[EXHIBIT 10.42- 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 FILM LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
NIPPON SHEET GLASS CO., LTD.
This License Agreement ("Agreement") effective as of
September 3, 2004 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
NIPPON SHEET GLASS CO., LTD., a Japanese corporation
(hereinafter called "LICENSEE"). 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.
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to
Light Valves, and Light Valve Film (both as hereinafter defined)
and of methods and apparatus relating to products incorporating
such concepts (which products, although all of which are not
currently in commercial use, can include, without limitation
thereto, windows for buildings and vehicles, sunvisors, sunroofs,
flat panel displays, eyewear and rear-view mirrors); 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 buying SPD
Emulsion from other licensed suppliers of LICENSOR and
manufacturing and selling Light Valve Film (as hereinafter
defined); 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 promises 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.
"Authorized User" means LICENSOR and/or any other person or
entity listed by LICENSOR on Schedule B hereof who has been
granted permission by LICENSOR to receive Light Valve Film
from LICENSEE under this Agreement. LICENSEE agrees that
LICENSOR in its sole judgment may amend Schedule B hereof at
any time during the term of this Agreement for any reason by
sending LICENSEE a written notice of such amendment and
specifying the reason for such change. The persons or entities now
or hereafter listed on Schedule B may not include all of
LICENSOR's current licensees and may include prospective
licensees of LICENSOR, and for legal or practical reasons,
LICENSOR may restrict whether or not Light Valve Film may be
sold, leased or transferred to such person or entity, and/or the
application that such Light Valve Film may be used for by the
recipient. LICENSEE agrees that it and its permitted sublicensees
hereunder shall cease all sales, leases, or other dispositions of
Light Valve Film to any person or entity whose name is deleted
from Schedule B by LICENSOR, unless and until LICENSOR
consents in writing to the resumption of such sales, leases or other
dispositions (a) immediately upon receipt of any written notice
from LICENSOR that any person or entity is no longer included
on Schedule B, or (b) if either LICENSEE or its permitted
sublicensees becomes aware that any such person or entity listed
on Schedule B or otherwise receiving Light Valve Film is making
any improper use of Light Valve Film, in which case LICENSEE
shall promptly notify LICENSOR of such improper use.
"Licensed Territory " means all countries of the world.
"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
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 either in the form of a liquid suspension, gel, film or other
material.
"Light Valve Film" means a film or sheet or more than one thereof
comprising a suspension of particles used or intended for use
solely in or as a Light Valve. The Light Valve Film shall comprise
either (a) a suspension of particles dispersed throughout a
continuous liquid phase enclosed within one or more rigid or
flexible solid films or sheets, or (b) a discontinuous phase of a
liquid comprising dispersed particles, said discontinuous phase
being dispersed throughout a continuous phase of a rigid or
flexible solid film or sheet. The Light Valve Film may also
comprise one or more other layers such as, without limitation, a
film, coating or sheet or combination thereof, which may provide
the Light Valve Film with (1) scratch resistance, (2) protection
from ultraviolet radiation, (3) reflection of infrared energy, and/or
(4) electrical conductivity for transmitting an applied electric or
magnetic field to the activatable material.
"SPD Emulsion" means any component or components used or
usable in or used or usable to make a Light Valve Film, including,
but not limited to, particles, particle precursors, coatings,
polymers, liquid suspensions and suspending liquids, or any
combination thereof.
"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 and the like
owned or controlled by LICENSOR, to the extent they exist, that
relate to the suspensions used or usable for SPD Emulsion or Light
Valve Film and that consist of concepts invented or developed by
LICENSOR and which are deemed significant 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, and to lease, sell, or otherwise dispose
of Light Valve Film manufactured by LICENSEE pursuant to this
Agreement solely to an Authorized User in the Authorized User's
permitted territory and for the applications specified and purpose
permitted on Schedule B hereof. The license granted pursuant to
this Section 2.1 shall be royalty-free to LICENSEE and its
permitted sublicensees hereunder. By virtue of the disclosure of
Technical Information and training provided by LICENSOR under
this Agreement, all Light Valve Film sold, leased or otherwise
disposed of by or for LICENSEE hereunder shall be deemed to
have been manufactured at least in part using the Technical
Information provided by LICENSOR. The foregoing license is
only a license with respect to Light Valve Film and nothing
contained in this Agreement shall permit LICENSEE to make, sell,
use (except to manufacture Light Valve Film) or otherwise dispose
of end products incorporating SPD Emulsion or Light Valve Film.
2.2 No Other Rights. LICENSEE agrees that, except for the
specific licenses granted to it under Section 2.1 hereof, LICENSEE
has not acquired any rights or licenses under this Agreement to use
Light Valve Film or any components thereof made by or for
LICENSEE pursuant to this Agreement except for the purposes of
research and development pursuant to Section 4.1 hereof and as
specifically licensed in Section 2.1 hereof.
2.3 Sublicenses. LICENSEE shall have the right to grant
non-exclusive sublicenses to any wholly-owned and controlled
subsidiary of LICENSEE, 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.
3 REPORTS AND RECORD-KEEPING.
3.1 Reports. Within 15 days after the end of each fiscal
quarter, LICENSEE shall send to LICENSOR a quarterly report
setting forth in reasonable detail the quantity of Light Valve Film
manufactured each quarter and the amount of Light Valve Film
sold, leased, disposed of, or delivered by or for LICENSEE and its
sublicensees during such quarter to Authorized Users and samples
provided to third parties, with the amounts sold or otherwise
provided to each Authorized User, including sample recipients,
and their identity clearly broken down. The first report submitted
under this Agreement shall cover the period from the Effective
Date of the Agreement to the end of the first quarter in which Light
Valve Film is produced hereunder. LICENSEE shall also furnish
to LICENSOR at the same time it becomes available to any third
party, a copy of each brochure, standard price list, advertisement
or other marketing and promotional materials prepared, published
or distributed by LICENSEE or its sublicensees relating to Light
Valve Film. LICENSOR shall have the right, but not the
obligation, to approve any use by LICENSEE of its name, logo, or
other information about Light Valve Film, and to require the
correction of any inaccurate information.
3.2 Recordkeeping. LICENSEE shall keep and shall cause
each sublicensee to keep for six (6) years after the date of
submission of each report supported thereby, true and accurate
records, files, data and books of accounts that relate to the
manufacture, sale or other disposition of Light Valve Film,
reasonably required for the full computation and verification of the
information to be given in the statements herein provided for.
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 Japan) 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. The cost of the audit shall be borne by
LICENSOR, unless the audit shall disclose a material breach by
LICENSEE of any term of this Agreement, or an inaccuracy
greater than 2% in any report provided to LICENSOR by
LICENSEE, during the audited period, in which case LICENSEE
shall bear the full cost of such audit. The results of the audit shall
be kept confidential pursuant to the provisions of Section 12.1
except to the extent required by a party hereto to enforce its rights
hereunder, or which is otherwise required to be disclosed by law
or under generally accepted accounting principles.
3.3 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 Light Valve Film, LICENSEE shall include the details
of such transaction in its quarterly report under Section 3.1 hereof,
and shall pay LICENSOR a sales commission equal to 10% of the
amount received from such customer. 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 LICENSOR AND LICENSEE.
4.1 Development of Light Valve Film. LICENSOR and
LICENSEE may cooperate to develop initial specifications for
Light Valve Film. LICENSEE shall then use its reasonable efforts
to produce Light Valve Film meeting such specifications for the
evaluation and use of LICENSOR and licensees and prospective
licensees of LICENSOR, and for use by LICENSEE but only for
internal research and development. After consultation with
LICENSEE, LICENSOR may at any time propose additional size
or other specifications of the Light Valve Film to be produced
under this Agreement with the disclosure of additional Technical
Information to LICENSEE with respect to such size or other
specifications of Light Valve Film. LICENSEE may use all
commercially reasonable efforts throughout the term of this
Agreement to improve the quality of Light Valve Film. However,
LICENSEE shall be solely responsible for determining the
specifications for all Light Valve Film, and for any improvements
therein.
4.2 LICENSOR Purchases. If LICENSEE is able to develop
and manufacture Light Valve Film suitable for use by Authorized
Users, upon request of LICENSOR and with reasonable prior
notice, LICENSEE shall sell and deliver to LICENSOR, Light
Valve Film or components thereof in quantities and prices
mutually agreed upon by LICENSOR and LICENSEE.
LICENSEE acknowledges that LICENSOR and its present and/or
future licensees (or entities who have been granted the option of
entering into license agreements with LICENSOR) may
independently manufacture (or have third parties manufacture for
them) and sell Light Valve Film under the terms of agreements
between them and LICENSOR, or may independently manufacture
and sell Light Valve Film which LICENSOR produces, or has
produced on its behalf. Nothing contained in this Agreement shall
impose any obligation on LICENSOR or any other parties to
purchase any Light Valve Film from LICENSEE. Notwithstanding
anything contained herein to the contrary, during the term of this
Agreement LICENSOR may provide Light Valve Film obtained by
LICENSOR pursuant to this Section 4.2 to third parties so long as
LICENSOR does not receive from the recipient for the provision
of such Light Valve Film any monetary payment in excess of
LICENSOR's purchase price plus shipping, administrative,
overhead and related costs to such recipient.
4.3 Compliance. LICENSEE agrees that, without limitation,
any manufacture, sale, lease, use or other disposition of Light
Valve Film that is not in strict accordance with (1) the provisions
of this Agreement, or (2) restrictions on the type of product, or the
territory in which such product may be, made, used, sold or
otherwise disposed of by or for an Authorized User, or other
provisions or restrictions, which are contained in any other
agreement in force between LICENSOR and an Authorized User
which is known to LICENSEE which relates to Light Valves or
Light Valve Film, shall be deemed a material breach of this
Agreement.
4.4 End Users. LICENSEE agrees to require all direct
recipients of Light Valve Film to whom Light Valve Film is 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 Light Valve
Film. LICENSEE agrees to take all steps to reasonably assure
itself that Light Valve Film sold, leased or otherwise disposed of
by or for LICENSEE is being used for permitted application and
territory only. If a party which is not then listed on Schedule B
hereto wishes to obtain samples of Light Valve Film or to purchase
Light Valve Film from LICENSEE, LICENSEE shall notify
LICENSOR and shall refer such party to LICENSOR. If such
party enters into a suitable agreement with LICENSOR,
LICENSOR shall inform LICENSEE whether such party may then
obtain samples or purchase Light Valve Film from LICENSEE.
4.5 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 SPD
Light Valve Film 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.
4.6 Purchase of Components from Others. By virtue of the
disclosure of Technical Information, other information, and
training, 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, SPD
Emulsion (each, a "Component"), which LICENSEE or its
sublicensees makes, has made for it, or purchases from any third
party for use in Light Valve Film 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.
4.7 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance 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. Except for any breach of the terms of this
Agreement, in no event shall any party to this Agreement 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 material, Component or information
provided hereunder.
4.8 Analysis. LICENSEE represents and agrees that it will
only incorporate Components received from authorized suppliers
into Light Valve Film 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.
4.9 Personnel. LICENSEE agrees to assign personnel from
its technical staff who shall work on the development of Light
Valve Film during the term of this Agreement.
4.10 Promotional Activities. LICENSEE agrees that it shall
maintain adequate inventories of Light Valve Film produced by it
to meet on a timely basis the anticipated requirements of customers
listed on Schedule B hereto. 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.
4.11 No other obligations. LICENSEE and LICENSOR have
no other obligations to each other except as expressly provided in
this Agreement.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for Light Valve Film, 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
Light Valve Film, 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.
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. LICENSEE may fulfil its obligations hereunder through
self-insurance as long as LICENSEE remains solvent and in good
financial condition.
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 Light Valve Film, and related
materials (other than sales by LICENSEE to LICENSOR pursuant
to Section 4.2 hereof), 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) If during the term
of this Agreement, LICENSOR makes any improvements or
modifications which are invented or developed by or on behalf of
LICENSOR after the Effective Date of this Agreement and on or
before August 31, 2004, and which relate in any way to or are
useful in the design, operation, manufacture and assembly of Light
Valve Film, such improvements and modifications shall from time
to time be disclosed to LICENSEE and be automatically included,
on a non-exclusive basis, in the rights and licenses granted
pursuant to Section 2.1 hereof, and any patents and/or patent
applications relating thereto shall automatically be added to
Schedule A hereof.
(b) Any future improvements or modifications invented or
developed by or on behalf of LICENSEE, LICENSEE's
sublicensees and LICENSOR (other than as specifically described
in Sections 7.2(a)) 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 Light Valve Film 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.
(c) 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 (other than as
specifically described in Section 7.2(a)) have been made relating
to the subject matter of this Agreement, and as to the general
nature of any such improvements and modifications.
(d) 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. 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 Light Valve Film 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.
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 if patent marking is required by law
or to protect a party's intellectual property rights. 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, 2009 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. After the expiration
or termination of this Agreement, LICENSEE shall have no right
to sell, and no obligation to manufacture and deliver, Light Valve
Film to any Authorized User or to any other party.
10.3 Termination by LICENSOR. LICENSOR may
terminate this Agreement at any time effective as of December 31,
2009 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 Light Valve Film 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 Light Valve
Film.
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, either (A) sell and
deliver to LICENSOR under the terms specified in Section 4.2 any
Light Valve Film which shall then be in the possession of
LICENSEE, and, if requested by LICENSOR, LICENSEE shall
finish and deliver to LICENSOR any Light Valve Film 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 Light Valve
Film (and Light Valve Film in the process of manufacture) not sold
under this Section 10.4 and (3) if this Agreement is terminated for
any reason on or before December 31, 2009, 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 of this Agreement
relating to Light Valves, Light Valve Film or SPD Emulsion which
relate to or arise out of Technical Information or materials
disclosed or provided by LICENSOR or its licensees and their
sublicensees to LICENSEE, and upon such termination,
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, 3.2,
4.6, 4.7, 4.8, 6.1, 6.2, 7.2, 8.5, 10.2, 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 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.
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. The
burden of proving the availability of any exception of
confidentiality shall be on the LICENSEE. 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 shall be deemed to be confidential information. Other
than for the oral information conveyed during the training
conducted pursuant to Sections 8.2 and 8.3 hereof, if any, all of
which shall be deemed to be confidential information, if
confidential information is otherwise conveyed orally by
LICENSOR after training has been completed, 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, 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
Technical Information confidential hereunder, LICENSEE will not
make, use, sell, lease or otherwise dispose of products using or
directly or indirectly derived from confidential information or
sample materials supplied to LICENSEE by LICENSOR or its
licensees, sublicensees, or any of their affiliates relating to Light
Valve Film, SPD Emulsion or Light Valves 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, electrochromic devices, or
similar technology, 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 of LICENSOR 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 Light Valve Film, or (b) as to the validity of any
patent.
13.4 Representation. LICENSOR hereby represents and
warrants that, as of the Effective Date hereof, to the best of its
knowledge there have been no claims, actions or proceedings
brought or threatened against it or its licensees alleging that any
SPD Emulsion, Light Valve Film, and Light Valves manufactured
using Technical Information or other technical information
disclosed by LICENSOR constitutes infringement of any patent of
any third party.
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. Should any dispute arise between
LICENSOR and LICENSEE in connection with this Agreement,
LICENSOR and LICENSEE shall first endeavor to settle such
dispute in an amicable manner through mutual consultation.
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
Research Frontiers Incorporated
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
LICENSEE: YuichiYano, Vice President
NSG UMU PRODUCTS CO.,LTD
Nippon Sheet Glass Co., Ltd.
▇-▇-▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇-▇▇
▇▇▇▇▇ ▇▇▇-▇▇▇▇, ▇▇▇▇▇
Facsimile:011-81-436-25-5313
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: September 3, 2004
NIPPON SHEET GLASS CO., LTD.
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, Executive Officer
Specialty Glass Division
Architectural Glass& Building Materials Company
Date: September 3, 2004
CONFIDENTIAL TREATMENT
Schedule A
(As of September 3, 2004)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
(*-indicates a patent with respect to non-US filings)
Date Expiration
Patents in the United States Issued Date
4,772,103 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Containing an Improved
Suspension, and Liquids Therefor" 9/20/88 8/8/06
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
5,130,057 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Polarizing Materials and
Suspensions Thereof" 7/14/92
10/31/06
5,279,773 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
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
1156:
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
5,764,402 ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇; ▇▇▇▇▇▇ ▇▇▇▇▇
"Optical Cell Control System" 06/09/98
xx/xx/xx
5,838,482 ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇; ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
"Optical Cell" 11/17/98 xx/xx/x
x
5,691,849 ▇▇▇▇ ▇▇▇▇▇▇▇; ▇▇▇▇-▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇; ▇▇▇▇▇ ▇▇▇▇
"Rear-View Assembly for a Vehicle
and an Adaptor Therefor" 11/25/97
xx/xx/xx
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 05/24/2
0
6,334,967 B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇ 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
Date Expiration
Patents in the United States Issued Date
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 04/25/2
1
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 Application No. 10/330,645 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 12/08/1
4
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
PENDING INTERNATIONAL APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
FOREIGN PATENTS AND PATENT APPLICATIONS
Patent Number or Country Serial Number Issued Filed Expiration
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
Schedule B
(As of September 3, 2004)
LIST OF ELIGIBLE CUSTOMERS (AUTHORIZED USERS) FOR
LIGHT VALVE FILM
Name of Customer Licensed Application Permitted Territory
Research Frontiers Incorporated All applicationsWorldwide
American Glass Products Architectural and automotive
windows
Worldwide
(except Korea)
AGC Automotive Americas Sunroof glass for other licensees
Worldwide
Asahi Glass Co.Sunroof glass for other licensees Worldwide
SPD displays Worldwide
Variable light transmission sunshades and
sunvisors Worldwide
Architectural and automotive windows
Worldwide (except Korea)
1295: Cricursa ▇▇▇▇▇▇▇▇▇ Curvados S.A. Architectural and
automotive
windows
W orldwide
(except Korea)
Custom Glass Corporation Windows and sunroofs for mass transit
trains/busses Worldwide
(except Korea)
▇. ▇. ▇▇▇▇▇▇ de Nemours and CompanyArchitectural and automotive
windows Worldwide (except Korea)
Glaverbel, S.A. Automotive vehicle rear-view mirrors,
Worldwide
transportation vehicle sunvisors, and
(except Korea
architectural and
automotive
windows
for
windows)
Rear-view mirrors and sunvisors
Worldwide
1336: Hankuk Glass Industries Inc./SPD Inc. Broad range of SPD light
control products
Worldwide
including windows, flat
panel displays,
automotive vehicle rear-view mirrors and
sunvisors (installed as original equipment
on Korean-made cars), and sunroofs; SPD
film
for licensees and prospective licensees
Architectural windows
U.S., Canada, and Mexico
Aircraft and marine windows
and cabin dividers
W orldwide (except Korea)
Isoclima S.p.A. Architectural and automotive
windows W orldwide (except Korea)
Kerros Ltd. (IntelliTint) Automotive windows and sunroofs
W orldwide (except Korea)
Laminated Technologies, Inc./LTI Smartglass Licensed to provide
laminated SPD-Smart glass Worldwide
to other licensees of Research Frontiers
and for certain (except Korea
architectural window products to existing
customers. for windows)
Leminur, Ltd. Architectural windows
▇▇▇▇
▇▇▇
▇▇▇▇
ratio
n,
Arm
enia,
Azerbaijan,
Belarus,
Estonia,
Georgia,
Kazakhstan,
Kyrgyz
Republic,
Latvia,
Lithuania,
Moldova,
Tajikistan,
Turkmenistan, Ukraine,
and
Uzbekistan.
N.V. Bekaert S.A. Architectural and automotive windows
W orldwide (except Korea)
Licensed to provide laminated SPD-
Smart glass W orldwide (except Korea)
to other licensees of Research Frontiers.
Prelco Inc. Architectural windows, train and bus windows
U.S., Canada, and Mexico
Architectural windows
Republic of Ireland
Architectural windows
W orldwide (except Korea)
Saint-Gobain Glass France, SA Architectural windows,
automotive and other Worldwide
transportation vehicle windows (other than aircraft (except Korea)
and spacecraft), kitchen and laundry home appliance
windows, and automotive sunvisors and rear-view
mirrors for cars, SUVs, light trucks and other
transportation vehicles (other than as original equipment
mirrors on heavy trucks, busses, construction vehicles,
firetrucks and other vehicles in Class 5-8 or weighing
over 16,000 pounds
SPD Systems, Inc. Architectural, marine and appliance windows
Worldwide (except Korea)
ThermoView Industries, Inc. Architectural windows
Worldwide (except Korea)
Traco Inc. Architectural windows
Worldwide (except Korea)
Vision (Environmental Innovation) Ltd. Architectural windows
United Kingdom
[INFORMATION REGARDING OTHER AUTHORIZED USERS
WILL BE PROVIDED BY LICENSOR TO LICENSEE FROM TIME
TO TIME IN THE FUTURE]