▇ Electronic Engineering
Co.,Ltd. and Shanghai Jensing Electron Electrical Equipment Co.,Ltd.
Except as otherwise set forth in this AGREEMENT, the release by PRACTICAL and
▇▇▇▇▇ described in this Paragraph 5.19 applies to any conduct or event occurring
on or prior to the date of this AGREEMENT with respect to any and all claims,
demands, claims for relief, actions, causes of action, suits, arbitrations,
demands, proceedings, debts, obligations, liabilities, damages, losses, costs,
attorney's fees, and expenses of any kind, character or nature whatsoever,
whether known or unknown, suspected or unsuspected, fixed or contingent, and
arising out of, or otherwise in connection with (i) this AGREEMENT, (ii) the
1996 AGREEMENT, (iii) 2000 AGREEMENT, (iv) 2001 AGREEMENT, (v) the TECHNICAL
ASSISTANCE AGREEMENT, (vi) the agreement dated as of April 1, 1997 by and among
PRACTICAL, TCP, Shanghai ▇▇▇▇ ▇▇▇ Electronic Engineering Co.,Ltd. and Shanghai
Jensing Electron Electrical Equipment Co.,Ltd. (the "SHANGHAI AGREEMENT") or
(vii) any amendment relating to any of such earlier agreements.
5.20 TCP, PRACTICAL and ▇▇▇▇▇ hereby acknowledge that the TECHNICAL
ASSISTANCE AGREEMENT dated June 18, 1996 is terminated and shall not be
reinstated according to Paragraph 5.14 of this AGREEMENT. TCP, PRACTICAL and
▇▇▇▇▇ hereby further agree that effective as of the date of this AGREEMENT, the
SHANGHAI AGREEMENT, as amended, is hereby terminated and shall not be reinstated
according to Paragraph 5.14 of this AGREEMENT.
5.21 This AGREEMENT shall be binding upon and shall inure to the benefit of
the parties hereto and their respective successors and assigns including any and
all worldwide subsidiaries, affiliates, suppliers, customers, and legal
representatives.
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5.22 Except as otherwise set forth in this AGREEMENT, this AGREEMENT
incorporates, amends, and restates the terms of earlier agreements covering
related subject matter.
5.23 This AGREEMENT may not be amended or canceled except in writing,
signed by the parties hereto or their respective successors and assigns.
5.24 This AGREEMENT shall be governed by and construed in accordance with
the laws of state of Illinois.
5.25 TCP represents and warrants that the execution and delivery by it of
this AGREEMENT has been authorized by appropriate action of its Board of
Directors in accordance with provisions of law and its by-laws.
IN WITNESS WHEREOF the parties hereto have duly executed this AGREEMENT as
of the day and year first above written.
Technical Consumer Products, Inc. (TCP)
By: /s/ ▇▇▇▇▇ ▇▇▇ September 30, 2001
------------------------------- ---------------------
▇▇▇▇▇ ▇▇▇, President Date
Practical Innovations, Inc.
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇ September 30, 2001
------------------------------- ---------------------
▇▇▇▇▇▇▇ ▇▇▇▇▇, President Date
▇▇▇▇▇▇▇ ▇▇▇▇▇
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇ September 30, 2001
------------------------------- ---------------------
▇▇▇▇▇▇▇ ▇▇▇▇▇, individually Date
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EXHIBIT ONE
NON-EXCLUSIVE PATENT MATTER
U.S. PATENT NO. ISSUE DATE TITLE
5,448,137 SEPT.5, 1995 ELECTRONIC ENERGY
CONVERTER HAVING TWO
RESONANT CIRCUITS
5,502,635 MAR.26,1996 PARALLEL RESONANT
INTEGRATED INVERTER
BALLAST FOR GAS
DISCHARGE LAMPS
5,801,492 SEP.1, 1998 ELECTRONIC BALLAST FOR
GAS DISCHARGE LAMP
HAVING PRIMARY AND
AUXILIARY RESONANT
CIRCUIT
5,434,480 JULY 18,1995 ELECTRONIC DEVICE FOR
POWERING A GAS
DISCHARGE LOAD FROM
A LOW FREQUENCY SOURCE
5,436,529 JULY 25, 1995 CONTROL AND PROTECTION
CIRCUIT FOR ELECTRONIC
BALLAST
5,371,438 DEC. 6, 1994 ENERGY CONVERSION DEVICE
HAVING AN ELECTRONIC
CONVERTER WITH DC INPUT
TERMINAL FOR DELIVERING
A HIGH FREQUENCY SOURCE
5,982,106 NOV.9,1999 SELF-PROTECTED SERIES
RESONANT ELECTRONIC
ENERGY CONVERTER
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