Article 1: License
1.1 License Grant
Subject to the terms and conditions of this Agreement, RI hereby grants to Licensee, a non-exclusive, nontransferable, royalty-free license, to use the Drawings solely for the purpose of enabling Licensee or its authorized subcontractors to manufacture components and/or replacement parts for the Devices which are purchased and used by Licensee.
1.2 No Other Rights Granted
Apart from the license rights set forth in Section 1.1, above, RI grants and Licensee receives no license rights nor any ownership right, title or interest nor any security interest or other interest in any intellectual property rights relating to the Drawings, nor in any copy of any part of them.
Article 2: Ownership; Assignment
RI will retain all right, title and interest, including all intellectual property rights and proprietary rights, in and to the Drawings.
To the extent that Licensee or its independent contractors create any work or materials based on the Drawings and in which they claim any proprietary or intellectual property rights, Licensee assigns to RI all right, title, and interest now existing or that may exist in the future in and to any such work or materials created by Licensee or its independent contractors. The foregoing rights include, but are not limited to, all rights to register, or to renew any intellectual property rights in the work, and all causes of action related to such intellectual property rights, including the right to sue for past damages.
Article 3: Warranties; Indemnification
RI and Licensee each warrant and represent that it is authorized to enter into and perform this Agreement.
3.2 Mutual Indemnification
Each of RI and Licensor will indemnify and hold harmless each other, its parents and subsidiaries, and any of their respective officers, directors, employees and shareholders from and against any claims, demands, suits, causes of action, losses, damages, judgments, costs and expenses (including reasonable attorneys’ fees) arising out of any breach of the indemnifying party’s warranty, set forth in Section 3.1, above; provided that the indemnifying party will provide prompt written notice of such claims to the indemnified party and the indemnified party will have the right to control the defense and settle of such claims. The indemnifying party will cooperate with and provide reasonable assistance to the indemnified party in connection with its obligation to indemnify set forth in this Section 3.2.
Article 4: Term and Termination
4.1 Termination for Convenience
The term of this Agreement will commence on the Effective Date and will continue until this Agreement is terminated pursuant to this Article 4. RI may terminate this Agreement without cause upon not less than 60 days’ written notice to Licensee.
4.2 Termination for Cause
RI may terminate this Agreement and cancel the license granted under this Agreement at any time in the event that Licensee is in material default or breach of any material provision of this Agreement, and such default or breach continues without remedy for a period of 30 days after written notice thereof. In the event that a default or breach is reasonably incapable of cure within such 30- day period and Licensee is using all reasonable efforts to cure such default or breach, the cure period will continue for an additional 30 days.
4.3 Obligations Upon Termination
Upon termination of this Agreement for any reason, Licensee immediately will return or provide to RI all Confidential Information and tangible items in Licensee’s possession or control which are proprietary to RI.
Article 5: Confidentiality
Licensee acknowledges and agrees that the Drawings and any other information provided to Licensee by RI under this Agreement (which other information is marked as “proprietary” or “confidential” or, if disclosed orally, is reduced to writing and similarly marked and delivered to Licensee)(“Confidential Information”) constitute the confidential and proprietary information of RI, and that Licensee’s protection of Confidential Information is essential to this Agreement and is a condition to Licensee’s use and possession of the Drawings. Licensee will retain all Confidential Information in strict confidence and not disclose it to any third party (except as authorized by this Agreement) or use it in any way except as permitted by this Agreement without RI’s express written consent. The prohibitions contained in this Section 5.1 preclude dissemination of such information to Licensee’s subsidiaries or affiliates, except if such subsidiary or affiliate becomes an assignee of this Agreement as set forth in Section 6.1, below. Specifically, without limitation, Licensee acknowledges and agrees that the Drawings will only be used in conjunction with the use of the Devices.
Licensee will be relieved of this obligation of confidentiality to the extent any such information:
5.2.1 was in the public domain at the time it was disclosed or has entered the public domain through no fault of Licensee;
5.2.2 was known to Licensee, without restriction, at the time of disclosure as shown by the files of Licensee in existence at the time of disclosure;
5.2.3 becomes known to Licensee, without restriction, from a source other than Licensee, without breach of this Agreement by Licensee and otherwise not in violation of RI’s rights; or
5.2.4 is required to be disclosed pursuant to law, regulation, or court order provided, however, that Licensee gives RI prompt, written notice in order to allow RI to take whatever action it deems necessary to protect its Confidential Information.
5.3 Confidentiality Agreement
Without limiting the foregoing, prior to any independent contractor’s gaining access to any of RI’s Confidential Information, such independent contractor will enter into a confidentiality agreement with Licensee on the same terms and conditions as those in Section 5.1, above. Further, Licensee will require all of its independent contractors to assign to Licensee all right, title and interest in any work or materials created by such independent contractor and based on the Drawings and in which Licensee or independent contractor claims any proprietary or intellectual property rights. Licensee will be fully responsible for the authorized conduct of all its employees, agents and representatives who may in any way breach this Agreement.
5.4 Irreparable Harm By Disclosure
Licensee recognizes and acknowledges that the Confidential Information may have competitive value and that irreparable damage may result to RI if Licensee improperly discloses Confidential Information to any non-authorized third party.
Article 6: Miscellaneous
Licensee may not assign this Agreement or any rights or obligation hereunder, directly or indirectly, by operation of law or otherwise, without the prior written consent of RI. Any such attempted assignment will be void. Notwithstanding the foregoing, Licensee may assign this Agreement to a successor to all or substantially all of its business or assets to which this Agreement relates, and Licensee will have the right to transfer its rights hereunder to any company which is wholly owned by Licensee; provided that, such successor or wholly owned subsidiary agrees in writing to be bound by all the terms and conditions of this Agreement that are applicable to Licensee.
Any notices or other communications required to be given pursuant to this Agreement will be in writing and will be effective upon delivery by hand or upon receipt if sent by mail (registered or certified mail, postage prepaid, return receipt requested) or by express mail or overnight courier or upon transmission if sent by telex or facsimile (with request for confirmation of receipt in a manner customary for communications of such respective type), except that if notice is received by email or facsimile after 5:00 P.M. on a business day at the place of receipt, it will be effective as of the following business day. Notices will be delivered to the addresses set forth in the agreement.
Any party may change its address for receiving notice by written notice given to the other party in the manner provided above.
6.3 Governing Law; Consent to Jurisdiction and Venue
In all respects, including all matters of construction, validity and performance, this Agreement and the obligations set forth hereunder will be governed by, and construed and enforced in accordance with, the laws of the State of California applicable to contracts made and performed in such State, without regard to the principles thereof regarding conflict of laws, and any applicable laws of the United States of America. Except as otherwise provided in this Agreement, and to the extent permitted by law, the parties hereto agree that all actions or proceedings arising in connection with this Agreement, will be tried and litigated only in the state and federal courts located in the County of Santa Clara, State of California. The parties, to the extent they may legally do so, waive any right each may have to assert the doctrine of forum non conveniens or to object to venue to the extent any proceeding is brought in accordance with this Section 6.3 and stipulate that the state and federal courts located in the County of Santa Clara, State of California will have in personam jurisdiction and venue over such party for the purpose of litigating any such dispute, controversy, or proceeding arising out of related to this Agreement.
If any term or provision of this Agreement will be found to be void or contrary to law, such term or provision will, but only to the extent necessary to bring this Agreement within the requirements of law, be deemed to be severable from the other terms and provisions hereof, and the remainder of this Agreement will be given effect as if the parties had not included the severed term herein.
The provisions of Articles 2, 3, and 5 will survive the termination of this Agreement
The waiver of, or failure to enforce, any breach or default hereunder will not constitute the waiver of any other or subsequent breach or default.
The section and other headings contained in this Agreement are for reference purposes only and will not affect any way the meaning or interpretation of this Agreement.
6.8 Entire Agreement
This Agreement sets forth the entire Agreement between the parties and supersedes any and all prior proposals, agreements and representations between them, whether written or oral. This Agreement may be changed only by mutual agreement of the parties in writing.