NON-EXCLUSIVE LICENSE AND CROSS-LICENSE
AGREEMENT
This
Non-Exclusive License and Cross-License Agreement (the
“
License ”)
is made and entered into effective as of May
30 ,
2008 (“
Effective Date ”)
by and between the XsunX, Inc., a Colorado Corporation ("
XsunX "),
MVSystems, Inc., a Colorado Corporation (“
MVSI ”),
and Arun Madan (“
Dr. Madan ”),
an individual (collectively, the “
MVS Parties ”).
XsunX and the MVS Parties hereinafter may be referred to
individually as a “
party ”
and collectively as the “
parties .”
RECITALS
A. WHEREAS,
XsunX and the
MVS Parties are
parties to that certain Technology Sharing and License
Agreement dated September 17, 2004, as amended (“
Technology Sharing and License Agreement
”),
under which the MVS Parties licensed certain technologies to XsunX,
in accordance with the terms set forth therein, including, without
limitation, the Licensed Patents (as defined below).
B. WHEREAS,
XsunX and the MVS Parties are parties to that certain Expanded
Use License Agreement dated October 12, 2005 (“
Expanded Use License Agreement ”),
under which the Technology Sharing and License Agreement was
amended to expand the scope and use of certain technology, all in
accordance with the terms set forth therein. The Technology Sharing
and License Agreement and the Expanded Use License Agreement
hereinafter are collectively referred to as the “
Original License Agreements. ”
C. WHEREAS,
XsunX and MVSI are parties to those certain
Phase Agreements ,
as defined below, pursuant which MVSI agreed to undertake certain
research and development activities on a no-profit basis, all in
accordance with the terms set forth in the applicable Phase
Agreement and in accordance with the terms and conditions set forth
in the Original License Agreements.
D.
WHEREAS, the parties
have determined to terminate their business relationship and
wish to have no obligation to one another after the date
hereof, whether arising under the Original License Agreements,
the Phase Agreements or any other agreement between or among
the parties existing prior to the Effective Date, and to
mutually release each other, and, in furtherance of such goal,
have contemporaneously herewith entered into that
certain
Separation Agreement and Mutual Release
effective as of
May 30, 2008 (the
“
Agreement ”)
under which Agreement any and all prior agreements between the
parties, including without limitation, the Original License
Agreements (including all attachments and agreements appended
thereto, and all amendments, purported or otherwise) and the Phase
Agreements (including all attachments thereto, and all amendments,
purported or otherwise) are being completely terminated with no
surviving obligations or duties, and pursuant to which Agreement,
the parties desire to execute this License whereby (i) the MVS
Parties shall license the Licensed Patents to XsunX, and (ii) XsunX
shall license the Derivative Works (as defined below) to
MVSI.
NOW
THEREFORE, in consideration of the foregoing Recitals, which
are made a part of this License, the mutual covenants,
agreements, representations, and warranties contained in this
License, and other good and valuable consideration, the
adequacy and receipt of which are hereby acknowledged, the
parties agree as follows:
AGREEMENT
1.
DEFINITIONS.
In
addition to the terms defined elsewhere in this License and in
any attached exhibits or schedules, the following terms shall
have the meanings set forth below:
1.1.
“Commercial Development” means
development, manufacturing, marketing, sale, offer(s) to sell,
lease, licensing, installation, application, service, training,
use, import, export or other promotional or market activities of
any kind.
1.2.
“Derivative Works ”
shall
mean any product or process, including research or development
related to such product or process, whether in complete or
incomplete form, developed by the parties between September 17,
2004 and the Effective Date pursuant to the Original License
Agreements or the Phase Agreements and delivered to the parties in
connection therewith .
1.3.
“
IP Rights ”
means
all forms of intellectual property rights or industrial property
rights and protections throughout the world, whether currently
existing or hereafter developed or acquired and whether now known
or hereafter recognized, and whether arising under United States
(state or federal) or foreign common or statutory law, granted by
contract, license, or otherwise and including, without limitation,
all: (a) inventions and discoveries (whether patentable or
unpatentable and whether or not reduced to practice), utility
models, and all related patents, patent applications and patent
disclosures, together with all reissuances, continuations,
continuations-in-part, revisions, extensions and reexaminations
thereof; (b) trademarks, service marks, trade dress, slogans,
logos, together with all goodwill associated therewith, and all
applications, registrations and renewals in connection therewith;
(c) copyrightable works, all copyrights and all applications,
registrations and renewals in connection therewith; (d) know-how,
software programs (in object code and source code form), modules,
components, utilities, subsets, objects, program listings, rights
in databases, rights to confidential or other proprietary
information and equivalent rights; (e) rights relating to substrate
glazing agents and reagents, disposables, chemical compounds and
like materials; (f) any other proprietary and/or intellectual
property rights; (g) copies, personal property and tangible
embodiments of any of the foregoing (in whatever form or medium);
and (h) any improvements, modifications, enhancements and/or
derivatives of the foregoing.
1.4.
“
Licensed Patents” means
the
following patents and patent application and any reissues,
re-examinations, divisionals, continuations and extensions
thereof: (a)
U.S. Patent No. 6,488,777 B2; (b) U.S. Patent No. 6,258,408 B1; and
(c) U.S. Patent Appl. No. 10/905,545 (Pub. No. US 2005/0150542
A1).
1.5.
“
MVS
Improvement ”
means any innovation, variation, enhancement, modification,
improvement, change relating to, or derivative work of, the
Licensed Patents or Derivative Works which the MVS Parties, their
Related Persons, sub-licensees or any of their employees or agents
or any other party engaged by the MVS Parties, make, author,
invent, discover, originate, conceive or reduce to practice solely
or in conjunction with others not a party to this License following
the Effective Date of this License.
1.6.
“
Phase Agreements ”
means the Phase 2 Development Agreement, Phase 3 Development
Agreement, Phase 4 Development Agreement, and Phase 4 X4-Base Line
Production Agreement.
1.7.
“
Phase 2 Development Agreement ”
means that certain written agreement between XsunX and MVSI
effective June 1, 2004, as amended.
1.8.
“
Phase 3 Development Agreement ”
means that certain written agreement between XsunX and MVSI
effective February 22, 2005, as amended.
1.9.
“
Phase 4 Development Agreement ”
means that certain written agreement between XsunX and MVSI
entitled “Four Terminal Development” dated December 22,
2005, as amended, together with the “Addendum to Phase 4
proposal” between XsunX and MVSI dated December 22,
2005.
1.10.
“
Phase 4 X4-Base Line Production Agreement
”
means that certain written agreement between XsunX and MVSI for
work memorialized in proposals effective December 2,
2005.
1.11.
“
Related Person ”
means
any person or entity directly, or indirectly through one or more
intermediaries, controlling, controlled by, or under common control
with, a party to this License, as the case may be and as context
requires. For purposes of this definition, “control”
means the possession, directly or indirectly, of the power to
direct or cause the direction of the management and policies of a
person or entity, whether through ownership of voting securities or
otherwise; provided, that a person or entity shall no longer be a
Related Person when through loss, divestment, dilution or other
reduction of ownership or management or operational responsibility,
the requisite control no longer exists .
1.12.
“
Reserved Fields of Use ”
means all
fields of use other than the XsunX Field of Use.
1.13.
“XsunX Field of Use
” means
Commercial Development by XsunX of commercial-grade (
i.e .,
web width 30 cms or more and nominal output exceeding 1
megawatt/year based on 1 shift operation) semi-transparent (greater
than 5% transparency) and opaque solar cells, photovoltaic
technologies, solar cell panels and methods of
manufacture.
1.14.
“
XsunX
Improvement ”
means any innovation, variation, enhancement, modification,
improvement, change relating to, or derivative work of, the
Licensed Patents or Derivative Works, which XsunX, its Related
Persons, sub-licensees or any of their employees or agents or any
other party engaged by XsunX, make, author, invent, discover,
originate, conceive or reduce to practice solely or in conjunction
with others not a party to this License following the Effective
Date of this License.
2.
GRANT AND SCOPE OF RIGHTS.
2.1.
Grant and Scope of License .
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a)
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During
the term of this License and subject to the terms and conditions
hereof, the MVS Parties grant to XsunX a worldwide, non-exclusive,
royalty-free, irrevocable, fully-paid up right and license,
with
the right to sublicense under the terms of Section 2.2
(Sublicenses),
to
use
and practice the Licensed Patents solely
in the XsunX Field of Use. For
the avoidance of doubt, the foregoing license grant to XsunX
expressly excludes the use, transfer and/or Commercial Development
of the Licensed Patents in the Reserved Fields of Use
;
provided, however, that XsunX or its sub-licensee shall be
permitted to develop non-commercial grade semi-transparent and
opaque solar cells solely for internal research and development of
XsunX or its sub-licensee and not for any use or sale or other
transfer by XsunX or its sub-licensee to a third party
.
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b)
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During
the term of this License and subject to the terms and conditions
hereof, XsunX hereby grants to MVSI a worldwide, non-exclusive,
royalty-free, irrevocable, fully-paid up right and license,
with
the right to sublicense under the terms of Section 2.2
(Sublicenses),
to
use,
practice, modify, adapt, distribute, sell, transfer, and/or
commercialize the Derivative Works .
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2.2.
Sublicenses .
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a)
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During
the term of this License and subject to the terms and conditions
hereof, the MVS Parties grant to XsunX the right to grant
limited,
non-transferable, revocable sublicenses
to third parties, without further right to sublicense, to use or
practice the Licensed Patents solely
in the XsunX Field of Use and otherwise in
accordance with the rights, restrictions and obligations of XsunX
under this License. Unless prohibited by law, XsunX shall ensure
that the terms of any sub1icense granted by it prohibits its
sub-licensees from granting to any other person a license of the
rights granted to such sub-licensee by XsunX .
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b)
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During
the term of this License and subject to the terms and conditions
hereof, XsunX grants to MVSI the right to grant limited,
non-transferable, revocable sublicenses
to third parties, without further right to sublicense, to use,
import, sell and offer to sell the
Derivative Works
in
accordance with the rights, restrictions and obligations of
MVSI
under
this License. Unless prohibited by law, MVSI
shall
ensure that the terms of any sublicense granted by it prohibits its
sub-licensees from granting to any other person a license of the
rights granted to such sub-licensee by MVSI
.
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c)
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Sublicenses
granted under this Section shall be in writing signed by each
sub-licensee and shall contain all of the material terms,
conditions, restrictions and reservations of this License and shall
preserve the rights and reservations of each party existing under
this License. Notwithstanding anything herein to the
contrary, any
breach of such terms or conditions of this License by any
sub-licensee shall be deemed to be a breach of this License by the
party granting such sub-license. Without limiting any rights or
remedies of either party hereunder, provided herein or otherwise
available at law or in equity, each party hereby appoints and
designates the other party as a third party beneficiary of each
sublicense granted by such party; the party granting the sublicense
shall include in each sublicense a stipulation that the other party
shall retain third party beneficiary rights to enforce (in such
other party’s name, if required by law) such other
party’s rights and remedies in connection
therewith.
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d)
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Termination
of this License by either party shall automatically operate as a
termination of any sublicense granted by the non-terminating party
pursuant to the Section 2 and an assignment by such non-terminating
party to the terminating party of all of the non-terminating
party’s right, title and interest in and to such
sublicense.
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e)
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Each
party shall be free to determine the royalties or pricing at which
it enters into a permitted sub-license.
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3.
TERM, DEFAULT AND TERMINATION
.
3.1.
Term .
This License shall be effective upon the Effective Date and,
unless
sooner terminated by operation of law or pursuant to Section 3.3 of
this License, shall
continue in force and effect from
the Effective Date until the expiration of the last to expire of
the patents included within the Licensed Patents.
3.2.
Default .
A
default shall occur under this License in the event of: (a)
any breach of a material term of this License which is not
cured (if curable) by the defaulting party within thirty (30)
business days after receiving written notice of default from
the non-defaulting party; or (b) the
filing by a Party of a voluntary petition in bankruptcy or
under any similar insolvency law, or an assignment for the
benefit of creditors, or the filing of an involuntary petition
in bankruptcy or under any similar insolvency law which
remains undismissed thirty (30) days after such filing, or a
levy or attachment against all or substantially all of a
Party’s assets, or if a Party ceases to function as a
going concern or ceases to conduct its operations in the
normal course of business or is wound up or dissolved or
declared insolvent.
(c) A
default by any one of the MVS Parties shall be deemed a
default of the other of the MVS Parties.
3.3.
Termination .
In
the event of a default under Section 3.2(a), 3.2(b) or 3.2(c), the
non-defaulting party may elect to terminate this License. Except as
otherwise expressly provided in this License, in the event of such
termination, no residual rights will remain with the parties and
within fifteen (15) calendar days of such termination: (a) MVSI
shall cease all use of the Derivative Works and shall notify any
sublicensee of the Derivative Works that the sublicense is
terminated pursuant to this License and provide a copy of such
notification to XsunX; and (b) XsunX shall cease all use of the
Licensed Patents and shall notify any sublicensee of the Licensed
Patents that the sublicense is terminated pursuant to this License
and provide a copy of such notification to the MVS Parties
.
3.4.
Other Remedies; Preservation of Rights Under Section 365(n) of
Bankruptcy Code. Subject
to the terms of this License, in the event of a default of this
License, the non-defaulting Party(ies)’s right to terminate
this License pursuant to Section 3.3 shall be non-exclusive, and
the non-defaulting Party(ies) shall be entitled to pursue any
additional or other remedy available by law. Without limiting the
foregoing, nothing in this License shall be deemed a waiver with
respect to the rights of any Party arising under Section 365(n) of
the United States Bankruptcy Code, 11 U.S.C. § 365(n), or any
other remedy available by law.
3.5.
Survival .
The rights and obligations of the parties which by their nature are
intended to survive any such termination, shall survive the
termination of this License and continue in force.
4.
PROPRIETARY RIGHTS.
4.1.
Ownership of Licensed Patents and/or Derivative Works
.
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a)
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Subject
to the license granted to XsunX in Article 2 (Grant and Scope of
Rights) and except for the Derivative Works, XsunX
acknowledges that, as betwe
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