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FORM 8-K/A
CURRENT REPORT PURSUANT TO SECTION 13 OR 15(D) OF
THE SECURITIES AND EXCHANGE ACT OF 1934
Date of Report (Date of Earliest Event Reported): April 16, 1999
SI DIAMOND TECHNOLOGY, INC.
(Exact Name of Registrant as Specified in its Charter)
TEXAS
(State or Other Jurisdiction of Incorporation)
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<S> <C>
1-11602 76-0273345
(Commission File No.) (I.R.S. Employer Identification No.)
</TABLE>
3006 Longhorn Boulevard
Suite 107
Austin, Texas 78758
(Address of Principal Executive Offices)
512/339-5020
(Registrant's Telephone Number, Including Area Code)
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Item 5. Other Events
On March 26, 1999, SI Diamond Technology, Inc. ("SI Diamond"), a Texas
corporation, announced that it has licensed its patents in the field of electron
field emission display applications to Canon Inc., one of the world's largest
manufacturers of information and office equipment. This worldwide non-exclusive
license provided for an immediate $5.0 million net payment to SI Diamond after
taxes paid. This license excludes certain electron field emission display
technology that will be used exclusively by SI Diamond for the development of
the next generation billboard and video wall products.
Item 7. Financial Statements and Exhibits.
(c) Exhibits:
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<S> <C>
10.1 Patent License Agreement
99.1 News Release, "SI Diamond Issues Non-Exclusive License For Amount
Exceeding $5.0 Million--SI Diamond Will Show First Profitable
Quarter--Achieves Positive Net Worth," March 30, 1999.
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SIGNATURES
Pursuant to the requirements of the Securities Exchange Act of 1934, the
Registrant has duly caused this report to be signed on its behalf by the
undersigned, thereunto duly authorized.
SI DIAMOND TECHNOLOGY, INC.
By: /s/ Douglas P. Baker
---------------------------
Douglas P. Baker
Vice President and
Chief Financial Officer
Dated: September 27, 1999
<PAGE> 1
Exhibit 10.1
PATENT LICENSE AGREEMENT
THIS PATENT LICENSE AGREEMENT (hereinafter "AGREEMENT"), effective as
of March 26, 1999, is made and entered into by and between SI DIAMOND
TECHNOLOGY, INC., a corporation organized and existing under the laws of the
State of Texas, having its principal place of business at 3006 Longhorn
Boulevard, Suite 107, Austin, Texas 78758, United States America (hereinafter
"SIDT"), and CANON INC., a corporation organized and existing under the laws of
Japan, having its principal place of business at 30-2, Shimomaruko 3 chome,
Ohta-ku, Tokyo 146-8501, Japan (hereinafter "CANON"), sometimes each referred to
hereinafter as a "party" and sometimes jointly referred to hereinafter as the
"parties" to this AGREEMENT.
WITNESSETH:
WHEREAS, SIDT is now the owner of certain existing patents pertaining
to electron field emission display technology and expects hereafter to obtain
further patents to such technology -- such existing and further patents being
collectively defined hereinafter as LICENSED PATENTS; and
WHEREAS, CANON is desirous of acquiring a nonexclusive license,
nonassertion and release as hereinafter described under such LICENSED PATENTS,
and SIDT is willing to grant such license, nonassertion and release to CANON
under the terms and conditions set forth in this AGREEMENT.
NOW, THEREFORE, in consideration of the foregoing, the covenants herein
contained, and other good and valuable consideration, the receipt and adequacy
of which are hereby acknowledged, SIDT and CANON agree as follows:
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ARTICLE 1 - DEFINITIONS
In this AGREEMENT, the following capitalized words and phrases shall
have the respective meanings as set forth below:
1.1 "EFFECTIVE DATE" shall mean the date first above written,
to full execution hereof by the parties.
1.2 "TERM" shall mean the time period specified in Article 3
herein.
1.3 "SUBSIDIARY" shall mean any corporation, company or other
entity as to which party, now or hereafter at any time during the TERM of this
AGREEMENT:
(a) owns or controls directly or indirectly more than
fifty percent (50%) (by nominal value or number of units) of the outstanding
stock conferring the right to vote at general meetings; or
(b) has the right to elect the majority of the board of
directors or its equivalent; or
(c) has the right directly or indirectly to appoint or
remove management; but such corporation, company or other entity shall be deemed
to be a SUBSIDIARY only so long as such ownership or control exists.
1.4 "ELECTION FIELD EMISSION DISPLAY DEVICE" shall mean a display
device having an electron emitting display panel which comprises (a) electron
emitting devices each of which emits electrons when subject to a predetermined
electric potential difference and (b) phosphor spaced with or without one or
more spacers from the electron emitting devices; (i) wherein the display device
may further comprise elements, parts, components, subassemblies, subsystems,
models, units, accessories and software designed for incorporation or use in or
for
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use with the display device, including without limitation, a drive circuit, an
image interface and a control circuit device; (ii) wherein the electron emitting
display panel may further comprise an acceleration electrode to accelerate the
electrons emitted from the electron emitting devices, a getter and/or other
instrumentalities; (iii) wherein the drive circuit may comprise a circuit to
apply drive signals to the electron emitting devices, a circuit to apply to the
acceleration electrode an electric potential for acceleration, a driver, a
carrier package with a driver, a driver circuit board and/or other
instrumentalities; (iv) wherein the image interface may comprise a circuit to
receive an image signal and/or image information from the outside, a receiver
circuit, a separator circuit, a decoded circuit and/or other instrumentalities;
and (v) wherein the control circuit device may comprise a circuit device to
control the driver circuit, a sensor, controller, CPU, memory, a power source
control circuit and/or other instrumentalities.
1.5 "EXCLUDED ELECTRON FIELD EMISSION DISPLAY MODULE" shall mean
an electron emission display module of an electron field emission type, having
(a) a faceplate with an image display frame segmented into MxN (wherein M and N
are integers greater than one) pixel units arranged in neighboring contact,
without any substantial space, with each other in a matrix array so that there
are M pixel units in the horizontal or row direction and N pixel units in the
vertical or column direction, each pixel unit Aij ("i" is a suffix to show the
i-th row and "j" is a suffix to show the j-th column) having the same
predetermined geometric (square, rectangular, polygon, round, oval, etc.) shape
and size and the geometrical center of gravity of each of said MxN pixel units
meeting with the corresponded lattice point of MxN matrix, and said each pixel
unit consisting of a red phosphor surface element, a green phosphor surface
element, a blue phosphor surface element and a black matrix surrounding each of
such red, green and blue phosphor surface elements without any substantial space
therebetween, the
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red, green and blue phosphor surface elements being arranged closely to and
neighboring each other with the black matrix therebetween, the red, green and
blue phosphor elements are arranged repeatedly and regularly without variation
throughout the entire image display frame; and (b) a cathode plate for
supporting a cathode surface facing the image display frame and segmented into
MxN (where M and N are the same as those of the pixel units) cathode units
arranged in neighboring contact, without any substantial space, with each other
in a matrix array substantially the same as the pixel unit array so that there
are M cathode units in the horizontal or row direction and N cathode units in
the vertical or column direction, each cathode unit Bij ("i" is a suffix to show
the i-th row and "j" is a suffix to show the j-th column) having the same
predetermined geometric (square, rectangular, polygon, round, oval, etc.) shape
and size and the geometrical center gravity of each of said MxN cathode units
meeting with the corresponded lattice point of MxN matrix, and said each cathode
unit comprising electron emission sites provided respectively for the respective
red, green and blue phosphor elements of a pixel unit Aij to energize such red,
green and a blue phosphor elements respectively and independently, each site
emitting electrons when subject to a predetermined electric potential
difference, the faceplate and the cathode plate being arranged such that the
pixel unit Aij is spaced from the cathode unit Bij; and (c) wherein the display
module may further have an extraction grid arranged between the faceplate and
the cathode plate to cover the entire cathode surface, to which extraction grid
an electric potential to cause electrons emitted from the electron emission
sites is applied; and (d) wherein the display module may further have a focus
grid arranged between the extraction grid and the faceplate to focus the
electrons passing through the extraction grid onto the pixels of the image
display frame; wherein (i) the cathode plate, extraction grid (if utilized),
focus grid (if
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utilized) and faceplate are arranged and closed in a glass seated vacuum
enclosure so that the pixel unit Aij having the same row and column suffix
numbers i and j as that of the cathode unit element Bij is positioned right
above such cathode unit Bij and the electrons emitted from such cathode unit Bij
energize only the phosphor surface elements of such pixel unit Aij having the
same row and column suffix numbers i and j as that of the said cathode unit Bij;
wherein (ii) the display device module is specifically designed with the glass
enclosure having side surfaces and the glass enclosure, faceplate and image
display frame having almost the same size so that when a plurality of the
display device modules are arranged in rows and columns, with the respective
side surfaces of the respective glass enclosures closely neighboring each other
and forming a large picture frame, breaks between the image display frames are
used for insulation and/or protection between the image display frames; wherein
(iii) the shortest distance between the geometrical centers of gravity of any
two phosphor surface elements of a same color is five millimeters (5mm) or
greater and the shortest distance between the geometrical centers of gravity of
any two neighboring pixel units is five millimeters (5mm) or greater; wherein
(iv) the shortest distance between the geometrical centers of gravity of any two
neighboring cathode units is five millimeters (5mm) or greater; and wherein (v)
the normal passing through the geometrical center of gravity of the pixel unit
Aij coincides with the normal passing through the geometrical center of gravity
of thecathode unit Bij having the same row and column suffix numbers as that of
the said pixel unit Aij and paired with such unit Aij.
1.6 "EXCLUDED PRODUCTS" shall mean an EXCLUDED ELECTRON FIELD
EMISSION DISPLAY MODULE and a matrix array of regularly arranged EXCLUDED
ELECTRON FIELD EMISSION DISPLAY MODULES.
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1.7 "LICENSED PRODUCTS" shall mean (a) all electron field emitting
display panels; (b) all ELECTRON FIELD EMISSION DISPLAY DEVICES; (c) all
products of any form, type or kind having an ELECTRON FIELD EMISSION DISPLAY
DEVICE; (d) all elements, parts, components, subassemblies, subsystems, modules,
units, accessories and software designed for incorporation or use in or for use
with any of the products of foregoing items (a), (b) and (c), wherein this item
(d) includes, without limitation, electron emitting devices, phosphors, spacers,
acceleration electrode, getter, drive circuit, image interface, control circuit
device and electron emitting display panel; and (e) all replacement parts and
service parts for any of the foregoing items (a), (b), (c) and (d); and (f) all
instrumentalities or aggregate of instrumentalities for use in the manufacture
of any of the foregoing items (a), (b), (c), (d) and (e). The term LICENSED
PRODUCTS shall not include the EXCLUDED PRODUCTS.
1.8 "LICENSED PATENTS" shall mean all patents and patent
applications throughout the world, including utility models, design patents and
design registration, and applications therefor (hereinafter in this AGREEMENT
referred to as "PATENTS"), which are, now or hereafter at any time during the
TERM of this AGREEMENT, owned or controlled or licensable by SIDT and/or any of
its SUBSIDIARIES and have one or more claims which cover or are otherwise
applicable to the LICENSED PRODUCTS or any method or process involved in the
manufacture or use thereof, all parents, divisions, continuations and
continuations in part of any of said patent applications, whether so related to
said patent applications directly or through one or more intervening patent
applications; all patents issuing on any of the foregoing patent applications;
and all reissues, reexaminations, renewals and extensions of any of the
foregoing patents. LICENSED PATENTS shall include, but shall not be limited to,
the patents and patent
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applications of the United States and other countries listed in attached Exhibit
A. For the purpose of this AGREEMENT, the term LICENSED PATENTS shall include
all PATENTS, which are, now or hereafter at any time during the TERM of this
AGREEMENT, owned or controlled or licensable by SIDT and/or any of its
SUBSIDIARIES and cover or are otherwise applicable to the EXCLUDED PRODUCTS or
EXCLUDED ELECTRON FIELD EMISSION DISPLAY MODULE if such PATENTS also cover or
are otherwise applicable to the LICENSED PRODUCTS or any method or process
involved in the manufacture or use thereof.
1.9 "EMPLOYEE AND/OR CO-OWNED PATENTS" shall mean all PATENTS (a)
which are not LICENSED PATENTS and cover or are otherwise applicable to any of
(i) LICENSED PRODUCTS, (ii) both of LICENSED PRODUCTS and EXCLUDED PRODUCTS,
(iii) both of LICENSED PRODUCTS and EXCLUDED FIELD ELECTRON EMISSION DISPLAY
MODULE and (iv) any method or process involved in the manufacture or use of any
of the foregoing and (b) which either (1) claim inventions that are made solely
or jointly with a third party by an employee, officer, agent and/or consultant
of SIDT or any of its SUBSIDIARIES in, or as a result of, the performance of
research, development, technical or other work for or with SIDT or any of its
SUBSIDIARIES or (2) are co-owned by SIDT and/or its SUBSIDIARIES and a third
party. The term EMPLOYEE AND/OR CO-OWNED PATENTS shall not include PATENTS (a)
which are entitled to an effective filing date subsequent to the EFFECTIVE DATE
of this AGREEMENT, and (b) which claim inventions that are made after the
EFFECTIVE DATE of this AGREEMENT jointly by one or more employees of SIDT or any
of its SUBSIDIARIES and a third party in, or as a result of their work in the
course of their employment, and (c) which are co-owned by SIDT and/or its
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SUBSIDIARIES and a third party, and (d) under which SIDT and any of its
SUBSIDIARIES do not have the right to grant licenses.
ARTICLE 2 - LICENSE GRANT
NONASSERTION AND RELEASE
2.1 Subject to payment to SIDT of the lump sum amount under
Article 4, SIDT on behalf of itself and its SUBSIDIARIES hereby grants to CANON
and its SUBSIDIARIES a fully paid-up, worldwide, royalty-free, irrevocable,
perpetual, nonexclusive license (without the right to sublicense) under the
LICENSED PATENTS to import, make, have made, use, sell, offer for sale, lease or
otherwise dispose of LICENSED PRODUCTS throughout the world and to practice or
have practiced throughout the world any method or process in the manufacture or
use thereof.
2.2 The license grant in Paragraph 2.1 herein shall extend to all
of CANON's and its SUBSIDIARIES' supplies, distributors, dealers, agents,
customers and users (whether direct or indirect) with respect to all LICENSED
PRODUCTS which, in whole or in part, are imported, made, have made, used, sold,
offered for sale, leased or otherwise disposed of by or for CANON or any of its
SUBSIDIARIES throughout the world.
2.3 Subject to payment to SIDT of the lump sum amount under
Article 4, as to all LICENSED PRODUCTS which, in whole or in part, are imported,
made, have made, used, sold, offered for sale, leased or otherwise disposed of
by or for CANON or any of its SUBSIDIARIES, SIDT on behalf of itself and its
SUBSIDIARIES hereby forever releases and discharges worldwide CANON and its
SUBSIDIARIES, and their respective distributors, dealers, agents,
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customers and users (whether direct or indirect) from any and all claims which
they may now have or which may arise hereafter for alleged infringement, either
direct, inducement and/or contributory, of any of the LICENSED PATENTS, and SIDT
and its SUBSIDIARIES each hereby forever agrees worldwide not to assert any of
the LICENSED PATENTS and forever agrees worldwide not to institute or continue
any administrative proceeding or judicial action for infringement, either
direct, inducement and/or contributory, based on any of the LICENSED PATENTS,
against CANON and its SUBSIDIARIES, and their respective distributors. dealers,
agents, customers and users (whether direct or indirect).
ARTICLE 3 - TERM
3.1 This AGREEMENT shall commence as of the EFFECTIVE DATE and
shall continue in full force and effect until expiration of the last to expire
of the LICENSED PATENTS, except that the license, nonassertion and release
granted in Article 2 herein and Articles 5 and 7 hereof are perpetual and shall
survive termination of this AGREEMENT.
ARTICLE 4 - PAYMENT
4.1 In full and complete consideration for the license,
nonassertion and release granted in Article 2 and the indemnification under
Article 7 herein, CANON agrees to pay SIDT a one time lump sum of Five Million
Five Hundred Fifty-five Thousand Five Hundred Fifty-five U.S. Dollars and
Fifty-five U.S. Cents (US $5,555,555.55) within fifteen (15) days following
CANON's receipt of the duplicate originals of this AGREEMENT duly executed by
SIDT. This lump sum shall be paid by wire transfer to the following bank account
of SIDT:
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Bank: Chase Bank Texas
P.O. Box 2558
Houston, Texas 77252-8063
ABA Routing Number: 113000609
Account Number: 081-00053751
Account Name: SI Diamond Technology, Inc.
3006 Longhorn Boulevard, Suite 107
Austin, Texas 78758
4.2 All taxes imposed as a result of the existence or performance
of this AGREEMENT shall be borne and paid by the party required to do so by
applicable law. If so required, CANON shall withhold from payment to SIDT under
paragraph 4.1 herein, the amount of any taxes levied on such payment by the
Government by Japan, shall effect payment to the appropriate tax authority of
Japan of taxes so withheld, and shall transmit to SIDT official receipts issued
by such tax authorities.
ARTICLE 5 - WARRANTIES AND DISCLAIMERS
5.1 SIDT makes the following warranties:
(a) SIDT and/or its SUBSIDIARIES own the entire right,
title and interest in and to the LICENSED PATENTS and the inventions disclosed
and claimed therein;
(b) SIDT has the right to enter into this AGREEMENT with
CANON on its own behalf and on behalf of its SUBSIDIARIES;
(c) there are no liens, conveyances, mortgages,
assignments, encumbrances or agreements which would prevent or impair the full
and complete exercise of the license, nonassertion and release granted by SIDT
and its SUBSIDIARIES under this AGREEMENT;
(d) SIDT and its SUBSIDIARIES have not entered into and
shall not enter into any agreements which would interfere with the license,
nonassertion and release granted under this AGREEMENT;
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(e) as to inventions that are made by an employee,
officer, agent and/or consultant of SIDT or any of its SUBSIDIARIES and cover or
are otherwise applicable to LICENSED PRODUCTS or any method or process involved
in the manufacture or use thereof, SIDT and its SUBSIDIARIES shall devote their
best efforts so that such inventions and patent applications and patents
therefor will be qualified as LICENSED PATENTS;
(f) SIDT will provide CANON, from time to time as CANON
may request, and in any event at the end of each calendar year during the TERM
of this AGREEMENT, with a latest list of all patents and patent applications
throughout the world, including utility models, design patents and design
registrations, and applications therefor, which meet the definition of the
LICENSED PATENTS and promptly answer to any question from CANON relating to the
LICENSED PATENTS; and
(g) all the PATENTS (1) which have one or more claims
that cover or are otherwise applicable to any of (i) LICENSED PRODUCTS, (ii)
both of LICENSED PRODUCTS and EXCLUDED PRODUCTS, (iii) both of LICENSED PRODUCTS
and EXCLUDED ELECTRON FIELD EMISSION DISPLAY MODULE and (iv) any method or
process involved in the manufacture or use any of the foregoing items (i)
through (iii), and (2) which are entitled to an effective filing date on or
prior to the EFFECTIVE DATE of this AGREEMENT, and (3) which either describe or
disclose inventions made solely by one or more employees, officers, agents
and/or consultants of SIDT or any of its SUBSIDIARIES in, or as a result of, the
performance of research, development, technical or other work for or with SIDT
or any of its SUBSIDIARIES, or describe or disclose inventions made jointly by
one or more employees, officers, agents and/or consultants of SIDT or any of its
SUBSIDIARIES and a third
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party or its one or more employees in, or as a result of, the performance of
research, development, technical or other work for or with SIDT or any of its
SUBSIDIARIES or are co-owned with a third party, are licensed and granted to
CANON and its SUBSIDIARIES in this AGREEMENT as the LICENSED PATENTS defined in
paragraph 1.8 hereof.
5.2 CANON warrants and represents that it has the right to enter
into this AGREEMENT on its behalf and on behalf of its SUBSIDIARIES.
5.3 Nothing contained in this AGREEMENT shall be construed as a
grant, expressly or impliedly, of any license, nonassertion, release or
otherwise by CANON or any of its SUBSIDIARIES to SIDT or its SUBSIDIARIES under
any patent, patent application, trademark, tradename, copyright, knowhow, or any
other intellectual property right owned or controlled in whole or in part, by
CANON or any of its SUBSIDIARIES.
5.4 Nothing herein contained shall be construed as an admission by
CANON or any of its SUBSIDIARIES that they have infringed any of the LICENSED
PATENTS or that any of the LICENSED PATENTS are valid and/or enforceable.
5.5 Nothing in this AGREEMENT shall be construed as conferring an
obligation upon SIDT to file any patent application, or to secure any patent or
patent right or to maintain any patent in force or to bring or prosecute any
action or suit against third parties for infringement; provided, however, that
when SIDT or any of its SUBSIDIARIES wishes to abandon or cease the maintenance
of any LICENSED PATENT, SIDT shall promptly give notice to CANON in that effect
and confirm with CANON its intention as to the disposition of such LICENSED
PATENT and when CANON so wishes, SIDT or its SUBSIDIARIES shall assign and
transfer such LICENSED PATENT to CANON.
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5.6 Nothing in this AGREEMENT shall be construed as a
representation or warranty by SIDT or its SUBSIDIARIES with respect to the
validity and/or enforceability of the LICENSED PATENTS, or that the LICENSED
PRODUCTS are free of claims of infringement of the intellectual property rights
of third parties.
5.7 EXCEPT AS SPECIFICALLY PROVIDED HEREIN, NEITHER PARTY MAKES
ANY REPRESENTATION OR WARRANTY OF ANY KIND, EXPRESS OR IMPLIED (INCLUDING BUT
NOT LIMITED TO A WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE).
ARTICLE 6 - LIMITATIONS
6.1 No party shall assign or otherwise transfer this AGREEMENT and
the rights or obligations under this AGREEMENT without prior written consent of
the other party, except a party may assign or otherwise transfer this AGREEMENT
and the rights or obligations under this AGREEMENT without prior written consent
of the other party to any corporation, company or other entity succeeding to the
entire business and assets (including research, development, manufacture and
sales) of such party and its SUBSIDIARIES in ELECTRON FIELD EMISSION DISPLAY
DEVICE, provided the assigning or transferring party shall have such
corporation, company or other entity execute and deliver to the other party an
instrument in writing agreeing to be bound by the provisions of this AGREEMENT.
6.2 Notwithstanding SIDT's assignment or transfer of this
AGREEMENT to any corporation, company or other entity as permitted in paragraph
6.1 herein, SIDT and its SUBSIDIARIES shall remain liable under this AGREEMENT
with respect to any PATENTS which fall in the definition of LICENSED PATENTS and
are thereafter at any time during the
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TERM of this AGREEMENT owned or controlled or licensable by SIDT and/or its
SUBSIDIARIES, and the provisions of this AGREEMENT (including the license,
nonassertion and release of Article 2 and the indemnification under Article 7)
shall apply with respect to such PATENTS.
6.3 SIDT and its SUBSIDIARIES shall not assign or transfer, or
grant any right under the LICENSED PATENTS unless, prior to such assignment or
transfer, or grant, SIDT or its SUBSIDIARIES notifies the assignee, transferee
or grantee of the license, nonassertion and release granted to CANON and its
SUBSIDIARIES under the LICENSED PATENTS in this AGREEMENT, and such assignment
or transfer, or grant is expressly made subject to such license, nonassertion
and release granted to CANON and its SUBSIDIARIES. SIDT and its SUBSIDIARIES
shall have such assignee or licensee of any such LICENSED PATENTS execute and
deliver to CANON an instrument in writing agreeing to the license, nonassertion
and release granted to CANON and its SUBSIDIARIES under such LICENSED PATENTS in
this AGREEMENT.
6.4 This AGREEMENT constitutes the entire understanding and
agreement of the parties pertaining to the matters set forth herein, and
supersedes all prior agreements, proposals, understandings, negotiations and
discussions of the parties regarding the subject matter thereof.
6.5 No amendment, supplement, modification or waiver of this
AGREEMENT shall be binding unless executed in writing by authorized
representatives of both parties.
6.6 This AGREEMENT shall be executed in duplicate, each of which
shall be deemed an original, but all of which shall constitute one and the same
instrument.
6.7 All notices which may be or are required to be given under
this AGREEMENT shall be in writing and shall be deemed given ten (10) days after
posting by registered or certified
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air mail, postage prepaid, addressed to the addresses specified below or such
changed address as the addressee shall be specifically provided by notice given
in conformity with this paragraph:
Notices to SIDT shall be addressed as follows:
Dr. Zvi Yaniv
President
SI Diamond Technology, Inc.
3006 Longhorn Blvd., Suite 107
Austin, Texas 78758 U.S.A.
Notices to CANON shall be addressed as follows:
Chief General Manager
Corporate Intellectual Property and Legal Headquarters
Canon Inc.
30-2 Shimomaruko 3 chome
Ohta-ky, Tokyo 146-8501, Japan
6.8 This AGREEMENT shall be construed by and interpreted in
accordance with the laws of the state of New York, United States of America,
exclusive of its choice of law provisions. All questions concerning the
construction or effect of patent applications and patents shall be decided in
accordance with the laws of the country in which the particular patent
application or patent concerned has been filed or granted, as the case may be.
ARTICLE 7 - INDEMNIFICATION
7.1 SIDT on behalf of itself and its SUBSIDIARIES hereby
indemnifies CANON and its SUBSIDIARIES for each of the following:
(a) all payments made to any third party for any license
granted to CANON and/or its SUBSIDIARIES by said third party under one or more
of the EMPLOYEE AND/OR CO-OWNED PATENTS; and
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(b) all damages awarded against CANON and/or its
SUBSIDIARIES in any legal action for infringement of one or more of the EMPLOYEE
AND/OR CO-OWNED PATENTS.
7.2 CANON and its SUBSIDIARIES shall give SIDT ninety (90) days
advance written notice prior to taking action for a claim for indemnification
under paragraph 7. 1 herein.
ARTICLE 8 - CONFIDENTIALITY
8.1 SIDT, CANON and their SUBSIDIARIES, employees, officers and
directors shall keep the terms of this AGREEMENT confidential except:
(a) with the prior written consent of the other party; or
(b) as may be required under law for the legal enactment
or performance of the terms and conditions of this AGREEMENT; or
(c) as otherwise may be required by law or as may be
ordered by a court of competent jurisdiction or other governmental or quasi
governmental authority.
8.2 In no event shall the provisions of paragraph 8.1 herein be
construed to prevent either party from referring only to the existence of this
AGREEMENT.
8.3 Notwithstanding paragraphs 8.1 and 8.2 herein, SIDT may
mention to a candidate of SIDT licensee who is interested in obtaining a license
for an electron emission display device under SIDT's United States Patent Nos.
5,679,043 and 5,763,997 the fact that CANON has obtained a license under such
SIDT patents, without referring to any other terms of this AGREEMENT.
IN WITNESS WHEREOF, this AGREEMENT has been duly executed by the
parties to be effective as of the EFFECTIVE DATE.
SI DIAMOND TECHNOLOGY, INC. CANON INC.
By: /s/ Marc W. Eller By: /s/ Fujio Mitarai
----------------- -----------------
Marc W. Eller Fujio Mitarai
Title: Chairman & CEO Title: President & CEO
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COMPANY CONTACT:
Olga Tikhonski
SI Diamond Technology, Inc.
512.339.5020 ext. 117
FOR IMMEDIATE RELEASE
SI DIAMOND ISSUES NON-EXCLUSIVE LICENSE FOR
AMOUNT EXCEEDING $5.0 MILLION
-SI DIAMOND WILL SHOW FIRST PROFITABLE QUARTER-
-ACHIEVES POSITIVE NET WORTH-
AUSTIN, Texas, March 31, 1999 - SI Diamond Technology, Inc. (OTC BB: SIDT)
announced today that it has licensed its patents in the field of electron field
emission display applications to one of the world's largest manufacturers of
information and office equipment. The license is a non-exclusive worldwide
license that requires a lump sum payment in excess of $5 million to SI Diamond.
The license excludes certain electron field emission display technology that
will be used exclusively by SI Diamond for the development of the next
generation billboard and video wall products.
"Although this is just the beginning, this signifies a tremendous breakthrough
for the company both financially and technically. The tremendous effort that
Dr. Yaniv and his team have put forth to build value in our patent portfolio
has been validated in a big way," said Marc Eller, chairman and chief executive
officer of SI Diamond.
"From a financial standpoint, it's the first time SIDT will be profitable from
operations in any given quarter," continued Eller. "Also, this transaction
gives the company a net worth that is positive. I am very proud of what our
team has accomplished over the last two years and I look forward to better
things to come."
SI Diamond will hold a conference call today, March 31, 1999 at 10:00 a.m. CST
to discuss this and other business developments. Interested participants should
dial (706) 634-2266 at that time to listen to the conference call.
This press release contains forward looking information within the meaning of
Section 27A of the Securities Act of 1993, as amended, and Section 21E of the
Securities Act of 1934, as amended, and is subject to the safe harbor created
by those sections. The Company's results may be impacted by risk factors listed
from time-to-time in SIDT's SEC reports.
Si Diamond Technology is a holding company consisting of two wholly owned
subsidiaries. The Field Emission Picture Element Technology (FEPET) subsidiary
is developing products for applications utilizing SIDT's proprietary Field
emission technology. The Electronic Billboard Technology (EBT) subsidiary is
geared toward the commercialization of electronic digitized sign technology.
