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CERTAIN CONFIDENTIAL PORTIONS OF THIS EXHIBIT WERE OMITTED AND REPLACED WITH “[***]”. A COMPLETE VERSION OF THIS EXHIBIT HAS BEEN FILED SEPARATELY WITH THE SECRETARY OF THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO AN APPLICATION REQUESTING CONFIDENTIAL TREATMENT UNDER RULE 406 OF THE SECURITIES ACT OF 1933.
CNT PRODUCTION PATENT LICENSE AGREEMENT
This CNT PRODUCTION PATENT LICENSE AGREEMENT (this “ Agreement ”), dated as of December , 2010, is entered into by and between Unidym, Inc., a Delaware Corporation having a principal place of business at 1244 Reamwood Avenue, Sunnyvale, CA 94089, USA (“ Unidym ”), and Samsung Electronics Co., Ltd., a company organized under the laws of the Republic of Korea and having a principal place of business at 416 Maetan-dong, Yeongtong-gu, Suwon-si, Gyeonggi-do, 443-742, the Republic of Korea (“ Samsung ”). Unidym and Samsung may be referred to herein as a “ Party ” or, collectively, as the “ Parties .”
WHEREAS , Unidym is engaged in the research, development, marketing and sale of certain carbon nanotube and graphene based products and technologies and is the owner of certain patents and patent applications relating to such carbon nanotube and graphene based technology;
WHEREAS , Samsung desires to obtain a sole license to certain patents and patent applications owned by Unidym, and Unidym desires to grant to Samsung such sole license, on and subject to the terms and conditions set forth herein;
NOW THEREFORE , in consideration of the mutual promises and covenants set forth herein, and, for other good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the Parties, intending to be legally bound, agree as follows:
1.1 Definitions .
“ Affiliate ” shall mean any entity directly or indirectly controlled by, controlling or under common control with, a Party to this Agreement. For purposes of this definition, “ control ” (including, with correlative meanings, “ controlled by ,” “ controlling ” and “ under common control with ”) means (a) possession, direct or indirect, of the power to direct or cause direction of the management or policies of an entity (whether through ownership of securities or other ownership interests, by contract or otherwise), or (b) beneficial ownership of *** percent (***%) or more of the voting securities or other ownership interest (whether directly or pursuant to any option, warrant or other similar arrangement) or other comparable equity interests of an entity.
“ Business Day ” shall mean a day other than a Saturday, Sunday, or bank or other public holiday in the State of California, USA or Seoul, Republic of Korea
“ Claim ” shall mean any claim, action, lawsuit or other proceeding.
“ CNT Production Patent License Agreement Disclosure Schedules ” shall mean the disclosure schedules attached hereto as Exhibit B .
“***” shall mean ***
“ Confidential Information ” shall have the meaning set forth in Section 11.1 .
“ Contract ” shall mean any contract, license, sublicense, purchase, sale, permit, loan, security, pledge, instrument and any other arrangement or any commitment to enter into any of the foregoing (in each case, whether written or oral).
“ Control ” shall mean, with respect to any intellectual property rights, ownership or possession of the legal authority or right of a Party hereto (or any of its Affiliates) to grant a license or sublicense of any such intellectual property right to the other Party or to otherwise disclose proprietary or trade secret information to the other Party, without breaching the terms of any Contract with a Third Party or infringing or misappropriating the intellectual property rights of a Third Party.
“ Effective Date ” shall have the meaning set forth in Section 2.1 .
“ Enforcement Action ” shall mean any and all actions required to make a Claim.
“ Field of Use ” shall mean any and all fields of use, except as set forth in Section 6.1(f)(ii) .
“ Field of Therapeutics ” shall mean the same defined in the License Agreement between *** and Unidym, dated ***, Unidym Agreement # ***, which is recited as follows:
the application of carbon nanotubes to the treatment of disease in humans, where either: (1) the carbon nanotubes are bound to drug molecules, either directly or through an intermediate agent, to form a complex that is inserted into the body to deliver the drug molecules to target cells through the bloodstream to treat such disease; or (2) the carbon nanotubes are inserted into the body to be delivered through the bloodstream to target cells and used to thermally eradicate the target cells to treat such disease. An example of a product in the Field of Therapeutics is a formulation comprising carbon nanotubes bound to a chemotherapy agent and subsequently injected into the body to treat cancer. Example applications outside the Field of Therapeutics include but are not limited to the use of carbon nanotubes to deliver substances to cells outside of the body, the use of carbon nanotubes in a device that is surgically implanted at a particular site in the body (e.g., a surgically implanted drug delivery device), and the use of carbon nanotubes in structural medical devices (e.g., catheters, stents, intravascular devices or spinal cord regeneration matrices). Notwithstanding any of the preceding, the use of carbon nanotubes in the context of, in connection with, or in combination with stem cells is outside the Field of Therapeutics.
“ Intellectual Property Purchase and Business Cooperation Agreement ” shall mean the agreement of even date herewith entered into by and between Unidym and Samsung relating to purchase and grant-back license of certain Patent Rights owned by Unidym and its Subsidiaries .
“ License and Enforcement Agreement ” shall mean the agreement of even date herewith entered into by and between Unidym and Samsung relating to license and enforcement of certain Patent Rights licensed to Unidym.
“ Licensed Products ” shall mean any products, processes or services covered by the Unidym CNT Production Patents.
“ Liens ” shall mean, with respect to any property or asset, any mortgage, pledge, security interest, encumbrance, claim, lien, or charge of any kind in respect of such property or asset (including, without limitation, any conditional sale or option), any sale of receivables with recourse against such seller, or any agreement to file any of the foregoing.
“ Losses ” shall have the meaning set forth in Section 10.1 .
“ Patent Rights ” shall mean all patents, patent applications, patent disclosures and equivalents thereof, whether domestic or foreign, including all continuations, continuations-in-part, divisionals, provisionals and renewals, and letters patent granted with respect to any of the foregoing, and all reissues, re-examinations and extensions thereof.
“ Recoveries ” shall mean any awards, damages, payments (including royalties for any licenses granted) or other revenues generated from any exercise of Patent Rights .
“ Sole License ” shall mean an exclusive license, except that the licensor retains certain rights to operate under the licensed patent as set forth in Section 3.1 .
“ Subsidiary ” shall mean, with respect to any specified Party, any entity of which securities or other interests having the power to elect a majority of that entity’s board of directors or similar governing body, or otherwise having the power to direct the business and policies of that entity (other than securities or other interests having such power only upon the happening of a contingency that has not occurred) are held by such specified Party or one or more Subsidiaries of such specified Party.
“ Third Party ” shall mean any person or entity other than one of the Parties or an Affiliate of a Party.
“ Transaction Documents ” shall mean, collectively, this Agreement, Intellectual Property Purchase and Business Cooperation Agreement and the License and Enforcement Agreement.
“ Unidym CNT Production Patents ” shall mean the patent(s) and patent application(s) owned by Unidym or its Subsidiaries as of the Effective Date and listed on Exhibit A .
1.2 Other Definitional and Interpretative Provisions . The words “hereof,” “herein” and “hereunder” and words of like import used in this Agreement shall refer to this Agreement as a whole and not to any particular provision of this Agreement. The captions herein are included
for convenience of reference only and shall be ignored in the construction or interpretation hereof. References to Sections, Exhibits and Schedules are to Sections, Exhibits and Schedules of this Agreement unless otherwise specified. All Exhibits and Schedules annexed hereto or referred to herein are hereby incorporated in and made a part of this Agreement as if set forth in full herein. Any capitalized terms used in any Exhibit or Schedule but not otherwise defined therein, shall have the meaning as defined in this Agreement. Whenever the words “include,” “includes” or “including” are used in this Agreement, they shall be deemed to be followed by the words “without limitation,” whether or not they are in fact followed by those words or words of like import. When the words “not to be unreasonably withheld” are used in this Agreement, they shall be deemed to be followed by the phrase “, conditioned or delayed,” whether or not they are in fact followed by that phrase or a phrase of like import. References to any agreement or contract are to that agreement or contract as amended, modified or supplemented from time to time in accordance with the terms hereof and thereof. References to any Third Party include the successors and permitted assigns of that Third Party. References from or through any date mean, unless otherwise specified, from and including or through and including, respectively. References to “law” or “laws” shall be deemed to include any and all applicable laws.
2.1 This Agreement shall come into effect upon receipt by Samsung of all deliverables set forth in Section 2.3 below, provided that the conditions set forth in Section 2.2 have also been met (the date of satisfaction of all such conditions and receipt of all such deliverables being the “ Effective Date ”). Samsung may in its sole and absolute discretion waive the satisfaction of any such conditions or the delivery of any such deliverables.
2.2 The effectiveness of this Agreement shall be subject to each of the following conditions:
(a) Accuracy of Representations and Warranties . The representations and warranties of Unidym set forth in Section 6.1 and of Samsung set forth in Section 6.2 shall be true and correct in all material respects as of the Effective Date.
(b) Litigation . As of the Effective Date, no action, suit, litigation, proceeding or investigation shall have been instituted, be pending or threatened against Unidym or any of its Affiliates challenging or seeking to make illegal, to delay or otherwise directly or indirectly to restrain or prohibit the consummation of the transactions contemplated by this Agreement and the other Transaction Documents, or seeking to obtain damages in connection with the transactions contemplated by this Agreement or the other Transaction Documents.
(c) No Loss or Destruction . As of the Effective Date, no material loss, damage, destruction, rejection or expiration shall have occurred to the Unidym CNT Production Patents regardless of whether covered by insurance.
2.3 The effectiveness of this Agreement shall be subject to Unidym having delivered to Samsung the following:
(a) a certificate signed on behalf of Unidym by its Chief Executive Officer, dated the Effective Date, certifying that the conditions specified in Sections 2.2(a) through (c) have been satisfied in all respects;
(b) a certificate signed by the corporate secretary of Unidym, dated the Effective Date, attaching the resolutions and consents of the board of directors of Unidym and, to the extent required, each of its Affiliates authorizing the execution and delivery of, and the consummation of the transactions contemplated by, this Agreement and the other Transaction Documents.
3.1 Sole License under Unidym CNT Production Patents . On the Effective Date, Unidym hereby grants to Samsung, and Samsung hereby accepts from Unidym, a sole, *** license under the Unidym CNT Production Patents in the Field of Use to research, develop, make, have made, import, have imported, use, have used, sell, have sold, offer for sale, have offered for sale and otherwise exploit any Licensed Products. Unidym retains the right (with the right to grant a subl