Settlement and License Agreement
This Settlement and License Agreement (this “
Agreement ”) is entered into and effective on July 31,
2006 (the “ Effective Date ”) by and between
Universal Display Corporation( “UDC” ), a New
Jersey corporation, having a principal place of business at 375
Philips Blvd. Ewing, NJ 08618 U.S.A. and Seiko Epson Corporation
(“ Epson ”), a Japanese corporation, having a
principal place of business at 3-3-5 Owa, Suwa-shi, Nagano-ken,
Japan, (collectively “ the Parties ”).
WHEREAS
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1)
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Epson owns U.S. Patent
Applications Serial Nos. [The confidential material contained
herein has been omitted and has been separately filed with the
Commission.] (the “Epson Applications” ) [The
confidential material contained herein has been omitted and has
been separately filed with the Commission.].
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2)
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The Parties wish to
settle this matter [The confidential material contained herein has
been omitted and has been separately filed with the
Commission.].
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3)
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UDC wishes to license
Epson, and Epson wishes to receive a license to, the [The
confidential material contained herein has been omitted and has
been separately filed with the Commission.] Patent as well as the
[The confidential material contained herein has been omitted and
has been separately filed with the Commission.] Patent Family
(defined below).
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NOW, THEREFORE, in consideration of the mutual premises set forth
below, the Parties agree as follows:
1. Definitions
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1)
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“Epson
Subsidiary (ies)” shall mean any entity of which more
than fifty percent (50%) of the outstanding shares, stock, or
ownership interest entitled to vote (other than shares or stock
whose voting rights are subject to restriction) is owned or
directly or indirectly controlled by Epson; provided, however, that
such entity shall cease to be an Epson Subsidiary if it
subsequently fails to meet the above criteria. In the event that
Epson’s acquisition of ownership or control in an entity
meeting the above criteria occurs after the Effective Date (but
excluding [The confidential material contained herein has been
omitted and has been separately filed with the Commission.], or any
of their affiliates or joint ventures in whom they are participants
by ownership or management), then such an entity shall be deemed to
be an Epson Subsidiary from the date of such ownership or
control;
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2)
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“ [The
confidential material contained herein has been omitted and has
been separately filed with the Commission.] Patent
Family” shall mean the [The confidential material
contained herein has been omitted and has been separately filed
with the Commission.] Patent and all continuations,
continuations-in-part, divisionals, reissues, and patents and
patent applications granting rights outside of the United States
that are related to the [The confidential material contained herein
has been omitted and has been separately filed with the
Commission.] Patent by a claim of priority, and all claims of other
patents and patent applications, granting rights anywhere in the
world, that could have properly been presented in an interference
between the [The confidential material contained herein has been
omitted and has been separately filed with the Commission.] Patent
and one or more of the Epson Applications as corresponding to a
count that could have been presented in the interference;
notwithstanding the above, no claim of U.S. Patent No. [The
confidential material contained herein has been omitted and has
been separately filed with the Commission.] (the “[The
confidential material contained herein has been omitted and has
been separately filed with the Commission.] Patent ”)
is included in the [The confidential material contained herein has
been omitted and has been separately filed with the Commission.]
Patent Family; and
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3)
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“UDC OLED
Portfolio” shall mean all patents and patent
applications; (i) which are related to and/or applicable to [The
confidential material contained herein has been omitted and has
been separately filed with the Commission.]; (ii) which exclude the
[The confidential material contained herein has been omitted and
has been separately filed with the Commission.] Patent Family;
(iii) which are owned or controlled by UDC on or after the
Effective Date; and (iv) under which UDC has the right to grant
licenses to Epson on or after the Effective Date.
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2. License Agreement for the UDC OLED Portfolio
It is agreed that Epson and UDC will proceed with a discussion on a
License Agreement (“ License Agreement” ), in
which UDC would grant Epson a worldwide, non-exclusive and
royalty-bearing license for those aspects of the UDC OLED Portfolio
upon which the Parties mutually agree. The Parties will start
negotiations for the License Agreement in an amicable manner on or
around [The confidential material contained herein has been omitted
and has been separately filed with the Commission.], to make an
effort in good faith to execute the License Agreement by [The
confidential material contained herein has been omitted and has
been separately filed with the Commission.]
3. Grant of License for the [The confidential material
contained herein has been omitted and has been separately filed
with the Commission.] Patent Family
UDC does hereby grant Epson and Epson Subsidiaries a non-exclusive,
worldwide, perpetual, royalty-free, and irrevocable license for the
[The confidential material contained herein has been omitted and
has been separately filed with the Commission.] Patent Family. The
license for the [The confidential material contained herein has
been omitted and has been separately filed with the Commission.]
Patent Family is effective at the time of execution of this
Agreement and UDC’s receipt of payment under Section 4
below.
UDC also does hereby grant Epson rights to sublicense to third
party(ies) (“ Sublicensee” ) for the [The
confidential material contained herein has been omitted and has
been separately filed with the Commission.]Patent Family without
any payment of additional consideration made by Epson to UDC,
provided that such sublicense rights shall be subject to the
following limitations:
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1)
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Epson is authorized to
grant sublicenses to entities to whom UDC has not already licensed
the [The confidential material contained herein has been omitted
and has been separately filed with the Commission.] Patent Family
at the time of [The confidential material contained herein has been
omitted and has been separately filed with the Commission.];
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2)
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Epson is authorized to
grant sublicenses under the [The confidential material contained
herein has been omitted and has been separately filed with the
Commission.] Patent Family at the time of [The confidential
material contained herein has been omitted and has been separately
filed with the Commission.];
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3)
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Epson is not authorized
to sublicense the [The confidential material contained herein has
been omitted and has been separately filed with the Commission.]
Patent Family to [The confidential material contained herein has
been omitted and has been separately filed with the Commission.],
or any of their affiliates or joint ventures in whom they are
participants by ownership or management; and
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4)
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The sublicense
agreement between Epson and eac
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