This document is intended for informational purposes and to illustrate the diversity of written agreements only. Agreement Sample Project assumes no liability for the content of this document or for any action or inaction taken as a result of it. It should not be used or relied upon for any purpose, does not represent a recommendation or endorsement and is not a substitute for professional legal advice. No professional relationship is implied or otherwise established by reading this document. You should always seek the advice of your legal professional before taking any action or inaction.

 

 

PATENT CROSS LICENSE AGREEMENT, JAPAN

 

Source: http://www.sec.gov/Archives/edgar/data/18169/000119312512399881/d413707dex21.htm

 

PATENT CROSS LICENSE AGREEMENT

AMONG

DOLE FOOD COMPANY, INC.,

AND

DOLE ASIA HOLDINGS PTE. LTD.

THIS PATENT CROSS LICENSE AGREEMENT (“Agreement”) is made and entered into as of                     , 2012, by and among DOLE FOOD COMPANY, INC., a corporation organized and existing under the laws of the State of Delaware, with its principal place of business at One Dole Drive, Westlake Village, California 91362 U.S.A. (“DOLE”), and DOLE ASIA HOLDINGS PTE LTD, a company organized and existing under the laws of Singapore, with its principal place of business at                                          (“DAL”).

AGREEMENT BACKGROUND

A. DOLE and ITOCHU Corporation (“ITOCHU”) have entered into an Acquisition Agreement dated as of September 17, 2012 (the “Acquisition Agreement”) pursuant to which DOLE agreed to sell to ITOCHU, and ITOCHU agreed to purchase, Dole’s Asia Fresh (“Asia Fresh”) and Worldwide Packaged Foods (“Packaged Foods”) businesses, including all related assets, liabilities, rights and obligations (collectively, the “Business”), and to enter into a series of other agreements at the Closing (as defined in the Acquisition Agreement).

B. Between the signing of the Acquisition Agreement and the Closing, DOLE, pursuant to those certain Intercompany Agreements , as defined and contemplated under the Acquisition Agreement (the “Intercompany Agreements”), (i) transferred to DAL the businesses, assets, liabilities, rights and obligations of the Business in relation to all areas other than the United States, and transferred to Dole Packaged Foods, LLC (“DPF”), the business, assets, liabilities, rights and obligations of the Business in relation to the United States, and (ii) pursuant to that certain assignment agreement (being one of the Intercompany Agreements) dated                 , 2012 (the “Assignment Agreement”) transferred the patent rights of DOLE relating to the Business to DAL (such patents being the patents listed in Exhibit B hereto) and at the Closing ITOCHU is acquiring, directly or indirectly, the entire equity ownership interest in DAL and DPF, with the effect that, following the Closing, DAL and DPF will each become a direct or indirect wholly-owned subsidiary of ITOCHU that together will own, operate, develop and expand the Business.

C. DOLE, DPF and DAL have entered into the Trademark Rights Agreement dated as of the date hereof (the “Trademark Rights Agreement”) setting forth certain arrangements with respect to their respective trademarks;

D. As a result of the transactions contemplated by the Acquisition Agreement, the parties have agreed to grant cross licenses of their respective patent rights on the following terms and conditions.

 

---

In consideration of the covenants and agreements contained herein, and for other good and valuable consideration, the receipt and sufficiency of which are acknowledged by the execution hereof, the parties agree as follows.

 

 

1.

LICENSE GRANTS.

 

1.1 Grant by DOLE. Subject to the terms and conditions of this Agreement, DOLE hereby grants to DAL a fully paid, royalty-free, non-exclusive and non-transferable (except as otherwise provided in Section 11) right and license, with the right to grant sublicenses to the extent provided in Section 2, to make (including the right to use any apparatus and practice any method in making), have made, use, import, offer for sale, lease, sell and/or otherwise exploit products or use the methods under the patents set forth in Exhibit A hereto, solely in connection with the Asia Fresh Non-Asia Business (as defined in the Trademark Rights Agreement) conducted in Bahrain, the Russian Federation and United Arab Emirates.

1.2 Grant by DAL. Subject to the terms and conditions of this Agreement, DAL hereby grants to DOLE a fully paid, royalty-free, non-exclusive and non-transferable (except as otherwise provided in Section 11) right and license, with the right to grant sublicenses to the extent provided in Section 2, to make (including the right to use any apparatus and practice any method in making), have made, use, import, offer for sale, lease, sell and/or otherwise exploit products or use methods under the patents set forth in Exhibit B hereto .

1.3 No Other Rights. No other rights are granted hereunder, by implication, estoppel, statute or otherwise, except as expressly provided herein.

 

 

2.

SUBLICENSEES

 

Each party shall have the right to grant sublicenses under the license granted in Section 1 to such party to Affiliates (as defined in the Acquisition Agreement) or to manufacturers who are engaged by such party to assist in the manufacture of products for such party.

 

 

3.

TERM OF AGREEMENT

 

This Agreement shall commence as of the date specified in the preamble and shall continue until the expiration of the last-to-issue patent licensed under this Agreement, unless terminated by mutual agreement of the parties.

 

 

4.

WARRANTIES

 

 

 

4.1

Warranties.

 

Each of the parties represents and warrants that it has the right to grant the licenses granted by it in Section 1. Nothing contained in this Agreement shall be construed as:

 

-2-

 

---

(i) a warranty or representation by the a party granting a licensee under this Agreement (“Licensor”) as to the existence, validity, enforceability or scope of any class or type of any patent licensed by the Licensor;

(ii) a warranty or representation that any manufacture, sale, lease, use or other disposition of any methods or products hereunder will be free from infringement of any patents or other intellectual property of any third party; or

(iii) requiring the Licensor to defend any proceedings brought by a third party challenging or concerning the validity of any Licensed Patent licensed hereunder.

4.2 DISCLAIMER OF IMPLIED WARRANTIES. EACH LICENSOR HEREBY DISCLAIMS ANY IMPLIED WARRANTIES WITH RESPECT TO THE INTELLECTUAL PROPERTY LICENSED BY IT HEREUNDER, INCLUDING WITHOUT LIMITATION THE WARRANTIES OF MERCHANTABILITY, AND FITNESS FOR A PARTICULAR PURPOSE. THE EXERCISE BY LICENSEE OF THE RIGHTS GRANTED BY LICENSOR HEREUNDER WILL BE SOLELY AT LICENSEE’S RISK.

 

 

5.

ENTITLEMENT TO COSTS

 

If any legal action or dispute arises under this Agreement, arises by reason of any asserted breach of it, or arises between the parties and is related in any way to the subject matter of the Agreement, the prevailing party shall be entitled to recover all costs and expenses, including reasonable attorneys’ fees, investigative costs, reasonable accounting fees and charges for experts. The “prevailing party” shall be the party who obtains a provisional remedy such as a preliminary injunction or who is entitled to recover its reasonable costs of suit, whether or not the suit proceeds to final judgment; if there is no court action, the prevailing party shall be the party who wins any dispute. A party need not be awarded money damages or all relief sought in order to be considered the “prevailing party” by the arbitrator(s) or a court.

 

 

6.

GOVERNING LAW

 

This Agreement shall be governed by and construed in accordance with the laws of Japan without giving effect to any choice or conflict of law provision or rule that would cause the application of the laws of any other jurisdiction.

 

 

7.

DISPUTE RESOLUTION

 

All disputes, controversies and claims arising out of, relating to or in connection with this Agreement or the transactions contemplated hereby (including the construction, existence, validity, enforceability, enforcement, breach or termination of this Agreement) that cannot be resolved amicably by the Parties shall be exclusively, finally and conclusively settled by arbitration administered by the International Chamber of Commerce (the “ICC”) and conducted in accordance with the ICC Rules of Arbitration (the “Rules”), subject to the following:

 

-3-

 

---

(a) there shall be a panel of three (3) arbitrators (collectively, the “Tribunal”), one appointed by the DAL Parties, another by DOLE and the third appointed in accordance with the Rules;

(b) the seat of arbitration shall be Tokyo, Japan;

(c) the arbitration shall be conducted in the English language, and all written and oral submissions and awards shall be prepared in English (or be accompanied by English translations);

(d) the Tribunal shall schedule all matters regarding the arbitration so that the arbitration progresses in a timely fashion;

(e) at the arbitration hearing, each party may make written and oral presentations to the Tribunal, present testimony and written and oral evidence and examine witnesses;

(f) the Tribunal may not grant any award that is inconsistent with the terms of this Agreement and shall not have the authority to use the equitable powers provided by the Rules to modify any terms of this Agreement, nor shall the Tribunal have the power to award any punitive or exemplary damages;

(g) the Tribunal shall issue a written decision explaining the basis for its rulings and awards;

(h) all fees and expenses of the Tribunal and the ICC shall be shared equally between the Parties, provided that the Tribunal shall have the authority to award, as part of its decision, to the prevailing party its costs and expenses of the arbitral proceedings, including reasonable fees of attorneys and experts;

(i) any monetary award shall be made in US$ and shall be payable free of any Tax, withholding or other deduction unless otherwise required by Legal Requirements;

(j) the parties shall be entitled to reasonable production of documents and persons with relevant knowledge for reasonable depositions, and the IBA Rules on the Taking of Evidence in International Commercial Arbitration shall be used as guidance.

Decisions rendered by the arbitral Tribunal shall be final, binding and enforceable in any court of competent jurisdiction. Except as necessary to enforce or effectuate the terms of this Section 132 or an arbitral decision or award arbitration proceedings hereunder and any decision and award of the Tribunal shall be kept confidential by the Parties.

 

 

8.

SPECIFIC PERFORMANCE

 

 

Each party acknowledges and agrees that the other parties would be damaged irreparably in the event any provision of this Agreement is not performed in accordance with its specific terms or otherwise is breached, so that, notwithstanding any other provision herein to the contrary, a party shall be entitled to injunctive relief to prevent breaches of this Agreement and to enforce specifically in any court of competent jurisdiction, this Agreement and the terms and

 

-4-

 

---

provisions hereof in addition to any other remedy to which such party may be entitled, at law or in equity. Each of the parties hereby further waives (a) any defense in any action for specific performance that a remedy at law would be adequate and (b) any requirement under any Legal Requirement to post security as a prerequisite to obtaining equitable relief.

 

 

9.

WAIVER OF JURY TRIAL

 

EACH OF THE PARTIES TO THIS AGREEMENT HEREBY IRREVOCABLY WAIVES ALL RIGHT TO A TRIAL BY JURY IN ANY ACTION, PROCEEDING OR COUNTERCLAIM ARISING OUT OF OR RELATING TO THIS AGREEMENT OR THE TRANSACTIONS CONTEMPLATED HEREBY.

 

 

10.

RELATIONSHIP OF PARTIES

 

This Agreement shall not be construed to place the parties in the relationship of legal representatives, partners, joint venturers or agents of or with each other. Under this Agreement, DAL is an independent contractor and shall be solely responsible for the payment of all income tax withholding, payroll taxes, contributions and other obligations relating to DAL’s employment and compensation of its employees and consultants. No party shall have any power to obligate or bind any other party in any manner whatsoever, except as specifically provided herein.

 

 

11.

ASSIGNABILITY

 

(a) This Agreement shall be binding upon and inure to the benefit of the successors and permitted assigns of the parties. A party may assign, in whole or in part, without the approval of the other party, any or all of its rights, duties or obligations under this Agreement as follows: (i) to any Affiliate; (ii) in connection with any sale of any patents owned by such party that are the subject of this Agreement; or (iii) in connection with the sale of a subsidiary, business segment, division, business unit, or product line or other divestment or sale or disposition of assets or any merger, stock purchase, or other acquisition of such party; provided in each such case that such party provides written notice of any such transaction to the other party within thirty (30) days after the consummation of such transaction and the assignee agrees in writing to be bound by all of the applicable provisions of this Agreement. The rights granted to any party hereunder are unique and personal in nature, and, except for an assignment of this Agreement permitted pursuant to the foregoing provisions of this Section 11(a) or any assignment, transfer, pledge, encumbrance or hypothecation pursuant to any financing transaction undertaken by a party, neither this Agreement nor the rights granted hereunder may otherwise be assigned, transferred, pledged, encumbered or hypothecated by any party without the other parties’ prior written approval. Any attempt by a party to transfer any of its rights or obligations under this Agreement, whether by assignment, sublicense, except as permitted herein, without having received the prior written approval of the other parties, shall be null and void.

 

 

12.

RIGHTS IN THE EVENT OF BANKRUPTCY

 

The parties agree that, if any party becomes a debtor in a bankruptcy case under the United States Bankruptcy Code and such party (or its bankruptcy trustee) rejects this

 

-5-

 

---

Agreement under Bankruptcy Code Section 365(a), the other parties shall nevertheless retain and be entitled to continue to exercise all of the licenses granted by such party under this Agreement, whether on the basis that rejection does not result in termination of such licenses, or that such licenses should be preserved on equitable grounds by the bankruptcy court before which such case is pending, or by virtue of the parties’ agreement hereunder.

 

 

13.

INTERPRETATION

 

Any uncertainty or ambiguity with respect to any provision of this Agreement shall not be construed for or against any party based on attribution of drafting to either party. The headings contained herein are for reference purposes only and shall not affect in any way the meaning or interpretation of this Agreement. In the event of any inconsistency between the terms and conditions of the Acquisition Agreement and the terms and conditions of this Agreement, including any inconsistencies in the definitions expressly set forth in each agreement, the terms and conditions of this Agreement shall control the subject matter of this Agreement.

 

 

14.

WAIVER AND INTEGRATION

 

The failure of a party to insist upon strict adherence to any term or provision of this Agreement, or to object to any failure to comply with any term or provision of this Agreement, shall not be a waiver of that term or provision, estop that party from enforcing that term or provision, or preclude that party from enforcing that term or provision by estoppel or by laches. The receipt by a party of any benefit from this Agreement shall neither constitute such party’s waiver nor effect an estoppel on the right of that party to enforce any provision hereof. None of the terms of this Agreement shall be deemed to be waived or modified, except by an express agreement in writing, signed by an authorized officer of the party against whom enforcement of the waiver or modification is sought, supported by new consideration.

 

 

15.

NOTICES AND COMMUNICATIONS

 

Any notice, communication or legal service of process required or permitted under this Agreement shall be effective when personally delivered in writing; or on the date when the notice, service or communication is transmitted by electronic facsimile (with a confirmation copy to be sent by mail) or the day after the notice, service or communication is sent by overnight air courier service; or five (5) days after the date of mailing. All notices shall be sent to the parties at the notice addresses listed below or to such other persons and notice addresses as may be designated in writing by the parties to each other. The date a notice shall be deemed to be transmitted, sent via overnight air courier or mailed shall be the date at the notifier’s place of business at the time of the transmission, sending or mailing.

 

-6-

 

---

 

TO DOLE:		DOLE FOOD COMPANY, INC.
	One Dole Drive
	Westlake Village, California 91362-7300
	Secretary Attention: C. Michael Carter, Executive Vice-President and Corporate
	Telephone: 818-879-6810
	Facsimile: 818-879-6754

 

TO DAL:

 

	Attention:
	Telephone:
	Facsimile:

 

 

 

16.

SEVERABILITY

 

The provisions of this Agreement are severable, and if any provision shall be held invalid or unenforceable, in whole or in part, in any jurisdiction, then such invalidity or unenforceability shall affect only such provision, and shall not affect such provision in any other jurisdiction. To the extent legally permissible, a provision which reflects the original intent of the parties shall be substituted for such invalid or unenforceable provision.

 

 

17.

EXHIBITS

 

The Exhibits attached hereto and as revised by agreement of the parties from time to time are hereby incorporated by reference and form integral parts hereof.

 

 

18.

ENTIRE AGREEMENT

 

This Agreement, including all Exhibits, constitutes the entire agreement between the parties with respect to, and supersedes all prior negotiations, agreements and understandings between the parties concerning, the subject matter hereof. This writing is intended as the final, complete and exclusive statement of the terms of the agreement between the parties with respect to the subject matter hereof and may only be amended in writing.

 

-7-

 

---

IN WITNESS WHEREOF, the parties hereto have caused their duly-authorized representatives to execute this Agreement as of the date first-above written.

 

 

DOLE FOOD COMPANY, INC.						DOLE ASIA HOLDINGS PTE LTD
By:						By:
Print Name:						Print Name:
Title:						Title:
By:
Print Name:
Title: