1
Exhibit 10.9
ASSIGNMENT AND ASSUMPTION OF LICENSE AGREEMENT
ASSIGNMENT AND ASSUMPTION OF LICENSE AGREEMENT (this
"Assignment"), dated as of the __ day of December, 1998, by and between GP
Strategies Corporation, a Delaware corporation ("Assignor"), and Millennium
Cell, LLC, a Delaware limited liability company ("Assignee").
RECITALS:
WHEREAS, Assignor has entered into a Subscription Agreement,
dated as of December ___, 1998, with Assignee, pursuant to which Assignor will
contribute substantially all of the assets of its Battery Technology Group to
Assignee;
WHEREAS, Assignor entered into a license agreement, dated July
31, 1997, with Xxxxxx X. Xxxxxxxx (the "License"), pursuant to which Assignor
obtained a license from Xxxxxx X. Xxxxxxxx for the right to use the Invention
(as defined in the License) to make, use and sell Licensed Products (as defined
in the License) within the Licensed Territory (as defined in the License);
WHEREAS, Assignor desires to assign all of its right, title
and interest under the License to Assignee and Assignee desires to assume all
such right, title and interest; and
WHEREAS, Assignor will receive royalty payments from Assignee
in consideration, among other things, for Assignor's assignment of the License.
NOW, THEREFORE, in consideration of the premises contained
herein, and for other good and valuable consideration, the adequacy and receipt
of which are hereby acknowledged, the parties hereto covenant and agree as
follows:
1. Assignor hereby grants, assigns, conveys, sets over and
delivers to Assignee and its successors and assigns all of its right, title and
interest in and to the License, effective on the date hereof, which right, title
and interest Assignee accepts and agrees to assume.
2. Assignee hereby assumes the performance of all terms,
covenants, conditions and agreements to be performed or observed by the Assignor
under the License on or after the date this Assignment is effective.
3. The following royalties will be paid on an annual basis by
Assignee to Assignor based on Assignee's annual sales relating to products
manufactured or produced using the Invention (the "Sales").
A. Royalty of 5% of the first $10 million of Sales
($500,000 royalty)
2
B. Royalty of 4% of the second $15 million of Sales
($600,000 royalty)
C. Royalty of 2-1/2% of the third $25 million of
Sales ($625,000 royalty)
D. Royalty of 1% thereafter of Sales
The parties to this Assignment agree to negotiate in
good faith to create a mechanism by which, at the appropriate time, the royalty
may be exchanged for an equity interest in the Company.
4. Assignor represents and warrants that it owns the License
free from infringement and free and clear from any claims and encumbrances of
any kind whatsoever.
5. Assignor represents and warrants that it has the right to
enter into this Agreement and does not require the consent of any third party or
governmental agency to do so.
6. Assignor represents and warrants that there is no action or
proceeding pending, and there is no basis for or threat of any such action or
proceeding, that would materially adversely affect the rights of Assignee and
this Agreement.
7. Assignor agrees to defend, pay and indemnify Assignee and
hold Assignee harmless of, from and against any and all liabilities, loss,
damage, suits, penalties, claims and demands of every kind or nature, including,
without limitation, reasonable attorneys' fees and expenses, by reason of,
resulting from or in connection with Assignor's failure to comply, prior to the
date this Assignment is effective, with the terms, covenants, conditions and
agreements contained in the License.
8. Assignee agrees to defend, pay and indemnify Assignor and
hold Assignor harmless of, from and against any and all liabilities, loss,
damage, suits, penalties, claims and demands of every kind or nature, including,
without limitation, reasonable attorneys' fees and expenses, by reason of,
resulting from or in connection with Assignee's failure to comply, from and
after the date this Assignment is effective, with the terms, covenants,
conditions and agreements contained in the License.
9. This Assignment shall inure to the benefit of, and be
binding upon the parties hereto and their respective legal representatives,
successors and assigns.
10. Except as modified herein, all of the terms and conditions
of the License, as heretofore in effect, shall remain in full force and effect
and, as modified hereby, the License is hereby ratified and confirmed in all
respects.
11. This Assignment may be executed in one or more
counterparts, each of which shall be deemed an original, but all of which, when
taken together, shall constitute one and the same
3
Assignment. It shall not be necessary for each party to sign each counterpart so
long as each party has signed at least one counterpart.
12. This Assignment shall be construed in accordance with, and
governed by, the laws of the state of New York as applied to contracts made and
to be performed entirely in the state of New York without regard to principles
of conflicts of law.
-3-
4
IN WITNESS WHEREOF, Assignor and Assignee have duly executed
this Assignment as of the day and year first above written.
MILLENNIUM CELL, LLC
By: /s/ E. Xxxx Xxxxxxxxxx
-----------------------------------
Name: E. Xxxx Xxxxxxxxxx
Title: Manager
By: /s/ Xxxxxx X. Xxxxxxx
-----------------------------------
Name: Xxxxxx X. Xxxxxxx
Title: Executive Vice President
GP STRATEGIES CORPORATION
By: /s/ Xxxxxx X. Xxxxxxx
-----------------------------------
Name: Xxxxxx X. Xxxxxxx
Title: President
The undersigned hereby consents to the transactions described
in this Assignment.
/s/ Xxxxxx X. Xxxxxxxx
-----------------------------------
Xxxxxx X. Xxxxxxxx
-4-
