Exhibit 10.15
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AMENDED AND RESTATED LICENSE AGREEMENT
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THIS AMENDED AND RESTATED LICENSE AGREEMENT (the "Agreement"), made as of
the October 23, 1998, amends and restates the agreement made on the 28th day of
May, 1997 (the "Effective Date") by and between SatCon Technology Corporation, a
Delaware corporation, whose office is located at ▇▇▇ ▇▇▇▇▇ ▇▇., ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇.▇.▇. ("SatCon") and Beacon Power Corporation, a Delaware
corporation whose office is located at 6D ▇▇▇▇ Street, Woburn, Massachusetts,
01801 U.S.A. ("Licensee").
WHEREAS, SatCon has formed Licensee as a wholly-owned subsidiary to develop
technology relating to flywheel energy storage products; and
WHEREAS, SatCon, through its ownership of Licensee, will benefit from the
success of Licensee's product development efforts and therefore desires to
enable Licensee to utilize certain of SatCon's existing rights in the
development of new products for the flywheel energy storage market;
NOW THEREFORE, in consideration of the mutual agreements and covenants set forth
herein, and for other good and valuable consideration, the receipt and
sufficiency of which is hereby confirmed, and intending to be legally bound
hereby, the parties agree as follows:
1. DEFINITIONS
1.1 "Covered Product" means a product or process covered by a Valid Claim
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of a SatCon Patent Right or which embodies SatCon Know-How.
1.2 "Licensee Improvements" means any of Licensee's inventions,
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improvements, modifications, enhancements and derivative works having
application outside the FES field and deriving from or based upon any
SatCon Rights developed prior to earliest of (i) the completion by the
Licensee of an Initial Public Offering that raises at least
$25,000,000 of gross proceeds to the Licensee; (ii) the fifth
anniversary of this Agreement; or (iii) the date shares of Licensee
are put to SatCon pursuant to Section 1.4 of the Securities Purchase
Agreement.
1.3 "FES Field" means the field of flywheel energy storage products,
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systems and processes for stationary terrestrial (in- or on-ground or
affixed to structures on ground) applications, but not for satellite
or other nonterrestrial applications.
1.4 "SatCon Improvements" means any of inventions, improvements,
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modifications, enhancements and derivative works having application in
the FES field deriving from or based upon any SatCon Rights, that are
developed by or for SatCon or any of its controlled subsidiaries other
than Licensee prior to the earliest of (i) the completion by the
Licensee of an
Initial Public Offering that raises at least $25,000,000 of gross
proceeds to the Licensee; (ii) the fifth anniversary of this
Agreement; or (iii) the date shares of Licensee are put to SatCon
pursuant to Section 1.4 of the Securities Purchase Agreement..
1.5 "SatCon Know-How" means all technical knowledge, information and know-
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how, whether treated as a trade secret or otherwise, and whether
embodied in a copyrighted work or not, which relates to the FES Field
and is owned by SatCon or in which SatCon has a sublicensable interest
as of the date of this Agreement.
1.6 "SatCon Patent Rights" means (a) the United States patents listed on
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Exhibit A hereto, (b) all corresponding patents and patent
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applications filed and the resulting patents issued in other
jurisdictions, (c) all divisions, continuations and continuations-in-
part of the patents referred to in the foregoing clauses (a) and (b),
and (d) all reissues, reexaminations and extensions thereof.
1.7 "SatCon Rights" means, collectively, the SatCon Know-How and the
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SatCon Patent Rights.
1.8 "Securities Purchase Agreement" means the Securities Purchase
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Agreement dated as of October 23, 1998 by and among SatCon, Licensee,
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Perseus Capital, L.L.C., Duquesne Enterprises and Micro-Generation
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Technology Fund, L.L.C.
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1.9 "Valid Claim" means a claim of an unexpired patent which shall not
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have been withdrawn, canceled or disclaimed, nor held invalid by a
court of competent jurisdiction in an unappealed or unappealable
decision, or a claim of a patent application which has not been on
file for more than seven years.
2. LICENSES
2.1 SatCon License. SatCon hereby grants to the Licensee, and the
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Licensee hereby accepts, a perpetual (subject to termination pursuant
to Section 6), worldwide, royalty-free, exclusive right and license
(the "SatCon License"), subject to the terms and conditions of this
Agreement, to make, have made, use, offer to sell, sell, have sold,
import, repair, modify, market, create derivative works of and
otherwise commercially exploit Covered Products in the FES Field.
2.2 Sublicensing. Licensee shall have the right to grant sublicenses
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under the SatCon Rights to make, have made, use, offer to sell, sell,
have sold, import, repair, modify, market, create derivative works of
and otherwise commercially exploit the Covered Products in the FES
Field. All sublicenses of the SatCon Rights by Licensee shall be
pursuant to written sublicense agreements. Licensee shall provide
SatCon a copy of any such
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agreement within thirty (30) days after entering into it. SatCon shall
maintain any such agreement in strict confidence.
2.3 Improvements.
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(a) Licensee hereby grants to SatCon, and SatCon hereby accepts, a
perpetual, worldwide, royalty-free, exclusive right and license,
subject to the terms and conditions of this Agreement, to make,
have made, use, offer to sell, sell, have sold, import, repair,
modify, market, create derivative works of and otherwise
commercially exploit products covered by Licensee Improvements
outside of the FES Field
(b) SatCon hereby grants to Licensee, and Licensee hereby accepts, a
perpetual, worldwide, royalty-free, exclusive right and, subject
to the terms and conditions of this Agreement, to make, have
made, use, offer to sell, sell, have sold, import, repair,
modify, market, create derivative works of and otherwise
commercially exploit products covered by SatCon Improvements in
the FES Field.
3. INTELLECTUAL PROPERTY
3.1 Ownership of Intellectual Properity. All SatCon Rights and SatCon
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Improvements and the goodwill associated therewith are and shall
remain the property of SatCon or its licensor and no ownership
interest therein is being conveyed to Licensee under this Agreement.
All Licensee Improvements and the goodwill associated therewith are
and shall remain the property of Licensee, subject to SatCon's
ownership of any underlying SatCon Rights, and no ownership interest
in the Licensee Improvements is being conveyed to SatCon under this
Agreement. SatCon represents and warrants to Licensee that SatCon has
good and valid title to the SatCon Patent Rights, and has the right to
grant Licensee the licenses granted under this Agreement.
3.2 Proprietary Notices. The Licensee shall include in each Covered
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Product, or the documentation therefor, an acknowledgment of SatCon's
ownership of the SatCon Rights in a form reasonably acceptable to
SatCon. SatCon shall include in each SatCon product embodying Licensee
Improvements, or the documentation therefor, an acknowledgment of
Licensee's ownership of the Licensee Improvements in a form reasonably
acceptable to Licensee.
3.3 Patent Prosecution.
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(a) The parties shall consult with each other in all efforts to file,
prosecute and maintain the SatCon Patent Rights throughout the
world, including all decisions regarding the scope of patent
coverage, claim language, whether to pursue or continue to pursue
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patent protection in any jurisdiction and other matters bearing
upon the substantive content of patents. SatCon shall pay all
costs of such efforts where the parties agree upon the action to
be taken.
(b) If the parties disagree on any action to be taken with respect to
the prosecution, issuance or maintenance of the SatCon Patent
Rights, the parties shall take the action resulting in the least
diminution of the SatCon Patent Rights, and if the action taken
results in increased costs or in costs that would be avoided by
not taking such action, such increased costs or costs that would
be avoided shall be borne by the party requesting such action.
3.4 Assertion of SatCon Rights.
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(a) Each party shall report promptly in writing to the other any
known or suspected infringement or misappropriation of the SatCon
Patent Rights or of other SatCon Rights in the FES Field anywhere
in the world. The parties shall consult with each other on all
efforts to initiate and prosecute an infringement or other
appropriate suit against any third party who at any time has
infringed, or is suspected of infringing, any of the SatCon
Patent Rights or of other SatCon Rights in the FES Field.
(b) Licensee shall have the exclusive right to initiate an
infringement or other appropriate suit, in the name of SatCon if
necessary, against any third party who at any time has infringed,
or is suspected of infringing, any of the SatCon Rights in the
FES Field. Licensee shall have the sole and exclusive right to
control, select counsel for and settle any such suit and shall
pay all expenses of such suit. Any damages, settlements,
recoveries or other consideration received by Licensee for past
infringement or misappropriation as a result of such litigation
shall be retained by Licensee. If Licensee initiates suit in the
name of SatCon, then Licensee shall indemnify SatCon for any
damages SatCon is ordered to pay to a third party in such suit.
(c) SatCon shall have the exclusive right to initiate an infringement
or other appropriate suit against any third party who at any time
has infringed, or is suspected of infringing, any of the SatCon
Rights outside of the FES Field. SatCon shall have the sole and
exclusive right to control, select counsel for and settle any
such suit and shall pay all expenses of such suit. Any damages,
settlements, recoveries or other consideration received by SatCon
for past infringement or misappropriation as a result of such
litigation shall be retained by SatCon.
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(d) Each party, at its expense, will reasonably cooperate with the
other party in the conduct of a suit under this Section 3.4, such
cooperation to include the making of affidavits, the answering of
interrogatories, the making of persons available for depositions
and appearances as witnesses, the production of documents, and
the like.
4. NONDISCLOSURE
4.1 The parties agree that the SatCon Know-How, confidential portions of
the SatCon Patent Rights, and information relating to the filing,
maintenance, prosecution, assertion and litigation of the SatCon
Rights (collectively, the "SatCon Confidential Information")
constitute the confidential and proprietary information and the
valuable trade secrets of SatCon in which Licensee has the exclusive
rights granted herein. Neither party shall publish, disseminate or
disclose the SatCon Confidential Information, in whole or in part, to
any third party, except to its distributors, customers, licensees,
sublicensees and independent contractors who have a need to know such
SatCon Confidential Information, and further provided that such
distributors, customers, licensees, sublicensees and independent
contractors have agreed in writing to maintain the confidentiality of
such SatCon Confidential Information with at least the same degree of
protection set forth herein.
4.2 Licensee shall not use the SatCon Confidential Information except as
expressly permitted by this Agreement. Each party shall protect the
confidentiality of the SatCon Confidential Information using
reasonable security measures. All personnel who are permitted to
access or use the SatCon Confidential Information shall be required to
sign agreements obligating them to maintain the confidentiality of the
SatCon Confidential Information indefinitely, and not to use the
SatCon Confidential Information except as permitted by this Agreement.
A party shall notify the other party promptly and in writing of the
circumstances surrounding any suspected possession, use or knowledge
of the SatCon Confidential Information or any part thereof at any
location or by any person or entity other than those authorized by
this Agreement, and shall take further steps as may reasonably be
requested by the other party to prevent or remedy any such violation.
Each party is permitted to make reasonable inquiries concerning the
other party's compliance with the provisions of this Section 4.
4.3 Notwithstanding Sections 4.1 and 4.2, (i) SatCon may disclose SatCon
Confidential Information to a third party when such disclosure is, in
SatCon's reasonable business judgment, necessary for its business
outside the FES Field; (ii) Licensee may disclose SatCon Confidential
Information to a third party when such disclosure is, in Licensee's
reasonable business judgment, necessary for its business in the FES
Field; (iii) a party shall not
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be required to maintain the confidentiality of any information that
(a) is or becomes public or available to the general public otherwise
than through any act or default of such party or (b) is received by
such party from a third party who has no obligation to maintain the
confidentiality of such information; and (iv) a party may disclose
SatCon Confidential Information to the extent required by a court or
other governmental authority, provided that (a) the party gives the
other party reasonable notice of the disclosure, (b) the party uses
reasonable efforts to resist disclosing the SatCon Confidential
Information, and (c) the party cooperates with the other party on
request to obtain a protective order or otherwise limit the
disclosure.
5. DISCLAIMERS; LIMITATIONS
5.1 EXCEPT AS PROVIDED IN SECTION 3.1, SATCON DISCLAIMS ALL WARRANTIES,
WHETHER EXPRESS OR IMPLIED, ORAL OR WRITTEN, WITH RESPECT TO THE
SATCON RIGHTS, INCLUDING, WITHOUT LIMITATION, ALL IMPLIED WARRANTIES
OF, NONINFRINGEMENT, MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR
PURPOSE.
5.2 SATCON SHALL HAVE NO LIABILITY WHATSOEVER FOR DAMAGES TO LICENSEE FOR
ANY CAUSE RELATING TO OR ARISING FROM THE SATCON RIGHTS, REGARDLESS OF
THE FORM OF ANY CLAIM OR ACTION, INCLUDING DIRECT, INDIRECT, SPECIAL,
CONSEQUENTIAL, PUNITIVE AND EXEMPLARY DAMAGES, AND ANY DAMAGES ARISING
FROM LOSS OF DATA, LOSS OF PROFITS, BUSINESS INTERRUPTION, AND ALL
OTHER CAUSES, EVEN IF SATCON HAS BEEN MADE AWARE OF THE POSSIBILITY OF
SUCH DAMAGES, EXCEPT AS OTHERWISE REQUIRED BY LAW.
5.3 The parties acknowledge and agree that the unauthorized use,
disclosure, transfer or dissemination of the SatCon Confidential
Information will diminish substantially the value of such SatCon
Confidential Information and is likely to irreparably harm the other
party and not to be susceptible of cure by monetary damages; and that
if a party or any employee, agent, affiliate, officer or subsidiary of
such party breaches the provisions of Sections 2, 3.1 or 4 hereof, the
other party shall, without limiting its other rights or remedies, be
entitled to equitable relief to enjoin or prevent such breach.
5.4 The design, manufacture, testing, marketing and distribution of the
Covered Products are the responsibility of Licensee. Therefore,
Licensee agrees to defend, indemnify and hold SatCon harmless from and
against
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any and all expenses, charges, costs, fees, damages and settlements
incurred by SatCon in connection with any claim by any customer,
reseller or other third party relating in any way to the Covered
Products or the incorporation of the SatCon Know-How therein.
6. TERM AND TERMINATION
6.1 Term. This Agreement, and the licenses granted herein, shall remain
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in effect until terminated as set forth below.
6.2 Termination. This Agreement may be terminated:
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(a) by SatCon, immediately if the Licensee has materially breached
(i) any obligation under this Agreement and has not cured such
breach within one hundred twenty (120) days following the date on
which SatCon. has given written notice specifying the facts
constituting the breach, if such breach is susceptible of cure,
or (ii) any obligation under this Agreement, if such breach is
not susceptible of cure.
(b) by SatCon effective immediately and without any requirement of
notice, if (i) all Purchasers to the Securities Purchase
Agreement dated October 23, 1998 have exercised their Put Rights
(as defined in that agreement) and (ii) the Licensee files for or
consents to a general assignment for the benefit of creditors,
files a petition in bankruptcy or liquidation, or is adjudicated
bankrupt or insolvent under the laws of any jurisdiction for the
general benefit of creditors of an insolvent or financially
troubled debtor, or if a petition in bankruptcy or liquidation is
filed against Licensee and is not finally dismissed by a court of
competent jurisdiction within forty-five (45) days of such
filing;
6.3 Effects of Termination. Upon termination of this Agreement, all
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rights, licenses and obligations of the parties under this Agreement
shall cease, and Licensee and its sublicensees shall deliver to
SatCon, at the Licensee's expense, all originals and copies of any
materials describing the SatCon Know-How, including all compilations,
translations, and partial copies, whether or not modified, and all
patent prosecution, maintenance and litigation files relating to the
SatCon Patent Rights in the possession of Licensee and its counsel.
The Licensee shall certify in writing within ten (10) business days
following termination that it and its sublicensees have complied with
this Section 6.3. Notwithstanding the foregoing, the provisions of
Sections 2.3(a) (as applicable only to Licensee Improvements in
existence as of the date of termination), 4, 5, 6.3 and 7.2 of this
Agreement shall survive any termination or expiration of this
Agreement in accordance with their terms.
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7. MISCELLANEOUS
7.1 Agreement Terms. Neither party hereto shall disclose the terms or
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conditions of this Agreement to any third party without the prior
written consent of the other party, except (a) as required by order or
rule of a governmental authority including, without limitation, the
United States Securities and Exchange Commission, (b) that copies of
this Agreement may be provided to Duquesne Enterprises, Inc., Perseus
Capital, L.L.C., and Micro Generation Fund, L.L.C.
7.2 Governing Laws. This Agreement shall be governed by and construed in
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accordance with the laws of the Commonwealth of Massachusetts, U.S.A.,
excluding its choice of law rules. Each party hereby consents to the
personal jurisdiction of the Federal and state courts of the
Commonwealth of Massachusetts for the purpose of the resolution of all
disputes arising under this Agreement.
7.3 Compliance with Laws. The Licensee shall comply with all applicable
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laws, legislation, rules, regulations, export restrictions,
governmental requirements and industry standards existing from time to
time with respect to the Covered Products and the performance by the
Licensee of its obligations hereunder.
7.4 Entire Agreement. This Agreement, including its Exhibits, constitutes
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the entire agreement between SatCon and the Licensee with respect to
the subject matter hereof, and shall not be released, discharged,
supplemented, interpreted, amended, varied, or modified in any manner
except by an instrument in writing signed by an authorized officer or
representative of each of the parties hereto.
7.5 No Waivers. No delay or omission on the part of either party to this
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Agreement in requiring performance by the other party or in exercising
any right hereunder shall operate as a waiver of any provision hereof
or of any right or rights hereunder; and the waiver, omission or delay
in requiring performance or exercising any right hereunder on any one
occasion shall not be construed as a bar to or waiver of such
performance or right on any future occasion.
7.6 Severability. If any provision of this Agreement shall for any reason
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be held illegal or unenforceable, such provision shall be deemed
separable from the remaining provisions of this Agreement and shall in
no way affect or impair the validity or enforceability of the
remaining provisions of this Agreement.
7.7 Section Headings. Section headings of this Agreement are for
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descriptive purposes only and shall not control or alter the meaning
of this Agreement.
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7.8 Relationship of the Parties. The parties shall for all purposes be
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considered independent contractors with respect to each other, and
neither shall be considered an employee, employer, agent, principal,
partner or joint venturer of the other.
7.9 Notices. For the purposes of this Agreement, and for all notices and
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correspondence hereunder, the addresses of the respective parties are
as follows:
If to SatCon: SatCon Technology Corporation
▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Attn: President
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
with a copy to ▇▇▇▇▇▇▇ ▇. Carp, Esq.
▇▇▇▇ and ▇▇▇▇ LLP
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▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
If to Licensee: Beacon Power Corporation
▇▇ ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: President
Fax: (▇▇▇) ▇▇▇-▇▇▇▇
with copies to: Perseus Capital, L.L.C.
The Army and Navy Club Building
▇▇▇▇ ▇ ▇▇▇▇▇▇, ▇.▇., ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇.▇. ▇▇▇▇▇
Attn: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Fax No. (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇ & ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇.▇.
▇▇▇▇▇▇▇▇▇▇, ▇.▇. ▇▇▇▇▇
Attn: ▇▇▇▇▇▇ ▇. ▇▇▇
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Vice President
Duquesne Enterprises, Inc.
One Northshore Center, Suite 100
▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Fax No.:
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▇▇▇▇▇▇ ▇. ▇▇▇▇, ▇▇.
Arete Corporation
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Fax No.: (▇▇▇) ▇▇▇-▇▇▇▇
No change of address shall be binding upon the other party hereto
until written notice thereof is received by such party at the address
show herein. All notices shall be in English and shall be effective
upon receipt if delivered personally or sent by facsimile, two days
after shipment by overnight delivery service and five (5) days after
mailing if sent by certified mail return receipt requested.
7.10 Assignment and Corporate Reorganization. The rights granted to the
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Licensee under this Agreement are personal in character. Except as
provided herein, neither this Agreement nor any rights granted hereby
may be assigned by the Licensee voluntarily or by operation of law
without SatCon's prior written consent and any such attempted
assignment shall be null and void. For purposes of this Agreement,
"assignment" shall be deemed not to include the transfer of all or
substantially all of the assets of, or a majority interest in the
voting stock of, the Licensee, or the merger of the Licensee with one
or more entities. SatCon may assign its rights under this Agreement
without the consent of the Licensee. This Agreement shall inure to
the benefit of and be binding upon any permitted successor or assign
of either party.
[Remainder of Page Intentionally Blank]
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IN WITNESS WHEREOF, SatCon and the Licensee have duly executed this
Agreement as of the dates written below:
LICENSEE: SATCON:
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BEACON POWER CORPORATION SATCON TECHNOLOGY CORPORATION
By: /s/ ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
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Name: ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇ Name: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇
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Title: President & CEO Title: President
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Date: October 27, 1998 Date: October 23, 1998
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[Signature Page to License Agreement]
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