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Exhibit 10.9
LICENSE AGREEMENT
This Agreement is made as of February 29, 1996, by and between Unifrax
Corporation (formerly named The Carborundum Company), a Delaware corporation
having offices at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
(hereinafter known as the "Licensor"), and Societe Europeenne des Produits
Refractaires, a French company having offices at "Les Miroirs", 18 Avenue
d'Alsace, 92400 Courbevoie (hereinafter known as "Licensee", collectively
"parties").
WHEREAS The British Petroleum Company p.l.c. ("BP") is the indirect
owner of The Carborundum Group and the Licensor, which includes the North
American Ceramic Fibers Division ("NAF") and the patents, and other intellectual
property relating to the world-wide ceramic fibers business presently conducted
by The Carborundum Group and NAF;
WHEREAS Licensee is in the process of acquiring The Carborundum Group
from indirect wholly-owned subsidiaries of BP and has entered into a stock
purchase agreement (the "Stock Purchase Agreement") to that effect, under the
condition, inter alia, that the parties hereto enter into this Agreement; and
WHEREAS, as part of the Stock Purchase Agreement, Licensor shall
license Licensee certain ceramic fibers technology and patents in certain areas
of the world.
NOW THEREFORE, in consideration of the mutual covenants herein
contained, and other good and valuable considerations, it is mutually agreed as
follows:
ARTICLE 1 - DEFINITIONS
1.01 In this Agreement, unless the context otherwise requires, the
following terms shall have the following meanings:
a) "Effective Date" means the date this Agreement is executed by
all the parties hereto.
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b) "Territory" means the world, excluding the United States (and its
territories), Canada and Mexico.
c) "Licensed Products" means the goods produced from ceramic fibrous
material that (i) are being or have been manufactured by The
Carborundum Group in the Territory as of the Effective Date,
which products are listed in Appendix A, such list being
illustrative and not limitative, and (ii) are goods that are or
have been, as of the Effective Date, manufactured, sold or
developed suitable for commercial exploitation by Licensor that
would replace any goods licensed under (i) above, such as
Anchor-Loc 2. Licensed Products specifically excludes products
that are distributed according to the Distribution Agreement and
XPE.
d) "Licensor's Patents" means those patents and patent applications
in existence as of the Effective Date and any future patents or
patent applications claiming priority from such patent or patent
applications, which are owned or controlled by the Licensor in
the sense of having the right to grant licenses thereunder
without accounting to others, which patents would be infringed by
the manufacture, use or sale of the Licensed Products.
e) "Confidential Know How" means that technical information and
trade secrets of a party, such as data, formulae, sketches,
operating data, drawings, reports, techniques and other
information that is not, as of the Effective Date, generally
known or easily accessible to third parties, provides a
commercial advantage in its use in relation to the Licensed
Products, and is necessary for the manufacture, use or sale of
the Licensed Products, which such party has the right to disclose
without accounting therefor to others.
f) "Licensed Technology" means the Licensor's Patents, the
Confidential Know How, and all non-confidential technical
information necessary for the manufacture, use or sale of the
Licensed Products.
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g) "Improvements" means modifications, changes or additions made to
the Licensed Technology that are commercially utilized by the
Licensor, or its Affiliates and are developed after the Effective
Date. Modifications, changes or additions, to be considered an
Improvement, are those modifications, changes or additions that
are directly related to the Licensed Products, and do not result
in significantly changing the basic characteristics or operation
of the Licensed Product or, with respect to the method of making
the Licensed Product, do not significantly alter the basic
processing steps utilized to manufacture the Licensed Product, as
such steps exist as of the Effective Date.
h) "Affiliate" means any company of which a party hereto now or
hereafter owns or controls, directly or indirectly, at least 50%
of the stock having the right to vote for directors thereof. For
the purpose of this definition, the stock owned or controlled by
a particular company shall be deemed to include all stock owned
or controlled directly or indirectly by any other company of
which that particular company owns or controls, directly or
indirectly, at least 50% numerically of the stock having the
right to vote for directors thereof. When used in connection with
Licensor, the term "Affiliate" shall also include any company
while it directly or indirectly controls the Licensor, including
The British Petroleum Company p.l.c., a corporation of England,
and all affiliates of that company. When used in connection with
Licensee, Affiliate shall also include any company while it
directly or indirectly controls the Licensee, including Compagnie
de Saint-Gobain, and all affiliates of that company.
i) "Agreement" means this License Agreement.
j) "Product Distribution Agreement" means the agreement of even date
herewith for distributing certain products, entered into by the
parties hereto.
k) "XPE" means expanding mat containing ceramic fiber and at least
twenty-five percent (25%) by weight vermiculite, that is used for
catalytic converters.
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l) "The Carborundum Group" means "NewCo", as defined in the Stock
Purchase Agreement, and Carborundum Ventures Inc. ("CVI"),
Carborundum Resistant Materials Ltd., Carborundum Realty Pty.
Ltd., The Carborundum Company Limited, Carborundum Belgium, S.A.,
Carborundum Holdings Ltda., Carborundum do Brasil Ltda.,
Carborundum Caribbean, Inc., Carborundum Textil Ltda.,
Carborundum Deutschland GmbH., and Carborundum Technical Ceramics
GmbH., and their subsidiaries, excluding in each case all assets,
employees, activities, liabilities or obligations relating to
NAF, and excluding the assets and liabilities of (but not CVI's
equity investment in) Toshiba-Monofrax Co., Ltd.
m) "Licensor" means Unifrax Corporation, an indirect wholly owned
subsidiary of The British Petroleum Company p.l.c., which owns,
as of the date hereof, NAF, including the legal or equitable
ownership of patents and other intellectual property relating to
the ceramic fibers business of The Carborundum Group.
n) "NAF" means the ceramic fibers business of the Licensor, located
in the United States (and its territories), Canada and Mexico.
o) "Non-Compete Agreement" means the non-compete agreement entered
into among SEPR, BP and Licensor and effective the date hereof.
ARTICLE 2 - GRANT AND ASSIGNMENT
2.01 Licensor grants, as of the Effective Date, and subject to the
outstanding exclusive grants in Japan and South Africa, a royalty-free
license under the Licensor's Licensed Technology to make, use and sell the
Licensed Products in the Territory, and to sell Licensee's products using
Licensed Technology, subject to the terms and conditions of this Agreement.
2.02 The License granted in this Article 2 shall include the right to
grant sublicenses of the Licensed Technology within the Territory,
providing that, for a period of [ * ] from the Effective Date, the party
receiving such sublicense [ * ], said sublicense to be effective only for
so long as [ * ]
* Brackets indicate confidential material omitted and filed separately
with the S.E.C.
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[ * ]. No other sublicense rights are granted herein. This Article does
not preclude partial assignment as allowed under Article 13.
2.03 Licensor agrees, for a period of 20 years from the Effective
Date, or until termination of this License Agreement, not to grant any
further licenses under the Licensed Technology to make, use and sell the
Licensed Products in the Territory, except to Affiliates of Licensor, said
sublicense to be effective only for so long as they remain an Affiliate of
Licensor. Subject to the Non-Compete Agreement, Licensor is free to make,
use or sell Licensed Products or use Licensed Technology in the Licensed
Territory.
2.04 To the extent that it is legally entitled to do so, and subject
to the acceptance, if required, of existing licensees, Licensor agrees to
assign to Licensee, effective as of the Effective Date, the Technical
Assistance agreement dated April 1, 1970, and amendments and extensions
thereof, between Licensor and Toshiba-Monofrax Company, Ltd and the
Technical Service and license agreement dated January 1, 1981, and
amendments and extensions thereof, between Licensor and
Carborundum-Universal S.A. (Pty) Ltd., both of which agreements pertain to
ceramic fiber. Licensor herein grants to Licensee such license necessary to
enable Licensee to fulfill its obligations under said assigned agreements.
This license shall be valid only for the current term of each such
agreement, without renewal or extension, and only applicable to said
agreements. Thereafter, Toshiba-Monofrax and Carborundum-Universal S.A.
shall, for purposes of grants under Article 2.02 of this Agreement, be
considered Affiliates of Licensee. Licensee shall be responsible for
providing technical and engineering service to Toshiba-Monofrax and
Carborundum-Universal S.A. in accordance with the above-mentioned
agreements.
ARTICLE 3 - IMPROVEMENTS
3.01 For a period of five years after the Effective Date, Licensor
grants to Licensee a, royalty-free license for the Territory to all
Improvements made by Licensor.
3.02 Licensor agrees for a period of 20 years from the Effective Date,
or until termination of this License Agreement, not to grant any further
licenses under the
* Brackets indicate confidential material omitted and filed separately
with the S.E.C.
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Improvements to make, use or sell the Licensed Products in the Territory,
except to Affiliates of the Licensor.
3.03 The term of the licenses granted under this Article 3 shall be
for the longer of the period of any Patent relative to such Improvement or,
with respect to Improvements of Confidential Know-How, the period during
which said Confidential Know-How remains out of the public domain.
3.04 Information relative to Licensor's Improvements received by the
Licensee shall be kept confidential as required by Article 6 of this
Agreement.
ARTICLE 4 - TECHNICAL AND ENGINEERING SERVICE
4.01 For the implementation of the Licensed Technology and
Improvements, it is understood that Licensee will require certain technical
services from Licensor, such as the receipt of certain technical
information and data, the benefit of the services of certain technical
personnel, and general technical assistance. Licensor shall provide such
technical services and the services of technical personnel as are mutually
agreed by the parties to be necessary for as long as Licensee has paid the
yearly service fee in Article 4.02. Both parties recognize that the
services of such personnel shall consist principally of consultation and
technical advice by phone or at Licensor's site in connection with the
manufacture of the Licensed Products, or the sending of available written
technical information upon Licensee's request. If such services are
required at Licensee's site, such services shall be limited to no more than
two man-weeks total in any one calendar year. Licensee shall reimburse
Licensor per Article 4.05 for such site visit.
4.02 For a period of five years from the Effective Date, Licensee
agrees to pay Licensor a yearly service fee of [ * ]. Such fee shall
remunerate Licensor for the technical assistance as provided by Article
4.01; such fee shall be due thirty (30) days after the Effective Date and
each year thereafter on the anniversary of the Effective Date, through the
five-year period.
4.03 Payment to Licensor shall be as set forth in Article 10.
4.04 For a period of five years after the Effective Date, Licensor
agrees to provide engineering service to Licensee or its Affiliates for
specific projects such as plant designs or engineering services outside of
the scope of routine technical
* Brackets indicate confidential material omitted and filed separately
with the S.E.C.
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assistance. Such engineering service shall be at the reasonable convenience
of Licensor. The manpower cost shall be a per diem rate of U.S. $890 per
man-day.
4.05 If the services provided by Licensor requires Licensor's
personnel to travel to Licensee's or Affiliate's locations, then the party
receiving such services shall pay Licensor's reasonable out-of-pocket
travel costs. Such reasonable costs shall be business class air travel and
reasonable business hotel accommodations.
4.06 For a period of five years after the Effective Date, Licensee and
its Affiliates shall have the right to visit Licensor's manufacturing
facilities producing Licensed Products, provided that such visit(s) shall
be limited to no more than two employees of the Licensee or its Affiliates,
for a maximum of two weeks in any calendar year. The parties shall agree on
the length and the timing of such visit(s).
4.07 Licensor agrees that the Licensed Technology disclosed to
Licensee either through technical assistance in Article 4.01 or engineering
service in Article 4.04 shall be that Licensed Technology that is currently
used by Licensor as of the date of disclosure.
4.08 Licensor shall use its reasonable efforts to solve Licensee's
problems and to answer, reasonably promptly, questions raised by the
Licensee.
4.09 For a period of five years after the Effective Date, Licensor
shall hold a yearly technical meeting at its facilities at which it will
disclose all Improvements of Licensor made during that year. Licensee shall
pay the cost of all its employees attending such meeting. Licensee shall
send no more than four employees to such meeting.
ARTICLE 5 - PATENT MAINTENANCE
5.01 Licensor's Patents are identified in Appendix B.
5.02 For a period of five years after the Effective Date, Licensor
shall be responsible for and pay all patent registration/maintenance fees
for the Licensor's Patents in the Territory. Licensor shall be responsible
for the prosecution of all Licensor's Patents in the Territory and shall
have the sole decision to modify the claims thereof and take whatever
action Licensor deems necessary with respect to
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prosecution of such applications. Licensor shall, however, take no actions
that would adversely affect any proceedings under Article 7.05
5.03 If, five years after the Effective Date and thereafter, Licensor
decides not to pay any required registration/maintenance fees for a
Licensed Patent in the Territory, then Licensee shall be given the
opportunity to pay such fees. In such a case, the ownership of such Patent
will be transferred to Licensee and Licensor shall sign all necessary
documents proposed by Licensee to that effect. Licensee agrees to grant to
Licensor, a royalty free, non-exclusive, non terminable worldwide license
to the Patent, with the right to sublicense in accord with Article 2.03.
ARTICLE 6 - CONFIDENTIALITY
6.01 The Licensee agrees:
a) To keep confidential and not disclose to any third party,
all Confidential Know How and information relating to
Improvements received under this License Agreement from the
Licensor, whether received before or after the Effective
Date, except:
1) such of said information as now is or hereafter becomes
published or otherwise generally available to the
public through no act or failure to act of the
Licensee, or
2) such of said information the Licensee can show by
written record was in its possession prior to receipt
hereunder,
3) such of said information which is disclosed to the
Licensee by a third party who did not obtain such
information directly or indirectly from a party under
an obligation of secrecy,
4) such of said information that Licensee can show, by
clear and convincing written evidence, was
independently developed by Licensee without access to
the Confidential Know How.
b) Even after such information becomes generally available to
the public, not to disclose the fact that such information
was furnished to the Licensee by the Licensor unless written
approval is obtained from the Licensor.
c) Not to put to any use, except as expressly licensed herein,
any information Licensee is obligated to keep in confidence
under this Article 6.
6.02 Except for breach of this Agreement under Article 9.03, this
obligation of confidentiality for Licensee and Licensor in Article 6 shall
extend for the term of this
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Agreement. In the event of such breach, the obligation of confidentiality
shall extend for a period of 20 years from the Effective Date and shall
survive the expiration or termination of this Agreement.
6.03 Any Affiliate of a Party that is sublicensed under this Agreement
shall be required to agree in writing to be bound by confidentiality
provisions at least as strict as contained in this Agreement.
6.04 The Licensor agrees:
a) To keep confidential and not disclose to any third party,
all confidential information received under this License
Agreement from the Licensee, whether received before or
after the Effective Date, except:
1) such of said information as now is or hereafter becomes
published or otherwise generally available to the
public through no act or failure to act of the
Licensor, or
2) such of said information the Licensor can show by
written record was in its possession prior to receipt
hereunder,
3) such of said information which is disclosed to the
Licensor by a third party who did not obtain such
information directly or indirectly from Licensee under
an obligation of secrecy,
4) such of said information that Licensor can show, by
clear and convincing written evidence, was
independently developed by Licensor without access to
the confidential information.
b) Even after such information becomes generally available to
the public, not to disclose the fact that such information
was furnished to the Licensor by the Licensee unless written
approval is obtained from the Licensee.
c) Not to put to any use, except as expressly licensed herein,
any information Licensor is obligated to keep in confidence
under this Article 6.
ARTICLE 7 - REPRESENTATIONS, WARRANTIES AND PATENT INFRINGEMENT
7.01 Nothing in this Agreement shall be construed as a warranty or
representation by Licensor as to the validity or scope of any Licensed
Patent or trade secret, or the confidentiality of any Confidential Know
How.
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7.02 To Licensor's knowledge, the current use of the Licensed
Technology, in the Territory, does not infringe any valid patent. No claim
by any third party contesting the validity, enforceability, use or
ownership of the Licensed Technology has been made, is currently
outstanding or, to Licensors' knowledge, is threatened.
7.03 OTHER THAN IN THIS ARTICLE 7, LICENSOR MAKES NO REPRESENTATION OR
WARRANTIES OF ANY KIND WHETHER EXPRESSED OR IMPLIED, BY STATUTORY LAW OR
OTHERWISE WITH RESPECT TO ITS DEVELOPMENT, MANUFACTURE, USE, SALE OR
DISPOSITION OF THE LICENSED TECHNOLOGY PROVIDED BY LICENSOR UNDER THIS
AGREEMENT, AND ANY SUCH WARRANTIES ARE HEREBY DISCLAIMED, INCLUDING ANY
WARRANTABILITY OF VALUE, USE, MERCHANTABILITY OR FITNESS FOR PARTICULAR
PURPOSE.
7.04 If during the term of this Agreement, Licensee shall discern that
one or more third parties are infringing the Licensor's Patents in the
Territory, then Licensee shall promptly report such activity to Licensor,
providing in such report all details concerning the kind and character of
the infringement, and other pertinent information that Licensee may have.
7.05 Upon receipt of such notice, the parties shall meet and confer to
review the matter as soon as reasonably possible. Upon completion of such
review, the parties shall mutually determine that there exists or there
does not exist reasonable likelihood of infringement. If the parties
mutually determine that reasonable likelihood of infringement does exist,
and the parties mutually agree on a course of action to be taken, then all
third party costs associated therewith shall be shared equally, it being
understood that each party shall absorb its own costs. If the parties
cannot mutually decide on the likelihood of infringement or the course of
action, the following options shall be available:
1) The Licensor may take complete charge of the matter in which
event Licensor shall be responsible for all costs associated
therewith. Any recoveries which may be gained in action
commenced by Licensor shall be entirely the property of
Licensor.
2) In the event the Licensor decides not to commence and pursue
an action to enjoin such infringement, Licensee shall be
entitled, at its expense, to
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commence the action in its name and shall be entitled to
name Licensor as a party plaintiff in the event that the
rules then pertaining shall require the naming of the owner
of the Licensed Patents for purpose of such infringement
action. Any recoveries which shall be gained in any such
action commenced by Licensee shall be the property of
Licensee. Licensee shall not be free to settle the same
without the consent of Licensor to the extent such
settlement lessens the rights of Licensor.
ARTICLE 8 - INDEMNIFICATION
8.01 Licensee agrees to indemnify, defend and hold harmless Licensor
and its officers, employees and agents from any and all losses arising as a
result of or relating to:
a) Licensee's performance of the Agreement;
b) Licensee's provision of services, marketing,
developing, manufacturing, or any related activities of
any nature whatsoever arising out of Licensee's or its
Affiliates manufacture, use or sale of the Licensed
Products or Licensed Technology; or
c) any third party and/or Affiliates use of the Licensed
Products or Licensed Technology supplied by Licensee;
except, in each case, to the extent indemnification or defense of Licensor
for such losses is prohibited by applicable law or is otherwise covered by
Article 8.02. Licensee shall in any event be obligated to defend Licensor
against any proceeding or causes of action arising out of the foregoing
activities, and to the extent Licensor has incurred any reasonable attorney
fees or defense cost, Licensee will promptly reimburse Licensor for such
fees and costs provided, however, in the event that it is determined in a
final and nonappealable judgment by a court of competent jurisdiction that
such obligation of defense was prohibited by applicable law, Licensor shall
reimburse Licensee for such defense costs.
8.02 Licensor will indemnify Licensee to the extent arising from or
attributable to any breach or failure by Licensor or its Affiliates to
perform any provision, representation, warranty, covenant or agreement in
this Agreement.
8.03 IN THE EVENT OF BREACH OF THIS LICENSE, NEITHER LICENSEE NOR
LICENSOR SHALL BE LIABLE FOR ANY INCIDENTAL,
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INDIRECT, CONSEQUENTIAL OR PUNITIVE DAMAGES INCLUDING LOSS OF USE, REVENUE
OR PROFIT, REGARDLESS OF THE FORESEEABLITY OF OR NOTICE TO LICENSOR OF THE
POSSIBILITY OF SUCH DAMAGES.
ARTICLE 9 - TERM
9.01 The term of the license granted in Article 2.0 shall be for a)
Licensed Patents, the duration of the patent in the relevant Territory, and
for b) Confidential Know How and non-patented Improvements, for as long as
the Confidential Know How does not reach the public domain.
9.02 Unless terminated under Article 9.03, the term of the Agreement
shall be the longest of the term for the grant of licenses under this
Agreement. The party believing the Agreement has terminated due to the
termination of the grants hereunder, shall provide evidence to the other
party supporting such belief prior to any such termination coming into
effect.
9.03 Should Licensee or its Affiliates breach the third party
sub-license restriction contained in the license grants, as determined by
arbitration under Article 15, Licensor shall give written notification to
Licensee. If in less than thirty (30) days of such notification Licensee
has not remedied the defect according to the arbitration award, Licensor
may give further written notice immediately terminating the Agreement. Upon
termination under this Article 9.03 Licensee shall have no further rights
in the Licensed Technology except that [ * ]. Such termination and
continuing license shall be without prejudice to all other rights and
remedies available to Licensor.
ARTICLE 10 - PAYMENT
10.01 Payment shall be by wire transfer, in United States Dollars, to
Licensor's account as notified in writing to Licensee from time to time.
10.02 Licensee shall pay any sales, use or similar taxes applicable, if
any, to any payment to Licensor. If relevant, Licensee shall provide proof
of such tax payment to
* Brackets indicate confidential material omitted and filed separately
with the S.E.C.
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Licensor sufficient for Licensor to take any tax credits allowed by its
governmental authority. Upon such tax credit being credited to Licensor,
Licensor will refund the amount of such allowed credit to Licensee.
10.03 Payments received by Licensor thirty (30) days after a first
written request stating that such payment was due to Licensor shall accrue
interest pro-rated from the due date to the time of payment, at an annual
rate of one and one-half (1 1/2) percent above the rate quoted from time to
time as its prime rate as announced in New York City, New York by Chase
Manhattan Bank.
ARTICLE 11 - EXPORT OF TECHNOLOGY
11.01 Licensee hereby acknowledges and accepts that the Licensed
Technology includes U.S. technical information and therefore it is subject
to the Export Administration Regulations (15 CFR, Part 730-799) of the
United States Department of Commerce and the Arms Export Control Act (22
USC 2778) as implemented by the International Traffic in Arms Regulations
(22 CFR Part 120 et al) and other U.S. government regulations relating to
export or re-export of U.S. technical data and equipment and products
produced therefrom. Licensee expressly agrees to comply fully with all such
U.S. government regulations to the extent they apply to any Licensed
Technology or technical information made available to Licensee under this
Agreement.
11.02 Licensor shall be responsible for any license required under
Article 11.01 necessary to transfer the Licensed Technology from the
Licensor to the Licensee.
ARTICLE 12 - NOTICE
12.01 All notices, requests, demands and other communications required
or permitted to be given under this Agreement shall be deemed to have been
duly given if in writing and delivered personally, or five (5) business
days after being mailed first class, postage prepaid, registered or
certified mail, or if telecopied and confirmed by one of the preceding
methods, as follows:
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If to Licensee:
Societe Europeenne des Produits Refractaires
Les Miroirs
18 Avenue d'Alsace
92400 Courbevoie
Attention: Legal Affairs Department
Fax: ▇▇-▇-▇▇-▇▇-▇▇-▇▇
If to Licensor:
Unifrax Corporation
▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Attention: Vice President, Sales & Marketing
Fax: ▇▇▇-▇▇▇-▇▇▇▇
Any party may change the address to which such communications are to be
directed to it by giving written notice to the other in the manner
specified in this ARTICLE 12.01.
ARTICLE 13 - ASSIGNMENT
13.01 Licensee shall not have the right to assign the Agreement unless
Licensor approves of such assignment in writing, except Licensee may assign
the Agreement to a wholly owned Affiliate of Licensee. Licensee may also
assign this Agreement to a third party that has acquired substantially all
of Licensee's assets acquired under the Stock Purchase Agreement and
related to the ceramics fibers business. Licensee may assign this Agreement
to a more than 50% owned Affiliate with Licensor's written approval, which
approval will not be unreasonably withheld.
13.02 Licensee may partially assign this Agreement on a country by
country basis to a third party that has acquired in each of the United
Kingdom, Germany, Australia or Brazil, substantially all of Licensee's
assets that are acquired under the Stock Purchase Agreement and relate to
the ceramics fibers business. This partial assignment is subject to
Licensee giving Licensor the right to match any bonafide bid received by
Licensee for Australia, Brazil, or Europe (Europe as a whole, including
Licensee's existing ceramic fibers businesses).
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13.03 Licensor shall not assign this Agreement to a third party without
the written permission of Licensee, which permission will not be
unreasonably withheld, except to a third party that acquires substantially
all the assets of NAF, in which case Licensor shall be obligated to assign
this Agreement to that third party.
13.04 Any purported assignment by Licensee in violations of the
provisions of this Article 13 shall be void.
ARTICLE 14 - FORCE MAJEURE
14.01 The parties hereto shall not be held liable or responsible for
delay or failure to take any actions called for under this Agreement
occasioned by acts of God, force majeure or any cause beyond the control of
the parties, including but not limited to war; civil disturbances; fire;
flood; earthquake; windstorm; unusually severe weather; acts or defaults of
common carriers; accidents; strike or other labor trouble; lack of or
inability to obtain raw materials, transportation, labor, fuel or supplies;
governmental laws, acts, regulations, embargoes, or orders (whether or not
such later prove to be invalid); any of which shall release the parties
form the performance of this Agreement.
ARTICLE 15 - ARBITRATION
15.01 In the event of any dispute, claim, question, or disagreement
arising out of or relating to this Agreement or the breach thereof, the
parties hereto shall use their best efforts to settle such disputes,
claims, questions, or disagreements. To this effect, they shall consult and
negotiate with each other in good faith and, recognizing their mutual
interests, attempt to reach a just and equitable solution satisfactory to
both parties. If they do not reach such solution within a period of thirty
(30) days, either party may submit the dispute to binding arbitration
administered by the American Arbitration Association under its
International Arbitration Rules. The place of arbitration shall be New York
City, New York, and the language of arbitration shall be English. The
number of arbitrators shall be three, unless the parties agree otherwise.
Both parties agree that time is of the essence in any arbitration. Each
party shall submit their choice of an arbitrator to the Association within
five (5) business days after receiving notice from the Association of an
arbitration proceeding. The arbitrators so selected shall have five(5)
business days to select a third arbitrator. If the arbitrators selected by
the parties cannot agree on a third arbitrator within this time period,
then a third arbitrator shall be selected by the Association to complete
the
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panel. The parties agree that the arbitrators may grant a party's request
for a preliminary injunction to minimize damages. As an aid to arbitration,
either party may also seek assistance from judicial authorities to provide
interim relief, such as an injunction, if necessary.
ARTICLE 16 - APPLICABLE LAW
16.01 This Agreement shall be governed by and construed and enforced in
accordance with the laws of the State of Ohio without regard to rules on
choice of law and Licensee hereby consents to submit to the jurisdiction of
the American Arbitration Association located in New York, New York, and to
the jurisdiction of applicable courts in the United States or elsewhere, to
enforce any award of said American Arbitration Association, or to grant
interim relief.
ARTICLE 17 - MISCELLANEOUS
17.01 This Agreement may be amended, modified, superseded or canceled,
and any of the terms, covenants, representations, warranties or conditions
hereof may be waived, only by a written instrument executed by the parties
hereto, or, in the case of a waiver, by or on behalf of the party waiving
compliance. The failure of any party at any time or times to require
performance of any provision hereof shall in no manner affect the right at
a later time to enforce the same. No waiver by any party of any condition,
or of any breach of any term, covenant, representation or warranty
contained in this Agreement, in any one or more instances, shall be deemed
to be or construed as a further or continuing waiver of any such condition
or breach or waiver of any other condition or of any breach of any other
term, covenant, representation or warranty.
17.02 This Agreement shall comply with and its obligations performed in
accordance with the laws, whether national or supranational of all
jurisdictions in which the Agreement is to be performed (including the
United States). If any provision of this Agreement constitutes a breach of
any applicable law or is considered to be or will be void or unenforceable,
such provision shall be deemed to be deleted and the remaining provisions
shall continue in full force and effect.
17.03 The article or section headings contained in this Agreement are
for convenient reference only, and shall not in any way affect the meaning
or interpretation of this Agreement. This Agreement may be executed
simultaneously in
17
two or more counterparts, each of which shall be deemed an original, but
all of which shall constitute but one.
17.04 For avoidance of doubt, nothing in this Agreement shall be
construed or interpreted as limiting any rights of Kerlane (a subsidiary of
Licensee involved in the manufacturing and selling of ceramic fibers) to
practice or develop its ceramic fibers technology, to manufacture use and
sell its ceramic fibers products worldwide, to grant or receive licenses
either to Affiliates or to third parties, to dispose of its assets or of
its intellectual property rights unless and to the extent that:
a) Kerlane has received any Confidential Know How as defined in this
Agreement, or
b) Kerlane is a sub licensee of the Licensed Technology, in which case
Kerlane will be bound by the obligations with respect to a Licensee
contained in this Agreement.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be
executed by the respective duly authorized officers.
Societe Europeenne des Unifrax Corporation
Produits Refractaires
LICENSEE LICENSOR
By:_______________________ By:____________________
Name:____________________ Name: ▇▇▇▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
Title:_____________________ Title: Attorney-In-Fact
18
APPENDIX A
LICENSED PRODUCTS
Ceramic Fiber Blanket and Mats and Products
-------------------------------------------
o Durablanket(R)AC o Insulfrax(R)family
o Durablanket(R)2600 (1400 AZS) o Durablanket(R)family
o Durablanket(R)SE o Duraback(TM)family, including Isofelt
o Durablanket(R)HP-S o Fibermat(TM)
o Durablanket(R)HS o water repellent blanket
o Durablanket(R)HA o Durablanket(R)E (encapsulated)
o Durablanket(R)FD 1560 128
o Painel(TM), ceramic fiber blanket panels
o Anel(TM), ceramic fiber blanket rings
Fibers
------
o Insulfrax(R) family
o Fiberfrax(R)HP (7000; -▇, -▇, -▇▇, -▇▇-▇▇▇, -HS-400), blown/spun fibers
o Fiberfrax(R)7001; -F-5, -M-5, -C-5, -F-5, chopped fibers
o Fiberfrax(R)AZS (8000, spun 1400), blown/spun fibers
o Fiberfrax(R)AZS (8001; -M-5), blown/spun fibers
o Fiberfrax(R)spun fiber
o Fiberfrax(R)W657, W707, W758, washed fiber
o Fiberfrax(R)HA
o Fiberfrax(R)milled fibers
o lubricated fibers
o Fiberfrax(R)bulk fibers (Flocos(TM), FT bulk)
Specialities
------------
Fiberfrax(R) QF(TM)-180, QF180 Blue and QF-150, ceramic cements
Fiberfrax(R) Top Coat(TM) M, Coat MCR(TM), ceramic cements
Rigidizer(TM) and Rigidizer(TM) W, inorganic liquid hardener compound
Fiberfrax(R) LDS(TM) and LDS-AL, moldable compounds
Fiberfrax(R) Pumpable(TM)-LDS and Pumpable-GS,
Pumpable(TM) X, insulating & sealing compounds
Fiberfrax(R) Moist-Pack(TM) D, moldable/formable blanket
Fiberfrax(R) FC-25(TM), insulating castable mix
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Specialities (con't)
--------------------
▇▇▇▇▇▇▇▇(▇▇) ▇, ▇, ▇▇, ▇▇▇▇, insulation
Fiberfrax(R) Duraboard(TM), RG, LD, HD, FX, 2600, 3000,
Fiberboard, ceramic fiberboard
Duraset(R), LE, ceramic fiber felt/mat
Lo-Con(TM) felt, ceramic fiber blanket/mat
Fiberfrax(R) 970/975, 770, ceramic fiber paper
FT(TM) papers
Papel(TM) fiber
Fiberfelt(TM) papers
111/1198 grade papers
Anchor-Loc(R) ceramic fiber modules
Power-Loc(R) insulating block modules
Screw-Loc(R) insulating block modules
Thread-Loc(R) insulating block modules
Weld-Loc(R) insulating block modules
Fiberwall(TM) 22, 24, 2600 bonded modules
Insulfrax(R) bonded 1800 modules
vacuum formed tubes
Moldafrax(TM) vacuum formed shapes
GC-50, GC-90, Launder, castables
Insulfrax(R) board
Insulfrax(R) paper
Fiberfix(TM), cement adhesive
Fraxfil(TM), pumpable compounds
Fiber Mastic, LDS moldable compounds
Frax Bond(TM), adhesives
Fyre Putty
Calha
Boiler Seal
Fiberfrax(R) IG Tape
Fiberfrax(R) T30 and T30R Tubes