EXHIBIT (c)(4)
TECHNOLOGY LICENSE AGREEMENT
THIS TECHNOLOGY LICENSE AGREEMENT (the "Agreement") is made this 29th
day of November, 1995, by and among GTS Duratek, Inc., a Delaware corporation
("GTSD"), Bird Environmental Gulf Coast, Inc., a Texas corporation (the
"Company"), (GTSD and the Company each a "Licensee" and collectively, the
"Licensees") and ▇▇▇ ▇. ▇▇▇▇▇ ("▇▇▇▇▇").
W I T N E S S E T H :
WHEREAS, ▇▇▇▇▇ is the owner of certain patents and patent
applications, and possesses certain technology and know-how relating to the
treatment of waste through a desorber;
WHEREAS, Licensees desire an exclusive license under said patents and
patent applications and the exclusive right to make, use and sell products
and services from such technology and know-how, and ▇▇▇▇▇ is willing to grant
such license and rights;
WHEREAS, contemporaneously with the execution and delivery of this
Agreement, the Company and ▇▇▇▇▇ will have executed that certain agreement
pursuant to which ▇▇▇▇▇ will agree to provide ongoing advice and assistance
to the Company related to the Technology (as defined herein) and the Company
shall pay to ▇▇▇▇▇ a Bonus Payment (as defined therein) in consideration of
such continued advice and assistance.
WHEREAS, contemporaneously with the execution and delivery of this
Agreement, GTSD Sub II, Inc., a Maryland corporation and a wholly-owned
subsidiary of GTSD ("GTSD Sub"), is purchasing from Bird Environmental
Technologies, Inc., a Delaware corporation ("BETI"), all of the outstanding
capital stock of the Company owned by BETI, which represents 80% of the
issued and outstanding stock of the Company, upon the terms and provisions
set forth in a Stock Purchase Agreement of even date herewith by and among
the Company, BETI, Bird Corporation, a Massachusetts corporation ("Bird"),
GTSD Sub and GTSD (the "Stock Purchase Agreement").
WHEREAS, contemporaneously with the execution and delivery of this
Agreement and the Stock Purchase Agreement, effective as of the date hereof,
(i) the Company will have executed with each of ▇▇▇▇ ▇. ▇▇▇▇▇ ("▇. ▇▇▇▇▇"),
▇▇▇▇▇ ▇. ▇▇▇▇▇ ("▇. ▇▇▇▇▇") and ▇▇▇▇▇▇ ▇. ▇▇▇▇▇ III ("▇▇▇▇▇") employment
agreements (the "Employment Agreements") and (ii) the Company, GTSD, GTSD
Sub, ▇▇▇▇▇, ▇. ▇▇▇▇▇, ▇. ▇▇▇▇▇ and ▇▇▇▇▇ will have entered into that certain
stockholders agreement (the "Stockholders Agreement") outlining certain
rights between
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the parties as stockholders of the Company. This Agreement, the Employment
Agreements and the Stockholders Agreement shall be collectively referred to
herein as the "Minority Shareholders Agreements".
WHEREAS, a significant inducement for GTSD Sub to purchase the
capital stock of the Company from BETI is its ability to enter into this
Agreement pursuant to the terms and conditions set forth herein and to enter
into the other Minority Shareholders Agreements on the terms and conditions
specified therein.
NOW, THEREFORE, in consideration of the mutual covenants and
agreements set forth herein and for other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the parties
agree as follows:
I. DEFINITIONS
As used in this Agreement, the following terms shall have the following
meanings:
a. "Patent Rights" shall mean United States patents and foreign
patents, and United States and foreign patent applications listed on SCHEDULE
A, and all other future United States and foreign patents and patent
applications in the Licensed Field, including any continuations,
continuations-in-part, divisions, reissues, renewals, additions and
extensions thereof.
b. "Affiliate" of a specified person shall mean any entity which
directly, or indirectly through one or more intermediaries, controls, or is
controlled by, or is under common control with, the person specified.
c. "Technology" shall mean all ideas, inventions (patentable and
unpatentable), know-how, technical information and works of authorship
conceived, invented, discovered, created or possessed by ▇▇▇▇▇, either alone
or jointly with others, prior to or after the date hereof, including but not
limited to processes, articles, devices, equipment, programs, techniques,
compositions, formulations, data, etc., and any use thereof, all in the
Licensed Field. Technology shall also include any and all copyrights,
trademarks and tradenames related to the Technology.
d. "Licensed Subject Matter" shall mean (i) any process, composition
of matter, article of manufacture, apparatus, item, service or sublicense
covered by any valid product or process claim, in any patent included in the
Patent Rights or involving the use of the Technology and (ii) all copyrights,
trademarks and tradenames related to the Technology.
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e. "Licensed Field" shall mean the complete process, now or hereafter
acquired or developed by ▇▇▇▇▇, in connection with the treatment of waste of any
kind or description by means of a desorber (the "Desorber") or any other similar
process incorporating the Technology. A Desorber is defined as an apparatus for
the removal of liquids or gases from waste by application of heat.
f. "License Year" shall mean any calendar year, beginning January 1,
1996, during the term of this Agreement.
g. "Licensed Territory" shall mean the entire world.
II. GRANT OF LICENSES
▇▇▇▇▇ hereby grants to Licensees an exclusive and unrestricted license,
with the right to grant sublicenses, to make, use and sell products and services
embodying or incorporating the Patent Rights and Technology and to practice the
inventions covered by the Patent Rights and the Technology in the Licensed Field
in the Licensed Territory to the full end of the term for which the Patent
Rights are issued. This grant shall include (i) the right to use, reproduce and
display derivative works based on any works of authorship which are part of the
Technology for as long as those works are protected by copyright and (ii) the
right to use any tradenames and tradenames associated with the Patent Rights or
the Technology for as long as Licensees or any of them is engaged in the
Licensed Field. ▇▇▇▇▇ agrees to provide to the Licensees copies of all
documentation, know-how, works and enhancements developed by him which includes
any of the Technology, including without limitation, designs and all necessary
information for the manufacture and operation of Desorbers, whether now or
hereafter developed or acquired.
III. DISCLOSURE AND ASSIGNMENT OF TECHNOLOGY (FUTURE)
All Technology in the Licensed Field which ▇▇▇▇▇ creates or develops
and comes into being during the term of the Agreement ("Future Technology")
shall be assigned or licensed, as appropriate, to Licensees, or to such party or
parties as the Licensees may designate, and such Future Technology shall be
fully disclosed to Licensees in a timely manner. Notwithstanding anything
herein to the contrary, all Future Technology (including without limitation any
improvements to the existing Technology and any Patent Rights) developed or
acquired by the Licensees, either singly or jointly with ▇▇▇▇▇, during the term
of this Agreement shall be owned by the Licensees and such Licensees shall
retain all rights thereto and all Future Technology (including without
limitation any improvements to the existing Technology and any Patent Rights)
developed or created by ▇▇▇▇▇ which was funded or sponsored by the Licensees, in
whole or in part, shall be owned by the Licensees and such Licensees shall
retain all rights thereto. ▇▇▇▇▇ hereby agrees to assign any and all rights
that he may have to the Future Technology (including any Patent Rights)
described in the preceding sentence to the Licensees. Notwithstanding any other
provision of this Agreement, if Licensees, or either of them, retain
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and pays ▇▇▇▇▇ or Val Verde Corporation to do the engineering work for the
specific purpose of modifying the Technology to process a specific type or
quantity of material, such engineering work shall not be considered Future
Technology, but shall be considered part of the Technology, and the royalties
provided for in Section IV shall be paid on the use, sale or leasing of
equipment made pursuant to such engineering work.
IV. ROYALTY PAYMENTS
a. In consideration of the license and rights herein granted, the
Company and GTSD shall pay to ▇▇▇▇▇ in the manner herein provided unless
terminated as hereinafter provided the following (the following payments
reflect the aggregate amounts to be paid by the Company and GTSD
collectively):
1. No payments will be made with respect to the first Desorber or
its replacement located at the Gulf Coast Recycling Center ("GCRC"), and the
Company and GTSD will have a perpetual, royalty free license under Section II
above to operate such Desorber or its replacement, including the right to use
the Technology which is incorporated in the Desorber, notwithstanding any
termination of this Agreement.
2. With respect to Desorbers other than the first Desorber or its
replacement, and the operation of similar processes in the Licensed Field,
Licensees will pay ▇▇▇▇▇ a royalty equal to the greater of (i) $50,000 per
year or (ii) one percent (1.0%) of the net revenues per License Year of the
Company, GTSD and their subsidiaries, Affiliates and sublicensees from the
operation of the Desorbers (exclusive of any revenues generated from the
first Desorber or its replacement at the GCRC and sales or leasing of
equipment) and five percent (5.0%) of the net revenues per License Year of
the Company, GTSD and their subsidiaries, Affiliates and sublicensees from
the sales or leasing of equipment to unaffiliated third parties incorporating
any of the Technology. The royalty provisions of this paragraph shall govern
until $5.0 million in cumulative royalties have been paid to ▇▇▇▇▇ and
thereafter the provisions of the following paragraph shall govern the
royalties to be paid to ▇▇▇▇▇.
3. Once $5.0 million in cumulative royalties have been paid to
▇▇▇▇▇ pursuant to the preceding paragraph, the provisions of that paragraph
shall cease to apply and the provisions of this paragraph 3 shall govern.
With respect to Desorbers other than the first Desorber or its replacement,
and the operation of similar processes in the Licensed Field, Licensees will
pay to ▇▇▇▇▇ a royalty equal to the lesser of (i) $100,000 per year or (ii)
one percent (1.0%) of the net revenues per License Year of the Company, GTSD
and their subsidiaries, Affiliates and sublicensees from the operation of
Desorbers (exclusive of any revenues generated from the first Desorber or its
replacement at the GCRC and sales or leasing of equipment) and five percent
(5.0%) of the net revenues per License Year of the Company, GTSD and their
subsidiaries, Affiliates and sublicensees from the sales or leasing of
equipment to unaffiliated third parties incorporating any of the Technology.
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4. For purposes of this Agreement, the term "net revenues" shall
mean all amounts or proceeds received by the Company, GTSD or their
subsidiaries, Affiliates and sublicensees from the use, sales or leasing of
equipment incorporating the Technology, as applicable, including revenue
received by any of them as a result of operations by other entities, less the
following deductions: (i) discounts allowed and taken for prompt payment,
(ii) allowances for returns or other trade credits, (iii) all sales, use and
other taxes imposed which are paid to the Licensees by the customer, (iv)
packaging and transportation costs and (v) the cost of services contracted to
other subcontractors providing technologies and services complimentary to and
outside of the Licensed Field and packaged for sale with the Licensed Subject
Matter. For purposes of this Agreement, the "net revenues" from the sales or
leasing of equipment incorporating any of the Technology shall only refer to
the revenues from the sale or leasing of such specific equipment and shall
not include the net revenues from the sales or leasing of equipment not
incorporating the Technology but which may be sold with the equipment
incorporating the Technology as part of an entire system. When the net
revenues received by the Licensees includes both such types of equipment, the
Licensees and ▇▇▇▇▇ shall discuss in good faith the portion of the purchase
price for the system that should be allocated to the equipment incorporating
the Technology for purposes of determining the royalty payment pursuant to
this Section IV.
5. Notwithstanding anything herein to the contrary, the royalty
obligations provided in this Section IV shall not commence until the Company
has achieved cumulative earnings before interest, taxes, depreciation and
amortization ("EBITDA") during three (3) consecutive months of at least
$75,000 following the date of this Agreement.
6. If no royalties are paid to ▇▇▇▇▇ during the first and second
License Years of this Agreement due to the fact that the Company did not
achieve cumulative EBITDA during three (3) consecutive months of at least
$75,000, then the Company and GTSD may, at their sole discretion, either (i)
make the minimum annual royalty payments of $50,000 per year to ▇▇▇▇▇ in the
third, fourth and fifth License Years of this Agreement and continue this
Agreement, or (ii) terminate this Agreement pursuant to Section XII hereof,
provided that if such election is not made within 60 days of the end of the
second License Year and ▇▇▇▇▇ has provided the Company with a written request
to make such election at least 15 days prior to the end of the 60 day period,
then ▇▇▇▇▇ may elect to terminate this Agreement.
7. In the event the United States Government has or obtains
royalty-free rights under the Patent Rights or Technology, any amounts or
proceeds received by the Company, GTSD or their subsidiaries in respect of
any Licensed Subject Matter caused to be manufactured by or through the
Company, GTSD or their subsidiaries and sold, leased or otherwise transferred
to the United States Government or services performed for the United States
Government shall not be included within the definition of "net revenues" and
no royalty shall be required to be paid thereon.
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V. AVOIDANCE OF DUPLICATION OF ROYALTY PAYMENTS
In no event shall more than one royalty payment be due under this
Agreement on the same Licensed Subject Matter or component part thereof,
provided however, that if the Licensees receive from a third party a royalty
for the use of the equipment incorporating the Technology (in addition to the
revenues received by the Licensees for the sale or leasing of such
equipment), such royalty received by the Licensees shall be included in the
royalty calculation of Section IV.
VI. LICENSEE FEES PAYABLE TO THIRD PARTIES
In the event Licensees are charged with infringement of a valid patent
or other proprietary rights of a third party or are notified of such
infringement, and an attorney approved by ▇▇▇▇▇ and Licensees renders an
opinion that an injunction enjoining Licensees from infringing such patent or
proprietary rights would prevent Licensees from practicing in the Licensed
Field or otherwise using the Technology, then any royalty or other
compensation which the owner of such patent or proprietary rights requires
for Licensees to license or otherwise use such patent or proprietary rights
shall be deducted from the royalties payable to ▇▇▇▇▇ under Article IV hereof.
VII. PAYMENT OF ROYALTIES AND ACCOUNTING
Royalty payments pursuant to paragraphs 2 and 3 of Section IV(a) shall
be made quarterly, within sixty (60) days of the end of each calendar quarter
of each License Year once the royalty payments commence pursuant to paragraph
5 of Section IV(a). If paragraph 2 of Section IV(a) is applicable, the
amount paid for each calendar quarter shall be the greater of (i) $12,500 and
(ii) the percentage royalties described in paragraph 2 of Section IV(a) on
the net revenues during the calendar quarter just ended. If paragraph 3 of
Section IV(a) is applicable, the amount paid for each calendar quarter shall
be the lesser of (i) $25,000 and (ii) the percentage royalties described in
paragraph 3 of Section IV(a) on the net revenues during the calendar quarter
just ended. The net revenues for each calendar quarter shall be reasonably
determined by the Licensees in good faith and shall be subject to an annual
reconciliation within 90 days of the end of each License Year. All payments
required to be made under this Agreement shall be made in U.S. funds. At the
time of payment of such royalties, GTSD or the Company shall render to ▇▇▇▇▇
a statement in writing showing the computation of such royalties payable for
such calendar quarter or License Year, as applicable. Notwithstanding
anything herein to the contrary, ▇▇▇▇▇ shall have no right to dispute or
audit the quarterly payment of royalties, but shall be required to wait until
the completion of the reconciliation within 90 days of the end of the License
Year to exercise his rights pursuant to Section VIII. Any statement
following the year-end reconciliation that covers the full License Year shall
be conclusively presumed to be accurate and deemed acceptable by ▇▇▇▇▇ unless
he notifies the Company and GTSD in writing as to any objections within one
(1) year of ▇▇▇▇▇'▇ receipt of such statement. For purposes of determining
the royalty payments owed to ▇▇▇▇▇ pursuant to Section IV, the first License
Year shall be the calendar year beginning January 1, 1996. The accounting
shall be in accordance with generally accepted accounting principles.
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VIII. AUDIT RIGHTS
▇▇▇▇▇ shall have the right, at his option and sole expense, within one
(1) year after receipt of the annual statement for the full License Year
described in the previous section, to have each of Licensee's books and
records relating to the Technology audited by an independent certified public
accountant ("CPA") selected by ▇▇▇▇▇ and approved by Licensees, such approval
not to be unreasonably withheld provided that the CPA has signed an
appropriate confidentiality agreement. Licensees will make such books and
records available to such CPA during reasonable business hours. The CPA
shall agree to advise ▇▇▇▇▇ only of the accuracy or inaccuracy of Licensees'
statements and the royalty payments to him, and if not accurate, the actual
amounts as computed by such CPA.
IX. EXPENSES: PREPARATION, PROSECUTION AND MAINTENANCE OF PATENT RIGHTS.
a. Upon request for the duration of this Agreement, ▇▇▇▇▇ and
Licensees, at Licensees' expense, shall jointly review the question of
patentability or other protection of any idea, work, invention or discovery
which is conceived, invented or discovered by ▇▇▇▇▇ or Licensees in the
Licensed Field, or any idea, work, invention or discovery which results from
or arises out of any research work conducted by ▇▇▇▇▇ pursuant to a grant
guaranteed by, or other engagement by, either Licensee irrespective of
whether or not any such idea, work, invention or discovery is included or
required to be included in the Technology.
b. Licensees shall have the power and authority to file and prosecute
applications for patents on any idea, invention or discovery in the Licensed
Field in the Licensed Territory and to procure and maintain patents thereon.
The inventor of any such idea, invention or discovery shall, at Licensees'
request, execute such documents and perform such acts as Licensees' counsel
may deem necessary and advisable to perfect the filing of such applications
for patent throughout the world and to assist Licensees in procuring,
maintaining, enforcing and defending patents, and other applicable statutory
protection granted or issued thereon, all at the expense of Licensees.
Patent applications shall be prepared and prosecuted by attorneys selected by
the Licensees, provided that if such patent application relates to an idea,
invention or discovery by ▇▇▇▇▇ (a "▇▇▇▇▇ Invention") such attorneys must be
reasonably acceptable to ▇▇▇▇▇. If the patent application relates to a ▇▇▇▇▇
Invention, the Licensees shall provide ▇▇▇▇▇ with copies of all
correspondence concerning such application and if Licensees decide to abandon
any pending patent applications or issued patents relating to a ▇▇▇▇▇
Invention, they shall notify ▇▇▇▇▇ in writing sixty (60) days prior to the
final date for maintaining the pending patent application or issued patent.
c. The Licensees shall pay all attorneys fees and expenses associated
with the preparation, prosecution and maintenance of patent applications and
issued patents that they determine in their discretion to pursue and/or
maintain.
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d. Anything in this Agreement to the contrary notwithstanding,
Licensees may elect to relinquish their exclusive license under any
application for patent or patent included in the Patent Rights by giving
▇▇▇▇▇ at least sixty (60) days prior written notice of such election. Any
such application for patent or patent thereafter shall be excluded from the
Patent Rights and Licensees thereafter shall not be liable for any costs
incurred in the prosecution, procurement, maintenance, enforcement and
defense thereof.
X. INFRINGEMENT
a. Licensees shall have the right, but shall not be obligated, to bring
and prosecute any suit or action against an infringer of any patent included in
the Patent Rights in the name of Licensees and/or ▇▇▇▇▇, if appropriate, at
Licensees' cost and expense and for Licensees' own accounting, and in any such
case Licensees shall have control of the conduct or settlement of any such suit
or action. Any and all recoveries of any kind from any such suit or action
shall be the property of Licensees, except in the event any recoveries are
royalties for past infringement and/or future royalties and/or for a paid-up
license under any patent included in the Patent Rights, then any such recoveries
less pro rata costs incurred by Licensees for attorney's fees, witnesses' fees,
and court and out-of-pocket costs shall be included as net revenues according to
Section IV hereof. ▇▇▇▇▇ shall have no obligation to bring and prosecute any
suit or action against an infringer of any patent included in the Patent Rights.
b. Should Licensees exercise their rights under Section X(a), Licensees
agree to indemnify and defend ▇▇▇▇▇ from countersuit by an infringer of any
patent with respect to his role as inventor of the patents. Such
indemnification is limited to issues related to or arising out of patent
validity or patent infringement only.
▇. ▇▇▇▇▇ shall give promptly upon request and without compensation (other
than reimbursement of reasonable out-of-pocket expenses and as provided in this
Article X) all reasonable information and assistance necessary to enable
Licensees to bring and prosecute any such suit or action.
d. In the event that Licensees shall fail to cause any infringement of
Patent Rights to terminate or shall fail to bring suit or action against any
such infringer within six (6) months after request in writing from ▇▇▇▇▇ to do
so, then in such event ▇▇▇▇▇ shall have the right, but shall not be obligated,
to bring and prosecute any such suit or action in his own name and/or Licensees
names, at ▇▇▇▇▇'▇ sole cost and expense, and in any such case, ▇▇▇▇▇ shall have
sole control of the conduct or settlement of any such suit or action. Any and
all recoveries for damages, royalties, costs and awards form any such suit or
action shall be the sole property of ▇▇▇▇▇, less any costs which may be incurred
by Licensees in support such action or suit.
e. Should ▇▇▇▇▇ exercise his right under Section X(d), ▇▇▇▇▇ agrees to
indemnify and defend Licensees from countersuit by an infringer of any patent
with respect to Licensees
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role as licensees. Such indemnification is limited to issues related to
patent validity or patent infringement only.
f. The party not bringing such suit or action shall have the right, at
its sole expense, to be represented by counsel during all proceedings of such
suit or action.
XI. WARRANTIES
a. Each of the Licensees warrants to ▇▇▇▇▇ that:
(i) It has the power and authority to enter into this Agreement and
perform its obligations hereunder;
(ii) The execution and performance of this Agreement has been duly
and validly authorized by all necessary corporate action;
(iii) This agreement constitutes a valid and binding obligation
enforceable in accordance with its terms, subject to bankruptcy, insolvency,
reorganization, moratorium and other similar laws relating to the rights of
creditors generally; and
(iv) The execution and performance of this Agreement does not and
will not violate the Licensees' articles of incorporation, bylaws, judgment,
decree or order of any court or administrative authority or the terms of any
agreement to which they are a party or by which they are bound.
▇. ▇▇▇▇▇ warrants to each of the Licensees that:
(i) He has the power and authority to enter into this Agreement and
perform his obligations hereunder;
(ii) He has good and marketable title to the Patent Rights and the
Technology and can grant the rights contemplated by this Agreement;
(iii) The Intellectual Property representations and warranties
contained in Section 2.19 of the Stockholders Agreement are true and accurate;
(iv) This agreement constitutes a valid and binding obligation
enforceable in accordance with its terms, subject to bankruptcy, insolvency,
reorganization, moratorium and other similar laws relating to the rights of
creditors generally; and
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(iv) The execution and performance of this Agreement does not and
will not violate the terms of any judgment, decree or order of any court or
administrative authority or any agreement to which he is a party or by which
he is bound.
XII. TERMINATION
a. In the event any party to this Agreement shall fail to perform or
fulfill, at the time and in the manner herein provided, any material obligation
or condition required to be performed or fulfilled by such party under this
Agreement, and in the event such party shall fail to remedy such default within
thirty (30) days after written notice thereof from a party not at fault, such
party not at fault shall have the right to terminate this Agreement by giving
written notice of termination to the party at fault, but such termination shall
be with respect only to the party at fault.
b. Either Licensee may, at its discretion, terminate this Agreement as
to such Licensee at any time upon thirty (30) days written notice furnished
to ▇▇▇▇▇ provided that the Licensees collectively have paid ▇▇▇▇▇ in the
aggregate at least $150,000 in royalties pursuant to Section IV hereof.
c. In the event of termination pursuant to this Section XII, the
licenses, rights, privileges, obligations and liabilities of the terminating
party hereunder shall terminate forthwith except for the perpetual
royalty-free license provided in paragraph 1 of Section IV(a) and the right
to own and operate for as long as they wish to do so any additional Desorbers
put into operation, or in the process of being put into operation, during the
term of this Agreement or their replacement, provided that the applicable
Licensee shall pay to ▇▇▇▇▇ for each such additional Desorber either, at
Licensee's sole discretion, (i) a one-time fee equal to the greater of
$300,000 or fifteen percent (15%) of the cost of the Desorber (which cost
shall be agreed upon between the Licensee and ▇▇▇▇▇ in good faith) or (ii) an
ongoing royalty fee equal to 1% of the net revenues (calculated consistent
with Section IV above) received from operation of such additional Desorbers
during each License Year. The payments hereunder shall be calculated and paid
pursuant to Section VII above.
XIII. TERMINATION: PRORATED ROYALTIES
In the event of any termination under Section XII hereof, the $50,000
minimum royalty and the $100,000 maximum royalty provided for in Section IV
for the License Year in which this Agreement is terminated shall be reduced
by an amount which bears the same relationship to such royalties that the
number of days of such License Year after such termination bears to three
hundred sixty-five (365).
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XIV. DISPOSITION OF SUBLICENSEES OF LICENSEES
In the event of termination of this Agreement under Section XII hereof
by any Licensees, any sublicenses theretofore granted by such Licensee shall
terminate, except for the continuing rights of the Licensees under Section
XII.
XV. RECORDS AND CONFIDENTIAL DATA
a. All memoranda, notices, files, records, databases and other documents,
and all copies thereof, made or compiled by ▇▇▇▇▇ during the term of this
Agreement in the ordinary course of business, or made available to him
concerning the business of the Licensees shall be the Licensees' property and
shall be delivered to the Licensees at their request therefor or automatically
on the termination of this Agreement, provided that ▇▇▇▇▇ may retain a copy,
subject to the confidentiality restrictions contained herein. ▇▇▇▇▇ shall not
at any time during or after the term hereof use for himself or others, or
divulge to others any trade secret or confidential or proprietary business
information, knowledge or data of the Licensees obtained by him as a result of
his relationship with the Licensees unless authorized in writing by the
Licensees or required by law.
b. All memoranda, notices, files, records and other information
disclosing any of the Technology shall be retained in confidence by the parties
hereto and their agents, and shall not be disclosed to any third party, except
to the extent reasonably necessary to pursue the business objectives of the
Licensees or to comply with the contractual commitments of this Agreement.
c. The parties agree that either the Licensees on the one hand or ▇▇▇▇▇
on the other hand will be entitled (without posting bond or other security) to
injunctive or other equitable relief, as deemed appropriate by any such court or
tribunal, to prevent a breach of the other party's obligations set forth in this
Section XV.
XVI. NON-COMPETITION/NON-INTERFERENCE
▇▇▇▇▇ agrees that, for the term of this Agreement and for a period of three
(3) years thereafter, he will not directly or indirectly (i) be employed by or
perform activities on behalf of any Competing Business in any state, country or
other jurisdiction in which the Licensees or any of their affiliates then
conducts business; or (ii) induce any employee of the Licensees or their
subsidiaries to terminate such employment or to become employed by any such
Competing Business. As used herein, "Competing Business" shall mean any
business (i) then currently deriving revenues from the treatment of any form of
waste through a thermal desorption process or (ii) then currently deriving
revenues from the treatment of any form of waste that then accounts for at least
ten percent (10%) of the revenues of either of the Licensees, irrespective of
the treatment technology used. To the extent ▇▇▇▇▇ will be employed by or
perform activities on behalf of a division or subsidiary of a Competing Business
that does not compete, and he can demonstrate to the Licensees' reasonable
satisfaction that such employment or provision of
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services will not have an adverse competitive effect on the Licensees, such
employment or provision of services shall not be prohibited hereunder. The
parties acknowledge and agree that the restrictions of this Section XVI have
been carefully negotiated at arm's length and are believed by the parties to
be reasonable and necessitated by legitimate business needs. In the event
that, notwithstanding the foregoing, any provision set forth in this Section
XVI shall be determined by any competent court or tribunal to be
unenforceable or invalid for any reason, the parties agree that this Section
XVI shall be interpreted to extend only over the maximum period of time for
which it may be enforceable, and/or over the maximum geographical area as to
which it may be enforceable, and/or to the maximum extent in any and all
respects as to which it may be enforceable, all as determined by such court
or tribunal. The parties further agree that the Licensees will be entitled
(without posting bond or other security) to injunctive or other equitable
relief, as deemed appropriate by any such court or tribunal, to prevent a
breach of ▇▇▇▇▇'▇ obligations set forth in this Section XVI.
XVII. TERM OF THE AGREEMENT
This Agreement shall commence on the date hereof, and unless sooner
terminated as herein provided shall continue in full force and effect until the
expiration of the last expiring patent or patent application included in the
Patent Rights.
XVIII. WAIVER AND SEVERABILITY
a. The waiver by any of the parties of any breach of any provision
hereof by another shall not be construed to be a waiver of any succeeding
breach of such provision or a waiver of the provision itself.
b. If one or more of the provisions of the Agreement shall be found to
be illegal, invalid or unenforceable under any applicable law, then such
contravention or invalidity shall not invalidate the entire Agreement. Such
provision shall be deemed to be modified to the extent necessary to render it
legal, valid and enforceable, and if no such modification shall render it
legal, valid and enforceable, then this Agreement shall be construed as if
not containing the provision held to be invalid, and the rights and
obligations of the parties shall be construed and enforced accordingly.
XIX. NOTICES
Except as otherwise expressly stated, all notices required to be given
or which may be given under this Agreement shall be in writing and shall be
deemed given upon the earlier of (i) when it is personally delivered, (ii)
three (3) days after having been mailed by certified mail, postage prepaid,
return receipt requested, (iii) two (2) days after having been sent by
recognized overnight delivery service or (iv) one (1) day after having been
sent by facsimile transmission, addressed as follows:
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If to:
(a) GTSD:
GTS DURATEK, INC.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇, President and Chief Executive Officer
Telecopy No.: (▇▇▇) ▇▇▇-▇▇▇▇
(b) the Company:
Bird Environmental Gulf Coast, Inc.
▇▇▇▇ ▇▇▇▇▇▇ ▇
▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇ ▇▇▇▇▇▇, President
Telecopy No.: (▇▇▇) ▇▇▇-▇▇▇▇
(c) ▇▇▇▇▇:
▇▇▇ ▇. ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇
XX. COMPLETE AGREEMENT
This Agreement contains the complete agreement and understanding between
the parties concerning the subject matter hereof and shall supersede all other
agreements, understandings or commitments between the parties as to such subject
matter.
XXI. ASSIGNMENT
The obligations and rights of each party hereunder shall not be assignable
without the prior written consent of the other party; provided, however, that
the Licensees may without the consent of ▇▇▇▇▇ assign this Agreement to (i) an
Affiliate or (ii) any successor owner of the Licensees or their business
resulting from merger, consolidation, sale of the business or otherwise so long
as such successor agrees in writing to assume Licensees' obligations under this
Agreement in a form and manner reasonably acceptable to ▇▇▇▇▇. The parties
hereto agree that following the merger of the Company into the newly formed
Maryland corporation as contemplated by Section 4.6(a) of the Stockholders'
Agreement, this Agreement shall survive such merger, shall be in full force and
effect thereafter and the newly formed Maryland
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corporation into which the Company is merged shall by virtue of such merger
become a party to this Agreement and assume all of the rights, liabilities and
obligations of the Company under this Agreement. Subject to the foregoing, this
Agreement shall be binding upon and inure to the benefit of the parties'
respective heirs, legal representatives, successors and assigns.
XXII. WAIVER, MODIFICATION OR AMENDMENT
No waiver, modification or amendment of any provision of this Agreement
shall be effective, binding or enforceable unless in writing and signed by all
of the parties hereto.
XXIII. GOVERNING LAW
The validity of this Agreement and of any of the terms or provisions as
well as the rights and duties of the parties hereunder shall be governed by the
laws of the State of Maryland, without reference to any conflict of law or
choice of law principles in the State of Maryland that might apply the law of
another jurisdiction.
XXIV. ARBITRATION
a. Any disputes between the parties relating to the terms of this
Agreement, or the breach thereof, shall be submitted to binding arbitration in
Baltimore, Maryland, in accordance with the rules of the American Arbitration
Association. In the event that either party desires to arbitrate any such
dispute, such party shall so notify the other party and the parties shall
endeavor, for a period of thirty (30) days, to resolve such dispute without
arbitration. In the event that the parties cannot resolve the dispute within
such thirty (30) day period, then within ten (10) days thereafter, the parties
shall jointly designate a single neutral and independent arbitrator to hear the
dispute, or, if the parties are unable to jointly select an arbitrator, an
arbitrator shall be chosen in accordance with the rules of the American
Arbitration Association. The decision of the arbitrator shall be binding upon
the parties.
b. The Licensees shall pay all of their own expenses in connection with
such arbitration and shall advance payment for the reasonable expenses incurred
by ▇▇▇▇▇ in connection with such arbitration, including without limitation
travel expenses and fees and expenses of counsel, provided that ▇▇▇▇▇ shall be
obligated to repay such advance in the event that the arbitrator determines that
▇▇▇▇▇ did not act in good faith or did not have a good faith basis to bring or
defend the claim. In the event that ▇▇▇▇▇ is required to repay such advance,
such amount shall be offset against the amount to be paid to ▇▇▇▇▇ pursuant to
Article VIII of the Stockholders' Agreement or to be paid to ▇▇▇▇▇ as a Bonus
Payment pursuant to the Agreement with ▇▇▇▇▇ dated the date hereof. The offset
described in the preceding sentence shall be the sole remedy of the Licensees to
recover the advance.
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XXV. CONSTRUCTION
Headings or captions of this Agreement are for reference only and are not
to be construed in any way as part of this Agreement, nor in the interpretation
of this Agreement. The masculine pronoun shall include the feminine and neuter,
and vice versa, where the context so requires.
XXVI. COUNTERPARTS
This Agreement may be executed in multiple original counterparts, each of
which shall be deemed an original and all of which together shall constitute but
one and the same document.
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IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
WITNESS/ATTEST: GTS DURATEK, INC.
/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
--------------------------------- ---------------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇, Secretary Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Executive Vice President
BIRD ENVIRONMENTAL GULF
COAST, INC.
/s/ ▇▇▇▇▇ ▇. ▇▇▇▇▇ By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
--------------------------------- ---------------------------------
▇▇▇▇▇ ▇. ▇▇▇▇▇, Secretary Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇
Title: Vice President
/s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇ /s/ ▇▇▇ ▇. ▇▇▇▇▇
--------------------------------- ---------------------------------
▇▇▇ ▇. ▇▇▇▇▇
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SCHEDULE A
PATENTS AND PATENT APPLICATIONS
Patent or Patent Application Number Description
----------------------------------- -----------
4,872,954 Apparatus for the Treatment of Waste
5,078,836 Method and Apparatus for Retorting
Material
5,227,026 Retort Heat Exchanger Apparatus
European Patent Application 91900646.0 Apparatus for the Thermal Processing
of Material
Serial No. 08/407,762 (pending) Apparatus for Treating Solid
Containing Waste
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