VERSION WITH CONFIDENTIAL TERMS EXCLUDED MANUFACTURING AND LICENSE AGREEMENT
EXHIBIT 10.5
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
THIS MANUFACTURING AND LICENSE
AGREEMENT (the “Agreement”) is made
and entered into as of December 17, 2008 (the “Effective Date”) by
and between OPEN ENERGY CORPORATION, a Nevada corporation (“Licensor”), having a
principal place of business at 514 Xxx xx xx Xxxxx, Xxxxx 000, Xxxxxx Xxxxx,
Xxxxxxxxxx 00000, and WUXI SUNTECH POWER CO., LTD., a corporation organized
under the laws of the People’s Republic of China (“Suntech”) having a
principal place of business at 00-0 Xxxxx Xxxxx Xxxxx Xxxx, Xxx Xxxxxxxx Xxxx,
Xxxxx 000000.
1. Definitions and Grant of
License.
1.1 “Affiliate” means,
with respect to either party, any other party that, directly or indirectly
controls or is controlled by or is under common control with such
party. For purposes of this definition, “control” means the
possession, directly or indirectly, of the power to direct or cause the
direction of management or policies of such party through the ownership of
voting securities.
1.2 “Licensor Technology”
means all Technology provided by Licensor to Suntech pursuant to this
Agreement.
1.3 “Ancillary Technology”
means all tooling, test equipment, test programs and fixtures that Licensor
provides to Suntech hereunder.
1.4 “Confidential
Information” means all non-public information that the party disclosing
the information (the “Disclosing Party”)
designates at the time of disclosure as being confidential, or if disclosed
orally or visually is identified as such prior to disclosure and summarized, in
writing, by the Disclosing Party to the receiving party (the “Receiving Party”)
within thirty (30) days,, without limitation, the terms and conditions of this
Agreement and the Disclosing Party’s trade secrets, know-how, inventions,
techniques, processes, algorithms, software programs, schematics, designs,
contracts, customer lists, financial information, sales and marketing plans and
business information. Confidential Information does not include
information which (i) is or becomes generally available to the public other than
as a result of disclosure by the Receiving Party or any of its Representatives
or (ii) is already available to, or becomes available to, the Receiving Party on
a non-confidential basis from a source other than Disclosing Party or any of its
Representatives; provided, that such source is not bound by a confidentiality
agreement with, or other contractual, legal or fiduciary obligation of
confidentiality to, Disclosing Party or any other party with respect to such
information.
1.5 “Derivative(s)” means
any improvement, modification, correction, variation, enhancement or revision
relative to any Intellectual Property Rights applicable to the
Products.
1.6 “Intellectual Property
Rights” means copyright rights (including, without limitation, the
exclusive right to use, reproduce, modify, distribute, publicly display and
publicly perform the copyrighted work), trademark rights (including, without
limitation, trade names, trademarks, service marks, and trade dress), patent
rights (including, without limitation, the exclusive right to make, use and
sell), pending patent rights, trade secrets, moral rights, right of publicity,
authors’ rights, contract and licensing rights, goodwill, Technology,
Specifications (only as it refers to Licensor Intellectual Property) and all
other intellectual property rights as may exist now and/or hereafter come into
existence and all renewals and extensions thereof, regardless of whether such
rights arise under the law of the United States or any other state, country or
jurisdiction.
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WITH CONFIDENTIAL TERMS EXCLUDED
1.7 “Manufacturing
Facility” means Suntech’s manufacturing facility in Wuxi, Jiangsu
Province, People’s Republic of China.
1.8 “Products” means the
products identified on Exhibit A hereto, and any Derivatives
thereof.
1.9 “Specifications” means
the functional and performance specifications (including, without limitation,
bills of materials, schematic diagrams, parts and assembly drawings) relating to
the testing and manufacturing of each Product as provided by
Licensor.
1.10 “Suntech Materials”
means the photovoltaic panels and other Suntech inventory (excluding the
Licensor Materials) incorporated into the Products.
1.11 “Suntech Technology”
means the Technology provided by Suntech to Licensor pursuant to this Agreement
and all Derivatives thereof, specifically excluding that technology defined as
Licensor Technology.
1.12 “Technology” means all
technical information and/or materials, including, without limitation, ideas,
techniques, designs, sketches, drawings, models, inventions, know-how,
processes, apparatus, methods, equipment, algorithms, software programs, data,
software source documents, other works of authorship, formulae and information
concerning engineering, research, experimental work, development, design details
and specifications.
1.13 “Trademarks” means the
trademarks, trade names and service marks adopted by Licensor or Suntech, as the
case may be, or their licensors from time to time.
1.14 Licenses
Granted. Subject to full and timely payment of all amounts
properly due under this Agreement, Licensor hereby grants to Suntech an
exclusive, nontransferable, world-wide, royalty-bearing license, without the
right to sublicense, under the Intellectual Property Rights associated, solely
internally and solely for the purpose of making, having made, using, selling,
and offering for sale Products (including any Derivative thereof and any similar
or new generation products designed to be integrated into or affixed to membrane
and similar flat roofing material, and any similar or new generation products )
limited to the geographic area specified on Exhibit B (the
“Territory”). . Licensor expressly reserves its own right to improve,
modify, develop and create Derivatives of the Products, provided that, such
Derivatives shall be subject to this Agreement and the license granted
hereby.
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2. Manufacturing
Obligations.
2.1 Manufacturing. Suntech
agrees to manufacture the Products, upon the terms and conditions of this
Agreement. Suntech shall manufacture such Products in accordance with
normal and customary quality requirements for a high quality contract
manufacturer and in accordance with the applicable
Specifications. Suntech agrees to reserve production
capacity (measured in Megawatts) for manufacture of the Products in at least the
amounts corresponding to the quantity of Products the sale of which would
generate at least the Minimum Royalty for each applicable period set
forth in Section 3.4, provided that the Products have, in the case of North
American sales, either UL or CSA certification, and, in the case of European
sales, IEC certification.
2.2 Testing. Suntech will
only ship Products which have been tested successfully according to its normal
procedures. Suntech will perform final testing of all Products at the
Manufacturing Facility.
2.3 Ancillary
Technology. Licensor, with consent of Suntech, may furnish
Ancillary Technology to Suntech for use solely in the manufacture and testing of
the Products. Suntech will not at any time use the Ancillary
Technology for any other purposes or for any third parties or in any manner
other than in performing Suntech’s obligations under this Agreement. Suntech
acknowledges that any Ancillary Technology furnished to Suntech hereunder has
been provided without additional consideration for Suntech’s convenience and
Licensor specifically disclaims any and all warranties with respect to the
Ancillary Technology, which shall be furnished, if at all, with all
faults.
2.4 Identification. The
Products shall include Suntech labels of its own choosing and on the product
label the statement “Powered by Open Energy Technology” or similar phrase
incorporating Licensor’s corporate name and/or designated xxxx. To
the extent Suntech’s website describes the Products in reasonable detail,
Suntech shall include a similar statement on that section of its website which
describes the Products.
2.5 License to Suntech
Technology. To the extent that Suntech provides any Suntech
Technology to Licensor, Suntech hereby grants to Licensor a royalty-free license
to use the Suntech Technology provided to Licensor in connection with the
development and testing of the Products.
2.6 Restrictions. Except
as expressly set forth above, each party retains all of its Intellectual
Property Rights. No license is granted by Licensor to make, use or
sell any other products under the Licensor Intellectual Property Rights or to
make, use or sell any products for any other purpose. Except as
provided for in this Agreement, Suntech will not disclose Licensor’s
Intellectual Property Rights to any third party. Suntech will not
modify or reverse engineer any Licensor Technology.
2.7
Marketing.
Notwithstanding any of the above, each party may use the other party’s name,
tradenames, trademark, and other related intellectual property, including
photographs or other copyrighted works, solely for the purpose of marketing or
promotional materials. To the extent that a party has guidelines
governing use of such property, the other party shall abide by such governing
rules, except to the extent that prior permission is required by such governing
rules.
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3. Responsibilities of the
Parties.
3.1 Royalties. Suntech
shall pay royalties to Licensor as specified in the attached Exhibit C (the “Royalties”), for each
Product manufactured in accordance with this Agreement. The Royalties
with respect to a Product shall accrue upon its sale in accordance with the
Agreement. Royalties shall be payable to Licensor on or before the
fifteenth (15th) day of the calendar month immediately following each calendar
quarter in which the Royalties accrued. All Royalties are in U.S.
dollars and payment shall be made in U.S. dollars. To the extent that Licensor
has defaulted on any other payments under any other valid agreement or order
with Suntech, Suntech may offset the Royalties owed under this Agreement by 75%
until such time as such default amounts are completely repaid.
3.2 Royalty
Statements. Suntech shall furnish to Licensor, on or prior to
the fifteenth (15th) day of the calendar month immediately following each
calendar quarter, a full and complete statement, showing the number of each type
of Product manufactured during the calendar quarter in question, the total
wattage for each such Product, the total gross sales revenues for each such
Product, the amount of royalties due with respect to such gross sales
revenues, the quantities of each Product on hand and in transit as of the end of
the month, and the name and address of each wholesaler or other party to which
Suntech has sold the Products during the month. There shall be a
breakdown of sales of Products by country, and all figures and monetary amounts
shall first be stated in the currency in which the pertinent sales were actually
made. If several currencies are involved in any reporting category,
that category shall be broken down by each currency. Next to each
currency amount shall be set forth the equivalent amount stated in U.S. dollars
as of the date of the applicable transaction, and the rate of exchange used in
making the required conversion calculation.
3.3 Records and Audit
Rights. Suntech shall keep complete and accurate books of
accounts and records covering all transactions relating to the licenses hereby
granted and the sale and/or distribution
of Products. Licensor and its duly authorized
representatives shall have the right, not more than two (2) times per year and
upon reasonable notice and during reasonable hours, to audit such books of
account and records with respect to the subject matter and terms of this
Agreement. All books of account and records of Suntech shall be kept
available to Licensor for at least three (3) years after the expiration or
termination of this Agreement. If such audit reveals that the
payments made to Licensor for the period audited are at least five percent (5%)
less than the amount actually payable to Licensor for such period, Suntech shall
reimburse Licensor for all reasonable costs associated with such
audit.
3.4 Minimum
Take. During calendar year 2010, Suntech will sell a quantity
of Products such that Royalties would be payable in respect of at
least the following amounts on a worldwide basis (the “Minimum Royalty”) during
such years:
2010
[***]
Megawatts January-June 2010
[***]
Megawatts July-December 2010
2011-2013
[***] Omitted Term
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For each
of years 2011, 2012 and 2013, Suntech and Licensor shall attempt to reach
agreement on a worldwide Minimum Royalty applicable to such years on or prior to
the date that is ninety (90) calendar days prior to the first day of each
year. Factors that the parties shall consider in negotiating such
Minimum Royalties shall include [***].
If the parties are unable to reach agreement regarding the Minimum Royalty for
any such annual period, then the Minimum Royalty shall equal [***].
In the
event that Suntech fails to sell Products in an amount to generate at least the
Minimum Royalty for any of the periods listed above, then the license granted to
Suntech in Section 1 of this Agreement shall become non-exclusive, and Licensor
shall be free to license any of the Intellectual Property Rights covered hereby
to any other party. In the event that Suntech affirmatively decides
to cease commercialization of the Products subsequent to December 2010, Licensor
shall have the right to amend this Agreement upon thirty (30) days written
notice to Suntech to be non-exclusive, which notice shall state with specificity
the source of Licensor’s belief that commercialization of the Products has
ceased and Licensor’s intent to amend this Agreement.
3.5 Testing and
Certifications. Suntech shall use commercially reasonable
efforts to cause the Products to be tested and certified pursuant to IEC
guidelines as soon as reasonably practicable, and pursuant to all other such
applicable standards and regulations of the various local, state,
federal and international markets in which the Product will be sold or
distributed. Suntech shall use commercially reasonable efforts to
cause Product sales in Europe within calendar 2009, subject to the prior receipt
of applicable IEC certification as described above in this Section
3.5.
4. Marketing. The
Parties shall have the responsibilities as set forth on Exhibit B attached
hereto.
5. Quality
Assurance.
5.1 Quality
Standards. Suntech will manufacture the Products in accordance
with the quality requirements, standards and expectations as is usual and
customary.
5.2 Quality
Issues. Suntech agrees to use reasonable commercial efforts to
inform Licensor of any quality issues concerning the production of the Products
as soon as possible after discovery thereof.
6. Engineering
Changes
6.1 ECOs. Licensor
may, upon advance written notice to Suntech, submit engineering change orders
(“ECOs”) for
changes to the Products. ECOs will include documentation of the
change to effectively support an investigation of the impact of the engineering
change. Suntech will review the ECO and report to Licensor within
twenty (20) business days of Suntech’s receipt of the ECO. If the ECO
affects the manufacturing costs or timing of the Products or otherwise affects
the price or manufacturing process of the affected Products, the parties agree
to negotiate in good faith an equitable adjustment to the price and/or delivery
timing of the affected Products prior to implementation of the
change. The parties agree that twenty (20) business days is a
reasonable time period to permit Suntech to evaluate ECO impact regarding
potential excess manufacturing costs and price. Suntech may in its
sole discretion decide to reject any ECO that it reasonably believes will
adversely effect its obligations under this Agreement.
[***]
Omitted Term
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6.2 No
Changes. No changes will be made to the Products without
Licensor’s prior written consent and no approved change will be made effective
prior to the date approved by Licensor in writing. Suntech will not
change or modify the processes for the Products without Licensor’s prior written
consent. For the avoidance of doubt, to the extent any such approved
change or modification, to the extent it shall constitute intellectual property,
shall be deemed Licensor Intellectual Property Rights, subject to Section 7
below.
7. Ownership.
7.1 Ownership by
Licensor. As between Licensor and Suntech, Licensor will own
all right, title, and interest in and to Specifications, Ancillary Technology
and the Licensor Technology and all Intellectual Property Rights therein.
Licensor represents and warrants that it has full and exclusive right and
ownership in the Licensor Technology, Licensor Trademarks, Specifications,
Ancillary Technology and Licensor Intellectual Property
Rights. During and after the term of this Agreement, Suntech shall,
and shall cause its respective personnel to, from time to time as and when
requested by Licensor in accordance with this Section 7 and at the Licensor’s
expense, but without further consideration, execute any or all papers and
documents and perform any or all other acts necessary or appropriate, in the
reasonable discretion of the Licensor, to evidence or further document the
Licensor’s ownership of such Intellectual Property Rights and
Derivatives.
7.2 Ownership by
Suntech. As between Suntech and Licensor, Suntech will own all
rights, title and interest in and to the Suntech Technology and all Intellectual
Property rights therein. Suntech represents and warrants that it has full and
exclusive right and ownership in the Suntech Trademarks, Suntech Technology and
Suntech Intellectual Property.
8. Sales to
Licensor
Suntech
agrees to sell Product to Licensor (or any affiliate or designee thereof) on the
terms set forth on Exhibit D hereof; provided, that, Licensor shall not be
permitted to sell Product in Europe during the term of this Agreement. For the
avoidance of doubt, the purchase of Product by Licensor or its affiliate or
designee shall not generate Royalties consistent with any other sales of Product
hereunder.
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9. Confidential
Information.
9.1 Confidentiality
Obligations. Each party acknowledges that in the course of the
performance of this Agreement, it may obtain the Confidential Information of the
other party. The Receiving Party will, at all times, both during the
term of this Agreement and at all times thereafter, keep in confidence and trust
all of the Disclosing Party’s Confidential Information that it
received. The Receiving Party will not use the Confidential
Information of the Disclosing Party other than as necessary to perform its
obligations or exercise its rights under this Agreement. The
Receiving Party will take all reasonable steps to prevent unauthorized
disclosure or use of the Disclosing Party’s Confidential Information and to
prevent it from falling into the public domain or into the possession of
unauthorized parties. The Receiving Party will not disclose
Confidential Information of the Disclosing Party to any party other than its
officers, employees and consultants who need access to such Confidential
Information in order to effect the intent of this Agreement and who have entered
into written confidentiality agreements with the Receiving Party that protect
the Confidential Information of the Disclosing Party. The Receiving
Party will immediately give notice to the Disclosing Party of any unauthorized
use or disclosure of Disclosing Party’s Confidential Information. The
Receiving Party agrees to assist the Disclosing Party in remedying such
unauthorized use or disclosure of its Confidential Information.
9.2 Exclusions. The
parties’ obligations in Section 9.1 will not apply to the extent that
Confidential Information includes information which: (a) is already known to the
Receiving Party at the time of disclosure, which knowledge the Receiving Party
will have the burden of proving; (b) is, or, through no act or failure to act of
the Receiving Party, becomes publicly known; (c) is received by the Receiving
Party from a third party without restriction on disclosure; (d) is independently
developed by the Receiving Party without reference to the Confidential
Information of the Disclosing Party, which independent development the Receiving
Party will have the burden of proving; or (e) is approved for release by written
authorization of the Disclosing Party.
9.3 Legal
Disclosures. A disclosure of Confidential Information (a) in
response to a valid order by a court or other governmental body, or (b)
otherwise required by law (including, without limitation, the rules and
regulations of the Securities and Exchange Commission (“SEC”) relating to the
filing of exhibits to filings required under the Securities Act of 1933, as
amended, or the Securities Exchange Act of 1934, as amended) will not be
considered to be a breach of this Agreement or a waiver of confidentiality for
other purposes; provided however, that the
party disclosing such information shall provide prompt written notice thereof to
the other party, so as to enable it to seek a protective order or to otherwise
prevent such disclosure, and will use all reasonable efforts to keep as much
information as possible confidential, including requests for “confidential
treatment” from the SEC. Either party may disclose general (ie.
non-pricing) information concerning this Agreement and the transactions
contemplated hereby in connection with: (x) the due diligence review
of a party by potential business partners or investors, or investment bankers,
to such persons and to their employees, agents, attorneys and auditors; and (y)
obtaining legal advice regarding this Agreement or any related matters, to the
party’s outside legal advisors. Any and all information may be shared
pursuant to quarterly and annual financial or tax audits, to the party’s public
accounting firm.
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9.4 Confidential
Information. All Specifications and Statements of Work shall
be deemed to be Confidential Information, regardless of whether such information
is marked as confidential or not.
9.5 Notice of
Infringement. Each of the parties shall promptly report in
writing to the other during the term of this Agreement any suspected
infringement of the Intellectual Property Rights and any suspected unauthorized
use or misappropriation of any Licensor Technology in the Territory of which it
becomes aware, and shall provide the other with all available evidence
supporting such suspected infringement or unauthorized use or
misappropriation.
9.6 Primary
Right. Licensor shall have the primary right, but not the
obligation, to initiate an appropriate suit anywhere in the world against any
third party who at any time is suspected of infringing all or any portion of the
Intellectual Property Rights or using without proper authorization all or any
portion of the Licensor Technology in the Territory. Licensor shall
give Suntech sufficient advance notice of its intent to file such suit and the
reasons. Further, Licensor shall keep Suntech informed, and shall
from time to time consult with Suntech regarding the status of any such
suit.
9.7 Licensee
Participation. Licensor shall have the sole and exclusive
right to select counsel for any suit referred to in Section 9.6 and this Section
9.7 and shall, except as provided herein, pay all expenses of the suit,
including without limitation attorneys' fees and court
costs. Licensee shall have the right, but not the obligation, to
contribute fifty percent (50%) of the costs incurred in connection with such
litigation and, if it so elects, any damages, royalties, settlement fees or
other consideration received by Licensor for past infringement or
misappropriation as a result of such litigation shall be shared by Licensee and
Licensor pro rata based on their respective sharing of the costs of such
litigation. In the event that Licensee elects not to contribute to
the costs of such litigation, Licensor shall be entitled to retain any damages,
royalties, settlement fees or other consideration resulting
therefrom. If necessary, Licensee shall join as a party to the suit
but shall be under no obligation to participate except to the extent that such
participation is required as the result of being a named party to the
suit. Licensee shall offer reasonable assistance to Licensor at no
charge to Licensor except for reimbursement of reasonable out-of-pocket expenses
incurred in rendering such assistance. Licensee shall have the right
to participate and be represented in any such suit by its own counsel at its own
expense. Licensee shall not settle any such suit involving rights of
Licensor without obtaining the prior written consent of Licensor.
10. Warranty.
10.1 Product
Warranty. Suntech will provide a warranty to end users of the
Products with respect to the Products consisting of not less than a power output
warranty of 10 year 90% power output; 20 years, 80 power
output. Additionally, Suntech warrants for the same period as the
warranty to end users described in the preceding sentence (the “Warranty Period”),
that (a) the Product will conform to the Specifications; (b) the Product will be
of good material and workmanship and free from defects in the manufacture; and
(c) the Product will be free and clear of all liens and encumbrances and that
Suntech will convey good and marketable title to such Product.
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10.2 Materials
Warranty. Suntech warrants that all Products purchased from or
repaired by Suntech will consist of new materials (not used, recycled or of such
age as to impair its usefulness or safety, except as may be approved in advance
and in writing by Licensor).
10.3 Other Obligations and
Warranties.
(a) Regulatory
Compliance. Suntech represents and warrants that the
Manufacturing Facility will comply and its manufacturing processes will be
conducted in accordance with all applicable international, federal, state and
local statutes, laws and regulations.
(b) Technology
Non-Infringement. Licensor represents and warrants that none
of the Licensor Technology, the Specifications or the Ancillary Technology
infringes or otherwise misappropriates any third party Intellectual Property
Rights.
(c) Formation, Good Standing and
Authority. Each of Suntech and Licensor represents and
warrants to the other that it is a company duly formed, validly existing and in
good standing under the laws of its jurisdiction and that this Agreement has
been duly executed and delivered by it, and (assuming due authorization,
execution and delivery by the other) constitutes a legal, valid and binding
obligation of it, enforceable against it in accordance with its terms, subject
to (i) laws of general application relating to bankruptcy, insolvency and the
relief of debtors, and (ii) rules of law governing specific performance,
injunctive relief and other equitable remedies.
(d) No
Conflict. Each of Suntech and Licensor represents and warrants
to the other that the execution, delivery and performance by it of this
Agreement do not and will not (i) violate or conflict with its Certificate of
Incorporation, By-laws or similar governing documents, (ii) conflict with or
violate any law, rule, regulation, order, writ, judgment, injunction, decree,
determination or award applicable to it, or (iii) result in any breach of, or
constitute a default (or event of default that, with the giving of notice or
lapse of time, or both, would become a default) under, or give to others any
rights of termination, amendment, acceleration or cancellation of, or result in
the creation of any lien or other encumbrance on, any of its assets or
properties pursuant to, any note, bond, mortgage, indenture, contract,
agreement, lease, license, permit, franchise or other instrument relating to its
assets or properties to which it is a party or by which any of its assets or
properties is bound or affected.
(e) Consents and
Approvals. Each of Suntech and Licensor represents and
warrants to the other that, except for any import and/or export approvals,
licenses and/or other permits as set forth hereunder, the execution, delivery
and performance of this Agreement by it do not and will not (i) require any
consent, approval, authorization or other action by, or filing with or
notification to, any governmental authority, except where the failure to obtain
such consent, approval, authorization or action, or to make such filing or
notification, would not prevent it from performing any of its material
obligations under this Agreement, or ii) require any third-party consents,
approvals, authorizations or actions on its part.
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10.4 Warranty
Disclaimer. THE WARRANTIES CONTAINED IN THIS SECTION ARE IN
LIEU OF, AND EACH PARTY EXPRESSLY DISCLAIMS AND THE OTHER PARTY WAIVES ALL OTHER
REPRESENTATIONS AND WARRANTIES, EXPRESS, IMPLIED, STATUTORY OR ARISING BY COURSE
OF DEALING OR PERFORMANCE, CUSTOM, USAGE IN THE TRADE OR OTHERWISE, INCLUDING
WITHOUT LIMITATION THE IMPLIED WARRANTIES OF MERCHANTABILITY, NON-INFRINGEMENT
OF THIRD PARTY RIGHTS UNDER THE UNIFORM COMMERCIAL CODE AND FITNESS FOR A
PARTICULAR PURPOSE.
11. Insurance. Each
party will maintain workers’ compensation and comprehensive general liability
insurance (including product liability coverage) for claims for damages because
of bodily injury or death and property damage, but in no event, less insurance
than required to sufficiently cover its obligations under this
Agreement.
12. Term and
Termination.
12.1 Term. This
Agreement will commence on the Effective Date and will continue until December
31, 2013, unless earlier terminated pursuant to this Agreement (the “Initial
Term”). After the Initial Term, this Agreement shall
automatically renew for successive one (1) year terms (each such renewal a
“Renewal
Term”), unless written notice is provided by either party of its
intention not to renew the term of this Agreement no later than ninety (90) days
prior to the end of the Initial Term or then-current term.
12.2 Termination for
Default. Either party may terminate this Agreement if the
other party violates any covenant, agreement, representation or warranty
contained herein in any material respect or defaults or fails to perform any of
its obligations or agreements hereunder in any material respect, which
violation, default or failure is not cured within thirty (30) days after written
notice (which notice will describe the alleged breach in reasonable
detail) from the non defaulting party stating its intention to terminate this
Agreement by reason thereof.
12.3 Other Causes of
Termination. This Agreement will terminate:
(a) Upon
the mutual written agreement of the parties to terminate this Agreement;
or
(b) Upon
written notice by either party, immediately, if:
(i) a
receiver is appointed for the other party or its property;
(ii) at
any time on or after January 1, 2010, the other party becomes insolvent or
unable to pay its debts as they mature in the ordinary course of
business;
(iii) the
other party is liquidated or dissolved; or
(iv) any
proceedings are commenced against the other party under any bankruptcy,
insolvency or debtor’s relief law and such proceedings are not vacated or set
aside within sixty (60) days from the date of commencement thereof.
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12.4 Effect of
Termination. Upon the expiration or termination of this
Agreement:
(a) Suntech
will immediately cease the use of all of the Licensor Technology and
Intellectual Property Rights and will return all Licensor Materials, except that
upon the expiration or termination of this Agreement for any reason, Suntech
will complete the production of any Products of which Suntech has accepted a
Purchase Order as of the effective date of such expiration or termination and
deliver such completed Products and/or Licensor Materials to
Licensor;
(b) Other
than as necessary for Licensor to exercise its rights under this section, each
party will return or destroy all copies of the Confidential Information within
thirty (30) days after the effective date of the termination and certify in
writing that such party has complied with its obligations hereunder;
and
(c) NEITHER
LICENSOR NOR SUNTECH SHALL BE LIABLE TO THE OTHER BECAUSE OF SUCH EXPIRATION OR
TERMINATION, FOR COMPENSATION, REIMBURSEMENT OR DAMAGES FOR THE LOSS OF
PROSPECTIVE PROFITS, ANTICIPATED SALES OR GOODWILL, ON ACCOUNT OF ANY
EXPENDITURES, INVESTMENTS OR COMMITMENTS MADE BY EITHER, OR FOR ANY OTHER REASON
WHATSOEVER BASED UPON THE RESULT OF SUCH EXPIRATION OR TERMINATION, EXCEPT THAT
LICENSOR SHALL BE ABLE TO RECOVER SUCH DAMAGES IF THEY ARE THE RESULT OF A
MATERIAL BREACH BY SUNTECH OF ITS OBLIGATION TO DELIVER PRODUCTS UNDER A
PREVIOUSLY ACCEPTED PURCHASE ORDER.
12.5 Survival. The
parties’ rights and obligations that by their nature continue and survive will
survive any termination or expiration of this Agreement.
13. Limitation of
Liability. EXCEPT FOR BOTH PARTIES’ INDEMNIFICATION
OBLIGATIONS UNDER SECTION 14 AND FOR A PARTY’S BREACH OF THE CONFIDENTIALITY
OBLIGATIONS UNDER SECTION 9, NEITHER PARTY SHALL HAVE ANY LIABILITY TO EACH
OTHER OR ANY OTHER THIRD PARTY FOR ANY INDIRECT, INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES, INCLUDING, BUT NOT LIMITED TO, LOST PROFITS, LOST DATA,
LOSS OF USE OR COSTS OF PROCUREMENT OF SUBSTITUTE GOODS OR SERVICES, ARISING IN
ANY WAY OUT OF THIS AGREEMENT OR THE TRANSACTION CONTEMPLATED HEREBY, UNDER ANY
CAUSE OF ACTION OR THEORY OF LIABILITY, AND IRRESPECTIVE OF WHETHER SUCH PARTY
HAD ADVANCE NOTICE OF THE POSSIBILITY OF SUCH DAMAGES.
11
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
14. Indemnification.
14.1 By
Suntech. Suntech will defend, indemnify and hold Licensor and
its officers, directors and employees harmless (inclusive of reasonable
attorneys’ fees) from and against any third party claim, suit, action or
proceeding brought against Licensor arising from, relating to or in connection
with: (a) acts, errors or omissions by or negligence of Suntech, its
employees, officers, agents or representative of any of them in the manufacture,
construction or assembly of the Product; (b) any third party claims founded on
theories of product liability related to the manufacture, construction or
assembly of the Products (up to, and not exceeding an amount equal to $1 million
in aggregate liability for any calendar year of this Agreement); or (c)
infringement by the Products of any third party Intellectual Property
Right; but in each of clauses (a) through (c) above only to the extent that such
Products are not manufactured in conformity with the Specifications; and (d) the
handling, storage or transport of Product in the manufacturing process, except
where the Specifications dictate the aspect of the handling, storage or
transportation of the Product that is the subject to the applicable claim,
action or proceeding; and in each of the foregoing clauses (a)
through (d), only to the extent that such claims are not based on Licensor
Intellectual Property. THE FOREGOING STATES SUNTECH’S SOLE AND
EXCLUSIVE LIABILITY WITH RESPECT TO ANY CLAIM OF INFRINGEMENT OF THIRD PARTY
PROPRIETARY RIGHTS REGARDING PRODUCTS.
14.2 By
Licensor. Licensor will defend, indemnify and hold
Suntech and its officers, directors and employees harmless (inclusive of
reasonable attorneys’ fees) from and against any third party claim, suit, action
or proceeding brought against Suntech arising from or relating to: (a) claims
that the Specifications or the Licensor Technology or the Ancillary Technology
infringes or misappropriates any third party Intellectual Property Right; (b)
acts, errors or omissions by or negligence of Licensor, its employees, officers,
agents or representative of any of them in the design of the Products, or (c)
any third party claims founded on theories of product liability related to the
design of the Products (up to, and not exceeding an amount equal to $1 million
in aggregate liability for any calendar year of this Agreement), except to the
extent related to the Suntech Technology. THE FOREGOING STATES LICENSOR’S SOLE
AND EXCLUSIVE LIABILITY WITH RESPECT TO ANY CLAIM OF INFRINGEMENT OF THIRD PARTY
PROPRIETARY RIGHTS REGARDING THE SPECIFICATIONS, THE ANCILLARY TECHNOLOGY OR THE
LICENSOR TECHNOLOGY.
14.3 Indemnification
Procedure. Each of the parties in its respective capacity as
an indemnitee (“Indemnitee”) hereunder, shall give to the other party
(“Indemnitor”) prompt written notice of any claim that might give rise to
indemnified liabilities under Section 14.1 or 14.2 setting forth a description
of those elements of such claim of which such Indemnitee has knowledge; provided
that any failure to give such notice shall not affect the obligations of the
Indemnitor unless (and then solely to the extent) the ability of the Indemnitor
to provide such indemnification is prejudiced in any material respect
thereby. The Indemnitor shall have the right at any time during which
such claim is pending to select counsel to defend and control the defense
thereof and settle any claims for which it is responsible for indemnification
hereunder (provided that no Indemnitor will settle any such claim without (i)
the appropriate Indemnitee’s prior written consent which consent shall not be
unreasonably withheld or delayed or (ii) obtaining an unconditional release of
the appropriate Indemnitee from all claims arising out of or in any way relating
to the circumstances involving such claim) so long as in any such event, the
Indemnitor shall have stated in a writing delivered to the Indemnitee that, as
between the Indemnitor and the Indemnitee, the Indemnitor is responsible to the
Indemnitee with respect to such claim to the extent and subject to the
limitations set forth herein; provided further that the Indemnitor shall not be
entitled to control the defense of any claim if in the reasonable opinion of
counsel for the Indemnitee there are one or more defenses available to the
Indemnitee which are not available to the Indemnitor. To the extent
that the undertaking to indemnify and hold harmless set forth in the preceding
sentence may be unenforceable because it is violative of any law or public
policy, each Indemnitor shall contribute the maximum portion which it is
permitted to pay and satisfy under applicable law, to the payment and
satisfaction of all Indemnified Liabilities incurred by the Indemnitee for any
Indemnitor.
12
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
15. General.
15.1 Assignment. Except
for an assignment by either party to an Affiliate thereof, neither party will
assign this Agreement, in whole or in part, or any obligations or rights
hereunder (except the right to receive payments), except with the prior written
consent of the other party, which consent will not be unreasonably withheld or
delayed, except in the case or a merger or acquisition, in which case consent is
solely the decision of the non-assigning party. Subject to the
foregoing, this Agreement will inure to the benefit of each of the party’s
successors and permitted assigns.
15.2 Relationship of the
Parties. The parties to this Agreement are independent
contractors. There is no relationship of agency, partnership, joint
venture, employment or franchise between the parties. Neither party
has the authority to bind the other or to incur any obligation on its
behalf.
15.3 Publicity. Neither
Licensor nor Suntech shall make any public announcement, except that Licensor
may disclose that Suntech is a contract manufacturer for Licensor and Suntech
may disclose the same, and except as the parties may mutually agree in advance
and in writing, as to the existence and details of the matters set forth in this
Agreement (other than to employees, consultants, stockholders (who are bound by
confidentially agreements) or as required by such parties’ disclosure
obligations under the securities laws or regulations of the United States or any
state thereof).
15.4 Waiver. No
term or provision hereof will be considered waived by either party, and no
breach excused by either party, unless such waiver or consent is in writing
signed on behalf of the party against whom the waiver is asserted. No
consent by either party to, or waiver of, a breach by either party, whether
express or implied, will constitute a consent to, waiver of, or excuse of any
other, different or subsequent breach by either party.
15.5 Severability. If
any part of this Agreement is found invalid or unenforceable, that part will be
amended to achieve as nearly as possible the same economic effect as the
original provision and the remainder of this Agreement will remain in full
force.
15.6 Choice of
Law. This Agreement will be governed by and construed in
accordance with the laws of the United States and the State of California, as
applied to agreements entered into and to be performed entirely within
California between California residents. The parties agree that the
United Nations Convention on Contracts for the International Sale of Goods
(1980) is specifically excluded from application to this Agreement.
13
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
15.7 Arbitration. Except
for claims for emergency or preliminary injunctive relief with respect to breach
of confidentiality provisions herein or breach of any Intellectual Property
Rights hereunder, which may be raised in any court of competent jurisdiction,
any dispute, claim or controversy arising out of or relating to this Agreement,
or the interpretation, making, performance, breach or termination thereof, shall
be finally settled by binding arbitration in San Francisco County, California
under the Rules of Arbitration of JAMS/Endispute, by a single arbitrator
reasonably familiar with the technology and business pertaining to the products
covered by this Agreement, appointed in accordance with said
Rules. The arbitrator shall permit discovery as provided by the
Federal Rules of Civil Procedure, to the extent deemed appropriate by the
arbitrator, upon request of a party. The arbitration and all
pleadings and written evidence shall be in the English
language. Judgment on the award entered by the arbitrator may be
entered in any court having jurisdiction thereof. Notwithstanding the
foregoing, the parties irrevocably submit to the non-exclusive jurisdiction of
the Superior Court of the State of California, San Francisco County, and the
United States District Court for the Northern District of California in any
action to enforce an arbitration award.
15.8 Notices. Any
notice provided for or permitted under this Agreement will be in writing and
will be treated as having been given (a) when delivered personally; (b) when
sent by confirmed facsimile or telecopy; (c) one (1) Business Day after being
sent by nationally recognized overnight courier with written verification of
receipt; or (d) three (3) Business Days after being mailed postage prepaid by
certified or registered mail, return receipt requested, to the party to be
notified, at the address set forth below, or at such other place of which the
other party has been notified in accordance with the provisions of this
section.
|
If
to Licensor:
|
If
to Suntech:
|
|
Open
Energy Corporation
000
Xxx xx xx Xxxxx, Xxxxx 000
Xxxxxx
Xxxxx, XX 00000
Fax:
000-000-0000
Attn.: General
Counsel
|
Suntech
America, Inc.
000
Xxx Xxxxxxxxxxx
0xx
Xxx.
Xxx
Xxxxxxxxx, XX 00000
Fax:
000-000-0000
Attn.:
Legal Dept.
|
15.9 Amendment. This
Agreement may be amended or supplemented only by a writing that refers
explicitly to this Agreement and that is signed on behalf of both
parties.
15.10 Force
Majeure. Neither party will be liable for any failure or delay
in performance under this Agreement which is due, in whole or in part, directly
or indirectly, to any contingency, delay, failure, or cause of, any nature
beyond the reasonable control of such party, including, without in any way
limiting the generality of the foregoing, fire, explosion, earthquake, storm,
flood or other weather, unavailability of necessary utilities or raw materials,
strike, lockout, blackout, unavailability of components, activities of a
combination of workmen or other labor difficulties, war, insurrection, riot, act
of God or the public enemy, law, act, order, export control regulation,
proclamation, decree, regulation, ordinance, or instructions of government or
other public authorities, or judgment or decree of a court of competent
jurisdiction (not arising out of breach by such party of this
Agreement). In the event of the happening of such a cause, the party
whose performance is so affected will give prompt written notice to the other
party, stating the period of time the same is expected to
continue. Such delay will not be excused under this section for more
than sixty (60) days.
14
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
15.11 Interpretation. The
section and other headings contained in this Agreement are for reference
purposes only and will not in any way affect the meaning and/or interpretation
of this Agreement. It is the parties’ intent that this Agreement and
its addenda will prevail over the terms and conditions of any purchase order,
acknowledgment form or other instrument. In the event of a conflict
between the terms of this Agreement and the terms contained in any addenda to
this Agreement, the terms of the addenda will be controlling. Addenda
will not be binding until executed by authorized representatives of each
party.
15.12 Counterparts; Fax
Signatures. This Agreement may be executed in counterparts,
each of which will be deemed an original, but both of which together will
constitute one and the same instrument. The parties agree that
facsimile signatures of the parties will be binding.
15.13 Entire
Agreement. This Agreement, including all Exhibits to this
Agreement, constitutes the entire agreement between the parties relating to this
subject matter and supersedes all prior and/or simultaneous representations,
discussions, negotiations and agreements, whether written or oral.
15.14 Controlling
Language. This Agreement, and the exhibits hereto, are
prepared and executed in the English language only, which language shall be
controlling in all respects. Any translations of this Agreement or
any exhibit hereto into any other language are for reference only and shall have
no legal or other effect. Any notice which is required or permitted
to be given by one party to the other under this Agreement will be in the
English language and made in writing.
15
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
IN WITNESS WHEREOF, the parties have
caused this Agreement to be executed by their respective duly authorized
officers as of the date first written above.
|
WUXI
SUNTECH POWER CO., LTD.
|
OPEN
ENERGY CORPORATION
|
|
|
By: /s/ Xxxxxx Xxxx
|
By: /s/ Xxxxx X.
Field
|
|
|
Name: Xxxxxx Xxxx
|
Name: Xxxxx X. Field
|
|
|
Title: Chief Strategy
Officer
|
Title: President/CEO
|
16
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
Exhibit
A
Products
Solar
membrane products that embody, employ or are produced by any invention that
falls within the claims of U.S. Patent Application Serial No. 10/964,612, which
are designed to be integrated into or affixed to membrane and similar flat
roofing material, and any similar or new generation products.
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
Exhibit
B
TERRITORY
1. Suntech
shall be free to sell Products on a worldwide basis directly or through any
distributor it selects, and Suntech shall be responsible for all sales,
marketing and customer service activities related to the Products.
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
Exhibit C
– ROYALTIES
(subject
to Section 3.1 of the Agreement)
[***]
All
revenue calculations described above shall be in accordance with Suntech’s
prevailing accounting procedures for its publicly-reported financial statements
filed with the U.S. Securities and Exchange Commission as in effect during the
applicable period(s).
[***]
Omitted Term
VERSION
WITH CONFIDENTIAL TERMS EXCLUDED
Exhibit D
– PAYMENT TERMS
[***]
[***]
Omitted Term
