Liquidmetal Technologies Inc (LQMT)

[Liquid_Observer]

They may not of co signed on "commercialize" but they did cosign Annex 9 which I still feel is one of the most important parts of the MTA

For those of you who only read the top of the MTA I recommend you read this in detail.


ANNEX 9

Technology Development Agreement

APPLE CONFIDENTIAL

APPLE – LMT TECHNOLOGY DEVELOPMENT AGREEMENT

This Technology Development Agreement (the "Agreement") is made effective as of the Closing Date, as defined in the Master Transaction Agreement, by and between Apple Inc., a California corporation having its principal place of business at 1 Infinite Loop, Cupertino, California 95014, United States ("Apple"), and Liquidmetals Technology, Inc. ("LMT"), a Delaware corporation having its principal place of business at 30452 Esperanza, Rancho Santa Margarita, CA 92688 ("Company"). This Agreement is being entered into pursuant to that certain Master Transaction Agreement of even date herewith between the parties hereto (the "MTA"), and any capitalized terms not otherwise defined in this Agreement shall have the meanings ascribed thereto in the MTA.

1)
Scope and Standards of Work.


a)
Company shall provide, at no additional cost to Apple, technical assistance reasonably requested by Apple to effect i) the transfer by LMT of the non-patent LMT Technology and ii) the granting of the Exclusive License and License by LMT-SPE to Apple, for a 90-day period following the Closing Date ("the Initial Support Period"). Such technical assistance will be provided with LMT's existing staff and resources, and LMT will not be required to hire or engage additional personnel in order to provide such technical assistance.


b)
Company shall provide, at no additional cost to Apple, any technology development services specified in Statements of Work under this Agreement, agreed to by Apple and the Company prior to the Closing Date (the "Pre-Closing Statements of Work" or "Pre-Closing SOWs")


c)
Company shall provide, after the Initial Support Period, technical assistance and consultation to Apple as described in, and in accordance with the time tables set forth in, Statements of Work under this Agreement (the "Post-Closing Statements of Work" or "Post-Closing SOWs").


d)
The technical assistance defined in (a), the technology development services defined in (b), and technical assistance and consultation defined in (c) shall be referred to collectively as the "Services". The Pre-Closing SOWs and the Post-Closing SOWs shall be referred to collectively as the "Statements of Work" or "SOWs".


e)
Company shall conduct all Services in accordance with all applicable Apple and generally accepted standards for Services of the type to be performed, as may be more fully provided in the Statements of Work (the "Applicable Standards"). Company shall at all times be responsible to remain current and updated as to all changes in the Applicable Standards.


1


APPLE CONFIDENTIAL


f)
Apple may request reasonable changes to the Statement of Works prior to completion. No such proposed changes, including without limitation any associated changes in the price, payment schedules, and projected completion dates, shall be effective unless accepted in writing by authorized representatives of both Company and Apple.


g)
Company warrants that its employees, agents, and approved subcontractors, if any, involved in performance of the Services shall have the experience and expertise necessary to perform such Services and will at all times be bound by appropriate agreements to vest in Company all of their right, title and interest in any Project Work Product (as defined below) or inventions, data, improvements, discoveries, ideas, processes, formulas, techniques, works of authorship, and know-how that are to be property of Apple or otherwise protected pursuant to Sections 3, 5 and 6 below.


h)
Company represents and warrants that Company is not under any obligation in conflict or in any way inconsistent with the provisions of this Agreement or its provision of the Services. Company represents and warrants that Company's performance of the Services and this Agreement will not breach any agreement to keep in confidence proprietary information acquired by Company in confidence or in trust. Company warrants that it shall not, in the performance of any Services or in preparing to do so, violate any applicable law or infringe or misappropriate any intellectual properties of any third party, except to the extent due directly to Company's following instructions given to it by Apple.


i)
Company agrees to notify Apple promptly if Company knows or has reason to believe that the Statements of Work or any instructions from Apple would, if followed by Company, violate any applicable law or infringe or misappropriate any intellectual properties of any third party or be inconsistent with the Applicable Standards.

2)
Apple Materials. Apple shall provide items and materials as specified in the SOWs (the "Project Materials"). Company agrees that all such Project Material shall be and remain the sole and exclusive property of Apple. Project Material provided by Apple will be used by Company only for the purpose described in the Statements of Work and will not be transferred to any third party without first obtaining written authorization from Apple in each instance. Company agrees that it shall not, without Apple's express prior written authorization in each instance, analyze, disassemble, decompile, or otherwise reverse engineer any Apple Materials, except to the extent the Statements of Work explicitly directs Company to do so. Upon completion of the Services, any unused Project Material will be returned to Apple or destroyed at the sole discretion of Apple.


2


APPLE CONFIDENTIAL

3)
Communication, Visits, Results, and Reports.


a)
All results, reports, findings, conclusions, work papers, notebooks, electronic records, samples, prototypes, deliverables, and any other information or materials in any form or format arising out of performance of the Services by or for Company (the "Project Work Product") will be the sole property of Apple and shall become part of the Confidential Information to be protected under this Agreement. Company will retain and preserve all Project Work Product in accordance with the Applicable Standards and as set forth in the Statement of Work. No Project Work Product will be destroyed or otherwise disposed of by Company without authorization in writing in advance from Apple in each instance. Company shall, upon Apple's request from time to time, promptly deliver any and all Project Work Product and any work-in-process to Apple.


b)
Company shall prepare and provide one or more draft and final report(s) at the intervals, and upon completion of the Services, as more fully described in the Statements of Work. All reports shall be formatted and delivered to Apple in accordance with the Statements of Work.


c)
Apple will be solely responsible, at its discretion in accordance with applicable law, for any reporting to appropriate government agencies any Project Work Product generated during performance of the Services.


d)
Company shall permit Apple's representatives to visit Company facilities during normal working hours and with reasonable frequency to perform quality assurance audits, observe progress of the Services, to discuss the Services with appropriate officials and other personnel of Company, and to inspect records and data relevant to the Services. Facility visits shall also be permitted during the data retention period specified in the Statements of Work.

4)
Compensation for Post-Closing SOWs. Apple will, in accordance with the payment and milestone schedules set forth in the Post-Closing SOWs (the "Fees and Payment Schedule"), and as complete compensation to Company, pay Company the fees set forth in the Fees and Payment Schedule. Company will be reimbursed only for expenses which are expressly provided for in the Fees and Payment Schedule or which have been approved in advance in writing by an authorized Apple representative. Expense reimbursements will be made within forty-five (45) days of receipt of Company's invoice, provided Company has furnished such documentation for authorized expenses as Apple may reasonably request. Otherwise, and except for the Apple Materials, if any, Company shall supply without separate charge all facilities, utilities, equipment, supplies, personnel, information, rights, and other items required for the timely performance by Company of the Services.

5)
Confidentiality. The disclosure and use of all confidential information pursuant to this Agreement, including, but not limited to, this Agreement, the Project Materials, any technical information provided by the Company, and all Project Work Product, shall be subject to the terms of the Parties' existing Confidentiality Agreement, dated April 30, 2010, the terms of which are incorporated by reference herein.


3


APPLE CONFIDENTIAL

6)
Intellectual Properties.


a)
No right or license to Apple's intellectual property is granted or implied as a result of this Agreement or the Services, except to the limited extent necessary to conduct the Services during the term hereof. The transfer of Project Material provided herein does not constitute a public disclosure.


b)
All right, title and interest in all Project Work Product and any and all inventions, data, improvements, discoveries, ideas, processes, formulas, techniques, works of authorship, and know-how, whether patentable or not, conceived, reduced to practice, authored, or otherwise created or developed by or for Company in the course of performing any Services or otherwise arising therefrom, and all intellectual property covering such inventions including without limitation rights to patents, patent applications, patents, and copyrights ("Project IP"), shall be the property of Apple, and Company hereby transfers and assigns the same to Apple. Company shall communicate to Apple any of the same promptly and fully upon their creation or development. Company shall execute all papers and take all actions that Apple reasonably deems necessary or advisable for the filing and prosecution of patent applications or copyright or other registrations and, if appropriate, maintenance of patents or other rights or properties that may issue therefrom, including without limitation execution of any assignments or other agreements further evidencing Apple's ownership thereof. Inventorship shall be determined under principles of U.S. patent law and practice. If Company uses in the Services or incorporates or causes to be incorporated into any Project Work Product any inventions, works of authorship, developments, improvements, data, materials, or trade secrets owned or controlled by Company, or to the extent that any inventions, works of authorship, developments, improvements, data, materials, or trade secrets owned or controlled by Company are required for any use or exploitation by Apple of the Project Work Product, Company hereby grants to Apple a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license, with the right to grant sublicenses, to make, have made, copy, modify, make derivative works of, display, perform, publish, use, sell, offer for sale, import and otherwise exploit such inventions, works of authorship, developments, improvements, data, materials, and trade secrets in connection with the Project Work Product or any improvements, derivatives, or successors to them.


c)
Apple hereby grants to Company a nonexclusive, royalty-free, irrevocable, perpetual, worldwide license under the Project Work Product and Project IP, with the right to grant sublicenses, to make, have made, copy, modify, make derivative works of, display, perform, publish, use, sell, offer for sale, import and otherwise exploit such inventions, works of authorship, developments, improvements, data, materials, and trade secrets in connection with the Project Work Product or Project IP, or any improvements, derivatives, or successors to them, solely for use outside of Apple's exclusive license field of Consumer Electronic Products.


4


APPLE CONFIDENTIAL

7)
Indemnification. Company shall defend, indemnify and hold Apple harmless in accordance with the provisions of the MTA.

8)
Term and Termination. This Agreement shall have a term of three (3) years from the Closing Date. This Agreement may be renewed, at Apple's sole option, for successive one-year terms. Apple may at any time terminate this Agreement upon written notice to Company. In event of termination by Apple following initiation of substantial work by Company under the Post-Closing Statements of Work, the amounts payable to Company will be prorated based on actual work performed and costs incurred prior to the date of Apple's notice of termination, plus any unavoidable costs associated with termination of the Services, all such costs to be detailed in a final invoice delivered to Apple within sixty (60) days after termination of the Agreement. In no event shall any such post-termination payment exceed the next installment of the fees and expenses provided for in the Fees and Payment Schedule. Upon termination Company shall return to Apple all Apple Materials in its possession, together with completed or partially completed reports, data and samples, except for copies maintained for archival purposes to the extent permitted under the Statements of Work. The provisions of Sections 1(d), 1(e), 1(f), 1(g), 2, 3(a), 4, 5, 6, 7, 8, 9 and 10 of this Agreement shall survive the expiration or termination of this Agreement.

9)
Miscellaneous.


a)
All notices from one party to the other required or permitted under this Agreement shall be in writing, shall refer specifically to this Agreement, and shall be delivered in person, or sent by electronic or facsimile transmission for which a confirmation of delivery is obtained, or sent by registered mail or express courier services providing evidence of delivery, in each case to the recipient party's respective address set forth on the signature page hereof (or to such updated address as may be specified in writing to the other party from time to time). Such notices will be deemed effective as of the date so delivered or on the third business day following mailing.


b)
Apple has entered into this Agreement based on Company's particular proffered expertise. Company shall not assign, transfer, subcontract or otherwise delegate any of its obligations under this Agreement without Apple's prior written consent in each instance. Any attempted assignment, transfer, subcontracting or other delegation without such consent shall be void and shall constitute a breach of this Agreement. Subject to the foregoing, this Agreement shall inure to the benefit of the parties' successors and assigns.


c)
Company acknowledges that any breach of this Agreement by it may cause irreparable harm to Apple or its affiliates and that the remedies for breach may include injunctive relief against such breach, in addition to damages and other available remedies. The prevailing party shall be entitled to the award of its reasonable attorneys' fees in any action to enforce this Agreement.


5


APPLE CONFIDENTIAL


d)
This Agreement, including any SOWs and the Confidentiality Agreement referenced herein, constitutes the entire agreement between the parties relating to the subject matter hereof and supersedes and cancels all other prior agreements and understandings of the parties in connection with subject matter. The headings or titles in this Agreement are for purposes of reference only and shall not in any way affect the interpretation or construction of this Agreement.


e)
No waiver of any of the provisions of this Agreement shall be valid unless in a written document, signed by the party against whom such a waiver is sought to be enforced, nor shall failure to enforce any right hereunder constitute a continuing waiver of the same or a waiver of any other right hereunder. All amendments of this Agreement shall be made in writing and signed by both parties, and no oral amendment shall be binding on the parties.


f)
This Agreement shall be governed by and construed in accordance with the laws of the State of California without giving effect to any conflict of laws principles to the contrary. The parties hereby consent to jurisdiction and venue in the appropriate state and Federal courts sitting in the Northern District of California in any litigation between them arising out of this Agreement. If any provision of this Agreement is held to be invalid or unenforceable to any extent in any context, it shall nevertheless be enforced to the fullest extent allowed by law in that and other contexts, and the validity and force of the remainder of this Agreement shall not be affected thereby.


g)
In the event of a dispute, either party may commence litigation in the state or federal courts in Santa Clara County, California. The Parties irrevocably submit to the exclusive jurisdiction of those courts and agree that final judgment in any action or proceeding brought in such courts will be conclusive and may be enforced in any other jurisdiction upon final and conclusive judgment (a certified copy of which will be conclusive evidence of the judgment) or in any other manner provided by law. Each party irrevocably waives to the fullest extent permitted by applicable law (i) any objection it may have to the laying of venue in any court referred to above; (ii) any claim that any such action or proceeding has been brought in an inconvenient forum; and (iii) any immunity that it or its assets may have from any suit, execution, attachment (whether provisional or final, in aid of execution, before judgment or otherwise) or other legal process.


h)
Neither Apple nor Company will issue press releases or other publicity regarding the Agreement or its subject matter without the prior written approval of the other

IN WITNESS WHEREOF, the parties have executed this Development Agreement as of the effective date shown above. Each of the persons signing this Agreement affirms that he or she is duly authorized to do so and thereby to bind the indicated entity. This Agreement may be executed simultaneously 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.


6

http://contracts.onecle.com/liquidmetal/apple-transaction-2010-08-05.shtml