Exhibit 10.5.4
LICENSE AGREEMENT
ENTERED INTO THIS 15TH DAY OF JULY 2004
THIS LICENSE AGREEMENT (this "AGREEMENt") is made and entered into as of the 1st
day of July, 2004 (the "EFFECTIVE DATE") by and among Ormat Industries Ltd., an
Israeli public corporation with principal place of business at the Industrial
Area of Yavne ("OIL"), and Ormat Systems Ltd., an Israeli corporation with
principal place of business at the Industrial Area of Yavne ("OSL"). OIL and OSL
may be referred to individually as a "PARTY" or collectively as "PARTIES".
WHEREAS, Concurrently with the execution and delivery of this Agreement, the
Parties have entered into an Asset Purchase Agreement (the "PURCHASE
AGREEMENT") dated as of the date hereof, pursuant to which OIL will
transfer to OSL, and OSL will acquire, among other things, the
Purchased Business as defined in the Purchase Agreement;
WHEREAS, In connection with the Purchase Agreement and the transfers and
acquisitions under the Purchase Agreement, effective as of the
Effective Date, OIL wishes to grant OSL: I) an exclusive, perpetual,
fully paid license to the Patents and Trademarks set forth in ANNEX
A attached hereto (the "PATENTS" and the "EXCLUSIVE TRADEMARKS");
and a non-exclusive perpetual, fully paid license to the trademarks
set forth in Annex B attached hereto (the "Non-Exclusive
Trademarks"). (the Non-Exclusive Trademarks and the Exclusive
Trademarks together, the "Trademarks").
NOW, THEREFORE, in consideration of the mutual representations, covenants and
warranties contained herein, and for other good and valuable consideration, the
receipt and sufficiency of which is hereby acknowledged, OIL and OSL intending
to legally bound hereby, mutually agree as follows:
1. DEFINITIONS
Unless otherwise expressly defined in this Agreement, any capitalized
term used herein shall bear the meaning ascribed to it in the Purchase
Agreement.
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2. LICENSE
2.1 Effective as of the Effective Date, and subject to the terms
hereof, OIL hereby grants OSL, only with respect to the
Patents, for the duration of the term specified in Section
6.1, a fully-paid, royalty-free, irrevocable, perpetual
exclusive license, without the right to grant sublicenses
except as specified in Section 2.5, to make, have made, use,
sell, offer to sell, import and create derivatives of
(including without limitation modifications, improvements,
fixes, enhancements, and upgrades) the inventions claimed in
the Patents.
2.2 Effective as of the Effective Date, and subject to the terms
hereof, OIL hereby grants OSL, for the duration of the term
specified in Section 6.1, a fully-paid, royalty-free,
irrevocable, perpetual exclusive license, without the right to
grant sublicenses except as specified in Section 2.5, to use
and display the Exclusive Trademarks in connection with the
goods and services for which they are described in ANNEX A.
2.3 Effective as of the Effective Date, and subject to the terms
hereof, OIL hereby grants OSL, for the duration of the term
specified in Section 6.1, a fully-paid, royalty-free,
irrevocable, perpetual non-exclusive license, without the
right to grant sublicenses except as specified in Section 2.5,
to use and display the Non-Exclusive Trademarks in connection
with the goods and services for which they are described in
ANNEX B.
2.4 Any sale and/or transfer by OIL of Patents or Trademarks
licensed hereunder, in any way whatsoever, to any third party,
shall be subject to all rights granted to OSL pursuant to this
Agreement.
2.5 OSL may grant: i) to any third party sublicenses of OSL's
rights to the Patents or the Exclusive Trademarks; and ii) to
OTI a sublicense of OSL's rights to the Non-Exclusive
Trademarks, provided that such sublicense shall provide that
OTI may not further sublicense such rights except to OTI's
direct and indirect subsidiaries who sign a sublicense
agreement in the form acceptable to OIL.
3. DERIVATIVES AND RESERVATION OF RIGHTS
3.1 Rights to Derivatives.
As between the Parties, OSL shall own all derivatives created
by or for OSL from the Patents licensed herein or any part
thereto ("OSL DERIVATIVES"); provided,
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however, that OSL shall only have such rights to such
derivatives which are derived from Patents expressly licensed
herein.
3.2 Reservation of Rights.
Except as expressly provided herein, no license or immunity is
granted under this Agreement by OIL, directly or by
implication, estoppel or otherwise to OSL, OTI, OR any third
parties acquiring items or services therefrom, whether singly
or for the combination of such acquired items or services with
other items or for the use of such combination.
4. TRADEMARK QUALITY CONTROL
4.1 OSL acknowledges that OIL is the owner of the Trademarks and
the goodwill associated with the Trademarks, and agrees that
all goodwill, including any increase in the value of the
Trademarks as a result of this Agreement, will inure solely to
OIL's benefit. OSL will not claim any title or any proprietary
right to the Trademarks or in any derivation, adaptation, or
variation thereof. OSL agrees that nothing in this Agreement
shall give OSL any right, title or interest in the Trademarks
other than the right to use the Trademarks in accordance with
this Agreement. OSL agrees not to challenge the Trademarks, or
to register or attempt to register the Trademarks as a
trademark, service xxxx, Internet domain name, trade name, or
any similar trademarks or name, with any domestic or foreign
governmental or quasi-governmental authority or otherwise.
4.2 OSL may use the Trademarks in accordance with the
specifications, directions, and processes furnished to OSL by
OIL from time to time. OSL shall not make any use of the
Trademarks that impair or are likely to impair the goodwill
associated therewith. The quality of the products manufactured
and services offered by OSL shall be satisfactory to OIL or as
specified by or approved by OIL. OIL shall have the right to
review OSL's use of the Trademarks and the goods and services
offered thereunder upon reasonable notice to verify that is in
accordance with such specifications, directions, processes and
quality.
5. INFRINGEMENT
Each party shall notify the other in writing within seven (7) days of
becoming aware of any infringements or imitations by others of Patents
or Trademarks. OSL may, only with OIL's prior written approval,
institute legal proceedings at its own expense against any third party
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that OSL reasonably believes to be infringing a Patent or Trademark in
order to eliminate such infringement. OIL may, at its option, join as a
party plaintiff in such action at its own expense. After OSL has
recovered and distributed its own and OIL's reasonable attorney's fees
and direct costs expenses in litigation related to the infringement of
the Patents or Trademarks, or, if litigation is not initiated, in the
investigation and analysis related to the potential litigation, all
remaining recovery shall be for the account of OSL unless OIL has
participated in such action, in which case all remaining recovery shall
be shared equally between OSL and OIL; provided, however, that OSL may
not settle or compromise any such action without the prior written
consent of OIL, which consent shall not be unreasonably withheld or
delayed. With the exception of litigation already commenced by filing
appropriate pleadings in court, upon expiration or termination of this
Agreement, any and all rights or obligations of OSL in resolving any
possible infringement claim hereunder shall revert to OIL.
6. TERM AND TERMINATION
6.1 TERM. This Agreement is effective as of the Effective Date and
continues in perpetuity thereafter, unless terminated earlier
in accordance with this Section 6. The term of all Patent
licenses granted hereunder shall continue until the earlier of
(i) expiration of such Patents; (ii) the termination of this
Agreement or (iii) the assignment of the Patents to OSL. The
term of all Exclusive Trademark licenses granted hereunder
continues until the earlier of: (i) the termination of this
Agreement; or (ii) the assignment of the Exclusive Trademarks
to OSL. The term of all Non-Exclusive Trademark licenses shall
continue until the termination of this Agreement.
6.2 Termination for Insolvency. Either party may cancel the
Agreement forthwith by written notice to the other, and may
regard the other party as in default under this Agreement, if
the other party becomes insolvent, makes a general assignment
for the benefit of creditors, files a voluntary petition of
bankruptcy, suffers or permits the appointment of a receiver
for its business or assets, or becomes subject to any
proceedings under any bankruptcy or insolvency law,
voluntarily or otherwise. In the event that any of the above
events occur, the effected party shall immediately notify the
other party of its occurrence. Notwithstanding the foregoing,
OSL can elect to retain all of its rights under this Agreement
despite OIL's bankruptcy or insolvency.
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6.3 Termination for Material Breach. Either party may terminate
this Agreement in writing for the material breach of this
Agreement by the other party that remains uncured thirty (30)
days following receipt of a written notice of such breach.
6.4 Effect of Termination. Upon termination of this Agreement, the
licenses granted hereunder, and all sublicenses of those
rights shall terminate, and neither OSL nor its sublicensees
or any further sublicensees shall have any further right to
use the Patents or Trademarks.
7. WARRANTY DISCLAIMERS
THE PATENTS AND TRADEMARKS ARE LICENSED ON AN "AS IS" BASIS, AND OIL
MAKES NO WARRANTIES, EXPRESS, IMPLIED OR STATUTORY, WITH RESPECT TO THE
LICENSED PATENTS, THE LICENSED TRADEMARKS AND/OR THE LICENSES GRANTED IN
THIS AGREEMENT. OIL HEREBY DISCLAIMS ALL OTHER WARRANTIES, EXPRESS,
IMPLIED, STATUTORY OR OTHERWISE, INCLUDING WARRANTIES OF NONINFRINGEMENT,
MERCHANTABILITY, OR FITNESS FOR A PARTICULAR PURPOSE. NEITHER PARTY WILL
BE LIABLE FOR INDIRECT, SPECIAL, EXEMPLARY, INCIDENTAL, PUNITIVE OR
CONSEQUENTIAL DAMAGES, ARISING IN CONNECTION WITH THIS AGREEMENT.
8. MISCELLANEOUS PROVISIONS
8.1 Binding Effect; Successors and Assigns; Assignment. This
Agreement shall be binding upon and inure to the benefit of
the parties hereto and their respective heirs, successors,
assigns and legal representatives. Without derogating from the
provisions of Section 2.5 above, neither party may assign this
Agreement in any manner, including without limitation by
change in control, merger or reorganization, in whole or in
part without the prior written consent of the other party. Any
assignment in violation of the foregoing shall be void.
8.2 Counterparts; Signatures; Titles and Headings. This Agreement
may be executed in counterparts, each of which shall be deemed
an original agreement, but all of which together shall
constitute one and the same instrument. This Agreement shall
be deemed executed and delivered upon the delivery of original
signed copies, or facsimile copies containing telecopied
signatures, to each other party hereto. The
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headings in this Agreement are for reference purposes only and
shall not in any way affect the meaning or interpretation of
this Agreement.
8.3 Governing Law; Jurisdiction and Venue. This Agreement shall be
governed by and construed in accordance with the laws of the
State of Israel, without reference to choice of law principles
thereof, and the parties agree to submit to the exclusive
jurisdiction and venue of Israel and the courts of
Tel-Aviv-Jaffa, Israel.
It is hereby clarified that in case the first paragraph of
this Section 8 is found, by a court of competent jurisdiction,
to be unenforceable or otherwise invalid, each party hereto
waives its right to trial of any issue by jury.
8.4 Severability. If any provision of this Agreement shall be
determined by any court of competent jurisdiction (or any
other agreed-upon dispute resolving body) to be unenforceable
or otherwise invalid as written, the same shall be enforced
and validated to the fullest extent permitted by law. All
provisions of this Agreement are severable, and the
unenforceability or invalidity of any single provision hereof
shall not affect the remaining provisions.
8.5 Notices. Except as otherwise provided herein, all notices
shall be in writing and shall be effective upon receipt, if
delivered personally or if mailed by overnight courier,
postage prepaid, or upon generation of a confirmation if sent
by facsimile (provided that such transmission is followed by
mailing of a conforming copy) to the parties at their
addresses set forth in the first paragraph of this Agreement
or such other address as subsequently may be specified in
writing by a party to the other parties.
8.6 No Strict Construction; Interpretation. The parties hereto
acknowledge that this Agreement has been prepared jointly by
the parties hereto and their respective legal counsel, and
shall not be strictly construed against any party as a result
of the party drafting any given provision hereof. Unless
otherwise indicated to the contrary herein by the context or
use thereof, (a) the words "herein," "hereto," "hereof," and
words of similar import refer to this Agreement as a whole and
not to any particular Section, subsection or paragraph hereof,
(b) words importing the masculine gender shall include the
feminine and neutral genders and vice versa, and (c) words
importing the singular shall include the plural and vice
versa.
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8.7 Entire Agreement; Modification and Waiver. Except for the
agreements specifically referenced in or contemplated by this
Agreement, this Agreement constitutes the entire agreement
between the parties with respect to the matters covered hereby
and supersedes all previous written, oral or implied
understandings between them with respect to such matters. This
Agreement may be amended or modified only by a writing signed
by the party against whom enforcement of such amendment or
modification is sought. Any of the terms or conditions of this
Agreement may be waived at any time by the party or parties
entitled to the benefit thereof, but only by a writing signed
by the party or parties waiving such terms or conditions. No
waiver of any provisions of this Agreement or of any rights or
benefits arising hereunder shall be deemed to constitute or
shall constitute a waiver of any other provisions of this
Agreement (whether or not similar) nor shall such waiver
constitute a continuing waiver unless otherwise expressly
provided in writing.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
by their duly authorized representatives as of the day first above written.
ORMAT INDUSTRIES LTD.
By: /s/ Xxxxxx X. Xxxxxxxx
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Name: Xxxxxx X. Xxxxxxxx
Title: Chairman of the Board
ORMAT SYSTEMS LTD.
By: /s/ Xxxx Xxxxxx
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Name: Xxxx Xxxxxx
Title: V.P. Contract Administrator
