[EXHIBIT 10.26- 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.]
LICENSE AGREEMENT
BETWEEN
RESEARCH FRONTIERS INCORPORATED
AND
SPD SYSTEMS, INC.
This License Agreement ("Agreement") effective as of October
7, 2002 by and between RESEARCH FRONTIERS
INCORPORATED, a Delaware corporation ("LICENSOR") and
SPD SYSTEMS, INC., a Florida corporation ("LICENSEE").
RECITALS
WHEREAS, LICENSOR has been engaged in research and
development in the application of physicochemical concepts to Light
Valves and Licensed Products (both as hereinafter defined) and of
methods and apparatus relating to products incorporating such
concepts; and is possessed of and can convey information and know-
how for such products and rights to manufacture, use and sell such
products; and
WHEREAS, LICENSEE is interested in manufacturing and
selling Licensed Products; and
WHEREAS, LICENSEE desires to acquire from LICENSOR,
and LICENSOR desires to grant to LICENSEE, certain rights and
licenses with respect to such technology of LICENSOR;
NOW, THEREFORE, in consideration of the premises and the
mutual covenants herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby
acknowledged, the parties agree as follows.
1 DEFINITIONS.
The following terms when used herein shall have the respective
meanings set forth in this Article 1.
The "Effective Date" of this Agreement shall be the date which is the
last date of formal execution of this Agreement by duly authorized
representatives of the parties to this Agreement as indicated on the
signature page of this Agreement.
"Licensed Product" means a Light Valve Architectural Window
Product or a Light Valve Appliance Window Product incorporating a
Light Valve. The term "Licensed Product" shall not include Light
Valves used or intended for use in any product other than as
specifically defined herein, such as but not limited other window or
appliance products not specifically defined herein, including
windows for transportation vehicles, including, but not limited to
passenger cars, recreational vehicles, trucks, mobile cranes, trains,
monorails. aircraft, boats, vans, sport utility vehicles, space craft and
space-stations, and non-window products such as but not limited to
displays, eyewear, sunvisors, toys, mirrors or filters for scientific
instruments, lamps or contrast enhancement of displays. The term
"display" means any device for displaying letters, numbers, images
or other indicia or patterns. Nothing contained herein shall permit
LICENSEE to sell, lease, or otherwise dispose of a Light Valve
which is not combined or intended to be combined as described
above into a Light Valve Architectural Window Product or into a
Light Valve Appliance Window Product.
"Licensed Territory " means all countries of the world except North
and South Korea with respect to Light Valve Architectural Window
Products, and all countries of the world with respect to Light Valve
Appliance Window Products.
"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 in the form a liquid
suspension, gel, film or other material.
"Light Valve Appliance Window Product" means a Light Valve
intended for use and used solely as a viewing window on or in
kitchen and laundry home appliances, including but not limited to
ovens, ranges, refrigerators, freezers, stoves, dishwashers, automatic
washers, clothes dryers, domestic ice makers, wine coolers, trash
compactors and microwave ovens, but shall not include Light Valves
used or intended for use as or in any other type of appliance product.
"Light Valve Architectural Window Product" means a Light Valve
used or intended for use solely as a window integrally incorporated
in, or attached as a fixture to the external structure or internal
structure of any building, whether permanent or temporary, and
whether above or below ground.
The "Net Selling Price" of a Licensed Product on which royalties are
payable shall be the larger of the following: (A) the genuine selling
price of LICENSEE and its sublicensees hereunder (including
amounts charged for any wiring, installation, and related services
provided by LICENSEE and its sublicensees hereunder) f.o.b.
factory at which nonaffiliated customers are billed in the usual
course of business for a Licensed Product, as packed for shipment to
the customer; (B) the genuine selling price of LICENSEE and its
sublicensees hereunder (including amounts charged for any wiring,
installation, and related services provided by LICENSEE and its
sublicensees hereunder) f.o.b. factory at which nonaffiliated
customers are billed in the usual course of business for a Licensed
Product, as packed for shipment to the customer, multiplied by a
fraction, the numerator of which is the direct cost of all components
included in the window associated with the incorporation of a Light
Valve, and the denominator of which is the total direct cost for such
product; and (C) $100 per window. The aforementioned $100 figure
specified in clause (C) above shall be adjusted upward as of each
January 1st hereafter beginning on January 1, 2003 by any increase in
the Producer Price Index for Finished Goods (the "Index") for the 12
month period ending in December of the prior year, prepared by the
Bureau of Labor Statistics of the United States Department of Labor
(or if the Index is not then being published, the most nearly
comparable successor index). In calculating a genuine selling price
of a product for the above calculation, such price may be reduced
only by the applicable proportions of the following if, and to the
extent that, amounts in respect thereof are reflected in such selling
price: (i) normal trade discounts actually allowed; (ii) sales, use or
excise and added value taxes and custom duties paid; (iii) if the
genuine selling price is other than f.o.b. factory, amounts paid for
f.o.b. transportation of the product to the customer's premises or
place of installation or delivery; (iv) insurance costs and the costs of
packing material, boxes, cartons and crates required for shipping;
provided, however, that for purposes of this calculation, the genuine
selling price of a product may not be less than 90% of the gross
selling price of said product after all deductions therefrom, if any. If
a product is leased, sold, used or otherwise disposed of on terms not
involving a bona fide arm's length sale to an unaffiliated third party,
then the Net Selling Price for such transactions shall be deemed to be
the Net Selling Price as defined above for identical products sold to a
nonaffiliated customer nearest to the date of such lease, sale, use, or
other disposition.
"Technical Information" means all useful information relating to
apparatus, methods, processes, practices, formulas, techniques,
procedures, patterns, ingredients, designs and the like including (by
way of example) drawings, written recitations of data, specifications,
parts, lists, assembly procedures, operating and maintenance
manuals, test and other technical reports, know-how of LICENSOR,
and the like owned or controlled by LICENSOR, to the extent they
exist, that relate to Light Valves, Licensed Products and/or to the
suspensions or other components used or usable for Licensed
Products or Light Valves including, but not limited to, particles,
particle precursors, coatings, polymers, liquid suspensions and
suspending liquids, or any combination thereof, and that consist of
concepts invented or developed by LICENSOR. Know-how of
LICENSOR's suppliers and of LICENSOR's other licensees and
their sublicensees under licenses from LICENSOR shall not be
considered Technical Information owned or controlled by
LICENSOR.
2 GRANT OF LICENSE.
2.1 License. During the term of this Agreement, LICENSOR
hereby grants LICENSEE a non-exclusive right and license to use (a)
all of the Technical Information, if any, (subject to Section 8.1
hereof), furnished by LICENSOR pursuant to this Agreement, and
(b) any invention claimed in (i) any of the unexpired patents now or
hereafter listed on Schedule A attached hereto or (ii) unexpired
patents which issue from pending patent applications now or
hereafter listed in Schedule A, and any continuations, continuations-
in-part, divisions, reissues, reexaminations, or extensions thereof to
make, have made, and to lease, sell, or otherwise dispose of Licensed
Products in the Licensed Territory.
2.2 No Other Rights. LICENSEE agrees that, except for the
specific licenses granted to it under Section 2.1 hereof for use in
Licensed Products, LICENSEE has not acquired any rights or
licenses under this Agreement to use Light Valves or any
components thereof made by or for LICENSEE or its sublicensees
pursuant to this Agreement.
2.3 Sublicenses. LICENSEE shall have the right to grant non-
exclusive sublicenses to any of its wholly-owned and controlled
subsidiaries, whose obligations to LICENSOR hereunder LICENSEE
hereby guarantees, and which acknowledges to LICENSOR in
writing that it wishes to become a sublicensee hereunder prior to
doing so and agrees to be bound by the terms and conditions of this
Agreement. All sublicenses shall (i) be non-exclusive, (ii) shall
terminate with the termination of the rights and licenses granted to
LICENSEE under Section 2.1 hereof, and be otherwise limited in
accordance with the limitations and restrictions which are imposed
on the rights and licenses granted to LICENSEE hereunder, (iii)
contain confidentiality provisions no less protective than those
contained in Section 12.1 hereof, and (iv) shall contain such other
terms, conditions, and licenses as are necessary to enable LICENSEE
to fulfill its obligations hereunder. LICENSEE shall send
LICENSOR a copy of every sublicense agreement or other
agreement entered into by LICENSEE in connection with a
sublicense hereunder within thirty (30) days of the execution thereof.
LICENSOR may terminate any such sublicense if there is any change
in the ownership or control of a sublicensee.
3 ROYALTY PAYMENTS, REPORTS AND RECORD-
KEEPING.
3.1 Royalties and Reports on Net Sales. During the term of this
Agreement, LICENSEE agrees to pay LICENSOR an earned royalty
which shall be five percent (5%) of the Net Selling Price of Licensed
Products which embody, or the manufacture of which utilizes, any of
the rights granted under Section 2.1 hereof, and which are
manufactured by or for LICENSEE and sold, leased, used or
otherwise disposed of by or for LICENSEE or a permitted
sublicensee. Payments under this Section 3.1 shall be made on a
quarterly basis and made within 45 days after the end of the calendar
quarter in which such Licensed Products were sold, leased, used or
otherwise disposed of by or for LICENSEE or a permitted
sublicensee hereunder. Each royalty payment shall be in U.S. dollars
and shall be accompanied by a statement by LICENSEE showing in
reasonable detail the amount of Licensed Products sold, used, leased
or otherwise disposed of by or for LICENSEE and its sublicensees
during the preceding quarter, any deductions taken or credits applied,
and the currency exchange rate used to report sales made in
currencies other than U.S. dollars. LICENSEE shall use the
exchange rates for buying U.S. dollars in effect on the last day of
each quarter, as specified in The New York Times. The first such
statement shall cover the period from the Effective Date of this
Agreement to the end of the first calendar quarter in which a
Licensed Product is sold, used, leased or otherwise disposed of by or
for LICENSEE or its sublicensees. LICENSEE shall also furnish to
LICENSOR at the same time it becomes available to any third party,
a copy of each brochure, price list, advertisement or other marketing
and promotional materials prepared, published or distributed by
LICENSEE or its sublicensees relating to Licensed Products.
3.2 Minimum Royalties - Regardless of whether LICENSEE is
selling any Licensed Products, during the term of this Agreement
LICENSEE agrees to pay LICENSOR the non-refundable minimum
royalties (in U.S. Dollars) specified below for each of the stated
periods:
Period Minimum Royalty
[Confidential Information Omitted and filed separately with the
Securities and Exchange Commission]
3.3 Time and Method of Payment. The initial payment under
Section 3.2 shall be paid to LICENSOR within 10 days of the
Effective Date of this Agreement, and each subsequent payment
under Section 3.2 to LICENSOR shall be made on or before January
31 of each license year commencing January 1, 2003. [Confidential
Information Omitted and filed separately with the Securities and
Exchange Commission] All other payments shall be due on the date
specified in this Agreement, or if no date is specified, within 30 days
of invoice. All payments made to LICENSOR shall be paid by wire
transfer of immediately available funds to the account of Research
Frontiers Incorporated at Chase Manhattan Bank, ▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇, Account No.: ▇▇▇-▇▇▇-▇▇▇, ABA
Wire Code No.: 021 000 021, or to such other account or place, as
LICENSOR may specify in a notice to LICENSEE.
3.4 Sales, Use and Returns. Licensed Products shall be
considered as sold, leased or used and royalties shall accrue on the
earlier of when such Licensed Products are billed out, or when
delivered, shipped or mailed to the customer. If as a result of a price
reduction or a return of Licensed Products previously sold, a credit
or refund to a customer is given on part or all of the sale price of
such Licensed Products, a credit shall be allowed against royalties
accruing thereafter under this Agreement equal to the royalty paid on
that part of the sales price so credited or refunded.
3.5 Recordkeeping. LICENSEE shall keep and shall cause
each sublicensee to keep for six (6) years after the date of
submission of each statement supported thereby, true and accurate
records, files and books of accounts that relate to Licensed Products,
all data reasonably required for the full computation and verification
of the Net Selling Price of Licensed Products, deductions therefrom
and royalties to be paid, as well as the other information to be given
in the statements herein provided for, and shall permit LICENSOR or
its duly authorized representatives, upon reasonable notice,
adequately to inspect the same at any time during usual business
hours. LICENSOR and LICENSEE agree that an independent
certified public accounting firm (selected by LICENSOR from the
largest ten certified public accounting firms in the United States of
America) may audit such records, files and books of accounts to
determine the accuracy of the statements given by LICENSEE
pursuant to Section 3.1 hereof. Such an audit shall be made upon
reasonable advance notice to LICENSEE and during usual business
hours no more frequently than annually. The cost of the audit shall
be borne by LICENSOR, unless the audit shall disclose a breach by
LICENSEE of any term of this Agreement, or an underpayment error
in excess of two percent of the total monies paid to LICENSOR by
LICENSEE during the audited period, in which case LICENSEE
shall bear the full cost of such audit. LICENSEE agrees to pay
LICENSOR all additional monies that are disclosed by the audit to
be due and owing to LICENSOR within thirty days of the receipt of
the report.
4 OBLIGATIONS OF LICENSEE.
4.1 Compliance. LICENSEE agrees that, without limitation,
any manufacture, sale, lease, use or other disposition of Licensed
Products that is not in strict accordance with the provisions of this
Agreement shall be deemed a material breach of this Agreement.
4.2 End Users. LICENSEE agrees to require all direct
recipients of Licensed Products to whom Licensed Products are sold,
leased, or otherwise disposed of by LICENSEE or its sublicensees, to
look only to LICENSEE and not to LICENSOR or its affiliates for
any claims, warranties, or liability relating to such Licensed
Products. LICENSEE agrees to take all steps to reasonably assure
itself that Licensed Products sold, leased or otherwise disposed of by
or for LICENSEE is being used for permitted purposes only.
4.3 Laws and Regulations. LICENSEE agrees that it shall be
solely responsible for complying with all laws and regulations
affecting the manufacture, use and sale or other disposition of
Licensed Products by LICENSEE and its sublicensees, and for
obtaining all approvals necessary from governmental agencies and
other entities. LICENSEE agrees to maintain a file of all such
approvals and to send LICENSOR a copy of all such approvals
(including English translations thereof in the case of approvals
required by any foreign country) within 10 business days of any
written request for such copies by LICENSOR. LICENSEE
represents and warrants to LICENSOR that no approval from any
governmental agency or ministry, or from any third party, is required
to effectuate the terms of this Agreement or the transactions
contemplated hereby.
4.4 Purchase of Components from Others. By virtue of the
disclosure of Technical Information and information, if any,
provided from time to time by LICENSOR to LICENSEE and to its
other licensees, and each of their sublicensees and affiliates, any
component of a Light Valve, including, without limitation, materials,
suspensions, films, polymers, coatings, particle precursors, and
particles (each, a "Component"), which LICENSEE or its
sublicensees makes, has made for it, or purchases from any third
party for use in Licensed Products shall be deemed to have been
manufactured at least in part using the Technical Information
provided by LICENSOR if LICENSEE or any supplier of a
Component to LICENSEE has had access to Technical Information
of any kind of LICENSOR or its licensees and their sublicensees,
consultants, subcontractors, agents or representatives.. LICENSEE
and its sublicensees each hereby agrees that (i) all Components shall
be used only in strict accordance with the provisions of this
Agreement, and that such Components may not be used for any other
purpose or resold by LICENSEE or its sublicensees except as
specifically permitted by the license granted in Section 2.1 hereof,
and (ii) LICENSEE and its sublicensees will only look to the
manufacturer or supplier of such Component or other item used by
LICENSEE or its sublicensees and not to LICENSOR or its affiliates
for any claims, warranties, or liability relating to such Component or
other item. LICENSEE acknowledges that LICENSOR has not made
any representations or warranties regarding the availability of any
Component, or the price thereof, and that in all respects LICENSEE
shall deal directly with the suppliers of such Components and will
obtain from them information regarding availability, pricing, and/or
other terms relating to such Components.
4.5 No Warranties by LICENSOR. LICENSOR does not
represent or warrant the performance of any Licensed Product or of
any material, Component, or information provided hereunder, and
LICENSEE expressly acknowledges and agrees that any such
material, Component or information provided by LICENSOR
hereunder is provided "AS IS" and that LICENSOR makes no
warranty with respect thereto and DISCLAIMS ALL
WARRANTIES, EXPRESS OR IMPLIED, INCLUDING BUT
NOT LIMITED TO THE IMPLIED WARRANTIES OF
MERCHANTABILITY AND FITNESS FOR A PARTICULAR
PURPOSE, WITH RESPECT THERETO, ITS USE OR ANY
INABILITY TO USE IT, OR THE RESULTS OF ITS USE. 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 Licensed Product,
material, Component or information provided hereunder.
4.6 Analysis. LICENSEE represents and agrees that it will only
incorporate Components received from authorized suppliers into
Licensed Products and for no other purpose, and that LICENSEE
will not directly or indirectly attempt to reverse-engineer any
material provided to it hereunder by LICENSEE or any supplier of
any Component.
4.7 Personnel. LICENSEE agrees to assign personnel from its
technical staff who shall be responsible for the development of
Licensed Products during the term of this Agreement.
5 TRADEMARKS.
5.1 Trademarks. All trademarks or service marks that either
party may adopt and use for Licensed Products or other products
incorporating Light Valves are and shall remain the exclusive
property of the adopting party, and the other party shall not obtain
any rights and license to such marks under this Agreement, but may
inform others that the adopting party has licensed or produced
Licensed Products or products incorporating Light Valves under
such ▇▇▇▇ or marks, and may use the adopting party's logo in
connection therewith. LICENSOR may require LICENSEE or its
permitted sublicensees to indicate on packaging that such product is
licensed from Research Frontiers Incorporated or to otherwise
include language and/or designations approved by LICENSOR
indicating an affiliation with Research Frontiers Incorporated.
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.
6.2 Indemnification. LICENSEE, and its affiliates, successors
and assigns and sublicensees (each, an "Indemnifying Party"), each
hereby indemnify and agree to hold harmless LICENSOR and its
shareholders, officers, directors, agents and employees (each, an
"Indemnified Party"), against any liability, damage, loss, fine,
penalty, claim, cost or expense (including reasonable costs of
investigation and settlement and attorneys', accountants' and other
experts' fees and expenses) arising out of any action or inaction by
any Indemnifying Party relating to this Agreement including an
Indemnifying Party's manufacture, sale, use, lease or other
disposition of Licensed Products, and related materials, or other use
of the information and rights granted hereunder. Any knowledge of
LICENSEE's or its sublicensee's activities by LICENSOR or its
representatives shall in no way impose any liability on LICENSOR
or reduce the responsibilities of LICENSEE hereunder or relieve it
from any of its obligations and warranties under this Agreement.
7 FUTURE PATENTS.
7.1 Future Patents. Each party, at its cost, shall have the right
to file patent applications in the United States and in foreign
countries covering any invention made by such party.
7.2 Improvements and Modifications. (a) Any future
improvements or modifications invented or developed by or on
behalf of LICENSEE, LICENSEE's sublicensees and LICENSOR
after the Effective Date of this Agreement, if any, which relate in any
way to or are useful in the design, operation, manufacture and
assembly of Licensed Products, and/or to the suspensions or other
components used or usable in Licensed Products shall not be
included in this Agreement. Upon written request by the non-
inventing party, LICENSOR and LICENSEE shall negotiate with
each other regarding the grant of nonexclusive rights and licenses to
use such improvements and modifications, but neither party shall be
obligated to grant such rights and licenses to one another.
(b) During the term of this Agreement each of the parties
hereto agrees to inform the other in writing (without any obligation
to reveal details which would be confidential information), at least as
frequently as once a year in January of each calendar year, if any
significant improvements or modifications have been made relating
to the subject matter of this Agreement, and as to the general nature
of any such improvements and modifications.
(c) Notwithstanding the foregoing, LICENSOR may, but shall
not be required to, voluntarily and without additional cost to
LICENSEE disclose certain information relating to future
improvements and modifications and license to LICENSEE rights in
such certain future improvements and modifications, and any
information so disclosed will be considered Technical Information
which LICENSEE shall be obligated to keep confidential pursuant to
Section 12.1 of this Agreement. In connection therewith,
LICENSOR, may voluntarily add patents and/or patent applications
to Schedule A hereof. No disclosure of any information by
LICENSOR shall in any way establish a course of dealing or
otherwise require LICENSOR to make any future disclosure of
information under this Agreement.
7.3 Foreign Patent Applications. During the term of this
Agreement, LICENSEE shall have the right to designate that any
patent application now or hereafter listed on or incorporated into
Schedule A shall be filed or maintained in any foreign country
included in the Licensed Territory. If so designated and if legally
possible to do so, LICENSOR agrees to promptly file, prosecute and
maintain such applications and resulting patents, and LICENSEE
shall pay to LICENSOR the complete cost, including reasonable
attorney's fees, to file, prosecute and maintain any such patent
application and resulting patents specifically so designated by
LICENSEE.
8 TECHNOLOGY TRANSFER.
8.1. Materials. Upon request by LICENSEE, during the term
of this Agreement and when mutually convenient to LICENSOR and
LICENSEE, LICENSOR shall supply LICENSEE with small
quantities of materials related to Licensed Products for experimental
use only by LICENSEE, and shall charge LICENSEE $750 per
man/day plus the cost of any other materials used in making such
materials, plus the cost of shipping such materials to LICENSEE.
Each invoice submitted by LICENSOR for such service shall include
detailed explanations of the charges, and, if requested by
LICENSEE, copies of receipts. The parties acknowledge that
LICENSOR has no obligation to transfer to LICENSEE any
Technical Information other than as may be embodied in such
sample materials, and that, other than sample materials, if any, that
may be supplied by LICENSOR as aforesaid, LICENSEE will be
acquiring materials from authorized suppliers other than
LICENSOR.
8.2 Inquiries. LICENSEE and LICENSOR may also at any time
during the term of this Agreement make reasonable inquiry by
telephone, facsimile or mail to one another in regard to any
information or data furnished pursuant to this Agreement.
8.3 Visits. During all visits by either party to the facilities of
the other party, visitors shall comply with all reasonable rules of the
host company, and each party to this Agreement will indemnify and
hold the other party harmless from any liability, claim or loss
whatsoever (i) for any injury to, or, death of, any of its employees or
agents while such persons are present at the facility of the other
party; and (ii) for any damages to its own property or to the property
of any such employee or agent which may occur during the presence
of any such person at the facility of the other party, regardless of
how such damage occurs.
8.4 Sole Purpose. Any documentation or information supplied
pursuant to this Agreement by either party to the other shall be used
solely for the purposes set forth in this Agreement.
9 INTELLECTUAL PROPERTY PROTECTION
RESPONSIBILITIES.
9.1 Proprietary Rights: Notices. Each party shall provide
appropriate notices of patents, or other similar notice of the patent
rights of the other party on all products utilizing the patented
inventions of the other party. Either party may add its own patent
notice to any copy or embodiment which contains its patented
inventions.
9.2 LICENSOR Exclusive Owner. LICENSEE hereby
acknowledges LICENSOR as purporting to be the sole and exclusive
owner of the patents and patent applications listed on Schedule A,
and that, except for the rights granted hereunder, LICENSEE shall
not have any rights or attempt to assert any ownership rights in and
to those patents and patent applications.
10 TERM AND TERMINATION.
10.1 Term. The term of this Agreement shall extend from the
Effective Date of this Agreement to the date of termination of this
Agreement. Unless sooner terminated or extended, as herein
provided for below, this Agreement shall terminate upon the
expiration of the later of (A) the last to expire of the patents now or
hereafter listed in Schedule A hereof, and (B) the expiration of the
period in which LICENSEE is obligated to maintain confidential
Technical Information of LICENSOR pursuant to Section 12.1
hereof.
10.2 Termination by LICENSEE. LICENSEE may terminate
this Agreement effective as of December 31, 2005 or as of any
anniversary thereof by giving LICENSOR prior notice thereof unless
sooner terminated as hereinafter provided. Such notice shall be made
in writing and shall be given between 60 and 90 days prior to the
effective date for which such termination is to be effective. If
LICENSEE decides to terminate this Agreement for any reason,
LICENSEE shall provide LICENSOR, along with the
aforementioned notice of termination, with a written report
describing the reasons for such termination.
10.3 Termination by LICENSOR. LICENSOR may terminate
this Agreement at any time effective as of December 31, 2003 or as
of any anniversary thereof upon at least 30 days' notice to
LICENSEE for any reason, provided, however, that LICENSOR
shall give LICENSEE at least one years' notice of any early
termination under this Section 10.3 if LICENSEE is producing and
selling Licensed Products hereunder. Notwithstanding the foregoing,
LICENSOR may terminate this Agreement at any time upon at least
30 days' notice to LICENSEE if LICENSEE shall have failed to
make any payment when due or at any time breach any material term
of this Agreement and such payment is not made or such breach is
not cured within any applicable cure period specified in Article 11 of
this Agreement, or repeatedly provide inaccurate reports hereunder,
or if there has been a cessation by LICENSEE of general operations
or of work related to Licensed Products.
10.4 Effect of Termination. If this Agreement expires or is
terminated for any reason whatsoever, in addition to any other
remedies which one party may have against the other: (1) all of
LICENSEE's rights and licenses under this Agreement shall cease,
and LICENSEE shall immediately return to LICENSOR all
Technical Information furnished to LICENSEE under this
Agreement, together with all reproductions, copies and summaries
thereof; provided, however, that LICENSEE may retain solely for
archival purposes one copy of all such documents in its legal
department files, (2) at LICENSOR's option, LICENSEE shall,
within 30 days of the date of such termination, either (A) sell and
deliver to LICENSOR at LICENSEE's direct cost of manufacture
any Licensed Products which shall then be in the possession of
LICENSEE, and, if requested by LICENSOR, LICENSEE shall
finish and deliver to LICENSOR any Licensed Products in the
process of manufacture as soon as possible and, in any case, not later
than 30 days after receiving LICENSOR's request, and/or (B) with
respect to any unsold inventory and work in the process of
manufacture, to complete such work in process and sell any
remaining inventory during the period not to exceed six months from
the date of termination or expiration of this Agreement provided that
at the completion of such six-month period, LICENSEE shall
promptly destroy and dispose of any Licensed Products (and
Licensed Products in the process of manufacture) not sold under this
Section 10.4 and (3) if this Agreement is terminated for any reason
on or before December 31, 2005, 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, or
Licensed Products, 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, 3.5, 4.2, 4.3, 4.4, 4.5, 4.6, 6.1, 6.2, 7.2, 8.3, 8.4, 10.4, 12.1, and
Articles 13 and 14 shall survive any termination or expiration of this
Agreement.
11 EVENTS OF DEFAULT AND REMEDIES.
11.1 Events of Default. Each of the following events shall
constitute an "Event of Default" under this Agreement:
11.1.1 (a) A party's failure to make any payment due in a
timely manner or a party's material breach or material failure to
punctually perform any of its duties and obligations under this
Agreement, which material breach or failure, if curable, remains
uncured for thirty (30) days after written notice of such breach or
failure is received by the breaching party; or (b) a material
misrepresentation is made by a party in any representation or
warranty contained in this Agreement and the misrepresented facts or
circumstances, if curable, remain uncured thirty (30) days after
written notice of such misrepresentation is received by the breaching
party; and, in either case, if such breach or misrepresentation is not
curable, termination shall occur thirty (30) days after such
misrepresentation or breach at the option of the non-breaching party;
or
11.1.2 The failure by a party upon request to provide the
other party with adequate assurances of its performance of all
obligations under this Agreement upon: (a) such first party's filing of
a voluntary petition in bankruptcy; (b) the filing of any involuntary
petition to have such first party declared bankrupt which has not
been dismissed within ninety (90) days of its filing; (c) the
appointment of a receiver or trustee for such first party which has not
been rescinded within ninety (90) days of the date of such
appointment; or (d) such first party otherwise becoming insolvent or
otherwise making an assignment for the benefit of creditors.
11.2 Default by a Party. If there occurs an Event of Default
with respect to a party, the other party may:
(a) seek damages; and/or
(b) seek an injunction or an order for mandatory or specific
performance; and/or
(c) terminate this Agreement and the licenses granted to
LICENSEE hereunder whereupon the non-defaulting party shall have
no further obligations under this Agreement except those which
expressly survive termination, and except with respect to royalty
payments due and owing to LICENSOR as of the termination date or
any subsequent period specified in Section 10.4.
12 CONFIDENTIALITY.
12.1 Confidential Information. (a) LICENSEE agrees for itself,
its sublicensees, and their employees and agents that for twenty (20)
years from the later of the Effective Date of this Agreement or the
latest date of its receipt of information disclosed to LICENSEE by
LICENSOR pursuant to this Agreement, such information shall be
held in confidence; provided, however, there shall be no obligation
to treat as confidential information which is or becomes available to
the public other than through a breach of this obligation, or which
was already possessed by LICENSEE in writing (or otherwise
provable to be in the possession of LICENSEE) prior to the Effective
Date of this Agreement (and was not received from LICENSOR) or
which is shown by LICENSEE to have been received by it from a
third party who had the legal right to so disclose it without
restrictions and without breach of any agreement with LICENSOR or
its licensees. LICENSOR shall affix an appropriate legend on all
written documentation given to LICENSEE which contains
confidential information. LICENSEE acknowledges that the list of
patent applications contained on Schedule A is confidential
information of LICENSOR. If confidential information is otherwise
conveyed orally by LICENSOR, LICENSOR shall specify to
LICENSEE at the time such information is being conveyed (or in a
subsequent letter referring to the conversation) that the information
conveyed is confidential. It is understood and agreed that, unless
otherwise provided in a separate agreement between LICENSEE and
LICENSOR, LICENSEE has no obligation hereunder to provide
LICENSOR with any confidential or proprietary information, and
that LICENSOR shall have no obligation hereunder to LICENSEE to
maintain in confidence or refrain from commercial or other use of
any information which LICENSOR is or becomes aware of under
this Agreement. The terms and provisions of this Agreement or any
other agreement between the parties shall not be considered
confidential, and the parties hereto acknowledge that, pursuant to the
Securities Exchange Act of 1934, as amended, and the regulations
promulgated thereunder, LICENSOR may file copies of this
Agreement with the Securities and Exchange Commission and with
NASDAQ and with any other stock exchange on which
LICENSOR's securities may be listed. LICENSEE agrees that for
the period of time during which LICENSEE is obligated to keep
information confidential hereunder, LICENSEE will not make, use,
sell, lease or otherwise dispose of products using or directly or
indirectly derived from Licensed Products, Light Valves, or
Components, or which otherwise comprise suspended particles,
which when subjected to a suitable electric or magnetic field, orient
to produce a change in the optical characteristics of the suspension
("SPD Technology") unless an agreement between LICENSOR and
LICENSEE permitting it to do so is in full force and effect and the
royalties, if any, provided in such agreement are being paid to
LICENSOR on such products. The foregoing restriction shall not
apply to products (i) which do not directly or indirectly incorporate
SPD Technology, such as, but not limited to, liquid crystal devices,
or electrochromic devices, or (ii) which incorporate technology
involving suspended particles, which when subjected to a suitable
electric or magnetic field, orient to produce a change in the optical
characteristics of the suspension but which is independently
developed and which is not in any way directly or indirectly derived
from any Technical Information of LICENSOR or its licensees,
sublicensees, or any of their affiliates. LICENSEE shall have the
burden of proving by clear and convincing evidence that the
availability of any exception of confidentiality exists or that the
foregoing restrictions do not apply to a particular product. Nothing
contained in this section, however, shall be construed as granting
LICENSEE any rights or licenses with respect to any Technical
Information or patents of LICENSOR or its other licensees or their
sublicensees.
(b) LICENSEE will have the right provide materials to, and to
disclose information, to a subcontractor relating to this Agreement;
provided, however, that LICENSEE shall only disclose such
information as is strictly necessary to enable said subcontractor to
perform its manufacturing task, and provided that prior to disclosing
any information to said subcontractor, said subcontractor has signed
a secrecy agreement with LICENSEE at least as protective of
LICENSOR's Technical Information as the provisions of this
Agreement, including, without limitation, said subcontractor's
specific agreement to be bound by the provisions of Section 12.1
hereof to the same extent as LICENSEE. For such purposes,
LICENSEE may develop a standard form of secrecy agreement for
LICENSOR's approval, after which LICENSEE may use such
secrecy agreement with all subcontractors without LICENSOR's
prior approval of the secrecy agreement being necessary. LICENSEE
shall have all subcontractors sign said secrecy agreement prior to the
disclosure of Technical Information to said subcontractor, and
LICENSEE shall send LICENSOR a copy of every such secrecy
agreement within thirty (30) days after the execution thereof.
13 WARRANTIES AND REPRESENTATIONS.
13.1 Reciprocal Representations. Each party represents and
warrants to the other that:
13.1.1 Valid Agreement. The execution and delivery of this
Agreement by the officer or representative so doing, and the
consummation of the transactions contemplated hereby, have been
duly authorized by all necessary corporate action by LICENSOR and
LICENSEE and this Agreement is a valid and binding obligation
enforceable against the parties in accordance with its terms, except
to the extent limited by bankruptcy, insolvency, moratorium and
other laws of general application relating to general equitable
principles;
13.1.2 No Conflicts. Nothing herein conflicts with its rights
and obligations pursuant to any agreement by a party and any other
entity; and
13.1.3 Publicity. The parties shall have the right to use non-
confidential information, including but not limited to information
concerning this Agreement, for marketing, sales, technical
assistance, investor relations, disclosure and public relations
purposes, and that information permitted to be disclosed by a party
under this Section 13.1.3 may appear on such party's (or its
subsidiaries' or sublicensees') Internet web site, along with links to
the Internet web sites, and specific pages therefrom, of the other
party and its subsidiaries and sublicensees.
13.2 LICENSOR Representations. LICENSOR represents and
warrants, for the benefit of LICENSEE, that:
13.2.1 Title. As of the date hereof, LICENSOR represents and
warrants that it has the right to convey the rights and licenses
granted by this Agreement, and otherwise to perform its obligations
under this Agreement. LICENSOR has caused its employees who are
employed to do research, development, or other inventive work to
disclose to it any invention or information within the scope of this
Agreement and to assign to it rights in such inventions and
information in order that LICENSEE shall receive, by virtue of this
Agreement, the licenses granted to it under Section 2.1 hereof.
13.2.2 Infringement. As of the date hereof, LICENSOR is not
aware of any claim for patent infringement or the misappropriation
of trade secrets, being asserted against it by any third party; or of any
infringement of the patents listed on Schedule A hereto by any entity.
13.2.3 Patents in Force. To the best of LICENSOR's
knowledge, all of the patents listed on Schedule A hereto are
currently in force.
13.3 No Warranty. LICENSOR and LICENSEE make no
guaranty or warranty to one another under this Agreement (a) that
LICENSEE will be able to develop, manufacture, sell or otherwise
commercialize Licensed Products, or (b) as to the validity of any
patent.
14 MISCELLANEOUS.
14.1 Applicable Law. This Agreement shall be interpreted,
construed, governed and enforced in accordance with and governed
by the laws of the State of New York, and LICENSOR and
LICENSEE hereby submit to the exclusive jurisdiction of the state or
federal courts located in the County of Nassau and State of New
York for such purposes.
14.2 Confidentiality In Court Proceeding. In order to protect
and preserve the confidential information of a party which the parties
recognize may be exchanged pursuant to the provisions of this
Agreement, the disclosing party may request, and the receiving party
shall not oppose, the court in any action relating to this Agreement to
enter a protective order to protect information which is confidential
information under Section 12.1 and to seal the record in the action or
to hold the proceedings, or portion of the proceedings, in camera;
provided, that the requested terms do not prejudice the receiving
party's interests. Nothing, however, shall preclude either party from
thereafter moving to unseal its own records or to have matter and
information designated as confidential under any relevant protective
order designated otherwise in accordance with the circumstances as
they shall appear at that time.
14.3 Severability. If any provision of this Agreement is
declared or found to be illegal, unenforceable or void, the parties
shall negotiate in good faith to agree upon a substitute provision that
is legal and enforceable and is as nearly as possible consistent with
the intentions underlying the original provision. If the remainder of
this Agreement is not materially affected by such declaration or
finding and is capable of substantial performance, then the remainder
shall be enforced to the extent permitted by law.
14.4 Waiver. Unless agreed to by the parties in writing to the
contrary, the failure of either party to insist in any one or more
instances upon the strict performance of any one or more of the
provisions of this Agreement, or to exercise any right contained in
this Agreement or provided by law, shall not constitute or be
construed as a waiver or relinquishment of the performance of such
provision or right or the right subsequently to demand such strict
performance or exercise of such right, and the rights and obligations
of the parties shall continue unchanged and remain in full force and
effect.
14.5 Captions. The captions and headings in this Agreement
are inserted for convenience and reference only and in no way define
or limit the scope or content of this Agreement and shall not affect
the interpretation of its provisions.
14.6 Assignment. This Agreement shall be binding on and
shall inure to the benefit of the parties and their successors and
assigns. However, LICENSEE agrees that it shall not assign this
Agreement or its rights hereunder without the prior written consent
of LICENSOR except to a successor to substantially all of its
business relating to Light Valves and whose obligations hereunder
are guaranteed to LICENSOR by LICENSEE. LICENSOR may
assign all of its rights and obligations hereunder to any successor to
any of its business interests or to any company controlling or
controlled by LICENSOR. All assignees shall expressly assume in
writing the performance of all the terms and conditions of this
Agreement to be performed by the assigning party, and an originally
signed instrument of such assumption and assignment shall be
delivered to the non-assigning party within 30 days of the execution
of such instrument.
14.7 Schedules. All Schedules attached to this Agreement
shall be deemed to be a part of this Agreement as if set forth fully in
this Agreement.
14.8 Entire Agreement. This Agreement constitutes the entire
understanding and agreement between LICENSOR and LICENSEE
with respect to the subject matter hereof, supersedes all prior
agreements, proposals, understandings, letters of intent, negotiations
and discussions with respect to the subject matter hereof and can be
modified, amended, supplemented or changed only by an agreement
in writing which makes specific reference to this Agreement and
which is executed in writing by the parties; provided, however, that
either party may unilaterally waive in writing any provision imposing
an obligation on the other.
14.9 Notices. Any notice required or permitted to be given or
made in this Agreement shall be in writing and shall be deemed
given on the earliest of (i) actual receipt, irrespective of method of
delivery, (ii) on the delivery day following dispatch if sent by express
mail (or similar next day courier service), or (iii) on the sixth day
after mailing by registered or certified air mail, return receipt
requested, postage prepaid and addressed as follows:
LICENSOR: ▇▇▇▇▇▇ ▇. ▇▇▇▇, Chairman and CEO
Research Frontiers Incorporated
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇-▇▇▇▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
LICENSEE: So-▇▇▇▇▇ ▇▇▇, Vice President
SPD Systems, Inc.
▇▇▇ ▇. ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇-▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ ▇▇▇
Facsimile: ▇▇▇-▇▇▇-▇▇▇▇
Telephone: ▇▇▇-▇▇▇-▇▇▇▇
or to such substitute addresses and persons as a party may designate
to the other from time to time by written notice in accordance with
this provision.
14.10 Bankruptcy Code. In the event that either party should
file a petition under the federal bankruptcy laws, or that an
involuntary petition shall be filed against such party, the parties
intend that the non-filing party shall be protected in the continued
enjoyment of its rights hereunder to the maximum feasible extent
including, without limitation, if it so elects, the protection conferred
upon licensees under section 365(n) of Title 17 of the U.S. Code.
Each party agrees that it will give the other party immediate notice of
the filing of any voluntary or involuntary petition under the federal
bankruptcy laws.
14.11 Construction. This Agreement and the exhibits hereto
have been drafted jointly by the parties and in the event of any
ambiguities in the language hereof, there shall no be inference drawn
in favor or against either party.
14.12 Counterparts. This Agreement may be executed in any
number of counterparts, each of which shall be deemed an original,
but all of which shall constitute one and the same instrument.
14.13 Status of the Parties. The status of the parties under this
Agreement shall be solely that of independent contractors. No party
shall have the right to enter into any agreements on behalf of the
other party nor shall it represent to any person that it has such right
or authority.
The parties, through their duly authorized representatives, and
intending to be legally bound, have executed this Agreement, as of
the date and year first above written, whereupon it became effective
in accordance with its terms.
RESEARCH FRONTIERS INCORPORATED
By:_____________________________________________
▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President
Date: October 7, 2002
SPD SYSTEMS, INC.
By:___________________________________________
So-▇▇▇▇▇ ▇▇▇, Vice President
Date: October 7, 2002
Schedule A
(As of October 7, 2002)
LIST OF UNITED STATES, INTERNATIONAL AND
FOREIGN PATENTS AND PATENT APPLICATIONS
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
Schedule A (Continued)
Date Expiration
Patents in the United States Issued Date
5,279,773 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve Incorporating A Suspension
Stabilized With A Block Polymer" 1/18/94 3/23/12
5,325,220 ▇▇▇▇▇▇ ▇. ▇▇▇▇
"Light Valve With Low Emissivity
Coating As Electrode" 6/28/94 3/9/13
5,463,491 ▇▇▇▇▇▇ ▇. Check III
"Light Valve Employing a Film Comprising
An Encapsulated Liquid Suspension And
Method of Making Such Film" 10/31/95 11/6/12
5,463,492 ▇▇▇▇▇▇ ▇. Check III
"Light Modulating Film of Improved
Clarity For A Light Valve" 10/31/95 11/6/12
5,461,506 ▇▇▇▇▇▇ ▇. Check III et al
"Light Valve Suspensions Containing A
Trimellitate Or Trimesate And Light
Valves Containing The Same" 10/24/95 5/11/13
5,467,217 ▇▇▇▇▇▇ ▇. Check III et al
"Light Valve Suspensions and Films
Containing UV Absorbers and Light
Valves Containing The Same" 11/14/95 5/11/13
5,516,463 ▇▇▇▇▇▇ ▇. Check III et al
"Method of Making Light
Polarizing Particles" 05/14/96 07/08/14
5,650,872 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Light Valve Containing
Ultrafine Particles" 07/22/97 07/22/14
5,728,251 ▇▇▇▇▇▇ ▇. Check, III
"Light Modulating Film of Improved
UV Stability For a Light Valve" 03/17/98 09/27/1
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/xx
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 2/26/19
6,271,956B1 ▇▇▇▇▇▇ ▇. ▇▇▇▇ et al
"Method and Materials for Enhancing the
Adhesion of SPD Films and Light Valves
Comprising Same" 08/07/01 03/02/20
6,301,040 ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ et al
"SPD Films Having Improved Properties and
Light Valves Comprising Same" 10/09/01 05/24/20
6,334,967 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
PENDING UNITED STATES APPLICATIONS
Serial Number Filing Date
[Confidential Information Omitted and filed separately with the Securities
and Exchange Commission]