This
PATENT LICENSE AGREEMENT (this “ Agreement
” ) is entered into, as of the Effective Date (defined
below), by and between Irvine Sensors Corporation, a Delaware
corporation, with an office at 3001 Redhill Ave., Bldg. 4,
Suite 108, Costa Mesa, CA 92672 ( “ Seller
” ) and Aprolase Development Co., LLC, a Delaware limited
liability company, with an address at 2711 Centerville Road, Suite
400, Wilmington, DE 19808 (“ Purchaser
”). The parties hereby agree as follows:
1.1 Seller
( “ Seller ” ) sold to Purchaser certain
pending patent applications, patents, and/or related foreign
patents and applications ( “Patents” )
pursuant to a Patent Purchase Agreement (
“PPA” ) entered into by the parties on
December 11, 2008, and as amended in the Second Amendment to
the Patent Purchase Agreement dated March 18, 2009.
1.2
Purchaser desires to grant a license to the Patents to Seller in
accordance with the terms of this Agreement.
All
capitalized used but not defined herein shall have the meanings set
forth in the PPA.
3.1
License . Upon the Closing, Purchaser hereby grants to
Seller, under the Patents, and for the lives thereof, a
royalty-free, non-exclusive, non-sublicensable, non-transferable
right and license ( “Seller License” ) to
practice the methods and to make, have made, use, distribute,
lease, sell, offer for sale, import, export, develop and otherwise
dispose of and exploit any Seller products covered by the Patents (
“Covered Products ). The Seller License shall
apply to the reproduction and subsequent distribution of Covered
Products under Seller’s trademarks and brands, in
substantially identical form as they are distributed by the Seller,
by authorized agents of the Seller such as a distributor,
replicator, VAR or OEM. The Seller acknowledges and agrees that the
Seller License is not intended to cover foundry or contract
manufacturing activities that the Seller may undertake on behalf of
any person that is not the Seller. As a result, Covered Products
shall exclude any products or services manufactured, produced or
provided by the Seller on behalf of any person that is not the
Seller (a) from designs received in substantially completed
form from a source other than the Seller and (b) for resale to
such person that is not the Seller (or to customers of, or as
directed by, any person that is not the Seller) on essentially an
exclusive basis. The Seller License is nontransferable (by
operation of law or otherwise), except as set forth in paragraph
3.2.
3.2
Limitation on Transferability of Subsidiary License . The
Seller License ** *
. In the
event of such a transfer (a “Transfer” ),
the ***, and the ***. Seller shall, within thirty (30) days
after a Transfer, provide Purchaser with written notice of such
Transfer, which notice will contain: (i) the effective date of
the Transfer, ***, as of the effective date of the Transfer, and
the Seller License will immediately terminate in the event that
Seller fails to provide such notice as and when set forth above.
The *** may not *** the Seller License ***. The Seller License will
immediately terminate upon any attempted transfer *** that is not
in strict conformance with this paragraph 3.2, and any such
attempted transfer will be void.
3.3
Reservation of Rights . Except as set forth in paragraph 3.1
above, Purchaser reserves all right, title and interest in and to
the Assigned Patent rights.
4.1
Limitation on Consequential Damages . NEITHER PARTY WILL
HAVE ANY OBLIGATION OR LIABILITY (WHETHER IN CONTRACT, WARRANTY,
TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, AND NOTWITHSTANDING ANY
FAULT, NEGLIGENCE (WHETHER ACTIVE, PASSIVE OR IMPUTED),
REPRESENTATION, STRICT LIABILITY OR PRODUCT LIABILITY), FOR COVER
OR FOR ANY INCIDENTAL, INDIRECT OR CONSEQUENTIAL, MULTIPLIED,
PUNITIVE, SPECIAL, OR EXEMPLARY DAMAGES OR LOSS OF REVENUE, PROFIT,
SAVINGS OR BUSINESS ARISING FROM OR OTHERWISE RELATED TO THIS
AGREEMENT, EVEN IF A PARTY OR ITS REPRESENTATIVES HAVE BEEN ADVISED
OF THE POSSIBILITY OF SUCH DAMAGES. THE PARTIES ACKNOWLEDGE THAT
THESE EXCLUSIONS OF POTENTIAL DAMAGES WERE AN ESSENTIAL ELEMENT IN
SETTING CONSIDERATION UNDER THIS AGREEMENT.
4.2
Compliance With Laws . Notwithstanding anything contained in
this Agreement to the contrary, the obligations of the parties with
respect to the consummation of the transactions contemplated by
this Agreement shall be subject to all laws, present and future, of
any government having jurisdiction over the parties and this
transaction, and to orders, regulations, directions or requests of
any such government.
4.3
Confidentiality of Terms . The parties hereto will keep the
terms and existence of this Agreement
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