CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 650 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 650 of 1320
`
` Fig.1B
`
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`
`Fig.
`
`Page 650
`
`JA648
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 651 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 651 of 1320
`
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`
`
`
`Page 651
`
`JA649
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 652 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 652 of 1320
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`
`Page 652
`
`JA650
`
`OWTEx.2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 653 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 653 of 1320
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`
`Page 653
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 654 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 654 of 1320
`
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`
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`
`Page 654
`
`JA652
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 655 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 655 of 1320
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`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
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`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 656 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 656 of 1320
`
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`
`JA654
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 657 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 657 of 1320
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`
`JA655
`
`OWTEx.2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 658 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 658 of 1320
`
`UNITED STATES PATENT APPLICATION
`
`COMBINED DECLARATION AND POWEROF ATTORNEY
`
`As a below namedinventor,I hereby declare that: my residence, post office address and citizenship are
`
`as stated below next to my name:
`I verily believe that I am theoriginal, first and joint inventor of the subject matter whichis claimed and
`for which a patentis sought onthe inventionentitled:
`FLOW-THROUGH OXYGENATOR
`the specification for which is attached hereto.
`[herebystate that I have reviewed and understand the contents of the above-identified specification,
`including the claims, as amended by any amendmentreferred to above.
`I acknowledge the duty to disclose information which is materia! to the patentability of this application
`in accordance with 37 C.F.R § 1.56.
`I also acknowledge mydutyto disclose all information knownto be
`material to patentability which becameavailable betweena filing date of a prior application and the national or
`PCTfiling date in the event this is a Continuation-in-Part application in accordance with 37 C.F.R. § 1.63(e).
`
`I hereby claim the benefit under 35 U.S.C. § 119(e) of any United States provisional application(s)
`listed below:
`
`Application Number
`
`60/431,577
`
`Filing Date
`
`02/22/2002
`
`[hereby claim the benefit under 37 C.F.R. § 1.63(E) of any United States provisional application(s)
`listed below:
`
`Application Number
`
`10/372,017
`
`Filing Date
`
`02/21/2003
`
`I hereby appointthe following attorneys to prosecute this application andto transactall business in the
`Patent and Trademark Office connected herewith:
`
`Terry, Kathleen R.
`
`Reg.No. 31884
`
`McTavish, Hugh
`
`Reg. No. 48341
`
`Page 658
`
`JA656
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 659 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 659 of 1320
`
`Please direct all correspondencein this case to:
`
`Kathleen R. Terry
`2417 Como Avenue
`
`- St. Paul, MN 55108-1459
`
`651-659-9819
`
`Krterry@visi.com
`
`FAX 651 603 1809
`
`I hereby declare that all statements made herein of my own knowledge are true and that all statements
`made on information andbelief are believed to be true, and further that these statements were made with the
`knowledgethat willful false statements and the like so madeare punishable by fine or imprisonment, or both,
`under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize
`the validity of the application issued thereon.
`
`Full nameof sole inventor number:
`Citizenship:
`United States of America
`Residence Address:
`James Andrew Senkiw
`4750 Aldrich Avenue North
`
`Minneapolis, MN 55430-3529
`
`Signature:
`
`{ 4d AA.
`
`Date;/@/s /02
`
`Page 2 of 2
`
`Page 659
`
`JA657
`
`OWTEx. 2118
`
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 660 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 660 of 1320
`
`PATENT APPLICATION FEE DETERMINATION RECORD
`Effective October 1, 2003
`
`Application or Docket Number
`
`OTHER THAN
`OR SMALL ENTITY
`TOTAL CLAIMSPomeg
`
`| [Rare [Fee_|
`BASIC FEE] 385.00
`Jor BASIC FEE} 770.00
`
`CLAIMS ASFILED - PART |
`
`TOTAL OHARGEABLE CLAMS
`
`| MULTIPLE DEPENDENT CLAIM PRESENT
`
`* If the difference in column 1 is less than zero, enter “O” in column 2
`
`CLAIMS AS AMENDED- PART Il
`
`AMENDMENTA|
`
`~ CLAIMS
`REMAINING
`AFTER
`
`|
`
`HIGHEST
`NUMBER
`PREVIOUSLY
`PAID FOR
`
`ee
`
`FIRST PRESENTATION OF MULTIPLE’DEPENDENT CLAIM
`
`ce
`
`A,
`-
`[|__|
`OTHER THAN
`SMALL ENTITY OR SMALL ENTITY
`ADDI-
`E
`| TIONAL
`|
`FEE
`es
`
`REMAINING
`AFTER
`AMENDMENT
`
`PRESENT
`EXTRA
`
`l ADDI-
`RATE | TIONAL
`|
`FEE
`
`rae]|
`
`TOTAL
`ADDIT. FEE
`
`
`
`REMAINING
`AFTER
`
`[—Tapp. | { {avo
`
`AMENDMENT
`[AMENDMENTC||AMENDMENTB|
`
`‘If the "Highest Number Previously Paid For” IN THIS SPACEis less than 3, enter “3.” SMALL ENTITY
`
`| RATE [TIONAL RATE.|TIONAL
`
`|
`
`FEE
`
`FEE
`
`* Ifthe entry in column1is less than the entry in column 2, write “0” in column 3.
`If the “Highest Number Previously Paid For” IN THIS SPACE is less than 20, enter “20.”
`
`The "Highest Number Previously Paid For” (Total or Independent) is the highest numberfound in the appropriate box in column 1.
`
`“Patent andTrademark Office.Y S. DEPARTMENT OF COMMERCE
`FORM PTO-875 (Rev 10/03)
`
`Page 660
`
`JA658
`
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`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 661 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 661 of 1320
`
`PATENT APPLICATION SERIAL NO.
`
`U.S. DEPARTMENT OF COMMERCE
`PATENT AND TRADEMARK OFFICE
`. FEE RECORD SHEET
`
`12/12/2003 SZEWDIE] 00000033 10732326
`Oi FC:2001
`385.00 OP
`
`PTO-1556
`(5/87)
`
`“U.S. Gavernmant Printing Office: 2002 — 489-267/69033
`
`JA659
`
`Page 661
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 662 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 662 of 1320
`
`PATENT ASSIGNMENT COVER SHEET
`
`Electronic Version v1.1
`Stylesheet Version v1.2
`
`EPAS ID: PAT3803298
`
`SUBMISSION TYPE:
`
`NEW ASSIGNMENT
`
`NATURE OF CONVEYANCE:
`
`CONVEYING PARTY DATA
`
`OXYGENATOR WATER TECHNOLOGIES, INC.
`
`03/13/2016
`
`RECEIVING PARTY DATA
`
`Name:
`Street Address:
`
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`1600 TCF TOWER
`
`Internal Address:
`
`121 SOUTH 8TH STREET
`
`
`
`
`
`
`City:
`MINNEAPOLIS
`
`State/Country:
`Postal Code:
`
`MINNESOTA
`55402
`
`PROPERTY NUMBERS Total: 4
`
`
`Property Type
`Number
`
`Application Number:
`12023431
`
`Application Number:
`
`14601340
`
`Application Number:
`
`Application Number:
`
`13247241
`
`13657311
`
`CORRESPONDENCE DATA
`
`(612)642-8407
`Fax Number:
`Correspondencewill be sent to the e-mail addressfirst; if that is unsuccessful, it will be sent
`using a fax number, if provided;if that is unsuccessful, it will be sent via US Mail.
`Phone:
`612-672-8200
`
`Email:
`Correspondent Name:
`AddressLine 1:
`Address Line 2:
`
`debra.dix@maslon.com
`AMY SWEDBERG
`90 SOUTH 7TH STREETSTE 3300
`MASLON LLP
`
`AddressLine 4:
`
`MINNEAPOLIS, MINNESOTA 55402
`
`NAME OF SUBMITTER:
`
`STEVEN W. LUNDBERG
`
`
`
`
`
`PidocumentsonsasanGanvBecaration@7OFRTG
`
`Page 662
`
`JA660
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 663 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 663 of 1320
`
`Total Attachments: 2
`
`source=Oxygenator - Ex.Alist of patents#page1 tif
`
`source=OWTLien#page1.tif
`
`Page 663
`
`JA661
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 664 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 664 of 1320
`
`NOTICE OF ATTORNEYS’ LIEN IN PATENTS
`
`NOTICE IS HEREBY GIVENthat the law firm of Schwegman, Lundberg & Woessner,
`
`P.A. (“Law Firm”), with its principal place of business at 1600 TCF Tower, 121 South Eighth
`
`Street, Minneapolis, Minnesota, duly authorized to practice as such in the State of Minnesota,
`
`claims and holdsalien in andto all of the patents listed on Exhibit A, and all of the applications
`
`and registrations associated therewith, together with all proceeds thereof, of Oxygenator Water
`
`Technologies, Inc., a Minnesota corporation (“Client”), with its registered address at 1660 8
`
`Hwy 100 #598, St Louis Park, MN 55416. Said lien is claimed for legal services rendered by
`
`Law Firm to Client for representation of Client in proceedings involving and affecting the
`
`ownership andtitle to the property upon whichthis lien is claimed for the reasonable and agreed
`
`upon value of $257,609.80 of which the sum of $43,977.30 remains unpaid.
`
` ERG & WOESSNER,P.A.
`
`Shareholder
`
`STATE OF MINNESOTA_)
`)
`ss.
`COUNTY OF HENNEPIN_)
`
`d
`
`On this23"- day of March, 2016, before me personally came Steven W. Lundberg, who
`being duly sworn did depose and say that he is a shareholder of the Law Firm described in and
`which executed the foregoing instrument.
`
`
`
`NOTARYYhessaa(Q). Mabou
`
`
`THERESA A. HATHAWAY
`2 NOTARY PUBLIC - MINNESOTA:
`
`: My Commission Expires
`
`January 31, 2018
`
`
`Page 664
`
`JA662
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 665 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 665 of 1320
`
`3406.006US1
`Utility-
`
`NPREG
`
`
`
`
`
`ENHANCEDRESINREGENIUnitedStatesofAmerica
`
`
`
`
`
`3406.005USR
`Utility-REIS
`
`
`
`
`
`
`
`FLOW-THROUGHOXYGENDUnitedStatesofAmerica
`
`3406.005US2
`Utility-REIS
`
`
`
`
`
`
`
`FLOW-THROUGHOXYGENDUnitedStatesofAmerica
`
`NUMBER
`
`SLWFILE
`
`
`
`
`
`
`
`MATTERTYPETITLECOUNTRY
`
`3406.002US1
`Utility-DIV
`
`
`
`
`
`FLOW-THROUGHOXYGERUnitedStatesofAmerica
`
`
`FILINGDATENUMBER
`ExhibitA
`
`
`Sep28,201113/247,241
`
`
`Oct22,201213/657,311
`
`
`Jan31,200812/023,431
`
`
`Jan21,201514/601,340
`APPLICATION
`
`Pending
`
`Issued
`
`
`
`
`
`Mar17,2015RE45,415
`
`0098819-A1
`
`Oct24,2011US-2013-
`
`
`
`MarkRolfes
`
`Transferred
`
`
`
`Sep28,2011
`
`STATUS
`
`ISSUEDATENUMBER
`
`
`DATENUMBER
`
`INVENTORS
`
`Issued
`
`Mar2,20107,670,495
`
`
`Feb22,2002US2008-
`
`JamesAndrew
`
`0179259A1
`Senkiw
`
`PATENT
`
`
`
`PRIORITYPUBLICATION
`
`Senkiw
`
`
`
`JamesAndrew
`
`Senkiw
`
`
`
`JamesAndrew
`
`Page 665
`
`JA663
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 666 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 666 of 1320
`
`
`
`PATENT ASSIGNMENT |
`
`|
`
`Electronic Version v1.1
`
`Stylesheet Version v1.1
`
`SUBMISSION TYPE:
`
`NEW ASSIGNMENT
`
`NATURE OF CONVEYANCE:
`
`LICENSE
`
`CONVEYING PARTY DATA
`
`
`Execution Date
`Name
`
`
`Oxygenator Water Technologies, Inc.
`
`Aqua Innovations Incorporated
`
`10/04/2012
`
`10/04/2012
`
`
`
`
`
`
`
`
`
`Minneapolis, MINNESOTA 55401
`
`RECEIVING PARTY DATA
`
`Name:
`|[Roy H Lecy
`|
`Street Address:
`2640 North Saunders Lake Drive
`
`City:
`
`Minnetrista
`
`Postal Code:
`
`ioN
`8
`°
`
`2g
`
`PrN
`oo
`S)
`
`PROPERTY NUMBERSTotal: 3
`
`
`
`Property Type
`Number
`Patent Number:
`| 6689262
`
`Patent Number:
`7396441
`
`|
`
`7670495
`Patent Number:
`
`
`CORRESPONDENCE DATA
`
`Fax Number:
`
`6123376100
`
`Correspondence will be sent via US Mail when the fax attempt is unsuccessful.
`Phone:
`6123376100
`
`Email:
`Correspondent Name:
`Address Line 1:
`Address Line 2:
`
`AddressLine 4:
`
`nathanbrandenburg @siegelbrill.com
`Nathan M. Brandenburg
`100 Washington Avenue South
`Suite 1300
`
`ATTORNEY DOCKET NUMBER:
`
`26141-001
`
`NAME OF SUBMITTER:
`
`Nathan M. Brandenburg
`
`Page 666
`
`JA664
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 667 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 667 of 1320
`
`| Signature: | | /nathanmbrandenburg/
`
`
`
`Date:
`04/30/2013
`
`Pp This document serves as an Oath/Declaration (37 CFR 1.63).
`
`Total Attachments: 35
`
`source=OWT - Aqua License#page 1.tif
`source=OWT - Aqua License#page2. tif
`source=OWT - Aqua License#page3.tif
`source=OWT - Aqua License#page4.tif
`source=OWT - Aqua License#page5.tif
`source=OWT - Aqua License#page6 tif
`source=OWT - Aqua License#page/.tif
`source=OWT - Aqua License#page8. tif
`source=OWT - Aqua License#page9.tif
`source=OWT - Aqua License#page 10.tif
`source=OWT - Aqua License#page 1 1.tif
`source=OWT - Aqua License#page 12.tif
`source=OWT - Aqua License#page 13.tif
`source=OWT - Aqua License#page 14.tif
`source=OWT - Aqua License#page 15.tif
`source=OWT - Aqua License#page 16.tif
`source=OWT - Aqua License#page 17.tif
`source=OWT - Aqua License#page 18 tif
`source=OWT - Aqua License#page 19.tif
`source=OWT - Aqua License#page20.tif
`source=OWT - Aqua License#page?1 .tif
`source=OWT - Aqua License#page22.tif
`source=OWT - Aqua License#page23 tif
`source=OWT - Aqua License#page24.tif
`source=OWT - Aqua License#page25.tif
`source=OWT - Aqua License#page26.tif
`source=Agreement of Strict Foreclosure (signed)#page 1.tif
`source=Agreement of Strict Foreclosure (signed)#pagez2. tif
`source=Agreement of Strict Foreclosure (signed)#page3.tif
`source=Agreement of Strict Foreclosure (signed)#page4.tif
`source=Agreement of Strict Foreclosure (signed)#page5.tif
`source=Agreement of Strict Foreclosure (signed)#page6.tif
`source=Agreement of Strict Foreclosure (signed)#page 7 .tif
`source=Agreement of Strict Foreclosure (signed)#page8s.tif
`source=License Amendment - Signed#page1 tif
`
`
`Page 667
`
`JA665
`
`OWTEx. 2118
`Tennant Company v. OWT
`IPR2021-00625
`
`

`

`CASE 0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 668 of 1320
`
`CASE0:20-cv-00358-ECT-HB Doc. 74 Filed 06/09/21 Page 668 of 1320
`
`License Agreement
`
`THIS AGREEMENT("Agreement") is entered into this 30th day of July, 2008 (the
`"Effective Date"), by and between Oxygenator Water Technoiogies, Inc., a Minnesota
`corporation with offices at 6101 Baker Rd., #206, Minnetonka, Minnesota, 55435
`("Licensor") and Aqua Innovations, Inc. a Minnesota corporation with offices at 6101 Baker
`Rd., #206, Minnetonka, Minnescta, 55435 ("Licensee", and Licensor and Licenses each a
`“Party” and together the "Parties").
`Initially capitalized terms defined in this Agreernent
`shail have the meaning ascribed to them respectively herein.
`
`WITNESSETH:
`
`LICENSOR owns the technology for which patents have been issued and are
`pending with respect to electrolytic hydrolysis of water to increase its dissolved oxygen
`content. A more complete description of said technology, together with a description of the
`patents issued and currently pending for said technology, is set forth in Article 1 below and
`in Exhibit "A" attached hereto.
`
`LICENSOR anticipates and intends that it will make additional discoveries and
`improvements to said technolagy, some of which may be patentable.
`
`It is further anticipated by the parties that LICENSOR may make improvements to
`said technology and additional discoveries concerning other applications for said
`technology.
`
`The parties desire that LICENSOR grant a perpetual, exclusive license to
`LICENSEE to develop and sell
`throughout
`the world certain products utilizing the
`technology LICENSOR has developed and mayin the future develop, all according to the
`terms and conditions set forth in this Agreement.
`
`The parties further desire that LICENSORwill retain the complete and entire right to
`develop and sell throughout the world in markets not licensed to LICENSEE hereunder
`products utilizing the technology LICENSOR has developed and mayin the future develop
`or the technolcgy that LICENSEE may developin the future, also according to the terms
`and conditions set forth in this Agreement.
`
`Thus, the parties have agreed to enter into a licensing arrangement by which each
`party will be entitled to benefit from the other party’s patents, technology and know-how
`concerning electrolytic hydrolysis of water in the sale of products in certain markets.
`
`NOW, THEREFORE, based on the foregoing and the mutual covenants and
`agreements herein contained, the parties hereby covenant and agree as follows:
`
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`EXHIBIT “B°
`
`LICENSEE Markets
`
`Alo worldwide markets for:
`
`oee©BRe&
`
`Waste Water Treatment
`Medical Applications
`Sport Fishing
`Aqua Gultlins
`Horticullurs (consumer. and commercial)
`Hydraponics
`
`Markets excluded fromlicense agreement (including but not hmited to):
`
`&&@&8
`
`Water Treatment(all applications except waste water)
`Fermentation
`Desalination
`Human Nutrition
`Animal Nutition
`
`Page 669
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`IPR2021-00625
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`

`

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`ARTICLE 1
`DEFINITIONS.
`
`When usedin this Agreement, the following terms have the meanings set forth
`below unless a different and common meaning of the term is clearly indicated by the
`context, and variants and derivatives of the following terms shall have correlative
`meanings:
`
`“Agreement” has the meaning set forth in the preamble,
`
`"LICENSOR Documents” has the meaning set forth in Section 2.6.
`
`"LICENSOR Improvements" meansail developments LICENSOR may makein the
`LICENSOR Technology or the LICENSEE Technology prior to the termination of
`this Agreement, whether or not patentable, and which are invented, developed,
`discovered or otherwise acquired by LICENSOR and which LICENSOR may
`lawfully communicate to LICENSEE.
`
`"LICENSOR Markets" means all uses for the LICENSOR Technology and the
`LICENSEE Technology other than in the LICENSEE Markets.
`
`issued to
`“LICENSOR Patents" means ali of LICENSOR's patents (whether
`LICENSOR or controlled by license rights or otherwise and whether such rights are
`held alone orjointly with others, and patents pending now,or during the term of this
`Agreement,
`issued to LICENSOR (by any country)
`relating to the LICENSOR
`Technology, including, but not limited to, those patents and those patents pending
`described on Exhibit A and any continuations, continuations-in-part, divisions,
`registrations, confirmations, reissues, renewals or extensions of term thereof.
`
`"LICENSOR Products" means any product manufactured and/or sold or distributed
`by LICENSOR or a sub licensee of LICENSOR under any claim contained in the
`LICENSEE Patents.
`
`"LICENSOR Property" means LICENSOR Patents, LICENSOR Improvements and
`LICENSOR Technology.
`
`"LICENSOR Technology’ means LICENSOR's unpatented technology and
`information now existing and relating to, and embodying LICENSOR's experiencein
`electrolytic hydralysis of water. LICENSOR Technology shail include the technical
`information in all current and future manuals, formulae, specifications, test data and
`procedures, flow charts, apparatus plans, drawings, designs and other information
`actually communicated by LICENSOR to LICENSEE during the term of this
`Agreement, whether contained in documentary form, electronic medium or
`communicated as a result of LICENSOR imparting the same directly or giving
`LICENSEE accessto any of LICENSOR's production facilities.
`
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`
`“Effective Date” has the meaning setforth in the preambie.
`
`"LICENSEE Documents” has the meaning set forth in Section 2.7.
`
`“LICENSEE improvements" means all developments LICENSEE may makein the
`LICENSOR Technology or the LICENSEE Technology prior to the termination of
`this Agreement, whether or not patentable and which are invented, developed,
`discovered or otherwise acquired by LICENSEE and which LICENSEE maylawtully
`communicate to LICENSOR.
`
`"LIGENSEE Markets" means those markets for Licensee Praducts as are
`described in Exhibit B attached hereto.
`
`issued to
`"LICENSEE Patents" means all of LICENSEE’s patents (whether
`LICENSEEor controlled by license rights cr otherwise and whether such rights are
`held alone or jointly with others) which may after the effective date of this
`Agreementbe issued (by any country) relating to electrolytic hydrolysis of water and
`any continuations, continuations-in-part, divisions,
`registrations,
`confirmations,
`reissues, renewals or extensions of term thereof.
`
`“LICENSEE Products" means any product manufactured and/or sold ordistributed
`to any party other than LICENSOR by LICENSEEor a sublicense of LICENSEE in
`conformity with the terms of this Agreement,
`including, but not limited fo,
`any
`product which is based on any claim or thing contained in any LICENSOR Property.
`
`"LICENSEE Property’ means LICENSEE Patents, LICENSEE Improvements and
`LICENSEE Technology.
`
`“LICENSEE Technology” means LICENSEE’'s unpatented technology and
`information which LICENSEE may develop relating to, and embodying LICENSEE’s
`experience in, the manufacturing, the processing, quality control, and sale of the
`LICENSEE Products. LICENSEE Technology shail include the technical information
`in all manuals, formulae, specifications, test data and procedures, flow charis,
`apparatus plans, drawings, designs and other information actually communicated
`by LICENSEE to LICENSOR during the term of this Agreement, whether contained
`in documentary form, electronic medium or communicated as a result of LICENSEE
`imparting the same directly or giving LICENSOR access to any of LICENSEE's
`production facilities.
`
`"Territory" means the world,
`
`Page 671
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`ARTICLE 2
`MARKETS AND LICENSING
`
`2.1. Exclusive Markets. The parties agree that unless properly terminated by
`LICENSOR pursuant to Section 5.1 below, LICENSEE will have the exclusive right to
`exploit the LICENSOR Property and the LICENSEE Property in the manufacture, use and
`sale or otherdistribution of LICENSEE Products in the LICENSEE Markets in the Territory.
`The parties further agree that LICENSOR will have the exclusive right to exploit the
`LICENSOR Property and the LICENSEE Property in the manufacture, use and sale or
`other distribution of LICENSOR Products in the LICENSOR Markets in the Territory.
`LICENSEE may not, directly or indirectly, distribute in any manner any product which
`competes with the LICENSEE Products in any manner nor may LICENSEE assist or have
`any interest
`in any third party distributing any such products through licensing or
`assignment of technology to any such third party or by any other means.
`
`2.2. Exclusive License to LICENSEE, Subject to the terms and conditions of this
`Agreement, LICENSOR hereby confers upon LICENSEE the sole and exclusive license,
`with the right of sublicense, under the LICENSOR Property, to make, have made, use and
`sell the LICENSEE Products in the LICENSEE Markets in the Territory and to prevent
`infringement of the LICENSOR Patents, and to prevent unauthorized use and disclosure
`of the LICENSOR Technology in connection therewith. No license is conferred hereby to
`make, have made, use and sell articles which are not LICENSEE Products.
`
`2.3. Exclusive License to LICENSOR. Subject tc the terms and conditions of this
`Agreement, LICENSEE hereby confers upon LICENSOR the sole and exclusive, royalty-
`free license, with the right of sublicense, under the LICENSEE Property, to make, have
`made, use and sell the LICENSOR Products in the LICENSOR Markets in the Territory
`and to prevent infringernent of the LICENSEE Patents, and to prevent unauthorized use
`and disclosure of the LICENSEE Technology in connection therewith. No ilicense is
`conferred hereby to make, have made, use and sell articles which are not LICENSOR
`Products.
`
`2.4. Product Markings. The Parties shail insure that all LICENSOR Products
`and all LICENSEE Products are marked with any applicable patent number and all
`labeling and other product information shall be marked in such manner as to conform with
`the patent laws and practices of the country of sale.
`
`2.5 Transfer of Technology by LICENSOR.As promptly as practicable after
`the execution of this Agreement, LICENSOR shall deliver to LICENSEE all information
`conceming the LICENSOR Property. LICENSOR also promptly shall deliver to LICENSEE
`all future information i acquires concerning the LICENSOR Property. All documentary
`information so delivered or any documentary information following non-documentary
`disclosure by LICENSOR,
`shall be referred fo as “LICENSOR Documents”. LICENSEE
`shall
`receive, use, maintain,
`restrict access to or copying of, and safeguard the
`LICENSOR Documents in such manner as to maximize the value of the LICENSOR
`Patents, the LICENSOR Technology and the LICENSOR Improvements; without limiting
`the generality of the foregoing, LICENSEE shall, and shail cause its employees and
`
`Page 672
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`
`representatives to, use reasonable care to prevent unauthorized access to, copying, use,
`publication, disclosure or other dissemination of the LICENSOR Documents. Upon 10
`days advance notice and at reasonable times, LICENSOR shall permit LICENSEE access
`to its technical personnelat its offices or at such locations as is mutually agreed upon by
`the Parties. During such visits,
`technically competent personnel will be provided by
`LICENSOR to answer fully such questions as LICENSEE may have with a view to
`transferring the LICENSOR Property. Nothing in this Section 2.6 shall require LICENSOR
`to disclose to LICENSEE any technological information which it does not own or that is
`otherwise subject to restrictions on use or disclosure.
`
`2.6. Transfer of Technology by LICENSEE.As promptly as practicable after
`LICENSEE develops, discovers or otherwise comes inte possession of LICENSEE
`Patents, LICENSEE Improvements and/or LICENSEE Technology,
`LICENSEE shail
`deliver to LICENSOR all information concerning same. All documentary information so
`delivered or any decumentary information following non-decumentary disclosure by
`LICENSEE,
`shall be referred to as “LICENSEE Documents.” LICENSOR shall receive,
`use, maintain, restrict access to or copying of, and safeguard the LICENSEE Documents
`in such manner as to maximize the value of the LICENSEE Patents, the LICENSEE
`Technology and the LICENSEE Improvements; without
`limiting the generality of the
`foregoing, LICENSOR shall, and shall cause its employees and representatives to, use
`reascnable care to prevent unauthorized access to, copying, use, publication, disclosure
`or other dissemination of the LICENSEE Documents. Upon 10 days advance notice and at
`reasonable times, LICENSEE shall permit LICENSOR accessto its technical personnelat
`its offices or at such locations as is mutually agreed upon by the Parties. During such
`visits, technically competent personnel will be provided by LICENSEE to answerfully such
`questions as LICENSOR may have with a view to transferring to LICENSOR the
`LICENSEE Property. Nothing in this Section 2.7 shall require LICENSEE to disclose to
`LICENSOR any technological
`information which it does not own or that
`is otherwise
`subject to restrictions on use or disclosure.
`
`2.7. Further Prosecution of Patents. LICENSOR will continue with the prompt
`prosecution of all pending patent applications filed by LICENSOR as detailed on Schedule
`“A’, so long as it is commercially reasonable to do so, and LICENSOR will periodically
`advise LICENSEE ofthe status of such prosecutions. As soon as practical, the Parties will
`confer
`to determine the countries for which the Parties desire protection for
`the
`LICENSOR Patents.
`In the event that LICENSEE files an application for a patent(s)
`covering electrolytic hydrolysis of water, LICENSEE will periodically advise LICENSOR of
`the status of the prosecution of any such patent. As soon as practical after any such
`application by LICENSEE, the Parties will confer to determine the countries for which the
`Parties desire protection for the LICENSEE Patents. From the date of this Agreement,all
`expenses incurred in filing for and maintaining protection in those countries mutually
`agreed upon (other than expenses of prosecuting the original patent application in the first
`jurisdiction, which will be the responsibility of the Party filing the patent application) will be
`shared equaily by the Parties. Either Party may seek protection in any country not mutually
`agreed upon by paying the full amount of the cost thereof. A party seeking such additional
`protection will receive the full cooperation of the other Party (other than in paying the
`expenses thereof) in protecting all patents in any such other country.
`
`Page 673
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`2.8. Additional Covenants. Each of LICENSOR and LICENSEE shall faithfully
`comply with their respective obligations under this Agreement and shail incorporate all
`terms and conditions required by this Agreement in any contracts with third parties to
`whom access to the LICENSOR Property or the LICENSEE Property, as the case may be,
`may (but only in accordance with this Agreement) be given. Each of LICENSOR and
`LICENSEE shail
`indemnify and hold harmless the other Party and its successors and
`assigns from any injury, loss, or damage of any kind or nature, or any other liability sought
`to be imposed on such Party, and arising out of or in connection with or resulting from the
`marketing, sale or use of the imdemnifying Party’s product(s), including any advertising or
`other promotional activities related thereto.
`
`2.9. Infringement Actions. Neither LICENSOR nor LICENSEEwill have any
`responsibility to the other Party for any damage or expense incurred by such other Party
`which arises from any action, claim or cause of action brought by any person as the result
`of any alleged patent infringement or trade secret misappropriation by reason of such
`other Party's manufacture, use or sale of any product under anyof the licenses conferred
`hereby.
`
`2.10. LICENSEE’s Rights in Event of Third Party Infringement. LICENSEE
`shall have the right,
`in LICENSOR's name(if required by law, otherwise, in LICENSEE’s
`name) but at LICENSEE’s sole expense, to sue third parties in the LICENSEE Markets for
`infringements of
`the LICENSOR Patents and misappropriation of
`the LICENSOR
`Technology and unpatented LICENSOR Improvements, and LICENSOR shail, but at
`LICENSEE's expense for LICENSOR's direct associated expenses, fully and promptly
`cooperate and assist LICENSEE in connection with any such suit. LICENSEE shall
`promptly reimburse LICENSOR forsaid suit-associated direct expenses upon presentation
`of LICENSOR's itemized statement therefor. LICENSOR may,
`if it so elects, join in any
`such suit as a plaintiff. All damages, awards or settlement proceeds in such suit shall be
`LICENSEE's.
`lf LICENSEE, after notice from LICENSOR of an alleged infringement or
`misappropriation, shall within 90 days fail to institute suit, LICENSOR,in its own name(or,
`if required by law,
`in its and LICENSEE’s name) and at its own expense, may sue
`therefore, and LICENSEE shall, but at LICENSOR's expense for LICENSEE'’s direct
`associated expenses, fully and promptly cooperate and assist LICENSOR in conne