Exhibit 10.4


 


Confidential


 


EXCLUSIVE LICENSE AGREEMENT


 


Between


 


The University of Washington


 


and


 


MICRO VISION, INC.


 


This
AGREEMENT is entered into as of the 3rd day of March, 1994
(hereinafter the “EFFECTIVE DATE” by and between the University of Washington,
a public institution of higher education with offices at Seattle, Washington
98195, hereinafter referred to as “UW” and MICRO VISION, INC. having a place of
business at 6500 Columbia Center 701 Fifth Avenue Seattle, WA 98104-7003
(hereinafter “MICRO VISION”).


 


Whereas,
UW has sole ownership of UW PROPRIETARY MATTER (defined below) deriving from
development of a HALO Display (“HALO”, and further referenced as “UW
INVENTION”, below) and thus is the sole licensor of LICENSED SUBJECT MATTER
(defined below);


 


WHEREAS,
UW desires that the HALO be used as soon as possible in the public interest,
and to this end desires to transfer the HALO to a company capable of
commercially exploiting the HALO.


 


WHEREAS,
MICRO VISION desires, for the purpose of commercial exploitation, to acquire a
license to certain UW PATENT rights in and to the HALO and to receive certain
TECHNICAL INFORMATION relating to the HALO.


 


NOW,
THEREFORE, in consideration of the above and the mutual covenants, terms, and
conditions set forth below, UW and MICRO VISION agree as follows:


 


1.0          Definitions


 


1.1           Terms defined in this Article, and
parenthetically defined elsewhere in this AGREEMENT, shall throughout this
AGREEMENT have the meaning provided. Defined terms may be used in the singular
or in the plural, as sense shall require. Terms defined in this Article and
throughout this AGREEMENT will be printed in capital letters for ease of
reference.


 


1.2           “PARTIES” means UW (as the Licensor
hereto) and MICRO VISION (as the Licensee hereto), including AFFILIATES,
successors or assigns as permitted by this AGREEMENT, and “PARTY” means either
one of them as the context where such term is used indicates.


 


1.3           “AFFILIATE” means any corporation,
company, new startup company, or other business entity (including any joint
venture, partnership, form of association or otherwise) and directly or
indirectly controlling, controlled by, or under common control with MICRO
VISION; “control” of an entity for purposes of this definition shall


 

















 


mean
having the right to direct or to appoint or remove a majority or more of the
members of the board of directors (or their equivalent) or management
(including the president, chairman of the board, or general or managing partner
as applicable) of said entity, by contract, agreement, provisions in the
applicable articles or bylaws, ownership of or holding rights to vote
sufficient numbers of voting shares, securities or other rights entitled to
vote for, appoint, or remove the same, or having such right to so direct or appoint
the same by applicable law.


 


1.4           “This AGREEMENT” means this License
Agreement as amended in writing by the PARTIES from time to time.


 


1.5           “EFFECTIVE DATE” means the date
referenced in the Preamble above. The EFFECTIVE DATE takes effect upon signature
of this AGREEMENT by the PARTIES hereto.


 


1.6           “TECHNICAL INFORMATION” shall mean
any technical facts, data, or advice, written or oral (in the form of
information contained in UW PATENTS and UW PATENT applications, reports,
letters, drawings, specifications, testing procedures, training and operational
manuals, bills of materials, photographs and the like) relating to the HALO and
owned or in the possession of UW.


 


1.7           “UW INVENTION” means the “HALO
Display” as described and disclosed in UW’s Office of Technology Transfer (OTT)
file #02-94-11.


 


1.8           “UW PATENTS” means all U.S. and
foreign utility and design Patents and Patent applications (including any
divisionals, continuations, continuations in part, reexaminations, extensions,
renewals, or reissues thereof), design registrations, utility models and
similar rights and applications therefore as part of the HALO Display.


 


1.9           “COPYRIGHTS” means all registered and
unregistered statutory copyright rights and applications for registration
thereof and all common law COPYRIGHTS.


 


1.10         “UW PROPRIETARY MATTER” means any
combination of COPYRIGHTABLE or COPYRIGHTED work, UW INVENTIONS, UW PATENTS,
and TECHNICAL INFORMATION.


 


1.11         “LICENSED SUBJECT MATTER” shall mean
any subject matter, including but not limited to products and processes,
covered in whole or in part by the UW PROPRIETARY MATTER for the FIELD OF USE
specified below and in the TERRITORY in which said subject matter is made,
used, or sold; and any product incorporating any TECHNICAL INFORMATION.


 


1.12         “FIELD OF USE” shall mean all possible
uses for the HALO technology.


 


1.13         “TERRITORY” shall mean world wide
territory.


 


1.14         “CONFIDENTIAL INFORMATION” means
confidential information or data disclosed to a PARTY (the “RECEIVING PARTY”)
in connection with HALO by the other PARTY (or, with respect to MICRO VISION,
by its AFFILIATE) (the “DISCLOSING PARTY”), including without limitation trade
secrets, algorithms, processes, formulae, programming,


 


2

















 


TECHNICAL
INFORMATION, programming concepts and methods, source code and accompanying
comments and documentation which allow understanding thereof, product
specifications and procedures of operation, and all records, models,
prototypes, other media containing or disclosing such information or data, except
any such information that (i) is already or becomes generally available to the
public free from any confidentiality obligations through no breach of any
confidentiality obligation under this AGREEMENT by the RECEIVING PARTY
(provided, however, that information shall not be deemed generally available to
the public merely because any part of that information is embodied in general
disclosures or because individual features or components, or a combination
thereof, are now or become generally available to the public), (ii) is already
known by the RECEIVING PARTY (or, with respect to MICRO VISION, by its
AFFILIATE), without any confidentiality obligation to the DISCLOSING PARTY,
prior to receipt from the DISCLOSING PARTY, (iii) is independently developed by
the RECEIVING PARTY (or, with respect to MICRO VISION, by its AFFILIATE),
without use of CONFIDENTIAL INFORMATION of the DISCLOSING PARTY, (iv) is
independently disclosed to the RECEIVING PARTY (or, with respect to MICRO
VISION, to its AFFILIATE) by a source other than the DISCLOSING PARTY which
source is under no obligation to maintain the confidentiality thereof (provided
that the RECEIVING PARTY shall not disclose any such information regardless of
the source if the RECEIVNG PARTY knows or has reason to know that such
information should be kept confidential), or (v) is required by a court or
governmental agency to be disclosed to it by the RECEIVING PARTY (or, with
respect to MICRO VISION, by its AFFILIATE) in connection with any proceeding
over which such agency or authority has jurisdiction, provided that the
RECEIVING PARTY (or, with respect to MICRO VISION, its AFFILIATE) shall use its
best efforts to obtain confidential treatment of such information by the court
or agency and shall accompany its disclosure to the court or agency with
written notice of the DISCLOSING PARTY’s proprietary rights therein.


 


2.0          Grant


 


2.1           UW hereby grants to MICRO VISION, and
MICRO VISION accepts, an exclusive license, with the right to sublicense during
the term of exclusivity, to make, use, and sell LICENSED SUBJECT MATTER in the
TERRITORY and for the FIELD OF USE.


 


2.2           The license granted above is subject
to a reserved non-exclusive license in UW and the Washington Technology Center
(a state institution headquartered on the UW Campus) to make, have made, and
use products, processes, or other subject matter covered by UW PROPRIETARY
MATTER for non-commercial research and instructional purposes in all fields of
use.


 


3.0          Sublicensing


 


3.1           During the term of exclusivity of the
license granted in this AGREEMENT, MICRO VISION shall have the right to grant
sublicenses to UW PROPRIETARY MATTER in the FIELD OF USE and for the TERRITORY
without any additional compensation due to UW beyond the compensation set forth
in Article 7 for the license granted under this AGREEMENT.


 


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3.2           Any and all sublicenses in and to UW
PROPRIETARY MATTER granted by MICRO VISION shall not be subject to prior
approval of UW.


 


3.3           MICRO VISION agrees, at the request
of UW, to forward to UW a list of any and all sublicensees pertaining to UW
PROPRIETARY MATTER.


 


4.0          TECHNICAL INFORMATION


 


4.1           UW agrees to disclose to MICRO VISION
any other TECHNICAL INFORMATION, whether confidential or non-confidential, not
obtained by UW under conditions of confidentiality to others, in UW’s
possession as of the EFFECTIVE DATE or during the term of this AGREEMENT that
in UW’s judgment is necessary or valuable to the commercial exploitation of
LICENSED SUBJECT MATTER.


 


4.2           MICRO VISION agrees to keep any
TECHNICAL INFORMATION received from UW and identified by UW as confidential
under conditions of strict secrecy and to use the same degree of care MICRO
VISION would for its own confidential TECHNICAL INFORMATION, but no less than
reasonable care, to protect UW’s confidential TECHNICAL INFORMATION from
disclosure to unauthorized third parties.


 


5.0          Diligence


 


5.1           MICRO VISION, during the term of this
AGREEMENT, shall utilize its best efforts in proceeding with the development,
manufacture, sale, and other commercial exploitation of UW PROPRIETARY MATTER,
and in creating a supply and demand for LICENSED SUBJECT MATTER.


 


6.0          INVENTIONS, Patent Prosecution and
Cost Recovery


 


6.1           MICRO VISION shall pay all reasonable
costs associated with the filing and prosecution of any UW PATENT application
which it has properly requested UW to make. MICRO VISION agrees to pay invoices
for such fees and costs submitted by UW within sixty (60) days of receipt of any
such invoice from UW.


 


6.2           MICRO VISION hereby requests UW,
pursuant to Paragraph 6.1 of this Agreement, to proceed with drafting and
filing a patent application for the HALO Display. UW hereby agrees to take
diligent efforts to file such a patent application within Six (6) months from
the EFFECTIVE DATE hereof.


 


6.3           UW, in consultation with MICRO
VISION, shall have the overall control of the selection of counsel,
preparation, filing, prosecution and maintenance, of any applications for UW
PATENTS or COPYRIGHT registrations for UW PROPRIETARY MATTERS, and examinations
thereof, of any validity, opposition or re-examination proceedings related
thereto, and of the settlement or disposition of all matters related thereto
(including the renewal, defense or assertion thereof); UW shall have no
liability or obligation to MICRO VISION with respect to its exercise of
discretion or handling of such matters, except to make such reports and respond
to MICRO VISION’S comments or requests, as may be appropriate. UW and Micro
Vision agree to meet and confer prior


 


4

















 


to the
selection of any invention disclosure, filing of new patents or other material
patenting decisions.


 


6.4           UW shall keep MICRO
VISION informed of the status of any and all UW PATENTS and UW PATENT
applications comprising UW’S PATENTS, and shall provide MICRO VISION with the
opportunity to advise UW on courses of action respecting the filing of UW
PATENT applications relating to the UW INVENTION, prosecution of UW PATENT
applications, and management of UW PATENTS.


 


6.5           In the event that MICRO
VISION determines that it does not desire to reimburse UW, or fails for any
reason to reimburse UW for UW PATENT fees incurred under Paragraph 6.1 above,
it will promptly notify UW of its decision and UW shall thereafter have the
sole and exclusive right to file and/or maintain any such UW PATENT and/or UW
PATENT application, either foreign or domestic, at its own expense; and, any UW
PATENT issued or issuing therefrom shall not be included among THE LICENSED
SUBJECT MATTER. MICRO VISION and UW agree to cooperate in filing UW PATENT
applications in UW’s name on any such UW INVENTION and/or improvement where
MICRO VISION declines to proceed in its own name and at its own expense.


 


7.0        Licensing Fees


 


7.1           In consideration for the grant of
this License, MICRO VISION agrees to pay to UW a non-refundable license issue
fee of Twenty Five Thousand Dollars ($25,000) due and payable as of the
EFFECTIVE DATE.


 


7.2           In further consideration for the
grant of this License, MICRO VISION agrees to pay the following non-refundable
payments of cash and equity in MICRO VISION, based upon patent milestone dates
of the items recited below:


 


a.            On filing a, or, if
there is more than one, on filing the first HALO Display patent application,
MICRO VISION agrees to pay to UW Seventy Five Thousand Dollars ($75,000) and
grant equity to UW of One Hundred Thousand (100,000) shares of stock in MICRO
VISION. MICRO VISION’S obligation under this Paragraph 7.2 (a) extends only to
the first such HALO Display patent application to be filed, even though
multiple applications may be filed. MICRO VISION agrees to issue the stock in
the name of UW and in the name of the inventor of HALO as follows:


 


	
  UW

  	
   

  	
  Twenty Thousand Shares (20,000)

  
	
  Thomas A. Furness III

  	
   

  	
  Eighty Thousand Shares (80,000)

  



 


b.           On issuance of a, or,
if there is more than, the first to issue HALO Display patent application,
MICRO VISION agrees to pay One Hundred Thousand Dollars ($100,000) and grant equity
of Two Hundred Thousand shares of stock in MICRO VISION. MICRO VISION’S
obligation under this Paragraph 7.2 (b) extends only to the first such HALO
Display patent application to be issued, even though multiple applications may
be issued. MICRO VISION agrees to issue the stock in the name of UW and in the
name of the inventor of HALO as follows:


 


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  UW

  	
   

  	
  Forty Thousand Shares (40,000)

  
	
  Thomas A. Furness III

  	
   

  	
  One Hundred Sixty Thousand Shares (160,000)

  



 


7.3           All payments required under this
AGREEMENT shall be made in U.S. dollars by check or money order payable to the
University of Washington, and delivered to UW as specified in this AGREEMENT;
or, if so directed in writing by UW, in such currency, form, and to such
account as UW may designate.


 


8.0        Term and Termination of Exclusivity


 


8.1           The term for the exclusive license to
UW PROPRIETARY MATTER shall extend from the EFFECTIVE DATE of this AGREEMENT to
thirty (30) days written notice by UW for cause. Cause shall only exist if
MICRO VISION fails to pay licensing fees identified in Paragraph 7 above or
fails to reimburse for patent prosecution costs as identified in Paragraph 6
above. UW’s option to terminate exclusivity shall be in addition to any and all
other legal remedies which UW may have for the enforcement of any and all terms
hereof, and does not in any way limit any other legal remedy UW may have.


 


8.2           Upon expiration or
termination of exclusivity:


 


a)                                      the
license granted herein shall become non-exclusive and shall remain in effect
for the duration of this AGREEMENT;


 


b)                                     MICRO
VISION shall have no further right to grant sublicenses;


 


c)                                      MICRO
VISION shall no longer have first right to bring suit for infringement of UW
PROPRIETARY MATTER; and


 


d)                                     MICRO
VISION shall have no further obligation to reimburse UW for any fees or costs
incurred by UW after expiration or termination of exclusivity and related to UW
PROPRIETARY MATTER .


 


9.0          Term and Termination of AGREEMENT


 


9.1           The term of this AGREEMENT shall
commence on the EFFECTIVE DATE and shall continue until the last of UW
PROPRIETARY MATTER expires, unless sooner terminated in accordance with the
provisions set forth in this AGREEMENT.


 


9.2           Upon failure of UW or MICRO VISION to
cure a material breach of this AGREEMENT within thirty (30) days after a
written demand for performance, the notifying PARTY shall have the right at any
time to terminate this AGREEMENT by written notice to the other PARTY.


 


9.3           MICRO VISION shall have a right to
terminate this AGREEMENT with or without cause, upon ninety (90) days prior
written notice to UW.


 


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9.4           In the event that no UW PATENTS
covering LICENSED SUBJECT MATTER have been filed within Five (5) years from the
EFFECTIVE DATE, or, if filed, that no UW PATENTS remain pending in or issued
from any country’s patent office, then following Five Years from the EFFECTIVE
DATE either PARTY may terminate this AGREEMENT following ninety (90) days
written notice of such intent to terminate to the other PARTY.


 


9.5           The provisions under which this
AGREEMENT may be terminated shall be in addition to any and all other legal
remedies which either PARTY may have for the enforcement of any and all terms
hereof, and do not in any way limit any other legal remedy such PARTY may have.


 


9.6           Termination of this AGREEMENT shall
terminate all rights and licenses granted to MICRO VISION relating to UW
PROPRIETARY MATTER.


 


9.7           Termination by UW or MICRO VISION
under the options set forth in this AGREEMENT shall not relieve MICRO VISION
from any financial obligation to UW accruing prior to or after termination or
from performing according to any and all other provisions of this AGREEMENT
expressly agreed to survive termination.


 


9.8           In the event that there remain no
valid, enforceable, and infringed UW PROPRIETARY MATTER covering LICENSED
SUBJECT MATTER, then following termination MICRO VISION and any sublicensees
shall have no further obligation to pay royalties thereon or to account to UW
therefore.


 


10.0        Notices


 


10.1         Any notice or other communication
required or permitted to be given by either PARTY hereto shall be deemed to
have been properly given and be effective upon the date of delivery if
delivered in writing to the respective addresses set forth below, or to such
other address as either PARTY shall designate by written notice given to the
other PARTY. If notice or other communication is given by facsimile
transmission, said notice shall be confirmed by prompt delivery of the hardcopy
original.


 


Address
and Telephone:


 


7

















 


	
  For
  UW

  	
  For
  MICRO VISION, INC.

  
	
   

  	
   

  
	
  For
  Confidentiality, Patenting or Licensing Matters:

  	
  MICRO VISION,
  Inc.

  
	
  The University
  of Washington

  	
  6500 Columbia
  Center

  
	
  Office of
  Technology Transfer

  	
  701 Fifth Avenue

  
	
  Mail Stop JD-50

  	
  Seattle, WA  98104-7003

  
	
  Seattle, WA  98195

  	
   

  
	
   

  	
  (206) 587-3780

  
	
  Physical
  Address:

  	
   

  
	
  1107 N.E. 45th
  Street N.E.

  	
  Attn:  Mr. David Hunter, Executive Vice President

  
	
  Suite 200

  	
   

  
	
  Seattle, WA  98105

  	
  w/copy Mr. James
  Biagi

  
	
   

  	
  Monahan &
  Robinson, P.S.

  
	
  For
  Technical Matters:

  	
  6500 Columbia
  Center

  
	
  The Human
  Interface Technology Laboratory

  	
  701 Fifth Avenue

  
	
  Washington
  Technology Center

  	
  Seattle, WA  98104-7003

  
	
  Mail Stop FJ-15

  	
  (206) 587-5700

  
	
  Seattle, WA  98195

  	
   

  



 


11.0        Patent Marketing


 


11.1         MICRO VISION shall mark, and shall
require any sublicensee to mark, any and all material forms of LICENSED SUBJECT
MATTER or packaging pertaining thereto made and sold by MICRO VISION (and/or by
its sublicensees) with an appropriate patent marking identifying the pendency
of any U.S. patent application and/or any issued U.S. or foreign patent forming
any part of UW PROPRIETARY MATTER.


 


12.0        Patent Infringement


 


12.1         Each PARTY shall promptly inform the
other PARTY of any alleged infringement of UW PROPRIETARY MATTER by a third
party, and provide any available evidence thereof.


 


12.2         Subject to Paragraph 12.6 below, during
the term of exclusivity of the license granted hereunder, MICRO VISION shall
have the first right to settle any alleged infringement of UW PROPRIETARY
MATTER by securing cessation of the infringement, instituting suit against the
infringer, or entering into a sublicensing agreement in and to relevant UW
PATENTS in UW PROPRIETARY MATTER. To enjoy said first right, MICRO VISION must
initiate bona fide action to settle any alleged infringement within ninety (90)
days of learning of said infringement. After MICRO VISION has recovered its
reasonable attorney’s fees and other expenses directly related to any action,
suit, or settlement for infringement of UW PROPRIETARY MATTER, UW and MICRO
VISION shall divide any remaining damages, awards, or settlement proceeds in
the following manner:


 


	
  UW

  	
   

  	
  Forty percent (40%)

  
	
  MICRO VISION

  	
   

  	
  Sixty percent (60%)

  



 


8

















 


provided,
however, any payment by an alleged infringer as consideration for the grant of
a sublicense shall be handled according to the royalty provisions for
sublicense set forth in this AGREEMENT.


 


12.3         If MICRO VISION chooses to institute
suit against an alleged infringer during the term of exclusivity as provided in
this AGREEMENT, MICRO VISION may do so in UW’s name (if required by law,
otherwise, in MICRO VISION’S name) but at MICRO VISION’S sole expense, and UW
shall, but at MICRO VISION’S expense for UW’s direct associated expenses, fully
and promptly cooperate and assist MICRO VISION in connection with any such
suit. Any and all damages, awards, or settlement proceeds arising from such a
MICRO VISION-initiated action shall be MICRO VISION’S.


 


12.4         If MICRO VISION fails, within ninety
(90) days of learning of an alleged infringement, to secure cessation of the
infringement, institute suit against the infringer, or provide to UW
satisfactory evidence that MICRO VISION is engaged in bona fide negotiation for
the acceptance by infringer of a sublicense in and to relevant UW PATENTS in UW
PROPRIETARY MATTER, UW upon written notice to MICRO VISION may assume full
right and responsibility to secure cessation of the infringement, institute
suit against the infringer, or secure acceptance of a sublicense from MICRO
VISION in and to relevant UW PATENTS in UW PROPRIETARY MATTER, approval for
which sublicense MICRO VISION shall not unreasonably withhold.


 


12.5         If UW in accordance with the terms and
conditions of this AGREEMENT chooses to institute suit against an alleged
infringer, UW may bring such suit in its own name (or, if required by law, in
its and MICRO VISION’s name) and at its own expense, and MICRO VISION shall,
but at UW’s expense for MICRO VISION’S direct associated expenses, fully and
promptly cooperate and assist UW in connection with any such suit. Any and all
damages, awards, or settlement proceeds arising from such a UW-initiated action
shall be UW’s.


 


12.6         Neither MICRO VISION nor UW is
obligated under this AGREEMENT to institute a suit against an alleged infringer
of UW PROPRIETARY MATTER.


 


12.7         Prior to making a claim of infringement
or commencing any litigation regarding infringement as provided for in this
Article, MICRO VISION shall obtain prior approval of UW, and such approval of
UW shall not be unreasonably withheld. Prior to settling a claim of
infringement or settling any litigation regarding infringement as provided for
in this Article, MICRO VISION shall obtain prior approval of UW, and such
approval of UW shall not be unreasonably withheld.


 


13.0        Patent Validity


 


13.1         If any claim challenging the validity
or enforceability of any of LICENSED SUBJECT MATTER shall be brought against
MICRO VISION, MICRO VISION shall promptly notify UW. UW, at its option, shall
have the right, within thirty (30) days after notification by MICRO VISION of
such action, to intervene and take over the sole defense of the claim at UW’s
expense.


 


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13.2         If MICRO VISION challenges the validity
or enforceability of any of UW PATENTS, MICRO VISION agrees not to suspend any
payments due UW until such time as that UW PATENT is determined to be invalid
or unenforceable by final judgment of a court of competent jurisdiction from
which no appeal can be or is taken.


 


14.0        Use of Names


 


14.1         UW and MICRO VISION each agree that
they will not use the name, trademark, or other identifier of the other for any
advertising, promotion, publicity or commercially related purposes except;


 


a)                                      with
advance written approval of the other PARTY;


 


b)                                     to
the extent required by UW Boards, UW Committees, UW policies and procedures or
by law, UW may indicate that this AGREEMENT exists, may disclose the terms of
the AGREEMENT and may use the names The University of Washington, or MICRO
VISION solely to describe the relationship between the UW and MICRO VISION
established by this AGREEMENT; or


 


c)                                      to
the extent required by law and in a form previously approved in writing by the
UW, MICRO VISION may indicate in any investment offering (public or private),
including but not limited to sub-licensing, co-development, etc. circulated by
MICRO VISION that this AGREEMENT exists, may disclose the terms of this
AGREEMENT, and may use the names the University of Washington solely to
describe the relationship between the UW and MICRO VISION established by this
AGREEMENT.


 


14.2         UW and MICRO VISION each agree that
they will not use the name, trademark, or other identifier of the other for any
advertising, promotion, or other commercially related purpose except as
provided for above or except upon advance written notice and approval to the
other PARTY.


 


15.0        Representations and Warranties


 


15.1         UW represents and warrants that it has
the right to grant the license in and to UW PATENTS and disclose the TECHNICAL
INFORMATION set forth in this AGREEMENT.


 


15.2         UW represents that Ms. Margaret Wagner
Dahl is authorized to sign this AGREEMENT on behalf of UW.


 


15.3         MICRO VISION represents that Mr. David
Hunter and Mr. Caisey Harlingten are authorized to sign THIS AGREEMENT on
behalf of MICRO VISION.


 


15.4         Nothing in this AGREEMENT shall be
construed as


 


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a)                                       A
representation or warranty by UW as to the patentability, validity, scope, or
usefulness of any of UW’s PROPRIETARY MATTER; or


 


b)                                     A
representation or warranty by UW that anything made, used, sold, or otherwise
disposed of under any license granted in this AGREEMENT is or will be free from
infringement of patents or other proprietary rights of third parties;


 


c)                                      an
obligation to bring or prosecute actions or suits against third parties for
infringement.


 


15.5         MICRO VISION represents that it is a
company formed to further develop the HALO Display into a commercially viable
product, and that it is and will take good faith efforts towards that end.
MICRO VISION understands UW’s concerns regarding the competitive atmosphere for
products having applications similar to those of the HALO Display, and agrees with
UW’s concerns regarding the potential for a licensee to “buy out” the rights of
a licensor in order to keep a product OFF the market to thereby benefit
anothers’ product. To this end, MICRO VISION specifically represents and
warrants that at no time will it take actions intended to defeat, delay,
suspend, or otherwise prevent the HALO Display from attaining commercial
viability as soon as reasonably possible.


 


15.6         Except as expressly set forth in this
AGREEMENT, UW MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND,
EITHER EXPRESS OR IMPLIED. THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF ANY UW
PROPRIETARY MATTER OR ANY LICENSED SUBJECT MATTER WILL NOT INFRINGE ANY PATENT,
COPYRIGHT, TRADEMARK, OR OTHER RIGHTS. UW MAKES NO REPRESENTATIONS AS TO THE
USEFULNESS OF UW INVENTION(S): IF MICRO VISION CHOOSES TO EXPLOIT IT IN ANY
MANNER WHATSOEVER, MICRO VISION DOES SO AT ITS OWN RISK.


 


16.0        Indemnification


 


16.1         The PARTIES mutually agree to
indemnify, hold harmless and defend the other’s officers, inventors, employees,
students, and agents, against any and all claims, suits, losses, damages,
costs, fees and expenses resulting from or arising out of exercise of this
AGREEMENT including, but not limited to, any damages, losses or liabilities
whatsoever with respect to death or injury to any person and damage to any
property arising from the possession, use, or operation o£ LICENSED SUBJECT
MATTER by MICRO VISION or its sub-licensees or any customers, users, or others
affected by LICENSED SUBJECT MATTER in any manner whatsoever. This
indemnification clause shall survive the termination of this AGREEMENT.


 


17.0        Applicable Laws


 


17.1         MICRO VISION agrees to abide by all
applicable federal, state, and local laws and regulations pertaining to the
management and commercial deployment of LICENSED SUBJECT MATTER under this
AGREEMENT.


 


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17.2         MICRO VISION understands that UW is
subject to United States laws and federal regulations, including the export of
technical data, computer software, laboratory prototypes and other commodities
(including the Arms Export Control Act, as amended, and the Export
Administration Act of 1979), and that UW’s obligations hereunder are contingent
upon compliance with applicable United States laws and regulations, including
those for export control. The transfer of certain TECHNICAL INFORMATION and
LICENSED SUBJECT MATTER may require a license from a cognizant agency of the
United States Government and/or written assurances by MICRO VISION that MICRO
VISION shall not transfer data or commodities to certain foreign countries
without prior approval of an appropriate agency of the United States
Government. UW neither represents that an export license shall not be required,
nor that, if required, it shall be issued.


 


17.3         The rights and obligations of the
PARTIES under this AGREEMENT shall be governed by and construed in accordance
with the laws of the State of Washington, and, at the option of UW, venue of
the legal or equitable action shall lie in King County, the State of
Washington. MICRO VISION hereby accepts the venue and jurisdiction of the
Federal District Court of Western Washington or King County Superior Court located
in Seattle, Washington, at UW’s option.


 


18.0        Resolution of Disputes


 


18.1         MICRO VISION and UW agree that, in the
event of a dispute between them arising from, concerning, or in any way related
to this AGREEMENT, the PARTIES shall undertake good faith efforts to resolve
the matter amicably between themselves.


 


18.2         In the event an action is commenced to
enforce a PARTY’S rights under this AGREEMENT, the prevailing PARTY in such
action shall be entitled to recover its reasonable costs and attorney’s fees.


 


19.0        General


 


19.1         If any provision of this AGREEMENT
shall be held to be invalid, illegal or unenforceable, the validity, legality
and enforceability of the remaining provisions shall not be in any way affected
or impaired thereby.


 


19.2         No provision of this AGREEMENT shall be
deemed to have been waived by any act of or acquiescence on the part of either
PARTY. A waiver may only occur in writing signed by an authorized
representative of the PARTY waiving the particular provision involved. No
waiver of any provision of this AGREEMENT shall constitute waiver of any other
provision or of the same provision on any other occasion.


 


19.3         No amendment or modification hereof
shall be valid or binding upon the parties unless it is made in writing, cites
this AGREEMENT, and signed by duly authorized representatives of UW and MICRO
VISION.


 


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19.4         This AGREEMENT constitutes the entire
agreement between the PARTIES and, supersedes all previous representations, understandings,
or agreements, oral or written, between the PARTIES with respect to the subject
matter hereof. The headings in this AGREEMENT are intended solely for
convenience of reference and shall be given no effect in the construction or
interpretation of this AGREEMENT.


 


19.5         The PARTIES agree that the relationship
between the PARTIES established by this AGREEMENT does not constitute a
partnership, joint venture, agency, or a contract of employment between them.


 


19.6         Neither PARTY may transfer or assign
its rights or obligation under this AGREEMENT, except as provided herein or
with the written consent of the other PARTY. This AGREEMENT shall inure to the
benefit of and be binding upon each of the PARTIES hereto and their respective
permitted successors and assigns.


 


IN
WITNESS WHEREOF, UW and MICRO VISION have executed this AGREEMENT, in duplicate
originals but collectively evidencing only a single contract, by their
respective duly authorized officers, on the dates hereinafter written.


 


	
  For
  MICRO VISION, INC.

  	
  The
  University of Washington  

  
	
   

  	
   

  
	
  By:

  	
  /s/ David Hunter

  	
   

  	
  By:

  	
  /s/ Margaret Wagner Dahl

  	
   

  
	
  Name: 

  	
  David Hunter

  	
   

  	
  Name:

  	
  Margaret Wagner Dahl

  	
   

  
	
  Title:

  	
  Executive Vice President

  	
  Title: 

  	
  Acting Director, Office of 

  Technology Transfer  

  
	
   

  	
   

  	
   

  	
   

  
	
  Date:

  	
   

  	
   

  	
  Date:

  	
  3/3/94

  	
   

  
	
   

  	
   

  
	
  By:

  	
  /s/ Caisey Harlington

  	
   

  	
   

  	
   

  	
   

  
	
  Name:

  	
  Caisey Harlingten

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
  Executive Vice President and

  Secretary, Treasurer

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  
	
  Date:

  	
   

  	
   

  	
   

  	
   

  	
   

  



 


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