[EXHIBIT 10.46- Certain portions of this document have been
omitted in the publicly filed version of this document pursuant
to the Registrant's request for confidential treatment and filed
separately with the Securities and Exchange Commission.
Omitted confidential information is indicated in brackets
in this Exhibit.]
SPD-SMART WINDOW LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
SMARTGLASS INTERNATIONAL LIMITED
This License Agreement ("Agreement") effective as of
March 19, 2007 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
SMARTGLASS INTERNATIONAL LIMITED, a corporation
organized under the laws of the Republic of Ireland
("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to
Light Valves and Licensed Products (both as hereinafter defined)
and of methods and apparatus relating to products incorporating
such concepts; and is possessed of and can convey information
and know-how for such products and rights to manufacture, use
and sell such products; and
WHEREAS, LICENSEE is interested in manufacturing and
selling Licensed Products; and
WHEREAS, LICENSEE desires to acquire from
LICENSOR, and LICENSOR desires to grant to LICENSEE,
certain rights and licenses with respect to such technology of
LICENSOR;
NOW, THEREFORE, in consideration of the premises and
the mutual covenants herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the
respective meanings set forth in this Article 1.
The "Effective Date" of this Agreement shall be the date which is
the last date of formal execution of this Agreement by duly
authorized representatives of the parties to this Agreement as
indicated on the signature page of this Agreement.
"Licensed Product" means a Light Valve Architectural Window
Product incorporating a Light Valve. The term "Licensed
Product" shall not include Light Valves used or intended for use
in any product other than as specifically defined herein, such as
but not limited to, other window products not specifically defined
herein, such as windows for transportation vehicles, including,
but not limited to passenger cars, recreational vehicles, trucks,
mobile cranes, trains, monorails. aircraft, boats, vans, sport utility
vehicles, space craft and space-stations, and non-window
products such as but not limited to displays, eyewear, sunvisors,
toys, mirrors or filters for scientific instruments, lamps or contrast
enhancement of displays. The term "display" means any device
for displaying letters, numbers, images or other indicia or
patterns. Nothing contained herein shall permit LICENSEE to
sell, lease, or otherwise dispose of a Light Valve which is not
incorporated or intended to be incorporated as described above
into a Light Valve Architectural Window Product.
"Licensed Territory " means the United Kingdom and the
Republic of Ireland, and customers agreed to in writing from time
to time by LICENSOR in other countries.
"Light Valve" means a variable light transmission device
comprising: a cell including cell walls, containing or adapted to
contain an activatable material, described hereinafter, such that a
change in the optical characteristics of the activatable material
affects the characteristics of light absorbed by, transmitted
through and/or reflected from the cell; means incorporated in or
on the cell, or separate therefrom for applying an electric or
magnetic field to the activatable material within the cell; and
coatings (including, but not limited to, electrodes), spacers, seals,
electrical and/or electronic components, and other elements
incorporated in or on or combined with the cell. The activatable
material, which the cell contains or is adapted to contain,
includes in it solid suspended particles, which when subjected to
a suitable electric or magnetic field, orient to produce a change in
the optical characteristics of the device, and may be in the form
of a liquid suspension, gel, film or other material.
"Light Valve Architectural Window Product" means a Light
Valve used or intended for use solely as a window integrally
incorporated in, or attached as a fixture to the external structure
or internal structure of any building, whether permanent or
temporary, and whether above or below ground.
The "Net Selling Price" of a Licensed Product on which royalties
are payable shall be the larger of the following: (A) the genuine
selling price of LICENSEE and its sublicensees hereunder
(including amounts charged for any wiring, installation, and
related services provided by LICENSEE and its sublicensees
hereunder) f.o.b. factory at which nonaffiliated customers are
billed in the usual course of business for a Licensed Product, as
packed for shipment to the customer; and (B) $100 per window.
The aforementioned $100 figure specified in clause (B) above
shall be adjusted upward as of each January 1st hereafter
beginning on January 1, 2008 by any increase in the Producer
Price Index for Finished Goods (the "Index") for the 12 month
period ending in December of the prior year, prepared by the
Bureau of Labor Statistics of the United States Department of
Labor (or if the Index is not then being published, the most
nearly comparable successor index). In calculating a genuine
selling price of a product for the above calculation, such price
may be reduced only by the applicable proportions of the
following if, and to the extent that, amounts in respect thereof are
reflected in such selling price: (i) normal trade discounts actually
allowed; (ii) sales, use or excise and added value taxes and
custom duties paid; (iii) if the genuine selling price is other than
f.o.b. factory, amounts paid for f.o.b. transportation of the
product to the customer's premises or place of installation or
delivery; (iv) insurance costs and the costs of packing material,
boxes, cartons and crates required for shipping; provided,
however, that for purposes of this calculation, the genuine selling
price of a product may not be less than 90% of the gross selling
price of said product after all deductions therefrom, if any. If a
product is leased, sold, used or otherwise disposed of on terms
not involving a bona fide arm's length sale to an unaffiliated third
party, then the Net Selling Price for such transactions shall be
deemed to be the Net Selling Price as defined above for identical
products sold to a nonaffiliated customer nearest to the date of
such lease, sale, use, or other disposition.
"Technical Information" means all useful information relating to
apparatus, methods, processes, practices, formulas, techniques,
procedures, patterns, ingredients, designs and the like including
(by way of example) drawings, written recitations of data,
specifications, parts, lists, assembly procedures, operating and
maintenance manuals, test and other technical reports, know-how
of LICENSOR, and the like owned or controlled by LICENSOR,
to the extent they exist, that relate to Light Valves, Licensed
Products and/or to the suspensions or other components used or
usable for Licensed Products or Light Valves including, but not
limited to, particles, particle precursors, coatings, polymers,
liquid suspensions and suspending liquids, or any combination
thereof, and that consist of concepts invented or developed by
LICENSOR. Know-how of LICENSOR's suppliers and of
LICENSOR's other licensees and their sublicensees under
licenses from LICENSOR shall not be considered Technical
Information owned or controlled by LICENSOR.
2 GRANT OF LICENSE.
2.1 License. During the term of this Agreement,
LICENSOR hereby grants LICENSEE a non-exclusive right and
license to use (a) all of the Technical Information, if any, (subject
to Section 8.1 hereof), furnished by LICENSOR pursuant to this
Agreement, and (b) any invention claimed in (i) any of the
unexpired patents now or hereafter listed on Schedule A attached
hereto or (ii) unexpired patents which issue from pending patent
applications now or hereafter listed in Schedule A, and any
continuations, continuations-in-part, divisions, reissues,
reexaminations, or extensions thereof to make, have made, and to
lease, sell, or otherwise dispose of Licensed Products in the
Licensed Territory.
2.2 No Other Rights. LICENSEE agrees that, except for
the specific licenses granted to it under Section 2.1 hereof for use
in Licensed Products, LICENSEE has not acquired any rights or
licenses under this Agreement to use Light Valves or any
components thereof made by or for LICENSEE or its
sublicensees pursuant to this Agreement.
2.3 Sublicenses. LICENSEE shall have the right to grant
non-exclusive sublicenses to any of its wholly-owned and
controlled subsidiaries, whose obligations to LICENSOR
hereunder LICENSEE hereby guarantees, and which
acknowledges to LICENSOR in writing that it wishes to become
a sublicensee hereunder prior to doing so and agrees to be bound
by the terms and conditions of this Agreement. All sublicenses
shall (i) be non-exclusive, (ii) shall terminate with the
termination of the rights and licenses granted to LICENSEE
under Section 2.1 hereof, and be otherwise limited in accordance
with the limitations and restrictions which are imposed on the
rights and licenses granted to LICENSEE hereunder, (iii) contain
confidentiality provisions no less protective than those contained
in Section 12.1 hereof, and (iv) shall contain such other terms,
conditions, and licenses as are necessary to enable LICENSEE to
fulfill its obligations hereunder. LICENSEE shall send
LICENSOR a copy of every sublicense agreement or other
agreement entered into by LICENSEE in connection with a
sublicense hereunder within thirty (30) days of the execution
thereof. LICENSOR may terminate any such sublicense if there
is any change in the ownership or control of a sublicensee.
2.4 Termination of other licenses. Upon execution of this
Agreement, the existing license agreement effective as of August
1, 2003 between Research Frontiers Incorporated and Vision
(Environmental Innovation) Limited, and the existing license
agreement effective as of April 5, 2004 between Research
Frontiers Incorporated and Smart Glass Ireland Ltd. shall each
terminate.
3 ROYALTY PAYMENTS, REPORTS AND RECORD-KEEPING.
3.1 Royalties and Reports on Net Sales. During the term of
this Agreement, LICENSEE agrees to pay LICENSOR an earned
royalty which shall be fifteen percent (15%) of the Net Selling
Price of Licensed Products which embody, or the manufacture of
which utilizes, any of the rights granted under Section 2.1 hereof,
and which are manufactured by or for LICENSEE and sold,
leased, used or otherwise disposed of by or for LICENSEE or a
permitted sublicensee. Payments under this Section 3.1 shall be
made on a monthly basis and made within 30 days after the end
of the calendar month in which such Licensed Products were
sold, leased, used or otherwise disposed of by or for LICENSEE
or a permitted sublicensee hereunder. Each royalty payment shall
be in U.S. dollars and shall be accompanied by a statement by
LICENSEE showing in reasonable detail the amount of Licensed
Products sold, used, leased or otherwise disposed of by or for
LICENSEE and its sublicensees during the preceding month, any
deductions taken or credits applied, and the currency exchange
rate used to report sales made in currencies other than U.S.
dollars. LICENSEE shall use the exchange rates for buying U.S.
dollars in effect on the last day of each month, as specified in The
New York Times. The first such statement shall cover the period
from the Effective Date of this Agreement to the end of the first
calendar month in which a Licensed Product is sold, used, leased
or otherwise disposed of by or for LICENSEE or its sublicensees.
In addition, LICENSEE shall provide LICENSOR with monthly
reports of its activities involving the development of Licensed
Products. LICENSEE shall also furnish to LICENSOR at the
same time it becomes available to any third party, a copy of each
brochure, price list, advertisement or other marketing and
promotional materials prepared, published or distributed by
LICENSEE or its sublicensees relating to Licensed Products.
LICENSOR shall have the right, but not the obligation, to
approve any use by LICENSEE of LICENSOR's name, logo, or
other information about Licensed Products, and to require the
correction of any inaccurate information.
3.2 Minimum Royalties - Regardless of whether
LICENSEE is selling any Licensed Products, during the term of
this Agreement LICENSEE agrees to pay LICENSOR an initial
fee of [Confidential Information Omitted and filed separately
with the Securities and Exchange Commission]upon signing of
this License Agreement and the non-refundable minimum
royalties (in U.S. Dollars) specified below for each of
the stated periods:
Period Minimum Royalty
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
3.3 Time and Method of Payment. The initial fee shall be
paid to LICENSOR within 10 days of the Effective Date of this
Agreement, and payment for the first minimum annual royalty
payment under Section 3.2 shall be made on or before March 31,
2007, and each subsequent payment under Section 3.2 to
LICENSOR shall be made on or before December 1st of each
license year with the payment for the 2008 calendar year being
made on or before December 1, 2008. All other payments shall
be due on the date specified in this Agreement, or if no date is
specified, within 30 days of invoice. Any amount due past its due
date shall bear interest at an annual interest rate equal to the
lesser of 25% or the maximum interest rate permitted by law. All
payments made to LICENSOR shall be paid by wire transfer of
immediately available funds to the account of Research Frontiers
Incorporated at Chase Manhattan Bank, ▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, Account No.: ▇▇▇-▇▇▇-▇▇▇, ABA
Wire Code No.: 021 000 021, or to such other account or place,
as LICENSOR may specify in a notice to LICENSEE.
3.4 Sales, Use and Returns. Licensed Products shall be
considered as sold, leased or used and royalties shall accrue on
the earlier of when such Licensed Products are billed out, or
when delivered, shipped or mailed to the customer. If as a result
of a price reduction or a return of Licensed Products previously
sold, a credit or refund to a customer is given on part or all of the
sale price of such Licensed Products, a credit shall be allowed
against royalties accruing thereafter under this Agreement equal
to the royalty paid on that part of the sales price so credited or
refunded.
3.5 Recordkeeping. LICENSEE shall keep and shall cause
each sublicensee to keep for six (6) years after the date of
submission of each statement supported thereby, true and
accurate records, files and books of accounts that relate to
Licensed Products, all data reasonably required for the full
computation and verification of the Net Selling Price of Licensed
Products, deductions therefrom and royalties to be paid, as well
as the other information to be given in the statements herein
provided for, and shall permit LICENSOR or its duly authorized
representatives, upon reasonable notice, adequately to inspect the
same at any time during usual business hours. LICENSOR and
LICENSEE agree that an independent certified public accounting
firm (selected by LICENSOR from the largest ten certified public
accounting firms in the United States of America, or any country
in the Licensed Territory) may audit such records, files and books
of accounts to determine the accuracy of the statements given by
LICENSEE pursuant to Section 3.1 hereof. Such an audit shall
be made upon reasonable advance notice to LICENSEE and
during usual business hours no more frequently than annually.
The cost of the audit shall be borne by LICENSOR, unless the
audit shall disclose a breach by LICENSEE of any term of this
Agreement, or an underpayment error in excess of two percent of
the total monies paid to LICENSOR by LICENSEE during the
audited period, in which case LICENSEE shall bear the full cost
of such audit. LICENSEE agrees to pay LICENSOR all
additional monies that are disclosed by the audit to be due and
owing to LICENSOR within thirty days of the receipt of the
report.
3.6 Customer Referrals. Although LICENSOR is under no
obligation to do so, LICENSOR may from time to time refer
customers to LICENSEE. In the event that such customer
purchases, leases or rents products or services from LICENSEE
other than a Licensed Product upon which a royalty is paid by
LICENSEE to LICENSOR, LICENSEE shall include the details
of such transaction in its next monthly report under Section 3.5
hereof, and shall pay LICENSOR a sales commission equal to ten
percent (10%) of the amount received from such customer for
which a royalty under Section 3.1 hereof is not paid. No such
payment shall be due from LICENSEE to LICENSOR if the
referred customer was already a customer of LICENSEE prior to
the date of referral by LICENSOR and LICENSEE informs
LICENSOR of such fact at the time that the referral by
LICENSOR is made.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without limitation,
any manufacture, sale, lease, use or other disposition of Licensed
Products that is not in strict accordance with the provisions of
this Agreement shall be deemed a material breach of this
Agreement (unless LICENSOR has otherwise agreed in writing).
4.2 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products to whom Licensed Products are
sold, leased, or otherwise disposed of by LICENSEE or its
sublicensees, to look only to LICENSEE and not to LICENSOR
or its affiliates for any claims, warranties, or liability relating to
such Licensed Products. LICENSEE agrees to take all steps to
reasonably assure itself that Licensed Products sold, leased or
otherwise disposed of by or for LICENSEE is being used for
permitted purposes only.
4.3 Laws and Regulations. LICENSEE agrees that it shall
be solely responsible for complying with all laws and regulations
affecting the manufacture, use and sale or other disposition of
Licensed Products by LICENSEE and its sublicensees, and for
obtaining all approvals necessary from governmental agencies
and other entities. LICENSEE agrees to maintain a file of all
such approvals and to send LICENSOR a copy of all such
approvals (including English translations thereof in the case of
approvals required by any foreign country) within 10 business
days of any written request for such copies by LICENSOR.
LICENSEE represents and warrants to LICENSOR that no
approval from any governmental agency or ministry, or from any
third party, is required to effectuate the terms of this Agreement
or the transactions contemplated hereby.
4.4 Purchase of Components from Others. By virtue of the
disclosure of Technical Information and information, if any,
provided from time to time by LICENSOR to LICENSEE and to
its other licensees, and each of their sublicensees and affiliates,
any component of a Light Valve, including, without limitation,
materials, suspensions, films, polymers, coatings, particle
precursors, and particles (each, a "Component"), which
LICENSEE or its sublicensees makes, has made for it, or
purchases from any third party for use in Licensed Products shall
be deemed to have been manufactured at least in part using the
Technical Information provided by LICENSOR if LICENSEE or
any supplier of a Component to LICENSEE has had access to
Technical Information of any kind of LICENSOR or its licensees
and their sublicensees, consultants, subcontractors, agents or
representatives. LICENSEE and its sublicensees each hereby
agrees that (i) all Components shall be used only in strict
accordance with the provisions of this Agreement, and that such
Components may not be used for any other purpose or resold by
LICENSEE or its sublicensees except as specifically permitted by
the license granted in Section 2.1 hereof, and (ii) LICENSEE and
its sublicensees will only look to the manufacturer or supplier of
such Component or other item used by LICENSEE or its
sublicensees and not to LICENSOR or its affiliates for any
claims, warranties, or liability relating to such Component or
other item. LICENSEE acknowledges that LICENSOR has not
made any representations or warranties regarding the availability
of any Component, or the price thereof, and that in all respects
LICENSEE shall deal directly with the suppliers of such
Components and will obtain from them information regarding
availability, pricing, and/or other terms relating to such
Components.
4.5 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance of any Licensed Product or
of any material, Component, or information provided hereunder,
and LICENSEE expressly acknowledges and agrees that any such
material, Component or information provided by LICENSOR
hereunder is provided "AS IS" and that LICENSOR makes no
warranty with respect thereto and DISCLAIMS ALL
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT
NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE, WITH RESPECT THERETO, ITS USE OR ANY
INABILITY TO USE IT, OR THE RESULTS OF ITS USE. In
no event shall LICENSOR be liable for any damages, whether in
contract or tort (including negligence), including but not limited
to direct, consequential, special, exemplary, incidental and
indirect damages, arising out of or in connection with this
Agreement or the use, the results of use, or the inability to use
any Licensed Product, material, Component or information
provided hereunder.
4.6 Analysis. LICENSEE represents and agrees that it will
only incorporate Components received from authorized suppliers
into Licensed Products and for no other purpose, and that
LICENSEE will not directly or indirectly attempt to reverse-
engineer any material provided to it hereunder by LICENSEE or
any supplier of any Component.
4.7 Personnel. LICENSEE agrees to assign personnel from
its technical staff who shall be responsible for the development
of Licensed Products during the term of this Agreement.
4.8 Promotional Activities. LICENSEE agrees that it shall
maintain, either at its own facilities or that of any laminating
subcontractor selected by LICENSEE, adequate inventories of
SPD light control film purchased from any authorized supplier of
Light Valve film to meet on a timely basis the anticipated
requirements of LICENSEE for incorporation into Licensed
Products during the term of this Agreement. In addition,
LICENSEE shall promptly develop and maintain a web site
relating to its business which prominently features LICENSOR's
SPD technology and LICENSEE's relationship to LICENSOR,
and shall participate at industry trade shows and conferences
and/or engage in other marketing and promotional activities
reasonably necessary to promote LICENSOR's SPD technology
and LICENSEE's business relating thereto.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for Licensed Products or other products
incorporating Light Valves are and shall remain the exclusive
property of the adopting party, and the other party shall not
obtain any rights and license to such marks under this
Agreement, but may inform others that the adopting party has
licensed or produced Licensed Products or products
incorporating Light Valves under such ▇▇▇▇ or marks, and may
use the adopting party's logo in connection therewith.
LICENSOR may require LICENSEE or its permitted
sublicensees to indicate on packaging that such product is
licensed from Research Frontiers Incorporated or to otherwise
include language and/or designations approved by LICENSOR
indicating an affiliation with Research Frontiers Incorporated or
to use trademarks specified by LICENSOR on LICENSEE's
Licensed Products.
6 INSURANCE AND INDEMNIFICATION.
6.1 Insurance. LICENSEE shall maintain at all times ample
product liability and other liability insurance covering its
operations relating to the subject matter of this Agreement and
shall name LICENSOR as an additional insured. Upon request,
LICENSEE shall provide LICENSOR of evidence of such
insurance.
6.2 Indemnification. LICENSEE, and its affiliates,
successors and assigns and sublicensees (each, an "Indemnifying
Party"), each hereby indemnify and agree to hold harmless
LICENSOR and its shareholders, officers, directors, agents and
employees (each, an "Indemnified Party"), against any liability,
damage, loss, fine, penalty, claim, cost or expense (including
reasonable costs of investigation and settlement and attorneys',
accountants' and other experts' fees and expenses) arising out of
any action or inaction by any Indemnifying Party relating to this
Agreement including an Indemnifying Party's manufacture, sale,
use, lease or other disposition of Licensed Products, and related
materials, or other use of the information and rights granted
hereunder. Any knowledge of LICENSEE's or its sublicensee's
activities by LICENSOR or its representatives shall in no way
impose any liability on LICENSOR or reduce the responsibilities
of LICENSEE hereunder or relieve it from any of its obligations
and warranties under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the
right to file patent applications in the United States and in foreign
countries covering any invention made by such party.
7.2 Improvements and Modifications. (a) Any future
improvements or modifications invented or developed by or on
behalf of LICENSEE, LICENSEE's sublicensees and
LICENSOR after the Effective Date of this Agreement, if any,
which relate in any way to or are useful in the design, operation,
manufacture and assembly of Licensed Products, and/or to the
suspensions or other components used or usable in Licensed
Products shall not be included in this Agreement. Upon written
request by the non-inventing party, LICENSOR and LICENSEE
shall negotiate with each other regarding the grant of
nonexclusive rights and licenses to use such improvements and
modifications, but neither party shall be obligated to grant such
rights and licenses to one another. Notwithstanding anything
contained herein to the contrary, LICENSOR shall have the right
to use, license and sublicense any improvement, modification or
invention which is jointly developed by LICENSEE or its
officers, directors, employees, affiliates, contractors, or
consultants, on the one hand, and LICENSOR or its officers,
directors, employees, affiliates, contractors or consultants, on the
other hand.
(b) During the term of this Agreement each of the parties
hereto agrees to inform the other in writing (without any
obligation to reveal details which would be confidential
information), at least as frequently as once a year in January of
each calendar year, if any significant improvements or
modifications have been made relating to Licensed Products, and
as to the general nature of any such improvements and
modifications.
(c) Notwithstanding the foregoing, LICENSOR may, but
shall not be required to, voluntarily and without additional cost to
LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE
rights in such certain future improvements and modifications, and
any information so disclosed will be considered Technical
Information which LICENSEE shall be obligated to keep
confidential pursuant to Section 12.1 of this Agreement. In
connection therewith, LICENSOR, may voluntarily add patents
and/or patent applications to Schedule A hereof. No disclosure
of any information by LICENSOR shall in any way establish a
course of dealing or otherwise require LICENSOR to make any
future disclosure of information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that any
patent application now or hereafter listed on or incorporated into
Schedule A shall be filed or maintained in any foreign country
included in the Licensed Territory. If so designated and if legally
possible to do so, LICENSOR agrees to promptly file, prosecute
and maintain such applications and resulting patents, and
LICENSEE shall pay to LICENSOR the complete cost, including
reasonable attorney's fees, to file, prosecute and maintain during
the term of this Agreement any such patent application and
resulting patents specifically so designated by LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. Materials. Upon request by LICENSEE, during the
term of this Agreement and when mutually convenient to
LICENSOR and LICENSEE, LICENSOR shall supply
LICENSEE with small quantities of materials related to Licensed
Products for experimental use only by LICENSEE, and shall
charge LICENSEE $750 per man/day plus the cost of any other
materials used in making such materials, plus the cost of shipping
such materials to LICENSEE. Upon request by LICENSEE,
during the term of this Agreement and when mutually convenient
to LICENSOR and LICENSEE, LICENSOR may make its
personnel available to consult with LICENSEE and its
contractors, with compensation to LICENSOR for such
consultation to be mutually agreed to by LICENSOR and
LICENSEE. Each invoice submitted by LICENSOR for such
service shall include detailed explanations of the charges, and, if
requested by LICENSEE, copies of receipts. The parties
acknowledge that LICENSOR has no obligation to transfer to
LICENSEE any Technical Information other than as may be
embodied in such sample materials, and that, other than sample
materials, if any, that may be supplied by LICENSOR as
aforesaid, LICENSEE will be acquiring materials from
authorized suppliers other than LICENSOR.
8.2 Inquiries. LICENSEE and LICENSOR may also at any
time during the term of this Agreement make reasonable inquiry
by telephone, facsimile or mail to one another in regard to any
information or data furnished pursuant to this Agreement.
8.3 Visits. During all visits by either party to the facilities
of the other party, visitors shall comply with all reasonable rules
of the host company, and each party to this Agreement will
indemnify and hold the other party harmless from any liability,
claim or loss whatsoever (i) for any injury to, or, death of, any of
its employees or agents while such persons are present at the
facility of the other party; and (ii) for any damages to its own
property or to the property of any such employee or agent which
may occur during the presence of any such person at the facility
of the other party, regardless of how such damage occurs.
8.4 Sole Purpose. Any documentation or information
supplied pursuant to this Agreement by either party to the other
shall be used solely for the purposes set forth in this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall provide
appropriate notices of patents, or other similar notice of the
patent rights of the other party on all products utilizing the
patented inventions of the other party. Either party may add its
own patent notice to any copy or embodiment which contains its
patented inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and
exclusive owner of the patents and patent applications listed on
Schedule A, and that, except for the rights granted hereunder,
LICENSEE shall not have any rights or attempt to assert any
ownership rights in and to those patents and patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement shall extend from
the Effective Date of this Agreement to the date of termination of
this Agreement. Unless sooner terminated or extended, as herein
provided for below, this Agreement shall terminate upon the
expiration of the later of (A) the last to expire of the patents now
or hereafter listed in Schedule A hereof, and (B) the expiration of
the period in which LICENSEE is obligated to maintain
confidential Technical Information of LICENSOR pursuant to
Section 12.1 hereof.
10.2 Termination by LICENSEE. LICENSEE may
terminate this Agreement effective as of December 31, 2011 or as
of any anniversary thereof by giving LICENSOR prior notice
thereof unless sooner terminated as hereinafter provided. Such
notice shall be made in writing and shall be given between 60
and 90 days prior to the effective date for which such termination
is to be effective. If LICENSEE decides to terminate this
Agreement for any reason, LICENSEE shall provide
LICENSOR, along with the aforementioned notice of
termination, with a written report describing the reasons for such
termination.
10.3 Termination by LICENSOR. LICENSOR may
terminate this Agreement at any time effective as of December
31, 2011 or as of any anniversary thereof upon at least 30 days'
notice to LICENSEE for any reason, provided, however, that
LICENSOR shall give LICENSEE at least one years' notice of
any early termination under this Section 10.3 if LICENSEE is
producing and selling Licensed Products hereunder.
Notwithstanding the foregoing, LICENSOR may terminate this
Agreement at any time upon at least 30 days' notice to
LICENSEE if LICENSEE shall have failed to make any payment
when due or at any time breach any material term of this
Agreement and such payment is not made or such breach is not
cured within any applicable cure period specified in Article 11 of
this Agreement, or repeatedly provide inaccurate reports
hereunder, or if there has been a cessation by LICENSEE of
general operations or of work related to Licensed Products.
10.4 Effect of Termination. If this Agreement expires or is
terminated for any reason whatsoever, in addition to any other
remedies which one party may have against the other: (1) all of
LICENSEE's rights and licenses under this Agreement shall
cease, and LICENSEE shall immediately return to LICENSOR
all Technical Information furnished to LICENSEE under this
Agreement, together with all reproductions, copies and
summaries thereof; provided, however, that LICENSEE may
retain solely for archival purposes one copy of all such
documents in its legal department files, (2) at LICENSOR's
option, LICENSEE shall, within 30 days of the date of such
termination or expiration, either (A) sell and deliver to
LICENSOR at LICENSEE's direct cost of manufacture any
Licensed Products which shall then be in the possession of
LICENSEE, and, if requested by LICENSOR, LICENSEE shall
finish and deliver to LICENSOR any Licensed Products in the
process of manufacture as soon as possible and, in any case, not
later than 30 days after receiving LICENSOR's request, and/or
(B) with respect to any unsold inventory and work in the process
of manufacture, to complete such work in process and sell any
remaining inventory during the period not to exceed six months
from the date of termination or expiration of this Agreement
provided that at the completion of such six-month period,
LICENSEE shall promptly destroy and dispose of any Licensed
Products (and Licensed Products in the process of manufacture)
not sold under this Section 10.4 and (3) if this Agreement is
terminated for any reason or expires, upon such termination or
expiration, LICENSEE hereby grants to LICENSOR a
nonexclusive, royalty-free, irrevocable, worldwide license with
the right to grant sublicenses to others to utilize all technical
information, improvements and/or modifications (whether or not
the subject of patents or pending patent applications) developed
or invented by or on behalf of LICENSEE and/or its
sublicensees, subcontractors, or agents hereunder through the
date of such termination or expiration of this Agreement relating
to Light Valves, or Licensed Products, and upon such termination
or expiration, LICENSEE shall provide LICENSOR in
reasonable detail complete information regarding such technical
information, improvements and/or modifications. The foregoing
license shall be self-effectuating, but LICENSEE agrees upon
written notice by LICENSOR at any time hereafter to deliver to
LICENSOR within 30 days of such notice any document or other
instrument reasonably requested by LICENSOR to convey such
license rights to LICENSOR such as, by way of example,
confirmations or instruments of conveyance or assignment. No
termination of this Agreement by expiration or otherwise shall
release LICENSEE or LICENSOR from any of its continuing
obligations hereunder, if any, or limit, in any way any other
remedy one party may have against the other party.
Notwithstanding the foregoing, LICENSEE's obligations to
LICENSOR under Sections 3.1, 3.5, 3.6, 4.2, 4.3, 4.4, 4.5, 4.6,
6.1, 6.2, 7.2, 8.3, 8.4, 10.4, 12.1, and Articles 13 and 14 shall
survive any termination or expiration of this Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events shall
constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment due in a
timely manner or a party's material breach or material failure to
punctually perform any of its duties and obligations under this
Agreement, which material breach or failure, if curable, remains
uncured for thirty (30) days after written notice of such breach or
failure is received by the breaching party; or (b) a material
misrepresentation is made by a party in any representation or
warranty contained in this Agreement and the misrepresented
facts or circumstances, if curable, remain uncured thirty (30) days
after written notice of such misrepresentation is received by the
breaching party; and, in either case, if such breach or
misrepresentation is not curable, termination shall occur thirty
(30) days after such misrepresentation or breach at the option of
the non-breaching party; or
11.1.2 The failure by a party upon request to provide the
other party with adequate assurances of its performance of all
obligations under this Agreement upon: (a) such first party's
filing of a voluntary petition in bankruptcy; (b) the filing of any
involuntary petition to have such first party declared bankrupt
which has not been dismissed within ninety (90) days of its
filing; (c) the appointment of a receiver or trustee for such first
party which has not been rescinded within ninety (90) days of the
date of such appointment; or (d) such first party otherwise
becoming insolvent or otherwise making an assignment for the
benefit of creditors.
11.2 Default by a Party. If there occurs an Event of Default
with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or specific
performance; and/or
(c) terminate this Agreement and the licenses granted to
LICENSEE hereunder whereupon the non-defaulting
party shall have no further obligations under this
Agreement except those which expressly survive
termination, and except with respect to royalty
payments due and owing to LICENSOR as of the
termination date or any subsequent period specified in
Section 10.4.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees for
itself, its sublicensees, and their employees and agents that for
twenty (20) years from the later of the Effective Date of this
Agreement or the latest date of its receipt of information
disclosed to LICENSEE by LICENSOR pursuant to this
Agreement, such information shall be held in confidence;
provided, however, there shall be no obligation to treat as
confidential information which is or becomes available to the
public other than through a breach of this obligation, or which
was already possessed by LICENSEE in writing (or otherwise
provable to be in the possession of LICENSEE) prior to the
Effective Date of this Agreement (and was not received from
LICENSOR) or which is shown by LICENSEE to have been
received by it from a third party who had the legal right to so
disclose it without restrictions and without breach of any
agreement with LICENSOR or its licensees. LICENSOR shall
affix an appropriate legend on all written documentation given to
LICENSEE which contains confidential information.
LICENSEE acknowledges that the list of patent applications
contained on Schedule A is confidential information of
LICENSOR. If confidential information is otherwise conveyed
orally by LICENSOR, LICENSOR shall specify to LICENSEE at
the time such information is being conveyed (or in a subsequent
letter referring to the conversation) that the information conveyed
is confidential. It is understood and agreed that, unless otherwise
provided in a separate agreement between LICENSEE and
LICENSOR, LICENSEE has no obligation hereunder to provide
LICENSOR with any confidential or proprietary information, and
that LICENSOR shall have no obligation hereunder to
LICENSEE to maintain in confidence or refrain from commercial
or other use of any information which LICENSOR is or becomes
aware of under this Agreement. The terms and provisions of this
Agreement or any other agreement between the parties shall not
be considered confidential except that LICENSEE may not
disclose the minimum annual royalty payments specified in
Article 3 hereof without LICENSOR's prior written consent, and
the parties hereto acknowledge that, pursuant to the Securities
Exchange Act of 1934, as amended, and the regulations
promulgated thereunder, LICENSOR may file copies of this
Agreement with the Securities and Exchange Commission and
with NASDAQ and with any other stock exchange on which
LICENSOR's securities may be listed. LICENSEE agrees that
for the period of time during which LICENSEE is obligated to
keep information confidential hereunder, LICENSEE will not
make, use, sell, lease or otherwise dispose of products using or
directly or indirectly derived from Licensed Products, Light
Valves, or Components, or which otherwise comprise suspended
particles, which when subjected to a suitable electric or magnetic
field, orient to produce a change in the optical characteristics of
the suspension ("SPD Technology") unless an agreement
between LICENSOR and LICENSEE permitting it to do so is in
full force and effect and the royalties, if any, provided in such
agreement are being paid to LICENSOR on such products. The
foregoing restriction shall not apply to products (i) which do not
directly or indirectly incorporate SPD Technology, such as, but
not limited to, liquid crystal devices, or electrochromic devices,
or (ii) which incorporate technology involving suspended
particles, which when subjected to a suitable electric or magnetic
field, orient to produce a change in the optical characteristics of
the suspension but which is independently developed and which
is not in any way directly or indirectly derived from any
Technical Information of LICENSOR or its licensees,
sublicensees, or any of their affiliates. LICENSEE shall have the
burden of proving by clear and convincing evidence that the
availability of any exception of confidentiality exists or that the
foregoing restrictions do not apply to a particular product.
Nothing contained in this section, however, shall be construed as
granting LICENSEE any rights or licenses with respect to any
Technical Information or patents of LICENSOR or its other
licensees or their sublicensees.
(b) LICENSEE will have the right to provide materials to,
and to disclose information to, a subcontractor relating to this
Agreement; provided, however, that LICENSEE shall only
disclose such information as is strictly necessary to enable said
subcontractor to perform its manufacturing task, and provided
that prior to disclosing any information to said subcontractor,
said subcontractor has signed a secrecy agreement with
LICENSEE at least as protective of LICENSOR's Technical
Information as the provisions of this Agreement, including,
without limitation, said subcontractor's specific agreement to be
bound by the provisions of Section 12.1 hereof to the same extent
as LICENSEE. For such purposes, LICENSEE may develop a
standard form of secrecy agreement for LICENSOR's approval,
after which LICENSEE may use such secrecy agreement with all
subcontractors without LICENSOR's prior approval of the
secrecy agreement being necessary. LICENSEE shall have all
subcontractors sign said secrecy agreement prior to the disclosure
of Technical Information to said subcontractor, and LICENSEE
shall send LICENSOR a copy of every such secrecy agreement
within thirty (30) days after the execution thereof.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party represents and
warrants to the other that:
13.1.1 Valid Agreement. The execution and delivery of this
Agreement by the officer or representative so doing, and the
consummation of the transactions contemplated hereby, have
been duly authorized by all necessary corporate action by
LICENSOR and LICENSEE and this Agreement is a valid and
binding obligation enforceable against the parties in accordance
with its terms, except to the extent limited by bankruptcy,
insolvency, moratorium and other laws of general application
relating to general equitable principles;
13.1.2 No Conflicts. Nothing herein conflicts with its rights
and obligations pursuant to any agreement by a party and any
other entity; and
13.1.3 Publicity. The parties shall have the right to use non-
confidential information, including but not limited to information
concerning this Agreement, a description of the other party, and
its logos for marketing, sales, technical assistance, investor
relations, disclosure and public relations purposes, and that
information permitted to be disclosed by a party under this
Section 13.1.3 may appear on such party's (or its subsidiaries' or
sublicensees') Internet web site, along with links to the Internet
web sites, and specific pages therefrom, of the other party and its
subsidiaries and sublicensees.
13.2 LICENSOR Representations. LICENSOR represents
and warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR represents
and warrants that it has the right to convey the rights and
licenses granted by this Agreement, and otherwise to perform its
obligations under this Agreement. LICENSOR has caused its
employees who are employed to do research, development, or
other inventive work to disclose to it any invention or
information within the scope of this Agreement and to assign to it
rights in such inventions and information in order that
LICENSEE shall receive, by virtue of this Agreement, the
licenses granted to it under Section 2.1 hereof.
13.2.2 Infringement. As of the date hereof, LICENSOR is
not aware of any claim for patent infringement or the
misappropriation of trade secrets, being asserted against it by any
third party; or of any infringement of the patents listed on
Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement (a) that
LICENSEE will be able to develop, manufacture, sell or
otherwise commercialize Licensed Products, or (b) as to the
validity of any patent.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be interpreted,
construed, governed and enforced in accordance with and
governed by the laws of the State of New York, and LICENSOR
and LICENSEE hereby submit to the exclusive jurisdiction of the
state or federal courts located in the County of Nassau and State
of New York for such purposes.
14.2 Confidentiality In Court Proceeding. In order to
protect and preserve the confidential information of a party which
the parties recognize may be exchanged pursuant to the
provisions of this Agreement, the disclosing party may request,
and the receiving party shall not oppose, the court in any action
relating to this Agreement to enter a protective order to protect
information which is confidential information under Section 12.1
and to seal the record in the action or to hold the proceedings, or
portion of the proceedings, in camera; provided, that the
requested terms do not prejudice the receiving party's interests.
Nothing, however, shall preclude either party from thereafter
moving to unseal its own records or to have matter and
information designated as confidential under any relevant
protective order designated otherwise in accordance with the
circumstances as they shall appear at that time.
14.3 Severability. If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the parties
shall negotiate in good faith to agree upon a substitute provision
that is legal and enforceable and is as nearly as possible
consistent with the intentions underlying the original provision.
If the remainder of this Agreement is not materially affected by
such declaration or finding and is capable of substantial
performance, then the remainder shall be enforced to the extent
permitted by law.
14.4 Waiver. Unless agreed to by the parties in writing to
the contrary, the failure of either party to insist in any one or
more instances upon the strict performance of any one or more of
the provisions of this Agreement, or to exercise any right
contained in this Agreement or provided by law, shall not
constitute or be construed as a waiver or relinquishment of the
performance of such provision or right or the right subsequently
to demand such strict performance or exercise of such right, and
the rights and obligations of the parties shall continue unchanged
and remain in full force and effect.
14.5 Captions. The captions and headings in this
Agreement are inserted for convenience and reference only and in
no way define or limit the scope or content of this Agreement and
shall not affect the interpretation of its provisions.
14.6 Assignment. This Agreement shall be binding on and
shall inure to the benefit of the parties and their successors and
assigns. However, LICENSEE agrees that it shall not assign this
Agreement or its rights hereunder without the prior written
consent of LICENSOR except to a successor to substantially all
of its business relating to Light Valves and whose obligations
hereunder are guaranteed to LICENSOR by LICENSEE.
LICENSOR may assign all of its rights and obligations hereunder
to any successor to any of its business interests or to any
company controlling or controlled by LICENSOR. All assignees
shall expressly assume in writing the performance of all the terms
and conditions of this Agreement to be performed by the
assigning party, and an originally signed instrument of such
assumption and assignment shall be delivered to the non-
assigning party within 30 days of the execution of such
instrument.
14.7 Schedules. All Schedules attached to this Agreement
shall be deemed to be a part of this Agreement as if set forth fully
in this Agreement.
14.8 Entire Agreement. This Agreement constitutes the
entire understanding and agreement between LICENSOR and
LICENSEE with respect to the subject matter hereof, supersedes
all prior agreements, proposals, understandings, letters of intent,
negotiations and discussions with respect to the subject matter
hereof and can be modified, amended, supplemented or changed
only by an agreement in writing which makes specific reference
to this Agreement and which is executed in writing by the parties;
provided, however, that either party may unilaterally waive in
writing any provision imposing an obligation on the other.
14.9 Notices. Any notice required or permitted to be given
or made in this Agreement shall be in writing and shall be
deemed given on the earliest of (i) actual receipt, irrespective of
method of delivery, (ii) on the delivery day following dispatch if
sent by express mail (or similar next day courier service), or (iii)
on the sixth day after mailing by registered or certified air mail,
return receipt requested, postage prepaid and addressed as
follows:
LICENSOR: ▇▇▇▇▇▇ ▇. ▇▇▇▇, Chairman and CEO
Research Frontiers Incorporated
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
LICENSEE: ▇▇▇▇ ▇▇▇▇▇▇, Managing Director
SmartGlass International Limited
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇ ▇
▇▇▇▇▇▇▇▇
▇▇. ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇
Facsimile: ▇▇▇▇ ▇ ▇▇▇ ▇▇▇▇
Telephone: ▇▇▇▇ ▇ ▇▇▇ ▇▇▇▇
or to such substitute addresses and persons as a party may
designate to the other from time to time by written notice in
accordance with this provision.
14.10 Bankruptcy Code. In the event that either party
should file a petition under the federal bankruptcy laws, or that
an involuntary petition shall be filed against such party, the
parties intend that the non-filing party shall be protected in the
continued enjoyment of its rights hereunder to the maximum
feasible extent including, without limitation, if it so elects, the
protection conferred upon licensees under section 365(n) of Title
17 of the U.S. Code. Each party agrees that it will give the other
party immediate notice of the filing of any voluntary or
involuntary petition under the federal bankruptcy laws.
14.11 Construction. This Agreement and the exhibits
hereto have been drafted jointly by the parties and in the event of
any ambiguities in the language hereof, there shall no be
inference drawn in favor or against either party.
14.12 Counterparts. This Agreement may be executed in
any number of counterparts, each of which shall be deemed an
original, but all of which shall constitute one and the same
instrument.
14.13 Status of the Parties. The status of the parties under
this Agreement shall be solely that of independent contractors.
No party shall have the right to enter into any agreements on
behalf of the other party nor shall it represent to any person that it
has such right or authority.
The parties, through their duly authorized representatives,
and intending to be legally bound, have executed this Agreement,
as of the date and year first above written, whereupon it became
effective in accordance with its terms.
RESEARCH FRONTIERS INCORPORATED
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President
Date: March 19, 2007
SMARTGLASS INTERNATIONAL LIMITED
By: /s/ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇, Managing Director of
SmartGlass International Limited and
Smart Glass Ireland Ltd.
to acknowledge the termination of the
license specified in Section 2.4 hereof.
Date: March 4, 2007
By: /s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇, Director of
SmartGlass International Limited
and President of Vision (Environmental
Innovation) Limited to acknowledge
the termination of the license
specified in Section 2.4 hereof.
Date: March 4, 2007
Schedule A
(As of March 19, 2007)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
Date Expiration
Patents in the United States Issued Date
5,002,701 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Polarizing Materials and
Suspensions Thereof" 3/26/91 3/26/08
4,877,313 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Polarizing Materials and
Suspensions Thereof" 10/31/89 2/10/09
5,093,041 ▇▇▇▇▇▇ ▇. Check, III et al
"Light-Polarizing Material Based on
Ethylene-diamine Polyacetic Acid
Derivatives" 3/03/92 7/30/10
5,111,331 ▇▇▇▇ ▇▇▇▇▇▇▇▇▇
"Electro-Optical Light Modulator" 5/05/92 7/5/09
5,279,773 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
5,325,220 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve With Low Emissivity
Coating As Electrode" 6/28/94 3/9/13
5,463,491 ▇▇▇▇▇▇ ▇. Check III
"Light Valve Employing a Film Comprising
An Encapsulated Liquid Suspension And
Method of Making Such Film" 10/31/95 11/6/12
5,463,492 ▇▇▇▇▇▇ ▇. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve" 10/31/95 11/6/12
5,461,506 ▇▇▇▇▇▇ ▇. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing The Same" 10/24/95 5/11/13
5,467,217 ▇▇▇▇▇▇ ▇. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing The Same" 11/14/95 5/11/13
5,516,463 ▇▇▇▇▇▇ ▇. Check III et al
"Method of Making Light
Polarizing Particles" 05/14/96 07/08/14
5,650,872 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Valve Containing
Ultrafine Particles" 07/22/97 12/08/14
5,728,251 ▇▇▇▇▇▇ ▇. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve" 03/17/98 09/27/15
5,764,402 ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇; ▇▇▇▇▇▇ ▇▇▇▇▇
Optical Cell Control System 06/09/98 04/24/15
5,838,482 ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇; ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
Optical Cell 11/17/98 05/16/15
5,691,849 ▇▇▇▇ ▇▇▇▇▇▇▇; ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇; ▇▇▇▇▇ ▇▇▇▇
Rear-View Assembly for a Vehicle
and an Adaptor Therefo 11/25/97 11/25/14
6,114,405 ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ et al
Ultraviolet Radiation-Curable
Light-Modulating Film for a Light
Valve, and Method of Making Same 09/05/00 10/09/17
6,156,239 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
Light Polarizing Material, Liquid
Suspensions and Films Thereof, and Light
Valve Incorporating Same 12/05/00 02/26/19
6,271,956B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
Method and Materials for Enhancing the
Adhesion of SPD Films and Light Valves
Comprising Same 08/07/01 03/02/20
6,301,040 ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ et al
SPD Films Having Improved Properties and
Light Valves Comprising Same 10/09/01 05/24/20
6,334,967B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
Light Polarizing Particles of Improved
Particle Size Distribution 01/01/02 12/21/20
(See also listing for PCT/US99/15508)
6,416,827 ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ et al
SPD Films and Light Valves Comprising Same 07/09/02[10/27/20]
6,429,961B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ et al
Methods for Retrofitting Windows With Switchable
and Non-Switchable Window Enhancements and
Retrofitted Windows Produced Thereby 08/06/02 10/03/20
6,517,746 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al.
Polyhalide Particles and Light Valves
Comprising Same 02/11/03 01/05/21
6,522,446 ▇▇▇▇▇▇ ▇. ▇▇▇▇
Anisometrically Shaped Metal Particles,
Liquid Suspensions and Films Thereof And
Light Valves Comprising Same 02/18/03 04/25/21
6,529,312B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇
Anisometrically Shaped Carbon and/or Graphite
Particles, Liquid Suspensions and Films Thereof
And Light Valves Comprising Same 03/04/03 06/07/19
[See also U.S. Patent No. 6,987,602 filed
December 27, 2002, a continuation-in-part of this patent]
6,606,185B2 ▇▇▇▇▇▇ ▇. ▇▇▇▇
SPD Films and Light Valves Comprising Liquid
Suspensions of Heat-Reflective Particles of
Mixed Metal Oxides and Methods of Making
Such Particles 08/12/03 12/08/14
6,804,040 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, et al
Method and Device for Controlling Voltage
Provided to a Suspended Particle Device 10/12/04 02/13/23
6,897,997 ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Method and Device for Controlling Voltage
Provided to a Suspended Particle Device 05/24/05 02/13/23
(continuation-in-part of 6,804,040)
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ et al
6,900,923 "Siloxane Matrix Polymers and SPD Light Valve Films
Incorporating Same" 05/31/05 06/18/23
▇▇▇▇▇▇ ▇. ▇▇▇▇, et al
6,936,193 "SPD Light Valve Film Incorporating New
Suspending Media,and Light Valve
Incorporating Same" 08/30/05 04/14/23
6,987,602 B2 ▇▇▇▇▇▇ ▇. ▇▇▇▇, et al
Anisometrically Shaped Carbon and/or Graphite
Particles, Liquid Suspensions and Films Thereof
And Light Valves Comprising Same 01/17/06 06/07/19
(continuation-in-part of patent 6,529,312B1)
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
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