Exhibit 10.1.17
AMENDED AND RESTATED LICENSE AGREEMENT
THIS AMENDED AND RESTATED LICENSE AGREEMENT (the "Agreement"), made as of the
October 23, 1998, amends and restates the agreement made on the 28th day of May,
1997 (the "Effective Date") by and between SatCon Technology Corporation, a
Delaware corporation, whose office is located at 000 Xxxxx Xx., Xxxxxxxxx,
Xxxxxxxxxxxxx, 00000 X.X.X. ("SatCon") and Beacon Power Corporation, a Delaware
corporation whose office is located at 6D Xxxx Street, Woburn, Massachusetts,
01801 U.S.A. ("Licensee").
WHEREAS, SatCon has formed Licensee as a wholly-owned subsidiary to develop
technology relating to flywheel energy storage products; and
WHEREAS, SatCon, through its ownership of Licensee, will benefit from the
success of Licensee's product development efforts and therefore desires to
enable Licensee to utilize certain of SatCon's existing rights in the
development of new products for the flywheel energy storage market;
NOW THEREFORE, in consideration of the mutual agreements and covenants set forth
herein, and for other good and valuable consideration, the receipt and
sufficiency of which is hereby confirmed, and intending to be legally bound
hereby, the parties agree as follows:
1. DEFINITIONS
1.1 "COVERED PRODUCT" MEANS A PRODUCT OR PROCESS COVERED BY A VALID CLAIM of a
SatCon Patent Right or which embodies SatCon Know-How.
1.2 "LICENSEE IMPROVEMENTS" MEANS ANY OF LICENSEE'S INVENTIONS,
improvements, modifications, enhancements and derivative works
having application outside the FES field and deriving from or based
upon any SatCon Rights developed prior to earliest of (i) the
completion by the Licensee of an Initial Public Offering that
raises at least $25,000,000 of gross proceeds to the Licensee; (ii)
the fifth anniversary of this Agreement; or (iii) the date shares
of Licensee are put to SatCon pursuant to Section 1.4 of the
Securities Purchase Agreement.
1.3 "FES FIELD" MEANS THE FIELD OF FLYWHEEL ENERGY STORAGE
PRODUCTS, systems and processes for stationary terrestrial (in- or
on-ground or affixed to structures on ground) applications, but not
for satellite or other nonterrestrial applications.
1.4 "SATCON IMPROVEMENTS" MEANS ANY OF INVENTIONS, IMPROVEMENTS,
modifications, enhancements and derivative works having application
in the FES field deriving from or based upon any SatCon Rights,
that are developed by or for SatCon or any of its controlled
subsidiaries other than Licensee prior to the earliest of (i) the
completion by the Licensee of an
Initial Public Offering that raises at least $25,000,000 of gross
proceeds to the Licensee; (ii) the fifth anniversary of this
Agreement; or (iii) the date shares of Licensee are put to SatCon
pursuant to Section 1.4 of the Securities Purchase Agreement..
1.5 "SATCON KNOW-HOW" MEANS ALL TECHNICAL KNOWLEDGE, INFORMATION
AND KNOW- how, whether treated as a trade secret or otherwise, and
whether embodied in a copyrighted work or not, which relates to the
FES Field and is owned by SatCon or in which SatCon has a
sublicensable interest as of the date of this Agreement.
1.6 "SATCON PATENT RIGHTS" MEANS (a) THE UNITED STATES PATENTS
LISTED ON
EXHIBIT A HERETO, (b) ALL CORRESPONDING PATENTS AND PATENT
applications filed and the resulting patents issued in other
jurisdictions, (c) all divisions, continuations and
continuations-in- part of the patents referred to in the foregoing
clauses (a) and (b), and (d) all reissues, reexaminations and
extensions thereof.
1.7 "SATCON RIGHTS" MEANS, COLLECTIVELY, THE SATCON KNOW-HOW AND
THE SatCon Patent Rights.
1.8 "SECURITIES PURCHASE AGREEMENT" MEANS THE SECURITIES PURCHASE
AGREEMENT DATED AS OF OCTOBER 23, 1998 BY AND AMONG SATCON,
LICENSEE, PERSEUS CAPITAL, L.L.C., DUQUESNE ENTERPRISES AND
MICRO-GENERATION TECHNOLOGY FUND, L.L.C.
1.9 "VALID CLAIM" MEANS A CLAIM OF AN UNEXPIRED PATENT WHICH SHALL NOT
have been withdrawn, canceled or disclaimed, nor held invalid by a
court of competent jurisdiction in an unappealed or unappealable
decision, or a claim of a patent application which has not been on
file for more than seven years.
2. LICENSES
2.1 SATCON LICENSE. SATCON HEREBY GRANTS TO THE LICENSEE, AND THE
Licensee hereby accepts, a perpetual (subject to termination pursuant to
Section 6), worldwide, royalty-free, exclusive right and license (the
"SatCon License"), subject to the terms and conditions of this Agreement,
to make, have made, use, offer to sell, sell, have sold, import, repair,
modify, market, create derivative works of and otherwise commercially
exploit Covered Products in the FES Field.
2.2 SUBLICENSING. LICENSEE SHALL HAVE THE RIGHT TO GRANT SUBLICENSES
under the SatCon Rights to make, have made, use, offer to sell, sell,
have sold, import, repair, modify, market, create derivative works of and
otherwise commercially exploit the Covered Products in the FES Field. All
sublicenses of the SatCon Rights by Licensee shall be pursuant to written
sublicense agreements. Licensee shall provide SatCon a copy of any such
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agreement within thirty (30) days after entering into it. SatCon shall maintain
any such agreement in strict confidence.
2.3 IMPROVEMENTS.
(a) Licensee hereby grants to SatCon, and SatCon hereby accepts, a
perpetual, worldwide, royalty-free, exclusive right and license,
subject to the terms and conditions of this Agreement, to make,
have made, use, offer to sell, sell, have sold, import, repair,
modify, market, create derivative works of and otherwise
commercially exploit products covered by Licensee Improvements
outside of the FES Field
(b) SatCon hereby grants to Licensee, and Licensee hereby accepts,
a perpetual, worldwide, royalty-free, exclusive right and, subject
to the terms and conditions of this Agreement, to make, have made,
use, offer to sell, sell, have sold, import, repair, modify,
market, create derivative works of and otherwise commercially
exploit products covered by SatCon Improvements in the FES Field.
3. INTELLECTUAL PROPERTY
3.1 OWNERSHIP OF INTELLECTUAL PROPERITY. ALL SATCON RIGHTS AND SATCON
Improvements and the goodwill associated therewith are and shall remain
the property of SatCon or its licensor and no ownership interest therein
is being conveyed to Licensee under this Agreement. All Licensee
Improvements and the goodwill associated therewith are and shall remain
the property of Licensee, subject to SatCon's ownership of any underlying
SatCon Rights, and no ownership interest in the Licensee Improvements is
being conveyed to SatCon under this Agreement. SatCon represents and
warrants to Licensee that SatCon has good and valid title to the SatCon
Patent Rights, and has the right to grant Licensee the licenses granted
under this Agreement.
3.2 PROPRIETARY NOTICES. THE LICENSEE SHALL INCLUDE IN EACH COVERED
Product, or the documentation therefor, an acknowledgment of SatCon's
ownership of the SatCon Rights in a form reasonably acceptable to SatCon.
SatCon shall include in each SatCon product embodying Licensee
Improvements, or the documentation therefor, an acknowledgment of
Licensee's ownership of the Licensee Improvements in a form reasonably
acceptable to Licensee.
3.3 PATENT PROSECUTION.
(a) The parties shall consult with each other in all efforts to
file, prosecute and maintain the SatCon Patent Rights throughout
the world, including all decisions regarding the scope of patent
coverage, claim language, whether to pursue or continue to pursue
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patent protection in any jurisdiction and other matters bearing
upon the substantive content of patents. SatCon shall pay all costs
of such efforts where the parties agree upon the action to be
taken.
(b) If the parties disagree on any action to be taken with respect
to the prosecution, issuance or maintenance of the SatCon Patent
Rights, the parties shall take the action resulting in the least
diminution of the SatCon Patent Rights, and if the action taken
results in increased costs or in costs that would be avoided by not
taking such action, such increased costs or costs that would be
avoided shall be borne by the party requesting such action.
3.4 ASSERTION OF SATCON RIGHTS.
(a) Each party shall report promptly in writing to the other any
known or suspected infringement or misappropriation of the SatCon
Patent Rights or of other SatCon Rights in the FES Field anywhere
in the world. The parties shall consult with each other on all
efforts to initiate and prosecute an infringement or other
appropriate suit against any third party who at any time has
infringed, or is suspected of infringing, any of the SatCon Patent
Rights or of other SatCon Rights in the FES Field.
(b) Licensee shall have the exclusive right to initiate an
infringement or other appropriate suit, in the name of SatCon if
necessary, against any third party who at any time has infringed,
or is suspected of infringing, any of the SatCon Rights in the FES
Field. Licensee shall have the sole and exclusive right to control,
select counsel for and settle any such suit and shall pay all
expenses of such suit. Any damages, settlements, recoveries or
other consideration received by Licensee for past infringement or
misappropriation as a result of such litigation shall be retained
by Licensee. If Licensee initiates suit in the name of SatCon, then
Licensee shall indemnify SatCon for any damages SatCon is ordered
to pay to a third party in such suit.
(c) SatCon shall have the exclusive right to initiate an
infringement or other appropriate suit against any third party who
at any time has infringed, or is suspected of infringing, any of
the SatCon Rights outside of the FES Field. SatCon shall have the
sole and exclusive right to control, select counsel for and settle
any such suit and shall pay all expenses of such suit. Any damages,
settlements, recoveries or other consideration received by SatCon
for past infringement or misappropriation as a result of such
litigation shall be retained by SatCon.
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(d) Each party, at its expense, will reasonably cooperate with the
other party in the conduct of a suit under this Section 3.4, such
cooperation to include the making of affidavits, the answering of
interrogatories, the making of persons available for depositions
and appearances as witnesses, the production of documents, and the
like.
4. NONDISCLOSURE
4.1 The parties agree that the SatCon Know-How, confidential portions of
the SatCon Patent Rights, and information relating to the filing,
maintenance, prosecution, assertion and litigation of the SatCon Rights
(collectively, the "SatCon Confidential Information") constitute the
confidential and proprietary information and the valuable trade secrets
of SatCon in which Licensee has the exclusive rights granted herein.
Neither party shall publish, disseminate or disclose the SatCon
Confidential Information, in whole or in part, to any third party, except
to its distributors, customers, licensees, sublicensees and independent
contractors who have a need to know such SatCon Confidential Information,
and further provided that such distributors, customers, licensees,
sublicensees and independent contractors have agreed in writing to
maintain the confidentiality of such SatCon Confidential Information with
at least the same degree of protection set forth herein.
4.2 Licensee shall not use the SatCon Confidential Information except as
expressly permitted by this Agreement. Each party shall protect the
confidentiality of the SatCon Confidential Information using reasonable
security measures. All personnel who are permitted to access or use the
SatCon Confidential Information shall be required to sign agreements
obligating them to maintain the confidentiality of the SatCon
Confidential Information indefinitely, and not to use the SatCon
Confidential Information except as permitted by this Agreement. A party
shall notify the other party promptly and in writing of the circumstances
surrounding any suspected possession, use or knowledge of the SatCon
Confidential Information or any part thereof at any location or by any
person or entity other than those authorized by this Agreement, and shall
take further steps as may reasonably be requested by the other party to
prevent or remedy any such violation. Each party is permitted to make
reasonable inquiries concerning the other party's compliance with the
provisions of this Section 4.
4.3 Notwithstanding Sections 4.1 and 4.2, (i) SatCon may disclose SatCon
Confidential Information to a third party when such disclosure is, in
SatCon's reasonable business judgment, necessary for its business outside
the FES Field; (ii) Licensee may disclose SatCon Confidential Information
to a third party when such disclosure is, in Licensee's reasonable
business judgment, necessary for its business in the FES Field; (iii) a
party shall not
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be required to maintain the confidentiality of any information that
(a) is or becomes public or available to the general public
otherwise than through any act or default of such party or (b) is
received by such party from a third party who has no obligation to
maintain the confidentiality of such information; and (iv) a party
may disclose SatCon Confidential Information to the extent required
by a court or other governmental authority, provided that (a) the
party gives the other party reasonable notice of the disclosure,
(b) the party uses reasonable efforts to resist disclosing the
SatCon Confidential Information, and (c) the party cooperates with
the other party on request to obtain a protective order or
otherwise limit the disclosure.
5. DISCLAIMERS; LIMITATIONS
5.1 EXCEPT AS PROVIDED IN SECTION 3.1, SATCON DISCLAIMS ALL WARRANTIES,
WHETHER EXPRESS OR IMPLIED, ORAL OR WRITTEN, WITH RESPECT TO THE SATCON
RIGHTS, INCLUDING, WITHOUT LIMITATION, ALL IMPLIED WARRANTIES OF,
NONINFRINGEMENT, MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE.
5.2 SATCON SHALL HAVE NO LIABILITY WHATSOEVER FOR DAMAGES TO LICENSEE FOR
ANY CAUSE RELATING TO OR ARISING FROM THE SATCON RIGHTS, REGARDLESS OF
THE FORM OF ANY CLAIM OR ACTION, INCLUDING DIRECT, INDIRECT, SPECIAL,
CONSEQUENTIAL, PUNITIVE AND EXEMPLARY DAMAGES, AND ANY DAMAGES ARISING
FROM LOSS OF DATA, LOSS OF PROFITS, BUSINESS INTERRUPTION, AND ALL OTHER
CAUSES, EVEN IF SATCON HAS BEEN MADE AWARE OF THE POSSIBILITY OF SUCH
DAMAGES, EXCEPT AS OTHERWISE REQUIRED BY LAW.
5.3 The parties acknowledge and agree that the unauthorized use,
disclosure, transfer or dissemination of the SatCon Confidential
Information will diminish substantially the value of such SatCon
Confidential Information and is likely to irreparably harm the other
party and not to be susceptible of cure by monetary damages; and that if
a party or any employee, agent, affiliate, officer or subsidiary of such
party breaches the provisions of Sections 2, 3.1 or 4 hereof, the other
party shall, without limiting its other rights or remedies, be entitled
to equitable relief to enjoin or prevent such breach.
5.4 The design, manufacture, testing, marketing and distribution of the
Covered Products are the responsibility of Licensee. Therefore, Licensee
agrees to defend, indemnify and hold SatCon harmless from and against
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any and all expenses, charges, costs, fees, damages and settlements
incurred by SatCon in connection with any claim by any customer,
reseller or other third party relating in any way to the Covered
Products or the incorporation of the SatCon Know-How therein.
6. TERM AND TERMINATION
6.1 TERM. THIS AGREEMENT, AND THE LICENSES GRANTED HEREIN, SHALL REMAIN
in effect until terminated as set forth below.
6.2 TERMINATION. THIS AGREEMENT MAY BE TERMINATED:
(a) by SatCon, immediately if the Licensee has materially breached
(i) any obligation under this Agreement and has not cured such
breach within one hundred twenty (120) days following the date on
which SatCon. has given written notice specifying the facts
constituting the breach, if such breach is susceptible of cure, or
(ii) any obligation under this Agreement, if such breach is not
susceptible of cure.
(b) by SatCon effective immediately and without any requirement of
notice, if (i) all Purchasers to the Securities Purchase Agreement
dated October 23, 1998 have exercised their Put Rights (as defined
in that agreement) and (ii) the Licensee files for or consents to a
general assignment for the benefit of creditors, files a petition
in bankruptcy or liquidation, or is adjudicated bankrupt or
insolvent under the laws of any jurisdiction for the general
benefit of creditors of an insolvent or financially troubled
debtor, or if a petition in bankruptcy or liquidation is filed
against Licensee and is not finally dismissed by a court of
competent jurisdiction within forty-five (45) days of such filing;
6.3 EFFECTS OF TERMINATION. UPON TERMINATION OF THIS AGREEMENT,
ALL rights, licenses and obligations of the parties under this
Agreement shall cease, and Licensee and its sublicensees shall
deliver to SatCon, at the Licensee's expense, all originals and
copies of any materials describing the SatCon Know-How, including
all compilations, translations, and partial copies, whether or not
modified, and all patent prosecution, maintenance and litigation
files relating to the SatCon Patent Rights in the possession of
Licensee and its counsel. The Licensee shall certify in writing
within ten (10) business days following termination that it and its
sublicensees have complied with this Section 6.3. Notwithstanding
the foregoing, the provisions of Sections 2.3(a) (as applicable
only to Licensee Improvements in existence as of the date of
termination), 4, 5, 6.3 and 7.2 of this Agreement shall survive any
termination or expiration of this Agreement in accordance with
their terms.
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7. MISCELLANEOUS
7.1 AGREEMENT TERMS. NEITHER PARTY HERETO SHALL DISCLOSE THE TERMS OR
conditions of this Agreement to any third party without the prior written
consent of the other party, except (a) as required by order or rule of a
governmental authority including, without limitation, the
United States Securities and Exchange Commission, (b) that copies of this
Agreement may be provided to Duquesne Enterprises, Inc., Perseus Capital,
L.L.C., and Micro Generation Fund, L.L.C.
7.2 GOVERNING LAWS. THIS AGREEMENT SHALL BE GOVERNED BY AND CONSTRUED
IN accordance with the laws of the Commonwealth of Massachusetts, U.S.A.,
excluding its choice of law rules. Each party hereby consents to the
personal jurisdiction of the Federal and state courts of the Commonwealth
of Massachusetts for the purpose of the resolution of all disputes
arising under this Agreement.
7.3 COMPLIANCE WITH LAWS. THE LICENSEE SHALL COMPLY WITH ALL APPLICABLE
laws, legislation, rules, regulations, export restrictions, governmental
requirements and industry standards existing from time to time with
respect to the Covered Products and the performance by the Licensee of
its obligations hereunder.
7.4 ENTIRE AGREEMENT. THIS AGREEMENT, INCLUDING ITS EXHIBITS,
CONSTITUTES the entire agreement between SatCon and the Licensee with
respect to the subject matter hereof, and shall not be released,
discharged, supplemented, interpreted, amended, varied, or modified in
any manner except by an instrument in writing signed by an authorized
officer or representative of each of the parties hereto.
7.5 NO WAIVERS. NO DELAY OR OMISSION ON THE PART OF EITHER PARTY TO
THIS Agreement in requiring performance by the other party or in
exercising any right hereunder shall operate as a waiver of any provision
hereof or of any right or rights hereunder; and the waiver, omission or
delay in requiring performance or exercising any right hereunder on any
one occasion shall not be construed as a bar to or waiver of such
performance or right on any future occasion.
7.6 SEVERABILITY. IF ANY PROVISION OF THIS AGREEMENT SHALL FOR ANY
REASON be held illegal or unenforceable, such provision shall be deemed
separable from the remaining provisions of this Agreement and shall in no
way affect or impair the validity or enforceability of the remaining
provisions of this Agreement.
7.7 SECTION HEADINGS. SECTION HEADINGS OF THIS AGREEMENT ARE FOR
descriptive purposes only and shall not control or alter the meaning of
this Agreement.
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7.8 RELATIONSHIP OF THE PARTIES. THE PARTIES SHALL FOR ALL PURPOSES BE
considered independent contractors with respect to each other, and
neither shall be considered an employee, employer, agent, principal,
partner or joint venturer of the other.
7.9 NOTICES. FOR THE PURPOSES OF THIS AGREEMENT, AND FOR ALL NOTICES AND
correspondence hereunder, the addresses of the respective parties are as
follows:
If to SatCon: SatCon Technology Corporation
000 Xxxxx Xxxxxx Xxxxxxxxx, Xxxxxxxxxxxxx 00000-0000
Attn: President Fax: (000) 000-0000
with a copy to Xxxxxxx X. Carp, Esq.
Xxxx and Xxxx LLP
00 Xxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
Fax: (000) 000-0000
If to Licensee: Beacon Power Corporation
0X Xxxx Xxxxxx
Xxxxxx, XX 00000
Attn: President
Fax: (000) 000-0000
with copies to: Perseus Capital, L.L.C.
The Army and Navy Club Building
0000 X Xxxxxx, X.X., Xxxxx 000
Xxxxxxxxxx, X.X. 00000
Attn: Xxxxxxx X. Xxxxx
Fax No. (000) 000-0000
Xxxxxx & Xxxxxx
000 00xx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000
Attn: Xxxxxx X. Xxx
Fax No.: (000) 000-0000
Xxxxxxx X. Xxxxxxxx, Vice President
Duquesne Enterprises, Inc.
One Northshore Center, Suite 100
00 Xxxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Fax No.:
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Xxxxxx X. Xxxx, Xx. Arete Corporation X.X. Xxx 0000 Xxxxxx Xxxxxx,
Xxx Xxxxxxxxx 00000 Fax No.: (000) 000-0000
No change of address shall be binding upon the other party hereto
until written notice thereof is received by such party at the
address show herein. All notices shall be in English and shall be
effective upon receipt if delivered personally or sent by
facsimile, two days after shipment by overnight delivery service
and five (5) days after mailing if sent by certified mail return
receipt requested.
7.10 ASSIGNMENT AND CORPORATE REORGANIZATION. THE RIGHTS GRANTED
TO THE Licensee under this Agreement are personal in character.
Except as provided herein, neither this Agreement nor any rights
granted hereby may be assigned by the Licensee voluntarily or by
operation of law without SatCon's prior written consent and any
such attempted assignment shall be null and void. For purposes of
this Agreement, "assignment" shall be deemed not to include the
transfer of all or substantially all of the assets of, or a
majority interest in the voting stock of, the Licensee, or the
merger of the Licensee with one or more entities. SatCon may
assign its rights under this Agreement without the consent of the
Licensee. This Agreement shall inure to the benefit of and be
binding upon any permitted successor or assign of either party.
[Remainder of Page Intentionally Blank]
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IN WITNESS WHEREOF, SatCon and the Licensee have duly executed this Agreement as
of the dates written below:
LICENSEE: SATCON:
BEACON POWER CORPORATION SATCON TECHNOLOGY CORPORATION
By: /s/ Xxxxxxx X. Xxxxxxx BY: /s/ XXXXX X. XXXXXXXXXX
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Name: XXXXXXX X. XXXXXXX NAME: XXXXX X. XXXXXXXXXX
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Title: PRESIDENT & CEO TITLE: PRESIDENT
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Date: OCTOBER 27, 1998 DATE: OCTOBER 23, 1998
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[Signature Page to License Agreement]
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