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Exhibit 10.7
000 Xxxxxx Xxxxxx,
Xxxxxxx, XX 00000 XXX
TL: 781.890.7117 FX: 781.890.7141
XXXX X. XXXXXX
President
February 26, 1999
Xx. Xxxxxxx Xxxxx
00 Xxxxxxxx Xxxxxx
Xxxxxx, XX 00000
Dear Xxx:
Please acknowledge the following changes to our License and Consulting Agreement
dated September 30, 1994:
- Effective January 1, 1999, the consulting fee will be raised to
$ [CONFIDENTIAL TREATMENT REQUESTED] /*/ per hour.
- The Minimum Royalty, as specified in Exhibit B, will be changed for
the year 1998 only from $ [CONFIDENTIAL TREATMENT REQUESTED] /*/ to
[CONFIDENTIAL TREATMENT REQUESTED] /*/. The rest of the Minimum
Royalty schedule will remain unchanged.
Please sign both copies of this letter and return one to me.
Sincerely,
/s/ Xxxx X. Xxxxxx
President
/s/ Xxxxxxx X. Xxxxx
----------------------------
Xxxxxxx X. Xxxxx
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
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AGREEMENT
This Agreement is made and entered into as of the 30th day of September,
1994, by and between Evergreen Solar, Inc., of 00 Xxx Xxxxx Xxxx, Xxxxxxxxxx,
Xxxxxxxxxxxxx 00000 (hereinafter "EVERGREEN"), and Xxxxxxx X. Xxxxx, of 00
Xxxxxxxx Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000 (hereinafter "SACHS").
WITNESSETH
WHEREAS, EVERGREEN is engaged in the development and marketing of products
which incorporate ribbon technology, such as crystalline silicon photovoltaics
and photovoltaic solar cells;
WHEREAS, XXXXX owns or has rights in and to certain patents, patent rights,
know-how and technology relating to ribbon technology and is desirous of
granting an exclusive license in and to all of such patents, patent rights,
know-how and technology to EVERGREEN;
WHEREAS, EVERGREEN desires to obtain a license under such patents, patent
rights, know-how and technology upon the terms and conditions hereinafter set
forth;
WHEREAS, SACHS desires to provide consulting services to EVERGREEN in the
area of ribbon technology;
WHEREAS, EVERGREEN desires to purchase the consulting services of SACHS in
accord with the terms and conditions hereinafter set forth;
NOW, THEREFORE, in consideration of the mutual covenants expressed
herein and other good and valuable consideration, receipt and sufficiency of
which is hereby acknowledged, EVERGREEN and XXXXX agree as follows:
ARTICLE I - DEFINITIONS
1.1 "Licensed Patents" shall mean patents as set forth in EXHIBIT A of
this Agreement.
1.2 "Valid Claim" shall mean any issued claim of a Licensed Patent which
has not lapsed or expired, or has not been determined invalid or unenforceable
by a court of proper jurisdiction in an unappealed and unappealable decision.
1.3 "Wafer" shall mean any ribbon substrate which would infringe a claim
of a Licensed Patent.
1.4 "Cell" shall mean a single Wafer which is processed to provide
electrical output.
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1.5 "Module" shall mean a plurality of Cells which are connected with a
common electrical output.
1.6 "Integrated Product" shall mean any product which is sold as a unit by
EVERGREEN and which incorporates a Wafer, Cell or Module as part of the unit.
1.7 "Other Product" shall mean any product, other than a Wafer, Cell,
Module or Integrated Product, which would infringe a claim of a Licensed
Patent.
1.8 "Technology" shall mean all technology, including knowledge, know-how,
techniques, materials, products, trade secrets, data, methods, processes,
inventions (whether or not patentable) and intellectual property rights in and
to the Licensed Patents, and including, without limitation, ribbon technology,
developed or otherwise owned by SACHS, which was developed, conceived, or
written in connection with the inventions of the Licensed Patents and which
otherwise aids in the practice of the inventions set forth in the Licensed
Patents; and all technology developed, conceived, written, and made in
connection with this Agreement.
1.9 (A) "EVERGREEN Confidential Information" shall mean any information
or Technology of a confidential or proprietary nature which is disclosed by
EVERGREEN to SACHS or which is developed or licensed pursuant to this Agreement,
including, but not limited to, all technical data, engineering information,
computer programs, drawings, blueprints, descriptions, know-how, samples,
marketing plans, business strategy, and financial projections. EVERGREEN
Confidential Information shall not include any information or data which (i) is
in or becomes part of the public domain by any means other than breach of
obligations hereunder, (ii) was known by XXXXX at the time of disclosure, or
(iii) is, at any time, disclosed to SACHS by a third party having right to
disclose the same.
(B) "SACHS Confidential Information" shall mean any information or
Technology of a confidential or proprietary nature which is disclosed by XXXXX
to EVERGREEN and which is outside the scope of the consulting services to be
provided by XXXXX to EVERGREEN pursuant to Article IV of this Agreement,
including, but not limited to, all technical data, engineering information,
computer programs, drawings, blueprints, descriptions, know-how, samples,
marketing plans, business strategy, and financial projections. SACHS
Confidential Information shall not include any information or data which (i) is
in or becomes part of the public domain by any means other than breach of
obligations hereunder, (ii) was known by EVERGREEN at the time of disclosure, or
(iii) is, at any time, disclosed to EVERGREEN by a third party having right to
disclose the same.
1.10 "Kilowatt" shall mean the unit of measure of electrical output of a
Cell or Module which is in a normal condition for sale by EVERGREEN; and shall
be defined as the Direct Current Power Output, defined below, of such a Cell or
Module under standard test conditions which include (i) 1000 xxxxx per square
meter of solar irradiance; (ii) an AM 1.5 spectrum; and (iii) a cell temperature
of 25 degrees Centigrade. "Direct Current Power Output" shall mean the peak
power output of such a Cell or Module, or the warranty power rating of such a
Cell or Module, whichever is less.
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1.11 "Net Wafer Revenue" shall mean the sales price or the fair market
value of any other consideration actually received by EVERGREEN from sales to
EVERGREEN's customers of Wafers less any (i) amounts repaid or credited due to
retroactive price reductions or due to rejections or returns, (ii) trade or
quantity discounts allowed and taken, (iii) amounts written off as a result of
retroactive price reductions, (iv) customs, duties, sales, use or similar taxes,
(v) freight and insurance charges, (vi) collection costs, and (vii) amounts
discounted or owed from sales to, or licenses with, the United States
Government.
1.12 "Net Cell Revenue" shall mean the sales price or the fair market value
of any other consideration actually received by EVERGREEN from sales to
EVERGREEN's customers of Cells, less any amounts specified in Article
1.11(i)-(vii).
1.13 "Net Module Revenue" shall mean the sales price or the fair market
value of any other consideration actually received by EVERGREEN from sales to
EVERGREEN's customers of Modules, less any amounts specified in Article
1.11(i)-(vii).
1.14 (A) In the event that a Wafer is sold within an Integrated Product
without a Cell, the Net Wafer Revenue shall mean the usual selling price of the
Wafer when sold separately, less any amounts specified in Article 1.11(i)-(vii);
or, in the absence of such usual selling price for such Wafer, shall correspond
to the usual selling price of wafers sold separately by competitors of EVERGREEN
which are of similar type, kind or utility as the Wafer, less any amounts
specified in Article 1.11(i)-(vii).
(B) In the event that a Cell is sold within an Integrated Product
without a Module, the Net Cell Revenue shall mean the usual selling price of the
Cell when sold separately, less any amounts specified in Article 1.11(i)-(vii);
or, in the absence of such usual selling price for such Cell, shall correspond
to the usual selling price of cells sold separately by competitors of EVERGREEN
which are of similar type, kind or utility as the Cell, less any amounts
specified in Article 1.11(i)-(vii).
(C) In the event that the Module is sold within an Integrated
Product, the Net Module Revenue shall mean the usual selling price of the Module
when sold separately, less any amounts specified in Article 1.11(i)-(vii); or,
in the absence of such usual selling price for such Module, shall correspond to
the usual selling price of modules sold separately by competitors of EVERGREEN
which are of similar type, kind or utility as the Module, less any amounts
specified in Article 1.11(i)-(vii).
1.15 "Net Other Product Revenue" shall correspond to the fair market value
attributable to sales to EVERGREEN's customers of Other Products as the parties
hereto agree in writing and after good faith negotiations, less any amounts
specified in Article 1.11(i)-(vii); or, in the absence of such agreed-to value,
the Net Other Product Revenue shall correspond to the respective valuation of
technology within the Other Product and covered by the Licensed Patents to the
overall valuation of the Other Product, less any amounts specified in Article
1.11(i)-(vii).
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1.16. "Protected Country" shall mean a country where the manufacture, sale
or use of a Wafer, Cell, Module, Integrated Product or Other Product would
infringe a Valid Claim of a Licensed Patent in that country.
1.17 "Unprotected Country" shall mean a country where the manufacture, sale
and use of a Wafer, Cell, Module, Integrated Product or Other Product would not
infringe a Valid Claim of a Licensed Patent in that country.
ARTICLE II - XXXXX
XXXXX hereby grants to EVERGREEN, its successors, assigns, and legal
representatives, the irrevocable, except as provided herein, world-wide right
and license in and to the Technology and the Licensed Patents, including the
right to make, have made, use, lease, sub-license and sell Wafers, Cells,
Modules, Integrated Products and Other Products and to enforce any of the patent
rights of the Licensed Patents. Such license shall be exclusive, except for
rights to the Licensed Patents held by the U.S. Department of Energy'(the "DOE")
pursuant to the (i) Settlement Agreement, dated October 17, 1983, by and among
the DOE, XXXXX, Xxxxxxxx X. Xxxxxx, Xxxxxxx X. Xxxx and Xxxxxx X. Xxxxxx and
(ii) two DOE contracts (nos. XW-1-1069-1 and ZB-3-03009-1).
ARTICLE III - ROYALTIES
3.1 SACHS shall earn a royalty of [CONFIDENTIAL TREATMENT REQUESTED]/*/ of
the Net Wafer Revenue from Wafers made, used or sold by EVERGREEN in, or made or
sold by EVERGREEN for delivery to Protected Countries, during the term of this
Agreement. XXXXX shall earn a royalty of [CONFIDENTIAL TREATMENT REQUESTED]/*/
of the Net Wafer Revenue from Wafers made, used and sold by EVERGREEN in
Unprotected Countries, during the term of this Agreement.
3.2 For the first [CONFIDENTIAL TREATMENT REQUESTED]/*/ Kilowatts of
combined electrical output of Cells, Modules and Integrated Products made, used
or sold by EVERGREEN in, or made or sold by EVERGREEN for delivery to, Protected
Countries and Unprotected Countries, SACHS shall earn royalties for such Cells,
Modules and Integrated Products at the following rates:
(A) For Cells, Modules and Integrated Products made, used or sold by
EVERGREEN in, or made or sold by EVERGREEN for delivery to Protected Countries,
SACHS shall earn royalties at the rate of:
(i) [CONFIDENTIAL TREATMENT REQUESTED]/*/ of the Net Cell
Revenue; and
(ii) [CONFIDENTIAL TREATMENT REQUESTED]/*/ of the Net Module
Revenue.
(B) For Cells, Modules and Integrated Products made, used and sold by
EVERGREEN in Unprotected Countries, SACHS shall earn royalties at the rate of:
(i) [CONFIDENTIAL TREATMENT REQUESTED]/*/ of the Net Cell
Revenue; and
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
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(ii) [CONFIDENTIAL TREATMENT REQUESTED]/*/ of the Net Module
Revenue.
3.3 After the first [CONFIDENTIAL TREATMENT REQUESTED]/*/ kilowatts of
combined electrical output of Cells, Modules and Integrated Products made, used
or sold by Evergreen in, or made or sold by EVERGREEN for delivery to, Protected
Countries and Unprotected Countries, SACHS shall earn royalties for such Cells,
Modules and Integrated Products at the following rates:
(A) For Cells, Modules and Integrated Products made, used or sold by
EVERGREEN in, or made or sold by EVERGREEN for deliver to, Protected Countries,
SACHS shall earn royalties at the rate of:
(i) [CONFIDENTIAL TREATMENT REQUESTED]/*/ of the Net Cell
Revenue; and
(ii) [CONFIDENTIAL TREATMENT REQUESTED]/*/ of the Net Module
Revenue.
(B) For Cells, Modules and Integrated Products made, used and sold by
EVERGREEN in Unprotected Countries, SACHS shall earn royalties at the rate of:
(i) [CONFIDENTIAL TREATMENT REQUESTED]/*/ of the Net Cell
Revenue; and
(ii) [CONFIDENTIAL TREATMENT REQUESTED]/*/ of the Net Module
Revenue.
3.4 SACHS shall earn a royalty of [CONFIDENTIAL TREATMENT REQUESTED]/*/ of
the Net Other Product Revenue from Other Products made, used or sold by
EVERGREEN in, or made or sold by EVERGREEN for delivery to, Protected Countries,
during the term of this Agreement. XXXXX shall earn a royalty of [CONFIDENTIAL
TREATMENT REQUESTED]/*/ of the Net Other Product Revenue from Other Products
made, used and sold by EVERGREEN in Unprotected Countries, during the term of
this Agreement.
3.5 Commencing in 1998, if the aggregate annual royalties paid or payable
to SACHS under this Agreement for any 12-month calendar year (the "Measurement
Year") are less than the amount set forth on EXHIBIT B hereto opposite such
Measurement Year (the "Minimum Royalty"), EVERGREEN shall have the right and
option to pay SACHS, within forty-five (45) days after the last day of the
Measurement Year, the Minimum Royalty in lieu of the royalty payments otherwise
paid or payable to SACHS under this Agreement for such Measurement Year, in
which event EVERGREEN shall retain all of its rights and to the license granted
by SACHS under this Agreement; provided, however, that if EVERGREEN fails,
within forty-five (45) days after the last day of any Measurement Year to pay
SACHS the greater of the Minimum Royalty or the royalty payments otherwise due
under this Agreement for such Measurement Year, XXXXX shall have the right to
terminate this Agreement and all of the rights, privileges and license granted
hereunder in accordance with Article VII, except that, in this instance only,
this Agreement automatically shall terminate as of the last day of the cure
period set forth in Section 7.2 of this Agreement if EVERGREEN fails to cure its
nonpayment under this Section 3.5 within such cure period, without any
requirement of arbitration.
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
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3.6 Any royalties payable to SACHS under this Agreement shall be paid to
SACHS by EVERGREEN within forty-five (45) days after the conclusion of the
calendar-year quarter during which such royalties were earned. At the time of
the payment of any royalties to SACHS, EVERGREEN also shall provide SACHS with
an accounting of the sales of products upon which the royalties were based and
all material costs associated with such sales, including, without limitation,
all deductions pursuant to Section 1.11(i)-(vii). Any overdue royalty payments
shall bear interest at a rate equal to the prime rate on the date such royalties
were initially due. Any revenues earned on sales of covered products in foreign
countries shall be converted to American dollars for purposes of calculating
royalties due SACHS under this Agreement at the exchange rate in effect on the
last day of the calendar-year quarter in which the foreign sales occurred.
3.7 EVERGREEN may sublicense any of its rights and interests in and to
this Agreement, including, without limitation, its rights and interests in and
to the Licensed Patents and the Technology; and, in such event, SACHS shall earn
royalties with respect to sales by EVERGREEN sublicensees of Wafers, Cells,
Modules, Integrated Products and Other Products in accordance with this Article
III, which shall be payable by EVERGREEN. Evergreen shall keep records of all
transactions by its sublicensees with respect to Wafers, Cells, Modules,
Integrated Products and Other Products, in accordance with Section 10.2 of this
Agreement.
ARTICLE IV - CONSULTING SERVICES OF SACHS
4.1 Simultaneously with the execution of this Agreement, EVERGREEN shall
issue and sell to SACHS [CONFIDENTIAL TREATMENT REQUESTED]/*/ shares of Common
Stock, par value $.01 per share, of EVERGREEN ("Common Stock") at a price of
[CONFIDENTIAL TREATMENT REQUESTED]/*/ per share in connection with the
consulting services of XXXXX to be performed in accordance with Article 4.2. In
connection with his purchase of Common Stock, XXXXX has executed a Stock
Restriction Agreement with EVERGREEN, of even date herewith (the "Stock
Restriction Agreement") in substantially the form attached hereto as EXHIBIT C,
and is subject to all terms and conditions therein.
4.2 EVERGREEN shall have the right, but not the obligation, to demand the
consulting services of SACHS; and XXXXX shall be obligated, upon demand by
EVERGREEN, to spend up to (i) [CONFIDENTIAL TREATMENT REQUESTED]/*/ hours during
the first three-month period after October 1, 1994, (ii) [CONFIDENTIAL TREATMENT
REQUESTED]/*/ hours in each of the second, third, and fourth three-month periods
after October 1, 1994, and (iii) [CONFIDENTIAL TREATMENT REQUESTED]/*/ hours in
each of the three-month periods thereafter until March 31, 1997, to provide
advice and consultation to EVERGREEN with respect to the design, development,
enhancement, modification, pursuit and defense of the Technology, including
without limitation the Licensed Patents, and marketing and manufacturing of
Wafers, Cells, Modules, Integrated Products, Other Products and the Technology
in accordance with EVERGREEN's reasonable requests.
4.3 EVERGREEN shall pay SACHS [CONFIDENTIAL TREATMENT REQUESTED]/*/ per
hour for every hour actually spent by XXXXX to fulfill his obligations of
Article IV. Such pay shall be paid to XXXXX on a monthly basis within 30 days of
presentation to EVERGREEN of an invoice therefor with all necessary supporting
documentation EVERGREEN shall reimburse SACHS for reasonable and necessary
out-of-pocket expenses incurred by XXXXX during the term of this
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
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Agreement in connection with his provision of consulting services hereunder (the
"Expenses"), provided that such Expenses are properly deductible to EVERGREEN
and accounted for in accordance with the requirements of the Internal Revenue
Service; and provided also that Expenses shall not exceed $100 in any month
unless authorized in advance and in writing by EVERGREEN.
4.4 All research, technical data, and other information, discoveries,
inventions or improvements thereto, designs, trademarks, formulas, products or
plans conceived of or discovered by XXXXX, whether solely or jointly with others
during the course of and within the scope of the consulting services performed
for EVERGREEN, including all technology directly relating to the Licensed
Patents and whether or not such invention or improvement is made at the request
or suggestion of EVERGREEN or in accordance with its plans and proposals, shall
be the sole property of EVERGREEN, and, either during the course of such
consulting services or thereafter, XXXXX will promptly and fully disclose to
EVERGREEN or its authorized representative, successors or assigns, all such
inventions and improvements, and will execute and deliver to EVERGREEN, or its
authorized representative, successors or assigns, all information, including
written applications, diagrams, plans or other documents, as may be necessary or
appropriate to patent, register, copyright, obtain, perfect, or explain any such
research data and other information, discoveries, inventions or improvements
thereto, formulas, designs, trademarks, products, or plans, and shall perform
such other acts as are necessary to perfect title in and to EVERGREEN; provided
that XXXXX shall be compensated by EVERGREEN at the consulting rate set forth in
this Article IV for SACHS' assistance with respect to patent preparation or
prosecution.
4.5 (A) In the event that, at any time during any three-month period
ending on December 31, March 31, June 30 or September 30 of any year and
occurring between the date of this Agreement and March 31, 1997 (individually, a
"Consulting Period") (i) XXXXX fails to perform consulting services in accord
with the demands by EVERGREEN under Article IV of this Agreement, or (ii) SACHS
fails to perform consulting services pursuant to Article IV in a competent and
professional manner consistent with industry standards, EVERGREEN shall have the
right and option (the "Purchase Option") to purchase from SACHS, for a sum of
[CONFIDENTIAL TREATMENT REQUESTED]/*/ per share, and SACHS shall be required to
sell to EVERGREEN at such price, [CONFIDENTIAL TREATMENT REQUESTED]/*/ shares of
Common Stock for each such Consulting Period in which XXXXX fails to perform
required consulting services or fails to perform consulting services in a
competent and professional manner consistent with industry standards, in
accordance with Section 2 of the Stock Restriction Agreement.
(B) If EVERGREEN determines at any time that SACHS' failure to
perform required consulting services or SACHS' failure to perform consulting
services in a competent and professional manner consistent with industry
standards is reasonably likely to recur in future Consulting Periods, EVERGREEN,
upon written notice to SACHS, may terminate this Agreement solely with respect
to the provision of future consulting services by XXXXX without terminating any
other provisions of this Agreement, in which event SACHS shall be required to
sell to EVERGREEN, at a price of $.01 per share, all shares of Common Stock that
are still subject to the Purchase Option under the Stock Restriction Agreement
with respect to all future
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT
TO RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
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Consulting Periods; provided, however, that in the event that EVERGREEN's
determination that SACHS' failure to perform required consulting services or
SACHS' failure to perform consulting services in a competent and professional
manner consistent with industry standards is reasonably likely to recur in
future Consulting Periods is based on the death or "disability" (as defined in
the Stock Restriction Agreement) of SACHS, the number of shares of Common Stock
then subject to the Purchase Option for all future Consulting Periods shall be
reduced by fifty percent (50%).
ARTICLE V - REPRESENTATIONS, COVENANTS, WARRANTIES
5.1 XXXXX represents and warrants to the best of his knowledge that he has
complied with all applicable laws with respect to the Licensed Patents and the
Technology.
5.2 SACHS represents and warrants that, except as is set forth on EXHIBIT
D hereto, he has not previously entered into any material agreements or
contracts of any kind with respect to or affecting the Licensed Patents or the
Technology.
5.3 SACHS represents and warrants to the best of his knowledge, but
without additional investigation or patent search, that each of the Licensed
Patents which has not lapsed are valid and enforceable, and that the practice of
the inventions set forth in the Licensed Patents do not conflict with, breach or
infringe any patent, copyright, trade secret, or other intellectual property
right of any third party, except for any conflicts which may exist with respect
to the agreements and contracts set forth on Exhibit D hereto.
5.4 SACHS represents and warrants that he has disclosed or provided to
EVERGREEN all material information, documents, memoranda, notes, correspondence
and all other materials of any kind which are in his possession, or for which he
controls access, or are known by him or should be known by him, relating to any
claims or interests of any kind in and to the Licensed Patents and Technology
(the "Materials"). EXHIBIT E summarizes the Materials.
5.5 SACHS represents and warrants to the best of his knowledge that there
are no actions, proceedings, litigation or claim of any kind currently pending
or threatened with respect to the Licensed Patents or the Technology, and no
existing grounds for any such claims.
5.6 SACHS represents and warrants that he has full power and authority to
undertake the obligations set forth in this Agreement, and that by entering into
this Agreement and performing his obligations hereunder he will not violate or
conflict with the terms or provisions of any other agreement to which he is a
party or any other obligation by which he is bound.
ARTICLE VI - INDEMNIFICATION
6.1 Except as limited in Article 6.2, XXXXX shall indemnify and hold
EVERGREEN and its stockholders, directors and officers harmless from any and all
claims, actions, liabilities, losses, damages or expenses, including, without
limitation, reasonable attorneys' fees, arising from (i) SACHS' breach of any of
the representations, covenants, and warranties of Article V, or (ii) defaults by
XXXXX in making royalty payments to the Department of Energy. SACHS'
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obligations to indemnify EVERGREEN pursuant to this Article shall not survive
the expiration of this Agreement in the ordinary course pursuant to Section 7.1,
but shall survive any earlier termination of this Agreement.
6.2 SACHS' aggregate liability under Article VI shall be limited to all
royalties paid to or vested in SACHS pursuant to this Agreement, and to any and
all future royalties, EVERGREEN stock and payments paid, owed to, or later
accrued by or vested in SACHS in performance thereof; and EVERGREEN shall have
the choice as to which of such royalties, stock, and payments shall be used as
indemnification or as payment of such liability.
ARTICLE VII - TERM
7.1 The term of this Agreement shall extend until the expiration of all of
the claims of the Licensed Patents which have not lapsed or been determined
invalid or unenforceable by a court of proper jurisdiction in an unappealed and
unappealable decision.
7.2 Should EVERGREEN fail in its remittance to SACHS of monies due in
accordance with this Agreement, XXXXX shall have the right to serve upon
EVERGREEN, by certified mail at the address designated in ARTICLE X hereof,
notice of XXXXX' desire to terminate this Agreement. If within thirty (30) days
after XXXXXXXXX's receipt of such notice, EVERGREEN shall not have paid all such
monies asserted by XXXXX to be due and payable, SACHS may institute arbitration
proceedings in accordance with Article VIII of this Agreement seeking
termination of the rights, privileges and license granted hereunder. This
Article 7.2 shall always take precedence over any breach or default referred to
in Article 7.3.
7.3 Upon any material breach or default of this Agreement by EVERGREEN,
other than those occurrences set out in Article 7.2 hereinabove, XXXXX shall
have the right to serve upon EVERGREEN, by certified mail at the address
designated in ARTICLE X hereof, notice of XXXXX' desire to terminate this
Agreement. If within sixty (60) days after XXXXXXXXX's receipt of such notice,
EVERGREEN shall not have cured such breach(es), SACHS may institute arbitration
proceedings in accordance with Article VIII of this Agreement seeking
termination of the rights, privileges and license granted hereunder.
7.4 In addition to any other remedy available to EVERGREEN under this
Agreement or any applicable law, and without limiting in any respect any of
EVERGREEN'S rights under Section 4.5 of this Agreement and Section 2 of the
Stock Restriction Agreement, including, without limitation, its rights with
respect to the, Purchase Option, in the event of any material breach of SACHS'
warranties, covenants or representations set forth in this Agreement, EVERGREEN
shall have the right to serve upon SACHS by certified mail at the address
designated in ARTICLE X hereof, notice of EVERGREEN's desire to terminate this
Agreement. If, within thirty (30) days after XXXXX' receipt of such notice SACHS
shall not have cured all such breaches, EVERGREEN may institute arbitration
proceedings in accordance with Article VIII of this Agreement seeking
termination of the rights, privileges and license granted hereunder. In the
event that this Agreement is terminated pursuant to such arbitration
proceedings, EVERGREEN shall be under no further obligation to pay to SACHS any
future
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consulting payments or royalties whatsoever, and SACHS shall be required to sell
all unvested shares of EVERGREEN Common Stock to EVERGREEN at a price of $.01
per share.
7.5 Upon termination of this Agreement for any reason, among other things:
(i) nothing herein, except as limited in Section 7.4, shall be construed to
release either party from any obligation that matured prior to the effective
date of such termination, and (ii) EVERGREEN shall assign to SACHS any of
EVERGREEN's right and interest in and to the Licensed Patents. In the event of
any termination, EVERGREEN shall make good faith attempts to provide XXXXX with
technology which EVERGREEN does not intend to pursue or market so that XXXXX can
independently pursue such technology.
ARTICLE VIII - ARBITRATION
8.1 All claims, disputes or controversies arising under, out of, or in
connection with this Agreement, or any breach thereof, which have not been
resolved by good faith negotiations between the parties, shall be resolved by
final and binding arbitration in Boston, Massachusetts, or such other location
as the parties may mutually agree, under the rules of the American Arbitration
Association then obtaining, and judgment upon the award rendered by the
arbitrator may be entered in any court having jurisdiction thereof, provided,
however, that neither party shall be entitled to an award of punitive damages
pursuant to any arbitration proceeding undertaken pursuant to this Section. The
arbitrators shall have no power to add to, subtract from or modify any of the
terms or conditions of this Agreement.
8.2 Notwithstanding Section 8.1, nothing in this Article shall be
construed to waive any rights of timely performance of any obligations existing
under this Agreement.
ARTICLE IX - PATENT ENFORCEMENT AND MAINTENANCE
9.1 EVERGREEN shall maintain all patents of the Licensed Patents which
have Valid Claims, except as limited in Article 9.2, and shall have all access
and control of the patent files of the Licensed Patents at a law firm of
EVERGREEN's choosing.
9.2 EVERGREEN shall have the option to waive rights to any of the Licensed
Patents, and shall provide three months prior written notice to SACHS if it does
not intend to maintain further any of such Licensed Patents, or of any such
maintenance fees, annual tax or other government fees which it does not intend
to timely pay, in order to allow XXXXX to decide whether to make such payments
on his own behalf.
9.3 In the event that either XXXXX or EVERGREEN shall become informed of,
or have reason to believe that, any patent included in the Licensed Patents is
being infringed or potentially infringed by any unlicensed third-party, it shall
promptly notify the other party in writing.
9.4 EVERGREEN shall have the right, but not the obligation, to (i) bring
suit or other necessary and appropriate legal action, including, without
limitation, counterclaims and cross-
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12
claims (the "Infringement Action"), at EVERGREEN's own expense, joining SACHS as
a party if necessary or desirable, to terminate or prevent the infringement or
potential infringement of any patent included in the Licensed Patents, and (ii)
to negotiate with the alleged infringer (the "Infringement Negotiation") and to
effect such settlement consistent with the terms of this Agreement as EVERGREEN
may deem proper. All proceeds of any award, settlement or judgment resulting
from such Infringement Action or Infringement Negotiation (the "Recovery") shall
be divided between EVERGREEN and SACHS as follows: EVERGREEN shall receive the
aggregate amount of the Recovery, and shall pay to SACHS from such Recovery the
amount that is equal to the royalties, if any, that SACHS would have received
under this Agreement for sales of EVERGREEN products of similar type and in
equivalent amounts to the sales of the infringing or allegedly infringing
products from which the Recovery was derived. XXXXX agrees to cooperate fully
with EVERGREEN in providing documentation, witnesses and any other assistance
reasonably required to bring about a favorable result with respect to any
Infringement Action or Infringement Negotiation, and shall be paid by EVERGREEN
for such cooperation at a rate equal to the consulting rate set forth in this
Agreement. XXXXX shall be kept fully informed by EVERGREEN or its
representatives of all legal actions taken by EVERGREEN in connection with any
Infringement Action or Infringement Negotiation. XXXXX may be represented at any
such legal proceedings by counsel selected and retained by XXXXX at his sole
direction and expense.
9.5 EVERGREEN shall defend, at EVERGREEN's own expense, except as provided
for in Article 6.1, and joining SACHS as a party if necessary or desirable, all
suits and legal actions arising from the use, development, manufacture, and sale
of the Technology; and EVERGREEN shall have the right to negotiate with the
opposing party, and to effect such settlement consistent with the terms of this
Agreement, as EVERGREEN may deem proper. XXXXX agrees to cooperate fully with
EVERGREEN in providing documentation, witnesses and any other assistance
reasonably required to bring about a favorable result and shall be paid by
EVERGREEN for such cooperation at a rate equal to the consulting rate set forth
in this Agreement; and SACHS shall be kept fully informed by EVERGREEN or its
representatives of all such legal proceedings taken by EVERGREEN. XXXXX may be
represented at such legal proceedings by counsel selected and retained by XXXXX
at his sole direction and expense.
9.6 EVERGREEN shall have the right, but not the obligation, to file
additional patent applications describing and claiming the Technology which
EVERGREEN, in its sole discretion shall deem reasonably necessary to protect its
rights, through an attorney of EVERGREEN's choosing, and in such event shall
assume the timely payment of any and all maintenance fees, annual taxes or other
government fees assessed as a condition of keeping such patent applications in
full force and effect. In the event that XXXXX is an inventor on such patent
applications, XXXXXXXXX agrees to give SACHS three months prior written notice
if it does not intend to prosecute or maintain further any of such patent
applications, or of any such maintenance fees, annual tax or other government
fees which it does not intend to timely pay, in order to allow XXXXX to decide
whether to make such payment on his own behalf.
ARTICLE X - GENERAL PROVISIONS
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13
10.1 The relationship of SACHS to EVERGREEN shall be that of an independent
contractor; SACHS shall not be considered to have the status of an agent or
employee under this Agreement, and shall not be entitled to participate in any
benefits provided by EVERGREEN to its employees. XXXXX shall have no authority
to act for EVERGREEN or to bind it in any manner or thing, and shall not
represent to any person or business entity that he has such authority. Nothing
herein shall be construed to create any partnership, joint venture or similar
relationship, or to subject the parties to any implied duties or obligations
respecting the conduct of their affairs which are not expressly stated herein.
10.2 EVERGREEN shall keep full accurate books of account containing all
particulars that may be necessary for the purpose of showing the royalties
payable to SACHS under this Agreement as aforesaid, including, without
limitation, records of the manufacture, sale and use of any Wafers, Cells,
Modules, Integrated Products or Other Products by Evergreen and any of its
sublicensees. The books and the supporting data shall be kept at EVERGREEN's
principal place of business, and the books and the supporting data shall be open
at a reasonable time, once per year, for three (3) years following the end of
the calendar year to which they pertain, to the inspection of SACHS and/or an
independent certified public accountant retained or employed by XXXXX and
reasonably acceptable to EVERGREEN, for the purpose of verifying EVERGREEN's
royalty statement or compliance in other respects with this Agreement. Auditing
of EVERGREEN's books and supporting data by a representative of SACHS can occur
during normal business hours upon fourteen (14) days' written request. All fees
and expenses associated with any such audit shall be the sole responsibility of
XXXXX, except that if the results of an audit show a discrepancy in favor of the
SACHS of more than five percent (5%) of the amount owed, all reasonable audit
costs shall be borne in full by EVERGREEN.
10.3 SACHS acknowledges and understands that EVERGREEN may become engaged
in the development of additional products which may be competitive with Wafers,
Cells, Modules, Integrated Products and Other Products; that EVERGREEN shall not
be restricted in any manner from pursuing the development of such competitive
products; that SACHS shall have no right to receive any compensation or
royalties with respect to EVERGREEN's revenues therefrom, so long as the making,
use, and sale of such products do not fall within the scope of any of the Valid
Claims of the Licensed Patents.
10.4 This Agreement shall be governed by and interpreted in accordance with
the laws of the Commonwealth of Massachusetts, exclusive of the choice of law
rules thereof, as if therein wholly to be performed, except that questions
affecting the construction and effect of any foreign patent shall be determined
by the law of the country in which the patent was granted. Nothing in this
Article shall preclude either party from seeking preliminary or temporary
injunctive relief from a court of competent jurisdiction.
10.5 EVERGREEN may assign or otherwise transfer this Agreement, and the
license granted hereby and the rights and obligations acquired hereunder,
including, without limitation, such transfers caused (i) by operation of a
merger of EVERGREEN with another company, or (ii) by the sale or liquidation of
EVERGREEN's stock or assets, or (iii) by the transfer of an interest in this
Agreement pursuant to a security agreement delivered by EVERGREEN with respect
to
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14
its rights under this Agreement, without the prior consent of SACHS, so long as
the assignee or transferee shall agree to the terms and conditions of this
Agreement.
10.6 Notices or other communications provided for in this Agreement shall
be given in writing and shall be deemed effective on the date sent if sent to a
party hereto by personal delivery, certified or first class mail, postage
pre-paid, electronic facsimile transmission, or express overnight courier
service, addressed to the party at its address below (or at another address as
either party shall designate by written notice given to the other party):
In the case of XXXXX:
Xxxxxxx X. Xxxxx
00 Xxxxxxxx Xxxxxx
Xxxxxx, XX 00000
In the case of EVERGREEN:
Evergreen Solar, Inc.
00 Xxx Xxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxxxxxxx 00000
10.7 The parties hereto acknowledge that this Agreement sets forth the
entire Agreement and understanding of the parties hereto as to the subject
matter hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
10.8 The provisions of this Agreement are severable, and in the event that
any provision of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of law, such invalidity or
unenforceability shall not in any way affect the validity or enforceability of
any remaining provisions hereof.
10.9 In the event that any portion of this Agreement shall be reformed
under any controlling body of law, such reformation shall not affect any other
portion of the Agreement and the parties hereto agree to enforce all such other
portions to the maximum extent possible.
10.10 The failure of either party to assert a right hereunder or to insist
upon compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure to
perform any such term or condition by the other party.
10.11 Until March 31, 1998, XXXXX shall engage in no activity or ownership
which conflicts with any interest of EVERGREEN associated with the making, using
or selling of technology under the Licensed Patents. After March 31, 1998, for
the term of this Agreement, XXXXX shall disclose to EVERGREEN, and EVERGREEN
shall have the option to license or purchase from SACHS, any intellectual
property rights owned by XXXXX and related to the Licensed Patents or the
Technology but not covered by this Agreement, which option to license or
purchase shall be exercisable by EVERGREEN by written notice to SACHS within six
(6) months after XXXXXXXXX's receipt of notice of such intellectual property,
and shall be granted
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
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15
upon such reasonable terms and conditions as are determined by the parties
through good faith negotiations undertaken after XXXXXXXXX's exercise of the
option. The option granted to EVERGREEN pursuant to this Section shall be prior
and superior to any rights in such intellectual property held or claimed by any
party other than SACHS, and SACHS shall not sell, license, assign or otherwise
encumber such intellectual property rights to any party other than EVERGREEN
unless (i) EVERGREEN notifies SACHS in writing of its decision not to exercise
its option to such intellectual property rights or (ii) EVERGREEN does not elect
to exercise its option to the intellectual property rights within the six-month
exercise period described in the immediately preceding sentence.
10.12 All products sold by EVERGREEN which encompass technology or
inventions covered by one or more of the Licensed Patents shall be marked with
the patent numbers of such Licensed Patents.
10.13 (A) SACHS hereby covenants to (i) maintain all EVERGREEN Confidential
Information in confidence and not disclose same to any third party unless
expressly authorized in writing by EVERGREEN or required to do so by court order
or by law, in which case XXXXX shall notify EVERGREEN in writing prior to making
such disclosure; (ii) not use any EVERGREEN Confidential Information for his own
benefit or for the benefit of any third party; and (iii) return all EVERGREEN
Confidential Information to EVERGREEN, including all copies, summaries and
extracts thereof, upon completion of assessment of the same for the purpose set
forth above, or upon termination of this Agreement, or sooner, if requested, and
shall, if requested by EVERGREEN, execute a certificate warranting that all such
Proprietary Information has been returned to EVERGREEN in accordance with this
Agreement.
(B) EVERGREEN hereby covenants to (i) maintain all SACHS
Confidential Information in confidence and not disclose same to
any third party unless expressly authorized in writing by XXXXX
or required to do so by court order or by law, in which case
EVERGREEN shall notify SACHS in writing prior to making such
disclosure; (ii) not use any SACHS Confidential Information for
its own benefit or for the benefit of any third party; and (iii)
return all SACHS Confidential Information to SACHS, including
all copies, summaries and extracts thereof, upon completion of
assessment of the same for the purpose set forth above, or upon
termination of this Agreement, or sooner, if requested, and
shall, if requested by XXXXX, execute a certificate warranting
that all such Proprietary Information has been returned to SACHS
in accordance with this Agreement.
10.14 The parties hereto shall comply in all respects with all applicable
laws.
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16
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of
the date first above written.
EVERGREEN SOLAR, INC.
BY: /s/ Xxxx Xxxxxx
------------------------------
Xxxx Xxxxxx, President
BY: /s/ Xxxxxxx X. Xxxxx
------------------------------
Xxxxxxx X. Xxxxx
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17
EXHIBIT A
LICENSED PATENTS
U.S. Patent No. 4,689,109, entitled "String Stabilized Ribbon Growth a
Method for Seeding Same," and any U.S. patent application, and foreign patents
and patent applications based thereon.
U.S. Patent No. 4,661,200, entitled "String Stabilized ribbon Growth; Solar
Cell Substrates," and any U.S. patent application, and foreign patents and
patent applications based thereon.
U.S. Patent No. 4,627,887, entitled "Melt Dumping in String Stabilized
Ribbon Growth; Crystallization," and any U.S. patent application, and foreign
patents and patent applications based thereon.
U.S. Patent No. 4,594,229, entitled "Apparatus for Melt Growth of
Crystalline Semiconductor Sheets," and any U.S. patent application, and foreign
patents and patent applications based thereon.
Great Britain Patent No. 2135595. (Lapsed)
Great Britain Patent No. 2135594. (Lapsed)
Great Britain Patent No. 2067920. (Lapsed)
Japanese Patent No. 00000000. (Lapsed)
French Patent No. 2473072. (Lapsed)
German Patent No. 3100245. (Lapsed)
Israeli Patent No. 61852.
Canadian Patent No. 1169336.
Italian Patent No. 1143254. (Lapsed)
Japanese Patent No. 00000000. (Lapsed)
18
EXHIBIT B
Minimum Royalties
-----------------
Measurement Year Minimum Royalty
---------------- ---------------
[CONFIDENTIAL TREATMENT REQUESTED] /*/ [CONFIDENTIAL TREATMENT REQUESTED] /*/
[CONFIDENTIAL TREATMENT REQUESTED] /*/ [CONFIDENTIAL TREATMENT REQUESTED] /*/
[CONFIDENTIAL TREATMENT REQUESTED] /*/ [CONFIDENTIAL TREATMENT REQUESTED] /*/
[CONFIDENTIAL TREATMENT REQUESTED] /*/ [CONFIDENTIAL TREATMENT REQUESTED] /*/
[CONFIDENTIAL TREATMENT REQUESTED] /*/ [CONFIDENTIAL TREATMENT REQUESTED] /*/
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
19
EXHIBIT C
STOCK RESTRICTION AGREEMENT
AGREEMENT made as of the 30th day of September, 1994, between Evergreen
Solar, Inc., a Delaware corporation (the "Company"), and Xxxxxxx X. Xxxxx (the
"Consultant").
WITNESSETH:
WHEREAS, contemporaneously herewith, the Company and the Consultant
have entered into a license and consulting Agreement (the "Consulting
Agreement");
WHEREAS, in connection with the consulting services to be provided by
the Consultant to the Company pursuant to the Consulting Agreement (the
"Consulting Services"), the Company has previously issued and sold to the
Consultant, and the Consultant has purchased from the Company, [CONFIDENTIAL
TREATMENT REQUESTED]/*/ shares (the "Shares") of common stock, $.01 par value,
of the Company ("Common Stock"), at a purchase price of [CONFIDENTIAL TREATMENT
REQUESTED]/*/ per share;
WHEREAS, a condition of the sale of the Shares is the execution and
delivery of this Agreement by the Consultant.
NOW, THEREFORE, for valuable consideration, the receipt and sufficiency
of which are acknowledged, the parties hereto agree as follows:
1. Restrictions. The Consultant agrees that the Shares shall be subject
to the Purchase Option and other rights and obligations set forth in Section 2
of this Agreement and the restrictions on transfer set forth in Section 4 of
this Agreement and shall otherwise be subject to the terms and conditions set
forth herein.
2. Purchase Option.
(a) In the event that, at any time during any three-month
period ending on December 31, March 31, June 30 or September 30 of any year and
occurring between the date of this Agreement and March 31, 1997 (each such
three-month period is sometimes individually referred to hereinafter as a
"Consulting Period"), (i) the Consultant fails to perform Consulting Services in
accordance with the request of Evergreen pursuant to Article IV of the
Consulting Agreement, or (ii) the Consultant fails to perform Consulting
Services in a competent and professional manner consistent with industry
standards, the Company shall have the right and option (the "Purchase Option")
to purchase from the Consultant, at a price of [CONFIDENTIAL TREATMENT
REQUESTED]/*/ per share (the "Option Price"), [CONFIDENTIAL TREATMENT
REQUESTED]/*/ Shares of Common Stock of the Company for each such Consulting
Period that the Consultant fails to perform required Consulting Services or
fails to perform Consulting Services in a competent and professional manner
consistent with industry standards.
(b) If the Company determines at any time that the
Consultant's failure to perform required Consulting Services or the Consultant's
failure to perform Consulting Services in a competent and professional manner
consistent with industry standards is reasonably likely to recur in future
Consulting Periods, the Company, upon written notice to the Consultant, may
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
20
-2-
terminate the Consulting Agreement solely with respect to the provision of
future Consulting Services by the Consultant without terminating any other
provisions of the Consulting Agreement, in which event the Consultant shall be
required to sell to the Company, at a price of [CONFIDENTIAL TREATMENT
REQUESTED]/*/ per share all Shares of Common Stock that are still subject to the
Purchase option under this Agreement with respect to all future Consulting
Periods; provided, however, that in the event that the Company's determination
that the Consultant's failure to provide required Consulting Services or the
Consultant's failure to perform Consulting Services in a competent and
professional manner consistent with industry standards is reasonably likely to
recur in future Consulting Periods is based on the death or disability of the
Consultant, the number of Shares then subject to the Purchase Option for all
future Consulting Periods shall be reduced by fifty percent (50%). As used in
the immediately preceding sentence, "disability" shall mean the inability of the
Consultant, due to a medical reason, to carry out his duties as a consultant for
the Company for a period of six consecutive months.
(c) In addition to and without limiting any other rights
available to the Company under this Agreement or any applicable law, including,
without limitation, the Company's rights under Section 2 with respect to the
Purchase Option, in accordance with Section 7.4 of the Consulting Agreement, in
the event of any material breach by the Consultant of any of the warranties,
covenants or representations set forth in the Consulting Agreement, the Company
shall have the right to serve upon the Consultant by certified mail at the
address designated herein notice of the Company's desire to terminate the
Consulting Agreement. If, within thirty (30) days after the Consultant's receipt
of such notice the Consultant shall not have cured all such breaches, the
Company may institute arbitration proceedings in accordance with Article VIII of
the Consulting Agreement, seeking termination of the rights, privileges and
license granted thereunder. In the event that this Agreement is terminated
pursuant to such arbitration proceedings, the Company shall be under no further
obligation to pay to the Consultant any future consulting payments or royalties
whatsoever, and the Consultant shall be required to sell shares of Common Stock
which are still subject to the Purchase Option under this Agreement with respect
to future Consulting Periods to the Company at a price of [CONFIDENTIAL
TREATMENT REQUESTED]/*/ per share.
(d) The failure of the Company with respect to any one or more
Consulting Periods in which the Consultant fails to provide required Consulting
Services or fails to perform Consulting Services in a competent and professional
manner consistent with industry standards to exercise the Purchase Option
pursuant to this Section 2 of this Agreement so as to require the Consultant to
sell Shares of Common Stock to the Company, shall not preclude the Company from
exercising the Purchase Option at any time during any one or more future
Consulting Periods.
3. Exercise of Purchase Option, other Share Purchases and Closing.
(a) The Company may exercise the Purchase Option in accordance
with Section 2 of this Agreement during any one or more Consulting Periods by
delivering or mailing to the Consultant (or his estate), in accordance with
Section 13, written notice of exercise within 30 days after the conclusion of
the applicable Consulting Period.
/*/ [CONFIDENTIAL TREATMENT REQUESTED] INDICATES MATERIAL THAT HAS BEEN OMITTED
AND FOR WHICH CONFIDENTIAL TREATMENT HAS BEEN REQUESTED. ALL SUCH OMITTED
MATERIAL HAS BEEN FILED WITH THE SECURITIES AND EXCHANGE COMMISSION PURSUANT TO
RULE 406 PROMULGATED UNDER THE SECURITIES ACT OF 1933, AS AMENDED.
21
-3-
(b) Within 10 days after the Consultant's receipt from the
Company of a notice of exercise of Purchase Option pursuant to Section 2 above,
the Consultant (or his estate) shall tender to the Company at its principal
offices the certificate or certificates representing the Shares to be purchased,
duly endorsed in blank by the Consultant or with duly endorsed stock powers
attached thereto, all in form suitable for the transfer of Shares to the
Company. The Company shall, upon its receipt of such Shares, deliver or mail to
the Consultant a check in the amount of the aggregate Option Price therefor.
(c) After any date or dates on which any Shares are required
to be sold and delivered to the Company pursuant to Section 2 above, the Company
shall not pay any dividend to the Consultant on account of such Shares or permit
the Consultant to exercise any of the privileges or rights of a stockholder with
respect to such Shares.
(d) The Option Price and any other purchase price under
Section 2 may be payable, at the option of the Company, in cancellation of all
or a portion of any outstanding indebtedness of the Consultant to the Company or
in cash (by check), or both.
(e) The Company shall not purchase any fraction of a Share
upon exercise of the Purchase Option during any one or more Consulting Periods,
and any fraction of a Share resulting from a computation made pursuant to
Section 2 of this Agreement shall be rounded to the nearest whole Share (with
any one-half Share being rounded upward).
4. Restrictions on Transfer.
(a) Unvested Shares. Except as otherwise specified in
subjection 4(c) below, the Consultant shall not, during the term of the Purchase
Option, sell, assign, transfer, pledge, hypothecate or otherwise dispose of, by
operation of law or otherwise (collectively "transfer"), any of the Shares, or
any interest therein, unless and until such Shares are no longer subject to the
Purchase Option.
(b) Vested Shares; Right of First Refusal. Except as otherwise
specified in subjection 4(c) below, the Consultant shall not transfer any of the
Shares no longer subject to the Purchase Option, or any interest therein, except
by a transfer which meets the following requirements:
(i) If the Consultant proposes to transfer any such
Shares (the "Offered Shares"), then the Consultant shall first give written
notice of the proposed transfer (the "Transfer Notice") to the Company. The
Transfer Notice shall name the proposed transferee and state the number of
Offered Shares, the price per share and all other material terms and conditions
of the transfer.
(ii) The Company shall have the right, exercisable by
written notice to the Consultant, within forty-five [45] days following the
Company's receipt of Transfer Notice, to purchase all but not less than all of
the Offered Shares at a purchase price equal to the price per share set forth in
the Transfer Notice.
22
-4-
(iii) If the Company elects to acquire all, but not
less than all, of the Offered Shares, the Company shall so notify the Consultant
and settlement shall be made at the principal office of the Company in cash
within ninety [90] days after the Company receives the Transfer Notice; provided
that if the terms of payment set forth in the Transfer Notice were other than
cash against delivery, the Company shall pay for the Offered Shares on the same
terms and conditions set forth in the Transfer Notice.
(iv) If the Company does not elect to acquire all of
the Offered Shares, the Consultant may, within the 90-day period following the
termination of the Company's option to acquire the Offered Shares, transfer the
Offered Shares to the proposed transferee or any other purchaser, provided that
such sale shall not be on terms and conditions more favorable to the purchase
than those contained in the Transfer Notice. Notwithstanding any of the
foregoing, all Offered Shares transferred pursuant to this subsection 4(b) shall
be subject to the provisions of this subsection 4(b) in the same manner and to
the same extent as before such transfer.
(c) The following transactions shall be exempt from the
provisions of this Section 4:
(i) The Consultant's transfer of any or all of his
shares either during his lifetime or upon his death by will or intestacy to his
immediate family or to a trust the beneficiaries of which are exclusively one or
more of the Consultant and a member or members of the Consultant's immediate
family, except any such transfers made pursuant to any divorce or separation
proceedings or settlement. As used in the immediately preceding sentence,
"Immediate family" shall mean spouse, lineal descendant, father, mother, brother
or sister of the shareholder making the transfer; or
(ii) A transfer to the guardian or conservator of the
Consultant;
provided, however, that in any such case, the transferee or other recipient
shall receive and hold such stock subject to the provisions of this Agreement,
and there shall be no further transfer of such stock except in accordance with
this Agreement.
(d) Any sale or transfer, or purported sale or transfer, of
Shares shall be null and void unless the terms, conditions and provisions of
this Section 4 are strictly observed and followed.
(e) The rights of first refusal set forth in this Section 4
shall terminate upon either of the following dates, whichever shall first occur:
(i) Upon the closing of the first bona fide firmly
underwritten public offering of securities of the Company which is effected
pursuant to a registration statement filed with, and declared effective by, the
Securities and Exchange Commission under the Securities Act of 1933, as amended
(other than an offering registered on Form S-4, Form S-8 or any successor forms)
that results in net proceeds to the Company (aggregate sales price to the public
less underwriters' discounts) of at least $15,000,000 with a net sales price per
share (gross sales
23
-5-
price per share to the public less underwriters' discounts) of not less than
$10.00 (as adjusted for stock splits, stock dividends, recapitalization and
similar events); or
(ii) upon the sale of all or substantially all of the
shares or business of the Company, by merger, consolidation, sale of assets or
otherwise.
(f) The rights of first refusal set forth in this Section 4
may be transferred by the Company without the consent of the Consultant or any
transferee of Shares from the Consultant.
5. Lock-Up Agreement. The Consultant agrees that in connection with an
underwritten public offering of Common Stock, upon the request of the Company or
the principal underwriter managing such public offering, the Shares may not be
sold, offered for sale or otherwise disposed of without the prior written
consent of the Company or such underwriter, as the case may be, for at least 270
days or such longer period of time as the Board of Directors of the Company may
determine; provided, however, that the Consultant shall only be bound for such
period as all of the Company's directors and officers also agree to be bound.
6. Restrictive Legend. All certificates representing the Shares shall
have affixed thereto a legend in substantially the following form, in addition
to any other legends that may be required under federal or state securities
laws:
"The shares of stock represented by this certificate are
subject to restrictions set forth in a certain Stock
Restriction Agreement between the corporation and the
registered owner of these shares (or his predecessor in
interest), and such Agreement is available for inspection
without charge at the office of the Secretary of the
corporation."
7. Adjustments for Stock Splits, Stock Dividends, etc.
(a) If from time to time while the Shares are subject
to the Purchase Option or restrictions on transfer set forth herein there is any
stock split-up, stock dividend, stock distribution or other reclassification of
the Common Stock of the Company, any and all new, substituted or additional
securities to which the Consultant is entitled by reason of his ownership of the
Shares shall be immediately subject to such Purchase Option and restrictions on
transfer in the same manner and to the same extent as the Shares and the price
payable to the Consultant upon exercise of the Purchase Option shall be
appropriately adjusted.
(b) If the Shares are converted into or exchanged
for, or stockholders of the Company receive by reason of any distribution in
total or partial liquidation, securities of another corporation, or other
property (including cash), pursuant to any merger of the Company or acquisition
of its assets, then the rights of the Company under this Agreement shall inure
to the benefit of the Company's successor and this Agreement shall apply to the
securities or other property received upon such conversion, exchange or
distribution in the same manner and to the same extent as the Shares.
24
-6-
8. Spousal Consent. If requested by the Company, this Agreement is
being delivered by the Consultant along with a Spousal Consent in the form
attached hereto as Exhibit 1, executed by the Consultant's spouse.
9. Severability. This invalidity or unenforceability of any provision
of this Agreement shall not affect the validity or enforceability of any other
provision of this Agreement, and each other provision of this Agreement shall be
severable and enforceable to the extent permitted by law.
10. Waiver; Amendment. No provision of this Agreement shall be waived
or amended, either generally or in any particular instance, except in a writing
signed by the Company and the Consultant.
11. Binding Effect. This Agreement shall be binding upon and inure to
the benefit of the Company and the Consultant and their respective heirs,
executors, administrators, legal representative, successors and assigns. No
transfer of any of the Shares shall be effective unless the transferee first
agrees in writing to all of the terms hereof.
12. No Rights To Employment. Nothing contained in this Agreement shall
be construed as giving the Consultant any right to be retained, in any position,
as an employee of the Company.
13. Notice. All notices required or permitted hereunder shall be in
writing and deemed effectively given upon personal delivery by Federal Express
or other recognized overnight delivery service or upon deposit in the United
States Post Office, by registered or certified mail, postage prepaid, return
receipt requested, addressed to the other party hereto at the address shown
beneath his or its representative signature to this Agreement, or at such other
address or addresses as either party shall designate to the other in accordance
with this Section 13.
14. Pronouns. Whenever the context may require, any pronouns used in
this Agreement shall include the corresponding masculine, feminine or neuter
forms, and the singular form of nouns and pronouns shall include the plural, and
vice versa.
15. Entire Agreement. This Agreement constitutes the entire agreement
between the parties, and supersedes all prior agreements and understandings,
relating to the subject matter of this Agreement.
16. Governing Law. This Agreement shall be construed, interpreted and
enforced in accordance with the laws of the State of Delaware.
25
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the day and year first above written.
EVERGREEN SOLAR, INC.
By: /s/ Xxxx Xxxxxx
----------------------------------------
Xxxx Xxxxxx, President
Address: 00 Xxx Xxxxx Xxxx
Xxxxxxxxxx, Xxxxxxxxxxxxx 00000
CONSULTANT
/s/ Xxxxxxx X. Xxxxx
--------------------------------------------
Xxxxxxx X. Xxxxx
Address: 00 Xxxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxxxx 00000
26
-8-
EXHIBIT 1
CONSENT OF SPOUSE
I, XXXXXXX X. XXXXX XXXXX, spouse of Xxxxxxx X. Xxxxx ("my spouse"),
acknowledge that I have read the Certificate of Incorporation, as amended, of
Evergreen Solar, Inc., a Delaware corporation (the "Company") and the Stock
Restriction Agreement of even date herewith between my spouse and the Company
and that I know the contents of such instruments.
I am aware that pursuant to such instruments, restrictions are imposed upon
the transfer of Stock of the Company of which I may become possessed and that
such Stock may under certain circumstances be repurchased by the Company or
other parties. I hereby agree that my interest, if any, in the Stock subject to
such instruments shall be irrevocably bound by the terms of such instruments.
EXECUTED as of the 30 day of September, 1994.
/s/ Xxxxxxx X. Xxxxx Xxxxx
----------------------------------------
Xxxxxxx X. Xxxxx Xxxxx
27
EXHIBIT D
AGREEMENTS AND CONTRACTS
1. Agreement, dated March 1, 1980, between XXXXX and Xxxxxx X. Xxxxxx,
Inc. ("Little"), as amended by a letter agreement dated November 20, 1987, and
termination letter from XXXXX to Little, dated September 12, 1994.
2. Settlement Agreement, dated October 17, 1983, among Xxxxxxxx X.
Xxxxxx, Xxxxxxx X. Xxxx, XXXXX, Little and the United States Department of
Energy.
3. Agreement, dated July 8, 1985, between Solarex Corporation
("Solarex"), SACHS and Little, and termination letter from Solarex to Little and
SACHS, dated March 12,1986.
4. Contract no. XW-1-1069-1 and contract no. ZB-3-03009-1, each between
Little and the United States Department of Energy, and associated patent waiver
documents.
5. Memorandum of Agreement, dated June 6, 1977, between SACHS and Mobil
Tyco Solar Energy Corporation.
6. Treatment of Confidential Information, dated June 6, 1977, between
SACHS and Mobil Tyco Solar Energy Corporation.
7. Acknowledgment of obligations with respect to the treatment of
confidential information of Mobil Tyco Solar Energy Corporation, dated June 6,
1977, executed by XXXXX.
8. Consultant's Agreement, dated August 1, 1979, between SACHS and Mobil
Tyco Solar Energy Corporation.
9. Consulting letter agreement, dated March 4, 1980, between XXXXX and
Little, as renewed, amended and/or clarified by subsequent letter agreements
dated March 2, 1981, February 18, 1982, January 18, 1983, July 13, 1983, May 22,
1984, June 4, 1984, July 24, 1985, October 15, 1985, January 21, 1986 and
September 4, 1986.
28
EXHIBIT E
SUMMARY OF MATERIAL DOCUMENTS, MEMORANDA AND INFORMATION
Box # 1
-------
SACHS' FILES
File No. Description
------- -----------
1.1 Interference: Dermatis background and negotiations.
1.2 Interference: Dermatis file wrapper.
1.3 Interference: Motions, decisions.
Note: 1.1 and 1.2 discuss the Dermatis interference wherein
Dermatis apparently in the end decided to drop any interference
(besides the assertions that the two patents were substantially
different, Xxxxxxxx was actually charged with fraud). 1.3 shows that
Xxxxxx joined in what became a 3-way interference until Dermatis
dropped out.
1.4 Interference: Prior art, patents and literature.
1.5 A NASA tech. brief - no label on this folder.
1.6 Interference: Sachs proofs and tech. memos - contains a memo by Xxxxx on
the difference between ESR and web growth and an affidavit
by Xxxx. X. Xxxxx that Xxxxx discussed this idea on or
before July 11, 1979.
1.7 Interference: Declaration, correspondence, preliminary statement,
correspondence re: Xxxxxxxx and Xxxxxx interference.
1.8 Interference: Xxxxx vs. Xxxxxx - some notes from Xxxxx (includes notes re:
Xxxxx'x earlier conversations), a memo of the chronology.
1.9 Interference: Motions, Xxxxx vs. Xxxxxx - Xxxxx suggests fraud because SERI
had confidential information on ESR before SERI filed.
1.10 Interference: SERI, lit, etc. - excellent collection of Xxxxxx papers on edge
supported growth.
1.11 Interference: Xxxxxx file wrapper.
29
1.12 Interference: Settlement includes copy of final settlement document with
signatures. Confidential memo from Xxxxx to his superiors.
Contains a copy of EXHIBIT A in the settlement agreement.
1.13 Further notes on Xxxxxx interference.
1.14 General correspondence on the interference - letters from Pandiscio
requesting copies of the interference (apparently initially denied), notes
from Xxxxx' notebook, letter indicating the Xxxxxx interference is
dissolved. Incomplete record of Mobil inquiry.
1.15 Exhibits for the Xxxxx-Xxxxxx interference - the original SERI REP, the
ADL/XXXXX PROPOSAL, copies of the Xxxxxx papers.
1.16 Xxxxxx vs. Xxxxx, Interference #100,758 - look like the original
documents - Xxxxxx'x oppositions to Sachs motions.
1.17 Xxxxxx vs. Xxxxx, Interference #100,758 - look like the original
documents - Sachs Response to the oppositions of the Party Xxxxxx et
al.
1.18 Application and progress reports from Sachs to Hertz Foundation in
1979. Indicates Xxxxx' first PV research interest was bulk silicon
slicing.
Box # 2
-------
2.1 Patent communications - background on patents in general and on film
processor patent (not included in Evergreen license).
2.2 Sachs patents issued - copy of U.K. patent "String Stabilized Ribbon Growth
of Crystals" - No. 2,067,920A.
2.3 Solar Patent #1 - Correspondence of the patent office in the basic patent
No. 4,661,200 - original and copies of the patent letter explaining that
Xxxxx is paying for this application himself, that he conceived of the
idea in the summer of 1979, and that he was a graduate student under
X. Xxxxx and had to move his experiment to ADL where they had better
facilities, etc.
2.4 Public laws and government regulations.
2.5 Bills - patent.
2.6 First solar patent search.
30
2.7 Solar patents - performance value?
2.8 Melt dumping - original patents and data on this patent No. 4,627,887
2.9 Seeding patent - copy - not the original, No. 4,689,109.
2.10 Xxxxxx Patent - copy of this patent No. 4,594,229, issued 6/10/86.
Assigned to X.X. Xxxxx.
2.11 Composite strings - patent application - initially rejected by the patent
office and decided not to try further on it.
2.12 Diffusion length/laser scanner patent application - apparently rejected.
2.13 SERI/DOE - contains: listing of all patent information re: the
government and patent status - including Mobil.
2.14 Miscellaneous.
Box # 3
-------
3.1 Presentation.
3.2 Contacts.
3.3 Licensing - business development efforts.
3.4 Licensing - much material on Toshiba interaction, including Toshiba
option agreement that was never signed.
3.5 Graphics - many useful photos, original ADL brochure.
3.6 SERI - Year 1 - contains a useful report.
3.7 SERI - Year 2 (83) - RFP, proposal, contract.
3.8 SERI - Year 2 - reports to SERI.
3.9 SERI - Patent waiver - Year 2.
3.10 Business plan - ESR Inc.
3.11 SERI - 9/81 - 10/82, patent waiver Year 1.
3.12 SSG - Publicity.
3.13 SERI - 9/81 - 10/82, RFP, proposal, contract, correspondence.
31
3.14 SERI - correspondence re: publications.
3.15 SERI - patent disclosures re: waiver - important disclosures, including
storing materials, radiation xxxxxxx.
3.16 Mislabeled: RFP's, proposals, SERI patent correspondence. Actually
contains SBIR information for 1983 almost totally.
3.17 JPL Year 3 proposal - letter to Prince, XXX, telling of settling of the
patent interference issue.
Note: It is clear that Box 3 does not contain a complete record of the
SERI patent waivers.
32
SOME KEY PERSONNEL IN SACHS' FILES
1. XXX XXXXXX - Scientist at National Renewable Energy Lab (NREL) [Formerly
called Solar Energy Research Institute - SERI].
2. X. XXXXXXXX - Scientist originally at Westinghouse.
3. XXX XXXXX - Scientist/Manager at NREL for the past 16 years. Prior to that,
was at Mobil-Tyco (this became Mobil-Solar) for several years.
4. PROF. XXXXX XXXXX - Xxxxx' Ph.D. advisor at MIT.
5. XXXX XXXXXXXXX Xxxxx Xxxxx's patent counsel.
