Contract
Exhibit 10.10
THIS LICENSE AGREEMENT (this “License Agreement”) is entered into and made effective as of the
13th day of March, 2006 (“Effective Date”) by and between Advanced BioEnergy, LLC, a
Delaware Limited Liability Company (“OWNER”), and ICM, Inc., a Kansas corporation (“ICM”).
WHEREAS, OWNER has entered into that certain Design-Build Lump Sum Contract dated March 13,
2006 (the “Contract”) with Xxxxx, Inc., a Minnesota corporation (“Xxxxx”), under which Xxxxx is to
design and construct a 100 million gallon per year ethanol plant for OWNER to be located in or near
Fairmont, Nebraska (the “Plant”);
WHEREAS, ICM has granted Xxxxx the right to use certain proprietary technology and information
of ICM in the design and construction of the Plant; and
WHEREAS, OWNER desires from ICM, and ICM desires to grant to OWNER, a license to use such
proprietary technology and information in connection with OWNER’s ownership, operation, maintenance
and repair of the Plant, all upon the terms and conditions set forth herein;
NOW, THEREFORE, the parties, in consideration of the foregoing premises and the mutual
promises contained herein and for other good and valuable consideration, receipt of which is hereby
acknowledged, agree as follows:
1. Upon substantial completion of the Plant by Xxxxx pursuant to the terms of the Contract or,
if later, payment by OWNER of all amounts due and owing to Xxxxx under the Contract, ICM grants
to OWNER a perpetual limited license to use the Proprietary Property (hereinafter defined)
solely in connection with the ownership, operation, maintenance and repair of the Plant,
subject to the limitations provided herein (the “Purpose”).
2. The “Proprietary Property” means, without limitation, documents, Operating Procedures
(hereinafter defined), materials and other information that are furnished by ICM to OWNER in
connection with the Purpose, whether orally, visually, in writing, or by any other means,
whether tangible or intangible, directly or indirectly (including, without limitation, through
Xxxxx) and in whatever form or medium including, without limitation, the design, arrangement,
configuration, and specifications of (i) the combinations of distillation, evaporation, and
alcohol dehydration equipment (including, but not limited to, pumps, vessels, tanks, heat
exchangers, piping, valves and associated electronic control equipment) and all documents
supporting those combinations; (ii) the combination of the distillers grain drying (DGD), and
heat recovery steam generation (HRSG) equipment (including, but not limited to, pumps, vessels,
tanks, heat exchangers, piping and associated electronic control equipment) and all documents
supporting those combinations; and (iii) the computer system, known as the distributed control
system (DCS and/or PLC) (including, but not limited to, the software configuration,
programming, parameters, set points, alarm points, ranges, graphical interface, and system
hardware connections) and all documents supporting that system. The “Operating Procedures”
means, without limitation, the process equipment and specifications manuals, standards of
quality, service protocols, data collection methods, construction specifications, training
methods, engineering standards and any other information prescribed by ICM from time to time
concerning the Purpose. Proprietary Property shall not include any information or materials
that OWNER can demonstrate by clear and convincing written evidence: (i) was lawfully in the
possession of OWNER prior to disclosure by ICM or Xxxxx; (ii) was in the
public domain prior to disclosure by ICM or Xxxxx; (iii) was disclosed to OWNER by a third
party other than Xxxxx having the legal right to possess and disclose such information or
materials; or (iv) after disclosure by ICM or Xxxxx comes into the public domain through no
fault of OWNER or its members, directors, officers, employees, agents, contractors, consultants
or other representatives (hereinafter collectively referred to as “Representatives”).
Information and materials shall not be deemed to be in the public domain merely because such
information is embraced by more general disclosures in the public domain, and any combination
of features shall not be deemed to be within the foregoing exceptions merely because individual
features are in the public domain if the combination itself and its principles of operation are
not in the public domain.
3. OWNER shall not use the Proprietary Property for any purpose other than the Purpose. OWNER
shall not use the Proprietary Property in connection with any expansion or enlargement of the
Plant. ICM and its Representatives shall have the express right at any time to enter upon the
premises of the Plant to inspect the Plant and its operation to ensure that OWNER is complying
with the terms of this License Agreement.
4. OWNER’s failure to materially comply with the Operating Procedures shall void all
guarantees, representations and warranties, whether expressed or implied, if any, that were
given by ICM to OWNER, directly or indirectly through Xxxxx, concerning the performance of the
Plant that ICM reasonably determines are materially affected by OWNER’s failure to materially
comply with such Operating Procedures. OWNER agrees to indemnify, defend and hold harmless
ICM, Xxxxx and their respective Representatives from any and all losses, damages and expenses
including, without limitation, reasonable attorneys’ fees resulting from, relating to or
arising out of Owner’s or its Representatives’ (a) failure to materially comply with the
Operating Procedures or (b) negligent use of the Proprietary Property.
5. Any and all modifications to the Proprietary Property by OWNER or its Representatives shall
be the property of ICM. OWNER shall promptly notify ICM of any such modification and OWNER
agrees to assign all right, title and interest in such modification to ICM; provided, however,
OWNER shall retain the right, at no cost, to use such modification in connection with the
Purpose.
6. ICM has the exclusive right and interest in and to the Proprietary Property and the
goodwill associated therewith. OWNER will not, directly or indirectly, contest ICM’s ownership
of the Proprietary Property. OWNER’s use of the Proprietary Property does not give OWNER any
ownership interest or other interest in or to the Proprietary Property except for the limited
license granted to OWNER herein. Goodwill created by the operation of the plant and all
financial benefits therefrom shall be the property of the Owner.
7. OWNER shall pay no license fee or royalty to ICM for OWNER’s use of the Proprietary Property
pursuant to this License Agreement, the consideration for the perpetual limited license granted
herein is included in the amounts payable by OWNER to Xxxxx for the construction of the Plant
under the Contract.
8. OWNER may not assign the perpetual limited license granted herein, in whole or in
part, without the prior written consent of ICM, which will not be unreasonably withheld or
delayed. Prior to any assignment, OWNER shall obtain from such assignee a written instrument,
in form and substance reasonably acceptable to ICM, agreeing to be bound by all the terms and
provisions of this License Agreement. Any assignment of this License Agreement shall not
release OWNER from (i) its duties and obligations hereunder concerning the disclosure and
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use of the Proprietary Property by OWNER or its Representatives, or (ii) damages to ICM
resulting from, or arising out of, a breach of such duties or obligations by OWNER or its
Representatives. ICM may assign its right, title and interest in the Proprietary Property, in
whole or part, subject to the limited license granted herein.
9. The Proprietary Property is confidential and proprietary. OWNER shall keep the Proprietary
Property confidential and shall use all reasonable efforts to maintain the Proprietary Property
as secret and confidential for the sole use of OWNER and its Representatives for the Purpose.
OWNER shall retain all Proprietary Property at its principal place of business and/or the
Plant. OWNER shall not at any time without ICM’s prior written consent, copy, duplicate,
record, or otherwise reproduce the Proprietary Property, in whole or in part, or otherwise make
the same available to any unauthorized person provided, OWNER shall be permitted to copy,
duplicate or otherwise reproduce the Proprietary Property in whole or in part in connection
with, and to the extent it is necessary and essential for, the Purpose so long as all such
copies, duplicates or reproductions are kept at its principal place of business and/or the
Plant and are treated the same as any other Proprietary Property. OWNER shall not disclose the
Proprietary Property except to its Representatives who are directly involved with the Purpose,
and even then only to such extent as is necessary and essential for such Representative’s
involvement. OWNER shall inform such Representatives of the confidential and proprietary
nature of such information and, if requested by ICM, OWNER shall obtain from such
Representative a written instrument, in form and substance reasonably acceptable to ICM,
agreeing to be bound by all of the terms and provisions of this License Agreement to the same
extent as OWNER. OWNER shall make all reasonable efforts to safeguard the Proprietary Property
from disclosure by its Representatives to anyone other than permitted hereby. OWNER shall
notify ICM immediately upon discovery of any unauthorized use or disclosure of the Proprietary
Property, or any other breach of this License Agreement by OWNER or its Representatives, and
shall cooperate with ICM in every reasonable way to help ICM regain possession of the
Proprietary Property and prevent its further unauthorized use or disclosure. In the
event that OWNER or its Representatives are required by law to disclose the Proprietary
Property, OWNER shall provide ICM with prompt written notice of same so that ICM may seek a
protective order or other appropriate remedy. In the event that such protective order or other
appropriate remedy is not obtained, OWNER or its Representatives will furnish only that portion
of the Proprietary Property which in the reasonable opinion of its or their legal counsel is
legally required and will exercise its reasonable efforts to obtain reliable assurance that the
Proprietary Property so disclosed will be accorded confidential treatment.
10. OWNER agrees to indemnify ICM for any and all damages (including, without limitation,
reasonable attorneys’ fees) arising out of or resulting from any unauthorized disclosure or use
of the Proprietary Property by OWNER or its Representatives. OWNER agrees that ICM would be
irreparably damaged by reason of a violation of the provisions contained herein and that any
remedy at law for a breach of such provisions would be inadequate. OWNER agrees that ICM shall
be entitled to seek injunctive or other equitable relief in a court of competent jurisdiction
against OWNER or its Representatives for any unauthorized disclosure or use of the Proprietary
Property without the necessity of proving actual monetary loss or posting any bond. It is
expressly understood that the remedy described herein shall not be the exclusive remedy of ICM
for any breach of such covenants, and ICM shall be entitled to seek such other relief or
remedy, at law or in equity, to which it may be entitled as a consequence of any breach of such
duties or obligations.
11. The duties and obligations of OWNER under this License Agreement, and all provisions
relating to the enforcement of such duties and obligations shall survive and remain in full
force
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and effect notwithstanding any termination or expiration of the Contract or this License
Agreement.
12. ICM may terminate this License Agreement upon written notice to OWNER if OWNER willfully
or wantonly (a) uses the Proprietary Property for any purpose, or (b) discloses the Proprietary
Property to anyone, in each case other than permitted herein. Upon termination of this License
Agreement, OWNER shall cease using the Proprietary Property for any purpose (including the
Purpose) and, upon request by ICM, shall promptly return to ICM all documents or other
materials in OWNER’s or its Representatives’ possession that contain Proprietary Property in
whatever format, whether written or electronic, including any and all copies or reproductions
of the Proprietary Property. OWNER shall permanently delete all such Proprietary Property from
its computer hard drives and any other electronic storage medium (including any backup or
archive system). OWNER shall deliver to ICM a written certificate which certifies that all
electronic copies or reproductions of the Proprietary Property have been permanently deleted.
13. The laws of the State of Kansas, United States of America (or US), shall govern the
validity of the provisions contained herein, the construction of such provisions, and the
interpretation of the rights and duties of the parties. Any legal action brought to enforce or
construe the provisions of this License Agreement shall be brought in the federal or state
courts located in Wichita, Kansas, and the parties agree to and hereby submit to the exclusive
jurisdiction of such courts and agree that they will not invoke the doctrine of forum non
conveniens or other similar defenses in any such action brought in such courts.
Notwithstanding the foregoing, nothing in this License Agreement will affect any right ICM may
otherwise have to bring any action or proceeding relating to this License Agreement against
OWNER or its properties in the courts of any jurisdiction.
14. OWNER hereby agrees to waive all claims against ICM and ICM’s Representatives for any
consequential damages that may arise out of or relate to this License Agreement, the Contract
or the Proprietary Property whether arising in contract, warranty, tort (including negligence),
strict liability or otherwise, including but not limited to losses of use, profits, business,
reputation or financing. OWNER further agrees that the aggregate recovery of OWNER and Xxxxx
(and everyone claiming by or through OWNER and Xxxxx), as a whole, against ICM and ICM’s
Representatives, collectively, for any and all claims that arise out of, relate to or result
from this License Agreement, the Proprietary Property or the Contract, whether arising in
contract, warranty, tort (including negligence), strict liability or otherwise, shall
not exceed One Million US Dollars ($1,000,000).
15. The terms and conditions of this License Agreement constitute the entire agreement between
the parties with respect to the subject matter hereof and supersede any prior understandings,
agreements or representations by or between the parties, written or oral. Any rule of
construction to the effect that any ambiguity is to be resolved against the drafting party
shall not be applicable in the interpretation of this License Agreement. This License
Agreement may not be modified or amended at any time without the written consent of the
parties.
16. All notices, requests, demands, reports, statements or other communications (herein
referred to collectively as “Notices”) required to be given hereunder or relating to this
License Agreement shall be in writing and shall be deemed to have been duly given if
transmitted by personal delivery or mailed by certified mail, return receipt requested, postage
prepaid, to the address of the party as set forth below. Any such Notice shall be deemed to be
delivered and
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received as of the date so delivered, if delivered personally, or as of the third business day
following the day sent, if sent by certified mail. Any party may, at any time, designate a
different address to which Notices shall be directed by providing written notice in the manner
set forth in this paragraph.
17. In the event that any of the terms, conditions, covenants or agreements contained in this
License Agreement, or the application of any thereof, shall be held by a court of competent
jurisdiction to be invalid, illegal or unenforceable, such term, condition, covenant or
agreement shall be deemed void ab initio and shall be deemed severed from this License
Agreement. In such event, and except if such determination by a court of competent
jurisdiction materially changes the rights, benefits and obligations of the parties under this
License Agreement, the remaining provisions of this License Agreement shall remain unchanged
unaffected and unimpaired thereby and, to the extent possible, such remaining provisions shall
be construed such that the purpose of this License Agreement and the intent of the parties can
be achieved in a lawful manner.
18. The duties and obligations herein contained shall bind, and the benefits and advantages
shall inure to, the respective successors and permitted assigns of the parties hereto.
19. The waiver by any party hereto of the breach of any term, covenant, agreement or condition
herein contained shall not be deemed a waiver of any subsequent breach of the same or any other
term, covenant, agreement or condition herein, nor shall any custom, practice or course of
dealings arising among the parties hereto in the administration hereof be construed as a waiver
or diminution of the right of any party hereto to insist upon the strict performance by any
other party of the terms, covenants, agreement and conditions herein contained.
20. In this License Agreement, where applicable, (i) references to the singular shall include
the plural and references to the plural shall include the singular, and (ii) references to the
male, female, or neuter gender shall include references to all other such genders where the
context so requires.
IN WITNESS WHEREOF, the parties hereto have executed this License Agreement, the Effective Date of
which is indicated on page 1 of this License Agreement.
OWNER:
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ICM: | |
| ICM, Inc. | ||
By: /s/ Xxxxx X. Xxxxxxxxxx III
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By: /s/ Xxxx Xxxxxx Griend | |
Title: Chairman
|
Title: CEO | |
Date Signed: 3/16/06
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Date Signed: 3/24/06 | |
Address for giving notices:
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Address for giving notices: | |
000 X. 0xx Xx
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000 X Xxxxx Xxxxxx | |
Xxxxxx, XX 00000
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Xxxxxxx, XX 00000 |
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