EX-10.19 5 a76407ex10-19.txt EXHIBIT 10.19 EXECUTION VERSION EXHIBIT 10.19 LICENSE AGREEMENT THIS LICENSE AGREEMENT is made to be effective as of this 31st day of August 2001 (the "Effective Date"), by and between SMARTIRE SYSTEMS INC., a British Columbia corporation having its principal place of business at 13151 Vanier Place, Suite 150, Richmond, British Columbia, Canada V6V 2J1 ("SmarTire"), and TRW INC., a corporation existing under the laws of the State of Ohio, United States of America, acting for and on behalf of its Automotive Electronics operation in the U.S., having a place of business at 24175 Research Drive, Farmington Hills, Michigan, United States of America 48335-2642 ("TRW"). WHEREAS, the parties have been cooperating in the development and marketing of tire pressure monitoring systems pursuant to certain agreements including a License Agreement, Technical Cooperation Agreement, and Supply Agreement, all dated as of 20 April 1998 and amended (in the case of the License Agreement and Technical Cooperation Agreement) via an Assignment and Amending Agreement dated as of 13 December 2000, and a Mutual Secrecy Agreement dated as of 6 January 1998 and amended in a First Amendment dated 18 February 1998; WHEREAS, through their respective activities in the area of tire pressure monitoring systems, the parties now each own respective intellectual property that is useful in connection with the design and manufacture of tire pressure monitoring systems; WHEREAS, pursuant to a Termination Agreement of even date herewith, the parties are terminating the existing cooperation and the agreements associated therewith; and, WHEREAS, each party wishes to receive from the other party a license to use such other party's intellectual property in the manufacture and sale of tire pressure monitoring systems subsequent to the termination of the existing cooperation; NOW, THEREFORE, in view of the foregoing premises and in consideration of the mutual promises and covenants contained in this and the related termination agreements, SmarTire and TRW agree as follows: Article 1 Definitions The following words and phrases will have the meanings set forth below where used herein with initial capital letters: 1.1 Affiliate: Any corporation, partnership, or other business entity in which SmarTire or TRW owns or controls more than fifty percent (50%) of the voting stock or otherwise has more than fifty percent (50%) of the right to control the entity. 1.2 Licensed Products: Tire pressure monitoring systems and components of such systems, including but not limited to tire pressure transmitters and receivers. -Page 1- 1.3 SmarTire Patents: All utility patents, design patents, utility models, or applications for patents or utility models that (a) were originally filed before the Effective Date or, although filed after the Effective Date, are directed to inventions made before the Effective Date, and (b) have a claim covering Licensed Products, components of Licensed Products, or methods of making or using same, and (c) SmarTire has the right, whether by reason of ownership of the patent, utility model or application or otherwise, to grant licenses to TRW on the Effective Date. The term "SmarTire Patents" does not include any patents under which SmarTire acquired rights from Transense Technologies plc. or from SensoNor asa, but does include patents filed on inventions developed and owned by Affiliates of SmarTire. The term "SmarTire Patents" includes, without limitation, the publicly known patents and pending patent applications listed on Attachment 1 hereto. 1.4 Other Definitions and Meanings: For purposes of this Agreement, (a) the term "person" includes any natural person, firm, association, partnership, corporation, or other entity and (b) the words "hereof", "herein", "hereby" and other words of similar import refer to this Agreement as a whole. Article 2 Licensed Rights 2.1 Grant: SmarTire hereby grants to TRW the perpetual, royalty-free, non-exclusive, worldwide right under the SmarTire Patents to make, have made, import, use, and sell Licensed Products. 2.2 Sublicenses: TRW may grant to its Affiliates sublicenses under the rights granted herein. 2.3 Patents owned by SmarTire Affiliates: If any of the SmarTire Patents are owned by any SmarTire Affiliate, then SmarTire will cause such SmarTire Affiliate to endorse and confirm the licenses granted to TRW hereunder. Article 3 Warranty SmarTire warrants that it owns the SmarTire Patents, that it has the right to enter into this Agreement, and that SmarTire's performance of this Agreement will not violate any agreement between SmarTire and any third person. Article 4 SmarTire Patents 4.1 Title: Nothing contained in this Agreement will be deemed to convey to TRW the legal title to any SmarTire patent. -Page 2- 4.2 Maintenance of Patents: SmarTire will have no obligation under this Agreement (a) to file, prosecute, or maintain any SmarTire patent or (b) to respond to or otherwise defend any action for reexamination or revocation of any SmarTire patent. Article 5 Term and Termination 5.1 Term: This Agreement is effective as of the Effective Date upon execution by both parties. The Agreement will not expire. 5.2 Termination: This Agreement may not be terminated except upon the express written agreement of both parties. Article 6 Assignment Neither party may assign or transfer this Agreement or any of its rights or duties under this Agreement without the prior written consent of the other party. For purposes of this Article, any change of control of TRW will be considered to be a transfer of the Agreement. Article 7 Notice Any notice or other communication to any party under this Agreement will be in writing and will be deemed to have been duly given, if communicated by facsimile, cable or similar electronic means, at the time receipt thereof has been confirmed by return electronic communication or signal that the message has been clearly received, or if mailed, ten (10) days after mailing, registered mail, postage prepaid, return receipt requested: if to TRW: TRW Automotive Electronics 24175 Research Drive Farmington Hills, Michigan 48335-2642 U.S.A. FAX: 248.442.5290 Attention: General Manager with a copy of the notice being sent to the same address, to the attention of the Vice President, Law, and If to SmarTire: SmarTire Systems Inc. 13151 Vanier Place Suite 150 Richmond, British Columbia CANADA V6V 2J1 -Page 3- FAX: 604.276.2350 Attention: President provided, however, that if either party will have designated a different address by notice to the other party given as provided above, then to the last address so designated. Article 8 Miscellaneous 8.1 Headings: Except for the headings for the Definitions in Article 1, the headings and titles to the Articles and Sections of this Agreement are inserted for convenience only and will not be deemed a part of this Agreement or affect the construction or interpretation of any provision of this Agreement. 8.2 Entire Agreement: This Agreement comprises the entire agreement between TRW and SmarTire and supersedes all other agreements, oral or written, heretofore made with respect to the licensing of patents for the manufacture and sale of Licensed Products. 8.3 Modification: This Agreement may be amended only in writing signed by both parties which specifically refers to the provision of this Agreement to be amended and clearly recites the amendment thereto. 8.4 Waiver: No waiver of any right or remedy in respect of any occurrence or event on one occasion will be deemed a waiver of such right or remedy in respect of such occurrence or event on any subsequent occasion. 8.5 Remedies: Unless otherwise expressly provided in this Agreement, the rights and remedies set forth in this Agreement are in addition to, and not in limitation of, other rights and remedies under the Agreement, at law or in equity, and the exercise of one right or remedy will not be deemed a waiver of any other right or remedy. 8.6 Governing Law: The validity, construction, interpretation and enforceability of this Agreement will be determined and governed by the laws of the State of Ohio, United States of America. 8.7 Counterparts: This Agreement may be executed in multiple counterparts with equal force and effect in the English language, and each such counterpart will be deemed an original of this Agreement. -Page 4- IN WITNESS WHEREOF, the parties have executed this Agreement as of the Effective Date, and this Agreement will be deemed dated as of such date. TRW INC. SMARTIRE SYSTEMS INC. Automotive Electronics in the U.S. By: /s/ RONALD A. MUCKLEY By: /s/ ROBERT V. RUDMAN --------------------------------- -------------------------- RONALD A. MUCKLEY ROBERT V. RUDMAN ------------------------------------- ------------------------------ (Typed/Printed Name) (Typed/Printed Name) Title: Vice President and General Title: President and Chief Manager Safety and Security Systems Executive Officer Attachment 1: SmarTire Patents and Pending Patent Applications -Page 5- Attachment 1 SmarTire Patents and Pending Patent Applications
-------------------------------------------------------------------------------------------------- PATENT/PATENT APPLICATION NO. FILING/ISSUE DATE TITLE JURISDICTION -------------------------------------------------------------------------------------------------- 5,285,189 February 8, 1994 ABNORMAL TIRE CONDITION WARNING US (Patent Granted) SYSTEM -------------------------------------------------------------------------------------------------- 5,559,484 September 4, 1996 DATA LOGGING TIRE MONITOR WITH US (Patent Granted) CONDITION PREDICTIVE CAPABILITIES AND INTEGRITY CHECKING -------------------------------------------------------------------------------------------------- 5,231,872 August 3, 1993 TIRE MONITORING APPARATUS AND METHOD US (Patent Granted) -------------------------------------------------------------------------------------------------- 5,335,540 August 9, 1994 TIRE MONITORING APPARATUS AND METHOD US (Patent Granted) -------------------------------------------------------------------------------------------------- 09/351,002 July 12, 1999 WHEEL COMPONENT WITH CAVITY FOR US (Application) MOUNTING A HOUSING FOR MEASUREMENT APPARATUS -------------------------------------------------------------------------------------------------- 2,104,696 Feb. 20, 1992 TIRE MONITORING APPARATUS AND METHOD Canada (Application) -------------------------------------------------------------------------------------------------- 2,221,174 Feb. 20, 1992 TIRE MONITORING APPARATUS AND METHOD Canada (Application) --------------------------------------------------------------------------------------------------
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