exv10w3






EXHIBIT 10.3




ENGINEERING SERVICES AGREEMENT









     THIS ENGINEERING SERVICES AGREEMENT (this “Agreement”) is made and entered into, as of
June 19, 2009 (the “Effective Date”), by and between FALLBROOK TECHNOLOGIES INC., a Delaware
corporation (“Fallbrook”), having a place of business at 9444 Waples St., Suite 410, San Diego,
California 92121 and ***



***                          (collectively the “Parties”).



1. Background. The Parties have entered into a Non Disclosure Agreement on September 5,
2008 (the “NDA”) pursuant to which the Parties have discussed application of Fallbrook’s
NuVinci® technology to various applications. In further pursuit of determining whether
a further business relationship can be reached, the Parties desire that Fallbrook perform certain
engineering services as set forth in this Agreement. As part of the program for these engineering
services, the Parties desire to establish an option to certain rights in Fallbrook’s NuVinci
continuously variable planetary drive (“CVP”) technology.



2. Services. Fallbrook shall use its commercially reasonable efforts to perform the
services specified on Exhibit A to this Agreement (the “Services”) in a timely manner.



3. Compensation. *** shall pay Fallbrook each of the milestone fees when payable as
described on Exhibit A. For milestone payments that require action or information from ***
that are delayed due to the failure of *** to timely provide such action or information, the
associated milestone payment shall become due upon the associated estimated completion date for the
subject milestone payment regardless of whether the milestone is actually completed by that date.
Payments are net 60 upon delivery of an invoice from Fallbrook.



3.1 Costs. Except as identified on Exhibit A or otherwise agreed to by the Parties
Fallbrook shall bear its own costs in providing the Services. All amounts paid under this
Section 3 shall be non-refundable.



4. Independent Contractor Relationship. Fallbrook’s relationship with *** is that of
an independent contractor, and nothing in this Agreement is intended to, or shall be construed to,
create a partnership, agency, joint venture, employment or similar relationship. Neither party is
authorized to make any representation, contract or commitment on behalf of the other party unless
specifically requested or authorized in writing to do so by the other party. No part of
Fallbrook’s compensation shall be subject to withholding by *** for the payment of any social
security, federal, state or any other employee payroll taxes.



5. Ownership. Other than for the Developments (as defined below), *** shall own all
inventions, discoveries, enhancements, improvements, technology, data or information relating to
systems or components resulting from the Services. Fallbrook hereby sells, assigns, and transfers
to *** all of Fallbrook’s right, title and interest thereto. Except for the Actuator as
described below, Fallbrook shall solely own all Developments that are made or conceived by
Fallbrook or *** under this Agreement, together with all patent and other intellectual property
rights thereto. *** hereby sells, assigns and transfers to Fallbrook all of *** right,
title and interest to such Developments. For Developments to the Actuator (defined below) of the
NuVinci Technology (defined below) *** shall, by providing input that constitutes inventive
input for purposes of patenting, earn joint ownership of any patents resulting






 




			
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ENGINEERING SERVICES AGREEMENT



directly from the Services that claim as inventions methods or apparatuses that constitute improved
actuators for continuously variable transmissions.



5.1 Definitions.



(a) “Developments” shall mean all inventions, discoveries, enhancements, improvements, technology,
data or information (whether or not patentable) of or to the NuVinci Technology developed under
this Agreement.



(b) “NuVinci Technology” shall mean the components, assemblies, subassemblies and associated
methods of manufacture and use pertaining directly to Fallbrook’s patented NuVinci continuously
variable transmission (CVT) including: 1) the structure housing the CVT; 2) the components
supporting power flow into and out of the CVT (but excluding any upstream or downstream gearing
that is not integral with the CVT in its housing); 3) the lubrication system components integral
with or inside the CVT housing; 4) the CVT control mechanism integral with or directly coupled to
the CVT (including the actuator that provides motive shift force to the CVT internal shifting
components (the “Actuator”). NuVinci Technology does not include generally available components or
parts that may be implemented under this Agreement to the extent such components or parts are not
specialized or modified for use with the CVT under this Agreement.



6. Confidentiality.



6.1 Confidential Information. During the term of this Agreement, and for a period of five
(5) years following the expiration or earlier termination hereof, each party shall maintain in
confidence all information of the other party disclosed by the other party (the “Discloser”) and
identified as, acknowledged to be, or can reasonably be inferred from the subject matter of the
disclosure to be, confidential (the “Confidential Information”), and shall not use, disclose or
grant the use of the Confidential Information except on a need-to-know basis to those directors,
officers or employees, to the extent such disclosure is reasonably necessary in connection with
such party’s activities. To the extent that disclosure is authorized by this Agreement, each party
hereto shall obtain, prior to disclosure, agreement of any person receiving the Confidential
Information to hold in confidence and not make use of the Confidential Information for any purpose
other than those permitted by this Agreement or the NDA; provided, however, that the Parties shall
maintain in strict confidence any Confidential Information of the Discloser that the Discloser
maintains as a trade secret.



6.2 Permitted Disclosures. The confidentiality obligations contained in Section 6.1 above
shall not apply to the extent that (a) any receiving party (the “Recipient”) is required to
disclose information by law, order or regulation of a governmental agency or a court of competent
jurisdiction, provided that the Recipient shall provide written notice thereof to the Discloser and
sufficient opportunity to object to any such disclosure or to request confidential treatment
thereof; or (b) the Recipient can demonstrate that (i) the disclosed information was public
knowledge at the time of such disclosure to the Recipient, or thereafter became public knowledge,
other than as a result of actions of the Recipient in violation hereof; (ii) the disclosed
information was rightfully known by the Recipient (as shown by its written records) prior to the
date of disclosure to the Recipient by the other party hereunder; (iii) the disclosed information
was disclosed to the Recipient on an unrestricted basis from a source unrelated to any party to
this Agreement and not under a duty of confidentiality to the Discloser; or (iv) the disclosed
information was independently developed by the Recipient without use of the Confidential
Information disclosed by the Discloser.



6.3 Return of Confidential Information. Within thirty (30) days after any request by a
Discloser, the Recipient shall destroy or deliver to the Discloser, at the Discloser’s option, all
materials in the Recipient’s possession or control that contain or disclose any Confidential
Information of the Discloser that the Discloser requests in writing.




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ENGINEERING SERVICES AGREEMENT



6.4 No License. Nothing herein shall be construed as granting either party a license under
any trade secrets, patents, copyrights, or trademarks owned or controlled by the other party.



7. Disclaimer of Warranty. Limitation of Damages. Fallbrook shall provide the Services to
*** in a reasonably competent manner considering industry standards and norms.
NOTWITHSTANDING THE FOREGOING, FALLBROOK SHALL HAVE NO LIABILITY UNDER THIS AGREEMENT ARISING FROM,
RELATED TO, OR CONNECTED WITH THE SALE AND/OR USE OF ANY PRODUCTS MADE BY *** . FALLBROOK
EXPRESSLY DISCLAIMS ALL WARRANTIES, EXPRESS OR IMPLIED, REGARDING THE SERVICES AND RESULTING
DELIVERABLES, INCLUDING BUT NOT LIMITED TO, ANY WARRANTIES OF MERCHANTABILITY AND/OR FITNESS FOR
ANY PARTICULAR PURPOSE. NEITHER PARTY SHALL BE LIABLE TO THE OTHER PARTY FOR ANY INDIRECT,
SPECIAL, OR CONSEQUENTIAL DAMAGES, LOST REVENUE, LOST PROFITS, OR LOST OPPORTUNITY ARISING FROM,
RELATED TO, OR CONNECTED WITH THE SERVICES OR RESULTING DELIVERABLES EVEN IF SUCH PARTY HAS BEEN
ADVISED OF THE POSSIBILITY THEREOF. FALLBROOK’S MAXIMUM LIABILITY UNDER THIS AGREEMENT IS LIMITED
TO THE AMOUNTS RECEIVED BY FALLBROOK FROM *** UNDER THIS AGREEMENT.



8. Term and Termination.



8.1 Term. The term of this Agreement shall commence on the Effective Date and shall,
unless earlier terminated as provided herein, continue until the earlier of; (i) a period of two
months after the completion of Task IV of Exhibit A, or (ii) one year from the Effective Date.



8.2 Termination. Either party may terminate this Agreement immediately for a material
breach by the other party if the other party’s material breach of any provision of this Agreement
is not cured within thirty (30) days after the date of such party’s written notice of breach. A
material breach for purposes of this section include, but are not limited to, the failure of either
Party to fulfill in a reasonably timely manner their obligations under Exhibit A.



8.3 Effect of Expiration or Termination. The definitions contained in this Agreement and
the rights and obligations contained in this Section and Sections 5, 6, 7, 8.3 and 9 shall survive
any termination or expiration of this Agreement.



9. General Provisions.



9.1 Notices. Any notice required or permitted by this Agreement shall be in writing and
shall be delivered as follows, with notice deemed given as indicated: (a) by personal delivery,
when actually delivered; (b) by overnight courier, upon written verification of receipt; (c) by
facsimile transmission, upon acknowledgment of receipt of electronic transmission; or (d) by
certified or registered mail, return receipt requested, upon verification of receipt. Notice shall
be sent to the addresses set forth above or to such other address as either party may provide in
writing.



9.2 Assignment. Except as otherwise expressly provided under this Agreement and except as
part of an equity offering or transfer of substantially all the assets of one of the Parties,
neither this Agreement nor any right or obligation hereunder may be assigned or otherwise
transferred, whether voluntarily, by operation of law or otherwise, without the prior express
written consent of the other party; provided,






 




			
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however, that either party may, without such consent, assign this Agreement and its rights and
obligations hereunder in connection with the transfer or sale of all or substantially all of its
business assets associated with this Agreement, or in the event of its merger, consolidation,
change in control or other similar transaction for such assets. Any permitted assignee shall
assume all obligations of its assignor under this Agreement. Any purported assignment or transfer
in violation of this Section 9.2 shall be void.



9.3 Governing Law; Forum. This Agreement shall be governed in all respects by the laws of
the United States of America and by the laws of the State of Delaware.



9.4 Force Majeure. If either party fails to perform its obligations because of strikes,
lockouts, labor disputes, embargoes, acts of God, inability to obtain labor or materials,
governmental restrictions, governmental regulations, governmental controls, judicial orders, enemy
or hostile governmental action, terrorist act, civil commotion, riot, fire, earthquake, or natural
disaster, or other causes (except financial causes) beyond the reasonable control of the party
obligated to perform, then that party’s performance shall be excused for a period equal to the
period of such event.



9.5 Severability. If a court of law holds any provision of this Agreement to be illegal,
invalid or unenforceable, (a) that provision shall be deemed amended to achieve an economic effect
that is as near as possible to that provided by the original provision and (b) the legality,
validity and enforceability of the remaining provisions of this Agreement shall not be affected
thereby.



9.6 Waiver; Modification. If a party waives any term, provision or the other party’s
breach of this Agreement, such waiver shall not be effective unless it is in writing and signed by
such party. No waiver by a party of a breach of this Agreement shall constitute a waiver of any
other or subsequent breach by the other party. This Agreement may be modified only by mutual
written agreement of authorized representatives of the parties.



9.7 Entire Agreement. This Agreement constitutes the entire agreement between the parties
relating to this subject matter and supersedes all prior or contemporaneous agreements concerning
such subject matter, written or oral.



9.8 Counterparts. This Agreement may be executed in two or more counterparts, each of
which shall be deemed an original, but all of which together shall constitute one and the same
instrument.



9.9 Export Limitations. The Confidential Information that the Parties may desire to
disclose, or that is discovered, pursuant to this Agreement may be subject to the provisions of the
Export Administration Act and the Export Administration Regulations promulgated thereunder, or the
Arms Export Control Act or the International Traffic in Arms Regulations. The Parties acknowledge
that these statutes and regulations impose restrictions on import, export and transfer to countries
of certain categories of data and licenses from the U. S. Department of State and/or the U. S.
Department of Commerce may be required before such data can be disclosed hereunder. Moreover, such
licenses may impose further restrictions on use and further disclosure of such data.



10. Option. *** shall have the following rights to negotiate an agreement
(a “Commercialization Agreement”) for the purchase of NuVinci CVTs from Fallbrook in the Field of
Use (as defined on Exhibit B), which agreement shall include at least the terms provided on Exhibit
B (the “Option”) but if no additional terms are agreed, the terms of Exhibit B will constitute the
Commercialization Agreement.






 




			
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	***	 	and Fallbrook will include at least customary mutually satisfactory
confidentiality, shipping, termination, liability, indemnification and boilerplate terms in the
Commercialization Agreement.




10.1 Right of First Offer. For a period of ninety (90) days from the expiration
(but not early termination if Fallbrook terminates for *** breach) of this agreement (the
“Lockup Period”), Fallbrook shall neither solicit nor enter into negotiations with any other party
relating to the sale of NuVinci CVTs for the Field of Use. After the expiration of the Lockup
Period, and subject to the rights set forth in this Section 0 and Section 0 below, Fallbrook shall
not be restricted from soliciting or entering into negotiations or agreements with other parties
for the sale of NuVinci CVTs in the Field of Use. For a period (the “Option Exercise Period”) of
two (2) years following the expiration of this Agreement, *** may exercise the Option by
providing Fallbrook written notice of its intent to do so, and upon the receipt of such notice
Fallbrook and *** shall negotiate in good faith the terms of a Commercialization Agreement
until the earlier of (1) the expiration of the Option Exercise Period, or (2) ninety (90) days from
the date of such notification.



The Commercialization Agreement will consist of:



(1) the terms in Exhibit B,



(2) confidentiality, shipping, termination, liability, indemnification and miscellaneous
boilerplate terms, and



(3) whatever other terms to which the Parties agree.



After the expiration of the earlier of (1) or (2) above, if Fallbrook and *** cannot agree on
the confidentiality, shipping, termination, liability, indemnification or miscellaneous boilerplate
terms, either party may invoke binding arbitration using a nationally recognized dispute resolution
organization, which shall resolve the dispute using its rules for commercial arbitration and based
on which of the Parties’ positions is most typical in agreements similar to the Commercialization
Agreement. The arbitration will be “baseball” (i.e., arbitrator will select from one
Party’s final offer) arbitration and shall be complete within 60 days of the notice of
invocation. The Parties shall share the cost of the arbitration proceedings.



10.2 Right of First Refusal. If during the Option Exercise Period, but after the
Lockup Period, Fallbrook notifies *** of its receipt of a bona fide offer pertaining to rights
in the Field of Use, *** shall have the right for sixty (60) days from the date of such
notification to exercise the Option and Fallbrook and *** shall negotiate in good faith the
terms of a Commercialization Agreement. During such sixty (60) day period Fallbrook shall not
enter into an agreement with the other party regarding the bona fide offer.



The Commercialization Agreement will consist of:



(1) the terms in Exhibit B,



(2) confidentiality, shipping, termination, liability, indemnification and miscellaneous
boilerplate terms, and



(3) whatever other terms to which the Parties agree.






 




			
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ENGINEERING SERVICES AGREEMENT



After the expiration of such sixty (60) day period, if Fallbrook and *** cannot agree on the
confidentiality, shipping, termination, liability, indemnification or miscellaneous boilerplate
terms, either party may invoke binding arbitration using a nationally recognized dispute resolution
organization, which shall resolve the dispute using its rules for commercial arbitration and based
on which of the Parties’ positions is most typical in agreements similar to the Commercialization
Agreement. The arbitration will be “baseball” (i.e., arbitrator will select from one Party’s
final offer) arbitration and shall be complete within 60 days of the notice of
invocation. The Parties shall share the cost of the arbitration proceedings.



IN WITNESS WHEREOF, the parties have executed this Agreement as of the date first written above.




	 	 	 	 	 	 	 	 	 
	FALLBROOK TECHNOLOGIES INC.	 	***	 	 	 	 
	 
	 	 	 	 	 	 	 	 
	By:

	 	/s/ Nicole Nicks
	 	By:
	 	***	 	 
	 

	 	 

	 	 	 	 

	 	 
	Name:

	 	Nicole Nicks
	 	Name:
	 	***	 	 
	Title:

	 	CFO
	 	Title:
	 	 ***	 	 
	Date:

	 	6/23/09
	 	Date:
	 	6/23/2009	 	 








 




			
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EXHIBIT A



SERVICES



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ENGINEERING SERVICES AGREEMENT




EXHIBIT B




TERMS FOR A COMMERCIALIZATION AGREEMENT



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