|
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
|
1)
|
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.].
|
|
2)
|
The Parties wish to settle this matter [The confidential
material contained herein has been omitted and has been separately
filed with the Commission.].
|
|
3)
|
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).
|
NOW, THEREFORE, in consideration of the mutual premises set
forth below, the Parties agree as follows:
1. Definitions
|
|
1)
|
"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;
|
|
|
2)
|
" [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
|
- 1 of 6 -
|
|
3)
|
"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.
|
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:
|
|
1)
|
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.];
|
- 2 of 6 -
|
|
2)
|
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.];
|
|
|
3)
|
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
|
|
|
4)
|
The sublicense agreement between Epson and each Subl
|
|
