FIRSTAMENDMENT TOTHE FLT(FINE LINE TECHNOLOGY) PATENT LICENSE AGREEMENT

EX-10.1 2 ex10-1.htm

FIRST AMENDMENT

TO THE

FLT (FINE LINE TECHNOLOGY) PATENT LICENSE AGREEMENT

This First Amendment to the FLT (Fine Line Technology) Patent License Agreement (“Amendment”) is made this day, December 21, 2016 by and between Uni-Pixel Displays, Inc., a Texas corporation, including Affiliates, having a place of business at 8708 Technology Forest Place, Suite 100, The Woodlands, TX 77381, U.S.A. (hereinafter collectively referred to as “Licensee”) and CIT Technology Ltd, a Company registered in England, including Affiliates, having a place of business at Springstone House, 27 Dewsbury Road, Ossett, West Yorkshire, England (hereinafter collectively referred to as “Licensor”). Capitalized terms used in this Amendment but not defined herein have the meanings ascribed to them in the Agreement (as defined below).

BACKGROUND

	A.	The Parties entered into that certain FLT (Fine Line Technology) Patent License Agreement with an Effective Date of April 16, 2015 (the “Agreement”).

	B.	Based on mutual agreement, the Parties desire to amend the following sections of the Agreement by as described herein.

AGREEMENT

A.	AMENDMENTS TO THE AGREEMENT

Section 1.7 of the Agreement is deleted in its entirety and replaced with the following new Section 1.7:

“Sales Price” means (a) gross revenues of Licensee recognized from the sale, use or other disposition, but not to sublicensees, of a Licensed FLT Product by Licensee (including Affiliates) or (b) the amount used by Licensee under its agreement with the relevant sublicensee to calculate the royalty payable to Licensee by the relevant sublicensee in respect of Licensed FLT Products manufactured by the sublicensee (the “Sublicense Price”), provided always that the Sublicense Price shall be a bona fides amount reflecting an arm’s length transaction between a willing licensor and a willing licensee. Licensee shall, with each Annual Royalty payment, deliver to Licensor reasonable supporting evidence justifying the Sublicense Price used for the purposes of calculating the Sales Price. Where Licensor is not satisfied that such supporting evidence is sufficient to show that the Sublicense Price meets the above requirement set out in this section 1.7, Licensor and Licensee shall meet and review the data used for determining the Sublicense Price and come to a mutually agreeable resolution.

Section 1.10 of the Agreement is deleted in its entirety and replaced with the following new Section 1.10:

“XSense Intellectual Property License Agreement” means that certain XSense Intellectual Property License Agreement entered into between Atmel Corporation and Licensee as of the date hereof.

Section 1.11 of the Agreement is deleted in its entirety and replaced with the following new Section 1.11:

“XSense Patent License Agreement” means that certain XSense Patent License Agreement entered into between Atmel Corporation and Licensee as of the date hereof.

Section 2.1 of the Agreement is deleted in its entirety and replaced with the following new Section 2.1:

Grant. Subject to the terms and conditions of this Agreement, including the delivery and application of the Non-Refundable Prepayment, Licensor hereby grants to Licensee an exclusive, sublicensable, worldwide, royalty-bearing license under the Licensed FLT Patents, to make or have made, use, offer for sale, sell, and import Licensed FLT Products. Notwithstanding the foregoing, the exclusivity provided for in the prior sentence as to the Licensed FLT Patents is subject to such license by Licensor to CPI Innovation Services Limited for the license of the same Licensed FLT Patents for use with non-touch screens, which rights of the licensee pursuant to such license shall continue and remain in full force and effect during the term of such license.

Section 2.3 of the Agreement is deleted in its entirety and replaced with the following new Section 2.3:

Subject to the right to sublicense granted in Section 2.1, the license of Section 2.1 above is non-assignable and non-transferrable, except as permitted under Section 6.3 below and subject to Section 2.7 below.

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Section 2.7 of the Agreement is deleted in its entirety and replaced with the following new Section 2.7:

If this Agreement is terminated for any reason, then for so long as any sublicense agreement remains in effect, such sublicense provided by such sublicense agreement will survive and remain in full force and effect, and from and after the effective date of such termination with respect to Licensee, the sublicensee party to such sublicense agreement will be deemed to have the rights of Licensee under this Agreement on a non-exclusive, non-sublicensable basis, and will become responsible for complying with the terms and conditions of this Agreement pertaining to financial terms with regard to the Net Sales by such sublicensee, confidentiality, recordkeeping and auditing.

Section 3.5 of the Agreement is amended to replace the word “Uni-Pixel” with the word “Licensee.” No other changes shall be made to such Section 3.5.

B.		ORDER OF PRECEDENCE

	1)	This Amendment will be governed by all the terms and conditions of the Agreement. In cases of a conflict between the language in this Amendment and the Agreement, this Amendment will prevail.

	2)	This Amendment sets forth the entire agreement and understanding between the Parties with respect to the subject matter hereof and supersedes all prior and contemporaneous communications, both written and oral with respect to the subject matter. Except as expressly set forth in this Amendment, the Agreement and each and every provision thereof, will remain in full force and effect

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IN WITNESS WHEREOF, the Parties hereto have caused this Amendment to be executed by their duly authorized officers or representatives.

CIT Technology		Uni-Pixel Displays, Inc.

/s/ Chris Malley		/s/ Christine Russell

Chris Malley		Christine Russell
Printed Name		Printed Name

Director		Secretary and CFO
Title		Title

December 21, 2016		December 21, 2016
Date		Date