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LICENSE AGREEMENT
This License Agreement (the "Agreement") is entered into as of this 5th
day of June, 1997 (the "Effective Date"), by and between Iron Dynamics, Inc.
("IDI" or "Licensor"), an Indiana corporation and a wholly-owned subsidiary of
Steel Dynamics, Inc. ("SDI"), and Sumitomo Corporation of America ("SCOA"), a
company incorporated under the laws of the State of New York, and Sumitomo
Corporation ("SC"), a corporation organized and existing under the laws of Japan
(collectively, "Licensee").
In consideration of the mutual covenants set forth herein, the parties,
intending to be legally bound hereby, agree as follows:
I. DEFINITIONS. Capitalized terms used in this Agreement shall
have the meanings given in the Schedule of Definitions attached as Exhibit A
hereto and deemed incorporated herein.
II. LICENSE RIGHTS REGARDING THE PROCESS AND THE PRODUCT.
2.1 THE PROCESS. Subject to the terms and conditions of
this Agreement, IDI hereby grants to Licensee, and Licensee hereby
accepts, an exclusive license, throughout the Territory, for the term
described in Article VI, to sub-license others (including entities in
which Licensee holds an equity interest) to use the Process, including
all Confidential Information and Technical Information relating to the
Process, as contemplated herein, for the manufacture, use and/or resale
of the Product.
2.2 LICENSE RIGHTS REGARDING THE PRODUCT. Subject to the
terms and conditions of this Agreement, IDI hereby grants to Licensee,
and Licensee hereby accepts, an exclusive license, throughout the
Territory, for the term described in Article VI, to sub-license others
(including entities in which Licensee holds an equity interest), to
manufacture, use and/or resell the Product, through use of the Process
including all Confidential Information and Technical Information
relating to the Process.
2.3 SCOPE OF LICENSE.
2.3(a) WARRANTIES AND LIMITATIONS. The parties
acknowledge that, although IDI agrees that it will act in good
faith and use its best efforts to develop and promote the
Process, IDI does not at this time have a specifically defined
Process to manufacture the Product, nor shall IDI be deemed
hereby, expressly or by implication, to Licensee or to any
sub-licensee, to have represented or warranted that it will
successfully develop a usable or marketable Process for the
manufacture, in whole or in part, of a usable, commercially
viable, and marketable Product. Accordingly, as more fully set
forth in Article IV, the license rights granted by IDI to
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Licensee for sub-license hereunder shall consist solely of all
Process know-how necessary for operation of the Process at
IDI's Facility, except for any patent rights or rights to any
Licensable Improvements (which may be separately licensed
hereunder), which IDI currently possesses or may develop or
acquire in connection with the Process or the manufacture of
the Product, and which IDI is entitled to license or
sub-license to Licensee, and Licensee shall neither make nor
imply any contrary representations or warranties to its actual
or prospective sub-licensees.
2.3(b) RESERVATION OF RIGHTS. IDI reserves to itself
and/or to its Affiliates (i) the sole and unfettered right to
establish and operate Supply Facilities for itself or any of
its Affiliates, anywhere throughout the world (including the
Territory),but without the right to sublicense others, or to
establish and operate Commercial Facilities for itself or any
of its Affiliates, but without the right to sublicense others,
and (ii) the right to license one or more Supply Facilities to
Preussag Xxxxx XX or any of its Affiliates ("Preussag"), for
use in their own European steelmaking operations, but without
the right to sublicense others.
If any Supply Facility owned or operated by IDI or an
Affiliate of IDI has excess capacity or if there is otherwise
excess Product which is from time to time not needed for
steelmaking operations, subject to applicable consents by
others to whom SDI may have conflicting obligations, Licensee
would be engaged by IDI to market and sell Fifty percent (50%)
of IDI's excess Product, if any, under terms and conditions no
less favorable to IDI than those available to IDI from its
other sales agencies or vendees. For purposes of this
paragraph, the term "excess Product" shall mean Product that
is not needed from time to time for SDI's (including its
Affiliates') own internal consumption and which is made
available for sale by IDI. If a Supply Facility owned or
operated by Preussag under this Section 2.3(b) has excess
capacity or if there is otherwise excess Product which is from
time to time not needed for its own steelmaking operations,
such excess Product may be sold to others, provided that in
Preussag's case Preussag first provide Licensee with a
commercially reasonable opportunity to purchase such excess
Product from Preussag, at prices and on terms to be negotiated
between the parties, or, at Preussag's election, to permit
Licensee to sell such excess Product for Preussag's account on
a commission basis. If IDI wishes to establish or to license
its Affiliate to establish one or more Commercial Facilities
within the Territory, IDI will first negotiate in good faith
with Licensee to determine whether and, if so, the terms under
which they may mutually agree to operate that Commercial
Facility, directly or indirectly, as a joint venture or
through some comparable ownership or operating structure;
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provided, however, that this agreement to negotiate in good
faith shall not be deemed in any manner to require IDI to
reach any final agreement or to come to any arrangement with
Licensee that IDI, in the exercise of its unfettered
discretion, does not seem to be in its best interest. Licensee
will have the right to establish for itself and/or its
Affiliates one or more Supply Facilities in the Territory
without the payment to IDI of any royalties or fees. Should
Licensee desire to establish for itself and/or its Affiliates
and/or a sublicensee one or more Supply Facilities and/or
Commercial Facilities in the Excluded Territory, IDI agrees to
consider such a request for an individual Facility license on
a case by case basis.
III. DELIVERY AND USE OF TECHNICAL INFORMATION: CONFIDENTIALITY
OBLIGATIONS. IDI agrees to make available to Licensee all Technical Information
relating to the Process, which IDI now has or may develop or acquire regarding
the Process, during the term of this Agreement, for use only in accordance
herewith. Licensee agrees that all Technical Information will be deemed to be
and will be received by Licensee solely for the purposes contemplated by this
Agreement and, unless otherwise provided, solely for purposes of operating the
licensed and sublicensed Facilities. Licensee further agrees that it will use
such Information only for the purposes and in the manner contemplated by, and
for the term specified in this Agreement. Licensee will make such Confidential
Information available to its officers, agents, employees, consultants or
advisors, to any juridical entity (and/or to its officers, agents, employees,
participants, consultants or advisors) to which, pursuant to any authorizations
granted under Article VIII, some or all of Licensee's rights hereunder may be
assigned, or to its sub-licensees and their officers, agents, employees,
consultants or advisors only after securing from each such person or sublicensee
binding agreements and commitments, as set forth in Exhibit C, to indemnify and
hold IDI harmless from and against any loss, cost or expense in the event that a
claim is asserted by any other person in connection with any of sublicensee's
activities hereunder, and agreement, as set forth in Exhibit C, that such
indemnification obligation of the sublicensee will be enforceable against the
sublicensee in the forum described in Section 9.8. Licensee agrees to secure
from each such person or sublicensee binding agreements and commitments, as set
forth in Exhibit C, regarding such rights to sublicensee's improvements to the
Product or Process consistent with the Licensee's own obligations and rights to
Licensee's improvements to the Product or Process. At the conclusion or
termination of this Agreement, Licensee will refrain from continuing to
sub-license all Confidential Information.
It is agreed that IDI's obligations hereunder are to Licensee
and not to any of Licensee's sub-licensees. At the conclusion or termination of
this Agreement, IDI shall be under no continuing obligation to provide Licensee
with Technical Information on an ongoing basis, with respect either to the
Process or the Product, and any continuing obligations to sub-licensees that may
have been undertaken by Licensee shall be and remain the responsibility of
Licensee alone; provided, however, that IDI will continue to make Technical
Information available to Licensee as required, for a period not to exceed twelve
(12) months subsequent to such conclusion or termination, with respect to each
Facility sub-licensed within the prior twelve (12)
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month period. The parties agree that the primary purpose of IDI's provision of
Technical Information to Licensee hereunder is to enable Licensee to acquire and
then become capable of using such information and/or imparting such information
to its sub-licensees through training in the use of the Process to manufacture
the Product effectively and efficiently, in light of the information known to
IDI at the time of its delivery to Licensee.
IDI shall make available to Licensee during the term hereof,
at IDI's Facility and during reasonable business hours, subject to reimbursement
of IDI's reasonable costs and expenses, appropriate IDI personnel, or others, as
reasonably required to provide Licensee with necessary set-up and operating
advice, to provide Licensee with reasonable training in the use of the Process,
in the operation of a Facility, and in the manufacturing of the Product, and
with the ability to itself train to work with its own sub-licensees, and will
further provide Licensee with reasonable amounts of general consultation,
correspondence, and telephonic advice, technical bulletins or advisories, and
the like, and reasonable access to IDI's Facility by Licensee and sublicensee..
In addition, IDI, for additional consideration (together with a reimbursement of
its costs and expenses) to be agreed upon between the parties at such time,
shall provide Licensee with a reasonable amount of initial on-site training, as
well as start-up assistance and reasonable support services, it being
understood, however, that Licensee will be expected to ultimately maintain its
own staffing for such purposes and that the primary purpose of this IDI
undertaking will be to "train the trainer." IDI will also provide Licensee with
a manual of IDI's "Standard Operating Procedures," which Licensee shall treat as
Confidential Information hereunder and which Licensee shall be entitled to use,
in accordance herewith, in order to develop its own manuals, instructions, or
technical bulletins for its own use or the use of its sub-licensees (subject,
however, to Licensee's protection of the Confidential Information contained
therein in the hands of its sub-licensees).
IDI's obligation to provide Licensee with Technical
Information hereunder shall include all improvements to the Process developed or
acquired by IDI during the term hereof, for use in connection herewith, subject
to the requirements of Article IV, but, unless mutually agreed with respect to
any patent rights or Licensable Improvements, shall not include any such patent
rights or Licensable Improvements. Subject to Licensee's obligations to preserve
Confidential Information and to IDI's determination that there are adequate
safeguards to prevent unauthorized disclosure or use, IDI shall, however,
disclose to Licensee any such patents and/or Licensable Improvements for the
purposes of enabling Licensee to determine the extent of its or any of its
sub-licenses' interest therein, if any, and to negotiate such rights therein as
it may wish to secure.
IV. PATENTS, OTHER INTELLECTUAL PROPERTY, AND TRADEMARKS. IDI has
made no representations or warranties to Licensee that it currently owns or
possesses any patent rights regarding the Process or the manufacture of the
Product, or that it possesses or will develop all of the other intellectual
property or know-how needed for the proper development and use of the Process or
for the manufacture of the Product. IDI may or may not be compelled to or may
find it necessary or desirable to acquire rights to use and/or sub-license
others to use one or more patents or other intellectual property rights in
connection with its development of the Process or
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the manufacture of the Product, and, although there can be no assurance that IDI
will be successful in doing so on terms acceptable to IDI, if and to the extent
that IDI can and does acquire such rights, Licensee's right to use or to
sub-license others to use any such patents, patent rights, intellectual
property, or know-how shall be specifically conditioned upon Licensee's (or, at
the holder's election, the sub-licensee's) entering into a separate license or
royalty agreement with the holder of such rights (whether IDI or others),
including Licensee's (or the sub-licensee's) agreement to pay any patent,
patent-related, or other intellectual property or know-how royalty or license
fees prescribed by the holder thereof, directly or on a pass-through basis (as
the holder thereof may require). In this regard, Licensee is expected and agrees
to independently assess and make its own determinations with regard to the
extent of its own rights to engage in the activities and to grant the
sub-license rights contemplated by this Agreement, and neither IDI nor any
Affiliate of IDI will indemnify or hold Licensee or any sub-licensee harmless
from and against any loss, cost, or expense in the event that a claim of
infringement or other violation of rights is asserted by any other person in
connection with Licensee's or any sub-licensee's activities hereunder; provided,
however, that IDI will use its best efforts to cooperate with Licensee in
Licensee's defense of any such claims and IDI will use its best efforts to
assist Licensee to negotiate reasonable terms and conditions, including any
applicable royalties, with respect to any such patents, patent rights, know-how,
technical information, or technologies as and when the need therefor arises,
whether before or after an alleged infringement related to the Process has
occurred or a claim otherwise asserted for Licensee's plants and sub-licensees'
plants. Licensee and sub-licensees agree to be responsible for payment of any
fees or royalties for their own plants.
Each party agrees not to register or use any trademark or
trade name of the other or of any trademark or trade name confusingly similar
thereto in sound, appearance, or meaning without first obtaining the written
consent of the other, together with such other written agreements or
undertakings as the trademark or trade name holder may require in order to
assure proper protection and policing of its trademark or trade name.
Licensee shall have exclusive ownership rights to all
improvements to the Process or to the Product developed solely by Licensee
during the term hereof, but Licensee hereby agrees to xxxxx XXX the right to use
such patented improvements for its own use or the use of any of its Affiliates,
but not for sub-license to others, during the term hereof and thereafter.
Licensee and IDI agree to negotiate in good faith a royalty payment based upon
such considerations as (but not limited to) the patent's impact upon Product
quality, chemistry, yield, metallization, capital cost, and costs of production.
Such royalty payment by IDI to Licensee for use of said patent rights shall in
no event be greater than 50% of the minimum royalty rate or royalty payment
amount (whichever is greater) received by Licensee, at that time or at any time
thereafter, from other licensees under said patent rights. If, however, for
whatever reason and without regard to fault, IDI and Licensee cannot agree upon
such terms and conditions, IDI and its Affiliates shall be entitled to the use
of such patent rights for the above-described royalty rate or royalty payment.
All improvements to the Process developed by IDI shall remain the property of
IDI and, except for patent rights and Licensable Improvements, as described
herein, shall be included within the scope of the license granted to Licensee
hereunder.
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V. PAYMENTS AND FEES. For all of IDI's know-how and other rights
granted to Licensee hereunder, but not including any additional fees that may be
or become payable to IDI or to others by reason of any Licensable Improvements
(including (but not limited to) future patents or patent rights which Licensee
acquires or is otherwise required to obtain in connection with the Process),
Licensee will pay to IDI a one-time net license fee, in cash, in connection with
each sub-licensed Facility, at the earlier of Licensee's actual receipt thereof
from its sub-licensee, or 10% at the time of execution of the sub-license
agreement, 45% on or before the first anniversary thereof, and the balance
payable on or before the second anniversary thereof or Facility start-up
(whichever first occurs), of [ * ], payable in U.S. dollars, based upon each
Facility's rated annual Product capacity. All payments of fees shall be the
responsibility of Licensee, regardless of whether Licensee receives payment in
whole or in part, from its sub-licensee. With respect to any IDI patents or
patent rights that Licensee may wish to obtain, for its own use or for use by
any sub-licensee in connection with the Process, or in connection with the right
to any Licensable Improvements which Licensee may wish to develop or obtain,
Licensee agrees to negotiate in good faith with IDI for the right to use such
rights, based upon such considerations as (but not limited to) the patent's or
the Licensable Improvement's impact upon Product quality, chemistry, yield,
metallization, capital cost and costs of production. If, however, for whatever
reason and without regard to fault, IDI and Licensee cannot agree upon such
terms and conditions, neither Licensee nor any of its sub-licensees shall be
entitled to the use of such rights.
With respect to any fees or royalties which IDI is required to
pay to any third party, either by contract or otherwise, for the rights to
utilize any patents, patent rights, know-how, technical information, or
technologies that are necessary in order to utilize the Process or to
manufacture the Product, and if the Process cannot reasonably be used nor the
Product manufactured without the use of such rights,IDI agrees to pay such fees
or royalties as may be required in order to obtain such rights for IDI's own
plants. IDI will use best efforts to negotiate reasonable terms and conditions,
including any applicable royalties, with respect to any such patents, patent
rights, know-how, technical information, or technologies as and when the need
therefor arises, whether before or after an alleged infringement related to the
Process has occurred or a claim otherwise asserted for Licensee's plants and
sub-licensees' plants. Licensee and sub-licensees agree to be responsible for
payment of any fees or royalties for their own plants.
VI. TERM OF AGREEMENT. This Agreement shall commence on the date
set forth above and shall terminate on December 31, 2007, subject to the
fulfillment and performance of all contract and obligations in connection with
Facilities sub-licensed as of such termination date. Any continuation of this
Agreement after the term hereof, absent a new written agreement signed by both
parties hereto, shall be deemed only an extension at will, on a day-to-day
basis, but shall not entitle Licensee to grant any further sub-licenses or to
establish any additional Facilities.
* Material has been redacted pursuant to a Request for Confidential
Treatment dated July 28, 1997
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VII. NOTICES. All notices, demands or other communications to be
given or delivered under or by reason of the provisions of this Agreement will
be in writing and will be deemed to have been given when personally delivered or
received by certified mail, postage prepaid and return receipt requested, or
sent by guaranteed overnight courier service, charges prepaid. Notices, demand
and communications will be sent to Licensee at the address indicated below:
Notices to Licensee:
Sumitomo Corporation of America
5000 USX Tower
000 Xxxxx Xxxxxx
Xxxxxxxxxx, XX 00000-0000
Attention: Xx. Xxxx Xxxxxxxx, Assistant General Manager and Director
Telephone: 000-000-0000
Fax: 000-000-0000
Sumitomo Corporation
Xxxxxxxx Xxxxxxxx
0-0-0 Xxxxxxxxxxxx
Xxxxxxx-xx, Xxxxx 000 XXXXX
Attention: Xx. Xxxxxxxxx Xxxxxx
Telephone: 000-00-0-0000-0000
Fax: 000-00-0-0000-0000
Notices to IDI:
Iron Dynamics, Inc.
0000 Xxxxxx Xxxx 00
Xxxxxx, XX 00000
Attention: Xx. Xxxxx X. Xxxxx
Telephone: 000-000-0000
Fax: 000-000-0000
or to such other address or to the attention of such other person as the
recipient party has specified by prior written notice to the sending party.
VIII. ASSIGNMENT. The rights granted herein may not be assigned by
either party, by their respective acts or by operation of law, without the prior
written consent of the other party hereto.
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IX. MISCELLANEOUS.
9.1. Each party shall cooperate with the other in achieving
and fulfilling the terms of this Agreement and, to that end, each party
shall give all consents and information and execute all such documents
as may be reasonably necessary in connection herewith.
9.2 This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original and all of
which together shall constitute one and the same Agreement.
9.3 While nothing herein requires Licensee, through its
sub-licensing activities, to achieve any particular level of Process or
Product use, or to sub-license any specific number of Facilities, IDI
and Licensee agree that it is understood to be a condition of this
Agreement that Licensee will in fact use its best efforts in good faith
to market sub-licenses and to enter into sub-license agreements to meet
the demand for the Process and for the manufacture of the Product
within the Territory, in light of all pertinent facts and circumstances
existing from time to time in connection herewith. In the event that
Licensee fails to continue to meet this condition after notification by
IDI of such failure and a reasonable period of time to correct such
failures, IDI shall be entitled to bring an action before an
arbitration panel comprised of three persons, one to be selected by IDI
and one to be selected by the Licensee and the third selected by the
first two arbitrators, and request that the arbitration panel declare
the exclusivity of the Licensee's rights hereunder terminated. The
arbitrators shall be persons involved in and familiar with licensing
and technology transfer. The arbitration panel will make a ruling on
IDI's request after a review of the conduct of both parties to the
Agreement and hearing testimony about the intentions of the parties and
the level of Process and Product use by IDI and sublicensees. There
shall be no appeal from an arbitration's unanimous decision. In the
event of a majority decision by the arbitration panel, a dissatisfied
party may appeal to the American Arbitration Association (AAA) for an
independent binding decision.
[9.4] [Omitted]
9.5 Licensee agrees that IDI shall be entitled, during
reasonable business hours, to inspect Licensee's or any sub-licensee's
plans, specifications, construction activity, installation work, or
operation of any Facility, and to inspect and/or audit (itself or
through its designated representatives) Licensee's or any
sub-licensee's books and records, to verify compliance with Licensee's
obligations hereunder or with any sub-licensee's obligations to IDI or
in Licensee, as it may pertain to this Agreement; and Licensee will
cooperate with IDI and will cause its sub-licensees to cooperate with
IDI in connection herewith.
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9.6 This Agreement shall not be deemed to constitute a
partnership, joint venture, or any profit-sharing or revenue-sharing
agreement between IDI and Licensee or between IDI and any sub-licensee
of Licensee, nor shall Licensee make any statement or representations
nor take any actions, with respect to any sub-licensee or otherwise,
that state or imply anything to the contrary.
9.7 This Agreement constitutes the entire understanding
between the parties with respect to the subject matter hereof and may
be amended or modified only by a document in writing. Any modification,
renewal, extension, or waiver of this Agreement or any of its
provisions shall not be binding unless in writing and signed by both
parties.
9.8 This Agreement shall be interpreted and construed, and all
legal relationships created hereunder shall be determined in accordance
with the domestic laws of the State of Indiana and the federal laws of
the United States. The parties agree that any disputes arising under or
by reason of this Agreement between IDI and Licensee shall be
adjudicated, if at all, solely in any state court in DeKalb County,
Indiana, or in the United States District Court for the Northern
District of Indiana, but that any disputes arising under or by reason
of this Agreement between IDI and any sublicensee will be settled by
arbitration pursuant to the Rules of Conciliation and Arbitration of
the International Chamber of Commerce, with the arbitration proceedings
to be held in London, in the English language by a sole arbitrator to
be appointed by the President of the International Chamber of Commerce.
Such appointment shall be binding on the parties.
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IN WITNESS WHEREOF, the parties have executed this Agreement effective
as of the date first above written.
"LICENSOR" IRON DYNAMICS, INC.
By
_______________________________
Its____________________________
"LICENSEE" SUMITOMO CORPORATION OF
AMERICA
By
_______________________________
Its____________________________
"LICENSEE" SUMITOMO CORPORATION
By
_______________________________
Its____________________________
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EXHIBIT A
SCHEDULE OF DEFINITIONS
An "AFFILIATE" of, or entity "affiliated" with a specified entity, is
an entity that directly or indirectly through one or more intermediaries,
controls or is controlled by, or is under common control with, the entity
specified, and, for purposes of this definition, "control" shall be deemed to
contemplate actual voting control, including ownership of not less than
Fifty-one Percent (51%) of the entity's equity.
"CONFIDENTIAL INFORMATION" shall include but shall not be limited to
information, in any form, that would constitute a "trade secret" under the
Indiana Uniform Trade Secrets Act (IC Section 24-2-3-2) and shall extend to
engineering, design, construction, set-up, operating, and production information
relating to the Process or to the Product, as well as to the Facility within
which the operations are to be housed, regardless of whether a trade secret, and
shall include business and financial information not generally available to
persons outside IDI or SDI, and shall include Process, Product, and Facility
information and know-how not generally known or readily ascertainable by proper
means by persons outside IDI and SDI. For purposes of this definition, a "trade
secret" is information, including a formula, pattern, compilation, program,
device, method, technique, or process, that derives independent economic value,
actual or potential, from not being generally known to and not being readily
ascertainable by proper means by other persons who can obtain economic value
from its disclosure or use, and is the subject of efforts that are reasonable
under the circumstances to maintain its secrecy. All disclosures of information
shall be deemed to be nonconfidential unless specifically designated at the time
of the disclosure as including Confidential Information of the disclosing party.
The designation will include an appropriate legend in writing (including
information recorded in a medium such as a computer diskette), such as
"Confidential." Confidential information shall not include information that (1)
is or becomes publicly known through no fault of the Licensee or sublicensee, or
(2) is already known by Licensee or sublicensee, or (3) is learned by Licensee
or sublicensee from a third party as a matter of right.
"EXCLUDED TERRITORY" shall mean the United States of America and
Canada.
"FACILITY" shall mean a plant or any other structure or location within
or at which the Confidential Information and/or the Process is utilized, in
whole or in part, to manufacture the Product. A "SUPPLY FACILITY" shall mean a
Facility that a party, or its Affiliate, operates to produce Product that has
its primary use as a scrap substitute raw material for the party's own, or for
its Affiliate's own, steelmaking operations. A "COMMERCIAL FACILITY" shall mean
a Facility that a party, or its Affiliate, operates primarily for the
manufacture and resale of the Product.
"LICENSABLE IMPROVEMENTS" shall mean the up to six distinctive process
improvements described in Exhibit B, but shall not include (1) publicly known
information, (2) information previously known to Licensee or sublicensee (in
each individual sublicensee's case) prior to disclosure by IDI and SDI, (3)
information received by Licensee from a third party as a matter of
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right, or (4) any technology patented by others.
"PROCESS" shall mean the technology, know-how, and procedures necessary
for operation of the Process at IDI's Facility, except for Licensable
Improvements and patent rights as limited hereto, employed from time to time in
all or any portion of the manufacture of the Product for use as a scrap
substitute raw material in steelmaking, using iron oxide fines and solid carbon
reductant, including (but not limited to) the agglomeration of the iron oxide
and reductant, the utilization of a rotary hearth furnace for production of
Direct Reduced Iron ("DRI") from the agglomerates, utilization of IDI's selected
furnace for producing liquid pig iron from the DRI, and may include the
utilization of a desulfurizing facility and to prepare and charge the liquid pig
iron into an electric arc furnace in actual steelmaking.
"PRODUCT" shall mean the final DRI to be charged into IDI's selected
furnace, as well as the DRI or liquid pig iron or pig iron or any other
intermediate or final product or products produced in connection with the
Process.
"TECHNICAL INFORMATION" shall mean all technical information and
know-how developed, owned, or otherwise acquired by IDI, and licensable or
otherwise disclosable by IDI in connection with its development, use, and
operation of the Process or the manufacture and use of the Product, as well as
the design, construction, set-up, and maintenance of a Facility, and shall
include information in whatever form it occurs, including computer software,
whether written, oral, or electronically or magnetically stored. Technical
Information shall not include information that (1) is or becomes publicly known
through no fault of the Licensee or sublicensee, or (2) is already known by
Licensee or sublicensee, or (3) is learned by Licensee or sublicensee from a
third party as a matter of right.
"TERRITORY" shall mean any and all countries throughout the world
except for the Excluded Territory.
A "TONNE" shall mean a metric tonne, consisting of 2,204.6 pounds.
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EXHIBIT B
LICENSABLE IMPROVEMENTS
"LICENSABLE IMPROVEMENTS" shall mean (1) the unique iron production
process and (2) the use of beneficial additives in connection therewith, both as
described in and contemplated by IDI's U.S. Patent Application filed April 22,
1997, as it may be amended or supplemented from time to time, (3) methodologies
to facilitate the use of a smelting vessel to complete reduction, reduce costs,
and separate slag from iron, (4) methodologies involving the pre-treatment of
iron ore to enhance reduction and minimize grinding costs, (5) methodologies to
beneficiate iron ore, and (6) the employment of innovative technique to produce
lower sulfur DRI sponge iron, all as heretofore or hereafter acknowledged and
agreed to by the parties.
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EXHIBIT C
Licensee agrees to secure from each sublicensee in connection
with each sublicense, among other things, the following binding agreements and
commitments:
1. Non-disclosure and confidentiality commitments consistent
with Licensee's non-disclosure and confidentiality obligations under the
Agreement. Such non-disclosure and confidentiality obligations will be
enforceable against such sublicensee by Licensee or at IDI's option, directly by
IDI, in the forum described in Section 9.8 of the Agreement.
2. Agreements and commitments granting IDI rights to
sublicensee's improvements to the Product or Process consistent with Licensee's
own obligations to IDI and rights of IDI to Licensee's own improvements to the
Product or Process.
3. Agreements and commitments to indemnify and hold IDI
harmless from and against any loss, cost or expense in the event that a claim is
asserted by any other person in connection with any of sublicensee's activities
under the sublicense, and agreement that such indemnification obligation of the
sublicensee will be enforceable against the sublicensee in the forum described
in Section 9.8 of the Agreement.
4. Sublicensees are prohibited from making any license,
assignment, or other transfer of their sublicense rights without written
permission of both Licensee and IDI.
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