Exhibit 10.43
AEROJET AND H POWER
TRANSFER OF TECHNOLOGY AGREEMENT
THIS TRANSFER OF TECHNOLOGY AGREEMENT (the "Agreement") is entered into
this 16th day of May, 1995 (the "Effective Date") by and between AEROJET-GENERAL
CORPORATION, an Ohio corporation ("Aerojet"), having its principal place of
business at Xxxxxxx 00 xxx Xxxxxxx Xxxx, Xxxxxx Xxxxxxx, XX 00000 and H POWER
CORP., a Delaware corporation ("H Power"), having its principal place of
business at 00 Xxxxxxxxxx Xxxxxx, Xxxxxxxxxx, Xxx Xxxxxx 00000.
For the consideration set forth herein, the sufficiency of which is
acknowledged, the parties hereto agree as follows:
1. DEFINITIONS.
1.1 "CONFIDENTIAL INFORMATION" shall mean the Trade Secrets, the
Enhancements, the amount to be paid under Article II, and any information
concerning the business or financial affairs of Aerojet.
1.2 "INFORMATION" shall mean any data, invention, work, computer
program, method, improvement, know-how, discovery, idea, concept, technology,
process, knowledge, trade secret, drawing or other information existing on the
date hereof or hereafter generated, whether or not patented or patentable or
copyrighted or copyrightable.
1.3 "CONTRACTS" shall mean Advanced Research Projects Agency ("ARPA")
Contract No. BAA# 94-96.
1.4 "ENHANCEMENTS" shall mean all additions, changes, modifications and
improvements made by H Power, whether or not copyrightable or patentable, to the
Technology in the Field of Use.
1.5 "FUEL CELLS" shall mean devices which use an electrochemical
process for converting a fuel to electricity.
1.6 "FUEL PROCESSOR" shall mean devices which convert hydrocarbon fuel
to hydrogen for use in a Fuel Cell.
1.7 "FIELD OF USE" shall mean the application of the Technology solely
to Fuel Cells, Fuel Processors used in connection with Fuel Cells, and burners
and heat exchangers used in Fuel Cell systems, and shall specifically exclude,
without limitation, application of the Technology to products other than Fuel
Cells, Fuel Processors used in connection with Fuel
Cells, and burners and heat exchangers used in Fuel Cell systems.
1.8 "PATENT APPLICATIONS" shall mean all domestic and foreign patent
applications filed by Aerojet prior to the Effective Date or by H Power after
the Effective Date which contain the Technology or any portion thereof for
application in the Field of Use, including, without limitation, the Existing
Patent Applications.
1.9 "EXISTING PATENT APPLICATIONS" shall mean the following patent
applications filed by Aerojet prior to the Effective Date: Fuel Cell Employing
Integrated Fluid Management Platelet Technology, SN 08/322,823, Filed USPTO
October 12, 1994; Plastic Platelet Fuel Cells Employing Integrated Fluid
Management, Pillsbury, Madison & Sutro File No. 10270/26, Filed USPTO
______________ ; and any and all daughter applications (divisional,
continuation, reissue, substitute, extension or reexamination after request) and
foreign counterparts of either such patent application.
1.10 "PLATELETS" shall mean devices consisting of a set of thin plates
of metal, plastic, ceramic, or other suitable material into each of which
numerous intricate microgroove channels have been formed by etching, laser
ablation, cutting, embossing, pressing or stamping processes that create through
and partial depth features on the plates which when bonded together provide gas,
coolant, and vapor distribution channels.
1.11 "PATENTS" shall mean any patents which issue from a Patent
Application.
1.12 "DOCUMENTATION" shall mean the written documentation attached
hereto as Exhibit A.
1.13 "TECHNICAL SERVICES" shall mean the technical training regarding
the practice of the Trade Secrets to be provided by Aerojet to H Power under
Article 6.
1.14 "TECHNOLOGY" shall mean all information (a) previously or
hereafter disclosed to H Power by Aerojet regarding the design, development,
manufacture or use of Platelets, (b) contained in the Existing Patent
Applications or (c) contained in the Documentation.
1.15 "TRADE SECRETS" shall mean all Technology excepting only such of
the Technology which is contained in a Patent.
2. PAYMENTS. H Power shall make payments to Aerojet as provided in this Section
2.
2.1 INITIAL PAYMENT. On or before November 30, 1995, H Power will pay
Aerojet an initial payment equal to the sum of Two Hundred Thousand Dollars
($200,000) (the "Initial Payment").
2.2 INTERIM PAYMENTS. If the Assignment has not occurred, then on or
before the
second anniversary of this Agreement and each subsequent anniversary, H Power
shall pay Aerojet $50,000 (each such payment an "Interim Payment").
2.3 FINAL PAYMENT. On or before the fifth anniversary of the Effective
Date, H Power shall pay to Aerojet the "Final Payment Amount". The Final Payment
Amount shall be determined as follows:
(a) Beginning on the Effective Date and ending on
November 30, 1996 the Final Payment Amount shall be
$750,000 less the Initial Payment.
(b) After November 30, 1996 and ending on November
30,1997 the Final Payment Amount shall be $850,000
less the Initial Payment and any Interim Payments.
(c) After November 30, 1997 and ending on November 30,
1998 the Final Payment Amount shall be $950,000 less
the Initial Payment and any Interim Payments.
(d) After November 30, 1998 and ending on November 30,
1999 the Final Payment Amount shall be $1,050,000
less the Initial Payment and any Interim Payments.
(e) After November 30, 1999 the Final Payment Amount
shall be $1,150, 000 less the Initial Payment and any
Interim Payments.
3. PROSECUTION OF PATENT APPLICATIONS. Aerojet has previously filed with the
United States Patent and Trademark Office (the "PTO") two Patent Applications
and H Power will after the Effective Date be filing additional Patent
Applications. Aerojet hereby assigns to H Power the right and H Power hereby
assumes the obligation from and after the Effective Date to file, prosecute,
maintain, and defend, at its sole cost and expense, all Patent Applications and
Patents in accordance with this Section 3.
3.1 OWNERSHIP OF PATENTS. Notwithstanding the assignment to H Power by
Aerojet of the right to prosecute the Patent Applications until the Assignment
(as defined in Section 4), ownership of the Patent Applications shall remain
exclusively in Aerojet and any Patents shall be issued in the name of Aerojet
and be owned exclusively by Aerojet. All filings made by H Power and other
actions taken by H Power in connection with the filing, prosecution,
maintenance, and defense of the Patent Applications and any Patents shall be
made solely in the name of Aerojet and H Power shall have no ownership thereof
or any rights therein except as set forth in this Agreement.
3.2 DELIVERY OF PATENT PAPERS. As soon as practicable following the
execution of this
Agreement, but in no event later than fifteen (15) days thereafter, Aerojet
shall deliver to H Power all Patent Application files in Aerojet's possession or
under Aerojet's control.
3.3 PROSECUTION OF PATENT APPLICATIONS. Until the Assignment, H Power
shall use its best efforts and proceed diligently and without undue delay to
prosecute the Patent Applications (and all claims therein). Such best efforts
shall include, without limitation, engaging competent and experienced patent
counsel reasonably acceptable to Aerojet to advise on and administer the
prosecution thereof and taking all practicable actions in the prosecution of the
Patent Applications to obtain Patents with claims which are as broad or broader
than those contained in the Existing Patent Applications.
3.4 PATENT MAINTENANCE. Until the Assignment, H Power shall file all
necessary documents, pay all fees and take such others actions as are necessary
to maintain in force and defend any Patents.
3.5 REVIEW BY AEROJET. H Power will provide Aerojet a reasonable
opportunity in advance of any filings to be made with the PTO or any foreign
patent office to review all documents to be filed concerning the Patent
Applications. H Power will provide to Aerojet semi-annual status reports
regarding the prosecution of the Patent Applications. In the event Aerojet
objects to a proposed action by H Power which Aerojet believes will unduly
narrow a Patent Application or Patent, Aerojet shall provide H Power with notice
of such objection. Upon receipt of such notice, H Power shall promptly restore
the original scope of the Patent Application or Patent, as directed by Aerojet.
3.6 NOTICE OF NON-PROSECUTION. Until the Assignment, H Power shall give
Aerojet timely written notice if it has made a determination not to or has
reason to believe that it will not, for any reason, file or prosecute Patent
Applications (or any claims thereof) or maintain or defend any Patent in
accordance with this Agreement. Such notification shall be sufficiently in
advance of any required filing or other action date in connection with such
prosecution, maintenance or defense so as to permit Aerojet to take the
necessary action to secure, protect or maintain any right in respect of such
filing, prosecution, maintenance or defense. Any such notification shall, in any
event, be at least four (4) months prior to any PTO response due date.
Notwithstanding any such notice, the failure of H Power to so file, prosecute or
maintain shall constitute a breach of this Agreement.
3.7 ADDITIONAL FILINGS. H Power shall have the obligation to promptly
inform themselves of the requirements for obtaining foreign patent protection of
the inventions or improvements disclosed or embodied in the Existing Patent
Applications. Until the Assignment, H Power shall, at its own expense, timely
file all documents and take all other actions necessary for obtaining foreign
patent protection on the inventions or improvements disclosed or embodied in the
Existing Patent Applications as follows:
(a) With respect to the Existing Patent Applications, H Power
shall timely file
all documents, pay all fees and take all other necessary action to obtain the
benefits of the priority dates of the Existing Patent Applications under all
applicable patent treaties between the United States and foreign countries,
including, without limitation, the Patent Cooperation Treaty.
(b) H Power shall make timely document filings, and pay all
fees and take all other necessary actions to obtain patent protection of the
inventions disclosed or embodied in the Existing Patent Applications in the
following jurisdictions: European Group, Australia, Brazil, Canada, China,
Japan, Korea, Mexico, Singapore, Argentina, Chile, South Africa, Malaysia,
Taiwan and Philippines.
4. ASSIGNMENT OF PATENT RIGHTS. Upon payment by H Power to Aerojet of all
amounts required to be paid under Article II, Aerojet shall assign (the
"Assignment") to H Power all of Aerojet's rights in the Patent Applications and
Patents using the form of assignment attached hereto as Exhibit B.
5. USE OF TRADE SECRETS.
5.1 Aerojet hereby grants to H Power a nontransferable, worldwide,
exclusive, paid-up, royalty-free license to use, practice, modify and develop
the Technology in the Field of Use (the "Trade Secret License"); provided that
such Trade Secret License shall not be construed as limiting or restricting
Aerojet from any use, practice, modification or development of the Technology
for any purpose other than for purposes within the Field of Use. H Power shall
not use, practice, modify or develop the Technology for any purpose except
purposes within the Field of Use.
5.2 Aerojet shall within fifteen days of the Effective Date deliver to
H Power the Documentation.
5.3 H Power shall treat confidentially the Confidential Information and
protect the Confidential Information from any disclosure or use not authorized
by this Agreement. The Confidential Information may only be disclosed to H
Power's officers, directors, consultants, vendors, employees, sub-licensees, and
other third parties ("Representatives") who need to know the Confidential
Information for purposes within the Field of Use and who have been informed of
the confidential and proprietary nature of the Confidential Information and who
agree to maintain the confidentiality and limit the use of the Confidential
Information in accordance with this Agreement. H Power has or will have an
appropriate agreement with each of its Representatives sufficient to enable it
to comply with all of the terms of this Agreement.
5.4 The parties acknowledge that (i) the restrictions and obligations
contained in this Article 5 are reasonable and necessary to protect Aerojet's
legitimate interests, (ii) in the event of a violation of these restrictions,
remedies at law will be inadequate and such violation will cause irreparable
damages to Aerojet within a short period of time, and (iii) Aerojet will be
entitled to injunctive relief against each and every violation. H Power shall
immediately notify Aerojet of
any violation of this Article 5 by H Power or any of its Representatives and, in
the event of a violation by an H Power Representative, shall immediately seek
injunctive relief on behalf of Aerojet at H Power's sole expense. In the event H
Power fails to timely seek injunctive relief against such a violation by an H
Power Representative, Aerojet may seek such injunctive relief on its own behalf,
at H Power's sole expense.
6. GRANTBACK TO AEROJET. H Power hereby grants to Aerojet a perpetual (except as
provided in the last sentence of this Article 6), worldwide, exclusive, paid-up,
royalty-free license to use, practice, modify and develop the Enhancements. The
foregoing license to Aerojet is a present and fully-executed license; however,
Aerojet agrees to forbear from exercising its license rights unless and until
Aerojet cancels this Agreement.
7. TECHNICAL SERVICES. Commencing on the Effective Date and ending November 30,
1995 ("Services Period"), Aerojet shall provide to H Power up to Two Hundred
Thousand Dollars ($200,000) of technical training (the "Technical Training")
regarding the practice of the Trade Secrets in the Field of Use. Such technical
training shall be provided to H Power at Aerojet's Sacramento facility. At such
time as H Power desires technical training, it shall notify Aerojet of the
training desired and the time at which it desires such training to occur.
Aerojet shall use its best efforts to accommodate such requests in a timely
manner. After Aerojet has provided H Power with Two Hundred Thousand Dollars
($200,000) of technical training, Aerojet shall be under no further obligation
to assist H Power in the use of the Technology.
8. ACCEPTANCE OF TRANSFER. The parties agree that once Aerojet has (a) delivered
to H Power the Patent Application files and the Documentation, and (b) provided
the Technical Training, Aerojet shall have no further obligation to provide H
Power with any Technology or any assistance of any kind in connection with the
use of any Technology except for the Assignment. On November 30, 1995, H Power
shall sign an acceptance of transfer in the form attached hereto as Exhibit C
acknowledging that, except for the Assignment, Aerojet has completed it
obligations to H Power hereunder.
9. NO WASTING OF TECHNOLOGY. Until the Assignment or the cancellation of the
Agreement, H Power will (a) devote reasonable efforts to develop and practice
the Technology in the Field of Use, (b) not abandon the use or development of
the Technology in the Field of Use, (c) not unduly narrow or jeopardize the
validity of the Patent Applications and/or Patents.
10. EMPLOYEES OF AEROJET.
10.1 RIGHT TO SOLICIT. Aerojet hereby grants to H Power the right to
solicit the employment of the particular Aerojet employees listed on Exhibit D
attached hereto. H Power acknowledges and agrees that any Technology which is or
may be gained by H Power from former Aerojet personnel is not considered part of
the Technology provided by Aerojet under this Agreement. H Power shall have no
recourse against Aerojet in the event H Power cannot reach agreement with any
one or more of the employees listed on Exhibit D regarding employment of
such individual(s) by H Power.
10.2 CONTINUING CONFIDENTIALITY OBLIGATION. Upon commencing
solicitation of any of the individuals listed on Exhibit D, H Power shall notify
such individual of his or her continuing obligation of confidentiality to
Aerojet under law and pursuant to any existing employment and/or confidentiality
agreement between such individual and Aerojet.
11. ASSIGNMENT OF GOVERNMENT CONTRACTS.
11.1 On and after the Effective Date, Aerojet will use its reasonable
efforts, and H Power will cooperate with Aerojet and use reasonable efforts, to
obtain any consents, approvals, novation, and waivers necessary to novate to H
Power the Contracts; provided, however, that Aerojet will not be obligated to
pay any consideration therefor or to incur any other obligation or liability in
connection therewith and that the failure to obtain any necessary consent,
approval, novation or waiver with respect thereto will not be a breach of this
Agreement or any other obligation of Aerojet.
11.2 Notwithstanding the failure of Aerojet on or after the Effective
Date to obtain any such consents, approvals, novation and waivers, from and
after the Effective Date, H Power shall perform and discharge when due all
obligations under such Contracts on behalf of Aerojet and any other parties
thereto.
12. INDEMNIFICATION. H Power shall, at its sole cost and expense, defend Aerojet
from any and all claims, demands, actions or causes of action, at law or in
equity (a "Claim") and indemnify and hold Aerojet harmless from all damages,
liabilities, losses, costs, judgments, orders, assessments, interest, penalties,
fines, settlement payments, costs and expenses (including, without limitation,
attorneys' fees and other investigation and defense costs and expenses) incurred
by Aerojet which arise out of or result in any way from (a) the Technology in
the Field of Use or (b) any use of the Technology by or through H Power, or (c)
the Enhancements, including, but not limited to, claims of ownership,
infringement claims, and product liability claims which arise out of or result
in any way from (a) the Technology in the Field of Use or (b) any use of the
Technology by or through H Power, or (c) the Enhancements. H Power shall be
entitled to maintain control over the defense of any Claim and any negotiations
and settlement thereof with counsel reasonably acceptable to Aerojet provided
that H Power will not settle any such Claim without the consent of Aerojet which
consent shall not be unreasonably withheld. In the event that H Power fails to
promptly and diligently investigate and defend or settle any Claim, then Aerojet
shall have the right, at H Power's cost, expense and risk, from that time
forward to have sole control of the defense of the Claim and all negotiations
for its settlement or compromise.
13. TERM AND TERMINATION.
13.1 TERM. This Agreement shall commence as of the Effective Date and
shall remain in effect until otherwise cancelled in accordance with this Article
13.
13.2 CANCELLATION. Aerojet may cancel this Agreement by written notice
to H Power if H Power:
(a) fails to comply with any of its obligations under Sections
2, 3, 5 or 9, which obligations shall be deemed material, and does not cure such
failure within 15 days after
written notice thereof from Aerojet or repeatedly fails to comply with any such
obligation whether or not cured;
(b) fails to comply with any other obligation under this
Agreement which is material and does cure such failure within 15 days after
written notice from Aerojet or repeatedly fails to comply with any such
obligation whether or not cured; or
(c) makes a general assignment for the benefit of creditors,
admits in writing its inability to pay debts as they mature, suffers or permits
the appointment of a receiver for its business or assets, or avails itself of or
becomes subject to any other judicial or administrative proceeding that relates
to insolvency or protection of creditors' rights.
13.3 CANCELLATION OBLIGATIONS. Upon the cancellation of this Agreement
by Aerojet and without limiting any other right or remedy Aerojet may have:
(a) all rights of H Power to prosecute and acquire the Patent
Applications and Patents and practice the Technology shall terminate and H Power
shall immediately return to Aerojet all Patent Application files;
(b) the Trade Secret License shall terminate and H Power will
immediately deliver the Documents to Aerojet and any other papers, documents,
tapes and other media and all other materials containing or reflecting any
Confidential Information and H Power shall not retain any copies thereof; and
(c) H Power shall irrevocably assign to Aerojet the ownership
of all of its right, title and interest in and to the Enhancements and deliver
to Aerojet all papers, documents, tapes and other media in its possession or
under its control which contain or reflect any Enhancements. In connection with
any such assignment, H Power will communicate to Aerojet all facts known by H
Power concerning any Enhancement, sign all rightful papers, make all rightful
oaths and generally assist Aerojet in obtaining and enforcing patent, copyright
or other protection for all such Enhancements.
13.4 SURVIVAL. Cancellation of this Agreement shall not release H Power
of any obligation incurred prior to such cancellation or from its obligations
under Sections 2, 5.3, 5.4, 6, 12, 15 and 16.
14. RESTRICTION. During the term of this Agreement Aerojet will not, directly or
indirectly: (a) manufacture for sale, sell or otherwise transfer to any third
party Fuel Cells, or products incorporating Fuel Cells, or Platelets designed by
Aerojet for use in Fuel Cells or (b) assist any third party in the design or
manufacture of Fuel Cells or the design of Platelets for use in Fuel Cells;
provided, however, that the restrictions contained in (a) and (b) shall not
limit the right of Aerojet to sell, license or otherwise transfer any
intellectual property owned by Aerojet.
15. DISCLAIMER AND RELEASE.
15.1 AEROJET HEREBY EXPRESSLY DISCLAIMS ANY AND ALL REPRESENTATIONS OR
WARRANTIES, EITHER EXPRESS OR IMPLIED, CONCERNING THE TECHNOLOGY, PATENT
APPLICATIONS, PATENTS, TECHNICAL TRAINING, AND CONTRACTS. THE TECHNOLOGY, PATENT
APPLICATIONS, PATENTS, TECHNICAL TAG, AND CONTRACTS ARE PROVIDED TO H POWER "AS
IS," "WITH ALL FAULTS" AND WITHOUT WARRANTY OF ANY KIND, INCLUDING, WITHOUT
LIMITATION, ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE,
ANY WARRANTY THAT THE TECHNOLOGY IS PATENTABLE, ANY WARRANTY THAT THE TECHNOLOGY
DOES NOT INFRINGE ANY PATENT OR OTHER RIGHT OF A THIRD PARTY, ANY WARRANTY THAT
THE TECHNOLOGY ACCOMPLISHES A PARTICULAR RESULT OR WORKS FOR A PARTICULAR
PURPOSE, OR ANY WARRANTY OF AEROJET'S OWNERSHIP.
15.2 Except with respect to Aerojet's obligations under this Agreement,
H Power hereby waives and fully, finally and forever releases and discharges
Aerojet, and each of Aerojet's Affiliates, successors and assigns from any and
all claims, demands, obligations, damages, losses, causes of action and
liability, whether known or unknown, which H Power has or may hereafter have, of
any kind, nature or description whatsoever, including, without limitation, any
claims, demands, obligations, damages, losses, causes of action and liability
arising out of or relating to the Technology, Patent Applications, Patents,
Technical Training, Contracts, the MOU or any prior dealings between H Power and
Aerojet ("Claims"), whether at common law or under any existing or hereinafter
enacted federal, state or local law, regulation or ordinance (the "Release").
This Release shall be effective in all respects and shall not be subject to any
termination, modification or rescission notwithstanding the fact that the
usefulness or nature of the Technology, Patent Applications, Patents, Technical
Training and Contracts is other than, different from or contrary to the facts
now known by H Power or believed by H Power to be true. H Power acknowledges
that the Release covers any and all claims which are not known or suspected to
exist which, if known, would materially affect H Power's decision to voluntarily
execute and deliver this Agreement and H Power hereby waives any right to pursue
such unknown claims which may, now or hereafter, be provided under any
applicable law.
15.3 H Power agrees never to institute or aid in the prosecution of or
against Aerojet, or any Affiliate, successor or assign of Aerojet, any claim,
demand, action, cause or action, suit, or administrative or other proceeding (at
law, in equity, or otherwise) based upon any Claim covered by the Release.
16. MISCELLANEOUS.
16.1 GOVERNING LAWS. The laws of the state of California (irrespective
of its choice of law principles) shall govern the validity of this Agreement,
the construction of its terms, and the interpretation and enforcement of the
rights and duties of the parties hereto.
16.2 NO CONSEQUENTIAL DAMAGES. NEITHER PARTY SHALL BE RESPONSIBLE AND
EACH SPECIFICALLY DISCLAIMS LIABILITY FOR ANY SPECIAL, INCIDENTAL OR
CONSEQUENTIAL DAMAGES OF THE OTHER PARTY, EVEN IF SUCH PARTY HAS BEEN ADVISED OF
THE POSSIBILITY OF SUCH DAMAGES.
16.3 ENTIRE AGREEMENT. This Agreement together with the exhibits hereto
constitutes the entire agreement of the parties with respect to the subject
matter hereof and supersedes all prior written and oral agreements and
understandings, course of dealings, and any usages of trade with respect to such
subject matter, including, without limitation, the Memorandum of Understanding
("MOU") dated July 14, 1993 between H Power and Aerojet and the Proprietary
Information Exchange and Nondisclosure Agreement dated January 20, 1994 between
Aerojet and H Power (the "Nondisclosure Agreement"). No terms, conditions, prior
course of dealings, course of performance, usage of trade, understandings,
legends, purchase orders, order acceptances or other document purporting to
modify, vary, supplement or explain any provision of this Agreement shall be
effective unless in a writing, which (i) specifically refers to and purports to
modify, vary, supplement or explain this Agreement and (ii) is signed by
representatives of both parties authorized to amend this Agreement.
16.4 COUNTERPARTS. This Agreement may be executed in any number of
counterparts, each of which shall be an original as against any party whose
signature appears thereon and all of which together shall constitute one and the
same instrument.
16.5 NOTICES. All notices, requests, consents and other communications
hereunder to any party shall be deemed to be sufficient if contained in a
written instrument delivered in person, or by facsimile, overnight courier, or
first class registered or certified mail, postage prepaid, addressed to such
party at the address or applicable facsimile number set forth below or such
other address as may hereafter be designated in writing by the addressee to the
addressor:
Aerojet: Aerojet-General Corporation
Xxxxxxx 00 @ Aerojet Road
Rancho Cordova, CA 95670
Attn: Contract Manager
Phone: (000) 000-0000
Fax: (000) 000-0000
H Power: H Power Corporation
00 Xxxxxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Attn: President
Phone: (000) 000-0000
Fax: (000) 000-0000
All notices and other communications given to any party hereto in accordance
with the
provisions of the Agreement shall be deemed to have been given on the
date of delivery if personally delivered, on the date when sent if sent by
facsimile, on the business day after the date when sent if sent by overnight
courier, and on the earlier of (i) receipt by the sender of an official postal
acknowledgment therefor, (ii) receipt by the sender of telephonic confirmation
of receipt by the addressee, or (iii) the second business day after date when
sent, if sent by mail, in each case addressed to the party as provided in this
paragraph or in accordance with the latest unrevoked direction from such party.
16.6 WAIVER OF JURY TRIAL. Each party to this Agreement waives, to the
fullest extent permitted by applicable law, any right it may have to a trial by
jury in respect of any action, suit or proceeding arising out of or relating to
this Agreement. Each party to this Agreement certifies that no representative,
agent or attorney of another party thereto has represented, expressly or
otherwise, that such other party would not, in the event of litigation, seek to
enforce the foregoing waiver and acknowledges that it has been induced to enter
into this Agreement or instrument by, among other things, the mutual waivers and
certifications set forth above in this Section 16.6.
16.7 JURISDICTION; CONSENT TO SERVICE OF PROCESS.
(a) Each party to this Agreement hereby irrevocably and
unconditionally submits, for itself and its property, to the jurisdiction of any
California State court sitting in the County of Sacramento, or any Federal court
of the United States of America sitting in the Northern District of California
and any appellate court from any such court, in any suit, action or proceeding
arising out of or relating to this Agreement or instrument, or for recognition
or enforcement of any judgment resulting from any such suit, action or
proceeding, and each party hereby irrevocably and unconditionally agrees that
all claims in respect of any such suit, action or proceeding may be heard and
determined in such state court or, to the extent permitted by law, by removal or
otherwise, in such Federal court.
(b) It shall be a condition precedent to each party's right to
bring any such suit, action or proceeding that such suit, action or proceeding,
in the first instance, be brought in such state court or, to the extent
permitted by law, by removal or otherwise, in such Federal court (unless such
suit, action or proceeding is brought solely to obtain discovery or to enforce a
judgment), and if each of such state court and such Federal court refuses to
accept jurisdiction with respect thereto, such suit, action or proceeding may be
brought in any other court with jurisdiction; provided that the foregoing
condition precedent shall not apply to any suit, action or proceeding by a party
seeking indemnification or contribution pursuant to this Agreement or otherwise
in respect of a suit, action or proceeding against such party if such suit,
action or proceeding by such party seeking indemnification or contribution is
brought in the same court as the suit, action or proceeding against such party.
(c) No party to this Agreement may move to (i) transfer any
such suit, action or proceeding from such state court or Federal court to
another jurisdiction, (ii) consolidate any
such suit, action or proceeding brought in such state court or Federal court
with a suit, action or proceeding in another jurisdiction or (iii) dismiss any
such suit, action or proceeding brought in such state court or Federal court for
the purpose of bringing the same in another jurisdiction.
(d) Each party to this Agreement hereby irrevocably and
unconditionally waives, to the fullest extent it may legally and effectively do
so, (i) any objection which it may now or hereafter have to the laying of venue
of any suit, action or proceeding arising out of or relating to this Agreement
or instrument in any state court sitting in the County of Sacramento or any
Federal court sitting in the Northern District of California, (ii) the defense
of an inconvenient forum to the maintenance of such suit, action or proceeding
in any such court and (iii) the right to object, with respect to such suit,
action or proceeding, that such court does not have jurisdiction over such
party.
(e) Each party to this Agreement irrevocably consents to
service of process in any manner permitted by law.
16.8 ATTORNEYS' FEES. In any legal proceedings brought to enforce this
Agreement, the prevailing party shall be entitled to have its reasonable
attorneys' fees, related litigation expenses, and court costs paid by the
non-prevailing party.
16.9 ASSIGNMENT. H Power shall not transfer, or grant or permit to
exist any lien on, this Agreement or any of its rights or interests hereunder
without the prior written consent of Aerojet (which consent may be withheld in
Aerojet's sole discretion), and any such purported transfer or lien without such
consent shall be void.
16.10 SEVERABILITY. If any provision of this Agreement or the
application of any such provision is invalid, illegal or unenforceable in any
jurisdiction, such invalidity, illegality or unenforceability shall not affect
any other provision of this Agreement or invalidate or render unenforceable such
provision in any other jurisdiction. To the extent permitted by applicable law,
the parties waive any provision of law that renders any provision of this
Agreement invalid, illegal or unenforceable in any respect. In the event that
any provision of this Agreement shall be finally determined by a court of
competent jurisdiction to be unenforceable, such court shall have jurisdiction
to re-form this Agreement so that it is enforceable to the maximum extent
permitted by law and the parties shall abide by such court's determination. If
such provision cannot be re-formed, such provision shall be deemed to be severed
from this Agreement, but every other provision of this Agreement shall remain in
full force and effect.
16.11 AMENDMENT AND WAIVER. No amendment to this Agreement shall be
effective unless it shall be in writing and signed by each party hereto. Any
failure of a party to comply with any obligation, covenant, agreement or
condition contained in this Agreement may be waived by the party entitled to the
benefits thereof only by a written instrument duly executed and delivered by the
party granting such waiver, but such waiver or failure to insist upon strict
compliance with such obligation, covenant, agreement or condition shall not
operate as a waiver
of, or estoppel with respect to, any subsequent or other failure of compliance.
16.12 REMEDIES CUMULATIVE. Except as may otherwise be specifically
provided in this Agreement, the rights and remedies of the parties under such
agreement are cumulative and are not exclusive of any rights or remedies which
the parties would otherwise have. Equitable relief, including the remedies of
specific performance and injunction, shall be available with respect to any
actual or attempted breach of this Agreement or instrument.
16.13 PARTIES IN INTEREST; LIMITATION ON RIGHTS OF OTHERS. This
Agreement shall be binding upon and inure to the benefit of the parties hereto
and their permitted successors and assigns. Nothing in this Agreement, whether
express or implied, shall give or be construed to give any person (other than
the parties thereto and their permitted successors and assigns) any legal or
equitable right, remedy or claim under or in respect of this Agreement, unless
such person is expressly stated in this Agreement to be entitled to any such
right, remedy or claim.
16.14 NO AGENCY POWERS. Each of the parties shall perform their
obligations under this Agreement as independent contractors and no party shall
be deemed to be the partner, joint venturer, agent or legal representative of
any other party and the employees of one shall not be deemed employees of
another. Except as authorized in this Agreement, no party shall have any right,
power, or authority to make any contract or other agreement or to assume or
create any obligation, express or implied, on behalf of or in the name of any
other party or to bind any other party in any way and no party shall represent
to any person that such party has any such right, power or authority.
16.15 INTERPRETATION. It is acknowledged by the parties that this
Agreement has undergone several drafts with the negotiated suggestions of each
and, therefore, no presumptions shall arise favoring either party by virtue of
the authorship of any provision of this Agreement.
16.16 AUTHORITY. Each party hereby represents and warrants to the other
that: (i) it is a corporation duly organized, validly existing, and in good
standing under the laws of its state of incorporation; (ii) it is duly qualified
to do business in each jurisdiction where the nature of its activities requires
it to be so qualified; (iii) it has full power and authority under its
Certificate of Incorporation, By-laws, Regulations or other constitutive or
similar documents and the laws of the state of its incorporation to execute,
deliver, and perform this Agreement; (iv) the execution, delivery and
performance of this Agreement by it has been duly authorized by all requisite
corporate and shareholder action, (v) this Agreement is a valid, binding, and
legal obligation of it; and (vi) neither the execution and delivery of this
Agreement by it nor its full performance of its obligations hereunder will
violate or breach, or otherwise constitute or give rise to a default under, the
terms or provisions of the Certificate of Incorporation, By-laws, Regulations or
other constitutive or similar documents of it.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first written above.
AEROJET-GENERAL CORPORATION H POWER CORP.
By: /S/ R. I. XXXXXXXX By: /S/ XXXXXX XXXXXXX
--------------------- -------------------------
Name: R. I. XXXXXXXX Name: XXXXXX XXXXXXX
------------------- ----------------------
Title: PRESIDENT Title: PRESIDENT
------------------ ---------------------
LIST OF EXHIBITS
EXHIBIT A DOCUMENTATION
EXHIBIT B FORM OF ASSIGNMENT AND PATENT
APPLICATIONS
EXHIBIT C FORM OF ACCEPTANCE
EXHIBIT D AEROJET EMPLOYEES
EXHIBIT A
DOCUMENTATION
EXHIBIT B
ASSIGNMENT OF PATENT AND PATENT APPLICATIONS
THIS ASSIGNMENT (the "Assignment") is made this ___ day of ___, 199___
by AEROJET-GENERAL CORPORATION, an Ohio corporation ("Aerojet"), having its
principal place of business at Xxxxxxx 00 xxx Xxxxxxx Xxxx, Xxxxxx Xxxxxxx, XX
00000 in favor of H POWER CORP., a Delaware corporation ("H Power"), having its
principal place of business at 00 Xxxxxxxxxx Xxxxxx, Xxxxxxxxxx, XX, 00000.
WITNESSETH:
WHEREAS, subject and pursuant to the terms of a Transfer of Technology
Agreement dated May ___, 1995, by and between Aerojet and H Power, Aerojet
agreed to assign to H Power all of its rights in the following:
(1) United States patent application titled Fuel Cell
Employing Integrated Fluid Management Platelet
Technology, S/N 08/322,823, filed X.X.X.X.X. Xxxxxxx
00, 0000; xxx
(0) Xxxxxx Xxxxxx patent application titled Plastic
Platelet Fuel Cells Employing Integrated Fluid
Management, Pillsbury, Madison & Sutro, File No.
10270/26, filed U.S.P.T.O. _________; and
(3) Any and all daughter applications of (1) or (2) above
(divisional, continuation, reissue, substitute,
extension or reexamination after request) and foreign
counterparts of either (1) or (2) above; and
(4) Any patents which issue from any of (1), (2) or (3)
above, ((1), (2), (3) and (4) collectively, the
"Patent Rights").
NOW, THEREFORE, for good and valuable consideration of the receipt
sufficient of which is hereby acknowledged:
(1) Aerojet does hereby sell, assign and transfer unto H
Power, its successors and assigns all of its entire
right, title and interest in and to the Patent
Rights.
(2) Aerojet hereby authorizes and requests the
Commissioner of Patents of the United States and any
official of country or countries foreign to the
United States whose duty it is to issue patents or
other evidence or forms of
industrial property protection to issue the same to H
Power, its successors and assigns, in accordance with
the terms of this Assignment.
(3) Aerojet hereby expressly disclaims any and all
representations or warranties either expressed or
implied concerning the Patent Rights. The Patents
Rights are provided to H Power "as is," "with all
faults" without warranty of any kind, including,
without limitation, any warranty of merchantability
or fitness for a particular purpose, any warranty
that any patents will issue from any patent
application, any warranty that any patent application
or any patent does not infringe any other patent or
right of a third party, or any warranty of Aerojet's
ownership in all or any part of the Patent Rights.
IN WITNESS WHEREOF, Aerojet has caused this Assignment to be duly
executed this _____ day of_____________, 199___.
AEROJET-GENERAL CORPORATION
Name:
Title:
Date:
STATE OF OHIO )
)
COUNTY OF CUYAHOGA )
Before me, a Notary Public in and for said County and State, personally
appeared ____________________ who, being duly sworn, did depose and say that
he/she is the ____________________of Aerojet-General Corporation, the
corporation described in the above Assignment that he/she executed the above
Assignment as a free act on behalf of Aerojet-General Corporation.
Notary Public
Seal:
EXHIBIT C
ACCEPTANCE OF TRANSFER
THIS ACCEPTANCE OF TRANSFER ("Acceptance") is made this _____ day of
_____, 199____, by H POWER CORP., a Delaware corporation ("H Power"), in favor
of AEROJET- GENERAL CORPORATION, an Ohio corporation ("Aerojet").
WITNESSETH:
WHEREAS, H Power and Aerojet are parties to a Transfer of Technology
Agreement (the "Transfer Agreement") dated May ___, 1995 pursuant to which
Aerojet agreed to provide certain Technical Training, patent application files
and Documentation (each as defined in the Transfer Agreement) to H Power;
WHEREAS, Aerojet has provided to H Power the Technical Training, patent
application files, and Documentation;
NOW, THEREFORE, H Power acknowledges and agrees that Aerojet has
delivered the Technical Training, patent application files and Documentation in
Accordance with the Transfer Agreement and except for the Assignment (as defined
in the Transfer Agreement), Aerojet has completed all of its obligations to H
Power under the Transfer Agreement.
IN WITNESS WHEREOF, H Power has executed this acknowledgment as of the
date first above written.
H POWER CORP.
By:
Name:
Title:
EXHIBIT D
AEROJET EMPLOYEES
NAME PHONE NO.
---- ---------
XxXxxxxx, Xxxxx (000) 000-0000
Xxxx, Xxxx (000) 000-0000
Xxxxxxxx, Xxxxxxx (000) 000 0000
Xxxxxxx, Xxx (000) 000-0000
Xxxxx, Xxxxxx (000) 000-0000
Xxxxx, Xxxxxxx (Xxxx) (000) 000-0000
Xxxxxxxx, Xxxx (000) 000 0000
Xxxxx, Xxxx (000) 000-0000
Xxxxxxx, Xxxxxxx (Dick) (000) 000 0000
Xxxxxx, Xxx (000) 000-0000
Xxxxxxx, Xxxx (Ric) (000) 000-0000
Xxxxxxxxxx, Xxxxx (000) 000-0000
Xxxxxx, Xxx (000) 000-0000
Xxxxx, Xxxxxx (000) 000-0000
Xxxx, Xx (000) 000-0000
