Exhibit 10.12





Exhibit 10.12




PATENT LICENSE AGREEMENT




This PATENT LICENSE AGREEMENT
(this “Agreement”) is entered into, as of the Effective Date
(defined below), by and between Irvine Sensors Corporation, a Delaware corporation, with an office
at 3001 Redhill Ave., Bldg. 4, Suite 108, Costa Mesa, CA 92672 (“Seller”)
and Aprolase Development
Co., LLC, a Delaware limited liability company, with an address at 2711 Centerville Road, Suite
400, Wilmington, DE 19808 (“Purchaser”). The parties hereby agree as follows:



1. BACKGROUND




1.1 Seller (“Seller”) sold to Purchaser
certain pending patent applications, patents, and/or
related foreign patents and applications (“Patents”) pursuant to a Patent Purchase Agreement
(“PPA”) entered into by the parties on December 11, 2008, and as amended in the Second Amendment to
the Patent Purchase Agreement dated March 18, 2009.



1.2 Purchaser desires to grant a license to the Patents to Seller in accordance with the terms of
this Agreement.



2. DEFINITIONS




All capitalized used but not defined herein shall have the meanings set forth in the PPA.



3. LICENSE




3.1 License. Upon the Closing, Purchaser hereby grants to Seller,
under the Patents, and
for the lives thereof, a royalty-free, non-exclusive, non-sublicensable, non-transferable right and
license (“Seller License”) to practice the methods and to make, have made, use, distribute, lease,
sell, offer for sale, import, export, develop and otherwise dispose of and exploit any Seller
products covered by the Patents (“Covered Products). The Seller License shall apply to the
reproduction and subsequent distribution of Covered Products under Seller’s trademarks and brands,
in substantially identical form as they are distributed by the Seller, by authorized agents of the
Seller such as a distributor, replicator, VAR or OEM. The Seller acknowledges and agrees that the
Seller License is not intended to cover foundry or contract manufacturing activities that the
Seller may undertake on behalf of any person that is not the Seller. As a result, Covered Products
shall exclude any products or services manufactured, produced or provided by the Seller on behalf
of any person that is not the Seller (a) from designs received in substantially completed form from
a source other than the Seller and (b) for resale to such person that is not the Seller (or to
customers of, or as directed by, any person that is not the Seller) on essentially an exclusive
basis. The Seller License is nontransferable (by operation of law or otherwise), except as set
forth in paragraph 3.2.


 


 









 





3.2 Limitation on Transferability of Subsidiary License.
The Seller License ***.
In the event of such a transfer (a “Transfer”), the ***, and the ***. Seller shall, within thirty
(30) days after a Transfer, provide Purchaser with written notice of such Transfer, which notice
will contain: (i) the effective date of the Transfer, ***, as of the effective date of the
Transfer, and the Seller License will immediately terminate in the event that Seller fails to
provide such notice as and when set forth above. The *** may not *** the Seller License ***. The
Seller License will immediately terminate upon any attempted transfer *** that is not in strict
conformance with this paragraph 3.2, and any such attempted transfer will be void.



3.3 Reservation of Rights.
Except as set forth in paragraph 3.1 above, Purchaser reserves
all right, title and interest in and to the Assigned Patent rights.



4. MISCELLANEOUS 




4.1 Limitation on Consequential Damages.
NEITHER PARTY WILL HAVE ANY OBLIGATION OR
LIABILITY (WHETHER IN CONTRACT, WARRANTY, TORT (INCLUDING NEGLIGENCE) OR OTHERWISE, AND
NOTWITHSTANDING ANY FAULT, NEGLIGENCE (WHETHER ACTIVE, PASSIVE OR IMPUTED), REPRESENTATION, STRICT
LIABILITY OR PRODUCT LIABILITY), FOR COVER OR FOR ANY INCIDENTAL, INDIRECT OR CONSEQUENTIAL,
MULTIPLIED, PUNITIVE, SPECIAL, OR EXEMPLARY DAMAGES OR LOSS OF REVENUE, PROFIT, SAVINGS OR BUSINESS
ARISING FROM OR OTHERWISE RELATED TO THIS AGREEMENT, EVEN IF A PARTY OR ITS REPRESENTATIVES HAVE
BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. THE PARTIES ACKNOWLEDGE THAT THESE EXCLUSIONS OF
POTENTIAL DAMAGES WERE AN ESSENTIAL ELEMENT IN SETTING CONSIDERATION UNDER THIS AGREEMENT.



4.2 Compliance With Laws. Notwithstanding anything contained in this Agreement to the
contrary, the obligations of the parties with respect to the consummation of the transactions
contemplated by this Agreement shall be subject to all laws, present and future, of any government
having jurisdiction over the parties and this transaction, and to orders, regulations, directions
or requests of any such government.



4.3 Confidentiality of Terms. The parties hereto will keep the terms and existence of this
Agreement and the identities of the parties hereto and their affiliates confidential and will not
now or hereafter divulge any of this information to any third party except (a) with the prior
written consent of the other party; (b) as otherwise may be required by law or legal process; (c)
during the course of litigation, so long as the disclosure of such terms and conditions is
restricted in the same manner as is the confidential information of other litigating parties; (d)
in confidence to its legal counsel, accountants, banks, and financing sources and their advisors
solely in connection with complying with or administering its obligations with respect to this
Agreement; or (e) by Purchaser, to potential purchasers or licensees of the Assigned Patent Rights
or the Abandoned Assets; provided that, in (b) and (c) above, (i) to the extent permitted by law,
the disclosing party will use all legitimate and legal means available to minimize the disclosure to third parties, including, without limitation, seeking
a confidential treatment request or protective order whenever appropriate or available; and (ii)
the disclosing party will provide the other party with at least ten (10) days’ prior written notice
of such disclosure. Without limiting the foregoing, Seller will cause Subsidiary and agents of
Subsidiary and Seller involved in this transaction to abide by the terms of this paragraph,
including, without limitation, ensuring that such agents do not disclose or otherwise publicize the
existence of this transaction with actual or potential clients in marketing materials, or industry
conferences.




 








	 	 	 
	*	 	Confidential treatment requested pursuant to Rule 24b-2
under the Securities Exchange Act of 1934. In accordance with Rule 24b-2, these
confidential portions have been omitted from this exhibit and filed separately
with the Securities and Exchange Commission.



 


 









 





4.4 Governing Law. This Agreement will be interpreted, construed, and enforced in all
respects in accordance with the laws of the State of Delaware, without reference to its choice of
law principles to the contrary. Seller will not commence or prosecute any action, suit, proceeding
or claim arising under or by reason of this Agreement other than in the state or federal courts
located in Delaware. Seller irrevocably consents to the jurisdiction and venue of the courts
identified in the preceding sentence in connection with any action, suit, proceeding, or claim
arising under or by reason of this Agreement.



4.5 Notices. All notices given hereunder will be given in writing (in English or with an
English translation), will refer to Purchaser and to this Agreement and will be delivered to the
address set forth below by (i) personal delivery or (ii) delivery postage prepaid by an
internationally-recognized express courier service:



	 	 	 	 
	 	If to Purchaser	 	If to Seller
	 
	 	Aprolase Development Co., LLC 

2711 Centerville Road, Suite 400 

Wilmington, DE 19808 


	 	Irvine Sensors Corporation

3001 Redhill Ave.

Bldg. 4, Suite 108

Costa Mesa, CA 92672
	 	 
	 	 
	 	Attn: Managing Director

	 	Attn: Eric Boyd






Notices are deemed given on (a) the date of receipt if delivered personally or by express courier
or (b) if delivery is refused, the date of refusal. Notice given in any other manner will be
deemed to have been given only if and when received at the address of the person to be notified.
Either party may from time to time change its address for notices under this Agreement by giving
the other party written notice of such change in accordance with this paragraph.



4.6 Relationship of Parties. The parties hereto are independent contractors. Nothing in
this Agreement will be construed to create a partnership, joint venture, franchise, fiduciary,
employment or agency relationship between the parties. Neither party has any express or implied
authority to assume or create any obligations on behalf of the other or to bind the other to any
contract, agreement or undertaking with any third party.



4.7 Severability. If any provision of this Agreement is found to be invalid or
unenforceable, then the remainder of this Agreement will have full force and effect, and the
invalid provision will be modified, or partially enforced, to the maximum extent permitted to
effectuate the original objective.


 


 









 





4.8 Waiver. Failure by either party to enforce any term of this Agreement will not be
deemed a waiver of future enforcement of that or any other term in this Agreement or any other
agreement that may be in place between the parties.



4.9 Miscellaneous. This Agreement and the PPA constitute
the entire agreement between the
parties with respect to the subject matter hereof and merge and supersede all prior and
contemporaneous agreements, understandings, negotiations, and discussions. Neither of the parties
will be bound by any conditions, definitions, warranties, understandings, or representations with
respect to the subject matter hereof other than as expressly provided herein. The section headings
contained in this Agreement are for reference purposes only and will not affect in any way the
meaning or interpretation of this Agreement. This Agreement is not intended to confer any right or
benefit on any third party (including, but not limited to, any employee or beneficiary of any
party), and no action may be commenced or prosecuted against a party by any third party claiming as
a third-party beneficiary of this Agreement or any of the transactions contemplated by this
Agreement. No oral explanation or oral information by either party hereto will alter the meaning
or interpretation of this Agreement. No amendments or modifications will be effective unless in a
writing signed by authorized representatives of both parties. The terms and conditions of this
Agreement will prevail notwithstanding any different, conflicting or additional terms and
conditions that may appear on any letter, email or other communication or other writing not
expressly incorporated into this Agreement.



4.10 Counterparts; Electronic Signature; Delivery Mechanics.
This Agreement may be
executed in counterparts, each of which will be deemed an original, and all of which together
constitute one and the same instrument. Each party will execute and promptly deliver to the other
parties a copy of this Agreement bearing the original signature. Prior to such delivery, in order
to expedite the process of entering into this Agreement, the parties acknowledge that a Transmitted
Copy of this Agreement will be deemed an original document. “Transmitted Copy” means a copy
bearing a signature of a party that is reproduced or transmitted via email of a .pdf file,
photocopy, facsimile, or other process of complete and accurate reproduction and transmission.



In witness whereof, intending to be legally bound, the parties have executed this Patent
License Agreement as of the Effective Date.



	 	 	 	 	 	 	 	 	 	 	 
	SELLER:	 	 	 	PURCHASER:	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	IRVINE SENSORS CORPORATION	 	 	 	APROLASE DEVELOPMENT CO., LLC	 	 
	 
	 	 	 	 	 	 	 	 	 	 
	By:

	 	/s/ JOHN J. STUART, JR.
 

Name: John J. Stuart, Jr. 

Title:   Sr. VP & Chief Financial Officer
	 	 
	 	By:
	 	/s/ MELISSA COLEMAN
 

Name: Melissa Coleman

Title:   Authorized Person
	 	 






Effective Date: March 18, 2009