Exhibit 10.12.1
LICENSE AGREEMENT DATED MAY 22, 1996 BETWEEN
THE COMPANY AND THERMO SOLUTIONS, INC.
(F/K/A TEMPTOP CONTAINER SYSTEMS, INC.
INFORMATION PLACED IN BRACKETS [ ] HAS BEEN
OMITTED IN ACCORDANCE WITH A CONFIDENTIAL
TREATMENT REQUEST PURSUANT TO RULE 406 AND
HAS BEEN FILED SEPARATELY WITH THE COMMISSION
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LICENSE AGREEMENT
This License Agreement, entered into this 22nd day of May, 1996 (referred to as
the "Agreement") is between:
Temptop Container Systems, Inc., a corporation organized under the laws of
Minnesota, with an address at 0000 Xxxxx Xxxxxxxxx, Xxxxx 000, Xxxxx, Xxxxxxxxx
00000, hereinafter referred to as "Temptop", and
Xxxxxx Technologies, Inc., a corporation organized under the laws of the State
of North Carolina, with its principal place of business at 000 Xxxxx Xxxx
Xxxxxx, Xxxxxxxx, Xxx Xxxx 00000, hereinafter referred to as "Frisby".
RECITALS
WHEREAS, Frisby is the exclusive worldwide licensee of certain patented and
proprietary thermal management technologies and information relating to phase
change materials (hereinafter "PCMs") and microencapsulated phase change
materials (hereinafter "MicroPCMs") and;
WHEREAS, Temptop wishes to sublicense Xxxxxx'x technologies relating to PCMs and
MicroPCMs for Temptop's exclusive use in certain thermal container and
transportation products and services as listed in Exhibit A; and
NOW, THEREFORE, in consideration of the premises and covenants herein contained,
receipt of which is hereby acknowledged, and intending to be legally bound
hereby, the parties hereto agree as follows:
ARTICLE 1 - DEFINITIONS
1.01 MicroPCMs. "MicroPCMs" means microencapsulated phase change materials.
1.02 PCMs. "PCMs" means bulk phase change materials.
1.03 MicroPCM Slurries. "MicroPCM Slurries" means slurries, coolants or
other fluids which contain MicroPCMs.
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1.04 Technology. "Technology" means all of Xxxxxx'x interest in any inventions,
developments, proprietary information, patents, trademarks, trade names, trade
secrets, know-how and improvements, whether present or future, relating to PCMs,
MicroPCMs, and MicroPCM Slurries and their incorporation into commercial,
industrial and military products.
1.05 End-Use Product. "End-Use Product" means any item containing the Technology
or service performed incorporating the Technology that is presently, or may one
day be, a salable product or service of Temptop, and which is included in the
list of licensed products in Exhibit A.
1.06 Royalty. "Royalty" means [This information has been omitted in accordance
with a Confidential Treatment Request and has been filed separately with the
Commission].
1.07 Sublicensee Payments. "Sublicensee Payments" means all moneys or
other consideration received by Temptop from any sublicensees for use of the
Technology.
1.08 Patent. "Patent" means all patents and applications for patents, including,
but not limited to, those that are identified in Exhibit "C", and foreign
counterparts thereof, as well as all continuations, continuations-in-part,
divisions and renewals thereof, all patents which may be granted thereon, and
all reissues, reexaminations, extensions, patents of additions and patents of
importation thereof, and any common law rights associated therewith.
1.09 Proprietary Information. "Proprietary Information" means all of the
following information and materials, whether or not patentable or protected by a
copyright, to which Temptop receives, or has received, access or which Temptop
develops or has developed, all or in part, as a result, whether direct or
indirect, of the Agreement set forth herein: (i) production processes, marketing
techniques, purchasing or supply information, price lists, financial
information, customer names and requirements, customer data and other
information relating to the PCMs, MicroPCMs, MicroPCM Slurries and/or any
derivation thereof; (ii) discoveries, context and ideas, and the embodiment
thereof, including without limitation the nature and results of research and
development activities, processes, formulations, techniques and "know how";
(iii) any other materials or information related to the PCMs, MicroPCMs,
MicroPCM Slurries and/or any derivation thereof; and (iv) all inventions and
ideas which are derived from, or relate to, Temptop's access to or knowledge of
any of the above-enumerated materials and information.
1.10 Net Sales Revenues. "Net Sales Revenues" means the revenues generated by
Temptop from the sale of End-Use Products, less the following amounts: discounts
and reasonable rebates actually allowed or granted, all applicable taxes related
to the sale and/or use of the End-Use Product, and initial transportation
charges of the Temptop product(s) to customers.
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1.11 Effective Date. This Agreement is effective when duly signed by the
Parties.
ARTICLE II - GRANT OF LICENSE
2.01 Exclusive License. Frisby grants to Temptop a worldwide license to utilize
the Technology in order to make, use, sublicense, sell and lease End-Use
Products as listed in Exhibit A for a period of ten (10) years. This License is
exclusive with respect to utilizing the Technology in the End-Use Products, but
does not preclude or limit Frisby from licensing the Technology for other
products and services than those listed in Exhibit "A". Temptop will not
disclose the Technology to any Sublicensee or subcontractor unless that party
has agreed in writing to hold all information in confidence and to use the
technology solely for the purpose of designing, developing, manufacturing,
assembling or selling the End-Use Product or components thereof for Temptop.
2.02 Best Effort Support. The Parties hereto agree to support the product
development, commercial application, sales, marketing and promotion of End-Use
Products incorporating the Technology with best efforts for the life of this
Agreement.
2.03 Relationship of Parties. Each Party is an independent contractor and under
no circumstances shall any party be deemed to be a legal representative, express
or implied agent, or employee of another party. No act of any party, and no
assistance given from one Party to the other, shall be construed to alter this
independent contractor relationship.
ARTICLE III - PROVISION OF MICROPCMS
3.01 Provision of PCMs, MicroPCMs and MicroPCM Slurries. Frisby shall be the
sole source of supply for all PCMs, MicroPCMs, and MicroPCM Slurries for
Temptop, its Sublicensees and subcontractors for the term of this License.
Frisby shall arrange for the supply of an adequate and available supply of PCMs,
MicroPCMs or MicroPCM Slurries to Temptop at Xxxxxx'x pricing contained in
Exhibit B, FOB at the site of MicroPCM or PCM manufacture. Frisby agrees to
supply all such products to Temptop at terms no less favorable than the most
favorable terms offered to comparable commercial customers for the full term of
this Agreement. In order to support production lead-times and customer
requirements, Temptop shall maintain an adequate inventory of MicroPCMs on hand
to support all orders due within one hundred and twenty (120) days. Temptop and
Frisby will determine all other terms and conditions of sale prior to Temptop's
first order for MicroPCMs.
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ARTICLE IV - PAYMENTS
4.01 Payments to Frisby. All amounts owed by Temptop to Frisby for supply of
PCMs, MicroPCMs, MicroPCM Slurries or any products or services related thereto
provided by Frisby to Temptop shall be paid within thirty days after billing by
Frisby.
4.02 License Fees. In addition to royalties, Temptop agrees to pay Frisby a
License Fee of [This information has been omitted in accordance with a
Confidential Treatment Request and has been filed separately with the
Commission.], payable as ten (10) successive annual payments of [This
information has been omitted in accordance with a Confidential Treatment Request
and has been filed separately with the Commission.] in accordance with the
following schedule:
March 1, 1996 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
January 1, 1997 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
January 1, 1998 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
January 1, 1999 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
January 1, 2000 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
January 1, 2001 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
January 1, 2002 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
January 1, 2003 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
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January 1, 2004 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
January 1, 2005 [This information has been omitted in accordance
with a Confidential Treatment Request and has been
filed separately with the Commission.]
The Parties hereto further agree that at any time before May 1, 2001, Temptop
may purchase a paid-up license for the remainder of the term of this Agreement
by paying Frisby an amount equal to the difference between [This information has
been omitted in accordance with a Confidential Treatment Request and has been
filed separately with the Commission.] and the amount of all annual license fees
previously paid by Temptop.
4.03 Royalty Payments. In addition to License fees, Temptop agrees to pay Frisby
a royalty of [This information has been omitted in accordance with a
Confidential Treatment Request and has been filed separately with the
Commission.] whether such sales occur during the effective term of the License
or thereafter The royalties due shall be paid to Frisby within thirty days
following the end of each calendar quarter.
4.04 Sublicensee Payments. In addition to License Fees and Royalties, Temptop
agrees to pay Frisby [This information has been omitted in accordance with a
Confidential Treatment Request and has been filed separately with the
Commission.] percent of any and all Sublicensee Payments paid to Temptop. Such
payments shall be due and payable to Frisby within thirty days following the end
of each calendar quarter in which payments were received by Temptop.
4.05 Records Inspection. Temptop shall maintain adequate books and records in
connection with activity under this Agreement. Frisby may audit the relevant
books and records of Temptop to ensure compliance with the terms of this
Agreement upon reasonable notice to Temptop. Any such audit shall be conducted
during regular business hours at Temptop's offices and shall not interfere
unreasonably with Temptop's business activities.
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ARTICLE V - INTELLECTUAL PROPERTY
5.01 Xxxxxx'x Intellectual Property. Temptop acknowledges that the Technology
and the chemical formulation of the shell of the MicroPCM is proprietary and
confidential and constitutes a valuable commercial asset of Frisby. Temptop, and
any of its related Parties, consultants, subcontractors or affiliates, shall not
evaluate the use of the Technology or the MicroPCMs in any applications other
than those licensed to Temptop herein. Proprietary information disclosed by
either party hereunder shall be subject to the terms of the Reciprocal Secrecy
Agreement between the parties, dated June 13, 1995, irrespective of any
termination of this Agreement.
5.02 Reports of Technical Results. Temptop agrees that all information and
evaluation results generated by Temptop or otherwise obtained during the term of
this License, which is related to the Technology, shall be the exclusive
property of Frisby, with rights to same licensed to Temptop for the term of this
License.
5.03 Reporting Obligations. If Temptop or its employees, contractors,
affiliates, agents, or sublicensees makes a discovery or invention during the
term of this License which relates to the Technology or MicroPCMs, Temptop shall
promptly make such discovery known to Frisby in writing.
5.04 Trademarks. Except for the licensed right to use Xxxxxx'x Trademarks as set
forth herein, during the term of this Agreement, nor at any time after, Temptop
shall not obtain any right, title or interest to Xxxxxx'x Trademarks. All
licensed products sold by Temptop under the terms of this License Agreement
shall appropriately reference one or more of Xxxxxx'x designated Trademarks, as
designated by Frisby. Further, Temptop shall not obtain any Trademarks or use
any Tradenames that are similar thereto at any time.
ARTICLE VI - REPRESENTATIONS AND WARRANTIES
6.01 Representation. Frisby hereby represents and warrants that they have the
right to license the Technology to Temptop, that they have not or will not enter
into an agreement which would conflict with the exclusive nature of this
agreement, and that they will pay any renewal fees necessary for the maintenance
of the Patents. Frisby also certifies that, to the best of its knowledge,
Temptop's use of the Technology does not violate or infringe on the intellectual
property rights of any third party.
6.02 Intellectual Property Indemnification. Frisby agrees to indemnify and hold
Temptop harmless with respect to any suit, claim or proceeding brought against
Temptop by a third party alleging that Temptop's or a Temptop customer or
Sublicensees authorized use of the Technology constitutes an infringement of a
patent, copyright, or trademark or a misuse of proprietary or trade secret
information.
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6.03 Limitation of Liability. In no event shall either Party be liable to the
other Party for incidental or consequential damages. Temptop agrees to indemnify
and hold Frisby harmless from any third party suit, claim or proceeding brought
against Frisby that arise from or are occasioned by Temptop's use of the
Technology.
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ARTICLE VII - TECHNICAL AND MARKETING ASSISTANCE
7.01 Support. Frisby agrees to reasonably assist Temptop in its efforts to
incorporate the Technology into End-Use Products and to market End-Use Products.
The manner and arrangements under which the assistance and support services will
be provided under this article will be jointly agreed to by Frisby and Temptop.
ARTICLE VIII - MISCELLANEOUS PROVISIONS
8.01 Effect of Waiver. No waiver whether express or implied, of any breach of
any term, condition, or obligation of this Agreement shall be construed as a
waiver of any subsequent breach of that term, condition, or obligation, or any
other term, condition, or obligation of this Agreement of the same or different
nature.
8.02 Notices. Any notice provided for in this Agreement must be in writing and
may be given by registered letter and shall be deemed to have been given when
such registered letter, properly addressed, is mailed. If such notice is given
otherwise than by registered letter, it shall be deemed to have been given when
delivered. If such notice is to be given to Temptop, copies shall be addressed
to Mr. Xxxx Xxxxxxx, President, Temptop Container Systems, Inc., 0000 Xxxxx
Xxxxxxxxx, Xxxxx 000, Xxxxx, Xxxxxxxxx 00000. If given to Frisby, copies shall
be addressed to Xx. Xxxx Xxxxxx, Chief Executive Officer, Xxxxxx Technologies,
Inc., 000 X. Xxxx Xxxxxx, Xxxxxxxx, XX 00000. Either party hereto may at any
time, by thirty (30) days written notice to the other, designate any other
address in place of those provided in this paragraph.
8.03 Severability. It is understood and agreed by the parties to this Agreement
that if any part, term or provision of this Agreement is held to be illegal by
United States courts or in conflict with applicable law, the validity of the
remaining portions of provision shall not be affected, and the rights and
obligations of the parties hereto shall be construed and enforced consistent
with the intent of this Agreement.
8.04 Interpretation Presumption. This Agreement has been negotiated by the
Parties hereto and by the respective attorneys for each party. The parties
represent and warrant to one another that each has, by counsel or otherwise,
actively participated in the finalization of this Agreement, and in the event of
a dispute concerning the interpretation of this Agreement, each party hereby
waives the doctrine that an ambiguity should be interpreted against the party
which has drafted the document.
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8.04 Remedies. Each Party acknowledges and agrees that the remedies provided in
this Agreement shall be in addition to, and not in lieu of, any other remedies
provided at law or in equity, including, but not limited to, such injunctive or
other equitable relief as may be deemed appropriate by a court of competent
jurisdiction.
8.05 Successors and Assigns. This Agreement shall inure to the benefit of the
successors, heirs, representatives, or assigns of the parties. However, Temptop
shall not assign their obligations or interests under this Agreement without
prior written approval from Frisby.
8.06 Choice of Law and Dispute Resolution. This Agreement is to be governed by
and interpreted in accordance with the laws of the State of New York. All
disputes and differences of any kind arising under this Agreement which can not
be settled amicably by the Parties shall be submitted to arbitration. The
arbitration shall be finally settled in accordance with the rules of Arbitration
of the American Arbitration Association by one or more arbitrators appointed in
accordance with the above mentioned rules. The decision of the arbitration
tribunal shall be final and binding upon the Parties and may be enforced in any
court of competent jurisdiction, and no party shall seek redress against the
other in any court or tribunal except solely for the purpose of obtaining
execution of the arbitration award or of obtaining a judgment consistent with
the award. The parties shall bear their own costs and expenses related to any
arbitration or legal proceeding and shall share equally in the costs, expenses
and fees paid to or reimbursed on behalf of the arbitrator(s).
8.07 Complete Agreement. This document comprises the entire agreement with
respect to the subject matter hereof and supersedes all negotiations,
representations and warranties, commitments, offers, contracts and writings
prior to the date of this Agreement, except the Reciprocal Secrecy Agreement
between the Parties dated June 13, 1995, incorporated herein and made a part
thereof. Otherwise, the Parties to this Agreement are not to be bound by any
representations or warranties other than those set forth herein or in a written
amendment hereinafter entered into by the parties and duly executed by each
party.
8.08 Counterparts. This Agreement may be executed in one or more counterparts,
each of which shall be deemed an original but all of which shall constitute one
and the same instrument.
8.09 Warranty of Authority. The individuals actually executing this Agreement
personally represent and warrant that they have the necessary power and
authority to execute this Agreement on behalf of the party they represent, and
that their signatures are sufficient to make this Agreement the binding and
enforceable obligation of such party.
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IN WITNESS WHEREOF, THE PARTIES HERETO HAVE CAUSED THIS AGREEMENT TO BE DULY
EXECUTED.
TEMPTOP CONTAINER SYSTEMS, INC. XXXXXX TECHNOLOGIES, INC.
By: \s\ Xxxx X. Xxxxxxx By: \s\ Xxxx Xxxxxx
---------------------------- -------------------------------
Title: President Title: Chief Executive Officer
--------------------------- ----------------------------
Date: May 22, 1996 Date: 22 May 1996
--------------------------- ---------------------
PROPRIETARY
Exhibit A
Licensed End-Use Products
1. Klimate Keepers
2. Klimate Keeper Tops
3. Pallet Covers
4. Speedwalls
5. Pallet Bases
6. Transport Trailers
7. Gel Packs For Food Related Transportation Applications
8. Foam Supply, Inc. Applications, per mutual agreement of the Parties
9. Custom Engineered Interiors For All Temptop Products
10. Ocean Going Shipping Containers
11. Air Cargo Shipping Containers
