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EXHIBIT 10.1
FORM OF CROSS-LICENSE AGREEMENT
BETWEEN
BE AEROSPACE, INC.
AND
ADVANCED THERMAL SCIENCES CORPORATION
This Agreement is made this _________ day of _______, 2000, between BE
Aerospace, Inc., a Delaware corporation, including its subsidiary BE
Intellectual Property Inc., a Delaware corporation (collectively hereinafter
"BE"), and Advanced Thermal Sciences Corporation, a Delaware corporation
(hereinafter "ATS").
WITNESSETH:
WHEREAS, BE and ATS each desire to acquire a perpetual, worldwide,
exclusive, royalty-free license under certain intellectual property of the other
party, in accordance with the terms and conditions set forth herein; and
NOW THEREFORE, in consideration of the premises and mutual covenants
herein contained, the parties hereto agree as follows:
ARTICLE I. DEFINITIONS
Where used in this Agreement, each term or expression set forth below
shall have the meaning ascribed to it, whether used in the singular, plural or
possessive form.
A. "Subsidiary" shall mean any corporation, company or other entity in
which a party hereto, directly or indirectly, owns or controls at
least fifty-one percent (51%) of the outstanding stock or other
interest entitled to vote for the election of directors or similar
management control (other than preferred or other stock entitled to
vote only upon failure of the entity to pay dividends), or if such
entity/organization does not have outstanding shares or securities,
then the majority of the ownership representing the right to manage
the corporation or entity is owned, directly or indirectly by a party
hereto, but only for so long as such ownership or control exists.
B. "Person" shall mean any person, entity or "group" within the meaning
of Section 13(d)(3) or Section 14(d)(2) of the Exchange Act, except
that such term shall not include (i) either party or any of its
subsidiaries, (ii) a trustee or other fiduciary holding securities
under an employee benefit plan of either party or any of its
subsidiaries, (iii) an underwriter temporarily holding securities
pursuant to an offering of such securities, or (iv) a corporation
owned, directly or indirectly, by
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the shareholders of either party in substantially the same proportions
as their ownership of stock of either party.
C. "Licensed BE Patents" shall mean all current and future patents,
utility models, design patents, design registrations, certificates of
invention and other governmental grants for the protection of
inventions or industrial designs anywhere in the world and all
continuations, divisionals, continuations-in-part, reissues, renewals,
re-examinations and extensions of any of the foregoing, throughout the
world owned by, assigned to, or licensed to (with the right of
sublicense) BE, for which the earliest priority date is before the
Capture Date.
D. "Licensed ATS Patents" shall mean all current and future patents,
utility models, design patents, design registrations, certificates of
invention and other governmental grants for the protection of
inventions or industrial designs anywhere in the world and all
continuations, divisionals, continuations-in-part, reissues, renewals,
re-examinations and extensions of any of the foregoing, throughout the
world owned by, assigned to, or licensed to (with the right of
sublicense) ATS, for which the earliest priority date is before the
Capture Date.
E. "Licensed Know-How" shall mean all confidential and proprietary
information and data known to or licensed to (with the right to
sublicense) a party, to the extent such information is known to the
party before the Capture Date. Licensed Know-How includes, but is not
limited to, documentation, trade secrets, manufacturing and production
processes and techniques, research and development information,
technical data, know-how, formulae, procedures, protocols, techniques
and results of experimentation and testing.
F. "Licensed Copyrights" shall mean (i) any copyright in any original
work of authorship fixed in any tangible medium of expression before
the Capture Date, whether registered or unregistered, including any
applications for the registration thereof, (ii) any corresponding
foreign copyrights under the laws of any jurisdiction, in each case,
whether registered or unregistered, and (iii) any corresponding moral
rights under the laws of any jurisdiction.
G. "Field" shall mean (i) the Manufacture or Use of Semiconductors or
Semiconductor Manufacturing Equipment, (ii) the Manufacture or Use of
Data Processing and Storage Equipment, (iii) the Manufacture or Use of
Image Displays, and (iv) the Manufacture or Use of Telecommunications
Equipment.
H. "ATS Field" shall mean (i) the Manufacture or Use of Semiconductors or
Semiconductor Manufacturing Equipment, (ii) the Manufacture or Use of
Data Processing and Storage Equipment, (iii) the Manufacture or Use of
Image Displays, (iv) the Manufacture or Use of Telecommunications
Equipment, and (v) Manufacture or Use of Automated Testing Equipment.
I. "Manufacture or Use of Semiconductors or Semiconductor Manufacturing
Equipment" shall mean manufacturing, and manufacturing support
equipment, for the use or fabrication of semiconductor wafers,
integrated circuits, and/or
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semiconductor components or subsystems.
J. "Manufacture or Use of Data Processing and Storage Equipment" shall
mean the use or manufacturing of products relating to thermal, flow,
or mechanical operating conditions in processor, multiprocessor,
microprocessor, high capacity data handling and storage systems.
K. "Manufacture or Use of Image Displays" shall mean the use or
manufacturing of production equipment for dynamic and/or static image
presentation, graphic output units, display systems and devices.
L. "Manufacture or Use of Telecommunications Equipment" shall mean the
use or manufacturing of telecommunication systems and devices for
transmission, propagation and reception.
M. "Manufacture or Use of Automated Testing Equipment" shall mean the use
or manufacturing of temperature controls, motion controls, servo
systems, or throughput monitoring and processing systems for automated
testing equipment in the Field.
N. "Capture Date" shall mean August 1, 2017.
O. A "Change in Control" shall be deemed to have occurred when:
1. Any Person (other than BE, in the case of ATS) is or becomes
the "beneficial owner" (as defined in Rules 13d-3 and 13d-5
of the Securities Exchange Act of 1934 (the "Exchange Act"),
whether or not either party is then subject to the terms of
the Exchange Act), except that a Person shall be deemed to
have "beneficial ownership" of all securities that such
Person has the right to acquire, whether such right is
exercisable immediately or only after the passage of time,
directly or indirectly, of securities of either party
representing more than forty (40%) percent of the combined
voting power of the party's then-outstanding securities; or
2. During any consecutive two year period, the individuals who
were directors on the date of this Agreement, together with
or any director whose appointment or election by the Board
or nomination for election by the party's shareholders was
approved or recommended by a vote of at least two-thirds
(2/3) of the directors then in office, who either were
directors at the beginning of such period or whose
appointment, election or nomination for election was
previously so approved or recommended, cease for any reason
to constitute a majority of the directors then serving on
the party's board of directors; or
3. Either party consolidates with, or merges with or into,
another Person or sells, assigns, conveys, transfers, leases
or otherwise disposes of all or substantially all of its
assets to any Person, or any Person consolidates with, or
merges with or into, either party, in any such event
pursuant to a transaction in which the outstanding voting
stock of such party is converted into or exchanged for
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cash, securities or other property, other than any such
transaction where immediately after such transaction no
Person is the "beneficial owner" (as defined in Rules 13d-3
and 13d-5 under the Exchange Act, except that a Person shall
be deemed to have "beneficial ownership" of all securities
that such Person has the right to acquire, whether such
right is exercisable immediately or only after the passage
of time), directly or indirectly, of more than 40% of the
combined voting power of the surviving or transferee
corporation's then outstanding securities; or
4. The shareholders of either approve a plan of complete
liquidation or dissolution of either party or any final
order, judgment or decree of a court of competent
jurisdiction shall be entered against either party decreeing
the dissolution or liquidation of such party.
ARTICLE II. LICENSE GRANT
A. License from BE to ATS. BE grants to ATS a perpetual,
worldwide, exclusive, irrevocable, non-transferable, royalty-free and
fully-paid-up license under the Licensed BE Patents, to its Licensed
Know-How, and to its Licensed Copyrights, to make, have made, use,
sell, and offer to sell its products, and to provide services in
connection therewith in the ATS Field. The license hereunder shall not
include any license to make, have made, use, sell, or offer to sell,
any product, method or process, or provide any service in connection
therewith, outside of the ATS Field. The license granted hereunder
shall be subject to any rights granted to third parties prior to the
effective date of this Agreement.
B. License from ATS to BE. ATS grants to BE a perpetual,
worldwide, exclusive, irrevocable, non-transferable, royalty-free and
fully-paid-up license under the Licensed ATS Patents, to ATS'
Licensed Know-How, and to ATS' Licensed Copyrights, to make, have
made, use, sell, and offer to sell any and all products, and to
provide services in connection therewith in all other areas outside of
the ATS Field. The license hereunder shall not include any license to
make, have made, use, sell, and offer to sell, any product, method or
process, or provide any service in connection therewith in the ATS
Field. The license granted hereunder shall be subject to any rights
granted to third parties prior to the effective date of this
Agreement.
C. Duty to Teach. Either party to this Agreement may, on a
semi-annual basis, request the other party to reasonably furnish or
disclose any Licensed Know-How. Upon the receipt of a party's request
for the disclosure of Licensed Know-How, the explaining party's
obligations hereunder shall be deemed satisfied upon providing the
other party with copies of applicable drawings and notes to the extent
available, and if reasonably necessary, access with the explaining
party's designated person at his or her place of usual employment to
reasonably explain such Licensed Know-How to the requesting party.
Such access shall not exceed eight hours in duration and shall be at
the requesting party's expense.
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D. Sublicenses. The licenses herein granted shall include the
right of BE and ATS to sublicense the rights licensed to them
hereunder to their Subsidiaries. Each Subsidiary so sublicensed shall
be bound by the terms and conditions of this Agreement as if it were
named as a licensee herein in the place of the party with which the
sublicense originated. Any sublicense granted by ATS to a Subsidiary
shall terminate (with no rights of survival of licenses previously
granted to said Subsidiary) on the date such Subsidiary ceases to be a
Subsidiary. Any sublicense granted by BE to a Subsidiary shall not
terminate on the date such Subsidiary ceases to be a Subsidiary,
unless so provided in its sublicense agreement.
ARTICLE III. TERM AND TERMINATION
A. In the event that a party is in default or breach of any
material provision of this Agreement, and such default or breach
continues unremedied for a period of sixty (60) days after written
notice thereof, the non-breaching party may, at its option, terminate
this Agreement and prospectively terminate all licenses granted to the
breaching party.
ARTICLE IV. MAINTENANCE AND ENFORCEMENT OF PATENTS
A. No Other Obligations. BE and ATS each agree that, other than expressly
provided in this Agreement, there is no obligation hereunder to
furnish any manufacturing or technical information or any proprietary
information or to file, secure, maintain, disclose inventions in, or
furnish copies of, any patents or patent applications, nor shall
anything herein be construed as implying any commitment by either
party to forebear from any acts from which it is not expressly
licensed under this Agreement. Each party and its Subsidiaries shall
not have any obligation hereunder to either (a) institute any action
or suit for infringement of any of their patents or copyrights or
misappropriation of any of their trade secrets; (b) defend any action
or suit brought by a third party that challenges or concerns the
validity of any of its patents or copyrights; (c) keep its trade
secrets secret; or (d) maintain its copyrights and patents or
prosecute new patents.
B. Enforcement of Patents. Each party (the "Infringed Party") shall not
have any obligation under this Agreement to terminate an infringement
of any of its patents or copyrights. If an Infringed Party decides not
to prosecute an action for infringement of its patent or its
copyright, then the other party (the "Prosecuting Party") may, upon
the prior written consent of the Infringed Party, which consent may
not be unreasonably withheld, bring such action under its own
direction and control. The Infringed Party shall reasonably assist the
Prosecuting Party in such action if so requested, and shall lend its
name to such action if requested by the Prosecuting Party or required
by law. No settlement of any such action which restricts the scope or
affects the enforceability of the Infringed Party's patents or
copyrights may be entered into by the Prosecuting Party without the
prior written consent of the Infringed Party, which consent shall not
be unreasonably withheld.
C. Costs and Expenses. All costs and expenses incurred in an action
brought by the
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Prosecuting Party shall be borne by the Prosecuting Party, and all
recoveries in such an action shall belong to the Prosecuting Party.
ARTICLE V. CONFIDENTIALITY
A. Scope. Each party shall maintain in confidence all Licensed Know-How
of the other party, and shall not use such Licensed Know-How except as
permitted by this Agreement, or disclose the same to anyone other than
those of its Subsidiaries, employees, consultants, agents,
subcontractors, or sublicenses as are necessary in connection with
such party's activities as contemplated in this Agreement. Each party
shall ensure that each of its Subsidiaries, employees, consultants,
agents, subcontractors, and sublicenses, prior to disclosure, holds in
confidence and makes no use of such Licensed Know-How for any purpose
other than those permitted by this Agreement.
B. Exceptions. The obligation of confidentiality contained in this
Agreement shall not apply to the extent that (i) the party that
receives the other party's Licensed Know-How (the "Recipient") is
required to disclose information by order or regulation of a
governmental agency or a court of competent jurisdiction or (ii) the
Recipient can demonstrate that (a) the disclosed information was at
the time of such disclosure by the Recipient already in the public
domain other than as a result of actions of the Recipient, its
Subsidiaries, employees, consultants, agents, subcontractors, or
sublicensees in violation hereof; or (b) the disclosed information was
received by the Recipient on an unrestricted basis from a source
unrelated to any party to this Agreement and not under a duty of
confidentiality to the other party.
C. Unauthorized Disclosure. The Recipient acknowledges and confirms that
the Licensed Know-How of the other party (the "Disclosing Party")
disclosed to it under this Agreement constitutes valuable proprietary
information and trade secrets of the Disclosing Party and that the
unauthorized use, loss or outside disclosure of such Licensed Know-How
shall cause irreparable injury to the Disclosing Party. The Recipient
shall notify the Disclosing Party immediately upon discovery of any
unauthorized use or disclosure of Licensed Know-How, and will
cooperate with the Disclosing Party in every reasonable way to help
regain possession of such Licensed Know-How and to prevent its further
unauthorized use. Recipient acknowledges that monetary damages may not
be a sufficient remedy for unauthorized disclosure of Licensed
Know-How and that the Disclosing Party shall be entitled, without
waiving other rights or remedies, to such injunctive or equitable
relief as may be deemed proper by a court of competent jurisdiction.
ARTICLE VI. REPRESENTATIONS AND LIABILITIES
A. Mutual Representations. Each party hereby represents and warrants to
the other party that, to the best of its knowledge and belief:
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(a) The execution, delivery and performance of this Agreement by
such party have been duly authorized by all necessary
actions on the part of such party.
(b) This Agreement has been duly executed and delivered by such
party and, assuming due authorization, execution and
delivery by the other party, constitutes a legal, valid and
binding obligation of such party, enforceable against such
party in accordance with its terms.
(c) Such party's execution, delivery and performance of this
Agreement do not (i) violate, conflict with or result in the
breach of any provision of the charter or by-laws (or
similar organizational documents) of the party, (ii)
conflict with or violate any law or governmental order
applicable to the party or any of its respective assets,
properties or businesses, or (iii) conflict with, result in
any breach of, constitute a default (or event which with the
giving of notice or lapse of time, or both, would become a
default) under, or require any consent under any contract,
agreement, license, or other instrument to which it is a
party.
(d) Either party's patents issued as of the date of this
Agreement have not been declared invalid by either the
United States Patent and Trademark Office or any court of
competent jurisdiction.
B. Disclaimer. EXCEPT AS EXPRESSLY PROVIDED HEREIN, THE PARTIES DO NOT
MAKE ANY WARRANTIES OR REPRESENTATIONS, EXPRESS OR IMPLIED, OTHER THAN
THOSE HEREIN EXPRESSLY GRANTED. IN NO EVENT SHALL EITHER PARTY BE
LIABLE FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL, MULTIPLE, PUNITIVE OR
SPECIAL DAMAGES OF ANY KIND, ARISING OUT OF OR RELATED TO THIS
AGREEMENT.
ARTICLE VII. MISCELLANEOUS PROVISIONS
A. Joint Invention and Third Parties. BE and ATS shall cooperate in
obtaining patents on those joint inventions created by either BE or
ATS inventors. BE and ATS shall take all reasonable steps to obtain
from third parties whatever consents are necessary to either (a)
obtain ownership rights in such joint inventions or (b) necessary in
order to license its patents. A party will not be in breach of this
agreement if, in spite of such reasonable steps, it is unable to
obtain the requisite consents from such third parties.
B. License Inquiries. Each party shall, upon the written request of the
other party, inform the requesting party whether it believes that a
certain patent is, or certain patents are, licensed to the requesting
party hereunder and why it so believes. If the subject patent is
licensed to the requested party from a third party and the requested
party believes that it is restricted from granting a sublicense to the
requesting party by its third-party license agreement, it shall, upon
request, furnish that third-party agreement to the requesting party,
provided that it is
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permitted to, or can obtain permission to, furnish such information.
C. Notice. Except for routine operational correspondence, all notices,
requests, claims, demands and other communications hereunder shall be
in writing and shall be given or made (and shall be deemed to have
been duly given or made upon receipt) by delivery in person, by
overnight courier service (with signature required), by facsimile, or
by registered or certified mail (postage prepaid, return receipt
requested) to the respective parties at the following addresses:
(a) if to BE:
BE Aerospace
1400 Corporate Center Way
Wellington, FL 33414
Attention: Thomas P. McCaffrey, Vice President and C.F.O.
Edmund J. Moriarty, Vice President and General Counsel
Fax: 561-791-3966
Phone: 561-791-5000
(b) if to ATS:
Advanced Thermal Sciences Corporation
3355 East La Palma
Anaheim, CA 92806
Attention: Amin J. Khoury, Chairman
Bruce Thayer, President
Fax: 714-688-4153
Phone: 714-688-4266
or to such other address as the party to receive the notice or request
so designates by written notice to the other.
D. Assignment, Successors- In- Interest and Change in Control. Neither
party may assign this Agreement, or any portion hereof, to any entity
without the prior written consent of the other party, which consent
may be unreasonably withheld. However, either party may assign this
Agreement to any party that consolidates with, or merges with or into,
another Person or sells, assigns, conveys, transfers, leases or
otherwise disposes of all or substantially all of its assets to any
Person, or any Person consolidates with, or merges with or into,
either party or that acquires all or substantially all of the assets
of such party to which this Agreement relates without the consent of
the other party. Any attempted assignment without such consent shall
be void and of no force or effect. This Agreement shall be binding
upon the parties, and their respective successors and permitted
assigns, including any Person who acquires a party through a Change in
Control. This Agreement shall survive any acquisition or Change in
Control.
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E. Choice of Law. This Agreement shall be construed, and the legal
relations between the parties hereto shall be determined, in
accordance with the law of the State of California, without respect to
any conflict or choice-of-law rules.
F. Publicity. Nothing contained in this Agreement shall be construed as
conferring any right to use in advertising, publicity or other
activities any name, trade name, trademark or other designation
(including any contraction, abbreviation or simulation of any of the
foregoing), of the other party.
G. Integration. This Agreement sets forth the entire agreement and
understanding between the parties with respect to the subject matter
hereof and merges all prior discussions between them, and neither of
the parties shall be bound by any conditions, definitions, warranties,
understandings or representations with respect to such subject matter
other than as expressly provided herein or as duly set forth on or
subsequent to the date hereof in writing and signed by duly authorized
representatives of the parties bound thereby.
H. Headings. The headings of the several sections are inserted for
convenience of reference only and are not intended to be a part of or
to affect the meaning or interpretation of this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to
be duly executed as of the date first written above by its duly authorized
representative.
BE Aerospace, Inc.
BY: ______________
Title: ______________
Advanced Thermal Sciences Corporation
BY: ______________
Bruce Thayer
Title: President
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