TECHNICAL INFORMATION AGREEMENT
and
PATENT LICENSE AGREEMENT
between
LUCENT TECHNOLOGIES INC.
and
▇▇▇▇▇▇-▇▇▇▇▇, INC.
Effective as of July 1, 1997
Relating to PARTICLE ANALYSIS SYSTEMS
TECHNICAL INFORMATION AGREEMENT
and
PATENT LICENSE AGREEMENT
TABLE OF CONTENTS
ARTICLE I - TRANSFER AND USE OF TECHNICAL INFORMATION
1.01 Furnishing of Information
1.02 Non-Transmission
1.03 U.S. Export Control
1.04 Grants
1.05 Support Services
ARTICLE II - FEES AND PAYMENTS
2.01 Initial Fee
2.02 Fees on Articles
2.03 When Payable
2.04 Records and Adjustments
2.05 Reports and Payments
2.06 Taxes
ARTICLE III - TERMINATION
3.01 Termination for Breach
3.02 Survival
ARTICLE IV - MISCELLANEOUS PROVISIONS
4.01 Agreement Prevails
4.02 Accuracy
4.03 Nothing Construed
4.04 Disclaimer
4.05 LICENSEE's Duties
4.06 Addresses
4.07 Integration
4.08 Nonassignability
4.09 Dispute Resolution
APPENDIX A - DEFINITIONS
APPENDIX B - TECHNICAL INFORMATION
TECHNICAL INFORMATION AGREEMENT
and
PATENT LICENSE AGREEMENT
Effective as of July 1, 1997, LUCENT TECHNOLOGIES, INC., a Delaware corporation
("LUCENT"), having an office at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ of America and ▇▇▇▇▇▇-▇▇▇▇▇, INC., a Nevada corporation
("LICENSEE"), having an office at ▇▇▇▇ ▇▇▇▇ ▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, agree
as follows*:
ARTICLE I
TRANSFER AND USE OF TECHNICAL INFORMATION
1.01 Furnishing of Information
(a) Subject to prior receipt by LUCENT of the payment specified in Section
2.01, TECHNICAL INFORMATION shall be furnished to LICENSEE. With the delivery
of TECHNICAL INFORMATION, LICENSEE shall also be furnished a list which
identifies the TECHNICAL INFORMATION delivered. LUCENT and LICENSEE shall
promptly notify each other of any inaccuracies believed present in the list.
All information specified on said list shall be deemed to be a part of the
TECHNICAL INFORMATION with the following qualification: if, within thirty (23)
days after receipt of the list, LICENSEE shall give LUCENT written notice
specifying particular information identified therein which was not actually
received, such specified information shall be deemed deleted from the list until
such information is actually received by LICENSEE.
(b) Section 1.01(a) does not apply to any TECHNICAL INFORMATION previously
furnished for limited use to LICENSEE. Any and all such previously furnished
information shall be deemed also furnished hereunder to LICENSEE as of the
effective date hereof and shall be subject to all requirements hereof as if
furnished solely hereunder.
1.02 Non-Transmission
LICENSEE agrees that it will not, without the prior written consent of LUCENT,
transmit, directly or indirectly, the TECHNICAL INFORMATION or any portion
thereof outside of the United States of America.
*Any term in capital letters which is defined in APPENDIX A - DEFINITIONS shall
have the meaning specified therein.
1.03 U.S. Export Control
LICENSEE hereby assures LUCENT that it will not without a license or license
exception authorized by the Bureau of Export Administration of the U.S.
Department of Commerce, ▇▇▇▇▇▇▇▇▇▇, ▇.▇. ▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ of America, if
required:
(i) export or release the information or software (including source code)
obtained pursuant to this Agreement to a national of Country Groups
D:1 or E:2 (15 C.F.R. Part 740, Supp. 1), or Iran, Iraq, Sudan, or
Syria;
(ii) export to Country Groups D:1 or E:2, or to Iran, Iraq, Sudan, or
Syria, the direct product (including processes and services) of the
information or software; or
(iii)if the direct product of the information is a complete plant or
any major component of a plant, export to Country Groups D:1 or E:2,
or to Iran, Iraq, Sudan, or Syria, the di8rect product of the plant or
major component.
This assurance will be honored even after the expiration date of this Agreement.
1.04 Grants
(a) LUCENT grants to LICENSEE a personal, sole (subject to the provisions
of Section 2.02(c)) and non-transferable right, subject to any existing rights
of AT&T Corp. and ▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇, to use the TECHNICAL INFORMATION solely for
the manufacture in LICENSEE's factories in the United States, of PARTICLE
ANALYSIS SYSTEMS, and of maintenance parts therefor.
(b) LUCENT grants to LICENSEE, a personal, non-exclusive and non-
transferable world-wide license to make, use, lease, offer to sell, sell and
import PARTICLE ANALYSIS SYSTEMS under LUCENT's PATENTS. Nothing contained
herein shall be construed as conferring, either by implication, estoppel or
otherwise, any other license or right under any other patent, whether or not the
exercise of any right herein granted necessarily employs an invention of any
other existing or later issued patent.
(c) The licenses granted in Section 1.04(b) herein are not to be construed
either (i) as consent by LUCENT to any act which may be performed by LICENSEE,
except to the extent claimed by LUCENT's PATENTS, or (ii) to include licenses to
contributorily infringe or induce infringement under U.S. law or a foreign
equivalent thereof.
(d) LICENSEE shall promptly notify LUCENT of any improvement, updates or
modifications made by LICENSEE to the TECHNICAL INFORMATION or to inventions
disclosed in LUCENT PATENTS. Upon LUCENT's request, LICENSEE shall furnish
LUCENT with the details of such improvements, updates and modifications. LUCENT
and its RELATED COMPANIES shall have a royalty-free worldwide license to ▇▇▇
such improvements, updates and modification for internal purposes. In the event
that LICENSEE obtains a patent on any such improvements, updates or
modifications, then LICENSEE agrees to grant LUCENT and its RELATED COMPANIES, a
royalty-free worldwide, non-exclusive license under any such patent to make,
have made, use, lease, offer to sell and sell products and offer services. This
patent license shall continue for the entire term of any such patent. This
Section 1.04(d) shall not apply to improvements, updates or modifications to
technical information or other intellectual property owned by LICENSEE as of
July 1, 1997 and incorporated in the PARTICLE ANALYSIS SYTEMS.
1.05 Support Services
(a) LUCENT will provide support to LICENSEE by committing the services of
one individual for up to twenty (20) days through the period ending August 1,
1999. For such services, LICENSEE will pay LUCENT's out-of-pocket expenses
incurred in providing the services such as travel, lodging and meal
reimbursements.
(b) In addition to the services committed in Section 1.05(a), LUCENT will
provide support to LICENSEE by committing the services of one individual for up
to ten (10) days, for the one year period after PARTICLE ANALYSIS SYTEMS are
generally available in the marketplace. For such services, LICENSEE will pay
LUCENT at a rate of two thousand dollars (U.S. $2,000.00) per day, plus expenses
incurred in providing the services.
(c) If technology is created jointly by employees of LUCENT and LICENSEE,
this technology is created jointly by employees of LUCENT and LICENSEE, this
technology, and any resulting patents and copyrights shall be jointly owned by
the Parties, and may be freely licensed by either Party without an accounting to
the other Party. Technology created separately by the employees of either Party
shall be solely owned by the Party subject to any preexisting intellectual
property rights.
ARTICLE II
FEES AND PAYMENTS
2.01 Initial Fee
In part payment for the rights granted hereunder by LUCENT to LICENSEE, LICENSEE
shall pay to LUCENT the sum of two hundred thousand United States dollars (U.S.
$200,000.00) within sixty (60) days after the execution of this Agreement by
both Parties.
In no event shall the sums paid under this Section 2.01 (or any portion thereof)
be refunded to LICENSEE or be credited toward any other fees due hereunder.
2.02 Fees on Articles
(a) In addition to the fees specified in Section 2.01, LICENSEE shall pay
to LUCENT a fee on ITEMS SUBJECT TO FEE. Such fee shall be equal to a
percentage of the FAIR MARKET VALUE of ITEMS SUBJECT TO FEE, as specified below:
5% of the initial $5 Million of FAIR MARKET VALUE of ITEMS SUBJECT TO FEE
in each successive twelve month period beginning with the twelve month
period starting July 1, 1997, and
8% of all FAIR MARKET VALUE of ITEMS SUBJECT TO FEE in excess of $5 Million
in each successive twelve month period beginning with the twelve month
period starting July 1, 1997.
Upon the expiration of LUCENT's PATENTS, and upon LICENSEE's request, LUCENT
shall consider renegotiating the rates set out in this Section 2.02(a).
(b) Notwithstanding the royalty rate set out in Section 2.02(a), LICENSEE
agrees to pay LUCENT the sum of 2.05 million United States dollars (U.S.
$2,050,000.00). For the convenience of LICENSEE and LUCENT, LICENSEE shall pay
the sum in installments in accordance with the following schedule:
Amount Due
Payment (U.S. Dollars)
1 $125,000.00 60 days after July 1, 1998
2 $125,000.00 60 days after January 1, 1999
3 $150,000.00 60 days after July 1, 1999
4 $150,000.00 60 days after January 1, 2000
5 $200,000.00 60 days after July 1, 2000
6 $200,000.00 60 days after January 1, 2001
7 $250,000.00 60 days after July 1, 2001
8 $250,000.00 60 days after January 1, 2002
9 $300,000.00 60 days after July 1, 2002
10 $300,000.00 60 days after January 1, 2003
The obligation of LICENSEE to pay such sum of 2.05 million United States dollars
(U.S. $2,050,000.00) shall survive any termination of this Agreement.
The royalties due pursuant to Section 2.02(a) for each twelve month period will
be credited to the installment payments due for the twelve month period. Also,
to the extent that the sum of the first four installment payments exceed the
royalties due pursuant to Section 2.02(a), this amount will be creditable
against royalties due pursuant to Section 2.02(a) which are in excess of the
installment payments due in payments five through ten.
(c) LUCENT agrees not to license the TECHNICAL INFORMATION to any third
party for the manufacture of PARTICLE ANALYSIS SYSTEMS, for the six year period
following the effective date of this Agreement, if LICENSEE introduces a
commercial PARTICLE ANALYSIS SYSTEM which incorporates the TECHNICAL INFORMATION
by August 1, 1998. After July 1, 2003, LUCENT agrees not to license the
TECHNICAL INFORMATION to any third party for the manufacture of PARTICLE
ANALYSIS SYSTEMS, if, within sixty days after the en of each semiannual period
starting on January 1st or July 1st, commencing with the semiannual period
starting on July 1, 2003, LICENSEE makes a payment of three hundred thousand
United States dollars ($300,000.00). LUCENT retains all rights (i) to use
TECHNICAL INFORMATION for its own business purposes, and (ii) to have others use
TECHNICAL INFORMATION for LUCENT's own business purposes.
The payments due pursuant to this Section 2.02(c) during each twelve month
period, beginning with the twelve month period starting July 1, 2003, will be
credited against royalties due pursuant to Section 2.02(b) during such twelve
month period.
(d) In further compensation for the licenses granted herein by LUCENT,
LICENSEE will furnish to LUCENT one complete commercial stand-alone PARTICLE
ANALYSIS SYSTEM. LUCENT shall have title to such PARTICLE ANALYSIS SYSTEM. In
further compensation for the licenses granted herein by LUCENT, LICENSEE will
furnish to LUCENT (i) a data system and detector and (ii) a gas handling and
purification system for the testing of PARTICLE ANALYSIS SYSTEMS. LICENSEE shall
furnish the aforementioned equipment within thirty days from the date that all
of the equipment is available. LUCENT may retain the data system detector and
gas handling and purification system equipment for one year from receipt of the
equipment. LICENSEE agrees to sell or lease to LUCENT PARTICLE ANALYSIS SYSTEMS
on terms at least as favorable as those provided to any third party.
2.03 When Payable
The fee specified in Section 2.02(a) shall accrue in respect to any ITEM SUBJECT
TO FEE upon the first sale, lease or putting into use of such ITEM SUBJECT TO
FEE.
2.04 Records and Adjustments
(a) LICENSEE shall keep full, clear and accurate records with respect to
all ITEMS SUBJECT TO FEE and shall furnish any information with LUCENT may
reasonably prescribe from time to time to enable LUCENT to ascertain (i) which
articles (and maintenance parts therefor) sold, leased or put into use by
LICENSEE are subject to the payment of fees to LUCENT, and (ii) the proper fee
amounts due hereunder on account of the selling, leasing or putting into use of
ITEMS SUBJECT TO FEE. LICENSEE shall retain such records with respect to each
ITEM SUBJECT TO FEE for at least seven (7) years from the sale, lease or putting
into use of such ITEM SUBJECT TO FEE. LUCENT shall have the right through its
accredited auditors to make examinations, during normal business hours, of all
records and accounts bearing upon the amounts of fees payable to it under this
Agreement. Prompt adjustment shall be made by the proper Party to compensate
for any errors or omissions disclosed by any such examination.
(b) Independent of any such examination, LUCENT will credit to LICENSEE
the amount of any overpayment made in error which is identified and fully
explained in a written notice to LUCENT delivered within twelve (12) months
after the due date of the payment which included such alleged overpayment,
provided that LUCENT is able to verify, to its own satisfaction, the existence
and extent of the overpayment.
(c) No refund, credit or other adjustment of fee payments shall be made by
LUCENT except as provided in Sections 2.02(b) and (c) and 2.04. Rights
conferred by this Section 2.04 shall not be affected by any statement appearing
on any check or other document, except to the extent that any such right is
expressly waived or surrendered by a Party having such right and signing such
statement.
2.05 Reports and Payments
(a) Within sixty-one (61) days after the end of each semiannual period
ending on June 30th or December 31st, commencing with the semiannual period
during which this Agreement becomes effective, LICENSEE shall furnish to LUCENT
a statement, in form acceptable to LUCENT, certified by a responsible official
of LICENSEE, showing all ITEMS SUBJECT TO FEE, by classes of articles, which
were sold, leased or put into use during such semiannual period, the FAIR MARKET
VALUES of such ITEMS SUBJECT TO FEE and the amounts of fees payable thereon. If
no ITEM SUBJECT TO FEE has been so sold, leased or put into use, that fact shall
be shown on such statement.
(b) Within such sixty-one (61) days, LICENSEE shall, irrespective of its
own business and accounting methods, pay in United States dollars to LUCENT the
fees payable for such semiannual period as shown in the statement required by
Section 2.05(a). Such statement, together with the payment for the fees shown
therein, shall be sent to LUCENT at its address specified by Section 4.07. Any
conversion to United States dollars shall be at the prevailing rate for bank
cable transfers in New York City as quoted for the last day of such semiannual
period by leading United States banks in New York City dealing in the foreign
exchange market.
(c) Overdue payments hereunder shall be subject to a late payment charge
calculated at an annual rate of three percentage points (3%) over the prime rate
(as posted in new York City) during delinquency. If the amount of such charge
exceeds the maximum permitted by law, such charge shall be reduced to such
maximum.
2.06 Taxes
LICENSEE shall pay any tax, duty, levy, customs fee, or similar charge
("taxes"), including interest and penalties thereon, however designated, imposed
as a result of the operation or existence of this Agreement, including taxes
which LICENSEE is required to withhold or deduct from payments to LUCENT, except
income taxes imposed upon LUCENT by any governmental entity.
ARTICLE III
TERMINATION
3.01 Termination for Breach
(a) If LICENSEE shall breach this Agreement, LUCENT may, in addition to
any other remedies that it may have, at any time terminate all the rights
granted by LUCENT to LICENSEE. LUCENT shall provide LICENSEE with not less than
two (2) months' written notice specifying any such breach, unless within the
period of such notice all breaches specified therein shall have been remedied.
(b) In the event of any breach of this Agreement by LUCENT or its
SUBSIDIARIES, or of any loss or injury to LICENSEE arising out of this
Agreement, for which LUCENT or its SUBSIDIARIES is liable to LICENSEE, LUCENT's
and its SUBSIDIARIES' total cumulative liability to LICENSEE for all such
breaches, losses and injuries shall be the lesser of (i) the actual value of the
injury or loss to LICENSEE or (ii) the total fees paid to LUCENT under this
Agreement.
3.02 Survival
Any termination pursuant to Section 3.01 shall not affect LICENSEE's rights and
obligations with respect to any article made with the use of any of the
TECHNICAL INFORMATION prior to such termination. In the event of such
termination, LUCENT shall have no obligation to make any refund. LICENSEE's
obligations under Sections 1.02, 1.03, 2.02(b) and 4.05(ii) shall survive and
continue after any termination of rights under this Agreement.
ARTICLE IV
MISCELLANEOUS PROVISIONS
4.01 Agreement Prevails
This Agreement shall prevail in the event of any conflicting terms or legends
which may appear on the TECHNICAL INFORMATION.
4.02 Accuracy
LUCENT believes that the TECHNICAL INFORMATION is true and accurate, but LUCENT
and its SUBSIDIARIES shall not be held to any liability for errors or omissions
therein.
4.03 Nothing Construed
Neither the execution of this Agreement nor anything in it or in the TECHNICAL
INFORMATION shall be construed as:
(i) an obligation upon LUCENT or its SUBSIDIARIES to furnish any person,
including LICENSEE, any assistance of any kind whatsoever, or any
information other than: (a) the TECHNICAL INFORMATION; (b) any
revision, supplement or elaboration upon the TECHNICAL INFORMATION;
(c) support under Section 1.05; or
(ii) providing or implying any arrangement or understanding that LUCENT or
its SUBSIDIARIES will make any purchase, lease, examination or test or
give any approval.
4.04 Disclaimer
LUCENT represents that it has all rights necessary to grant the rights and
licenses to LICENSEE as set forth in this Agreement. Except as expressly
provided in this Section 4.04, LUCENT and its SUBSIDIARIES make no
representations or warranties, expressly or impliedly. By way of example but
not of limitation, LUCENT and its SUBSIDIARIES make no representations or
warranties of merchantability or fitness for any particular purpose, or that the
use of the TECHNICAL INFORMATION or any of its will not infringe any patent or
other intellectual property right. LUCENT and its SUBSIDIARIES shall not be
held to any liability with respect to any claim by LICENSEE or any third party
on account of, or arising from, the use of the TECHNICAL INFORMATION or any of
it.
4.05 LICENSEE's Duties
(i) that LICENSEE will not use any TECHNICAL INFORMATION except as
authorized herein;
(ii) that LICENSEE shall hold all of the TECHNIAL INFORMATION in confidence
for LUCENT and shall not make any disclosure of any or all of such
TECHNICAL INFORMATION to anyone, except to employees of LICENSEE who
have a need to known and to any others to whom such disclosure may be
expressly authorized hereunder and is necessary to implement the use
for which rights are granted hereunder, and the LICENSEE shall
appropriately notify each person to whom any such disclosure is made
that such disclosure is made in confidence and shall be kept in
confidence by such person; provided that LICENSEE shall not be
required so to do in respect of portions of the TECHNICAL INFORMATION,
if any, (a) which were previously known to LICENSEE free of any
obligations to keep confidential, or (b) which have become generally
known to the public, provided that such public knowledge was not the
result of any act attributable to LICENSEE, or (c) which LUCENT
otherwise explicitly agrees in writing need not be kept confidential;
(iii)that, unless otherwise agreed to in writing by LUCENT, LICENSEE
will continue to pay fees and perform record-keeping and reporting
obligations, in accordance with Article II, with respect to ITEMS
SUBJECT TO FEE, notwithstanding any applicability of any exception of
Section 4.05(ii) to any or all of the TECHNICAL INFORMATION.
(iv) that LICENSEE will not, without LUCENT's express written permission,
make or have made, or permit to be made, more copies of any of the
furnished TECHNICAL INFORMATION than are necessary for its use
hereunder, and that each such copy shall contain the same proprietary
notices or legends which appear on the furnished TECHNICAL
INFORMATION;
(v) that no right is granted herein to use any identification (such as,
but not limited to, trade names, trademarks, trade devices, service
marks or symbols, and abbreviations, contractions or simulations
thereof) owned by or used in identify LUCENT or any of its
SUBSIDIARIES or any of its or their products, services or
organizations, and that LICENSEE agrees it will not, without the prior
written permission of LUCENT, (i) use any such identification in
advertising, publicity, packaging, labeling or in any other manner to
identify itself or any of its products, services or organizations or
(ii) represent directly or indirectly that any product, service or
organization of LICENSEE is a product, service or organization of
LUCENT or any of its SUBSIDIARIES, or that any product or service of
LICENSEE is made in accordance with or utilizes any information of
LUCENT or any of its SUBSIDIARIES provided that LICENSEE shall be
entitled to identify PARTICLE ANALYSIS SYSTEMS incorporating TECHNICAL
INFORMATION are based on technology developed by Lucent Technologies
Inc., ▇▇▇▇ Laboratories; and
(vi) that all TECHNICAL INFORMATION shall be deemed the property of
LUCENT, and upon any termination of all rights granted to LICENSEE
hereunder pursuant to Article III hereof, LICENSEE shall immediately
cease all use of the TECHNICAL INFORMATION and shall, as directed by
LUCENT, promptly destroy or deliver to LUCENT each and every part
specified by LUCENT of the TECHNICAL INFORMATION then under LICENSEE's
control.
(vii) that LICENSEE will not, without written permission from
LUCENT, upon any sale, lease or other transfer of any manufacturing
facility (including any testing facility) or part thereof, made with
the use of any of the TECHNICAL INFORMATION, make any of the TECHNICAL
INFORMATION (including but not limited to information relating to
reassembly, installation, operation, maintenance or repair) available
to the vendee, lessee or other transferee, and that, upon the original
sale, lease or other transfer of each such manufacturing facility or
part thereof, LICENSEE will give notice in writing to LUCENT of the
fact of such transfer, identifying the vendee, lessee or other
transferee of such manufacturing facility or part thereof, and will
give to such transferee the following notice in a written advice
appropriately relating such equipment to such notice.
The transfer of this equipment shall not convey to any transferee any
license or right, express or implied, under any patent issued in any
country of the world. This is true whether or not the patented
invention is directed to the structure or any portion of the structure
of the equipment, and whether or not the ▇▇▇ of the equipment
necessarily requires the ▇▇▇ of the patented invention or necessary
produces an article that embodies the patented invention.
LUCENT TECHNOLOGIES INC. may be contacted with respect to the
availability, if any, of licenses under relevant patents.
Upon any transfer of the equipment, the transferor shall give this
notice (including this paragraph) to the transferee in writing,
appropriately relating this notice to the equipment.
4.06 Addresses
(a) Any notice or other communication hereunder shall be sufficiently
given to the LICENSEE when sent by certified mail addressed to ▇▇▇▇ ▇▇▇▇ ▇▇▇
▇▇▇▇▇, ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇, Attn: ▇▇▇▇▇ ▇▇▇▇▇▇, President, or to LUCENT when sent
by certified mail addressed to Contract Administrator, Intellectual Property
Division, Lucent Technologies inc., ▇▇▇▇ ▇▇▇▇▇ ▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ - ▇▇▇▇▇ ▇▇▇,
Coral Gables, Florida 33134, United States of America. Changes in such
addresses may be specified by written notice.
(b) Payments by the LICENSEE shall be made to LUCENT at Sun Trust, P. O.
Box 913021, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇-▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ of America.
Alternatively, payments to LUCENT may be made by bank wire transfers to LUCENT's
account: Lucent Technologies Licensing, Account No. ▇▇▇-▇-▇▇▇▇▇▇, at Chase
Manhattan Bank, N.A., ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇,▇ 11245, United
States of America, Swift Code: ▇▇▇▇▇▇▇▇, ABA Code: ▇▇▇▇▇▇▇▇▇. Changes in such
address or account may be specified by written notice.
4.07 Integration
This Agreement sets forth the entire agreement and understanding between the
Parties as to the subject matter hereof and merges all prior discussions between
them. Neither of the Parties shall be bound by any warranties, understandings
or representations with respect to such subject matter other than as expressly
provided herein, in prior written agreements, or in a writing signed with or
subsequent to the execution hereof by an authorized representative of the Party
to be bound thereby.
4.08 Nonassignability
The Parties hereto have entered into this Agreement in contemplation of personal
performance by LICENSEE and intend that the rights granted to LICENSEE hereunder
not extend to other entities without LUCENT's express written consent.
Accordingly, neither this Agreement nor any of LICENSEE's rights hereunder shall
be assignable or transferable (in insolvency proceedings or otherwise) without
such consent. LUCENT, however, may assign rights under this Agreement without
the consent of LICENSEE.
4.09 Dispute Resolution
(a) If a dispute arises out of or relates to this Agreement, or the
breach, termination or validity thereof, the Parties agree to submit the dispute
to a sole mediator selected by the Parties or, at any time at the option of a
Party, to mediation by the American Arbitration Association ("AAA"). If not
thus resolved, it shall be referred to a sole arbitrator selected by the Parties
within thirty (30) days of the mediation, or in the absence of such selection,
to AAA arbitration which shall be governed by the United States Arbitration Act.
(b) Any award made (i) shall be a bare award limited to a holding for or
against a Party and affording such remedy as is deemed equitable, just and
within the scope of the Agreement; (ii) shall be without findings as to issues
(including but not limited to patent validity and/or infringement) or a
statement of the reasoning on which the award rests; (iii) may in appropriate
circumstances (other than patent disputes) including injunctive relief; (iv)
shall be made within four (4) months of the appointment of the arbitrator; and
(v) may be entered in any court.
(c) The requirement for mediation and arbitration shall not be deemed a
waiver of any right of termination under this Agreement and the arbitrator is
not empowered to act or make any award other than based solely on the rights and
obligations of the Parties prior to any such termination.
(d) The arbitrator shall be knowledgeable in the legal and technical
aspects of this Agreement and shall determine issues of arbitrability but may
not limit, expand or otherwise modify the terms of the Agreement.
(e) The Agreement shall be interpreted in accordance with the laws of the
State of New York exclusive of its conflict of laws provisions and the place of
mediation and arbitration shall be New York City.
(f) Each Party shall bear its own expenses but those related to the
compensation and expenses of the mediator and arbitrator shall be borne equally.
(g) A request by a Party to a court for interim measures shall not be
deemed a waiver of the obligation to mediate and arbitrate.
(h) The arbitrator shall not have authority to award punitive or other
damages in excess of compensatory damages and each Party irrevocably waives any
claim thereto.
(i) The Parties, their representatives, other participants and the
mediator and arbitrator shall hold the existence, content and result of
mediation and arbitration in confidence.
IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be executed
in duplicate originals by its duly authorized representative on the respective
dates entered below.
LUCENT TECHNOLOGIES INC.
By /s/ ▇.▇. ▇▇▇▇▇▇
▇.▇. ▇▇▇▇▇▇
Vice President - Intellectual Property
Date June 24, 1997
▇▇▇▇▇▇-▇▇▇▇▇, INC.
By /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Title President
Date June 23, 1997
APPENDIX A - DEFINITIONS
PARTICLE ANALYSIS SYSTEMS means an instrumentality or aggregate of
instrumentalities of a design primarily adapted for determining in real time,
the size and/or composition of sub-micron aerosol particles.
LUCENT'S PATENTS means U.S. Patent No. 5,382,794 entitled "Laser Induced Mass
Spectrometry" and U.S. Patent No. 5,631,462 entitled "Laser-Assisted Particle
Analysis", to be issued in mide-1997, as well as any continuation, division, and
any foreign equivalents of the foregoing.
FAIR MARKET VALUE means, with respect to any ITEM SUBJECT TO FEE sold, leased or
put into use, the greater of:
(i) the selling price which a seller would realize from an unaffiliated
buyer in an arm's length sale of an identical item in the same
quantity and condition and at the same time and place as such sale,
lease or putting into use; or
(ii) the selling price actually obtained for such item in the form in which
it was sold;
whether or not such item is then assembled, and without excluding the value of
any components or subassemblies which are included in such item. FAIR MARKET
VALUE shall not include any taxes, handling and shipping charges, or credits for
returns or adjustments.
ITEM SUBJECT TO FEE means PARTICLE ANALYSIS SYSTEMS, and any maintenance parts
therefor, (i) which are manufactured under Section 1.04 with the use of any of
the TECHNICAL INFORMATION (including any such article, and any maintenance part
therefor, manufactured under Section 1.04 with manufacturing facilities made
with the use of any of the TECHNICAL INFORMATION), or (ii) which practices the
inventions as claimed in LUCENT's PATENTS.
SUBSIDIARY of a company means a corporation or other legal entity (i) the
majority of whose shares or other securities entitled to vote for election of
directors (or other managing authority) is now or hereafter controlled by such
company either directly or indirectly; or (ii) which does not have outstanding
shares or securities but the majority of whose ownership interest representing
the right to manage such corporation or other legal entity is now or hereafter
owned and controlled by such company either directly or indirectly; but any such
corporation or other legal entity shall be deemed to be a SUBSIDIARY of such
company only as long as such control or ownership and control exists.
TECHNICAL INFORMATION means all informative material furnished and demonstrated
to LICENSEE pursuant to this Agreement (including all copies of material
furnished hereunder) relating to PARTICLE ANALYSIS SYSTEMS and the term also
means the information contained in the material, such material being more fully
identified in APPENDIX B.
RELATED COMPANIES means SUBSIDIARIES of the company and any other company so
designated in writing signed by LUCENT and LICENSEE.
APPENDIX B - TECHNICAL INFORMATION
Table of Contents
I Overview Document "Ultra-Sensitive Particle Analysis System" 1-21
II. Particle Introduction System 22-25
III. Laser Power and Alignment 26-30
IV. Formula for Calculating Particle Size Based on detected Ion Signal 31
V. Detailed Description of Miniaturized Particle Analysis System 32-51
Capable of Detecting, Characterizing, and Sizing Sub-Micro
Particles