| PLAINTIFFS i EXHIBIT II TO-5351
THIS AGREEMENT by and between J. W. ROBERTS LIMITED, 'Whose head office is located at CHORDS? NS7f ROAD, HGRWICH, BOLTON, in the COUNTY OF LANCASHIRE, ENGLAND (hereinafter called "the Company") of the-one part and ARMSTRONG CONTRACTING AND SUPPLY CORPORATION, whose head office is located .'at 120 NORTE LIES STREET, LANCASTER., PENNSYLVANIA, in the UNITED STATES OF A2HRICA (hereinafter called "the Licensee") of the ether part.
< WITNESSETE THAT: WHEREAS, the Company is the owner of Unired States Patents Nos. 2,604,068, 2,604,416 and 2,564,244 relating to methods of forming coating's by spraying mineral fibers on .. to the surface .-to be coated and also relating to machines for use in forming a suspension of such fibers and in spray ing such coatings, and WHEREAS, the Licensee desires to form coatings of specially blended asbestos fibers by such process .and with the use of the machines of the kind aforesaid for all pur poses. w NOW, THEREFORE, the parties have agreed as follows: 1. The following terms as used herein shall have the following meanings: (a) . "the territory" shall mean the United States of America, its territories and possessions, the Panama
EXHIBIT 12
Canal- Zone ana the Commonwealth of Puerto Pico. (b) "the process" shall mean the process for
forming coatings (for insulation, acoustical, fire proofing or other purposes) by spraying mineral fibers onto the surface to be coated more fully described in United States Patent No. 2,6G4,416, but only to the extent such patented process relates to coatings formed by spraying specially blended asbestos fiber.
(c) "the machines" shall mean machines designed by the Company to carry out the process and patented by United States Patents Kos. 2,5C4,08 and 2,554,244...
2. In consideration of the covenants and agreements by the Licensee hereinafter contained the Company hereby grants unto the Licensee while- this Agreement remains in operation the exclusive rights and license to use and operate the process in the territory for the purpose of forming coatings cf all descriptions produced by the use cf specially blended asbestcs fibers, and for such purpose the Company grants unto the Licensee the exclusive right and license to use the machines which are rented by the Company to the Licensee as hereinafter mentioned. The Licensee shall have the right to appoint Sub-Licensees.
3. The Company will rent to the Licensee the machines all in first-class running order capable cf former
a suspension of and spraying specially "blended asbestos on the following* terms, such rental to begin to accrue cn January 1, 1963: for each "HA" type machine and variants thereof, $140.00 per annum; for each "Kn type machine, $210.00 per annum; and for each MJn type machine, $250.00 per annum.
The Licensee may sublease any or all of the nachir. to Sub-Licensees appointed in accordance with the previsions of this Agreement.
The Company undertakes to deliver any machines Supplied from Great Britain in good working order, last Ccas of. the United States pert, at the Company's expense, and the Licensee will be -entitled to debit the Company wi"h the customs duty payable cn such machines. The above-mentioned rentals will apply to all machines in active use in the terr tory, whether in the possession of the Licensee or in the possession of Sub-Licensees; provided, however, that if Sub-Licensees return to the Licensee from tine to time machines surplus to the Sub-Licensees1 requirements, these machines shall not involve the Licensee in an obligation for rental from 'the time of receiot by the Licensee until they are issued or reissued by the Licensee to Sub-Licensees or put into active commission by the Licensee. The minimum period*of rental shall be three (2) months, and any lesser period for which a machine shall be used by a Sub-Licensee
shall be charged as though such use were for three months. In consideration of the responsibilities involved in super vising ar.d operating the distribution of the jsAchir.se to the Sub-Licensees, the Licensee will be entitled tc deduct ten percent (1C) of the rental covering the tine such nachir.es are rented frcn Licensee by Sub-Licensees. For the purposes of this subparagraph of Clause 3, all present and future district and branch offices of the Licensee shall be consid ered Sub-Licensees.
4. The rental of the machines does not cover any equipment required in connection with their operation ether than the electric motor and the ccnbined water 'et ant fiber nozzle with pneumatic clutch control, and the licensee shall at its cT/n expense provide the necessary source cf ccntresse air and other ancillary equipment.
5. The Licenses, shall bear the risk of any loss cf or damage to the machines by fire, theft or any cause whatsoever, reasonable wear ar.d tear excepted.
S. The Licensee undertakes at its ct-t. exoer.se to keep the said machines in gcod working condition and cc otherwise agreed frem --a to time by the Company
purchase all replacement ^** 2 w wC essential tc the prep^
operation of the machines iron the Company. The Company undertakes to supply on request such replacement parts at appropriate prices. The Licensee undertakes not to make
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or permit any`codification in the design of the cachines ex cept as agreed in writing with the Company, nor to cause or permit the removal, defacement or alteration in any way of the name plates fitted to the machines by the Company and to see that such name plates remain properly secured to the machines.
The Licensee undertakes not to use the machines to spray any specially blended asbestos fibers or any special surfacing materials supplied by others than the Company until the Company has had an opportunity to examine and test such fibers or such materials and to make any reasonable objections to the-use of such fibers or such materials with the machines, and for such purpose the Licensee shall supply the Company cn request with samples of such fibers or of such materials.
The' Company at its own expense shall be entitled by its duly authorized representatives or agents at all reason able times to inspect the machines for the purpose of examin ing their condition, but such inspections shall only be by previous arrangement with the Licensee and alv,*ays in the company of a representative or official of the Licensee.
7. The Licensee will use its best efforts to insure that the operation of the machines is undertaken only by crccerly trained' and efficient personnel. Without cost to the Com pany, Licensee will arrange for its operators and the operators of its Sub-Licensees to be giver, adecuate training bv periodic training courses to be held in convenient centers, anit will provide a supervisor in the field to., carry out this fur.c
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8. The Licensee undertakes to return "he nachines to
the Con?any in good working order, caking allowance for reason
able wear and tear, f.o.b. East Coast of the united States tort on the tersination of this Agreement for whatever reason. The
Company also reserves the right to call at any tine during the
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tern of this Agreenent fcr the return of cne or ncre specified
nachines rented to the Licensee. In such an event, ail
freight and insurance charges Trill be paid by the Ccntany,
and the Conpany will, if so requested, nake available to the
Licensee a replacement machine or nachines.
9. 7hile this Agreenent or any extensions thereof
are in effect or notwithstanding the termination cf this Agree
nent during the currency cf the patents for the machines and
until all nachines leased to the Licensee hereunder have been
returned to the Company cr otherwose lost cr destroyed, the
Licensee undertakes not to nake cr cause or permit to be made
any copy cr copies of the patented nachines. If the Licensee
obtains any information with regard to the rakinr cf anv cctv
cr ccpies of the patented nachines it shall fcrthwith com
municate such information to the Company.
1C._ The Company is the owner of the tradenark '
S.*calil '
d" ASc^STOo fcr certain asbestos products :se-
ful for thermal insulation, fireproofing and acoustical centre!;
and owns united States Registration No. 440,40c granted with respect tc said mark on August 31, 1948.
The Company hereby grants to the Licensee the ncr.-
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exclusive right to use the trademark SPRAYED
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upon cr in connection with certain asbestos products, said use
subject to the terns, provisions and conditions of this Agreene (a) The said Tradenark shall only be used in re
lation to asbestos produces nade from certain specially
prepared and blended asbestos fibers supplied by the
Company under the tradenark "LIHPZI", provided such as
bestos products strictly comply with specifications set
up by the Company, under subparagraph (e) hereof, to the
end that the quality cf the products nade by or for the
Licensee shall be equal to that of the corresponding
products nade by the Company.
(h) The Company cr its authorized representative
shall have the right tc inspect, at ail reasonable tines,
the method of manufacture or application and the finished
products upon which the said Trademark will be used, and
Licensee agrees to submit samples to the Company for
examination and testing a t the Company's request. (c> Licensee shall submit to the Co npary for ap
prcval the fern and manner in which Licensee prcpcses
to use the said Trademark on cr in reference to said
asbestos products $ such submission shall include in
voices, labels, advertisements and other material bear
ing the said nark and shall'be nade and arcroved t r*'c" to actual use or display of the mark.
(d) Licenses-will forthwith cease asy tse cf the
said Trademark or of any natter therewith, ar.d any
use of any other trademark in connection with said
asbestos products, to which the Coupany nay'object and
which nay diminish the distinctiveness of the licensed
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Company.
Ce) The Company will supply to Licensee written
specifications and standards governing the quality,
workmanship, and properties of the asbestos products
to be marketed under or by reference to the said Trade
mark and also governing the form and manner in'which
the said Trademark may be used by licensee, either on -
cr in reference to asbestos products produced under
this Agreement. All such standards and specifioations
shall bV 6- .-*-j hful"l, y observed by licensee. The.Compan;
may vary such specifications and standards from tine
to tine or. 60 days written notice.
(f; It is understood and- agreed that this license
does not convey to Licensee any title or right of owner
ship in cr to the said Trademark or ar.v reel str at ions
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hereof. The Licensee specifically recognises the
Company's title and ownership in and to the said TrademA mark and shall not, at ar.y time, do cr suffer tc be done,
any act or thing which will in any way diminish cr impair
the
s of and to the saiW4S W s uy Oi# ,**
Trademark, or in *nd to the Company's trademark
L.`rVPM=BA*.'' | CUl~U W4A4is covenant ?<mH ccr*.9 o 0*
observed after the termination of this license.and
shall be binding c:n any successors cr assigns cf the
Licensee.
(g) Upon te:ninaticr. cf this Agreement, Licensee
agrees net to use mhe said Trademark or a confusingly
similar name or msLrk, in relation to any gcccs, unless
authorised by the Company, in writing, to do so.
(k) In any I.egal action, or administrative pro-
cseeing, invclvins; WV --* ic
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:s.irr -vor-'ir-------- -- p__ -v Licensee agrees that it rill,
at the Company1s =imper.se, render ail reasonable
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cr cecczss necsss=.ry to make a public record cf the
Licensee's right ::o use the licensed mark, Licensee
rill complete any document reasonably necessary and
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one stanoards and requirements
demanded by the Co mpar.y, either as to the production
of the asbestos or educes or the manner of use cf the
said Trademark, have net seen observed. Licensee
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shall discontinue any and all use cf the said Trademark imeciately upon receipt of written notice cf withdrawal of the right to use the sane.
(j) Licensee nay not assign the benefit and/or , burden hereof without the written consent cf the Ccupar.y first obtained. Licensee nay, however, grant to third persons to when a sub-license to operate the process and the nachir.es as provided in Clause 12 hereof has been granted a sub-license of the right to use the said Tradenark by written instrurer.z binding the Sub-Licensee to the sane terns, previ sions and conditions as apply zc the Licenses wizh respect to the use of the Tradenark, and in such cases. Licensee will use izs best efforts zo see ZhaZ its Sub-Licensees ccnply with the terns and ccndizicns hereof.
11. The Conpany urderzakes to sell to the Licensee (sc far as the sane are fren tine to tins available) all the specially blended asbestos fibers (suitable for use in the nachir.es and for the use of which the nachines have been designed) and ail the special surfacing naterials which the Licensee nay from tine to tine recuire for use in ferning ccazir-gs with the nachir.es ir. accordance with zhe process, such asbeszes fibers and surfacing naterials to be sold at such prices as are fron tine to tine agreed bezweer. the
parties. Payment for the said asbestos fibers and the said
surfacing materials shall be made on a C.I.F. basis 30 days
from the date of the invoice involved, subject to detailed
accounting arrangements which v/ill be agreed upon separately
between the parties,
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T>*~ * ^ emain the property of the Com; *. j ieW**t Licensee shall
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notices to the effect that the machines are the orotertv r-'
the Company. Any loss in respect of the machines caused by
licensee's failure to carry cut the terms of this paragraph
ana s the licensee.
13. The Licensee sna^j. na/e ..is r.gii* c appc*n Sub-licensees, subject to the confirmation cf each Sub licensee by ahe Coup any, and to sublease any cf the machines to such Sub-liicensees on terns, approved by the Company. Tv.*c copies cf <each Sub-license granted by the. licensee shall be supplied to the Company. Companies which, on July 31,
unless they re:quest otherwise, be granted Sub-licenses by
the licensee c:a substantially the sane terns as those ir.
their agresmeu: with Xeasbey : Uattiscn Company (subject
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T*AA-e9 '4licensee shall also have the rignt. or. terns
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sa &2&^reements with industrial ccnpanies under which
5ec-4.-- -. _w &... c--s can operate the patented machinery and practice
Va*S #ta*WCW arecess wit.tin tr.eir c.. plants.
14. All inventions and imtrcvener.ts name during
w6 . m 0 a *is Agreement which are patented in the United
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W*Ca <"licensee cr its employees and which are deni-
A..*6A ^WACaAa JaAA ^w^AileA m .:n?any patents, United States Patents Ucs.
2 jOUh^ wOw j wV14,416 and 2,364,244, shall be licensed tc
the Coupany. The license shal 1 be
free license with the right to Cl
temirate on the expiration of the 15. Except as otherrise
Agreement shall regain in operation fcr a perish cf five
years frcs August 1, 1962, and (unless teminated at the
end of such five-year period 'ey twelve calendar norths 1
notice in v.Titing by either party) shall continue thersaft*
frer year to year until teminated at -any tine by either
party giving to the ether twelve calendar norths' previous
notice in vrriting; provided, however, that this Agreenent
shall not renair. in operation after the expiration cf
United States Patents Ucs. 2,04,CSS and 2,604,415.
16. This A*g* reenent shall also be ceruinabie b*v the Ternary
(a) Cn a substantial breach by the Licensee
cf any cf the stipulations herein contained, such
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thirty (30) days after the dispatch by the Corpary
to the Licensee cf vrritten notice cf such breach if
'the breach is not renedied during such thirty-day
oerioc.
(b)
On the Licensee beccnir.g in any vray incapa
citated fcr doing business, such ternir.ation tc take Cl feet at once cn notice being given by the Ccrpary
to the Licensee
(c) -If the Licensee in connection ?ntn its perforuance hereunder' willfully adepts any policy or course of conduct which in the opinion of the Ccrpany results in injury to the business of the Centany or seriously prejudices the Cent any1 s good Trill and re fuses to abandon such policy or course of conduct when requested so to do by the Centany, such terninaticn to take effect at the expiration cf thirty (SC) days after the dispatch of such request by the Centaur if the latter is not conplied with during such thirty-day period.
(d) On the bankruptcy or insolvency cf the Licensee or upon the attcintusnt cf a receiver cf any cf its assets or on the nakirg cf any arrangenent for the benefit cf its creditors or if the licensee shall adult in writing its inability to pay or nest its debts as they nature or shall cease to carry on business.
17. The Coupany shall, at its own expense, save and hold the Licensee harnless against danages and costs re covered in any suits or chains brought against the licensee for alleged infringenent of patents based upon the use of the na chines. The Licensee shall pronptly inf cm the Conpany cf any such suit or clain or any threat or probability -aereof, coning to whs knowledge 01 tne licensee. The Con-- pany shall, upon the written request of the licensee, defend any'such suit or clain unless or until the Conpany shall elect
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to effect a settlement thereof. The Company, or one of its affiliates, shall have the right to take exclusive charge of the defense of any such suit or claim through attorneys of its ovm selection. In the event the Company takes ex clusive charge of the defense, the Licensee shall make available to the Company or such affiliate any relevant records, papers, information, samples, and the like and the testimony of its employees and shall, at the Company's expense, cooperate in such defense as requested by the Com pany cr such affiliate.
In the event the Licensee should learn of any infringement of the patents referred to in the recitals '-ereof. the Licensee shal1l call the icmpany's a
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able evidence of infringement. In any such infringement
suits as the Company may determine to institute to enforce
such patents, the Licensee agrees at the request and expense
of the Company reasonably to cooperate ffith the Company to
have any of the Licensee's employees testify then requested
S v*..s ^Ou.p&ny, and v#o maas a&a>.a`oj.e to tne Company any
relevant records, papers, information, samples and the like.
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Should any injunction issue against licensee
c- -ts ouo-i-icensees prohiciting the continued use c1 f m
machines, Licensee shall have the option of terminating
tnis agreement immediately ana returning to the Company
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all cachines as well as-all parts, supplies and raw naterials
atollcable to the cachines and pur::hased frcn the Conpany
which in the Company's opinion are in good and usable con
dition. The Conpany shall issue to licensee the necessary
refunds.
'18. The Licensee shall :
Conpany harnless froa and against ny ana a^. c^aans, actions,
suits, judgments, expenses, costs, and attorney fees cn
account of death of or injury to any person or persons, or
danare to property or for any oohe:
in any way connected with the Lice:isee's use or possession
cf the nachines or any suppienenta:y ec uitnent.
19. The Licensee shall <
responsible for determining the su..tability cf the use cf
the nachines and process for work c*.e .y -- v, <a_c sna__na.se
no clains against the Conpany arisi----w COwlsC
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to the extent that such clains restM* "W
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cations supplied by the Conpany.
20. *ne Conpany snal-- n:; -- w-a w d w W s a A v
failures op delays in making shipn=;ros cr deliTsries' caused
by labor conditions, raw material :W m >0 th w d C j * (j cost, carrier or supplier delays, : 2 } W4* @ cl" M m d & w *
clients, enbargoes, war, insurrecti.cn, governmental regula-
ticns, riot, or other cause boeyonr.dc the Company's control,
and in no event for consequential carnages. The Con?any assunes
no liability for, and rill make no allowance for (a* loss of
, the use of any machine or equipment
er, (b; carnage or. account- cf accidents ^ *< t machine cr machines or equipment
cr any part thereof, or fVtw'sy delays in delivery cr return
of the machines.
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vent any nateri als supplied tc the
are defective the maximum amount cf
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24. Any dispute arising cut of cr relating to this Agreenent shall be referred tc arbitration under the rules of The American Arbitration Association.
IK WITXZSS VfHSKZOF, the parties hereto* have caused this Agreenent to be executed by their duly authorized officers or. the cates set forth belov;..
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a/ " / 57