LIMITED NONEXCLUSIVE
LICENSE AGREEMENT
FOR
MICROPOWER ULTRA-WIDEBAND IMPULSE RADAR
FOR TRANSPORTATION
FIELD OF USE
BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
AND
AMERIGON, INCORPORATED
LLNL CASE NO. TL-1556-98
▇▇▇▇▇▇▇▇ LIVERMORE NATIONAL LABORATORY
UNIVERSITY OF CALIFORNIA
▇.▇. ▇▇▇ ▇▇▇, ▇-▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
INDUSTRIAL PARTNERSHIPS AND COMMERCIALIZATION
JUNE, 1998
TABLE OF CONTENTS
1. BACKGROUND . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
2. DEFINITIONS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2
3. LICENSE GRANT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
4. ROYALTIES AND PAYMENTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6
5. DUE DILIGENCE. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9
6. PROGRESS AND ROYALTY REPORTS . . . . . . . . . . . . . . . . . . . . . . . . . 10
7. BOOKS AND RECORDS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
8. LIFE OF THE AGREEMENT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
9. DISPUTES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12
10. TERMINATION BY THE REGENTS. . . . . . . . . . . . . . . . . . . . . . . . . . 13
11. TERMINATION BY LICENSEE . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
12. DISPOSITION OF LICENSED PRODUCT(S) ON HAND UPON TERMINATION . . . . . . . . . 14
13. PATENT PROSECUTION AND MAINTENANCE. . . . . . . . . . . . . . . . . . . . . . 15
14. USE OF NAMES AND TRADEMARKS AND NONDISCLOSURE AGREEMENT . . . . . . . . . . . 17
15. LIMITED WARRANTY. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
16. PATENT INFRINGEMENT . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
17. WAIVER. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
18. ASSIGNABILITY . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
19. INDEMNIFICATION AND INSURANCE . . . . . . . . . . . . . . . . . . . . . . . . 20
20. LATE PAYMENTS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
21. NOTICES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
22. GOVERNING LAWS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23
23. PATENT MARKING. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
24. GOVERNMENT APPROVAL OR REGISTRATION . . . . . . . . . . . . . . . . . . . . . 24
25. EXPORT CONTROL LAWS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
26. FORCE MAJEURE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
27. U.S. COMPETITIVENESS. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
28. MISCELLANEOUS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 25
EXHIBIT A -"THE REGENTS' LICENSED PATENT(S)\ . . . . . . . . . . . . . . . . . . . 28
EXHIBIT B - LICENSE FEES AND ROYALTY RATE. . . . . . . . . . . . . . . . . . . . . 31
EXHIBIT C - FIELD OF USE . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33
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LIMITED NONEXCLUSIVE LICENSE AGREEMENT FOR
MICROPOWER ULTRA-WIDEBAND IMPULSE RADAR
FOR TRANSPORTATION FIELD OF USE
This Agreement is by and between THE REGENTS of the University of California
(hereinafter referred to as "THE REGENTS"), a corporation organized and
existing under the laws of the State of California, and having its statewide
administration address at ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇,
and Amerigon, Incorporated, a corporation organized and existing under the
laws of the State of California and having its principal place of business at
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇ (hereinafter referred to as
"LICENSEE"). Both THE REGENTS and LICENSEE are hereinafter jointly referred
to as the "Parties". Upon THE REGENTS receipt of LICENSEE's payment of the
License Issue Fee described in Exhibit B (LICENSE FEES AND ROYALTY RATE),
this Agreement is effective from the date of execution by the last signing
party ("Effective Date"). This Agreement and the resulting license is
subject to overriding obligations to the Federal Government pursuant to the
provisions of THE REGENTS' Contract No. W-7405-ENG-48 with the United States
Department of Energy (DOE) for the operation of the ▇▇▇▇▇▇▇▇ Livermore
National Laboratory ("LLNL") and ▇▇▇'▇ ▇▇▇▇▇ of patent rights to THE REGENTS.
1. BACKGROUND
1.1 The development of the Licensed Patents (as later defined herein) was
sponsored in part by the U.S. Department of Energy ("DOE") and, as a
consequence, this Agreement and the resulting license is subject to
overriding obligations to the Federal Government pursuant to the
provisions of the applicable contract and/or regulations.
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1.2 THE REGENTS is desirous that the Licensed Patents be developed and
utilized to the fullest extent so that the benefits can be enjoyed by
the general public, and is willing to grant a nonexclusive license
thereunder.
1.3 LICENSEE has represented to THE REGENTS to induce THE REGENTS to enter
into this Agreement, that LICENSEE is experienced in the development,
production, manufacture, marketing and sale of products similar to
the "Licensed Product(s)" (as later defined herein), and that it
shall commit itself to utilizing THE REGENTS' Licensed Patents
commercially so that public benefit and royalty income to THE
REGENTS shall result therefrom; and
1.4 LICENSEE represents Licensed Product(s) or part thereof shall be
integrated into stand alone/end use products by LICENSEE and not
sold by the LICENSEE in any other form, such as electronic chips or
circuit boards independent of an integrated stand alone or end use
product except for complete functioning circuit boards sold as end
products less enclosures to original equipment manufacturers.
1.5 LICENSEE desires to obtain a limited nonexclusive license under THE
REGENTS' Licensed Patents upon the terms and conditions hereinafter set
forth.
THEREFORE the parties agree as follows:
2. DEFINITIONS
2.1 "Affiliate(s)" of a party means any entity which, directly or indirectly,
controls such party, is controlled by such party or is under common control
with such party;
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"control" for these purposes being defined as the actual, present
capacity to elect a majority of the directors of such Affiliate, or
if not, the capacity to elect at least half of the members that control
at least fifty percent (50%) of the outstanding stock or other
voting rights entitled to elect directors; provided, however, that
in any country where the local law shall not permit foreign equity
participation of a majority, then an "Affiliate" shall include any
company in which LICENSEE shall own or control, directly or
indirectly, the maximum percentage of such outstanding stock or
voting rights permitted by local law. Each reference to LICENSEE
herein shall be meant to include its Affiliate(s).
2.2 "Field of Use" shall mean the applications of the Licensed Product(s) as
listed in Exhibit C (FIELD OF USE), which is attached hereto.
2.3 "Licensed Patent(s)" means the United States patents and corresponding
foreign patents enumerated in Exhibit A ("THE REGENTS' LICENSED
PATENT(S)") attached to this Agreement. Licensed Patents shall not
include improvement patents, continuations in part applications,
patents and certificates of addition and utility models and patents
which may issue thereupon.
2.4 A "Licensed Product" shall mean any and all products and methods which:
(a) is covered in whole or in part by an issued, unexpired claim or a
pending claim contained in THE REGENTS' Licensed Patent(s) in the
Territory and/or
(b) which employ or are produced by the practice of the inventions
claimed in issued patents of the Licensed Patents and/or
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(c) employ or are produced by the practice of the invention claimed in
THE REGENTS Licensed Patent(s) whose manufacture, use or sale would
constitute, but for the license granted to LICENSEE pursuant to this
Agreement, an infringement of any claim in THE REGENTS' Licensed
Patents.
2.5 "Net Sales" shall mean LICENSEE's ▇▇▇▇▇▇▇▇ for Licensed Product(s)
produced hereunder, less the sum of the following:
(a) discounts allowed in amounts customary in the trade;
(b) sales taxes, customs and tariff duties, and/or use taxes which are
directly imposed and are with reference to particular sales;
(c) outbound transportation prepaid or allowed;
(d) amounts allowed or credited on returns; and
(e) with respect to foreign sales, LICENSEE may reduce the Net Sales by
any value-added taxes imposed by the government of such countries
before computing the royalties due.
Net Sales shall not include sales to the U.S. Government. No deductions
shall be made for commissions paid to individuals whether they be with
independent sales agencies or regularly employed by LICENSEE and on its
payroll, or for cost of collections. Licensed Product(s) shall be
considered "sold" when billed out or invoiced.
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2.6 "Net Selling Price" as used in this Agreement for the purpose of computing
royalties shall mean gross invoice selling price of the Licensed Product,
less the deductions under section 2.5. Net Selling Price to the U.S.
Government shall be reduced by the amount of the royalty payment.
2.7 "Territory": Worldwide
3. LICENSE GRANT
3.1 Subject to the terms of this Agreement, THE REGENTS hereby grants to the
LICENSEE a nontransferable, nonexclusive, royalty-bearing license
under THE REGENTS' Licensed Patents to make, have made, use, lease,
and sell the Licensed Product(s) in the Territory as limited by
Article 13 (PATENT PROSECUTION AND MAINTENANCE) for the
Field-of-Use set forth under Article 2.2 for the term set forth
under Article 8 (LIFE OF THE AGREEMENT), unless sooner terminated
according to the terms hereof.
The license granted hereunder shall not be construed to confer any rights
upon the LICENSEE by implication, estoppel, or otherwise as to any
technology or know-how not specifically set forth herein.
The LICENSEE is not licensed to make, have made, use, lease or sell
electronic chips, separate components or circuit boards covered by or
derived from THE REGENTS Licensed Patent(s) or Licensed Product(s) to
others independent of an integrated stand alone or end use Licensed
Product except for complete functioning circuit boards sold as end
products less enclosures to original equipment manufacturers.
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Any license granted hereunder shall be subject to the prior license
retained by the Federal Government which consists of a non-exclusive,
nontransferable, irrevocable, paid-up license to practice THE REGENTS
Licensed Patent(s) for or on behalf of the United States throughout the
world.
3.2 The parties acknowledge that the Federal Government has certain march-in
rights to THE REGENTS' Licensed Patent(s) in accordance with 35 USC 203.
3.3 No rights to sublicense are granted under this license Agreement.
4. ROYALTIES AND PAYMENTS
4.1 The license issue fee and royalty rate for the license that is the subject
of this Agreement shall be in accordance with this Article 4.
4.2 Royalties and fees due hereunder shall accrue and be paid to THE REGENTS
according to this Article 4 and the attached Exhibit B (LICENSE FEES AND
ROYALTY RATE), which is incorporated herein.
4.3 Where Licensed Product(s) are not sold, but are otherwise disposed of or
used, the Net Selling Price of such products and/or processes for
the purposes of computing royalties shall be the selling price at
which products of similar kind and quality, sold in similar
quantities, are currently being offered for sale by the LICENSEE.
Where such products are not currently being offered for sale by the
LICENSEE, the Net Selling Price of products otherwise disposed of
or used, for the purpose of computing royalties, shall be the
average selling price at which products of similar kind and
quality, sold in similar
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quantities, are then currently being offered for sale by other
manufacturers. Where such products are not currently sold or offered
for sale by others, then the Net Selling Price, for the purpose
of computing royalties, shall be the LICENSEE's cost of manufacture
determined by LICENSEE's customary accounting procedures, plus the
LICENSEE's standard ▇▇▇▇-up. The LICENSEE shall keep track of Licensed
Product(s) used internally by the LICENSEE for process development, test,
demonstration, prototype samples for the purpose of creating customer
interest or acceptance, or Licensed Product(s) manufactured but unsold and
unused but these shall not be subject to royalty payments until otherwise
used.
4.4 Under this Agreement, Licensed Product(s) shall be considered to be sold
when invoiced, or if not invoiced, when delivered for use or lease to a
third party or use by LICENSEE not excluded above, except that upon
expiration of all Licensed Patents covering such Licensed Product(s), or
upon any termination of license, all shipments made on or prior to the day
of such expiration or termination which have not been billed out prior
thereto shall be considered as sold (and therefore subject to royalty).
Royalties paid on Licensed Product(s) which are not accepted by the
LICENSEE's customer shall be credited to the LICENSEE.
4.5 The LICENSEE shall pay to THE REGENTS a minimum annual royalty as defined
in Exhibit B (LICENSE FEE AND ROYALTY RATE). This minimum annual royalty
shall be paid to THE REGENTS by January 1 of each year and shall be
credited against the earned royalty due and owing for that calendar year.
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4.6 The LICENSEE shall pay to THE REGENTS an earned royalty, as defined in the
attached Exhibit B (LICENSE FEE AND ROYALTY RATE), on all Licensed
Product(s) sold or used by the LICENSEE.
4.7 Earned royalties for Licensed Product(s) sold under this Agreement in any
country in the Territory shall accrue to THE REGENTS for the duration of
THE REGENTS' Licensed Patent(s) in the United States.
4.8 Earned royalties accruing to THE REGENTS shall be paid to THE REGENTS by
February 28, May 31, August 31, and November 30. Each payment to THE
REGENTS will be for any and all royalties which accrued to THE REGENTS
within the most recently completed calendar quarter, less any credits for
minimum royalties paid per Article 4.5 above.
4.9 All monies due THE REGENTS shall be payable in United States funds
collectible at par in San Francisco, California. When Licensed Product(s)
are sold for monies other than United States dollars, the earned royalties
will first be determined in the foreign currency of the country in which
Licensed Product(s) were sold and then converted into equivalent United
States Funds. The exchange rate will be that established by the Bank of
America in New York, New York on the last business day of the reporting
period and will be quoted in the Continental terms methods of quoting
exchange rates (local currency per U.S. dollar). The LICENSEE shall be
responsible for all bank transfer charges.
4.10 If at any time legal restrictions prevent the prompt remittance by the
LICENSEE of part or all royalties due with respect to any country outside
the United States where a
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Licensed Product is sold, the LICENSEE shall have the right and option
to make such payments by depositing the amount thereof in local
currency to THE REGENTS' account in a bank or other depository in such
country.
4.11 No royalties shall be collected or paid hereunder on Licensed Product(s)
distributed to or used by the United States Government, including any
agency thereof and the amount charged for such sales to the United States
Government will be reduced by an amount equal to the royalty otherwise due
THE REGENTS.
4.12 Notwithstanding any other provision of this Agreement, no royalty payments
are due or payable on any products not covered by outstanding patent
filing(s) or then currently valid Licensed Patent(s).
5. DUE DILIGENCE
5.1 The LICENSEE, upon execution of this Agreement, shall diligently proceed
with the development, manufacture and sale of Licensed Product(s)
and shall earnestly and diligently endeavor to market the same
within a reasonable time after execution of this Agreement and in
quantities sufficient to meet the market demands, and to comply
with the minimum royalties specified in part C of Exhibit B
(LICENSE FEE AND ROYALTY RATE). LICENSEE is solely responsible for
designing, developing, engineering and commercializing the Licensed
Product(s).
5.2 The LICENSEE shall be entitled to exercise prudent and reasonable business
judgment in meeting its due diligence obligations in accordance with this
Agreement.
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5.3 The LICENSEE shall demonstrate a continuing effort to market the Licensed
Product(s) to meet market demands following the LICENSEE's first offer of
Licensed Product(s) for sale.
6. PROGRESS AND ROYALTY REPORTS
6.1 Prior to the first sale of Licensed Product(s) anywhere in the world,
the LICENSEE shall submit a progress report covering the LICENSEE's
activities related to the development and testing of the Licensed
Product(s). After the first such sale and/or commercial use, the
LICENSEE shall submit a quarterly royalty report by February 28,
May 31, August 31, and November 30 of each calendar year for the
most recently completed calendar quarter, giving such particulars
of the business conducted by the LICENSEE under this Agreement as
shall be pertinent to a royalty accounting hereunder. These shall
include at least the following:
(a) number of Licensed Product(s) in each application manufactured and
sold or otherwise subject to royalty payments under Article 4
(ROYALTIES AND PAYMENTS) by country;
(b) the gross sales, net sales and Net Selling Price of Licensed
Product(s) sold by LICENSEE during the most recently completed
calendar quarter;
(c) the royalties, in U.S. dollars, payable hereunder with respect to
such sales;
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(d) with each report submitted, the LICENSEE shall pay to THE REGENTS the
royalties due and payable under this Agreement. If no royalties shall
be due, the LICENSEE shall so report.
6.2 On or before the one-hundred-twentieth (120th) day following the close
of the LICENSEE's fiscal year, the LICENSEE shall provide THE
REGENTS with the LICENSEE's certified financial statements for the
preceding fiscal year including, at a minimum, a Balance Sheet and
an Operating Statement, which are to be protected as proprietary
information and not disseminated to other parties.
6.3 If no sale or use of Licensed Product(s) has been made during any
reporting period, a statement to that effect shall be required in
the royalty report filed for that period.
7. BOOKS AND RECORDS
7.1 The LICENSEE shall keep books and records accurately showing all Licensed
Product(s) developed, manufactured, used, and/or leased and/or sold or
otherwise disposed of under the terms of this Agreement. Such books and
records shall be preserved for at least five (5) years from the date of the
royalty payment to which they pertain and shall be open to inspection by
representatives or agents of THE REGENTS at all reasonable times, provided
that reasonable notice is given.
7.2 The fees and expenses incurred by THE REGENTS' representatives or agents to
perform an examination of the royalty reports shall be borne by THE
REGENTS. However, if an error in royalties accounting of more than five
percent (5%) of the total royalties due for
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any year is discovered, then the fees and expenses incurred by THE
REGENTS' examination shall be borne by LICENSEE.
8. LIFE OF THE AGREEMENT
8.1 Unless otherwise terminated by operation of law or by acts of the
parties in accordance with the terms of this Agreement, this
Agreement shall be in force from the Effective Date and shall
remain in force for the life of the last-to-expire issued patent of
the Licensed Patent(s) licensed under this Agreement. As patents
expire, Licensed Product(s) covered by an expired patent but not by
other Licensed Patent(s) will not be subject to further royalty
payments.
8.2 Any termination of this Agreement shall not affect the rights and
obligations set forth in the following Articles:
Article 7 Books and Records
Article 13 Patent Prosecution and Maintenance
Article 14 Use of Names and Trademarks
Article 19 Indemnification and Insurance
Article 25 Export Control Laws
9. DISPUTES
9.1 The Parties shall attempt to jointly resolve all disputes (such joint
resolution may include non-binding arbitration) arising from this
Agreement. If the Parties are unable to jointly resolve a dispute
within a reasonable time, then the Parties or either of them shall
have the right to commence proceedings in a court of competent
jurisdiction. U.S. Federal law
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is to govern the Agreement to the extent there is such law. To the
extent that there is no applicable U.S. Federal law, this Agreement and
performance thereunder shall be governed by the law of the State of
California without reference to that State's conflicts of law provisions.
10. TERMINATION BY THE REGENTS
10.1 The right to terminate this Agreement, if exercised by THE REGENTS,
supersedes the rights granted in Article 3 (LICENSE GRANT). If the
LICENSEE should fail to perform any material term or covenant of this
Agreement, THE REGENTS may give written notice of such default
("Notice of Default") to the LICENSEE. If the LICENSEE should fail
to remedy with satisfaction and tangible evidence that the
deficiency has been cured within sixty (60) days of the effective
date of such Notice of Default, THE REGENTS shall have the right to
terminate this Agreement and the licenses granted herein by a
second written notice ("Notice of Termination"). If Notice of
Termination is sent to the LICENSEE, this Agreement shall
automatically terminate on the effective date of such notice. The
LICENSEE's failure to pay any royalty or other fee by the date required
under Exhibit B (LICENSE FEE AND ROYALTY RATE) shall be considered
to be a material breach subject to termination of the license.
Termination of this Agreement shall not relieve the LICENSEE of any
obligation or liability accrued hereunder prior to such termination, or
rescind any payments due or paid to THE REGENTS hereunder prior to
the time such termination becomes effective. Such termination shall
not affect, in any manner, any rights of THE REGENTS arising under
this Agreement prior to such termination.
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11. TERMINATION BY LICENSEE
11.1 The LICENSEE shall have the right at any time to terminate this
Agreement by giving notice in writing to THE REGENTS. Termination
of this Agreement by the LICENSEE shall be effective ninety (90)
days from the effective date of such notice. Any termination of
this Agreement shall not affect the rights and obligations set
forth in Article 8.2.
12. DISPOSITION OF LICENSED PRODUCT(S) ON HAND UPON TERMINATION
12.1 Upon termination of this Agreement for any reason other than expiration
of Licensed Patent(s), LICENSEE shall provide THE REGENTS, within
forty-five (45) days following the effective date of termination,
with a written inventory of all Licensed Product(s) in process of
manufacture or in stock, and shall dispose of such Licensed
Product(s) within one hundred and twenty (120) days of the
effective date of termination, provided, however, that the sales of
all such Licensed Product(s) shall be subject to the terms of this
Agreement.
13. PATENT PROSECUTION AND MAINTENANCE
13.1 THE REGENTS shall at its sole discretion pursue and maintain the Licensed
Patent(s) using counsel of its choice, and such Licensed Patents will
be held in the name of THE REGENTS. THE REGENTS shall have the
exclusive rights to control the prosecution of the Licensed Patents.
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13.2 THE REGENTS may, at its sole discretion, amend any patent application to
include claims requested by the LICENSEE to reasonably protect the
products contemplated to be sold or methods used under this Agreement.
13.3 The cost of preparing, filing, prosecuting and maintaining the United
States Licensed Patents enumerated in Exhibit A ("THE REGENTS' LICENSED
PATENT(S)") shall be borne by THE REGENTS.
13.4 If LICENSEE wishes to obtain foreign license rights on certain specified
Licensed Patent(s), then LICENSEE shall request and pay for, as
provided in this Article 13, the REGENTS' patent protection in
those foreign countries if available. LICENSEE must notify THE
REGENTS immediately following the effective date of this license of
its decision to request these license rights. The notice concerning
foreign filing shall be in writing and must identify the countries
desired. The absence of such a notice to THE REGENTS shall be
considered as an election not to desire such foreign license
rights. THE REGENTS shall provide LICENSEE with an estimate of the
foreign filing costs and may request an up front payment prior to
pursuing such foreign filing. THE REGENTS may at its sole
discretion then obtain patent protection on the specified Licensed
Patents in foreign countries if available. Such foreign-filed
patents shall be held in the name of THE REGENTS and shall be
obtained using counsel of THE REGENTS' choice. Estimates of patent
charges to be shared are defined in Article 13.5 and the REGENTS
may request an up front payment.
13.5 The preparation, filing, and prosecution of foreign patent applications,
as well as the maintenance of the resulting patents, shall be at
the shared expense of all royalty paying
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Licensees to the Licensed Patents that have requested and been granted
such foreign license rights. THE REGENTS shall invoice LICENSEE for
payment of its share of costs for foreign patent application preparation,
filing, prosecution, and maintenance. If such payment is not received
within ninety (90) days, such foreign license rights shall be
automatically excluded from this license agreement. Any overpayments
by LICENSEE for foreign patent filing and maintenance costs resulting
from sharing of such costs by other Licensees shall be credited
towards LICENSEE's future foreign patent cost obligations.
13.6 LICENSEE's obligation to underwrite and to pay its share of patent
prosecution costs shall continue for so long as this Agreement remains in
effect, unless LICENSEE terminates its obligations with respect to any
given patent application or patent upon ninety (90) days written notice to
THE REGENTS. THE REGENTS will use its best efforts to curtail patent costs
when such notice is received from LICENSEE. THE REGENTS may continue
prosecution and/or maintenance of such application(s) or patent(s) at its
sole discretion. In that event, LICENSEE shall have no further rights or
licenses thereunder.
13.7 THE REGENTS shall have the right to file patent applications at its own
expense in any country in which LICENSEE has not elected to desire
patent rights, and such applications and resultant patents shall
not be subject to this Agreement. Such foreign patent rights shall
be excluded from this Agreement.
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14. USE OF NAMES AND TRADEMARKS AND NONDISCLOSURE AGREEMENT
14.1 Nothing contained in this Agreement shall be construed as conferring any
right to use in advertising, publicity or other promotional activities any
name, trade name, trademark, or other designation of either party hereto
(including any contraction, abbreviation, or simulation of any of the
foregoing). The use of the name "LLNL" or "The Regents of the University
of California" or the name of any University of California campus is
expressly prohibited.
It is understood that THE REGENTS shall be free to release to the
inventors the terms and conditions of this Agreement upon request
of the inventors. If such release is made, THE REGENTS shall
request that the inventors not disclose such terms and conditions
to others. It is further understood that should a third party
inquire whether a license to Licensed Patents is available, THE
REGENTS may disclose the existence of this Agreement and the extent
of the grant in Article 3 (LICENSE GRANT) to such third party, but
shall not disclose the terms of this Agreement or the name of The
LICENSEE, except where THE REGENTS is required to release
information under either the California Public Records Act or other
applicable law.
15. LIMITED WARRANTY
15.1 THIS LICENSE AND THE ASSOCIATED REGENTS' INTELLECTUAL PROPERTY RIGHTS IS
PROVIDED WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE OR ANY OTHER WARRANTY, EXPRESS OR IMPLIED. THE REGENTS MAKES NO
REPRESENTATION OR
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WARRANTY THAT THE REGENTS' INTELLECTUAL PROPERTY RIGHTS,
LICENSED PATENT(S) LICENSED PRODUCT(S) WILL NOT INFRINGE ANY PATENT OR
OTHER PROPRIETARY RIGHT.
15.2 IN NO EVENT WILL THE REGENTS BE LIABLE FOR ANY INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE
USE OF THE REGENTS' INTELLECTUAL PROPERTY RIGHTS, LICENSED
PATENT(S) OR LICENSED PRODUCT(S).
15.3 NEITHER THE UNITED STATES DEPARTMENT OF ENERGY, NOR ANY OF ITS EMPLOYEES,
MAKES ANY WARRANTY, EXPRESS OR IMPLIED, OR ASSUMES ANY LEGAL LIABILITY OR
RESPONSIBILITY FOR THE ACCURACY, COMPLETENESS, OR USEFULNESS OF ANY
INFORMATION, APPARATUS, OR PRODUCT DISCLOSED, OR REPRESENTS THAT ITS USE
WOULD NOT INFRINGE PRIVATELY OWNED RIGHTS.
15.4 Nothing in this Agreement shall be construed as:
15.4a A warranty or representation by THE REGENTS as to the validity
or scope of any of THE REGENTS' Licensed Patents;
15.4b A warranty or representation that anything made, used, sold or
otherwise disposed of under any license granted in this
Agreement is, or will be, free from infringement of patents of
third parties;
15.4c Any obligation to bring or prosecute actions or suits against
third parties for
-------------------------------------------------------------------------------
18
patent infringement;
15.4d Conferring by implication, estoppel or otherwise any license or
rights under any patents to THE REGENTS other than Licensed
Patent(s) as defined herein, regardless of whether such patents
are dominant or subordinate to Licensed Patent(s); or
15.4e An obligation to furnish any know-how except copies of patents.
16. PATENT INFRINGEMENT
16.1 In the event that LICENSEE shall learn of any substantial infringement of
any Licensed Patent(s) under this Agreement, LICENSEE shall call THE
REGENTS' attention thereto in writing and shall provide THE REGENTS with
reasonable evidence of such infringement.
17. WAIVER
17.1 It is agreed that no waiver by either party hereto of any breach or default
of any of the covenants or agreements herein set forth shall be deemed a
waiver as to any subsequent and/or similar breach or default.
18. ASSIGNABILITY
18.1 This Agreement is binding upon and shall inure to the benefit of THE
REGENTS, its successors and assigns, but shall be personal to LICENSEE and
not assignable by the LICENSEE.
19
19. INDEMNIFICATION AND INSURANCE
19.1 The LICENSEE agrees to indemnify, hold harmless and defend THE REGENTS, and
DOE, their officers, employees, and agents; the inventors of the inventions
disclosed in the patents and patent applications in Licensed Patent(s)
against any and all claims, suits, losses, damage, costs, fees, and
expenses resulting from or arising out of exercise of this license. The
LICENSEE shall pay any and all costs incurred by THE REGENTS in enforcing
this indemnification, including reasonable attorney fees. The LICENSEE
shall be solely liable for the LICENSEE's infringement of patents
exclusively licensed to other Licensees as described in Article 2.2 and as
listed in Section IV of Exhibit C (FIELD OF USE) and shall indemnify, hold
harmless, and defend THE REGENTS and DOE, their officers employees and
agents under this Article 19 for any such acts of this infringement.
19.2 The LICENSEE, at its sole cost and expense, shall insure its activities in
connection with this Agreement to fulfill LICENSEE's indemnification
obligation under this Article 19 and obtain, keep in force and maintain
insurance with an insurance company acceptable to THE REGENTS, which
acceptance shall conform to reasonable business standards, as follows: A
minimum level of two million dollars ($2,000,000) of Comprehensive or
Commercial Form General Liability Insurance (including contractual
liability and products liability).
The coverages referred to in this Article 19 shall not in any way limit the
liability of LICENSEE. LICENSEE shall furnish THE REGENTS with certificates
of insurance, including renewals, evidencing compliance with all
requirements at least thirty (30) days
20
prior to the first commercial sale, or distribution of Licensed Product.
19.2a If such insurance is written on a claims-made form, coverage
shall provide for a retroactive date of placement prior to or
coinciding with the effective date of this License Agreement.
19.2b LICENSEE shall maintain the general liability insurance specified
herein during (a) the period that the Licensed Product or
Licensed Method is being commercially distributed or sold (other
than for the purpose of obtaining regulatory approvals) by the
LICENSEE or by an affiliate, or agent of the LICENSEE and (b) a
reasonable period thereafter, but in no event less than one (1)
year. LICENSEE's failure to maintain this liability insurance
shall be considered a material breach of this license Agreement.
19.3 Insurance coverage as required under Article 19.2 above, shall:
19.3a Provide for a thirty-(30)-day, advance written notice to THE
REGENTS of cancellation or of any modification.
19.3b Indicate that DOE, The Regents of the University of California
and its officers, employees, students, and agents, have been
endorsed thereon as additional insureds.
19.3c Include a provision that the coverages will be primary and will
not participate with, nor will be excess over, any valid and
collectible insurance or program of self-insurance carried or
maintained by THE REGENTS.
21
19.4 The provisions of this Article 19 shall survive the term of this Agreement.
20. LATE PAYMENTS
20.1 In the event royalty payments or fees are not received by THE REGENTS when
due, the LICENSEE shall pay to THE REGENTS interest charges at the rate of
five percent (5%) plus the rate of interest that is charged by the San
Francisco Federal Reserve Bank to member banks twenty-five (25) days prior
to the date the payment was due.
21. NOTICES
21.1 Any royalty payment, royalty report, notice or other communication required
or permitted to be given to either party hereto shall be in writing and
shall be deemed to have been properly given and to be effective on (a) the
date of delivery if delivered in person, or (b) the fifth (5th) day after
mailing if mailed by first-class certified mail, postage paid, to the
respective addresses given below, or to such other address as shall be
designated by written notice given to the other party as follows:
22
In the case of the LICENSEE: AMERIGON, INCORPORATED
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Phone: (▇▇▇) ▇▇▇-▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
Attention: President
In the case of THE REGENTS:
All correspondence, original
progress reports, and royalty
reports: ▇▇▇▇▇▇▇▇ Livermore National Laboratory
Industrial Partnerships & Commercialization
▇.▇. ▇▇▇ ▇▇▇, ▇-▇▇▇
▇▇▇▇ ▇▇▇▇ Ave.
Livermore, CA 94550
Attention: Director, IPAC
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
Payments and copies of
corresponding royalty reports: ▇▇▇▇▇▇▇▇ Livermore National Laboratory
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
22. GOVERNING LAWS
22.1 This Agreement shall be interpreted and construed in accordance with
Federal laws and the laws of the State of California, USA, as modified by
the provisions of University of California/DOE Contract No. W-7405-ENG-48,
without regard to the doctrine of the conflict of laws.
23
23. PATENT MARKING
23.1 When Licensed Product(s) are made, used and/or sold under Licensed
Patent(s), the LICENSEE agrees to ▇▇▇▇ all Licensed Product(s), and their
containers, in accordance with the applicable patent marking laws.
24. GOVERNMENT APPROVAL OR REGISTRATION
24.1 If this Agreement or any associated transactions is required by the law of
any nation or be either approved or registered with any governmental
agency, LICENSEE will assume all legal obligations to do so. LICENSEE will
notify THE REGENTS if it becomes aware that this Agreement is subject to a
United States or foreign government reporting or approval requirement.
LICENSEE will make all necessary filings and pay all costs including fees,
penalties, and all other out-of-pocket costs associated with such reporting
or approval process.
25. EXPORT CONTROL LAWS
25.1 The LICENSEE shall observe and comply with all applicable United States and
foreign laws and regulations with respect to the International Traffic in
Arms Regulations (ITAR), and the Export Administration Regulations.
26. FORCE MAJEURE
26.1 No failure or omission by THE REGENTS or the LICENSEE in the performance of
any obligation under this Agreement shall be deemed a breach of this
Agreement or create any liability if the same shall arise from any cause or
causes beyond the control of THE
24
REGENTS or the LICENSEE including, but not limited, to the following:
Acts of God, acts or omissions of any government or agency thereof,
compliance with requirements, rules, regulations, or orders of any
governmental authority or any office, department, agency, or
instrumentality thereof, fire, storm, flood, earthquake, accident, acts
of the public enemy, war rebellion, insurrection, riot, sabotage,
invasion, quarantine, restriction, transportation embargoes, or failures
or delays in transportation.
27. U.S. COMPETITIVENESS
27.1 The LICENSEE agrees that any and all products produced by practice of the
inventions disclosed in the Licensed Patents anywhere in the world
including, but not limited to, Licensed Product(s) for applications, use,
or sale shall be designed and manufactured substantially in the United
States and that the LICENSEE is not Licensed to make, have made, use and/or
lease the Licensed Product(s) anywhere in the world, including (country of
Licensee), except for the Field of Use set forth under Article 2.2.
28. MISCELLANEOUS
28.1 The headings of the several sections are inserted for convenience of
reference only and are not intended to be a part of or to affect the
meaning or interpretation of this Agreement.
28.2 This Agreement will be binding upon the Parties when it has been executed
by each of the Parties hereto as of the date of execution by the last
signing Party and contingent on THE REGENTS receipt of the Issue Fee
described in Exhibit B (LICENSE FEES AND ROYALTY RATE).
25
28.3 No amendment or modification hereof shall be valid or binding upon the
Parties unless made in writing and signed on behalf of each Party.
28.4 This Agreement embodies the entire understanding of the Parties and shall
supersede all previous communications, representations, or understandings,
either oral or written, between the Parties relating to the subject matter
hereof.
28.5 In case any of the provisions contained in this Agreement shall be held to
be invalid, illegal or unenforceable in any respect, such invalidity,
illegality, or unenforceability shall not affect any other provisions
hereof, but this Agreement shall be construed as if such invalid or illegal
or unenforceable provisions had never been contained herein.
28.6 This Agreement and the exchange of technical information between the
parties pursuant to it are covered by the existing Mutual Nondisclosure
Agreement between the parties.
28.7 NO AGENCY: Neither party named herein shall in any way be considered an
agent of the other.
IN WITNESS WHEREOF, both THE REGENTS and the LICENSEE have executed this
Agreement, in duplicate originals, by their respective officers hereunto duly
authorized, on the day and year hereinafter written.
AMERIGON, INCORPORATED THE REGENTS OF THE UNIVERSITY
OF CALIFORNIA
By: /s/ ▇▇▇ ▇. ▇▇▇▇
---------------------------
(Signature)
By:_______________________________
(Signature)
26
Name: /s/ ▇▇▇ ▇. ▇▇▇▇ Name:___________________________
Title: CEO Title:____________________________
Date signed: July 20, 1998 Date signed: _______________, 1998
27
EXHIBIT A -"THE REGENTS' LICENSED PATENT(S)"
The Licensed Patents are as follows:
IL-909lA, "Ultra-Wideband Receiver," (U.S. Patent No. 5,345,471), issued on
9/6/94, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-909lB, "Ultra-Wideband Receiver," (CIP of IL-909lA, U.S. Patent No.
5,523,760), issued on 6/4/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9092, "Ultra-Wideband Radar Motion Sensor,"(U.S. Patent No. 5,361,070),
issued on 11/1/94, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9197, "Impulse Radar Stud Finder," (CIP of IL 9091A, U.S. Patent No.
5,457,394), issued on 10/10/95, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9318, "Two Terminal Micropower Radar Sensors," (U.S. Patent No.
5,465,094), issued on 11/7/95, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9426, "Electromagnetic Hidden Object Detector," (CIP of IL- 9197, U.S.
Patent No. 5,512,834), issued on 4/30/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9514, "Range-gated field disturbance sensor with range-sensitivity
compensation," (U.S. Patent No. 5,521,600), issued on 5/28/96, by ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9515, "Micropower RF Transponder," (U.S. Patent Application), by ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇
28
IL-9516, "Time-of-Flight Radio Location System," (CIP of IL-9197 which is CIP
of 9091A, U.S. Patent No. 5,510,800), issued on 4/23/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇
IL-9547, "Electronic Multi-Purpose Material Level Sensor," (U.S. Patent No.
5,609,059), dated 3/11/97, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9567, "Short Range, Ultra-Wideband Radar with High Resolution Swept Range
Gate," (CIP of IL-9516, U.S. Patent Application), by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9567B, "Short Range, Ultra-Wideband Radar with High Resolution Swept Range
Gate with Damped Transmit and Receive Cavities," (CIP of IL-9567, U.S. Patent
Application), by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9595, "Range Gated Strip Proximity Sensor," (U.S. Patent No. 5,581,256),
dated 12/3/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9613, "Micropower Material Sensor," (U.S. Patent Application), by ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9648, "Phase-Coded, Micro-Power Impulse Radar Motion Sensor," (U.S. Patent
No. 5,519,400), dated 5/21/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9649, "Light Beam Range Finder," (CIP of IL-9567, U.S. Patent
Application), by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9650, "Narrow Field Electromagnetic Sensor System and Method," (CIP of
IL-9516, U.S. Patent No. 5,576,627), dated 11/19/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
29
IL-9727, "Short Range Radio Locator System," (CIP of IL-9516, U.S. Patent No.
5,589,838), dated 12/31/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9772, "Precision Digital Pulse Phase Generator," (U.S. Patent No.
5,563,605), issued on 10/8/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9779, "Window-Closing Safety System," (CIP of IL-9547, U.S. Patent
Application), by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9797, "Ultra-Wideband Directional Sampler," (CIP of IL-909lB, U.S. Patent
No. 5,517,198), issued on 5/14/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9798, "High Accuracy Electronic Materials Level Sensor," (CIP of IL-9547,
U.S. Patent No. 5,610,611), dated 3/11/97, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
IL-9340, "Body Monitoring and Imaging Apparatus and Method," (U.S. Patent No.
5,573,012), issued on 11/12/96, by ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ (ADDITIONAL TO
MEDICAL AND VOICE RECOGNITION FIELDS OF USE ONLY)
30
EXHIBIT B - LICENSE FEES AND ROYALTY RATE
NOTICE
This Exhibit B contains financial and commercial information deemed Business
Confidential and the parties hereby agree not to use or to disclose the terms
agreed to herein to any third party without the express written consent of
the other party hereto except to those necessary to enable the parties to
perform under this Agreement or as may be required by THE REGENTS' contract
with the U.S. Department of Energy under the same restrictions.
In accordance with Article 4 ROYALTIES AND PAYMENTS:
A. The LICENSEE shall pay THE REGENTS a License Issue Fee of ONE-HUNDRED
THOUSAND AND NO/100 DOLLARS ($100,000) payable within ten (10) days of
final execution by both parties of this Agreement. The License Issue Fee
is nonrefundable.
B. As a further consideration for this license, the LICENSEE shall pay to THE
REGENTS an earned royalty fee based upon the following formula or thirty
cents ($.30) per unit of Licensed Product whichever is greater:
Cumulative Net Sales of Licensed Product(s)/Systems
Incorporating the Licensed Patent(s) Earned Royalty Fee
--------------------------------------------------- ------------------
0 to $5,000,000 5%
over $5,000,000-$15,000,000 4%
over $15,000,000 3%
C. The LICENSEE shall pay THE REGENTS a non refundable fully-creditable (only
against the same year's earned royalty) minimum annual royalty according to
the
31
following schedule for the life of any license granted under this
Agreement, beginning on:
MINIMUM ANNUAL FEE TO
MAINTAIN A NON-EXCLUSIVE LICENSE
--------------------------------
$25,000 January 1,1999
$25,000 January 1st of every year
thereafter during license term
32
EXHIBIT C - FIELD OF USE
APPLICATION UNDER THE FIELD OF USE LICENSED HEREIN:
I. The "Field-of-Use" Licensed under this license shall mean the Field of Use
of the Licensed Patents and the Licensed Product(s) for:
TRANSPORTATION
II. This License excludes the following fields of use for all Licensed Patents
and Licensed Product(s):
a. medical;
b. voice recognition equipment;
c. security and energy conservation;
d. residential, commercial, and industrial automation;
e. entertainment;
f. material evaluation;
g. tools;
h. communications;
i. underground detection;
j. buried military mine and ordnance detection;
k. military, other than buried mine and ordnance detection;
l. radar camera;
m. other fields of use not expressly listed in Section I or expressly
excluded in Sections II, III, or IV of this exhibit.
III. The LICENSEE is not licensed to make, have made, use, lease or sell
electronic chips, separate components or circuit boards covered by or
derived from THE REGENTS Licensed Patents or Licensed Product(s) to others
independent of an integrated stand alone or end use Licensed Product except
for complete functioning circuit boards sold as
33
end products less enclosures to original equipment manufacturers.
IV. The following field of use listed in paragraph A below and described in the
specific patents and patent applications listed in paragraph B (referenced
from "Exhibit A" "THE REGENTS" LICENSED PATENT(S)") has been previously
exclusively licensed and is specifically excluded from the Field of Use:
A* The following Fields of Use have been previously exclusively licensed to
another Licensee:
a) Construction tool application as a hand-held and self-contained wall,
ceiling and floor scanner without video or computer imaging capability
or tie-in, except for video or computer imaging capability having 128
lines of resolution or less, for locating hidden objects within
eighteen (18) inches of the scanner, including, but not limited to,
between-wall studs; joints and other structural and nonstructural
members made from wood, metal, and other materials; also including,
but not limited to, pipes, conduit, reinforcing steel, and electrical
wires.
b) Construction tool application as a hand-held and self-contained
scanner without video or computer imaging capability or tie-in, except
for video or computer imaging capability having 128 lines of
resolution or less, for locating buried objects in concrete and soil
at various depths, including, but not limited to, pipes, wires, sewer
lines, drainage systems, and pipelines.
B. ▇▇-▇▇▇▇▇, ▇▇-▇▇▇▇▇, IL-9092, IL-9197, IL-9318, IL-9426, IL-9516, ▇▇-▇▇▇▇,
▇▇-▇▇▇▇▇, IL-9469, IL-9650, IL-9727, IL-9797.
34
*All applications not specifically set forth above, under this part IV.B
were not previously licensed including, but not limited to, law
enforcement, military, security, medical, and all other industrial,
consumer and commercial applications.
35
AMENDMENT ONE TO
STANDARD LIMITED NONEXCLUSIVE LICENSE AGREEMENT
FOR
MICROPOWER ULTRA-WIDEBAND IMPULSE RADAR
FOR
TRANSPORTATION
FIELD OF USE
BETWEEN
THE REGENTS OF THE UNIVERSITY OF CALIFORNIA
AND
AMERIGON, INCORPORATED
LLNL CASE NO. TL-1556-98
▇▇▇▇▇▇▇▇ LIVERMORE NATIONAL LABORATORY
UNIVERSITY OF CALIFORNIA
▇.▇. ▇▇▇ ▇▇▇, ▇-▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
INDUSTRIAL PARTNERSHIPS AND COMMERCIALIZATION
JUNE, 1998
AMENDMENT ONE TO
LIMITED NONEXCLUSIVE LICENSE AGREEMENT
FOR
MICROPOWER IMPULSE RADAR
BETWEEN
AMERIGON, INCORPORATED
AND
THE REGENTS OF THE UNIVERSITY OF ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇ ▇▇. ▇▇-▇▇▇▇-▇▇
This Amendment (this "Amendment") to the Limited Nonexclusive License
Agreement is entered into as of this ______ day of _________________, 1998
(the "Effective Date") by and between The Regents of the University of
California, a corporation organized and existing under the laws of the State
of California, and having its statewide administration address at ▇▇▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇, ▇.▇.▇. ("THE REGENTS"), and
Amerigon, Incorporated, a corporation duly organized under the laws of
California and having its registered place of business at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇ ("LICENSEE").
RECITALS
WHEREAS, the parties desire to enter into that certain Limited
Nonexclusive License Agreement, dated as of even date herewith (the "License
Agreement"), for the grant of certain rights to LICENSEE with respect to THE
REGENTS' Micropower Wideband Impulse Radar technology following termination
of Licensee's Limited Exclusive License No. TL-796-94; and
WHEREAS, the parties desire to amend the Regent's Standard License
Agreement pursuant to the terms and conditions set forth in this Amendment,
which the parties have agreed shall be executed at the same time as the
License Agreement and shall be attached to and incorporated by reference in
the License Agreement;
2
NOW, THEREFORE, in consideration of the mutual promises and covenants
contained herein, the parties agree to the following terms and conditions,
which set forth the rights, duties, and obligations of the parties:
AGREEMENT
1. CONTINUATION OF PROVISIONS
Except as expressly modified by this Amendment, all terms, conditions and
provisions of the License Agreement shall continue in full force and effect
as set forth in the License Agreement. Except as otherwise modified or
defined herein, all capitalized terms in this Amendment have the same
meanings as set forth in the License Agreement. In the event of any
inconsistency or conflict between the License Agreement and this Amendment,
the terms, conditions and provisions of this Amendment shall govern and
control.
2. EXHIBIT A
The following Licensed Patents are deleted because they were not included
in Licensee's previous License No. TL-796-94 or Amendment thereto.
IL-9514
IL-9515
IL-9547
IL-9595
IL-9613
IL-9648
IL-9772
IL-9779
IL-9798
IL-9340
3
3. EXHIBIT B
3.1 Delete the entire language under Part A and replace it with the
following:
A. The Standard License Issue Fee to be paid by Licensee of
One-Hundred Thousand and no/100 Dollars ($100,000) is waived
because this license replaces a previous Limited Exclusive
License held by Licensee under which an issue fee was paid.
3.2 Delete the entire language under Paragraph C and replace it with the
following:
A. The Licensee shall pay THE REGENTS a non refundable fully-
creditable (only against the same year's earned royalty) minimum
annual royalty according to the following schedule for the life
of any license granted under this Agreement, beginning on:
Minimum Annual Fee to Payment
Maintain a Non-Exclusive License Due Date
--------------------------------- --------
0 January 1, 1999
0 January 1, 2000
0 January, 1, 2001
0 January 1, 2002
0 January 1, 2003
$25,000 January 1st of every year
thereafter
4
4. MISCELLANEOUS
4.1 BACKGROUND, DUE DILIGENCE, PROGRESS AND ROYALTY REPORTS. The extent
of Licensee's commitment to develop, manufacture and sell "Licensed
Product(s)" under Sections 1.3, 5 and 6 shall be solely based upon
Licensee's good business judgement. Royalty reporting requirements are
deferred until after the first sale or commercial use of LICENSE
PRODUCT(S)".
4.2 Under Article 6.2 a quantitative summary of the business of LICENSEE
under the subject license for each fiscal year signed by a corporate
officer will fulfill the requirement of Article 6.2 in lieu of a
certified financial statement including a Balance Sheet and Operating
Statement. An officer of Licensee shall provide a copy of its public
Annual Report to Licensor upon request.
4.3 INCORPORATION BY REFERENCE. Except as otherwise modified herein, the
provisions of Section 28 ("Miscellaneous") of the License Agreement
are incorporated by reference into this Amendment.
4.4 ENTIRE AGREEMENT. In Section 28.4 of the License Agreement, after the
word "Agreement" shall be inserted the following: ", including,
without limitation, the Exhibits and the Amendment to this Agreement,
which are attached hereto and incorporated herein by this reference,".
5
IN WITNESS WHEREOF, the parties have caused this Amendment to be
executed by duly authorized representatives of the parties as of the
Effective Date.
LICENSEE: LICENSOR:
AMERIGON, INCORPORATED THE REGENTS OF THE
UNIVERSITY OF CALIFORNIA
By: /s/ ▇▇▇ ▇. ▇▇▇▇ By:
----------------------------- --------------------------------
(Signature) (Signature)
Name: ▇▇▇ ▇. ▇▇▇▇ Name:
--------------------------- -------------------------------
Title: CEO Title:
--------------------------- -------------------------------
Date: July 20, 1998 Date:
--------------------------- -------------------------------
6