Exhibit 10.3
MINE RESISTANT AMBUSH
PROTECTED VEHICLE PROGRAM
AND
MEDIUM MINE PROTECTED VEHICLE PROGRAM
TECHNOLOGY
AND LICENSE AGREEMENT
IN THIS TECHNOLOGY AND
LICENSE AGREEMENT (“ Agreement ”), General
Dynamics Land Systems Inc. (“ GDLS ”), Force
Protection, Inc. (“ FPI ”), and Force
Dynamics LLC (“ FDL ”) (hereafter collectively
“ Parties ” and individually “
Party ”), agree as follows:
ARTICLE 1 — Background
of Agreement
1.1
FPI and its Affiliates (as defined below) have designed and
developed a wheeled armored vehicle currently identified as the
“Cougar” armored vehicle.
1.2
FPI and its Affiliates own or Control (as defined below)
Intellectual Property Rights (as defined below) and Technology (as
defined below) directed to the design, construction, manufacture
and use of the Cougar armored vehicle.
1.3
FPI and GDLS have agreed to team together to hid for and perform
contracts that are issued pursuant to the Program (as defined
below).
1.4
To implement their teaming arrangement, FPI and GDLS, pursuant to
the Force Dynamics LC Joint Venture Agreement dated
December 15, 2006 (“ JV Agreement ”), have
formed FDL as a joint venture company to serve as their contracting
entity for the Program.
1.5
Under Section 6.13.16 of the JV Agreement, the Parties have
entered into this Agreement and included this Agreement as
Exhibit 6 to the JV Agreement.
ARTICLE 2 —
Definitions
2.1
“ Affiliate ” means any entity that directly (or
indirectly through one or more intermediaries) controls, is
controlled by, or is under common control with a Party. For
purposes of this definition only, the terms “controls,”
“controlled,” and “control” means the
direct or indirect ability or power to direct or cause the
direction of the management and policies of any entity or otherwise
direct the affairs of such entity, whether through ownership of
equity, voting securities, or beneficial interest, by contract, or
otherwise. For purposes of this Agreement, no Party is an Affiliate
of any other Party.
2.2
“ Background IP ” means (a) 1P and
Technology that is owned, used or Controlled by a Party prior to
the Effective Date and (b) IP and ‘Technology that is
made or acquired after the Effective Date by or for a Party
independently of the Program and that is not based on derived from
or a modification of another Party’s Background IP.
2.3
“ Control ” and cognates thereof, with respect
to IP and Technology, means the ability to grant rights to a Party
in accordance with this Agreement without accounting to any Third
Party,
2.4
“ Effective Date ” means the date of signature
of the last Party to sign this Agreement.
2.5
“ Foreground IP ” means IP or Technology made or
acquired by or for a Party after the Effective Date in conjunction
with the Program.
2.6
“ FPI Background IP ” means Background IP owned
or Controlled by FPI the use or practice of which is necessary for
FDL and GDLS to perform under the Program.
2.7
“ GDLS Background IP ” means Background IP owned
or Controlled by GDLS the use or practice of which is necessary for
FDL and FPI to perform under the Program.
2.8
“ Intellectual Property ” or “IP”
means patents, copyrights, mask works, and trade secrets, but
specifically excludes trademarks.
2.9
“ Joint Foreground IP ” means Foreground IP that
is jointly owned by FPI and GDLS pursuant to Section 3.5.
2.10
“ Program ” means the Mine Resistant Ambush
Protected (“MRAP”) Vehicle Program, a United States
joint services program to produce and provide lifecycle support to
address the current threat of improvised explosive devices in the
Middle East as more fully described in solicitation number
M67854-07-R-5000 and resulting contract M67854-07-D-5031 and/or the
Medium Mine Protected Vehicle (MMPV) as described in Solicitation
No: W56HZV-07-R-0315. The Program will include any and all
solicitations and RFP’s for MRAP and/or MMPV production and
lifecycle support and/or any follow on work which may be performed,
including any program name change, changed or future program
requirements, product evolutions and technology insertions related
to the MRAP or MMPV vehicles whether for U.S. or international
sales, or non-military/commercial sales. For the avoidance of
doubt, the Parties’ participation in the
“Program” only includes the use of FPI’s Cougar
4x4 and 6x6 armored vehicles for the MRAP Cat I and Cat II and MMPV
requirements and does not include any other existing or future
contracts or programs for the Parties’ other vehicles (or
vehicle variants). For the further avoidance of doubt, the Program
does not include, for illustration and not limitation, the JERRV
program, the GSTAMIDS program, the 1LAV and Mastiff programs, the
Buffalo and Cheetah vehicles, the Stryker, LAV, and RG-31 vehicles,
the MRAP Cat III program and/or the JLTV program.
2.11
“ Technical Data ” or “ TD ”
means assembly drawings, specification control drawings, source
control drawings, parts lists, wiring diagrams, parts
identification documentation, equipment design specifications,
interface control
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documents, system
diagrams, flow diagrams, test procedures, test specifications,
trial reports, manual, instructional materials, firmware data,
software specifications, source code listings, control commands and
other software documentation, and technical publication source
data.
2.12
“ Technology ” means:
(a)
all inventions, works of authorship, discoveries, ideas,
innovations, know-how, processes, techniques and developments;
(b)
all Technical Data;
(c)
all other forms of technology and improvements, modifications,
derivatives or changes thereof, whether tangible or intangible,
embodied in any form, including without limitation manufacturing,
engineering and other drawings and manuals, flow charts,
schematics, lab journals, notebooks, blue prints, technical reports
(including research and development reports), studies, special
tooling, fixtures and jigs made specifically for a Program, design
and engineering specifications, user documentation, and equipment
repair, maintenance or service records and manuals, whether or not
protectable or protected by patent, copyright, mask work right,
trade secret law or otherwise.
2.13
“Third Party” means any person or entity other than a
Party or an Affiliate of a Party.
ARTICLE 3 — IP
Rights
3.1
FPI and its Affiliates will retain ownership or Control of its
Background IP to the extent owned or Controlled by FPI or its
Affiliates as of the Effective Date.
3.2
GDLS and its Affiliates will retain ownership or Control of its
Background IP to the extent owned or Controlled by GDLS or its
Affiliates as of the Effective Date. FDL, FP and GDLS understand
and agree that there are license fees due for each MRAP vehicle by
FPI to others in the amount of $2,250 per vehicle and this amount
will be paid through FPI but will be paid monthly by GDLS to FP for
each vehicle that GDLS produces under the Program. The license fee
shall become due on the last calendar day of each month in which a
vehicle is sold, as evidenced by a DD Form 250 and payable by
the 20th calendar day thereafter. On the 10th calendar day of each
month, GDLS shall provide to FPI a list of all vehicles
manufactured by GDLS during the preceding month. FPI shall have the
right to terminate this Agreement upon ten (10) days written
notice in the event GDLS fails to pay the required license fee due
hereunder.
3.3
FPI hereby grants to FDL and GDLS a non-exclusive, license, without
the right to sublicense, under the FPI Background IP solely for use
in performance of the Program.
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3.4
GDLS hereby grants to FDL and FPI a non-exclusive, royalty-free
license, without the right to sublicense, under the GDLS Background
IP solely for use in performance of the Program.
3.5
All Foreground IP solely made or acquired by FPI or its employees,
agents or contractors will be solely owned by FPI. All
Foreground IP solely made or acquired by GDLS or its employees,
agents or contractors will be solely owned by GDLS. All Foreground
IP jointly made or acquired by FPI and GDLS or their respective
employees, agents or contractors will be jointly owned by FPI and
GDLS. All Foreground IP solely or jointly made or acquired by FDL
or its employees, agents or contractors will be jointly owned by
FPI and GDLS, and FDL hereby assigns to FPI and GDLS jointly all
right, title and interest in and to such Foreground IP and all
rights therein.
3.6
The Party solely owning Foreground IP, in its sole discretion and
at its sole expense, will exercise commercially reasonable efforts
to obtain and maintain appropriate intellectual property protection
for such Foreground IP (“ IP Rights ”).
3.7
The Parties shall mutually agree upon whether to file patent
applications protecting Joint Foreground IP, and shall mutually
agree upon which party shall be primarily responsible for
preparing, filing, and prosecuting any such applications. FPI and
GDLS will share equally all costs incurred in obtaining and
maintaining such patents, provided, however, that either Party may
elect by written notice to the other Party not to share such costs
for a particular patent or patent application, in which event the
other Party may abandon such patent or patent application or may
elect to continue to prosecute and maintain such patent or patent
application. The Party electing not to share costs will assign its
interest in any such patent or patent application, provided however
that the Party electing not to share costs will receive a
fully-paid up, royalty-free license under such patents to make,
have made, sell, offer for sale and import products utilizing such
patent or patent application.
3.8
To the extent the law of a country requires one joint owner to give
permission to other joint owners to exploit a Joint Foreground IP,
including any patents protecting such Joint Foreground IP, FPI and
GDLS hereby grant each other permission to fully exploit any
Foreground IP and related patents without accounting to the
other.
3.9
FPI hereby grants to FDL and GDLS a nonexclusive, royalty-free
license, without the right to sublicense, under any Foreground IP
and associated IP Rights solely owned by FPI to the extent
necessary for FDL and GDLS to perform under the Program.
3.10
GDLS hereby grants to FPI and FDL a nonexclusive, royalty-free
license, without the right to sublicense, under any Foreground IP
and associated IP Rights solely owned by GDLS to the extent
necessary for FDL and FPI to perform under the Program.
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3.11
FPI hereby covenants not to enforce any FPI Background Rights
against activities of GDLS or FDL authorized pursuant to
Section 3.3.
3.12
GDLS hereby covenants not to enforce any COLS Background Rights
against activities of FPI or FDL authorized pursuant to
Section 3.4.
3.13
Nothing in this Agreement is intended to grant or grants to any
Party any right or license under any IP or Technology owned or
Controlled by a Party except to the extent expressly granted herein
for performance under the Program.
ARTICLE 4 —
Technology
4.1
Each of FPI and GDLS will use commercially reasonable efforts to
deliver to the other Party all Technical Data that in the opinion
of the Party possessing the Technical Data is reasonably necessary
for the Parties to perform their respective obligations under the
Program and the JV Agreement.
4.2
FPI, FDL and GDLS warrant to each other that all technical data
will be complete and accurate as available and used in each of
their facilities FPI, GDLS, and FDL warrant to each other that the
technical data is sufficient to design or manufacture products
based on such information.
4.3
The transfer to a Party of any physical item that embodies any
Technical Data Controlled by the transferring Party will not be,
and will not be construed to be, (a) a sale, lease, offer to
sell or lease or other transfer of title or ownership to the
receiving Party of such Technical Data or any part thereof, or
(b) a license to the receiving Party (except as expressly
provided in this Agreement) under such Technical Data.
ARTICLE 5 — Confidential
Information
5.1
All confidential and/or proprietary information exchanged or
disclosed between the P
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