SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
FORM 8-K/A-1
Current report pursuant to Section 13 or 15(d) of the Securities Exchange Act of
1934
Date of Report (date of Earliest Event Reported) November 13, 1996
XEROGRAPHIC LASER IMAGES CORPORATION
(Exact name of registrant as specified in its charter)
Delaware 1-11236 51-0319174
(State or other jurisdiction (Commission (I.R.S.
of incorporation) file number) Ident. no.)
101 Billerica Avenue, 5 Billerica Park
North Billerica, MA 01862
(Address of principal executive offices)
(508) 670-5999
(Registrant's telephone number including area code)
Information to be included in the Report
Item 1. Change in Control of Registrant.
Not applicable.
Item 2. Acquisition or Disposition of Assets.
Not applicable.
Item 3. Bankruptcy or Receivership.
Not applicable.
Item 4. Changes in Registrant's Certifying Accountant.
Not applicable.
Item 5. Other Information.
Exhibit 10.42 - License Agreement dated November 13, 1996
Item 6. Resignations of Registrant's Directors.
Not applicable.
Item 7. Financial Statements and Exhibits.
Sequential
Exhibit No. Description of Exhibit Page No.
----------- ---------------------- ----------
10.42 License and Royalty Agreement Dated
November 13, 1996 between the
Company and Xionics Document
Technologies, Inc. (files herewith,
with certain portions omitted based
upon a request for confidential
treatment, which omitted portions
have been filed separately with the
Commission)
Item 8. Change in Fiscal Year.
Not applicable.
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Signatures
Pursuant to the requirements of the Securities Exchange Act of 1934,
the Company has duly caused this report to be signed on its behalf by the
undersigned, thereunto duly authorized.
Xerographic Laser Images Corporation
(Registrant)
Date: November 13, 1996 By: /s/ James L. Salerno
--------------------
James L. Salerno, Principal Financial
and Accounting Officer
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LICENSING AND ROYALTY AGREEMENT
This Agreement is made and entered into this 13th day of November, 1996
by and between XEROGRAPHIC LASER IMAGES CORPORATION, a Delaware corporation,
("XLI") with its principal place of business at 101 Billerica Avenue, 5
Billerica Park, North Billerica, Massachusetts 01862 and Xionics Document
Technologies, Inc., a Delaware corporation, ("XIONICS") with its principal place
of business at 70 Blanchard Road, Burlington, Massachusetts 01803.
1.0 Definitions
1.1 "XLI Technology" means any and all current proprietary
printing technology, including but not limited to intellectual
property rights covering the technology specified in Exhibit
A1 (Features).
1.2 "Xionics Products" means XIONICS ASICs or chip set product
offerings which incorporate XLI Technology that are part of a
controller or raster image processor for scan, print, fax,
copy or related imaging applications.
1.3 "OEM" means Original Equipment Manufacturer.
1.4 "VHDL" (Virtual Hardware Description Language) means the
design description language that will be used to transfer XLI
Technology from XLI to XIONICS.
2.0 License and Royalty Fee
2.1 XIONICS will pay xxxxxxxx dollars to XLI in consideration for
a three year or 1 million unit (whichever occurs first)
non-exclusive license and prepaid royalty for XLI Technology
to be incorporated into Xionics Products. At the end of the
three year term (or 1 million units), Xionics has the option
to extend the Agreement for an additional 2 years or an
additional 1 million units (whichever occurs first) with the
payment of an xxxxxxxx fee. The XLI Technology will be
provided by XLI to XIONICS using the VHDL format or such other
format as may be required, schematics and other information
necessary for XIONICS to design, manufacturer and market ASICs
for its Xionics Products. The technology licensed in this
Agreement is for existing XLI Technology as defined by the
features in Exhibit A1 and the VHDL delivered to XIONICS in
the first quarter of 1997. It does not include rights for any
new features, upgrades, improvements, etc., that XLI may
develop at a later date other than the maintenance and support
provided in Section 3.3.
2.2 XIONICS hereby receives a non-exclusive license and right to
use the XLI Technology in its products as provided in Section
4. Such license is granted in consideration of the
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payment in paragraph 2.1 above by XIONICS to XLI as provided
in the payment terms in Section 7 of this Agreement.
2.3 XLI and XIONICS are engaged in merger and/or acquisition
negotiations. If XLI breaches the merger and/or acquisition
agreement for no reasonable cause, this non-exclusive license
and prepaid royalty agreement will become a fully paid
perpetual Agreement, with no quantity or term limits, in
consideration for the payment of xxxxxxxx made to XLI by
XIONICS upon execution of this Agreement. By way of example,
and not of limitation, XLI accepting a better offer from a
third party is not considered reasonable cause. If the merger
and/or acquisition is not completed due to XIONICS option,
XIONICS will pay XLI an additional xxxxxxxx as payment of
fully liquidated damages for "lost business opportunity"
provided that XLI has refrained from marketing its company or
products during the negotiation period, and payment is due
upon termination of the merger and/or acquisition
negotiations. This payment will not be due if the reason for
not proceeding with the merger and/or acquisition is based on
reasonable cause found during the process of due diligence. If
the merger and/or acquisition is not completed for any reason,
this license and royalty Agreement survives.
3.0 Obligations of XLI
3.1 XLI shall provide the XLI Technology to XIONICS for the
Xionics Products in accordance with the schedule included on
attached Exhibit A2. Said XLI Technology shall incorporate the
functional design modules set forth in Exhibit A1.
3.2 License fee includes xxxxxxxx consulting time xxxxxxxx
Agreement for transfer/integration of the VHDL and training a
XIONICS employee(s) in engine calibration xxxxxxxx. Any direct
expenses incurred for equipment and materials, or travel
expenses will be paid for by XIONICS. Additional XLI
consulting and engineering development time requested by
XIONICS will be quoted at xxxxxxxx plus materials and other
direct expenses.
3.3 XLI shall, during the first year of this Agreement, provide to
XIONICS necessary bug-fix maintenance and support for the XLI
Technology licensed hereunder. Maintenance and support shall
include, but shall not be limited to, phone, fax and e-mail
support, all error and bug corrections, technical information
and documentation reasonably necessary for XIONICS to
integrate the XLI Technology into the Xionics Products. This
matinenance and support obligation does not entitle XIONICS to
any new technology outside the XLI Technology defined in this
Agreement.
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4.0 Grant of License Rights
4.1 XLI grants to XIONICS a non-exclusive, worldwide license under
XLI intellectual property rights including patent, copyright
and trade secret rights, and right to use, copy, modify,
reconfigure, reproduce, and translate the XLI Technology for
the purpose of embedding, integrating and incorporating the
XLI Technology into Xionics Products for the ultimate
distribution and sale to XIONICS OEM customers for use in such
OEM's electronic goods. XIONICS OEM customers shall not be
required to pay XLI any future license fees for the license
granted herein.
4.2 XIONICS shall not sub-license or otherwise transfer, convey or
assign any of the rights to use the XLI Technology granted
hereunder except as a fully integrated function of Xionics
Products as permitted herein, provided however, that XIONICS
shall have the right to have a third party manufacture ASICs
that incorporates XLI Technology. XIONICS shall not use the
XLI Technology to develop for sale stand-alone ASICs
essentially containing only XLI Technology and competing with
XLI stand-alone ASIC sales.
4.3 This Agreement does not grant to XLI by implication, estoppel,
or otherwise, a license to any patents, know-how, or any other
intellectual property now or hereafter owned or developed by
XIONICS.
5.0 Discoveries and Inventions
5.1 All discoveries, developments, improvements, and inventions
made or conceived and first reduced to practice in the
performance of the design and development of the XLI
Technology pursuant to this Agreement, by any of XLI's
employees, consultants, associates, and agents, shall be the
sole and exclusive property of XLI and XLI shall retain any
and all rights to file any patent application thereon and
XIONICS shall have a non-exclusive license under any resulting
patents without additional compensation.
6.0 Other Products
6.1 xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx
xxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxxx Xionics controller
proprietary chip set solution. Xxxxxxxxxxxxxxxxxxxxxxxxxx.
Superchip is XLI's ASIC being developed as a stand-alone chip
for OEMs and containing essentially the same XLI Technology
specified in Exhibit A1.
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7.0 Payment Terms
7.1 XIONICS will pay XLI a total fee of xxxxxxxx for a three-year
license and royalty Agreement. XLI will commence development
efforts upon receipt of xxxxxxxx which shall be due upon the
signing of this Agreement. The balance of the fee will be paid
in five successive monthly payments of xxxxxxxx each,
commencing February 1, 1997, or at another mutually agreed
upon date if merger and/or acquisition negotiations are
continuing. Payment terms for the agreement extension will be
xxxxxxxx due upon Agreement extension followed with a second
payment of xxxxxxx due one year later or after an additional
xxxxxxxx units are sold, whichever occurs first.
7.2 During the term of this Agreement, XLI or XLI's agent upon
thirty (30) days written notice, shall have the right to
inspect and audit any and all records relating to licenses and
sales of the Xionics Products for the sole purpose of
verifying XIONICS compliance with the terms and conditions of
this Agreement, provided that XLI shall make no more than one
(1) such audit per calendar year. Any such audit shall be
conducted at XIONICS place of business during regular business
hours or other mutually agreed upon time and location. XLI
shall bear its cost of such audit. XLI or XLI's agent shall
sign a nondisclosure agreement obligating the auditor not to
disclose information it learns which does not pertain to the
XLI Technology. If XIONICS is found in violation of this
Agreement, payment for any units in excess of the Agreement
terms will become immediately due at the rate of $1 per unit
plus a 1% per month interest penalty from the date of the
violation.
7.3 The payments to XLI hereunder shall be effected in U.S.
dollars and shall be transmitted by telegraphic transfer
remittance to the following bank account or to such other bank
accounts as XLI may notify XIONICS in writing:
BAYBANK, 7 N.E. Executive Park
BURLINGTON, MA
ABA Routing No. 0110-0174-2
Account No. 259-39719
8.0 Confidentiality
8.1 XLI and XIONICS agree that any information, technical data or
know-how, which is furnished to the other in written or
tangible form by either party under or in connection with this
Agreement and marked as "Proprietary Information" or
"Confidential", will be maintained by the receiving party in
confidence during the term of this Agreement and for a period
of five (5) years thereafter and will not be used by the
receiving party except to fulfill the purposes of this
Agreement. Oral disclosure will be covered by this
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Agreement only if such disclosures are reduced to writing
within ten (10) business days of disclosure and marked as
provided above. Neither party shall be under any obligation to
maintain in confidence any portion of the Proprietary
Information received which is: (i) already in the possession
of the receiving party or its subsidiaries from other sources;
(ii) independently developed by the receiving party or its
subsidiaries; (iii) publicly disclosed by the disclosing
party; (iv) received by the receiving party or its
subsidiaries from a third party with the right to disclose; or
(v) approved for release by written agreement with the
disclosing party, or (vi) required to be disclosed by law.
9.0 Patent Indemnity
9.1 XLI shall at all times indemnify and hold harmless XIONICS,
its successors and permitted assigns from and against any and
all claims, liabilities, losses, costs, damages and expenses
arising out of or resulting from any claim, action or
proceeding, including but not limited to the damages, losses,
costs and expenses payable to third parties (including
settlement costs and judgments) claiming patent infringement
and all of XIONICS reasonable attorney fees and disbursements,
court costs, and expenses incurred by XIONICS.
9.2 Notwithstanding the provisions of 9.1 above, XLI shall not be
liable to XIONICS in the event that the alleged infringement
by the XLI Technology is due to modifications made to the XLI
Technology by XIONICS and not approved by XLI.
9.3 Further, XLI shall not have any liability to XIONICS under
this Section 9 if the infringement or other violation of a
third party's right is not based solely upon the XLI
Technology.
10.0 XLI Warranties
10.1 XLI warrants that: (1) it has the legally enforceable right to
grant XIONICS the license set forth in Section 4 of this
Agreement; (2) to XLI's knowledge the XLI Technology does not
incorporate or infringe upon any intellectual property not
owned or licensed by XLI; (3) XLI has not been notified by a
third party that the technology might infringe any
intellectual property rights or other proprietary rights of a
third party; (4) the XLI Technology shall conform in all
material respects to the specifications contained in Exhibit A
of this Agreement.
11.0 Limitation of Remedies
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11.1 In no event will XLI be liable for: (1) lost profits or any
other incidental or consequential damages, regardless of the
form of the action whether in contract, tort (including
negligence), strict product liability or otherwise, even if
XLI has been advised of the possibility of such damages; or
(2) damages caused by XIONICS' failure to perform its
responsibilities.
11.2 In no event will XLI be liable to XIONICS for damages
exceeding the amount paid to XLI by XIONICS under the terms of
this Agreement except for damages arising under Section 9
above.
12.0 Termination
12.1 This Agreement may be terminated by either party in the event
the other party breaches a term of this Agreement and fails to
cure such breach to the reasonable satisfaction of the
complaining party within thirty (30) days after written notice
thereof from the non-breaching party, or if such breach cannot
reasonably be cured within said thirty (30) days, the
breaching party fails to commence to cure such breach within
thirty (30) days after written notice and fails to complete
such cure within ninety (90) days of the date of such notice.
12.2 In the event the XLI Technology fails to perform according to
the specifications set forth in this Agreement or the
performance standards set forth herein cannot be achieved,
XIONICS may terminate this Agreement, upon thirty (30) days
written notice to XLI without further liability and XLI shall
refund to XIONICS all license fees paid to XLI hereunder.
12.3 In the event of the direct or indirect taking over or
assumption of control of either party, by any third party, or
in the event of bankruptcy or insolvency of either party, the
other shall have the right to immediately terminate this
Agreement by written notice to such party. Notwithstanding the
foregoing, the license granted to XIONICS by this Agreement
shall survive the bankruptcy or insolvency of XLI and XIONICS
shall continue to have the right to use the XLI Technology as
permitted in this Agreement. Nothing in this Agreement shall
be construed as limiting or waiving XIONICS right under
Section 365(n) of the United States Bankruptcy Code.
12.4 If termination is due to XIONICS breach of its obligations
under this Agreement, the license and rights granted to
XIONICS shall be terminated and XIONICS shall have no further
right to continue to use the XLI Technology. If this Agreement
is terminated due to XLI's breach of its obligations
hereunder, the license granted to XIONICS shall survive
termination and XIONICS shall continue to have the
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right to use the XLI Technology as permitted by this Agreement
and subject to the royalty payments. Notwithstanding the
foregoing, termination of this Agreement for any reason shall
not affect the right of XIONICS OEM's and such existing OEM's
end users to continue to use and have access to the XIONICS
ASIC(s) or chip set products containing the XLI Technology,
provided such OEM's were granted access to the XLI Technology
as permitted by this Agreement.
13.0 Notices
13.1 Written notices hereunder are deemed to be given when received
if telexed or faxed and within five (5) days if mailed by air
courier, postage prepaid, return receipt, to the addresses of
the parties as set forth herein, or such other address as
shall be furnished in writing, by either party.
14.0 Non-assignability
14.1 This Agreement is not assignable by either party without the
prior written consent of the other party. Any attempt to
assign this Agreement without the prior written consent of the
other party shall be void.
14.2 This Agreement shall be binding on and inure to the benefit of
the parties' successors and permitted assigns. Specifically,
XLI shall have no rights to assign this Agreement to any party
which does not expressly agree to maintain this Agreement in
effect and honor its terms as set forth herein or subsequently
amended by XLI and XIONICS.
15.0 No Joint Venture
15.1 This Agreement creates no agency, partnership, employment,
joint relationship or joint venture between the parties or
mutual responsibility on behalf of one party for the debts or
liabilities of the other. The parties agree that each is
acting as an independent contractor and that any employees of
XIONICS are in no way employees of XLI. Neither party shall
have the power or authority to bind or obligate the other
except as expressly set forth in this Agreement.
16.0 Other Agreements
16.1 This Agreement contains the entire understanding of the
parties with respect to the subject matter hereof and
supersedes all prior agreements relating thereto, written or
oral, between the parties. Amendments to this Agreement must
be in writing and signed by the duly authorized officers of
the parties.
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17.0 Force Majeure
17.1 Neither party shall be liable for delay in performance or
failure to perform in whole or in part the terms of this
Agreement due to strike, labor dispute, act of war, riot or
civil commotion, act of public enemy, fire, flood or act of
God or other cause beyond the control of such party.
18.0 Arbitration
18.1 All disputes that may arise in connection with this Agreement
that cannot be settled by the parties themselves shall be
submitted to a panel of three arbitrators in Boston,
Massachusetts proceeding under the rules and regulations of
the American Arbitration Association. Arbitrators shall be
required to provide a written decision with full explanation
of their findings. All costs of arbitration shall be divided
equally between the parties, and the parties agree to abide by
the decision of such arbitration.
19.0 Governing Law
19.1 The construction, validity and the performance of this
Agreement shall be governed by the laws of the Commonwealth of
Massachusetts.
IN WITNESS WHEREOF the duly authorized representatives of the parties have
executed this Agreement as of the Effective Date.
Xionics Document Technology, Inc.
By: /s/ Robert Gilkes
-----------------------
Title: CEO
Xerographic Laser Images Corp.
By: /s/ Anthony D. D'Amelio
-----------------------------
Title: President/CEO
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EXHIBIT A: Licensed Features & Schedule
A1: Licensed Features
Current Superchip VHDL Core Modules for printer, copier, fax, and
multi-function applications in color and monochrome laser print engines
with the following feature sets:
200x100, 200, 300, and 600 DPI Edge Enhancement
1200 DPI output mode
1 Bit Photo Enhancement
Toner Saver Mode
Digital Modulator for sub-pixel modulation
Maximum Video Rate: 50 MHz
Minimum Video Rate: 3 MHz for all modes
A2: Schedule
Definition of design data interface for the XLI/XIONICS part: XLI
Design data to XIONICS, including data, address, command, control and
bus interface specifications February 1997.
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