PATENT AND TECHNOLOGY LICENSE AND TECHNOLOGY TRANSFER AGREEMENT
Exhibit
10.17
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This
Patent and Technology License and Technology Transfer Agreement (the
“Agreement”) is entered into as of October 13th, 2006 (the “Effective
Date”) by and between IGT, a Nevada corporation with principal offices at ▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇ (“IGT”), and PureDepth Inc., a Delaware
corporation with principal offices at ▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ (together with its subsidiaries, PureDepth Limited and
PureDepth Incorporated Limited, collectively “PureDepth”).
Background
PureDepth
and its affiliates are a research and design business
focused on developing new display technology. PureDepth and its affiliates
have developed and continue to develop a
multi-layer display (MLD) technology with promising commercial
potential.
IGT
is a
leading manufacturer of gaming machines and other devices for use in the
wager-based gaming industry.
PureDepth
wishes to grant to IGT an exclusive license to incorporate its MLD Technology
into IGT products and to offer for sale, sell and/or distribute such IGT
products within the Field of Use under the terms and subject to the conditions
of this Agreement.
In
consideration of the mutual promises and covenants and conditions contained
herein, IGT and PureDepth agree as follows:
1. Definitions
Section
1.01 “Administrative Machine” means a device developed now or
in the future (i) which is designed for use in casino administration of Gaming
Machines and (ii) that would, absent this Agreement, infringe the Licensed
Intellectual Property.
Section
1.02 “Affiliate” means, with respect to IGT and PureDepth, any
other natural person or corporation, partnership, joint venture, limited
liability company or other business entity that directly or indirectly controls,
is controlled by, or is under common control with, IGT or PureDepth,
respectively. An entity or person shall be regarded as in control of
another entity if it owns or controls, directly or indirectly, at least fifty
percent (50%) of the voting stock or other ownership interest of the other
entity. A joint venture entity in which IGT or an IGT Affiliate owns
at least 50% of the equity interest shall be deemed an IGT
Affiliate.
Section
1.03 “Agreement” means this agreement,
including the Exhibits to this Agreement.
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Section
1.04 The “Copyrights” means any copyright held by PureDepth,
whether registered or not, in any written material, plans, designs, software,
or
other work relating to the development, assembly, sale, and distribution
of Pure
Depth’s MLD Technology in the Field of Use.
Section
1.05 The “Core Patents” shall mean those PureDepth Patents
listed in Exhibit B that claim generic aspects of MLD technology, and are
not
limited by application or by features not directly related to the functioning
of
a display. The Core Patents include at least US Patent No. [****] and
its non-US counterparts.
Section
1.06 “Field of Use” means wager-based non-amusement
gaming. Examples of technology within the Field of Use include
without limitation class 2 technology, class 3 technology, and central
determination technology.
Section
1.07 “Gaming Machine” means a machine adapted to provide or
assist in providing a fully or substantially automated wagering
game. This includes machines and other devices capable of receiving
▇▇▇▇▇▇ and/or issuing awards to players for play of games of
chance. A Gaming Machine will be associated with at least one
wagering station. Gaming Machines include, but are not limited to,
stand-alone Gaming Machines, networked Gaming Machines (wired and wireless),
general-purpose computers configured with software, including Internet
applications, for implementing the wagering game, and automated multi-player
station based table games. Gaming Machines may be non-Mobile Gaming
Machines or Mobile Gaming Machines (e.g., handheld and/or wireless) used
primarily for gambling but not including certain common mobile devices such
as
iPods, Gameboys, and, PSPs. It is understood that a general purpose
personal computer or mobile phone, not designed primarily for gambling, is
not a
Gaming Machine. Gaming Machines include Internet capable general or
special purpose machines used primarily for Internet gambling.
Section
1.08 “Improvements” means modifications to, improvements in,
developments from or additions to the Licensed Intellectual Property during
the
Term as set forth in Section 2.01.
Section
1.09 The “Know-How” means, collectively, all know-how,
show-how, technical information, technical knowledge, unpatentable inventions,
manufacturing procedures, methods, specifications, bills of materials,
processes, and formulas relating to PureDepth’s MLD Technology.
Section
1.10 “Licensed Intellectual Property” means the trade secrets,
the Know-How, the Copyrights, the PureDepth Patent Applications, and the
PureDepth Patents. The Licensed Intellectual Property is applied in
the development, manufacture, assembly and sale of the MLD Technology as
well as
any designs developed by PureDepth, whether or not registered or protected
by
copyright or patent, devised or acquired by PureDepth and applied in the
development, manufacture, assembly and sale of the MLD
Technology. For the avoidance of doubt, the Licensed Intellectual
Property includes all Improvements.
Section
1.11 “Licensed Products” means any product, including devices
and machines developed now or in the future utilizing aspects of the MLD
Technology and Sold within the Field of Use, that would, absent this Agreement,
infringe the Licensed Intellectual Property. Licensed Products
include Gaming Machines and Administrative Machines that would infringe the
Licensed Intellectual Property.
Section
1.12 “MLD Technology” is the multi-layer display technology
owned by PureDepth and protected by the Licensed Intellectual
Property.
Section
1.13 The “PureDepth Patent Applications” means “Existing Patent
Applications” as identified in Exhibit A and any “Future Patent Applications”
relating to MLD Technology filed in the US or elsewhere during the term of
this
Agreement. The PureDepth Patent Applications include but are not
limited to continuations, divisionals, continued examinations, substitutes,
and
continuations-in-part of any PureDepth Patent Applications.
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Section
1.14 The “PureDepth Patents” means issued patents covering MLD
Technology owned or controlled by PureDepth including “Existing Patents,” which
are patents owned or controlled by PureDepth on the Effective Date, including
those listed in Exhibit B, as well as any renewals, reissues, substitutes
and
reexaminations thereon and any “Future Patents,” which are patents granted after
the Effective Date upon any PureDepth Patent Application in the US or elsewhere,
and includes any patents of which PureDepth is the permitted user of worldwide
and which relate to the MLD Technology.
Section
1.15 “Sale” or“Sell”
or “Selling”
or “Sold” means the sale,
transfer, or other disposition of a Licensed Product by IGT, either directly
or
through its sublicensees and/or Affiliates, to an ultimate
customer.
Section
1.16 “Territory” means worldwide except for Japan.
Section
1.17 “Wagering Station” means a physical station associated
with one or more gaming machines where a player can place bets on a game
of
chance. To qualify as a wagering station herein, the gaming machine
associated with the wagering station must include at least one display
incorporating MLD Technology. Typically though not necessarily a
wagering station includes facilities for not only placing bets but also
initiating play of the game of chance.
2. Term
and Termination
Section
2.01 Term. This Agreement shall commence on
the Effective Date and shall continue in full force and effect for an initial
term of [****] years (“Initial Term”).
Section
2.02 Termination.
(a) Either
party may terminate this Agreement if the other party materially breaches
this
Agreement and fails to cure such breach within sixty (60) days after receiving
written notice thereof by the non-breaching party, which notice shall specify
the manner in which the Agreement has been breached. Thereafter, such
non-breaching party may, at its option and in addition to
any other remedy that it might be entitled to, immediately terminate this
Agreement by notice to the breaching party in writing, which notice of
termination will be effective upon receipt.
(b) In
the event there is a final, non-appealable judgment that one or more
of the Licensed Products have infringed the intellectual
property rights of a third party, and as a result, IGT is enjoined from Selling
the Licensed Products as contemplated in this Agreement, then IGT shall have
the
right to terminate this Agreement upon written notice to
PureDepth.
(c) This
Agreement may also be terminated pursuant to Section 9.02(f).
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Section
2.03 Effect of Termination. Upon
termination or expiration of this Agreement, except in the case of Section
2.2(b), IGT will have a period of ninety (90) days from the effective date
of
the termination or expiration in which to Sell any Licensed Products in its
inventory as of the effective date of the termination or
expiration. Within fifteen (15) days of the effective date of
termination or expiration, IGT will provide a report listing all Licensed
Products that are in IGT’s inventory by product type and
quantity. Upon termination or expiration of this Agreement, IGT will
return, within ten (10) days, all PureDepth Know-How and Confidential
Information including the manufacturing package and the design
package. Termination or expiration of this
Agreement, for any reason, will not be
construed to release any party from any obligation accrued prior to the
effective date of such termination or expiration. In this regard, the
termination of this Agreement by either party for any reason shall not relieve
any party of any liability for a breach of this Agreement, any misrepresentation
or failure to comply with any term or covenant hereunder or any other liability
accruing prior to the date of expiration or termination; provided,
however, that neither party shall be deemed to be in default
of any of
its obligations hereunder (other than any payment obligations) to the extent
any
delay in its performance is caused by or is the result of factors beyond
its
reasonable control, including, without limitation, the factors identified
in
Section 9.15 (“Force Majeure”).
Section
2.04 Option for Renewal. The
parties may elect to renew this Agreement for an additional term, subject
to
mutual agreement of the parties in writing, at least [****] prior to expiration
of the Initial Term, on [****].
3. License
Grant
Section
3.01 Grant. PureDepth hereby grants to
IGT an exclusive license under the Licensed Intellectual Property throughout
the
Territory and in the Field of Use, to make, have made, use, market, distribute,
Sell, offer to Sell, import, and export to any person and in any manner Gaming
Machines.
PureDepth
hereby grants to IGT a non-exclusive license under the Licensed Intellectual
Property throughout the Territory and in the Field of Use to make, have made,
use, market, distribute, Sell, offer to Sell, import, and export to any person
and in any manner Administrative Machines.
Section
3.02 Right to Sublicense. PureDepth
grants to IGT the exclusive right under the Licensed Intellectual Property
to
sublicense any third party (including IGT Affiliates and contract manufacturers)
throughout the Territory and in the Field of Use, to make, have made, use,
market, distribute, Sell, offer to Sell, import, and export to any person
and in
any manner Gaming Machines without first obtaining the consent of
PureDepth.
PureDepth
also grants to IGT the non-exclusive right under the Licensed Intellectual
Property to sublicense any third party (including IGT Affiliates and contract
manufacturers) throughout the Territory and in the Field of Use to make,
have
made, use, market, distribute, Sell, offer to Sell, import, and export to
any
person and in any manner Administrative Machines without first obtaining
the
consent of PureDepth.
For
all
Sales by sublicensees (except as otherwise limited herein including as specified
in Sections 4.01 and 4.04), IGT will pay over to PureDepth royalties equal
to
amounts PureDepth would have received from IGT on equivalent Licensed Products
Sold by IGT as specified in Section 4.02. IGT will report the
execution of sublicensees to PureDepth in writing within thirty (30) days
of the
execution of each sublicense and will identify the sublicensee and will provide
a copy of the sublicense upon request by PureDepth.
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4. Royalties,
Payments and Reporting (Accounting and Audit)
Section
4.01 – Prepaid Royalty. - [****]. IGT and its sublicensees
will Sell Licensed Products subject to the royalty schedule of
Section 4.02 (“Royalty Schedule”); however IGT will not be
obligated to pay royalties to PureDepth thereunder until [****].
Thereafter, IGT will pay PureDepth royalties on further
Sales of Licensed Products according to the schedule of Section
4.02.
Section
4.02 – Royalty Schedule For [****], IGT will pay PureDepth a
royalty of $[****].
Further,
IGT shall have no obligation to pay royalties for any sales of any Licensed
Product having one or more displays that IGT purchases from
PureDepth.
Section
4.03 – Payments and Reporting.
(a) After
[****], IGT will compute and pay royalties pursuant to the royalty schedule
of
Section 4.02 to PureDepth within thirty (30) days after the end of each quarter
of the calendar year -- the quarters ending on March 31st, June 30th, September
30th and December 31st.
(b) Within
thirty (30) days after each quarter (from January 1 to March 31, from April
1 to
June 30, from July 1 to September 30 and from October 1 to December 31) for
as
long as this Agreement remains in effect, IGT will furnish to PureDepth a
report
in writing containing full particulars of the Sales of Licensed Product during
the quarter (including the numbers of Wagering Stations per Gaming
Machine).
(c) IGT
will keep or cause to be kept, true and accurate books and records with respect
to Sales of Licensed Products (and all Wagering Stations) covered by this
Agreement in accordance with generally accepted accounting principles and
in a
manner consistent with the accounting methods employed by best business
practice.
(d)
PureDepth will have the right, at its own expense, to engage an independent,
certified public accounting firm to examine the relevant books and records
of
IGT (including those records received by IGT from its sublicensees and any
of
its Affiliates who have Sold the Licensed Products) at any reasonable time
during business hours after notifying IGT of its desire to do so in
writing. Except for the disclosure of financial information to
PureDepth or except as otherwise required by law, regulation or legal process,
such accounting firm will be required to maintain the confidentiality of
all
financial or other non-public information of IGT and any of its Affiliates
who
have Sold the Licensed Products. The examination will be no more than once
each
year and will cover no more than the preceding three (3) anniversary years.
Except in the case of an intentional failure to disclose or omission by IGT
or
its Affiliates or agents, no year may be audited more than once. The examination
will be solely for the purpose of determining the compliance by IGT of its
reporting and payment obligations under this Agreement. In the event that
an
examination discloses an error by IGT (for whatever reason) of more than
[****]%
the of royalties paid or due to PureDepth for the period under audit, IGT
will
fully reimburse PureDepth for all PureDepth's costs and expenses of the
examination, and will pay to PureDepth the amount of the royalties due to
PureDepth within thirty (30) days.
(e) Royalty
payments will be made subject to the required withholding of any government
with
jurisdiction. IGT shall maintain complete and accurate
accounting records of such withholding and shall fully cooperate with
PureDepth’s efforts to obtain credits of taxes paid or withheld, where
appropriate.
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(f)
Independent of any audit examination, PureDepth will credit to IGT the amount
of
any overpayment of royalties made by IGT in error which overpayment is
identified and explained in writing by IGT to PureDepth within six (6) months
of
the overpayment, subject to PureDepth's confirmation of the
overpayment
Section
4.04 – No Royalty for Samples. No royalty will be owed or paid
by IGT to PureDepth for any Licensed Product supplied free of charge as an
evaluation, sample or promotional unit, provided, however, that net shipments
of
such units do not exceed [****]% of the total number of
Licensed Products Sold by IGT or [****] units, whichever
is less, in any given year.
5. Intellectual
Property
Section
5.01 Ownership of Intellectual Property
Rights. Nothing in this Agreement is intended to transfer the
ownership of any intellectual property owned by either party. The
parties acknowledge and agree as follows:
(a) PureDepth's
Ownership. PureDepth shall, for all purposes, be considered the
sole and exclusive owner or licensee empowered to grant IGT full rights under
Section 3.01 of (i) the PureDepth Existing Patents and (ii) the Existing
Patent
Applications. PureDepth shall also be considered the sole and
exclusive owner of (iii) all Future Patent Applications, if and to the extent
the inventions covered in such Future Patent Applications are invented solely
by
PureDepth or result from work performed under the sole direction of
PureDepth.
(b) IGT's
Ownership. IGT shall, for all purposes, be considered the sole
and exclusive owner of all patent applications to the extent the inventions
covered in such patent applications are invented solely by IGT or result
from
work performed under the sole direction of IGT.
(c) [****]
Ownership. [****]. Each of IGT and PureDepth may exploit any
joint inventions and any patent applications filed thereon and any patent
issuing thereon in any manner and without any accounting to the other, provided
however that (i) PureDepth shall not license, assign, or otherwise convey
any of
its interest in any such patent application and any patents issuing therefrom
to
any party for practice, use, or commercialization in the Field of Use without
the express written permission of IGT in its sole discretion, and (ii) IGT
shall
not license, assign, or otherwise convey any of its interest in any such
patent
application and any patents issuing therefrom to any party for practice,
use, or
commercialization outside the Field of Use without the express written
permission of PureDepth in its sole discretion. The parties agree
that, both during and after the term of this Agreement, they each shall take
such action and execute and deliver such documents as are reasonably requested
by the other party to evidence and confirm the foregoing provisions regarding
each party's ownership rights and to cooperate reasonably prosecution of
any
patent applications with respect to any Joint Future Patent
Applications. IGT shall be responsible for prosecution of
such patent applications subject to PureDepth’s prior written approval (i) of
the prosecuting attorneys, and (ii) the patent application prepared for
filing.
Section
5.02 Third Party
Infringement. IGT shall promptly inform PureDepth of any
infringement of any Licensed Intellectual Property by a third
party. During the term of this Agreement, PureDepth and IGT each
shall have the right to institute an action for infringement of the Licensed
Intellectual Property against such third party subject to the
following:
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(i) PureDepth
may institute suit, and, at its option, join IGT as a plaintiff. If
PureDepth decides to institute suit, then it shall notify IGT in
writing. If IGT does not notify PureDepth in writing within fifteen
(15) days after the date of the notice from PureDepth, that it will join
in
enforcing the Licensed Intellectual Property pursuant to the provisions hereof,
PureDepth shall bear the entire cost of such litigation and shall be entitled
to
retain the entire amount of any recovery or settlement;
(ii) If
PureDepth opts not to institute suit as described in (i), IGT and PureDepth
may
agree to institute suit jointly, and in such case, the suit shall be brought
in
both their names, the out-of-pocket costs thereof shall be borne equally,
and
any recovery or settlement shall be shared equally. IGT and PureDepth
shall agree to the manner in which they shall exercise control over such
action. PureDepth may, if it so desires, also be represented by
separate counsel of its own selection, the fees for which counsel shall be
paid
by PureDepth;
(iii) If
PureDepth notifies IGT that it has decided not to institute a suit in accordance
with (i) and in the absence of agreement to institute a suit jointly, as
provided in (ii) above, IGT may institute suit and, at its option, join
PureDepth as a plaintiff. IGT shall bear the entire cost of such
litigation and shall be entitled to retain the entire amount of any recovery
or
settlement;
(iv) Should
either PureDepth or IGT commence a suit under the provisions of this Section
5.02, and thereafter elect to abandon the same, such party shall give timely
notice to the other party who may, if it so desires, continue prosecution
of
such suit, provided, however, that the sharing of expenses and any recovery
in
such suit shall be as agreed upon between PureDepth and IGT;
(v) Notwithstanding
the terms of (ii), (iii) and (iv) above, PureDepth reserves the right to
control
an action insofar as a claim of invalidity is made by a third party as to
the
PureDepth Patents.
Section
5.03 Intellectual Property Review by IGT and Maintenance
Rights. PureDepth shall have the right to prosecute and maintain the
Licensed Intellectual Property, including but not limited to the PureDepth
Patent Applications and PureDepth Patents. PureDepth shall provide
IGT with copies of proposed responses to any substantive action of any
intellectual property office at least 30 days prior to the unextended filing
deadlines for such responses, if applicable, and IGT shall have the right
to
make reasonable changes to such responses. PureDepth shall also
provide IGT with copies of any proposed PureDepth Patent Applications prior
to
filing and IGT shall have the right to make reasonable changes to such PureDepth
Patent Applications. For non-provisional Patent Applications having a
bar date, past which US or non-US patent rights will be lost if a Patent
Application is not filed, PureDepth will provide copies of such Patent
Applications to IGT at least 30 days prior to any such bar
date. [****]. PureDepth shall bear the expense of such
filing, prosecution and maintenance, except [****] in which case IGT shall
be
solely responsible for expenses incurred in prosecution and
maintenance.
Section
5.04. Invalidity of Patents. In the event all Core Patents of
PureDepth are invalidated on a final, non-appealable judgment, this Agreement
shall be terminated and IGT shall have no further royalty obligation as of
the
date of such judgment. If, however, one or more (but not all)
PureDepth Core Patents are invalidated, PureDepth and IGT shall confer in
good
faith to equitably adjust, if appropriate, the royalty schedule set forth
in
Section 4.02. If the parties cannot reach an agreement on the
royalty schedule within sixty (60) days of the
commencement of such discussion, then the subject matter shall be submitted
to
arbitration as set forth under 9.06(b).
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Section
5.05 Marking. IGT agrees to ▇▇▇▇ the Licensed
Products (or their labels) with the numbers of the applicable PureDepth
Patents.
Section
5.06 PureDepth License to IGT Improvement
Patents. PureDepth shall have a fully paid up non-exclusive
worldwide license to make, have made, use, market, distribute, Sell, offer
to
Sell, import, and export products under all patents and patent applications
owned by IGT (as specified in Section 5.01(b)) claiming MLD Technology, which
are filed after the Effective Date and do not claim priority to any patent
applications filed prior to the Effective
Date. [****]. Nothing in this section 5.06 grants
PureDepth a license to exploit any other IGT patent.
6. Technology
Transfer
Section
6.01 During the term of the Agreement, PureDepth shall, in the
manner set forth in Exhibit C, disclose and make available to IGT all
information available to PureDepth regarding the MLD Technology and related
technology necessary to implement the MLD Technology in the Licensed
Products. In this regard, PureDepth shall provide training to IGT
personnel. Such training shall commence and proceed according to the
schedule provided in Exhibit C.
Section
6.02. As set forth in Exhibit C and in order to facilitate
face-to-face time for such training, IGT personnel will be sent to PureDepth
facilities in Redwood City, California, or other suitable location, and that
in
further pursuance of such training PureDepth personnel will be sent to IGT
facilities in Reno, Nevada. IGT shall provide reasonable meals and
lodging for all times that any PureDepth personnel are visiting IGT facilities,
and IGT will assume responsibility for the meals and lodging for all times
that
any IGT personnel are visiting PureDepth facilities. All travel costs
for travel by IGT and PureDepth personnel shall be borne by
IGT. PureDepth shall provide office space and desks for IGT
representatives, as well as phone/fax and Internet access during the periods
of
Technology Transfer. Free use of PureDepth’s facilities and materials
will be provided during this time by PureDepth. In like manner, IGT
will provide free use of its facilities to visiting PureDepth personnel during
periods of Technology Transfer.
Section
6.03. Maintenance. PureDepth shall provide
continuous ongoing maintenance to IGT for all initial and later developed
aspects of MLD Technology, as may be reasonable. Such maintenance
shall include all necessary error detection and correction, and
troubleshooting. Support shall mean assistance and training provided
by PureDepth in familiarizing IGT R&D personnel with the items and
information as delivered, and shall include reasonable levels of technical
support in the use of all supplied items, and responses to IGT inquiries
and
reports of problems. In this regard, PureDepth further agrees to
provide IGT with fixes and corrections that may be developed by PureDepth
for
use with the MLD Technology. Any such fixes, including release notes
and any other pertinent documentation, shall be provided to IGT either within
thirty (30) days of their completion internally at PureDepth or prior to
installation in the field anywhere in the world, whichever shall come
first. This provision shall not apply to field trials or prototypes
under the full control of PureDepth. PureDepth shall provide to IGT improvements
and/or upgrades of the items containing new features and/or functions, such
as
may be developed by PureDepth from time-to-time.
Section
6.04 Solicitation. IGT and
PureDepth hereby agree that neither party shall directly
hire as its own employee(s) any current or future employees of the other
party,
including all technical personnel, during the term of this Agreement
and for a period of at least five (5) years from the
termination or expiration of this Agreement, except as may be mutually agreed
upon between the parties; except where such prospective employee responds
to
general advertisements. The provisions contained in this
Section 6.04 shall apply mutatis mutandis to
Affiliates.
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7. Representations
and Warranties
Section
7.01 Representations and Warranties of
IGT. IGT represents and warrants to PureDepth as of the Effective
Date that:
(a) Corporate
Organization, Good Standing, Etc.IGT is a corporation duly incorporated,
validly existing and good standing under the laws of the State of Nevada,
and
has all corporate power and authority to own, lease and operate its properties
and to carry on its businesses as currently conducted and as proposed to
be
conducted. IGT has all necessary corporate power and authority to
enter into this Agreement and to perform its obligations hereunder.
(b) Due
Authorization, Etc. This Agreement has been duly authorized,
executed and delivered by IGT and constitutes the legal, valid and binding
obligation of IGT, enforceable against it in accordance with its terms, subject
to any applicable bankruptcy, insolvency, reorganization, moratorium or similar
laws affecting creditors' rights generally, and general principles of
equity.
(c) No
Conflict. The execution and delivery by IGT of this Agreement and
the consummation of the transactions contemplated hereby do not violate or
conflict with the Articles of Incorporation or Bylaws of IGT, any material
contract, agreement or decree, order or award of any court, governmental
body or
arbitrator by which IGT is bound or any law, rule or regulation applicable
to
IGT.
(d) Consents
and Approvals. No consent, approval or authorization of, or
exemption by, or filing with, any governmental or regulatory authority or
any
non-governmental person is required in connection with the execution, delivery
or performance by IGT of this Agreement or the consummation of the transactions
contemplated hereby.
Section
7.02 Representations and Warranties of
PureDepth. PureDepth represents and warrants to IGT as of the
Effective Date that:
(a) Due
Organization, Good Standing, Etc. PureDepth is a corporation duly
incorporated, validly existing and good standing under the laws of the State
of
Delaware, and has all corporate power and authority to own, lease and operate
its properties and to carry on its businesses as currently conducted and
as
proposed to be conducted. PureDepth has all necessary corporate power
and authority to enter into this Agreement, to grant the rights to be granted
to
IGT hereunder and to perform its obligations hereunder.
(b) Due
Authorization, Etc.This Agreement has been duly authorized, executed and
delivered by PureDepth and constitutes the legal, valid
and binding obligation of PureDepth, enforceable against it in accordance
with
its terms, subject to any applicable bankruptcy, insolvency, reorganization,
moratorium or similar laws affecting creditors’ rights generally, and general
principles of equity.
(c) No
Conflict. The execution and delivery by PureDepth of this Agreement and the
consummation of the transactions contemplated hereby do not violate or conflict
with the Articles of Incorporation or Bylaws of PureDepth, any material
contract, agreement or decree, order or award of any court, governmental
body or
arbitrator by which PureDepth is bound or any law, rule or regulation applicable
to PureDepth. Without limiting the generality of the foregoing,
PureDepth has not entered into, and will not enter into, any agreement granting
rights to any person which will conflict with or bea breach of PureDepth’s
obligations hereunder. Further, PureDepth is
not a party to any other agreements that would require any third-party consents,
waivers or authorizations needed for PureDepth to grant the items and rights
provided in this Agreement.
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(d) Ownership
of Licensed Technology. PureDepth is the owner of or licensee of
PureDepth Patents and has full power and authority to
grant the rights and licenses granted to IGT. Further, the PureDepth
Patents are not, as of the Effective Date, subject to any
lien or other encumbrance that would affect the ability of IGT to exercise
the
rights granted to IGT by PureDepth herein.
(e) Validity
of Patents. All of the PureDepth Patents are currently in
compliance with all formal legal requirements (including payment of filing,
examination and maintenance fees and proofs of working or use), and, to the
best
of PureDepth’s knowledge, are valid and enforceable.
(f) No
Interference. [****] and PureDepth is currently unaware of any
potentially interfering patent or patent application of any person with respect
to the PureDepth Patents.
(g) No
Infringement. [****] and PureDepth is currently unaware of
any patent or other proprietary rights of any third party that would be
infringed by the use of the MLD Technology.
(h) Full
Rights to Practice MLD Technology. By this Agreement, PureDepth
has granted IGT a License under all intellectual property it owns, controls
or
has licensed as necessary to practice the make use of the Licensed Intellectual
Property and Gaming Machines and Administrative Machines as set forth in
Section
3.01.
8. Indemnification
Section
8.01 Indemnification with regard to
infringement claims. PureDepth will assume the defense of any
suit brought against IGT or [****], for [****] insofar as such suit is based
upon a claim that the [****] is attributable to IGT’s application without
substantial modification of such MLD Technology supplied under this
Agreement. In any such suit, PureDepth will indemnify IGT against any
money damages or costs awarded in such suit in respect to such a
claim.
Section
8.02 Indemnification Procedures for
Third-Party Claims. The obligations of PureDepth stated in
Section 8.01 apply only if (a) IGT shall inform PureDepth in writing within
fifteen (15) days of receiving any claim within the scope of Section 8.01
and
(b) IGT assists PureDepth in all necessary respects in conduct of the suit.
PureDepth may assume control of the defense of any such
claim; provided, however, that the IGT may, at its own cost and expense,
participate through its attorneys or otherwise, in such investigation, trial
and
defense of such claim and any appeal arising therefrom. PureDepth
shall not settle any such claim without IGT’s prior written consent (which
consent shall not be unreasonably withheld or delayed), unless such settlement
would not subject IGT to any liability (e.g., the settlement is solely for
monetary damages for which IGT is fully indemnified under this
Agreement). If PureDepth does not assume full control over the
defense of a claim pursuant to this Section 8.02, then PureDepth may participate
in such investigation, defense or trial, solely at its cost and expense,
and IGT
shall have the right to defend or settle such claim in such manner as IGT
deems
appropriate, subject to the consent of PureDepth which shall not be unreasonably
withheld or delayed, solely at the cost and expense of PureDepth.
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Section
8.03 PureDepth’s Total
Liability. PureDepth’s total liability to incur out-of-pocket costs
in the defense of any suit or suits and to pay damages awarded in any suit
or
suits shall be limited to the amount theretofore paid to PureDepth by IGT
under
this Agreement, but not exceeding $[****].
9. Miscellaneous
Provisions
Section
9.01 Confidentiality. Each
party ( as a “Disclosing Party”) is willing to disclose to the other party ( as
a “Receiving Party”) such party’s Confidential Information (as defined
herein) pursuant to the following:
(a) “Confidential
Information” means IGT’s confidential and proprietary information, including
trade secrets related to the use of transparent displays; and PureDepth’s
confidential and proprietary information, including trade secrets related
to
multi-layer displays and manufacturing methods for multi-layer display
monitors. Confidential Information may further include but is not
limited to the following: contractual provisions, discoveries, ideas, concepts,
know-how, techniques, designs, specifications, drawings, blueprints, diagrams,
flowcharts, data, costs, prices, customer lists, marketing plans, goals,
sales
figures, revenues and profits and shall expressly include the nature and
existence of this Agreement as well as any information directly derived from
the
Confidential Information.
(b) Each
party, as the Disclosing Party may deliver written disclosures of Confidential
Information to the other party as the Receiving Party. All such
disclosures are agreed to fall within the terms of this Agreement and shall
be
marked “Confidential”, “Proprietary”, or such other similar
language. Disclosures of Confidential Information delivered absent
such marking shall be deemed Confidential Information if delivered under
circumstances that reasonably suggest the confidential nature of the
information.
(c) Each
party, as the Disclosing Party, may orally communicate Confidential Information
to the other party as the Receiving Party. In the event such oral
communication of Confidential Information is made, the Disclosing Party shall
draft a document for the purpose of reducing such Confidential Information
to
writing and identifying the date, time and individual representatives privy
to
the disclosure. The document shall be marked “Confidential”,
“Proprietary”, or such other similar language, and delivered to the Receiving
Party within ten (10) business days of the disclosure. Disclosures of
Confidential Information not reduced to writing shall be deemed Confidential
Information if delivered under circumstances that reasonably suggest the
confidential nature of the infomation.
(d) The
parties shall provide the respective standard of care used by each party
in the
protection of their own Confidential Information (but in no event less than
a
reasonable standard of care), and not disclose to any third party any
Confidential Information. Confidential Information shall not include
the following:
(i) information
which, at the time of disclosure, is in the public domain or which, after
disclosure, becomes part of the public domain by publication or otherwise
through no action or fault of the Receiving Party; or
(ii) information
that the Receiving Party can show (by means of written record) was in its
possession or known to the party prior to the time of disclosure and was
not
acquired, directly or indirectly, from the Disclosing Party, or
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(iii) information
that was received by the Receiving Party from a third party having no legal
prohibition preventing the third party from disclosing the information;
or
(iv) information
that is independently developed by the Receiving Party without any knowledge
or
use of the Confidential Information communicated under this
Agreement.
(e) Confidential
Information may be disclosed by the Receiving Party to a third party if the
disclosure is in response to a valid subpoena or order by a court of competent
jurisdiction or by a governmental body, provided that the Receiving Party
so
required to disclose the Confidential Information advises the Disclosing
Party
promptly upon becoming aware that the Confidential Information is subject
to
disclosure, does nothing to prevent the Disclosing Party from intervening
in any
proceeding to protect its rights under this Agreement, uses commercially
reasonable efforts to resist disclosure, and if unsuccessful, to obtain an
appropriate protective order. Disclosures made under these
circumstances shall be made only to the named authority requiring the
disclosure.
(f) The
parties shall not, without the written permission of the other, use the
Confidential Information of the other for any reason other than for the
performance of this Agreement. Should any portion of the Confidential
Information reach the public domain, the Parties shall not add to the public
domain through their knowledge of the Confidential Information and shall
continue to maintain that portion of the Confidential Information not yet
in the
public domain as confidential. The Receiving Party shall not reverse
engineer or disassemble any Confidential Information nor any products related
to
the Confidential Information of the Disclosing Party.
(g) The
parties reserve unto themselves all rights under their respective Confidential
Information as their absolute property and under patent, trademark, trade
secret
and copyright laws relating to the Confidential Information they own, including
the rights to file patent and trademark applications, obtain patents and
trademarks, and file and obtain copyright registrations relating to their
Confidential Information. Both parties agree and understand that each
party shall have all the rights and remedies available to it under patent,
trademark, trade secret and copyright law.
(h) It
is understood by the parties that this Agreement does not constitute a sale,
license or any other grant to make, use or sell the Confidential Information,
other than as specified herein.
(i) The
parties shall limit disclosure of Confidential Information to employees and
independent contractors in their organization on a need-to-know basis, only,
in
order to accomplish the purposes of this Agreement. The Confidential
Information shall only be provided to employees who are informed of the
obligations of confidentiality hereunder and who are bound to protect the
confidentiality of such Confidential information. Other than
employees meeting the above requirements, neither the existence of this
Agreement nor the nature of the discussions between the parties shall be
disclosed to any third party.
(j) The
parties shall return to the other within a reasonable period of time all
materials containing Confidential information and any other materials provided
under this Agreement, including but not limited to written information, copies,
reports, papers, surveys, letters, lists, drawings, computer printouts,
blueprints, manuals, software and firmware, that were delivered to the party,
upon request by the other or upon expiration or termination of this
Agreement. In the event materials to be returned to the Disclosing
Party include confidential information of the Receiving Party, the Receiving
Party may optionally elect to have all such materials destroyed and to certify,
in writing to the Disclosing Party, that all such materials were
destroyed.
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(k) Receiving
Party’s obligation under this Section with respect to any particular
Confidential Information, shall survive the expiration or termination of
this
Agreement and violations of such shall remain actionable.
(l) Both
parties acknowledge that due to the unique nature of the Confidential
Information, there can be no adequate remedy at law for any breach of its
obligations hereunder, that any such breach may allow the Receiving Party
or
third parties to unfairly compete with the Disclosing Party resulting in
irreparable harm to the Disclosing Party, and therefore, that upon any breach
or
any threat thereof, the Disclosing Party shall be entitled to seek and obtain
injunctive relief in addition to whatever remedies it might have at law or
equity.
Section
9.02 Regulatory
Compliance.
(a) Each
party maintains compliance programs that have been established to protect
and
preserve the [***].
(b) IGT,
as a business involved in the gaming industry, conducts business in a highly
regulated industry under privileged licenses issued by gaming regulatory
authorities both domestic and
international. [***].
(c) PureDepth
shall comply in all material respects with [***] the Licensed Intellectual
Property. IGT shall comply in all material respects with all applicable laws,
rules and regulations in developing, manufacturing, Selling and distributing
the
Licensed Products. The parties agree to use commercially reasonable
efforts to submit all applications and similar documents to governmental,
industry and insurance agencies, bodies or authorities to obtain the consents
IGT deems necessary or desirable, to manufacture, market, sell and dispose
of
Licensed Products in the Territory.
(d) Performance
of this Agreement is contingent upon each party’s compliance with the laws,
regulations, and policies in jurisdictions where business activity is
conducted. Failure to comply with the laws, regulations, and policies
in jurisdictions where business is conducted
[***].
(e) Each
party agrees to cooperate with requests, inquiries, or investigations of
gaming
regulatory authorities or law enforcement agencies in connection with the
performance of this Agreement. [***]
(f) If
IGT reasonably determines that continuation of this Agreement would jeopardize
the gaming licenses, permits or status of IGT with any gaming regulatory
authority or similar law enforcement authority, then
[***].
(g) IGT
agrees that it will not export the Licensed Products without the appropriate
U.S. governmental licenses or equivalent licenses or approvals from other
governmental entities.
Section
9.03. Control of
Personnel. PureDepth and IGT shall at all times retain the
administrative supervision of their respective personnel during visits to
each
other’s facilities. PureDepth and IGT’s personnel shall, while on
location of the other party or the other party’s Affiliates, comply with the
other party’s or the other party’s Affiliates’ rules and regulations with regard
to safety and security. PureDepth and IGT agree to indemnify each
other from any claims or demands, including the costs, expenses and reasonable
attorney’s fees incurred on account thereof; that may be made by anyone for
personal injury or property damage resulting from the acts or omissions of
the
other’s personnel.
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Section
9.04. Successors
and Assigns; Assignment.
(a) Neither
party may assign this Agreement without the prior written consent of the
other
party, except to an Affiliate or in the case of a merger, acquisition or
sale of
assets.
(b) If
PureDepth decides to sell or otherwise transfer any of the Licensed
Intellectual, PureDepth shall provide a thirty (30) day advance written notice
to IGT of its intended disposition and PureDepth shall give IGT
[****]. In its agreement documenting such disposition, PureDepth
shall specifically cause the purchaser or transferee, as the case may be,
to
assume the licenses granted to IGT hereunder.
(c) [****],
PureDepth and IGT shall confer in good faith to equitably adjust, if
appropriate, the royalty schedule set forth in Section 4.02. If the
parties cannot reach an agreement on a new royalty schedule within sixty
(60)
days of the commencement of such discussion, then the subject matter shall
be
submitted to arbitration as set forth under 9.06(b).
Section
9.05. Relationship of Parties.
(a) It
is understood that the parties hereto are independent entities engaged in
the
conduct of their own respective endeavors. No party is to be
considered the agent or employee of the other for any purpose. In all
matters relating to this Agreement, each party hereto will be solely responsible
for the acts of its employees and agents, and employees or agents of one
party
shall not be considered employees or agents of the other party. No
party will have any right, power or authority to create any obligation, express
or implied, on behalf of any other party nor shall either party act or represent
or hold itself out as having authority to act as an agent or partner of the
other party, or in any way bind or commit the other party to any
obligations. Nothing in this Agreement is intended to create or
constitute a joint venture, partnership, agency, trust or other association
of
any kind between the parties or persons referred to herein.
(b) IGT
shall be responsible for all acts of any Affiliate of IGT in connection with
this Agreement, and any breach of this Agreement by any IGT entity shall
be
deemed a breach by IGT. PureDepth shall be responsible for all acts
of any Affiliate of PureDepth in connection with this Agreement, and any
breach
of this Agreement by any PureDepth entity shall be deemed a breach by
PureDepth.
(c) Except
as set forth herein, this Agreement will not confer any rights or remedies
on
any party, person or third party other than IGT, PureDepth, and their respective
successors and permitted assigns.
Section
9.06. Governing
Law; Dispute Resolution; Jurisdiction.
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(a) This
Agreement shall be deemed to be executed and performed in the United States
of
America, State of California, County of San Francisco, and shall be construed
in
accordance with the laws of the State of California as to all matters,
including, but not limited to, matters of validity, construction, effect
and
performance, without regard to California law pertaining to conflicts or
choice
of law.
(b) Any
controversy or claim arising out of or relating to this Agreement, or the
breach
thereof, shall first be addressed by the signatories to this Agreement or
appropriate equivalents thereof from each party upon the request of any
party. If such persons cannot settle the matter to the mutual
satisfaction of all parties within sixty (60) days of such request, then
any
party may first submit the dispute to arbitration in accordance with the
Rules
of the American Arbitration Association in the City of San Francisco,
California. Judgment upon the award rendered by the Arbitrators may
be entered in any Court having jurisdiction thereof. Three qualified
arbitrators shall be appointed in accordance with the Rules of the American
Arbitration Association and this Agreement. Such qualified
arbitrators shall be members of the Nevada or California Bar and shall have
experience in intellectual property law matters.
Section
9.07. Amendment and Waiver. No amendment or waiver
of any term or condition of this Agreement will be valid or binding on a
party
unless the same has been mutually assented to in writing by all parties.
The
failure of a party to enforce at any time any of the provisions of this
Agreement, or the failure to require at any time performance by the other
party
of any of the provisions of this Agreement, or the failure of a party to
exercise any of its rights or remedies under this Agreement, will in no way
be
construed to be a present or future waiver of such provisions, rights, or
remedies, nor in any way affect the ability of a party to enforce each and
every
provision thereafter. Rather, the same will be and remain in full
force and effect.
Section
9.08. Severability. If any provision of this
Agreement or portion thereof, or the application thereof to any person or
circumstances or in any country or countries, shall be held to any
extent invalid or unenforceable, the remainder of this
Agreement (or of such provision) and the application thereof to other persons
or
circumstances or in other countries appropriate and applicable shall not
be
affected thereby.
Section
9.09. Notices.
(a) All
notices pertaining to or required by this Agreement shall be in writing and
shall be signed by an authorized representative. Notices shall be
sent by facsimile (confirmed receipt) or delivered by hand or sent by certified
mail, return receipt requested, with postage prepaid, or sent by overnight
courier to the addresses set forth as follows:
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If
to
IGT, such notices shall be delivered to:
▇▇▇▇▇
▇▇▇▇▇▇▇
▇▇.
V.P.,
IGT-Labs
IGT
▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇,
▇▇ ▇▇▇▇▇
with
copies to:
▇▇▇▇▇
▇▇▇▇▇
Assistant
General Counsel
IGT
▇▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇,
▇▇ ▇▇▇▇▇
If
to
PureDepth, such notices shall be delivered to:
__________________________
CFO
▇▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇
with
copies to:
▇▇▇▇▇
Snowman
Attorney
at Law
DLA
▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇ US LLP
▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
(b) Any
party may change its official notice address or addresses by notice in writing
given to every other party.
Section
9.10. Construction. The parties
have each materially and fully participated in the negotiation and drafting
of
this Agreement and each has had this Agreement reviewed by respective
counsel. Accordingly, this Agreement shall not be strictly construed
or interpreted against any party.
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Section
9.11. Counterparts. This
Agreement may be executed in counterparts, each of which shall be deemed
an
original instrument and all of which together shall constitute one and the
same
instrument.
Section
9.12. Rights and Remedies. In the
event of any breach of or default under this Agreement by either
party may suffer irreparable harm and have no adequate
remedy at law. In the event of any such breach or default, or any
threat of such breach or default, either party will be
entitled to injunctive relief, specific performance and other equitable
relief. Further, in any legal action or other proceeding in
connection with this Agreement (e.g., to recover damages or other relief),
either party will be entitled to recover, in addition to
any other relief to which it may be entitled, its reasonable
attorneys’ fees and other costs incurred in that action or
proceeding. The rights and remedies of either
party under this Section 9.12 are in
addition to, and not in lieu of, any other right or remedy afforded to either
party under any other provision of this Agreement, by law
or otherwise.
Section
9.13. Force Majeure. Neither party will be
responsible to the other for delay or failure in performance of any of the
obligations imposed by this Agreement, provided that, such failure will be
occasioned by fire, flood, explosion, lightning, windstorm, earthquake,
subsidence of soil, failure of machinery or equipment or supply of materials,
discontinuity in the supply of power, court order or governmental interference,
civil commotion, riot, act of terrorism, war, strikes, labor disturbances,
transportation difficulties, labor shortage, natural genetic variations of
any
living matter or by any cause of like or unlike nature beyond the reasonable
control and without the fault or negligence of such parties.
Section
9.14. Survival. The provisions of Sections 4
(“Royalties, Payments and Reporting (Accounting and Audit)”), including
PureDepth’s right to conduct the final audit as specified in Section 4.03(d)
within one (1) year of termination of this Agreement, and 2.03 (“Effect of
Termination”) shall survive any termination of this Agreement.
Section 9.15. Entire
Agreement. This Agreement constitutes the entire agreement
between the parties pertaining to the subject matter contained herein and
supersedes all prior and contemporaneous agreements, representations, and
understandings of the parties, both oral and written. This Agreement
may not be amended, except by writing signed by the party against whom such
amendment is sought to be enforced.
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This
Agreement shall be effective as of October 13th, 2006.
IN
WITNESS WHEREOF, the parties have caused this Agreement to be executed by
their
duly authorized officers thereof or authorized representatives.
|
IGT,
Inc.
|
|
|
By:
/s/
|
By:
/s/
|
|
Name:
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
|
Name:
▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇▇
|
|
Title:
President, Gaming Division
|
Title:
CEO
|
|
Date:_____________________________
|
Date:_____________________________
|
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EXHIBIT
A
[****]
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EXHIBIT
B
EXISTING
PUREDEPTH PATENTS
|
PureDepth
File Ref
|
Title
|
Publication/Grant
Number
|
Application
Number
|
Country
|
|
P001AU
|
A
multi layer display device and method for displaying images on
such a
device
|
|
2003213467
(previously 82482/98)
|
▇▇▇▇▇▇▇▇▇
|
|
▇▇▇▇▇▇
|
A
multi layer display device and method for displaying images on
such a
device
|
2,320,▇▇▇
|
▇▇▇▇▇▇▇
|
Canada
|
|
P001IL
|
A
multi layer display device and method for displaying images on
such a
device
|
|
▇▇▇▇▇▇
|
▇▇▇▇▇▇
|
|
P001JP
|
A
multi layer display device and method for displaying images on
such a
device
|
▇▇▇▇▇▇▇
|
▇▇▇▇▇▇▇
|
▇▇▇▇▇
|
|
P001MX
|
A
multi layer display device and method for displaying images on
such a
device
|
234895
|
7616
|
Mexico
|
|
P001NZ
|
A
multi layer display device and method for displaying images on
such a
device
|
505800
|
505800
|
New
Zealand
|
|
P001SG
|
A
multi layer display device and method for displaying images on
such a
device
|
74918
|
2000
▇▇▇▇▇-▇
|
▇▇▇▇▇▇▇▇▇
|
|
P001US
|
A
multi layer display device and method for displaying images on
such a
device
|
6,906,762
|
09/622535
|
USA
|
|
P002AU
|
Control
of Depth Movement for Visual Display with Layered Screen
|
769120
|
2002338626
|
Australia
|
|
P002EP
|
Control
of Depth Movement for Visual Display with Layered Screen
|
1212745
|
00955194.6
|
Europe
|
|
P002NZ
|
Control
of Depth Movement for Visual Display with Layered Screen
|
518200
|
518200
|
New
Zealand
|
|
P003AU
|
Display
method for Multiple Layered Screens
|
769103
|
67427/00
|
Australia
|
|
P003NZ
|
Display
method for Multiple Layered Screens
|
518199
|
518199
|
New
Zealand
|
|
P004AU
|
Interactive
three dimensional display with layered screens
|
766049
|
63265/00
|
Australia
|
20
CONFIDENTIAL
TREATMENT REQUESTED - REDACTED COPY
|
P004NZ
|
Interactive
three dimensional display with layered screens
|
516965
|
516965
|
New
Zealand
|
|
P005CN
|
Altering
surface of a display from Matt to Optically smooth.
|
ZL
01820567.4
|
01820567.4
|
China
|
|
P005NZ
|
Altering
surface of a display from Matt to Optically smooth.
|
508258
|
508258
|
New
Zealand
|
|
P005SG
|
Altering
surface of a display from Matt to Optically smooth.
|
200303020-2
|
200303020-2
|
Singapore
|
|
P005TW
|
Altering
surface of a display from Matt to Optically smooth.
|
NI-169308
|
89126584
|
Taiwan
|
|
P006AU
|
Improved
Display
|
740574
|
25542/99
|
▇▇▇▇▇▇▇▇▇
|
|
▇▇▇▇▇▇
|
Improved
Display
|
|
505801
|
New
Zealand
|
|
P006SG
|
Improved
Display
|
74917
|
2000
▇▇▇▇▇-▇
|
▇▇▇▇▇▇▇▇▇
|
|
P009NZ
|
Dual
Layer stereoscopic liquid crystal display
|
517712
|
517712
|
New
Zealand
|
|
P010NZ
|
Enhanced
viewing experience of a display through localised dynamic control
of
ground lighting level
|
|
517713
|
New
Zealand
|
|
P012AU
|
Data
display for multiple layered screens
|
|
769107
|
Australia
|
|
P012NZ
|
Data
display for multiple layered screens
|
|
518198
|
New
Zealand
|
|
P013NZ
|
Multi
View Display
|
|
521505
|
New
Zealand
|
|
P014NZ
|
Backlighting
System for Display Screen
|
|
526028
|
New
Zealand
|
|
P014US
|
Backlighting
System for ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
|
▇▇▇▇▇▇▇
|
▇▇▇
|
|
|
P015US
|
Three
Dimensional Optical Viewing System
|
|
5086354
|
USA
|
|
P016US
|
Three
Dimensional Optical Viewing System
|
|
5589980
|
USA
|
|
P017US
|
Optical
Viewing system for Asynchronous Overlaid Images
|
|
5956180
|
USA
|
|
P018NZ
|
Depth
Fused Display
|
|
515395
|
New
Zealand
|
|
P019NZ
|
Improvement
to Instrumentation
|
514119
|
514119
|
New
Zealand
|
|
P019NZA
|
Improvement
to Instrumentation
|
|
527910
|
New
Zealand
|
|
P020NZ
|
Layered
Assignment Interface
|
|
525956
|
New
Zealand
|
21
CONFIDENTIAL
TREATMENT REQUESTED - REDACTED COPY
|
P020NZA
|
Layered
Assignment Interface
|
|
541868
|
New
Zealand
|
|
P022NZ
|
Optical
Retarder
|
|
511255
|
New
Zealand
|
|
P023NZ
|
Visual
Display Unit Illumination
|
514500
|
514500
|
New
Zealand
|
|
P023NZA
|
Visual
Display Unit Illumination
|
532447
|
532447
|
New
Zealand
|
|
P024NZ
|
Information
Display
|
|
511444
|
▇▇▇
▇▇▇▇▇▇▇
|
|
▇▇▇▇▇▇
|
Information
Display
|
|
200306381-5
|
Singapore
|
|
P026NZ
|
Visual
Display System
|
|
511120
|
New
Zealand
|
22
CONFIDENTIAL
TREATMENT REQUESTED - REDACTED COPY
EXHIBIT
C
TECHNOLOGY
TRANSFER
This
Exhibit outlines an Agenda for Technology Transfer and
Instruction. Any other Agenda may be substituted upon mutual
agreement between IGT and PureDepth, with PureDepth to provide personnel
necessary for an effective transfer.
Objectives
of Technology Transfer: IGT desires to learn [****]. In
particular, IGT desires to learn [****].
Technology
Transfer and Instruction includes transfer of any PureDepth manuals and data
pertinent to the display technology, including review and copying of all
PureDepth technical and manufacturing specifications for producing MLD
Technology displays for incorporating in Licensed Products. It is
contemplated that the Technology Transfer will include [****].
Transfer
includes:
Promptly
following the Effective Date, and in any event no more than fifteen (15)
business days thereafter, PureDepth will deliver to IGT the current manuals
and
data in existence in the form of documents, drawings, designs, samples or
other
material, in electronic form when available. Also, on mutually
agreeable dates during the month of December, 2006 PureDepth shall provide
technology training pursuant to the following:
Instruction
and Transfer:
|
|
1.
|
Initial
Transfer:
|
[****]:
up to [****] IGT representatives
[****].
Review and Update of PureDepth display technology
|
|
[****].
Facilities tour and demonstrations: includes
[****]
|
|
|
[****].
Instruction to up to [****] IGT technical representatives: includes
[****]
|
|
|
[****].
Continued
|
|
|
[****].
Continued and review of results of IGT instruction under PureDepth
supervision
|
[****].
up to [****] IGT representatives:
|
|
Continued
instruction and evaluation as
needed.
|
[****].
up to [****] IGT representatives for [***] each, if in PureDepth's reasonable
technical judgment
that
such
extension is necessary in order for IGT representatives to [****] without
the
assistance of PureDepth representatives.
It
is
understood that [****] as used herein refers to [****].
23
CONFIDENTIAL
TREATMENT REQUESTED - REDACTED COPY
2. Second
Instruction & Transfer:
[****]
after conclusion of First instruction as specified in the Initial
Transfer:
Agenda
same as specified under 1.01 – [****].
Objective:
review and clarify IGT experience with PureDepth display
technology
3. Periodic
Instruction at PureDepth: [****], once per [****] until the
[****] anniversary of the Effective Date, to [****] IGT
Representatives.
[****].
Review of PureDepth developments and technologyupdate, including update on
PureDepth’s MLD Technology
|
|
[****].
Consultation and advice with PureDepth key member on IGT technical
development issues
|
|
|
[****].
Discussion and instruction of PureDepth ongoing display
technology
|
|
|
[****].
Continued
|
|
|
[****].
Review and copying by IGT of relevant PureDepth technical records
as
needed.
|
4. Periodic
Instruction at IGT in Nevada
|
|
[****]
until the [****] anniversary of the Effective Date by [****] PureDepth
technical representatives, with out of pocket costs covered by
IGT
including reasonable travel costs.
|
24
CONFIDENTIAL
TREATMENT REQUESTED - REDACTED COPY
EXHIBIT
D
SPECIFICATIONS
Design
Pack
[****]
Manufacturing
Pack
[****]
25