TEPS LICENSE AGREEMENT
Exhibit
10.2
TEPS
LICENSE AGREEMENT
This is a
License Agreement dated as of February 25, 2009 (the “Agreement”), by and
among ▇▇▇▇▇▇▇-Thermo Carbon Capture LLC, a Delaware limited liability company
(the “Company”), Thermo
Energy Power Systems LLC, a Delaware limited liability company (“TEPS”), and, as to
Sections 4.2, 7.1, 13.4, and Articles 11-13 only, ▇▇▇▇▇▇▇ Power Development LLC,
a Delaware limited liability company (“▇▇▇▇▇▇▇”).
WHEREAS,
TEPS and ▇▇▇▇▇▇▇ have formed the Company pursuant to that certain Limited
Liability Company Agreement dated as of February 25, 2009 (the “LLC
Agreement”).
WHEREAS,
in the LLC Agreement TEPS and ▇▇▇▇▇▇▇ agreed that TEPS and the Company would
enter into this Agreement.
NOW,
THEREFORE, in consideration of the foregoing and the mutual agreements set forth
below and for other good and valuable consideration, the receipt and sufficiency
of which are hereby acknowledged, TEPS and the Company agree as
follows:
Article
1
Defined
Terms
In
addition to the defined terms found elsewhere in this Agreement, as used in this
Agreement the following terms shall have the following meanings:
“Affiliate”
means, with respect to any referenced Person (i) such Person or member of his
immediate family; and (ii) any Person directly or indirectly Controlling,
Controlled by, or under direct common Control with the Person in
question.
“▇▇▇▇▇▇▇
License Agreement” has the meaning set forth in the LLC Agreement.
“Bankruptcy”
means, with respect to any Person, (i) the filing by such Person of a voluntary
petition seeking liquidation, reorganization, arrangement or readjustment, in
any form, of its debts under Title 11 of the United States Code, or
corresponding provisions of future laws (or any other federal or state
insolvency law), (ii) the filing by such Person of an answer consenting to or
acquiescing in any such petition, (iii) the making by such Person of any
assignment for the benefit of its creditors or the admission by such Person in
writing of its inability to pay its debts as they mature, (iv) the filing of an
involuntary petition against such Person under Title 11 of the United States
Code (or corresponding provisions of future laws), an application for the
appointment of a receiver for the assets of such Person, or an involuntary
petition seeking liquidation, reorganization, arrangement or readjustment of its
debts under any other federal or state insolvency law, provided that the same
shall not have been vacated, set aside or stayed within a 60-day period after
the occurrence of such event, or (v) the entry against such Person of a final
non-appealable order for relief under any bankruptcy, insolvency or similar law
now or hereafter in effect.
“Board of
Managers” means the Board of Managers formed pursuant to the LLC Agreement to
govern the Company.
“Company”
has the meaning set forth in the preamble.
“Controls”,
“Controlled” and “Controlling”, means, as applied to a referenced Person, the
possession, directly or indirectly, of the power to direct or cause the
direction of the management and policies of that Person, whether through
ownership of voting securities, by contract or otherwise.
“Dispute
Resolution Agreement” has the meaning set forth in the LLC
Agreement.
“Existing
Patents” means the patents listed on Annex A to this
Agreement, as well as any reissues, divisions, continuations,
continuations-in-part, and extensions thereof, and any foreign counterparts to
any of the foregoing.
“Existing
Patent Applications” means the patent applications listed on Annex B to this
Agreement, any patent applications to which the patent applications listed on
Annex B claim
priority, and any patent applications that claim priority to the patent
applications listed on Annex B, and any
foreign counterparts to any of the foregoing.
“Existing
Trademarks” means the Trademarks listed on Annex C to this
Agreement.
“Improvements”
means any improvements, developments, updates, upgrades, enhancements,
additions, revisions, corrections, fixes and other modifications to the TEPS
Licensed Property that TEPS, the Company or ▇▇▇▇▇▇▇ may acquire, discover,
invent, originate, conceive or have a right to develop or manufacture, whether
or not the same is patentable, commercially useful or reducible to writing or
practice.
“Infringements”
has the meaning set forth in Section 7.1.
“Intellectual
Property” means all patents, inventions, patent applications, patent rights,
trademarks, trademark registrations, trade names, brand names, all other names
and slogans embodying business or product goodwill (or both), copyright
registrations, copyrights (including those in computer programs, software,
including all source code and object code, development documentation,
programming tools, drawings, specifications and data), software, trade secrets,
know-how, mask works, industrial designs, formulae, processes and technical
information, including confidential and proprietary information, whether or not
subject to statutory registration or protection.
“Licensed
Copyrights” means any and all copyright protection of TEPS covering any of the
Licensed Software Programs, the Licensed Know-How or any Improvements
thereto.
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“Licensed
Know-How” means any information possessed by TEPS or, subject to Section 2.2,
licensed to TEPS, reasonably related to or necessary to practice the TIPS,
whether or not considered proprietary and whether or not subject to statutory
registration or protection, including, without limitation, inventions disclosed
in the Existing Patent Applications, invention records, research records and
reports, development reports, experimental and other engineering reports, pilot
plant designs, production plant designs, production specifications, raw material
specifications, quality control reports and specifications, drawings and
photographs, models, tools and parts, manufacturing and production techniques,
processes, methods and marketing surveys. If any information or
material qualifies for purposes of this Agreement both as Licensed Know-How and
as any of the Licensed Patents, Licensed Copyrights, Licensed Software Programs
or Licensed Trademarks, such information or material shall not be treated as
Licensed Know-How for purposes of this Agreement but shall be treated, as
applicable, as part of the Licensed Patents, Licensed Copyrights, Licensed
Software Programs or Licensed Trademarks.
“Licensed
Patent Applications” means the Existing Patent Applications and any U.S. or
foreign patent applications filed or acquired by or, subject to Section 2.2,
licensed to TEPS during the term of this Agreement, to the extent such patent
applications relate to TIPS.
“Licensed
Patents” means the Existing Patents and any U.S. or foreign patents granted to,
acquired by, or, subject to Section 2.2, licensed to TEPS during the term of
this Agreement, to the extent such patents relate to TIPS.
“Licensed
Software Programs” means any computer programs the copyrights to which are owned
by or, subject to Section 2.2, licensed to TEPS during the term of this
Agreement, to the extent such programs relate to TIPS.
“Licensed
Trademarks” means the Existing Trademarks and any Trademarks developed or
acquired by or, subject to Section 2.2, licensed to TEPS during the term of this
Agreement, to the extent such Trademarks relate to TIPS and do not relate to
TEPS’ corporate identity.
“LLC
Agreement” has the meaning set forth in the preamble.
“Master
Non-Disclosure Agreement” has the meaning set forth in Section 4.2.
“Person”
means any individual, partnership, corporation, association, trust, limited
liability company, joint venture, unincorporated organization and any
government, governmental department or agency or political subdivision
thereof.
“Related
Agreements” means this Agreement, the LLC Agreement, the ▇▇▇▇▇▇▇ License
Agreement, the Master Non-Disclosure Agreement, and the Dispute Resolution
Agreement, and any other agreement between or among any of TEPS and its
Affiliates, ▇▇▇▇▇▇▇ and its Affiliates or the Company relating to the Company
which specifies that it is a Related Agreement for purposes of this
Agreement.
“Related
Technology” has the meaning set forth in Section 5.1.
“Subsidiary”
means a corporation, company or other entity:
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(i)
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more
than fifty percent (50%) of whose outstanding shares or securities
(representing the right to vote for the election of directors or other
managing authority) are, now or hereafter, owned or controlled, directly
or indirectly, by a party hereto, but such corporation, company or other
entity shall be deemed to be a Subsidiary only so long as such ownership
or control exists; or
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(ii)
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which
does not have outstanding shares or securities, as may be the case in a
company, joint venture or unincorporated association, but more than fifty
percent (50%) of whose ownership interests representing the right to make
the decisions for such corporation, company or other entity is now or
hereafter, owned or controlled, directly or indirectly, by a party hereto,
but such corporation, company or other entity shall be deemed to be a
Subsidiary only so long as such ownership or control
exists.
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“TEPS”
has the meaning set forth in the preamble.
“TEPS
Infringement Claim” has the meaning set forth in Section 7.3.
“TEPS
Licensed Property” means the Licensed Patents, the Licensed Patent Applications,
the Licensed Trademarks, the Licensed Software Programs, the Licensed Copyrights
and the Licensed Know-How.
“TIPS”
means the clean energy technology known as the ThermoEnergy Integrated Power
System, including the TIPS Process and as covered by or described in the TEPS
Licensed Property.
“TIPS
Process” means any pressurized oxy fuel combustion process.
“TIPS
Product” means any component or other product designed or manufactured to
practice any of the TEPS Licensed Property.
“TIPS
Plant” means any power generation plant designed or manufactured using any of
the TEPS Licensed Property.
“Trademarks”
shall mean:
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(i)
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all
of the trademarks, service marks, trade names, designs, logos, indicia,
corporate names (other than the corporate names of TEPS and its
Affiliates), company names, business names, fictitious names, trade
styles, elements of package or trade dress, and/or other source and/or
other service identifiers and general intangibles of like nature, used or
associated with the TIPS Process, which (A) are set forth on Annex C to this
Agreement, or (B) are in the future adopted, acquired, owned, held and/or
used by TEPS in its business; and
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(ii)
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all
past, present or future federal, state, local and foreign registrations or
recordations of any of the foregoing enumerated in clause (i), all
renewals and extensions of such registrations or recordations, all past,
present and future applications for any such registrations or recordations
of any of the foregoing enumerated in clause (i) (and any such
registrations or recordations thereof upon approval of such applications),
including such recordings, registrations or applications set forth on
Annex C
to this Agreement.
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Article
2
Technology License; Certain
Related Matters
2.1. Grant of
License. Subject to the terms and conditions of this
Agreement, TEPS hereby grants to the Company an exclusive (even as to TEPS),
irrevocable (except as otherwise provided in this Agreement), world-wide, fully
paid up and royalty-free license to the TEPS Licensed Property to make, have
made, use, sell, have sold, import and have imported TIPS Products, including
the right to sublicense in accordance with Article 6.
2.2. Third Party Limitations on
License Grants. The licenses granted by TEPS pursuant to
Section 2.1 above, insofar as they relate to technology, property or rights that
are developed or acquired with or from any third party in the future, may become
subject to any applicable restrictions and consents relating to such technology,
property or rights under any license or similar agreement to which TEPS may in
the future become a party. In the event that any such license or
other agreement imposes restrictions that may apply to the transactions
contemplated by this Agreement, TEPS will make reasonable efforts to obtain
license rights as contemplated by this Agreement for the Company. If
TEPS is unable to so obtain such rights, it will cooperate to make available to
the Company such rights as the third party is willing to grant to or for the
Company. As part of the foregoing, TEPS shall use reasonable efforts
to assure that the Company enjoys license or other rights no less favorable with
respect to the applicable Intellectual Property acquired from such third parties
than other licensees of TEPS generally.
Article
3
Technical Liaison; Access to
Technology
3.1. Access to
Technology.
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(a)
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TEPS
shall take all steps reasonably necessary to transfer the TEPS Licensed
Property, including the Licensed Know-How, that is reasonably necessary
for the Company to make, use, and sell TIPS Products. In
addition, TEPS shall provide the Company with technical consultation,
advice and know-how relating to the design, development and manufacture of
TIPS Products and relating to any equipment reasonably required for the
Company to manufacture TIPS Products meeting any applicable product
specifications and standard quality control requirements, including
without limitation documentation, drawings, specifications, protocols,
data and process information of TEPS relating to TIPS
Products.
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(b)
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In
order to ensure that the Company has sufficient access to and familiarity
with the Licensed Know-How and other relevant portions of the TEPS
Licensed Property, the Board of Managers or their designees shall meet
from time to time to review and discuss the TEPS Licensed
Property. The Board of Managers or their designees shall, as
appropriate, cause appropriate TEPS, Company, and ▇▇▇▇▇▇▇ employees to
attend such meetings. TEPS shall provide the Company with such
additional writings, documents, instruments, programs (in object code
form), computer simulations, information, data, and recordations of or
other tangible embodiments or manifestations of any portion of the TEPS
Licensed Property as is reasonably requested by the
Company.
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(c)
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All
information furnished to the Company pursuant to paragraphs (a) and (b)
above shall be subject to the confidentiality and other obligations of the
Master Non-Disclosure Agreement and shall be furnished or made available
to the Company in a manner consistent with the procedures contemplated by
the Master Non-Disclosure
Agreement.
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Article
4
Title to TEPS Licensed
Property;
Confidentiality and Related
Matters
4.1. Title to TEPS Licensed
Property. Title to all TEPS Licensed Property shall at all
times remain and vest solely with TEPS. The Company agrees that it
will not claim or assert any right, title or interest in or to any such TEPS
Licensed Property or, except for sublicensing effected in accordance with
Article 6, attempt to transfer any right, title or interest in or to any TEPS
Licensed Property to any third parties, or challenge the validity of or assert
the invalidity of any Licensed Copyrights or Licensed
Trademarks. Nothing in this Section 4.1 shall affect the rights of
TEPS or the Company to assert a claim under this Agreement for any breach by any
other party of any representation or warranty in this Agreement.
4.2. Confidentiality Obligations
of TEPS, ▇▇▇▇▇▇▇ and the Company. Pursuant to the LLC
Agreement, TEPS, ▇▇▇▇▇▇▇, the Company, ▇▇▇▇▇▇▇ Power Inc. and ThermoEnergy
Corporation will enter into a Master Non-Disclosure Agreement in the form of
Exhibit 5 to the LLC Agreement (the “Master Non-Disclosure
Agreement”). All information exchanged between the parties
pursuant to this Agreement shall be subject to the terms of the Master
Non-Disclosure Agreement.
4.3. Disclosure to Government
Authorities. The Board of Managers shall promptly establish
and implement all procedural safeguards required or advisable in connection with
the performance of government contracts to protect the confidentiality and value
of the TEPS Licensed Property and the assets of the Company. Each of
TEPS and the Company agree to comply, and cause their employees to comply, with
such procedural safeguards.
4.4. Corporate
Names. Notwithstanding the terms of the Master Non-Disclosure
Agreement and Section 4.2 of this Agreement, the Company shall be entitled, but
not required, to refer to TEPS as a licensor of the TEPS Licensed Property in
its advertising and other promotional materials, subject to compliance with
guidelines, to be adopted by the Board of Managers, addressing the need to
maintain a separate corporate identity for the Company and similar
concerns.
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Article
5
Improvements and
Inventions
5.1. Improvements and
Inventions.
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(a)
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All
Intellectual Property (including all Improvements) relating to TIPS or
reasonably necessary or useful to any application of TIPS conceived,
created, made, developed or reduced to practice solely by one or more
employees of TEPS (“Related
Technology”), will be owned by TEPS and title to all such
Intellectual Property, including patents, patent applications and
copyrights filed or granted, patents issued with respect thereto will be
issued solely in TEPS’ name.
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(b)
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All
Related Technology and all of TEPS’ interest in any Improvements that are
jointly developed by employees of TEPS and employees of the Company or
▇▇▇▇▇▇▇ (and accordingly do not constitute Related Technology), to the
extent that they come within the definition of TEPS Licensed Property,
will be subject to the licenses granted by TEPS pursuant to Section 2.1,
and the Company will not be required to pay any royalties or other fees
for the license of such Improvements and Related
Technology.
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Article
6
Sublicensing and
Diligence
6.1. Sublicensing. In
order to commercialize TIPS, the Company shall create and implement a
comprehensive program to promote fee-based sublicensing of the TEPS Licensed
Property to appropriate third parties in order to permit them to establish, own,
permit, finance, construct, start-up and operate TIPS Plants located anywhere in
the world. The Company shall use commercially reasonable efforts
during the term of this Agreement to enter into such sublicensing agreements
with third parties, and any sublicensees shall be required to use commercially
reasonable efforts to establish, own, permit, finance, construct, start-up and
operate TIPS Plants.
6.2. Form of Sublicensing
Agreements. Any sublicense by the Company of the rights
granted under Section 2.1 shall be subject to and subordinate to this
Agreement. The Company shall provide TEPS with a copy of any
sublicense agreement within thirty (30) days of execution, which copy shall be
treated as confidential information of the parties under the Master
Non-Disclosure Agreement. As set forth in Section 11.2, each
sublicense granted by the Company shall survive termination of this
Agreement.
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Article
7
Infringements
7.1. Notice of
Infringements
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(a)
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In
the event that any of TEPS, the Company, or ▇▇▇▇▇▇▇ becomes aware of any
infringement, misappropriation, violation, dilution or unauthorized or
improper use of the TEPS Licensed Property or unfair competition related
to the Licensed Trademarks (collectively, “Infringements”,
and individually an “Infringement”),
or of any claim that the use of the TEPS Licensed Property infringes,
misappropriates, violates or dilutes any proprietary right or property of
any third Person, or of any product liability claim or action based on or
arising out of the use of the TEPS Licensed Property by either TEPS or the
Company, such party shall promptly give written notice thereof to the
other parties.
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(b)
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As
part of the Board of Managers’ regular meetings referred to in Article 3,
the Board of Managers shall discuss any issues related to Infringement or
other matters referred to in paragraph (a)
above.
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7.2. Infringements of TEPS
Licensed Property.
In the
event of any Infringement of the TEPS Licensed Property, TEPS shall have the
first right, but not the obligation, to undertake all actions reasonably
required to redress, oppose, prevent, or restrain such
Infringement. In the event that TEPS does not take appropriate
actions to address such Infringement within ninety (90) days of TEPS receiving
written notice of such Infringement under Section 7.1(a), the Company will have
the right, but not the obligation, to commence such a legal action or proceeding
to the extent reasonably required to redress, oppose, prevent, or restrain such
Infringement. Either party bringing any such legal action or
proceeding shall consult with the other party prior to commencing the same and
shall consider any recommendations by the other party with respect to the
conduct and settlement or compromise thereof and any reasonable alternative
resolutions of the Infringement matter. Each party shall cooperate as
may be reasonably necessary or appropriate in the prosecution, settlement or
compromise of any such legal action or proceeding commenced by the other party
in respect of any Infringement of the TEPS Licensed Property, and agrees to be
joined as a party to any such action or proceeding if it is deemed to be
necessary or desirable by counsel retained by the other party for the
prosecution of such action or proceeding. If either party proceeds to
bring any legal action or proceeding pursuant to the procedure provided for in
this Section 7.2, TEPS will bear all reasonable costs of such action or
proceeding (including legal fees), and any proceeds realized as a result of any
settlement thereof or any judgment thereon (“Proceeds”) shall be
paid to the Company after reimbursement of TEPS’ costs of such action or
proceeding.
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7.3. TEPS Infringement
Claims. In the event of any claim that any TIPS Product
infringes, misappropriates, violates or dilutes any proprietary right or
property of any third Person (each a “TEPS Infringement
Claim”), TEPS shall have the first right, but not the obligation, to take
all actions reasonably necessary to oppose or defend such claims and to pay any
judgment or settlement amount awarded or obtained with respect to such TEPS
Infringement Claim. In the course of opposing or defending any such
TEPS Infringement Claim, TEPS shall consult with the Company in connection with
all material issues relating to such opposition or defense and shall consult
with the Company prior to commencing the same and shall consider any
recommendations by the Company with respect to the conduct and settlement or
compromise thereof and any reasonable alternative resolutions of the TEPS
Infringement Claim. In the event that TEPS does not undertake to
oppose or defend any such action within ninety (90) days after TEPS becomes
aware of such TEPS Infringement Claim, the Company will have the right, but not
the obligation, to undertake the opposition or defense of such claim in TEPS’
name. In the event that the Company undertakes the opposition or
defense of such claim, the Company shall consult with TEPS in connection with
all material issues relating to such opposition or defense and shall consult
with TEPS prior to commencing the same and shall consider any recommendations by
TEPS with respect to the conduct and settlement or compromise thereof and any
reasonable alternative resolutions of the TEPS Infringement
Claim. The Company shall not settle any TEPS Infringement Claim
without TEPS’ prior written consent. Regardless of whether TEPS or
the Company undertakes to oppose or defend any TEPS Infringement Claim pursuant
to the procedures provided for in this Section 7.3, TEPS shall bear all costs of
such action or proceeding and shall pay any judgment or settlement amount
awarded or obtained with respect to such TEPS Infringement Claim; provided,
however, that TEPS shall have no obligation under this Section 7.3 to bear any
cost or pay any judgment or settlement amount if, and to the extent that, a TEPS
Infringement Claim is based on any feature or functionality of any TIPS Product
developed by or for the Company after the date of this Agreement if such TIPS
Product, without such feature or functionality, would be
non-infringing.
Article
8
Representations and
Warranties of the Company
The
Company represents and warrants to TEPS as follows:
8.1. Power and
Authority. The Company has full power and authority to execute
and deliver this Agreement and to consummate the transactions contemplated
hereby.
8.2. Approval; Binding
Effect. The Company has obtained all necessary authorizations
and approvals required for the execution and delivery of this Agreement and the
consummation of the transactions contemplated hereby. This Agreement
has been duly executed and delivered by the Company and constitutes the legal,
valid and binding obligation of the Company, enforceable against the Company in
accordance with its terms.
8.3. Non-Contravention;
Approvals. Neither the execution and delivery of this
Agreement by the Company nor the consummation by the Company of the transactions
contemplated hereby constitutes a violation of, or conflicts with, constitutes
or creates a default under, or results in the creation or imposition of any
liens upon any property of the Company pursuant to (a) the LLC Agreement; (b)
any agreement or commitment to which the Company is a party or by which the
Company or any of its properties is bound or to which the Company or any of its
properties is subject; or (c) any statute, regulation, rule, judgment, order,
decree, stipulation, injunction, charge or other restriction of any government,
governmental agency or court or other tribunal to which the Company or any of
its properties is subject. No consent, approval or authorization of,
or registration, qualification or filing by the Company with, any governmental
agency or authority is required for the execution and delivery of this Agreement
by the Company or for the consummation by the Company of the transactions
contemplated hereby and thereby.
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8.4. Absence of
Liens. Unless otherwise approved by the Board of Managers, the
Company shall keep all of the TEPS Licensed Property and all of its rights under
this Agreement free and clear of any lien, charge, security interest or other
encumbrance.
Article
9
Representations and
Warranties of TEPS
TEPS
represents and warrants to the Company as follows:
9.1. Title. TEPS
represents and warrants that it exclusively owns or controls all right, title
and interest to all TEPS Licensed Property free and clear of all liens, claims,
encumbrances and other restrictions. Further, TEPS represents and
warrants that it has not received and has no knowledge of any notice, claim or
allegation from any person or entity questioning TEPS’s right to use, possess,
transfer, convey, license, exploit or otherwise dispose of any TEPS Licensed
Property or the exclusive ownership of such TEPS Licensed Property, and that no
other party has any rights or claims to any of the TEPS Licensed
Property.
9.2. Licenses. TEPS
represents and warrants that it has not (i) granted any licenses or other
rights, and has no obligation to grant any licenses or other rights, concerning
any TEPS Licensed Property; or (ii) entered into any covenant not to compete or
contract limiting or purporting to limit the ability of TEPS to exploit fully
any TEPS Licensed Property.
9.3. Validity. TEPS
represents and warrants that there have been no sales, public disclosures, or
other events that create a bar to patentability with respect to the Licensed
Patents as of the date of this Agreement, and there is no interference,
opposition, cancellation, reexamination or other contest, proceeding, action,
suit, hearing, investigation, charge, complaint, demand, notice, claim, dispute
threatened or pending against the Licensed Patents.
9.4. Sufficiency. TEPS
represents and warrants that the TEPS Licensed Property includes rights to all
Intellectual Property owned, licensed, or controlled by TEPS that are necessary
or useful to practice the TIPS Process as covered by the TEPS Licensed Property
as of the date of this Agreement. To the extent that Intellectual
Property owned, licensed, or controlled by ThermoEnergy Corporation or any of
its other Subsidiaries would be reasonably related to or necessary to practice
the TIPS Process (“Thermo Affiliate IP”), TEPS represents and warrants that it
will secure rights to such Thermo Affiliate IP before the TIPS Process is made,
used, or sold by the Company, and TEPS shall include such Thermo Affiliate IP
within the TEPS Licensed Property at no additional consideration from the
Company.
9.5. Non-infringement. TEPS
represents and warrants that, to the best knowledge of TEPS after reasonable
investigation, the TIPS Process does not infringe upon, violate or constitute a
misappropriation of any Intellectual Property of any third party as of the date
of this Agreement.
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9.6. Right to Grant
License. TEPS has the unencumbered and unrestricted right to
grant the licenses set forth in Section 2.1, and the execution, delivery and
performance of this Agreement by TEPS does not conflict with or contravene any
contractual provision binding on TEPS with respect to the TEPS Licensed
Property.
9.7. Personnel. All
of TEPS’ employees that have contributed, or are expected to contribute, to TEPS
Licensed Property have executed a written assignment in favor of TEPS as
assignee providing for the conveyance of all right, title and interest in and to
TEPS Licensed Property.
9.8. Power and
Authority. TEPS has full power and authority to execute and
deliver this Agreement and to consummate the transactions contemplated
hereby.
9.9. Approval; Binding
Effect. TEPS has obtained all necessary authorizations and
approvals required for the execution and delivery of this Agreement and the
consummation of the transactions contemplated hereby. This Agreement
has been duly executed and delivered by TEPS and constitutes the legal, valid
and binding obligation of TEPS, enforceable against TEPS in accordance with its
terms.
9.10. Non-Contravention;
Approvals. Neither the execution and delivery of this
Agreement by TEPS nor the consummation by TEPS of the transactions contemplated
hereby constitutes a violation of, or conflicts with, constitutes or creates a
default under, or results in the creation or imposition of any liens upon any
property of TEPS pursuant to (a) its certificate of formation, limited liability
company agreement, or other organizational documents; (b) any agreement or
commitment to which TEPS is a party or by which TEPS or any of its properties is
bound or to which TEPS or any of its properties is subject; or (c) any statute,
regulation, rule, judgment, order, decree, stipulation, injunction, charge or
other restriction of any government, governmental agency or court or other
tribunal to which TEPS or any of its properties is subject. No
consent, approval or authorization of, or registration, qualification or filing
by TEPS with, any governmental agency or authority is required for the execution
and delivery of this Agreement by TEPS or for the consummation by TEPS of the
transactions contemplated hereby and thereby.
Article
10
Export
Controls
The
Company agrees that it will comply with all United States and foreign laws
regarding the import or export of any of the TEPS Licensed Property or any TIPS
Products.
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Article
11
Termination
11.1. Events of
Termination. This Agreement shall terminate upon the earliest
to occur of:
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(a)
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the
mutual written consent at any time of the Company, TEPS and
▇▇▇▇▇▇▇;
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|
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(b)
|
any
termination pursuant to Section 12.01 of the LLC Agreement;
and
|
|
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(c)
|
any
exercise by TEPS of its right to withdraw from the Company, with such
termination effective at such time as specified in Section 11.01 of the
LLC Agreement.
|
11.2. Effects of
Termination.
|
|
(a)
|
In
the event of any termination of this Agreement pursuant to Section 11.1,
(i) the licenses granted pursuant to Section 2.1 shall terminate except as
provided in paragraph (b) below; (ii) the provisions of Article 5, Article
6, Section 7.3, Article 8, and Article 9, and Articles 11-13 shall survive
such termination, (iii) any sublicense granted pursuant to Article 6 shall
not terminate but shall remain in effect in accordance with the terms of
the applicable sublicense agreement, and (iv) such termination shall not
effect any party’s rights with respect to any breach or non-performance by
any other party prior to such
termination.
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|
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(b)
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In
the event of any termination of this Agreement pursuant to Section 11.1,
the licenses granted pursuant to Section 2.1 shall remain in effect with
respect to (i) all TIPS Plants previously constructed by the Company, and
(ii) any TIPS Plants under contract which have not yet commenced
commercial operation, for the life of any such TIPS
Plant.
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Article
12
Exclusive Remedy For
Breach
In the
event of any breach of this Agreement or the Related Agreements by TEPS, ▇▇▇▇▇▇▇
or the Company, the non-breaching party or parties shall be entitled to seek
relief with respect to such breach pursuant to the procedures provided in the
Dispute Resolution Agreement. However, the non-breaching party or
parties shall not be entitled to terminate this Agreement or any of the Related
Agreements or to suspend or withhold the performance of any of its or their
obligations under this Agreement and the Related Agreements as a result of such
breach.
- 12
-
Article
13
General
13.1. Disclosure and
Publicity. The Company agrees to provide prior notice of any
material press releases to TEPS; provided, however, that the
Company will be permitted to issue press releases without prior notice to the
extent required to comply with the Company’s legal obligations.
13.2. Expenses. Except
as expressly set forth in this Agreement, all expenses of the preparation,
execution and consummation of this Agreement and the Related Agreements and of
the transactions contemplated hereby, including, without limitation, attorneys’,
accountants and outside advisers’ fees and disbursements, shall be borne by the
party incurring such expenses.
13.3. Notices. All
notices, demands and other communications thereunder shall be in writing or by
written telecommunication, and shall be deemed to have been duly given if
delivered personally or if mailed by certified mail, return receipt requested,
postage prepaid or if sent by overnight courier or sent by written
telecommunication, as follows:
If to
TEPS:
Thermo
Energy Power Systems LLC
c/o
ThermoEnergy Corporation
▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇
▇. ▇▇▇▇▇▇, Executive Vice President and CFO
with a
copy sent contemporaneously to:
▇▇▇▇▇
Peabody LLP
▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇
▇. ▇▇▇▇▇, Esq.
If to the
Company to:
▇▇▇▇▇▇▇-Thermo
Carbon Capture LLC
c/o
Babcock Power Inc.
One
Corporate Place
▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇
▇. ▇▇▇▇▇▇▇▇, ▇▇., Vice President Administration
&
General Counsel
- 13
-
with a
copy sent contemporaneously to:
TEPS or
▇▇▇▇▇▇▇, as applicable.
If to
▇▇▇▇▇▇▇:
▇▇▇▇▇▇▇
Power Development LLC
▇
▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇
▇▇▇▇▇▇
with a
copy sent contemporaneously to:
▇▇▇▇▇▇▇
Power Development LLC
c/▇
▇▇▇▇▇▇▇ Power, Inc.
One
Corporate Place
▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇
▇. ▇▇▇▇▇▇▇▇, ▇▇., Vice President Administration &
General
Counsel
13.4. Entire
Agreement. This Agreement (including the Annexes hereto) and
the Related Agreements contains the entire understanding of the parties,
supersedes all prior agreements and understandings relating to the subject
matter hereof and shall not be amended or waived except by a written instrument
hereafter signed by all of the parties hereto. The Company, TEPS, and
▇▇▇▇▇▇▇ further acknowledge and agree that, in entering into this Agreement and
the Related Agreements, they have not in any way relied upon any oral or written
agreements, statements, promises, information, arrangements, understandings,
representations or warranties, express or implied, not specifically set forth in
this Agreement or the Related Agreements.
13.5. Governing Law,
Etc. This Agreement shall be governed by, and construed and
enforced in accordance with, the laws of the Commonwealth of Massachusetts, all
rights and remedies being governed by such laws, without regard to its conflict
of laws rules. As provided in the Dispute Resolution Agreement, the
parties hereto have submitted to the exclusive jurisdiction of the state and
federal courts located in Boston, Massachusetts.
13.6. Waiver of Jury
Trial. EACH OF TEPS, THE COMPANY AND ▇▇▇▇▇▇▇ HEREBY
IRREVOCABLY WAIVES ANY RIGHTS THAT THEY MAY HAVE TO A TRIAL BY JURY IN RESPECT
OF ANY LITIGATION BASED UPON, OR ARISING OUT OF, THIS AGREEMENT OR ANY OF THE
RELATED AGREEMENTS OR ANY COURSE OF CONDUCT, COURSE OF DEALING, STATEMENTS OR
ACTIONS OF ANY OF THEM RELATING THERETO.
13.7. Waiver of Certain
Damages. EACH OF TEPS, THE COMPANY AND ▇▇▇▇▇▇▇ TO THE FULLEST
EXTENT PERMITTED BY LAW, IRREVOCABLY WAIVES ANY RIGHTS THAT THEY MAY HAVE TO
PUNITIVE, SPECIAL, EXEMPLARY OR CONSEQUENTIAL DAMAGES IN RESPECT OF ANY
LITIGATION BASED UPON, OR ARISING OUT OF, THIS AGREEMENT OR ANY RELATED
AGREEMENT OR ANY COURSE OF CONDUCT, COURSE OF DEALING, STATEMENTS OR ACTIONS OF
ANY OF THEM RELATING THERETO.
- 14
-
13.8. Sections and Subsection
Headings. The headings of sections and subsections are for
reference only and shall not limit or control the meaning thereof.
13.9. Assigns. This
Agreement and the Related Agreements shall be binding upon and inure to the
benefit of the parties hereto and their respective heirs, successors and
permitted assigns. Neither this Agreement and the Related Agreements
nor the obligations of any party hereunder or thereunder shall be assignable or
transferable by such party without the prior written consent of the other
parties hereto.
13.10. No Implied Rights or
Remedies. Except as otherwise expressly provided herein,
nothing herein expressed or implied is intended or shall be construed to confer
upon or to give any person, firm or corporation, except TEPS, ▇▇▇▇▇▇▇ and the
Company, any rights or remedies under or by reason of this
Agreement.
13.11. Counterparts. This
Agreement may be executed in multiple counterparts, each of which shall be
deemed an original, but all of which together shall constitute one and the same
instrument.
13.12. Dispute
Resolution. All disputes or claims arising under or in any way
relating to this Agreement shall be subject to the Dispute Resolution
Agreement.
13.13. Construction. The
language used in this Agreement will be deemed to be the language chosen by the
parties to express their mutual intent, and no rule of strict construction will
be applied against any party.
13.14. Severability. The
invalidity or unenforceability of any particular provision of this Agreement or
any Related Agreement shall not affect the other provisions hereof or thereof,
and this Agreement shall be construed in all respects as if such invalid or
unenforceable provision was omitted.
- 15
-
IN
WITNESS WHEREOF, and intending to be legally bound hereby, the parties hereto
have caused this Agreement to be duly executed and delivered as a sealed
instrument as of the date and year first above written.
|
▇▇▇▇▇▇▇-THERMO
CARBON CAPTURE LLC
|
||
|
By:
|
/s/
E N ▇▇▇▇▇▇
|
|
|
Name:
|
||
|
Title:
|
||
|
THERMO
ENERGY POWER SYSTEMS LLC
|
||
|
By:
|
/s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇
|
|
|
Name: ▇▇▇▇▇▇
▇. ▇▇▇▇▇▇
|
||
|
Title: Chairman
|
||
|
▇▇▇▇▇▇▇
POWER DEVELOPMENT LLC (as to Sections 4.2, 7.1, 13.4, and Articles 11-13
only)
|
||
|
By:
|
/s/
E N ▇▇▇▇▇▇
|
|
|
Name:
Title:
|
||
Annex
A
Patents
1. US
Patent No. 6,196,000 “Power System with Enhanced Thermodynamic Efficiency and
Pollution Control” (Filed: January 14, 2000; Issued: March 6, 2001;
Expiration Date: January 14, 2020)
2. US
Patent No. 6,918,253 “Power System with Enhanced Thermodynamic Efficiency and
Pollution Control” (Filed: January 11, 2001; Issued: July 19, 2005;
Expiration Date: January 14, 2020)
Annex
B
Patent
Applications
None
Annex
C
Registered
Trademarks
None