Exhibit 10.1
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AMENDED AND RESTATED TECHNOLOGY LICENSE AGREEMENT
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THIS AMENDED AND RESTATED TECHNOLOGY LICENSE AGREEMENT (the
"Agreement"), made as of the 16th day of May, 2008, by and between
CopyTele,
Inc., a Delaware corporation having an address at 900 Walt Whitman
Road,
Melville, New York 11747 ("CopyTele"), and Videocon Industries
Limited, a
company existing under the laws of India, having its principal
place of business
at 2nd Floor Fort House, D.N. Road, Fort, Mumbai - 400 001 (INDIA)
("Videocon").
W I T N E S S E T H:
WHEREAS CopyTele has developed and is the owner of technology
(the
"CopyTele Technology"), variously protected by patents, patent
applications,
know-how and trade secrets, relating to thin flat Low Voltage
Phosphor displays
("Displays"); and
WHEREAS, Videocon is
in the business of
developing,
manufacturing,
and selling CRT, LCD and Plasma displays; and
WHEREAS, Videocon and CopyTele propose jointly to further develop
the
CopyTele Technology to make it suitable to be utilized in
commercial
applications such as television displays; and
WHEREAS, the Parties desire to set forth their agreement for
manufacturing and selling Modules containing Displays; and
WHEREAS, Videocon desires to receive a transfer of the CopyTele
Technology and a license under the CopyTele Technology for the
manufacture and
distribution of such Modules; and
WHEREAS, CopyTele is willing to transfer such CopyTele Technology
and
grant Videocon such a license, subject to the terms and conditions
of this
Agreement;
WHEREAS, CopyTele and Videocon had entered into a Technology
License
Agreement on 2nd November 2007 which will be amended, restated and
replaced by
this Agreement.
WHEREAS, Government of India, Ministry of Commerce &
Industry,
Department of Industrial Policy & Promotion, Secretariat for
Industrial
Assistance (PAB - IL Section) has granted its approval to certain
terms and
conditions of this Agreement vide letter No. 27 (2008) / 7 (2008) /
PAB - IL,
which shall form an integral part of this Agreement and has been
incorporated in
this Agreement in the form of Exhibit F.
NOW, THEREFORE, in consideration of their mutual covenants
herein
contained, and for other good and valuable consideration, and
intending to be
legally bound hereby, the parties hereto agree as follows:
Article I.
DEFINITIONS
<PAGE>
Section 1.01 "Copyright Rights" shall mean all rights in works of
authorship,
including diagrams, schematics, flow charts, manuals, and
documentation,
relating to the CopyTele Technology (all of the foregoing works
being referred
to herein as the "Works"), including registrations of copyright in
the Works.
Section 1.02 "CopyTele Technology" shall have the meaning set forth
in the
preamble, and shall include nanotube devices for use in displays,
as well as
thin film electron emitters and shall also include the technical
information,
know-how, manufacturing techniques, engineering data, specification
of materials
and other information in the possession of CopyTele relating to or
in respect of
manufacture and use of the Products and all or part of which may be
necessary to
enable Videocon to manufacture the Products to a standard and
quality similar to
the standard and quality of Modules.
Section 1.03 "Dhoot Family" shall mean Mr. V.N. Dhoot, Mr. P.N.
Dhoot, Mr. R.N.
Dhoot and any of their spouses and children.
Section 1.04 "Effective Date" shall mean May 16, 2008.
Section 1.05 "Ex-Factory Price" shall have the meaning set forth in
Exhibit E.
Section 1.06 "Modules" shall have the meaning set forth in Exhibit
A.
Section 1.07 "Products" shall mean Modules that are (a) within the
scope of any
claim of the Patent Rights or (b) made with the use of or embody
any of the
Trade Secrets or the Works.
Section 1.08 "Patent Rights" shall mean those United States and
foreign patents
and patent applications and design applications and registrations
identified in
Exhibit B, and patents and patent applications in the same and
other countries
having the same substantive disclosure and claiming the benefit of
such
applications, including continuations, divisionals,
re-examinations, re-issues
and extensions thereof.
Section 1.09 "Trade Secrets" shall mean all confidential and
proprietary
technical information of CopyTele relating to the CopyTele
Technology and
disclosed by CopyTele to Videocon in connection with this
Agreement.
Section 1.10 "Videocon Group Company" shall mean a company in which
Videocon,
the Dhoot Family, or both hold either directly or indirectly at
least 50% of the
share capital or have management control.
Article II.
LICENSE
Section 2.01 CopyTele hereby grants to Videocon, subject to the
provisions of
Section 2.04 below, a non-transferable, worldwide, royalty-bearing
right and
license under the Patent Rights, the Trade Secrets, the Copyright
Rights and
other CopyTele Technology to manufacture, use, sell, and offer for
sale Products
or other Products that CopyTele and Videocon may mutually agree
upon in writing.
CopyTele shall continue to have the right to produce and market,
and to utilize
the entities listed in Exhibit C to produce and market, Products
utilizing the
CopyTele Technology.
<PAGE>
Section 2.02 Joint agreement of CopyTele and Videocon in writing
shall be
necessary in case of grant of licenses to third parties under the
CopyTele
Technology, upon reasonable terms and conditions as agreed by
CopyTele and
Videocon.
Section 2.03 The license granted herein does not include the right
to have
Products made by another.
Section 2.04 Videocon shall be entitled to grant sublicense of the
Patent
Rights, Trade Secrets, Copyright Rights and other CopyTele
Technology only to
other Videocon Group Company/ies (any such Videocon Group Company
to which
Videocon has granted such a sublicense, a "Sublicensee"), and any
such
sublicense shall be subject to the terms and conditions of this
Section 2.04. In
the event that Videocon sublicenses the Patent Rights, the Trade
Secrets, the
Copyright Rights or other CopyTele Technology to any Sublicensee,
such
Sublicensee shall be bound by the terms of this Agreement,
including, without
limitation, that it shall be liable to pay to CopyTele royalty for
the Products
sold by it on the same terms and at the same rate as provided in
Article VI. In
the event of any such sublicense, Videocon shall procure in writing
from such
Sublicensee a sublicense agreement confirming the payment of
royalty and
adherence of the terms and conditions of this Agreement as
applicable to it, and
shall provide to CopyTele a copy of such sublicense agreement.
Videocon shall
give to CopyTele prompt written notice of such sublicense, setting
forth the
name and address of such Sublicensee, jurisdiction of incorporation
or
formation, and precise amount and nature of Videocon's and the
Dhoot Family's
ownership interest therein. In the event any Sublicensee to whom
such
sub-license is granted ceases to qualify as Videocon Group Company,
the
sublicense granted to such Sublicensee shall forthwith stand
terminated.
Videocon shall be responsible for the performance by any permitted
Sublicensee,
and any breach by any permitted Sublicensee shall be deemed a
breach by
Videocon.
Section 2.05 The license granted herein includes the right only to
sell and
offer for sale completed Products, and not components or
sub-assemblies thereof,
to any third party or Videocon Group Company. However, Videocon or
any
Sublicensee shall be entitled to sell the components or
sub-assemblies to any
other Videocon Group Company.
Section 2.06 The rights licensed under the Copyright Rights include
the rights
to copy and modify the Works for the internal use of Videocon in
connection with
the manufacture, use, sale and offer for sale of Products, but not
the right to
publish, distribute, transmit or publicly display the Works, or any
combination
thereof, in whole or in part.
Article III. DISCLOSURE
AND TARGET JOINT DEVELOPMENT PROGRAM
Section 3.01 CopyTele shall use its commercially reasonable efforts
to disclose
to Videocon the CopyTele Technology to the extent required for
suitably
qualified and experienced (in the reasonable judgment of CopyTele)
personnel of
Videocon to understand the CopyTele Technology. Such efforts shall
consist of
furnishing to Videocon such copies of existing documentation of the
CopyTele
Technology as CopyTele deems reasonable, and providing reasonable
training of
suitably qualified and experienced (in the reasonable judgment of
CopyTele)
Videocon personnel at CopyTele's facility in Melville, New York, or
at
Videocon's facilities at mutually agreeable times.
<PAGE>
Section 3.02 CopyTele and Videocon shall jointly cooperate, prior
to production,
to jointly implement the CopyTele Technology to produce prototypes
of the
Modules in accordance with the target task & schedule as
indicated in Exhibit D.
Any patent required to be registered in respect of such
implementation of the
CopyTele Technology shall be jointly applied for by CopyTele and
Videocon.
Article IV.
PRODUCTION
Section 4.01 To prepare for the production and manufacture of the
Products,
Videocon, at Videocon's sole expense, with the assistance of
CopyTele, shall
undertake the following:
(a) Videocon
shall provide all design and process engineering required to
produce the Products based on the CopyTele Technology.
(b) CopyTele
and Videocon shall hold joint design reviews as required from
time to time.
(c) CopyTele
and Videocon shall jointly agree, in writing, concerning
Product acceptance and testing criteria for engineering
samples.
(d) Videocon
and CopyTele shall each record all progress and achievements
in preparation for production and deliver progress reports to the
other
within one week after the end of each calendar month until the
commencement of commercial production of the Products.
(e) Videocon
shall purchase, at its sole expense, all tooling and fixtures
for the production of Products.
Section 4.02 Throughout the term of this Agreement, Videocon shall
deliver
(and/or cause to be delivered by a Sublicensee) to CopyTele such
information as
CopyTele shall reasonably request regarding Videocon's (or such
Sublicensee's)
testing of the Products.
Section 4.03 After commencement of commercial production of the
Products,
Videocon and any permitted Sublicensee shall provide CopyTele with
production
samples from time to time as may be reasonably requested by
CopyTele. Videocon
and CopyTele shall hold joint reviews of such production as may be
reasonably
necessary to ensure quality of the Product from time to time.
Section 4.04 Videocon may purchase raw materials for use in
production of
Products from any source, including CopyTele, as elected by
Videocon.
Article V.
IMPROVEMENTS
Section 5.01 All developments and improvements subsequent to the
Effective Date
in the Products, design changes, modifications, revisions,
additions and the
like to CopyTele Technology ("Improvements") developed, conceived
or reduced to
practice jointly or severally by employees of Videocon (or
contractors or agents
of Videocon), or employees of CopyTele (or contractors or agents of
CopyTele),
shall be jointly owned, in equal undivided shares, by Videocon and
CopyTele. The
parties shall decide jointly on seeking patent protection in any
Improvements
and in strategy in filing and prosecuting patent applications, and
shall share
equally in the expense of patent application preparation and
prosecution, and
patent maintenance.
<PAGE>
Section 5.02 Each party shall execute, and shall cause its
employees,
contractors and agents to execute, such assignments of patent
applications,
confirmatory licenses, and other documents that the other or its
counsel may
reasonably request to assure that the rights licensed and granted
under this
Article V fully vest in the other party.
Section 5.03 Videocon represents, warrants and covenants that there
now are and
will be throughout the term of this Agreement valid and enforceable
written
agreements, between Videocon and its employees, contractors and
agents, pursuant
to which Videocon will have sole ownership of any Improvement and
sole ownership
of any contribution of such employee, contractor or agent to any
Improvement,
and further obligating such employees, contractors and agents to
provide
cooperation, execute documents, and otherwise perform those acts as
may be
required for Videocon to fulfill its obligations under Sections
5.01 and 5.02
hereof. Videocon further warrants that the grant of Improvements to
CopyTele
shall be free of any claims for compensation by any Videocon
employee,
contractor or agent.
Article VI.
PAYMENTS; INSEPCTION; REFERRAL
Section 6.01 FEE AMOUNTS. In consideration of the disclosure of
CopyTele
Technology under this Agreement, Videocon agrees to pay CopyTele
the technology
transfer fees ("Technology Transfer Fees") in the amounts and on
the dates set
forth in Exhibit E. In consideration of the license granted herein,
Videocon
agrees to pay CopyTele a royalty (the "Percentage Royalty") equal
to the
Percentage Royalty Rate, as set forth in Exhibit E, of the
Ex-Factory Price of
all Products sold by Videocon or any permitted Sublicensee to any
party. In the
event of any sublicense, Videocon shall ensure that such
Sublicensee pays to
CopyTele the Percentage Royalty as set forth in Exhibit E.
Section 6.02 TIME OF PAYMENT. Videocon shall pay to CopyTele the
Technology
Transfer Fees at the times set forth in Exhibit E. Videocon shall
pay, and cause
each Sublicensee, as applicable, to pay, to CopyTele the Percentage
Royalties
with respect to sales in each calendar quarter on or before the
90th day
following the end of such calendar quarter.
Section 6.03 MANNER OF PAYMENT. Payments shall be made, in U.S.
dollars, by
electronic transfer to an account, designated by CopyTele in
writing, no later
than the due date.
Section 6.04 LATE PAYMENTS; INTEREST. If Videocon or any
Sublicensee fails to
make any payment of Percentage Royalties, Technology Transfer Fees
or other
amount due under this Agreement to CopyTele within ten business
days of its due
date, Videocon or such Sublicensee shall, in addition to and
without limitation
of CopyTele's other remedies hereunder, pay to CopyTele interest
thereon from
the date ten business days after its due date until paid at the
annual rate
equal to LIBOR then in effect plus 5% per annum; provided that in
no event shall
the rate of interest required hereunder exceed the maximum rate
permitted under
applicable law.
Section 6.05 AUDIT. Videocon shall deliver to CopyTele a statement
of the
royalty calculations as certified by its statutory auditors (and
those of any
Sublicensee that is liable to pay a royalty in accordance with this
Article VI),
stating the amount of the license fees payable to CopyTele under
this Agreement.
Such statement of royalty calculations shall be delivered by
Videocon to
CopyTele on or before 20th July for each period of January to June
and on or
before 20th January for each period of July to December. In the
event CopyTele
requires any further details in respect of any amounts stated in
the
calculations statements, Videocon shall within 7 (seven) working
days of such
request furnish such required details and/or invoice, as the case
may be
including extracts from its books of records duly certified by the
statutory
auditors. In the event Videocon and CopyTele are unable to resolve
any
differences as regards payment of royalty, the matter will be
referred to CEO of
CopyTele and Videocon. In the event the matter remains unresolved
after such
reference to CEOs of CopyTele and Videocon, the differences shall
be referred to
arbitration under the provisions of Section 15.09. Such submission
of accounts
statement and furnishing of additional de
